Ex Parte 6632785 et al

Board of Patent Appeals and Interferences

Jan 13, 2009

90006994 (B.P.A.I. Jan. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte UNILEVER HOME & PERSONAL CARE USA,
Appellant
____________________

Appeal 2008-5187
Reexamination Control 90/006,994
U.S. Patent 6,632,785 B21
Technology Center 3900
____________________

Decided: January 13, 2009
____________________

Before EDWARD C. KIMLIN, CAROL A. SPIEGEL, and ROMULO H.
DELMENDO, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL
I. Statement of the Case
This is an appeal under 35 U.S.C. §§ 134 and 306 from an Examiner’s
final rejection of claims 1, 2, 4-19, and 21-38, all of the pending claims. We
have jurisdiction under 35 U.S.C. § 306. We AFFIRM.

1 U.S. Patent 6,632,785 B2 (“the 785 patent”), Water Soluble Sachet With a
Dishwasher Composition, issued 14 October 2003, to Natasha Pfeiffer,
Naresh Dhirajlal Ghatlia, and Isaac Israel Secemski, based on application
10/264,996, filed 4 October 2002, which a continuation of application
09/810,106, filed 16 March 2001.
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The subject matter on appeal is directed to water soluble sachets
comprising dishwashing compositions that are aqueous gels comprising
about 15 to about 80 % by weight water and use thereof. Claims 1, 6, 13,
19, 30, and 36 are illustrative and read as follows (Br.2 20-22, 24, 26, and
27, bracketing and underlining deleted):
1. A water soluble sachet comprising a
dishwashing composition wherein the dishwashing
composition comprises an encapsulated bleach and
the dishwashing composition is a gel that is from
about 15% to about 80% by weight water.
30. The water soluble sachet according to claim
1 wherein the gel is thickened with a polymeric
thickener.
36. The water soluble sachet according to claim
1 wherein the gel does not require solid dispersed
particle to thicken.
6. A water soluble sachet comprising a
dishwashing composition having:
(a) a polymer having a weight average molecular
weight of greater than about 2,000 and comprising
a positive charge; and
(b) a water soluble polymer that reduces phosphate
scale formation, a compound that reduces
carbonate scale formation, or both
wherein the dishwashing composition is a gel that
is from about 15% to about 80% by weight water.
13. A package comprising:
a water soluble sachet comprising a dishwashing
composition wherein the dishwashing composition

2 Brief for Appellants Responsive to Notification Mailed May 11, 2007 filed
8 June 2008 (“Br.”).
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is a gel which comprises an encapsulated bleach
and from about 15% to about 80% by weight
water.
19. A method for minimizing spot and film
formation, and phosphate and/or carbonate scale
formation on glassware being cleaned, comprising
the steps of:
(a) inserting a water soluble sachet comprising a
dishwashing composition comprising a polymer
comprising a positive charge, and a water soluble
polymer that reduces phosphate scale formation, a
compound that reduces carbonate scale formation,
or both, the dishwashing composition being a gel
composition from about 15% to 80% by weight
water into a dishwashing machine;
(b) allowing the water soluble sachet to dissolve to
release the dishwashing composition; and
(c) subjecting the glassware to the dishwashing
composition, the gel not requiring solid dispersed
particle to thicken.
The Examiner has rejected claims 1, 2, 4-19, and 21-38 as
unpatentable under 35 U.S.C. § 103(a) over the combined teachings of
Pardo,3 Tartakovsky,4 and Kamel5 (Ans.6 5-9); and, claims 15-19, 21-27, and
36-38 under 35 U.S.C. § 112, first paragraph (lack of original descriptive
support) (Ans. 10).

