Ex Parte Kuhlman et al

Patent Trial and Appeal Board

Apr 16, 2013

11726457 (P.T.A.B. Apr. 16, 2013)

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

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