Ex Parte Adamy et al

Patent Trial and Appeal Board

May 18, 2016

13221983 (P.T.A.B. May. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/221,983 08/31/2011
45980 7590 05/20/2016
CHURCH & DWIGHT CO., INC.
Princeton North Technical Center
ATTN: PATENT GROUP
469 NORTH HARRISON STREET
PRINCETON, NJ 08543-5297
FIRST NAMED INVENTOR
Steven T. Adamy
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
99156 us 4540
EXAMINER
DELCOTTO, GREGORYR
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
05/20/2016 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):
JANET.RUBINSTEIN@CHURCHDWIGHT.COM
PETER.QUILLA@CHURCHDWIGHT.COM
PAUL.FAIR@CHURCHDWIGHT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN T. ADAMY and LAUREN CIEMNOLONSKI1
Appeal2014-003120
Application 13/221,983
Technology Center 1700
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner'smaintainedfinalrejectionofclaims 1-5, 8-12, 15, and21. We
have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM-IN-PART.
BACKGROUND
Appellants' invention relates to a liquid cleaning composition
including a peroxide-based bleaching component, a metal catalyst, and a
polyol. Spec. Abstract.
1 Appellants identify Church & Dwight Co., Inc. as the Real Party in
Interest. Appeal Brief filed September 24, 2013 ("Br."), 1.
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Application 13/221,983
Independent claims 1 and 12 are illustrative:
1. A liquid cleaning composition comprising:
a) a peroxy component;
b) a metal-containing bleach catalyst;
c) a polyol which lies within a sphere in the Hansen space,
defined by a radius R = 6 (MPa) 112 or less; and
d) water, wherein the ratio of said polyol to the total amount of
said polyol and water is 0.2 to 0.35.
12. A stable liquid cleaning composition comprising:
a) a hydrogen peroxide component;
b) a manganese catalyst;
c) glycerin; and
d) water, wherein the ratio of glycerin to the total amount of
said glycerin and water is 0.2 to 0.35.
Br. Claims Appendix 11-12.
Claim I I-dependent from claim I-further requires the weight
percentage of catalyst to be 0.2 to 2% of the overall composition.
Claims 15 and 21-dependent from claims 12 and 1, respectively-
further require the ratio of polyol to the total amount of polyol and water is
0.25 to 0.35.
THE REJECTIONS
The Examiner maintains rejections under 35 U.S.C. § 103(a) of claims
1, 4, 5, 8-10, 12, 15, and 21 over Ghosh;2 1-5, 8-10, 12, 15, and 21 over
Alam; 3 claims 2 and 3 over Ghosh in view of Alam; and claim 11 over either
Ghosh or Alam in view of Sunder. 4
2 Ghosh et al., US 5,858,948, issued January 12, 1999.
3 Alam et al., US 2003/0148906 Al, published August 7, 2003.
4 Sunder et al., US 7,041,628 B2, issued May 6, 2006.
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Application 13/221,983
DISCUSSION 5
Upon consideration of the evidence and opposing contentions of the
Appellants and the Examiner, we are persuaded the Examiner erred
reversibly in rejecting the claims over Ghosh alone (claims 1, 4, 5, 8-10, 12,
15, and 21) or in combination with Alam (claims 2-3) or Sunder (claim 11),
and in rejecting claims 15 and 21 over Alam, but are unpersuaded that the
Examiner erred reversibly in rejecting claims 1-5, 8-10, and 12 over Alam
and claim 11 over Alam in view of Sunder. It follows that we affirm the
rejection of claims 1-5 and 8-12 and reverse the rejection of claims 15 and
21. We add the following.
Rejections over Ghosh alone or in combination with Alam or Sunder
The Examiner relies on Ghosh for its disclosure of liquid laundry
detergent compositions including carriers which may be, inter alia, water
and other solvents-including polyols such as glycerin (i.e., glycerol)-
where the carrier may be present in amounts from 5% to 90% by weight.
Ans. 4 (citing Ghosh col. 39, 11. 40-60); 7-8. The Examiner asserts that the
broad teachings of Ghosh suggest the glycerol to water ratio recited in the
claims. Ans. 4-5; 9-10.
Having considered the record, we do not find the Examiner's position
well-founded for reasons highlighted by Appellants' argument as to the
claimed ratio of water and polyol. Br. 5. While Ghosh teaches the use of
water and polyols, e.g., glycerol, as carriers and that compositions may
contain from 5% to 90% of such carriers, Ghosh does not explicitly disclose
5 We refer to the Final Office Action (mailed April 24, 2013) ("Final Act."),
the Appeal Brief (filed September 24, 2013), and the Examiner's Answer
(mailed November 1, 2013) ("Ans.").