3 Canadian Patent 1,112,534, Detergent Article for Use in Automatic
Dishwasher, issued 17 November 1981, to John Pardo (“Pardo”).
4 International Patent Application WO 99/58633, Machine Dishwashing
Compositions and Rinse Aid Composition, published 18 November 1999, by
Tartakovsky et al. (“Tartakovsky”).
5 U.S. Patent 5,230,822, Wax-Encapsulated Particles, issued 27 July 1993, to
Kamel et al. (“Kamel”).
6 Examiner’s Answer mailed 23 June 2007 (“Ans.”).
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The Examiner maintains the dishwashing gel composition of the
claims reads on the dishwashing paste composition of Pardo based on the
their respective definitions of “gel” and “paste.” The Examiner further
maintains it is within ordinary skill in the art to include additives, such as
encapsulated bleach, anti-scalants, etc. in the dishwashing composition of
Pardo as suggested by Pardo, Tartakovsky, and Kamel for their known and
expected benefits.
The Examiner also maintains the 785 patent, as originally filed, does
not teach or disclose dishwashing compositions excluding solid particle
thickeners.
Appellant argues that “gel” is not synonymous with “paste.”
Appellant further argues the preferred compositions of Pardo are pastes
comprising anhydrous solvents, viscosities in the hundreds of thousands, and
particulate thickeners. According to Appellant, it is not “trivial” to combine
the recited additives into an aqueous gel in a water soluble sachet.
Appellant also argues that support for dishwashing compositions
excluding solid particle thickeners is found at column 12, line 65, to column
13, line 9, as well as in Examples 1-9 of the 785 patent.
Therefore, at issue is whether Appellant has shown that the Examiner
erred (i) in concluding the subject matter of claims 1, 2, 4-19, and 21-38
would have been obvious over the combined teachings of Pardo,
Tartakovsky, and Kamel, and (ii) in finding lack of original descriptive
support for dishwashing compositions which do not require solid particle
thickeners as recited in claims 15-19, 21-27, and 36-38.

