Ex Parte Bolander et al

Patent Trial and Appeal Board

Apr 3, 2017

13652085 (P.T.A.B. Apr. 3, 2017)

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.
13/652,085 10/15/2012 Michael John BOLANDER 11243C 2619
27752 7590 04/05/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
LE, HUYEN D
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
04/05/2017 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
pair_pg @ firsttofile. com
mayer.jk @ pg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL JOHN BOLANDER,
JOSEPH ESTILL LENNON, and SONGTAO ZHOU
Appeal 2015-000862
Application 13/652,085
Technology Center 3700
Before LINDA E. HORNER, JILL D. HILL, and THOMAS F. SMEGAL,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael John Bolander et al. (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s final decision rejecting claims 1—20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2015-000862
Application 13/652,085
BACKGROUND
Independent claims 1 and 14 are pending. Independent claim 1,
reproduced below, illustrates the claimed invention.
1. An antiperspirant product, comprising:
a dispensing package comprising a container body
comprising an interior chamber containing an antiperspirant
composition, an applicator surface, an elevator axially movable
within the interior chamber, and an actuator system comprising
a feed screw threadably connected to the elevator, a turn wheel,
and a return spring that permits relative axial displacement
between the feed screw and the turn wheel, wherein rotation of
the turn wheel advances the elevator toward the applicator
surface;
an antiperspirant composition disposed within the interior
chamber and exposed to the feed screw, the antiperspirant
composition comprising an antiperspirant active having a metal
to chloride ratio less than or equal to 1.3; and
wherein the feed screw, turn wheel and return spring are
molded from a polymer having a flexural modulus from about
275 ksi to about 500 ksi and being resistant to acid degradation.
REJECTION
Claims 1—20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Johnson (US 5,000,356, iss. Mar. 19, 1991). Final Act. 2.
OPINION
The Examiner finds that Johnson discloses the claimed dispensing
package structure, but does not disclose (1) the antiperspirant active having a
metal-to-chloride ratio of less than or equal to 1.3, or about 1.15 to 1.3, or
(2) a polymer having a flexural modulus of from about 275 ksi to about 500
ksi and being resistant to acid degradation. Final Act. 2—3. The Examiner
concludes, however, that it would have been obvious to select the claimed
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metal-to-chloride ratio, polymer flexural modulus, and attain the claimed
acid degradation resistance, because discovering an optimum value of a
result effective variable involves only routine skill in the art. Id.
Appellants explain that “[a]ntiperspirant actives having a metal to
chloride ratio of less than or equal to 1.3 are preferred due to their relatively
high efficacy,” but “may lead to the generation of significant amounts of
hydrochloric acid (HC1) in the presence of moisture,” degrading the
dispenser “to the point of being inoperable.” Appeal Br. 5; see also Spec.
Background 1:31—2:9. Thus, Appellants explain,
there are two factors for selecting appropriate polymer resins
for dispensing packages incorporating a feed screw/retum
spring combination together with an antiperspirant active
having metal to chloride ratio of less than or equal to 1.3: i) the
polymer is sufficiently resistant to acid degradation, and ii) the
polymer also has a sufficient flexural modulus (about 275 ksi to
about 500 ksi) for intermittently retracting the elevator and feed
screw.
Appeal Br. 5.
Independent Claim 1
Appellants argue claims 1,3, 5—9, 12, and 13 as a group. We select
claim 1 as representative. Claims 3, 5—9, 12, and 13 stand or fall with claim
1.
Regarding the rejection of independent claim 1, Appellants argue that
the Examiner failed to “provide a teaching, suggestion or motivation to
modify Johnson to provide the claimed polymers and failed to consider the
invention as a whole.” Id.
The Examiner’s reasoning explicitly states that it would have been
obvious “to select a type of polymer having a certain range of flexural
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Application 13/652,085
modulus and resistant to acid degradation to best fit a particular deodorant
dispenser design and to optimize the performance and durability.” Final
Act. 2—3.
