Ex Parte Kuhlman et alDownload PDFPatent Trial and Appeal BoardApr 16, 201311726457 (P.T.A.B. Apr. 16, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/726,457 03/22/2007 Dennis Eugene Kuhlman 10346M 8886 23368 7590 04/16/2013 DINSMORE & SHOHL LLP FIFTH THIRD CENTER, ONE SOUTH MAIN STREET SUITE 1300 DAYTON, OH 45402-2023 EXAMINER ASDJODI, MOHAMMADREZA ART UNIT PAPER NUMBER 1767 MAIL DATE DELIVERY MODE 04/16/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DENNIS EUGENE KUHLMAN and TIMOTHY WOODROW COFFINDAFFER ____________ Appeal 2012-001006 Application 11/726,457 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CHARLES F. WARREN, and DEBORAH KATZ, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-21. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM-IN-PART. Appellants claim an aerosol product comprising a package containing a foaming concentrate composition and a propellant wherein the package comprises a container and a powder valve comprising a valve stem (20) having at least one orifice (22) therein, the orifice having a diameter of at least about 660 µm (independent claims 1 and 21; Spec. 15:8-22; sole Fig.). Representative claim 1 reads as follows: Appeal 2012-001006 Application 11/726,457 2 1. An aerosol product comprising: (a) a foaming concentrate composition comprising: (i) a surfactant; and (ii) from about 0.1% to about 10%, by weight of said foaming concentrate composition, of particulate material; wherein said foaming concentrate composition comprises at least about 0.1%, by weight of said foaming concentrate composition, of particulate material having a particle size greater than 100 µm; (b) a propellant; and (c) a package containing said foaming concentrate composition and said propellant; wherein said package comprises a container and a powder valve comprising a valve stem having at least one orifice therein, said at least one orifice having a diameter of at least about 660 µm; wherein a ratio of a maximum particle size of said particulate material to said orifice diameter of said orifice is less than about 0.75. The Examiner rejects claims 1-21 under 35 U.S.C. § 103(a) as unpatentable over Sugai (US 6,063,366, issued May 16, 2000) in view of Spitzer (US 4,019,657, issued Apr. 26, 1977) and Henkel (US 6,087,310, issued Jul. 11, 2000). The Examiner provisionally rejects claims 1-5, 9, 10, 12-17, 19, and 20 under the judicially created doctrine of obviousness-type double patenting over claims 1, 3-5, and 8-17 of copending application 11/726,456. We summarily sustain the provisional obviousness-type double patenting rejection since Appellants have not contested (or even addressed) this rejection in the appeal record. Concerning the § 103 rejection, the Examiner finds that Sugai teaches the claimed composition but not a container therefor with a valve stem having an orifice with a diameter of at least about 660 µm as required by the independent claims (see, e.g., Ans. 4). The Examiner finds that Spitzer teaches "a foam making aerosol container with a valve diameter (orifice) Appeal 2012-001006 Application 11/726,457 3 range of 75-1000 µm" (id. citing Spitzer col. 4, ll. 8-12). The Examiner concludes that it would have been obvious "to combine the cosmetic composition of Sugai [] with Spitzer[]'s aerosol delivery system" (id.). Appellants argue that the Spitzer orifice disclosure cited by the Examiner (i.e., col. 4, ll. 8-12) does not relate to an orifice located on the valve stem as claimed but rather within the interior of the aerosol container (App. Br. 6, Reply Br. 2-3). Significantly, the Examiner does not respond to the above argument with any reasonable specificity (see Ans. 8-10). Based on the record before us, the Examiner has failed to establish that Spitzer's container includes a valve stem having at least one orifice with a diameter of at least about 660 µm as required by the independent claims. It follows that the § 103 rejection of claims 1-21 will not be sustained. The decision of the Examiner is affirmed-in-part. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART cam Copy with citationCopy as parenthetical citation