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II. Findings of Fact (“FF”)
The following findings of fact, and those set forth in the Discussion,
are supported by a preponderance of the evidence of record.
A. The 785 patent under reexamination
[1] The 785 patent broadly describes a water soluble sachet containing
a dishwashing composition in the form of a gel (785 patent 2:58-
3:4; 4:40-45; 14:47-51; 16:13-17).
[2] The 785 patent defines “gel” to mean “any liquid having a
viscosity of greater than about 100 cps and less than about 45,000
cps, measured at a shear rate of 1/s at ambient temperature” (785
patent 3:27-30).
[3] In one embodiment, the gel contains an encapsulated bleach (785
patent 2:58-61).
[4] In another embodiment, the gel contains (a) a polymer having a
weight average molecular weight of greater than about 2,000 and
comprising a positive charge (i.e., cationic or amphoteric); and, (b)
a water soluble polymer that reduces phosphate scale formation, a
compound that reduces carbonate scale formation, or both (785
patent 2:62-3:4).
[5] The water soluble sachet is preferably made of water-soluble resins
including polyvinyl alcohol, polyethylene oxide, or methyl
cellulose (785 patent 3:33-54).
[6] The bleach is typically encapsulated in a wax outer shell (clad),
e.g., a paraffin wax, which releases the bleach during an automatic
dishwashing wash cycle, but not before (785 patent 10:25-42).
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[7] Preferred cationic or amphoteric polymers contain a cationic
monomer unit having the formula R2C═CR2, wherein each R is
independently a hydrogen, derivatized hydroxy, C1 to C30 straight
or branched alkyl group, aryl, aryl substituted C1-30 straight or
branched alkyl radical, or a polyoxyalkalene condensate of an
aliphatic moiety, a heteroatomic organic group comprising at least
one positively charged group without a charged nitrogen,
quaternized nitrogen atom or at least one amine group comprising
a positive charge over a portion of the pH interval 2 to 11, with the
proviso that at least one R group is a heteroatomic organic group
that has a positive charge without a charged nitrogen, a quaternized
nitrogen atom group or an amine group comprising a positive
charge (785 patent 5:34-6:10).
[8] Preferred water soluble polymers that reduce phosphate scale
formation include Acumer 3100 and Alcosperse 240 sold by Rohm
& Haas and Alco Chemical, respectively (785 patent 8:50-9:9).
[9] Preferred compounds that reduce carbonate scale formation include
polyacrylates and copolymers thereof having a weight average
molecular weight from about 1,000 to about 400,000 (785 patent
9:26-29).
[10] The gel typically includes water, thickening agent, bleach,
buffering agent, and builder (785 patent 4:50-52).
[11] Illustrative thickening agents include cross-linked polyacrylic acid-
type thickening agents, e.g., Carbopol 627, 941, and 980, used in
Examples 1-9 (785 patent 12:65-13:3; 15:17-48).
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[12] Preferred surfactants include surface active compounds with at
least one uncharged hydrophilic substituent and the Plurafac series
of surfactants sold by BASF Corporation (785 patent 13:20-63).
B. Pardo
[13] Pardo discloses a water soluble film packet (sachet) containing a
dishwashing composition in the form of a paste (Pardo 4:10-15).
[14] Pardo defines “paste” “to encompass paste, gel, and viscous liquid
detergent compositions having a minimum viscosity of at least
about 1000 centipoise, preferably at least about 2,000 centipoise”
(Pardo 5:27-6:2).
[15] According to Pardo, “[t]hese paste form detergent compositions
generally have viscosities of about 5,000 centipoise, . . .” (Pardo
5:24-25).
[16] The dishwashing composition may include surfactants (Pardo 7:12-
16:6), suds-regulating agents (id. 16:7-19:6), enzymes (id. 19:7-
21:16), and other conventional additives (id. 21:17-30).
[17] The dishwashing composition may include up to about 60% of a
solvent, solubilizing material, or suspending agent, such as water,
although polyethylene glycol (mw 400), triethanolamine, methyl
esters, and C12-13 alcohols are preferred (Pardo 22:12-21).
[18] In addition, “aqueous solutions or dispersions may be thickened or
made thixotropic by use of conventional agents such as
methylcellulose, carboxymethylcellulose, starch,
polyvinylpyrrolidone, gelatin, colloidal silica, natural or synthetic
clay materials and the like” (Pardo 22:23-27).
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[19] Preferred materials for making the water soluble sachet packet
include polyvinyl alcohol, polyethylene oxide, and methylcellulose
(Pardo 24:22-23).
C. Tartakovsky
[20] Tartakovsky discloses dishwashing or rinse aid compositions for
reducing spotting and filming on glassware (Tartakovsky 1:10-12;
5:17-21).
[21] According to Tartakovsky, “carbonate and phosphate salts, often
detergent ingredients, are known to contribute to the formation of
hard water films on glasses” (Tartakovsky 1:33-36).
[22] Further according to Tartakovsky, polyacrylates are known for use
in reducing spotting and filming in chlorine-free dishwashing
compositions (Tartakovsky 5:5-8).
[23] Tartakovsky discloses that certain water soluble cationic or
amphoteric polymers can be incorporated into dishwashing
compositions to reduce spotting and filming on glassware
(Tartakovsky 5:17-21).
[24] The cationic or amphoteric polymers include cationic monomeric
unit having the formula HR2C═CR1R3, wherein R1 is hydrogen,
hydroxyl, or a C1 to C30 straight or branched alkyl radical; R2 is
hydrogen, a C1 to C30 straight or branched alkyl substituted aryl,
aryl substituted C1 to C30 straight or branched alkyl radical or a
polyoxyalkene condensate of an aliphatic radical, and R3 is a
heteroatomic organic radical containing either one or more
quaternerized nitrogen atoms or one or more amine groups having
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a pKa of about 6 or greater and a positive charge over a portion of
the pH interval pH 2 to 11 (Tartakovsky 6:14-7:4).