Appellants essentially contend that this reasoning is insufficient (i.e.,
lacks a reasonable basis) because it is not found in Johnson. Appeal Br. 6.
According to Appellants, the Examiner failed to explain why “one skilled in
the art would have been motivated to seek out the limited set of claimed
polymers when faced with a polymer (acetal) that was already described as
satisfactory for use” by Johnson. Id. at 7. Appellants contend that
Johnson’s teaching that acetal was already an acceptable resin for use
renders the Examiner’s explicit reasoning (i.e., “to select a type of polymer
having a certain range of flexural modulus and resistant to acid degradation
to best fit a particular deodorant dispenser design and to optimize the
performance and durability”) insufficient. Id.
The Examiner, however, does not contend that the proffered reasoning
can be found in Johnson. Rather, the Examiner is contending that selecting
the claimed metal-to-chloride ratio and polymer flexural modulus, and
attaining the resulting acid degradation resistance would have been obvious
because discovering an optimum value of a result effective variable involves
only routine skill in the art. Final Act 2—3.
Where the general structure of a claim is disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges of certain
constituents thereof when such discovery involves only “routine
experimentation.” See In reAller, 220 F.2d 454, 456, (CCPA 1955); see
also In re Peterson, 315 F.3d at 1325, 1330 (Fed. Cir. 2003) (“The normal
desire of scientists or artisans to improve upon what is already generally
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Application 13/652,085
known provides the motivation to determine where in a disclosed set of
percentage ranges is the optimum combination of percentages.”). It then
becomes relevant to determine whether the claimed variable was known to
be a result effective variable. Following the holding in KSR International
Co. v. Teleflex Inc., 550 U.S. 398 (2007) that “obvious to try” was a valid
rationale for an obviousness finding, the presence of a known result-
effective variable is one, but not the only, motivation for a person of
ordinary skill in the art to experiment to reach another workable product or
process.
Given this framework for obviousness, the basis for the Examiner’s
conclusion of obviousness need not be found within Johnson. Indeed, it is
Appellants’ own Specification that tends to show that one skilled in the art
would have appreciated that the claimed metal-to-chloride ratio, polymer
flexural modulus, and resulting acid degradation resistance were result
effective variables, such that determining the optimum or workable ranges
thereof would have been a matter of routine experimentation. Indeed, once a
known high efficacy active is employed as proposed by Appellants in their
own Specification, Appellants teach us that one skilled in the art would have
understood that the HC1 produced thereby would degrade acetal components
of the dispenser. Spec. 1:34—2:3. Based on this knowledge, one skilled in
the art would see that Johnson discloses polypropylene as an acceptable
alternative to acetal for dispenser components, and would have also known
that polypropylene is sufficiently resistant to HC1. Id. at 2:3—5. Appellants’
Specification also tells us that one skilled in the art would have understood
that a certain flexural modulus was needed to retract the feed screw and
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Application 13/652,085
elevator sufficiently to relieve the internal pressure necessary to sufficiently
limit or prevent weeping. Spec. 2:7—9.
This disclosure from Appellants’ Specification points to the metal-to-
chloride ratio and polymer flexural modulus as result effective variables, and
supports the Examiner’s contention that selecting the claimed metal-to-
chloride ratio, polymer flexural modulus, and resulting acid degradation
resistance would have been obvious because discovering an optimum value
of a result effective variable involves only routine skill in the art. Final Act
2-3.
Appellants fail to explain why this knowledge would not render it
obvious for one skilled in the art to use routine experimentation to discover
an optimum value for the metal-to-chloride ratio and polymer flexural
modulus, which polymer also provides acid degradation resistance. We
therefore are not persuaded that the Examiner’s conclusion of obviousness is
in error, and we sustain the rejection of claim 1 over Johnson. Claims 3, 5—
9, 12, and 13 fall with claim 1.
