The Procter & Gamble CompanyDownload PDFPatent Trials and Appeals BoardJul 23, 20212021000068 (P.T.A.B. Jul. 23, 2021) 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. 15/198,306 06/30/2016 Jiten Odhavji Dihora 13940 9421 27752 7590 07/23/2021 THE PROCTER & GAMBLE COMPANY GLOBAL IP SERVICES CENTRAL BUILDING, C9 ONE PROCTER AND GAMBLE PLAZA CINCINNATI, OH 45202 EXAMINER RONEY, CELESTE A ART UNIT PAPER NUMBER 1612 NOTIFICATION DATE DELIVERY MODE 07/23/2021 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 JITEN ODHAVJI DIHORA, MARC ADAM FLICKINGER, JIANJUN JUSTIN LI, and JOHAN SMETS1 Appeal 2021-000068 Application 15/198,306 Technology Center 1600 Before DONALD E. ADAMS, ERIC B. GRIMES, and TIMOTHY G. MAJORS, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a personal care composition, which have been rejected based on obviousness and obviousness-type double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM the obviousness-type double patenting rejections. 1 Appellant identifies the real party in interest as The Procter & Gamble Company. Appeal Br. 1. We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appeal 2021-000068 Application 15/198,306 2 STATEMENT OF THE CASE The Specification states that consumer products often contain fragrances, but “because of the volatility of many fragrances and/or habituation, a consumer may be unable to notice the fragrance shortly after using/applying the consumer product, potentially leading the user to believe the benefits are dissipating or have dissipated.” Spec. 1:10–15. The Specification states that [i]t has surprisingly been found that including a first population of microcapsules and a second population of microcapsules where the first and second populations differ in fracture strengths may provide multiple blooms of fragrance. It has also been surprisingly found that varying the ratio of the partitioning modifier to the perfume oils within the core of the microcapsule can affect the fracture strength of the microcapsules. Id. at 3:8–14. The Specification also states that an oil phase that includes highly polar materials can lead to microcapsules with a relatively thin shell, but “[i]ncorporating a partitioning modifier to adjust the polarity of the core may alter the partitioning coefficient of the polar materials, allowing for the establishment of a thicker, well defined shell.” Id. at 4:8–12. “[E]xamples of partitioning modifiers include isopropyl myristate, mono-, di-, and triesters of C4-C24 fatty acids, castor oil,” etc. Id. at 11:8–10. Claims 1, 3, 5, 7–11, 14, and 17–22 are on appeal. Claim 1, reproduced below, is illustrative: 1. A consumer product comprising a composition, the composition comprising: an adjunct material; Appeal 2021-000068 Application 15/198,306 3 a first population of microcapsules, the first population having a first median volume weighted particle size and comprising microcapsules comprising a partitioning modifier and a first perfume oil at a first weight ratio, wherein the first weight ratio is a weight ratio of from 2:3 to 3:2 of the partitioning modifier to the first perfume oil; and a second population of microcapsules, the second population having a second median volume weighted particle size and comprising microcapsules comprising the partitioning modifier and a second perfume oil at a second weight ratio, wherein the second weight ratio is a weight ratio of greater than 0 to less than 2:3 of the partitioning modifier to the second perfume oil; wherein the first median volume weighted particle size and the second median volume weighted particle size are different; and wherein the composition is a personal care composition. The claims stand rejected2 as follows: Claims 1, 3, 5, 7–11, 14, and 17–22 under 35 U.S.C. § 103 as obvious based on Dihora3 (Final Action 3); Claims 1, 3, 5, 7–11, 14, and 17–22, provisionally, for obviousness- type double patenting based on claims 33–52 of application 16/246,568 (Final Action 8); 2 The Examiner also rejected claims 1, 3, 5, 7–11, 14, and 17–22, provisionally, for obviousness-type double patenting based on application 14/045,661 (Final Action 8). However, USPTO records indicate