[25] The dishwashing or rinse aid compositions of Tartakovsky also
contain conventional additives, such as builders, enzymes,
buffering agents, bleach, and surfactants (Tartakovsky 18:8-41:22).
[26] Oxygen bleaching agents “may be encapsulated by any number of
encapsulation techniques” (Tartakovsky 22:33-35).
D. Kamel
[27] Kamel discloses encapsulating core materials, e.g., bleach,
enzymes, and surfactants, in wax, e.g., paraffin wax, to improve
their stability in aqueous environments, e.g., in cleaning products
(Kamel 1:11-15; 4:45-58).
[28] According to Kamel, “[w]ax-encapsulated chlorine bleach is
especially suitable for automatic dishwashing liquid or ‘gel’
detergent products . . .” (Kamel 15:28-32).
[29] The cleaning compositions may also include builders, surfactants,
thickeners and stabilizers (Kamel 16:1-21:62).
[30] According to Kamel,
[f]or liquid formulations with a “gel”
appearance and rheology, . . . a chlorine stable
polymeric thickener is particularly useful. . .
.Acrylic acid polymers that are cross-linked. . . and
sold under the trade name “Carbopol” have been
found to be effective for production of clear gels,
and Carbopol 940 and 617, . . . is particularly
preferred for maintaining high viscosity with
excellent chlorine stability over extended periods
(Kamel 21:27-38).
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III. Discussion
A. Rejection of claims 1, 2, 4-19, and 21-38 under
§103 (a)
1. The Examiner’s findings and conclusion
The Examiner found Pardo discloses the subject matter of claims 1, 2,
4-19, and 21-38 but for disclosing a detergent composition containing an
encapsulated bleach, a polymer comprising a positive charge, a phosphate
scale reducing water-soluble polymer, and a carbonate scale reducing water
soluble polymer (Ans. 5-7). The Examiner found Tartakovsky discloses
detergent compositions incorporating water soluble cationic or amphoteric
polymers in conjunction with conventional ingredients, such as surfactants,
bleaching systems, anti-scalants, etc. (Ans. 7-8). The Examiner found
Tartakovsky discloses that bleaching agents may be directly incorporated or
encapsulated as a core in a paraffin wax (Ans. 7). The Examiner found
Kamel discloses core materials, e.g., bleach, enzymes, and surfactants,
encapsulated in wax form particles which remain stable in liquid and
granular cleaning products (Ans. 8). The Examiner found Kamel also
discloses (i) wax-encapsulated chlorine bleach is especially suitable for
liquid or “gel” dishwashing compositions and (ii) thickeners, e.g., acrylic
acid polymers, are desirable for liquid cleaning compositions (Ans. 8).
The Examiner concluded it would have been obvious to one of
ordinary skill in the art to include encapsulated bleach, water soluble
cationic or amphoteric polymer having a cationic monomer unit, and anti-
scalant as taught by Tartakovsky and Kamel into the dishwashing
composition of Pardo to provide the claimed dishwashing composition,
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package, and method of use with a reasonable expectation of success of
obtaining a dishwashing device which effectively cleans and reduces
spotting and filming on glassware cleaned in an automatic dishwashing
machine (Ans. 9).
2. Appellant’s position
Appellant argues a paste form detergent compositions is not a gel
from detergent composition, regardless of what Pardo says the term “paste”
encompasses (Br. 11-13). Appellant points out, while Pardo mentions using
water as a solvent, Pardo stresses that its preferred compositions are
essentially anhydrous (Br. 13-14). In addition, while Pardo mentions that
detergent compositions can have viscosities of at least about 1,000 cps,
Examples 1-3 of Pardo describe essentially anhydrous paste form detergents
having viscosities of 500,000 to 1 million cps (Br. 14-15). Appellant further
points out that Example 4 of Pardo describes a gritty concentrated dispersion
in a water soluble sachet (Br. 15). According to Appellant, “[t]he gel
defined in the present invention . . . is not gritty and does not require solid
dispersed particle to thicken” (Br. 15, original emphasis). In other words,
Pardo “requires solid particles to thicken when water is used within a sachet
so that a concentrated dispersion may be made” (Br. 17).
Appellant further argues that neither Tartakovsky nor Kamel teach or
suggest the claimed subject matter or cure the deficiencies of Pardo (Br. 16-
17). According to Appellant, “[i]t is not trivial to add a water soluble
polymer to reduce phosphate scale formation into an aqueous gel within a
water soluble sachet” (Br. 16). Appellant also contends that none of the
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applied prior art suggests the specific thickeners of the claimed invention
(Br. 17).
3. Legal principles
Claims in reexamination “will be given their broadest reasonable
interpretation.” In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984).
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 3
(1966). Facts relevant to a determination of obviousness include (1) the
scope and content of the prior art, (2) any differences between the claimed
invention and the prior art, (3) the level of skill in the art and (4) any
relevant objective evidence of obviousness or non-obviousness. KSR, 127
S.Ct. at 1734; Graham, 383 U.S. at 17-18.
In determining whether obviousness is established by combining the
teachings of the prior art, “the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). In addition, a reference disclosure
is not limited only to its preferred embodiments, but is available for all that it
discloses and suggests to one of ordinary skill in the art. In re Lamberti, 545
F.2d 747, 750 (CCPA 1976); In re Mills, 470 F.2d 649, 651 (CCPA 1972).
Furthermore, a person having ordinary skill in the art uses known elements
and process steps for their intended purpose. Anderson's-Black Rock, Inc. v.
Pavement Salvage Co., 396 U.S. 57, 62-63 (1969); Sakraida v. AG Pro, Inc.,
425 U.S. 273, 282 (1976); Dunbar v. Myers, 94 U.S. 187, 195 (1876).