Dependent Claims 2 and 4
Appellants argue that, in addition to the reason set forth regarding
claim 1, the Examiner erred in rejecting claims 2 and 4 because the
Examiner provides no reason why it would have been obvious to select a
known polymer from the claimed group. Final Act. 3; Appeal Br. 8.
Because the Examiner provides no reasoning to support the
conclusion of obviousness, we do not sustain the rejection of claims 2 and 4.
Dependent Claim 10
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Application 13/652,085
Appellants argue that the Examiner failed to provide a reason why it
would have been obvious that “the antiperspirant composition generates
hydrochloric acid in the presence of water” as recited in claim 10. Appeal
Br. 8. Appellants’ Specification, however, states that it was known that
“high efficacy actives can produce a significant amount of hydrochloric acid
(HC1) in the presence of water/moisture.” Spec. 1:34—2:3. We therefore are
not persuaded by this argument, and we sustain the rejection of claim 10.
Dependent Claim 11
Claim 11 recites that the “turn wheel, return spring and feed screw are
made from a polymer that is not polypropylene or acetal.” Appellants argue
that this limitation was “not specifically addressed in the Office Action,
namely why it would have been obvious to one skilled in the art to have
excluded acetal and polypropylene from the polymers used to make the feed
screw and return spring[.]” Appeal Br. 9. Because the rejection articulates
no specific findings or conclusions regarding this limitation, we do not
sustain the rejection of claim 11.
Independent Claim 14
Appellants argue claims 14, 16, 19, and 20 as a group. We select
claim 14 as representative. Claims 16, 19, and 20 stand or fall with claim
14.
The Examiner makes the same findings for independent claims 1 and
14. Final Act. 2—3. Appellants argue that the Examiner also failed to
provide a clearly articulated reason why claim 14 would have been obvious.
Appeal Br. 9. However, for the reasons stated above, we find no error in the
Examiner’s conclusion that selecting the claimed metal-to-chloride ratio,
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Application 13/652,085
polymer flexural modulus, and acid degradation resistance would have been
obvious because these are result effective values, and discovering an
optimum value of a result effective variable involves only routine skill in the
art. Final Act. 2—3. We sustain the rejection of claim 14. Claims 16, 19,
and 20 fall with claim 14.
Dependent Claim 15
Appellants argue that the Examiner erred in rejecting claim 15,
because the Examiner provides no reason why it would have been obvious to
select a known polymer from the claimed group. Final Act. 3; Appeal Br. 9.
Because the Examiner provides no reasoning to support the
conclusion of obviousness, we do not sustain the rejection of claim 15.
Dependent Claim 17
Appellants argue that the Examiner failed to provide a reason why it
would have been obvious that “the antiperspirant composition generates
hydrochloric acid in the presence of water” as recited in claim 17. Appeal
Br. 10. As noted above regarding claim 10, Appellants’ Specification states
that it was known that “high efficacy actives can produce a significant
amount of hydrochloric acid (HC1) in the presence of water/moisture.”
Spec. 1:34—2:3. We therefore are not persuaded by this argument, and we
sustain the rejection of claim 17.
Dependent Claim 18
Like claim 11, claim 18 recites that the “turn wheel, return spring and
feed screw are made from a polymer that is not polypropylene or acetal.”
Appellants again argue that this limitation was “not specifically addressed in
the Office Action, namely why it would have been obvious to one skilled in
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Application 13/652,085
the art to have excluded acetal and polypropylene from the polymers used to
make the feed screw and return spring.” Appeal Br. 10. Because the
rejection articulates no specific findings or conclusions regarding this
limitation, we do not sustain the rejection of claim 18.
DECISION
We AFFIRM the rejection of claims 1,3, 5—10, 12—14, 16, 17, 19, and
20 under 35 U.S.C. § 103(a) as unpatentable over Johnson.
We REVERSE the rejection of claims 2, 4, 11, 15, and 18 under 35
U.S.C. § 103(a) as unpatentable over Johnson.
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)(l)(iv).
AFFIRMED-IN-PART
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