that the ’661 application went abandoned on Jan. 13, 2020, so this provisional rejection is moot. 3 Dihora et al., US 2011/0268802 A1, published Nov. 3, 2011. Appeal 2021-000068 Application 15/198,306 4 Claims 1, 3, 5, 7–11, 14, and 17–22 for obviousness-type double patenting based on claims 1–9, 11, and 12 of U.S. Patent 10,155,919 (Final Action 9); and Claims 1, 3, 5, 7–11, 14, and 17–22 for obviousness-type double patenting based on claims 1–3 and 8–11 of U.S. Patent 9,186,642 (Final Action 9). OPINION Obviousness-Type Double Patenting Claims 1, 3, 5, 7–11, 14, and 17–22 stand provisionally rejected for obviousness-type double patenting based on claims 33–52 of the ’568 application. Claims 1, 3, 5, 7–11, 14, and 17–22 also stand rejected for obviousness-type double patenting based on claims 1–9, 11, and 12 of the ’919 patent and claims 1–3 and 8–11 of the ’642 patent. Appellant does not present any arguments in the Appeal Brief disputing the merits of these rejections. Therefore, we affirm them. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008): When the appellant fails to contest a ground of rejection to the Board, . . . the Board may treat any argument with respect to that ground of rejection as waived. In the event of such a waiver, the PTO may affirm the rejection of the group of claims that the examiner rejected on that ground without considering the merits of those rejections. Obviousness Claims 1, 3, 5, 7–11, 14, and 17–22 stand rejected as obvious based on Dihora. The Examiner finds Dihora discloses “a process of making a composition, comprising combining an adjunct ingredient and particles, each Appeal 2021-000068 Application 15/198,306 5 of said particles independently having a particle size of from about 2 microns to about 80 microns, each particle comprising (e.g., a first and second population of microcapsules[)].” Final Action 3 (citing Dihora ¶ 53, claim 7). The Examiner finds that Dihora’s microcapsules comprise “a) a core that comprised, based on total particle weight, from about 6% to about 95%, of a benefit agent (a perfume oil . . .) and from about 5% to about 94%, of a partitioning modifier; and b) a shell that encapsulated said core, to form a consumer product.” Id. (citing Dihora ¶ 29). Regarding the requirement of claim 1 for two populations of microcapsules with weight ratios of partitioning modifier to perfume oil within specific ranges, and different median volume weighted particle sizes, the Examiner reasons that “Dihora disclosed particle sizes (microcapsules) at about 2 microns to about 80 microns, each particle comprising perfume oil at 6–95% and a partitioning modifier at 5–94%,” and “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’, a prima facie case of obviousness exists.” Id. at 4. Appellant argues that “the Office Action cites claim 7 and sections [0029] and [0053]” of Dihora but “none of the cited sections provide support to the Office Action’s assertion Dihora et al. discloses the present invention comprising a first and second microcapsule population having differing weight ratios of partitioning modifier to perfume oil.” Appeal Br. 3. Appellant argues that Dihora does not disclose two populations of microcapsules having the different characteristics recited in claim 1, and “[t]he only disclosure for two populations of microcapsules having the claimed characteristics comes from the present invention, and not Dihora et Appeal 2021-000068 Application 15/198,306 6 al.” Id. at 4. Appellant thus argues that the rejection is based on hindsight. Id. at 4–5. We agree with Appellant that the Examiner has not persuasively shown that the claimed composition would have been obvious based on Dihora, which discloses “encapsulated benefit agents [and] compositions comprising such encapsulated benefit agents . . . [that] provide formulators with additional perfume delivery opportunities.” Dihora ¶ 8. Dihora discloses consumer products comprising its particles. Id. ¶ 64. Dihora describes a process of making a composition comprising combining an adjunct ingredient and . . . particles, each of said particles independently having a particle size of from about 2 microns to about 