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Unsupported attorney argument is entitled to little, if any, weight and
cannot take the place of evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984).
4. Analysis
While Appellant points out what certain claims recite, Appellant has
not separately argued any specific claim (Br. 9-17). Accordingly, we
confine our discussion of the rejection to the issues raised by Appellant’s
arguments. See 37 C.F.R. § 41.37(c)(1)(vii).
Here, the Examiner has provided a sufficient factual basis to support a
prima facie conclusion of obviousness. Contrary to Appellant’s arguments,
the disclosure of the references, particularly Pardo, is not limited to its
preferred embodiments. Pardo discloses a water soluble sachet containing a
dishwashing composition in the form which meets the 785’s definition of a
gel (FF 2 and 13-15). While not a preferred embodiment, Pardo nonetheless
discloses compositions which may contain up to about 60% by weight water
(FF 17). Furthermore, as noted by the Examiner (Ans. 12), Pardo does not
require solid particles to thicken its detergent compositions. Rather, Pardo
states conventional thickeners, e.g., methylcellulose, polyvinylpyrrolidone,
and carboxymethylcellulose, might be used (FF 18). Indeed, Kamel
discloses that cross-linked acrylic acid polymers, e.g., Carbopol 940, have
been found to be effective for liquid formulations with “gel” appearance and
rheology (FF 30). Moreover, Pardo, Tartakovsky, and Kamel each suggest
incorporating various additives into dishwashing compositions for their
known functions, e.g., thickening, bleaching, and reducing spotting and
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filming on glassware (FF 16-18, 22-25, and 29-30). Therefore, Appellant’s
arguments to the contrary are not persuasive of Examiner error.
Notably, Appellant did not argue that it would have been nonobvious
to incorporate conventional additives into aqueous dishwashing gel
compositions within water soluble sachets. Rather, Appellant argues it is not
a “trivial” matter to do so. However, as noted by the Examiner (Ans. 14),
Appellant has neither argued nor presented evidence showing that it would
have been outside of ordinary skill in the art to incorporate conventional
additives into aqueous dishwashing gel compositions within water soluble
sachets. Therefore, this argument is not persuasive of Examiner error.
Similarly, the argument that the prior art failed to suggest the specific
thickeners used in the gel compositions of the claims is also unpersuasive.
As noted by the Examiner (Ans. 8), Kamel expressly teaches using cross-
linked polyacrylic acid type thickeners not only as recited in claims 30-32,
for example, but also as exemplified in the 785 patent, e.g., Carbopol 940
(FF 11 and 30).
Finally, we note that Appellant has not submitted rebutted evidence of
nonobviousness with its briefing.
Based on the foregoing, we sustain the rejection of claims 1, 2, 4-19,
and 21-38 under § 103(a) over the combined disclosures of Pardo,
Tartakovsky, and Kamel.
B. Rejection of claims 15-19, 21-27, and 36-38 under § 112, ¶ 1
1. The Examiner’s position
The Examiner has rejected claims 15-19, 21-27, and 36-38 for failing
to comply with the written description requirement of § 112 (Ans. 10).
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Specifically, the Examiner complains that the specification of the 785
specification does not teach or disclose a composition which is open to the
inclusion of additional additives, but for “solid particles to thicken” as
recited in claims 15-19, 21-27, and 36-38 (Ans. 10 and 15).
2. Appellant’s position
Appellant directs attention to column 12, line 65, through column 13,
line 9, as well as Examples 1 through 9 of the 785 patent specification for
support (Br. 17-18).
3. Legal principles
The name of the game is the claim. In re Hiniker Co., 150 F.3d 1367,
1369 (Fed. Cir. 1998).
"The function of the description requirement [of the first paragraph of
35 U.S.C. 112] is to ensure that the inventor had possession, as of the filing
date of the application relied on, of the specific subject matter later claimed
by him." In re Wertheim, 541 F.2d 257, 262 (CCPA 1976). The written
description requirement of § 112 is satisfied if "the disclosure of the
application as originally filed reasonably conveys to the artisan that
[Appellant] had possession at time of the later claimed subject matter." In re
Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). Precisely how close the
original description must come to comply with the description requirement
of § 112 must be determined on a case-by-case basis.
4. Analysis
We agree with Appellant that Examples 1-9 of the 785 patent
specification illustrate aqueous dishwashing gel products containing
crosslinked polyacrylic acid type thickeners, not solid dispersed particulate
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thickeners (FF 11). However, claims 15-19, 21-27, and 36-38 recite gel
dishwashing compositions “not requiring solid dispersed particle to thicken.”
None of these claims affirmatively exclude the presence of solid dispersed
particulate thickeners in the recited gel formulation – they just do not require
them. Accordingly, we reverse the rejection of claims 15-19, 21-27, and 36-
38 under § 112, first paragraph.
IV. Order
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner rejecting claims 1, 2, 4-
19, and 21-38 as unpatentable under 35 U.S.C. § 103(a) over the combined
teachings of Pardo, Tartakovsky, and Kamel is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner rejecting
claims 15-19, 21-27, and 36-38 is REVERSED; and
FURTHER ORDERED that 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

ack

cc:

Edward A. Squillante, Jr., Esq.
UNILEVER INTELLECTUAL PROPERTY GROUP
700 Sylvan Avenue
Bldg C2 South
Englewood Cliffs, NJ 07632

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Third Party Requester:

Frederick H. Rabin
FISH & RICHARDSON, PC
225 Franklin Street
Boston, MA 02110