Jonathan Robert. Cetti et al.Download PDFPatent Trials and Appeals BoardSep 6, 201914032868 - (D) (P.T.A.B. Sep. 6, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 14/032,868 09/20/2013 Jonathan Robert CETTI 12603M 4465 27752 7590 09/06/2019 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 EXAMINER AL-AWADI, DANAH J ART UNIT PAPER NUMBER 1615 NOTIFICATION DATE DELIVERY MODE 09/06/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): centraldocket.im@pg.com mayer.jk@pg.com pair_pg@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JONATHAN ROBERT CETTI, STEVEN EDWARD WITT, JITEN ODHAVJI DIHORA, and JIANJUN JUSTIN LI ____________ Appeal 2019-003523 Application 14/032,868 Technology Center 1600 ____________ Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW, Administrative Patent Judges. KATZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2019-003523 Application 14/032,868 2 Introduction Appellants1 seek our review, under 35 U.S.C. § 134(a), of the Examiner’s decision to reject claims 1, 2, 4–19, and 21 (Appeal Brief filed October 4, 2018 (“App. Br.”) 2–9.)2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appellants’ Specification provides anhydrous compositions having microcapsules and nonvolatile oils. (Specification dated September 20, 2013 (“Spec.”) 1:5–7.) The Specification discloses that too much non- volatile oil may degrade the performance of microcapsules in an anhydrous composition. (Id. at 2:18–20.) Non-volatile oils may make the microcapsules less likely to rupture and may suppress the release of volatile components contained in the microcapsules, thereby decreasing the effectiveness of the microcapsules as a delivery system. (Id. at 2:21–3:8.) To address this problem, “the percentage of non-volatile oils in the composition can be limited to certain ranges, which provide enough oil to still offer product benefits, but not so much that . . . the oil substantially degrades the performance of the microcapsules.” (Id. at 3:9–12.) Appellants’ claim 1 recites: An anhydrous composition, comprising: a plurality of microcapsules, wherein the microcapsules comprise a core material and a shell encapsulating the core material; and 1 Appellants report that the real party in interest is The Procter & Gamble Company. (App. Br. 1). 2 Claim 20 was withdrawn. Appeal 2019-003523 Application 14/032,868 3 from 3% to 30%, by total mass of the anhydrous composition, of non-volatile oils; wherein the core material comprises a first fragrance; wherein the shell comprises a polyacrylate material. (App. Br. 13.) The Examiner rejects the claims as follows (Final Office Action mailed May 4, 2018 (“Final Act.”)): Claims Grounds References Final Office Action Citation 1, 2, and 4–19 35 U.S.C. § 103 Chan3 and Lee4 3–5 1, 2, and 4–19 35 U.S.C. § 103 Cropper5 and Lee 5–6 1 and 21 35 U.S.C. § 103 Chan, Lee, and Glenn6 6–7 1 and 21 35 U.S.C. § 103 Cropper, Lee, and Glenn 7–9 1, 2, 4–19, and 21 Obviousness- Type Double- Patenting Claims 1–18 of Application No. 14/032,888 9–11 Analysis Claims 1, 2, and 4–19 The Examiner finds that Chan teaches an anhydrous composition containing microcapsules having a fragrance core material and an encapsulating shell. (Final Act. 3, citing Chan ¶¶ 20, 22.) Chan teaches anhydrous compositions containing from 3% to 30% non-volatile oils, e.g., 3 Chan et al., US 2012/0076839 A1, published March 29, 2012. 4 Lee et al., US 2007/0078071 A1, published April 5, 2007. 5 Cropper et al., US 2010/0104612 A1, published April 29, 2010. 6 Glenn, Jr. et al., US 2012/0053108 A1, published March 1, 2012. Appeal 2019-003523 Application 14/032,868 4 dimethicone. (Chan ¶ 161, Table 8, Examples 5, 8.) Chan teaches the microcapsule shell may be formed of an aminoplast resin. (Id. at Abstract, ¶ 21.) The Examiner acknowledges that Chan does not teach a microcapsule shell formed of a polyacrylate material. (Final Act. 4.) Alternatively, the Examiner finds that Cropper teaches an anhydrous composition containing an encapsulated fragrance and 10 to 20% non- volatile oils, e.g., dimethicone. (Final Act. 5, citing Cropper ¶¶ 54, 166.) Cropper teaches the fragrance is encapsulated in a shell formed from a synthetic polymer, such as a complex coacervate of gelatin. (Cropper ¶ 130.) The Examiner acknowledges that Cropper does not teach a microcapsule shell formed of a polyacrylate material. (See Final Act. 5.) The Examiner finds that Lee teaches anhydrous compositions containing spray-dried microcapsules made from encapsulating polymers that include aminoplasts, gelatin, or polyacrylates (Final Act. 4, citing Lee ¶¶ 44, 136.) The Examiner finds it would have been obvious to one of ordinary skill in the art to substitute known shell materials, such as a polyacrylate for other materials, such as aminoplast resins or gelatin. (Final Act. 4 and 5–6.) The Examiner finds that a person of skill in the art would have been motivated to modify Chan or Cropper with Lee because the materials are all taught as preferred shell materials and were known in the art for encapsulating fragrances. (See id.) Appellants argue there is no suggestion or motivation to modify Chan or Cropper with the polyacrylate shell of Lee. (App. Br. 2, 4.) Appellants argue that Lee does not teach microcapsules compatible “with the nature of the overall composition set forth in the claims,” i.e., the carrier having a non- Appeal 2019-003523 Application 14/032,868 5 volatile oil loading from 3% to 30%. (Id.) Appellants argue that therefore, “there is no motivation to bring in any teaching from Lee, neither is there any likelihood of success in making any combination involving Lee.” (Id.) We are not persuaded by Appellants’ argument. Lee teaches microcapsules containing fragrances for use in anhydrous personal care products. (Lee ¶ 136.) Lee further teaches that preferred encapsulating polymers include aminoplasts (as used in Chan), gelatin (as used in Cropper), and polyacrylates, among other materials. (Id. at ¶ 44.) In other words, the Examiner substitutes one known encapsulating polymer for another known in the art. “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Appellants do not provide any evidence that the claimed combination does more than yield a predictable result, or that a person of ordinary skill in the art would not have a reasonable expectation of success in combining the references given the express teachings of the prior art. “Attorneys’ argument is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). Appellants further argue that the Examiner has failed to consider the claimed anhydrous limitation in the combinations of Chan and Lee or Cropper and Lee. (App. Br. 3, 5.) Appellants argue that the anhydrous composition “requires the use of dry microcapsules.” (Id.) Appellants argue that “Lee relates to microcapsules in a spray dried water soluble carrier with Appeal 2019-003523 Application 14/032,868 6 no mention of the carrier having a non-volatile oil load of between 3 and 30% as required by the claims.” (Id.) We are not persuaded by Appellants’ argument. All of the references cited by the Examiner, including Lee, teach anhydrous compositions containing spray-dried microcapsules. (See Examiner’s Answer mailed January 11, 2019 (“Ans.”) 4–5.) It is not relevant that Lee does not disclose 3 to 30% of a non-volatile oil, because this limitation is taught by both Chan and Cropper. “[N]on-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. . . . [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, as identified by the Examiner, Lee explicitly states that “the high fragrance and/or benefit agent shelf life stability is made possible when spray-dried particles are placed in anhydrous bases with minimal leaching.” (Ans. 5, citing Lee ¶ 138.) Accordingly, the combined prior art teaches the “anhydrous limitation.” Appellants also argue that the proposed modification would change the principle of operation of the prior art invention being modified. (App. Br. 3–4, 5–6.) Particularly, Appellants argue “[t]he introduction of insufficiently dried microcapsules will yield the introduction of water into a previously . . . anhydrous composition defeating the intention of the claimed invention.” (Id.) We are not persuaded by Appellants’ argument. Appellants have not identified any disclosure in the prior art of “insufficiently dried Appeal 2019-003523 Application 14/032,868 7 microcapsules.” Moreover, Appellants have not provided any evidence that the prior art spray-dried microcapsules contain water such that the resulting composition would no longer be anhydrous. “Attorneys’ argument is no substitute for evidence.” Johnston, 885 F.2d at 1581. Rather, as discussed above, the prior art as a whole teaches anhydrous compositions containing spray-dried microcapsules compatible with the compositions. Accordingly, we are not persuaded that the Examiner erred. Appellants fail to raise persuasive arguments showing that the Examiner erred in rejecting claims 1, 2, and 4–19 as being obvious under 35 U.S.C. § 103. Claim 21 Claim 21 depends from claim 1 and further limits the polyacrylate material. The Examiner finds that Glenn teaches a polyacrylate microcapsule shell that is the reaction product of i) an oil soluble amine with ii) a multifunctional acrylate or methacrylate monomer, an oil soluble acid, and an initiator; in the presence of a water soluble or dispersible acrylic acid alkyl acid copolymer emulsifier. (Final Act. 6–8, citing Glenn ¶ 211.) The Examiner finds a person of ordinary skill in the art would have had a reasonable expectation of success in combining Chan or Cropper with Glenn as the references teach microcapsules containing encapsulated fragrance for deodorant compositions. (Id. at 7, 9.) Appellants argue that “nothing in Glenn provides an indication of microcapsules dried sufficiently to perform with success in an anhydrous composition.” (App. Br. 7–11.) Appeal 2019-003523 Application 14/032,868 8 We are not persuaded by Appellants’ argument. As discussed above, the cited references teach anhydrous compositions containing spray-dried microcapsules having a core fragrance. Appellants have not identified any teaching in the art or other evidence that the microcapsules would not be successfully incorporated into an anhydrous composition. After a prima facie case is made out, the burden shifts to the Appellants to show a difference between the prior art compounds and the claimed compound. The PTO lacks the resources to do comparisons. In re Best, 562 F.2d 1252, 1254–1255 (CCPA 1977). In the absence of evidence to the contrary, we are not persuaded that the Examiner erred. Appellants fail to raise persuasive arguments showing that the Examiner erred in rejecting claim 21 as being obvious under 35 U.S.C. § 103. Obviousness-Type Double Patenting The Examiner determines claims 1, 2, 4–19, and 21 are unpatentable over claims 1–18 of Application No. 14/032,888. (Final Act. 10.) Appellants do not address this rejection. In the absence of arguments against the rejection, we affirm it. See 37 C.F.R. § 41.37(c)(iv) (“[A]ny arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal”). Appeal 2019-003523 Application 14/032,868 9 Conclusion Upon consideration of the record and the reasons given, the rejections of claims 1, 2, 4–19, and 21 are sustained. Therefore, we affirm the decision of the Examiner. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED Copy with citationCopy as parenthetical citation