80 microns, from about 5 microns to about 50 microns or even from about 10 microns to about 30 microns, each particle comprising: a) a core that comprises, based on total particle weight, from about 6% to about 99.9%, from about 11% to about 85%, or from about 50% to about 75%, of a benefit agent and from about 5% to about 94%, from about 15% to about 89%, or even from about 25% to about 50% of a partitioning modifier and/or density modifier; and b) a shell . . . comprising . . . a polyacrylate to form a consumer product. Id., claim 7. Dihora also states that “said benefit agent may comprise: a.) a perfume oil; and b.) a partitioning modifier.” Id. ¶¶ 29–31. Regarding claim 1’s requirement for two populations of microcapsules that differ in median volume weighted particle size and in the ratio of partitioning modifier to perfume oil, the Examiner points to the following disclosure in Dihora: “The reaction product of the first Appeal 2021-000068 Application 15/198,306 7 composition and second composition results in the formation of a population of microcapsules having a microcapsule wall of low leakage of the core material.” Id. ¶ 53 (emphasis added). As Appellant has pointed out, however, Dihora’s paragraph 53 expressly describes “a population” of microcapsules, not two populations that differ in median particle size and partitioning modifier:perfume oil ratio. The Examiner reasons that “Dihora’s consumer product comprising individual microcapsules ranging in amounts and sizes, reads on the claimed first and second population of microcapsules having a first and a second median particle size.” Ans. 9. As we understand it, the Examiner’s position is that Dihora’s composition will comprise microcapsules that, individually, differ in size and therefore can be divided into groups that have different median particle sizes. The population described by Dihora, however, will have a single “median volume weighted particle size,” as recited in claim 1, but claim 1 requires two populations having different median volume weighted particle sizes. In other words, Dihora describes a population with particle sizes that can be mapped to a bell-shaped curve, whereas claim 1 requires a composition with two populations of particles, the sizes of which would form a curve shaped like an “M” instead of a bell. With regard to claim 1’s requirement for two populations of microcapsules that differ in the ratio of partitioning modifier to perfume oil, the Examiner reasons that Dihora’s partitioning modifier and perfume oil, each ranging in amounts and sizes, reads on the claimed first and second weight ratios. Specifically, Dihora’s partitioning modifier at from Appeal 2021-000068 Application 15/198,306 8 about 5–94%, 15–89% or even from about 25–50%; and, perfume oil, at from about 6–95%, 11–85% or from about 50– 75%, overlaps the claimed first weight ratio of partitioning modifier to perfume oil at between 2:3 to 3:2, and second weight ratio of partitioning modifier to perfume oil at greater than 0 to less than 2:3. Ans. 10. Again, however, while Dihora might have led those skilled in the art to choose an amount of partitioning modifier and perfume oil for inclusion in its microcapsules that would fall within one of the ratios recited in claim 1, the Examiner has not persuasively explained what disclosure in Dihora would have suggested a composition comprising two populations of microcapsules with different ratios of partitioning modifier to perfume oil. We therefore reverse the rejection of claim 1, and dependent claims 3, 5, 7–11, 14, and 17–22, under 35 U.S.C. § 103 based on Dihora. Appeal 2021-000068 Application 15/198,306 9 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 5, 7– 11, 14, 17– 22 Provisional Obviousness-type Double Patenting 1, 3, 5, 7– 11, 14, 17– 22 1, 3, 5, 7– 11, 14, 17– 22 Obviousness-type Double Patenting, ’919 Patent 1, 3, 5, 7– 11, 14, 17– 22 1, 3, 5, 7– 11, 14, 17– 22 Obviousness-type Double Patenting, ’642 Patent 1, 3, 5, 7– 11, 14, 17– 22 1, 3, 5, 7– 11, 14, 17– 22 103 Dihora 1, 3, 5, 7– 11, 14, 17– 22 Overall Outcome 1, 3, 5, 7– 11, 14, 17– 22 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation