The Procter & Gamble Company

Patent Trials and Appeals Board

Jul 23, 2021

2021000068 (P.T.A.B. Jul. 23, 2021)

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.
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Application 15/198,306

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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;
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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.
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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
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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
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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
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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
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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.
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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