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Application 13/221,983
the relative amounts ofpolyol (glycerol) and water (col. 39, 11. 40-60) and
the Examiner fails to provide a sufficient explanation why the claimed ratio
would have been obvious to one of ordinary skill in the art at the time of the
invention or for modifying the teachings of Ghosh to arrive at the claimed
ratio (Ans. 4-5, 9-10). The Examiner's conclusory reasoning that selecting
amounts of glycerol and water within the disclosed range of carrier would
result in a ratio of polyol to polyol and water within the scope of the claims
is insufficient. See, e.g., Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073
(Fed. Cir. 2015) ("obviousness concerns whether a skilled artisan not only
could have made but would have been motivated to make the combinations
or modifications of prior art to arrive at the claimed invention."). We
decline to resort to speculation, unfounded assumptions, or hindsight
reconstruction to cure this deficiency in the Examiner's rejections. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Finding the Examiner relies on Ghosh for the disclosed ratio of polyol
to polyol and water in the rejection of claims 2 and 3 where Alam is relied
on for its disclosure of hydrogen peroxide (Ans. 7) and in the rejection of
claim 11 where Sunder is relied on for the amount of bleach catalyst (Ans.
7-8), we similarly find the Examiner's basis for the ratio of polyol to polyol
and water lacking from these rejections also grounded on Ghosh.
For these reasons, it follows we will not sustain the Examiner's
rejection of the claims over Ghosh alone or in view of Alam or Sunder.
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Application 13/221,983
Rejections over Alam alone or in combination with Sunder
Alam alone-claims 1-5, 8-10, 12, 15, and21 6
Alam is directed to liquid or gel bleaching compositions containing a
diacyl peroxide, thickener, and water. Ans. 5. The Examiner relies on Alam
for its disclosure of bleaching compositions containing from about 80% to
about 99% by weight water (iJ 34) that can also include solvents such as
glycerol in amounts of less than about 20% (iJ 35), bleaches such as
hydrogen peroxide (iJ 54), manganese bleach catalysts (iJiJ 59-60), and
surfactants (iJ 62). Ans. 5-6. The Examiner asserts that the broad teachings
of Alam suggests the glycerol to water ratio recited in the claims. Ans. 6.
The Examiner concludes de facto that one of ordinary skill in the art, armed
with the teachings of Alam, would have been led to subject matter within the
scope of claims 1-5, 8-10, 12, 15, and 21. Ans. 6-7.
Having considered the record, we find the Examiner's position well-
founded as to claims 1-5, 8-10, and 12. Alam-in setting forth what its
compositions can include-teaches compositions having about 80% water
(iJ 34) and up to about 20% by weight glycerol (iJ 35), thickener at about
0.1 % (iJ 21 ), diacyl peroxide at about 0.1 % (iJ 15), and an amount of both
manganese bleach catalyst (iJiJ 59-60) and hydrogen peroxide-as an
oxygen bleach (iJiJ 51, 54). See, e.g., In re Fracalossi, 681F.2d792, 794 n.l
(CCPA 1982) (A prior art reference's disclosure is not limited to its
examples.); In re Boe, 355 F.2d 961, 965 (CCPA 1966) (All of the
6 While argued under separate headings, we consider all claims together as
there is no discernible distinction of import between the two groups where
further limitations of claims in the first group depending from claim 1 set
forth each of the specific elements set forth in independent claim 12.
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disclosures in a prior art reference "must be evaluated for what they fairly
teach one of ordinary skill in the art.").
As to the ratio of polyol (glycerol) to polyol and water, the relevant
disclosure of a composition including from about 80% to about 99% water
and up to about 20% by weight glycerol must be given reasonable scope
broadening what is disclosed to include compositions with water in amounts
of less than 80% and glycerol in amounts of at least 20%. Cf Modine Mfg.
Co. v. U.S. Int'! Trade Comm., 75 F.3d 1545, 1554 (Fed. Cir. 1996) ("[s]uch
broadening usages as 'about' must be given reasonable scope; they must be
viewed by the decisionmaker as they would be understood by persons
experienced in the field of the invention.). Alam teaches, accordingly,
compositions according to the claims with a ratio of polyol to water and
polyol of at least 0.2. See In re Preda, 401 F .2d 825, 826 (CCPA 1968) (In
evaluating references "it is proper to take into account not only the specific
teachings of the references but also the inferences that one skilled in the art
would reasonably be expected to draw therefrom.").
Appellants argue that the Examiner has failed to set forth why one of
ordinary skill in the art would have modified Alam's compositions to arrive
at the claimed compositions. Br. 7-8. Appellants' arguments are predicated
on it being necessary to "eliminate Alam's key ingredients" and to "pick and
choose" ingredients that are optional in Alam to arrive at the claimed
composition. Br. 7-8. Appellants emphasize the number of possible
combinations disclosed in Alam. Br. 7-8.
As we explain above, however, Alam reasonably teaches
compositions that fall within the scope of claims 1-5, 8-10, and 12 without
modification. As to eliminating Alam' s key ingredients, there is no need as
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the compositions as claimed are compositions comprising the recited
components and are, accordingly, open to including both diacyl peroxide
and thickener. See, e.g., In re Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004).
It follows we are unpersuaded of reversible error in the Examiner's
determination that the preponderance of evidence weighs in favor of
obviousness of the subject matter recited in claims 1-5, 8-10, and 12 within
the meaning of 35 U.S.C. §103(a). In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (explaining that even if the Examiner had failed to make a prima
facie case, the Board would not have erred in framing the issue as one of
reversible error because it has long been the Board's practice to require an
appellant to identify the alleged error in the Examiner's rejections).
We find persuasive merit, however, in Appellants' argument as to
claim 15-requiring a ratio of glycerin to glycerin and water of 0.25 to
0.35-and claim 21-requiring a ratio ofpolyol to polyol and water of 0.25
to 0.35. To reach a value within that claimed, the amount of glycerol needs
to be at least a third of the amount of water, which would require broadening
the range of water below 80% and the range of polyol (glycol) above 20% to
a greater degree than is reasonable based on this record. The Examiner has
not provided sufficient reasoning or explanation why such broadening of
these values would be reasonable. Generally, Final Act.; Ans. Nor has the
Examiner provided sufficient reason or explanation to modify the teachings
of Alam to reach the necessary value to arrive at a ratio within that required
by claims 15 and 21. Generally, Final Act.; Ans. We decline to resort to
speculation, unfounded assumptions, or hindsight reconstruction to cure this
deficiency in the Examiner's rejection of claims 15 and 21. See In re
Warner, 379 F.2d at 1017.
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Alam in view of Sunder-claim 11
Sunder is directed to liquid aqueous dishwashing products. The
Examiner relies on Alam as above, including its teaching of manganese
bleach catalysts. Ans. 7-8; Alam iii! 59-60. The Examiner concedes Alam
is silent as to the specific amount of bleach catalyst (Ans. 7) and relies on
Sunder for its teaching of bleach catalysts "such as Mn, Fe, Co, Ru, etc.,
complexes in amounts from 0.0025% to 5% by weight" (Ans. 8, citing
Sunder col. 22, 11. 1-35). The Examiner's limited reliance on Sunder is,
accordingly, for the amount of manganese bleach catalyst. Ans. 8.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to use an amount of
manganese (Mn) bleach catalyst in an amount within the claimed range with
a reasonable expectation of success because Sunder teaches such amounts in
a similar composition to Alam. Ans. 8.
Appellants argue that Sunder discloses many optional ingredients,
including those relied on by the Examiner as metal-containing bleach
catalyst in amounts within the claimed range (Br. 10), and that "the
Examiner provides no motivational statement for one of ordinary skill in the
art to pick and choose from optional ingredients in Sunder" to combine with
optional ingredients from Alam (Br. 9-10).
Appellants' arguments are not persuasive of reversible error because
they fail to address the ground of rejection in that Alam fairly teaches a
composition according to the claim except for the specific amount of the
relied on manganese bleach catalyst and Sunder is relied on for the limited
purpose of an amount. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)
("The test for obviousness is not whether the features of a secondary
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reference may be bodily incorporated into the structure of a primary
reference . . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.").
It follows we are unpersuaded of reversible error in the Examiner's
determination that the preponderance of evidence weighs in favor of
obviousness of the subject matter recited in claim 11 within the meaning of
35 U.S.C. § 103(a). In re Jung, 637 F.3d at 1365.
CONCLUSION
The Examiner's rejection of claims 1-5 and 8-12 under 35 U.S.C.
§ 103(a) is AFFIRMED.
The Examiner's rejection of claims 15 and 21 under 35 U.S.C.
§ 103(a) is REVERSED.
AFFIRMED-IN-PART
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