Ex parte Bouillon

Board of Patent Appeals and Interferences

Feb 24, 1998

07750777 (B.P.A.I. Feb. 24, 1998)

Application for patent filed August 22, 1991. According1
to the appellant, the application is a continuation of
Application No. 07/466,398, filed July 27, 1990.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 42
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GUNTER BOUILLON
____________
Appeal No. 95-1215
Application No. 07/750,7771
____________
HEARD: January 16, 1998
____________
Before KIMLIN, PAK and WALTZ, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 11 through 21, which are all of the claims
pending in the application.
Claims 11, 19, 20 and 21 are representative of the
subject matter on appeal and read as follows:
Appeal No. 95-1215
Application No. 07/750,777
The examiner has withdrawn the remaining rejections. 2
See Answer, pages 1 and 2 and Supplemental Answer, page 3.
2
11. An anhydrous skin cleansing agent comprising by
weight 0.7 to 94.7% of a surfactant, 5 to 99% of an organic
solvent and water-insoluble abrasive as active components and
0.3 to 55% of a water-swellable organic polymer as both a soil
carrier and abrasive, the organic solvent comprising a member
selected from the group consisting of an ester, wax, oil,
terpene and mixtures thereof.
19. A skin cleansing agent according to claim 11,
wherein the water-swellable organic polymer is the only
abrasive and the particle size of the water-swellable organic
polymer is less than 1,000 µm.
20. A skin cleansing agent according to claim 11,
wherein
the agent includes a second abrasive in addition to the water-
swellable organic polymer, and the particle size of the water-
soluble organic polymer is less the 200 µm.
21. In the cleansing of the skin wherein a skin
cleansing agent and water are applied to the skin, the
improvement which comprises employing as the skin cleansing
agent an agent according to claim 11.
The references relied on by the examiner are:
Oneto et al. (Oneto) 4,130,497 Dec. 19, 1978
Dawson 4,537,604 Aug. 27, 1985
Schäfer et al. (Schäfer) 4,612,352 Sep. 16,
1986
The appealed claims stand rejected as follows :2
(1) Claim 21 under 35 U.S.C. § 101 as being “directed to
an intended use”;
Appeal No. 95-1215
Application No. 07/750,777
3
(2) Claims 12, 14, 17, 19 and 20 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which applicant regards as his invention; and
(3) Claims 11 through 21 under 35 U.S.C. § 103 as being
unpatentable over Oneto in view of Schafer and Dawson.
We have carefully reviewed the entire record before us,
including all of the arguments and comments advanced by the
examiner and appellant in support of their respective
positions.
This review leads us to conclude that only the examiner’s §
112 rejection of claims 19 and 20 is well-founded.
Accordingly, we will sustain only the § 112 rejection of
claims 19 and 20, but will reverse the remaining rejections
based on § 101, § 112 and
§ 103. Our reasons for this determination follow.
The examiner has rejected claim 21 under 35 U.S.C. § 101
as being “directed to an intended use.” See Answer, page 3.
The examiner appears to view the subject matter of claim 21
as nonstatutory in terms of 35 U.S.C. § 101 because the so-
Appeal No. 95-1215
Application No. 07/750,777
4
called “an intended use” recited in claim 21 is not a process
within
the meaning of 35 U.S.C. 100 (b). See, e.g., Ex parte Dunkix,
153 USPQ 678, 679 (Bd. App. 1967).
35 U.S.C. § 101 reads in relevant part:
Whoever invents or discovers any new . . .
process . . . may obtain a patent therefore. . .
.

Appeal No. 95-1215
Application No. 07/750,777
5
The term “process” is defined by 35 U.S.C. § 100(b) as:
. . . process, art or method, and includes
a new use of a known process, machine,
manufacture composition of matter, or material.
This definition is interpreted to include:
an act, or a series of acts, performed upon the subject
matter to be transformed or reduced to a different state or
thing. See In re Schrader, 22 F.3d 290, 295, 30 USPQ2d 1455,
1459 (Fed Cir. 1994), citing Cochrane v. Deener, 94 U.S. 780,
787-788 (1877).
Although claim 21 does not use the term “process” or
“method”, it does recite a skin cleaning process involving a
step of applying a novel skin cleansing agent and water to the
skin. This applying step is not “an intended use” step as
alleged by the examiner. Rather, it is a positive act. Since
the examiner has not demonstrated that the above cleaning
process involving a positive cleaning step would not transform
or reduce the skin, the skin cleansing agent and water into a
different state or thing, we find that the examiner’s position
is untenable. Accordingly, we reverse the examiner’s decision
to reject claim 21 under 35 U.S.C. § 101.
The examiner has rejected claims 12, 14, 17, 19 and 20
under 35 U.S.C. § 112, second paragraph, as being indefinite.
Appeal No. 95-1215
Application No. 07/750,777
6
To establish indefiniteness under § 112, the examiner has to
establish, in the first instance, that the scope of the
appealed claims could not be ascertained by one of ordinary
skill in the art, when the specifically criticized language is
read in light of the teachings of the prior art and the
supporting specification. In re Kroekel, 504 F.2d 1143, 183
USPQ 619 (CCPA 1974); In re Moore, 439 F.2d 1232, 169 USPQ 236
(CCPA 1971).
Regarding claims 12, 14 and 17, the examiner argues (see
Answer, pages 2 and 3) that:
In claims 14, 17 “or” is indefinite in a
Markush group using “selected from . . .”
language.
In claim 14 “(meth-) acrylamide” and
“acrylic” ester” are indefinite; are polymers of
these monomers intended?
In claim 12 “at least one” is indefinite.
The examiner, however, does not point out why these criticized
words would have rendered the scope of the appealed claims
unascertainable, particularly when they are read in light of
pages 3 and 6 through 14 of the supporting specification. The
examiner simply has not met his burden. Thus, we reverse the
examiner’s decision to reject claims 12, 14 and 17 under
Appeal No. 95-1215
Application No. 07/750,777
7
35 U.S.C. § 112, second paragraph.
Appeal No. 95-1215
Application No. 07/750,777
In the event of further prosecution of claims 19 and 20,3
the examiner is advised to determine whether they do not
further limit the subject matter of their parent claim in
violation of
35 U.S.C. § 112, fourth paragraph, and 37 CFR § 1.75(c).
8
Regarding claims 19 and 20, however, they stand on a
different footing . We agree with the examiner that claims 193
and 20 are indefinite since the scope of dependent claims 19
and 20 cannot be ascertained due to their inconsistencies with
their parent claim, claim 11. It is well settled that claims
in dependent form are construed to include all the limitations
of their parent claim. See 37 CFR § 1.75(c). It follows that
dependent claims 19 and 20 encompass not only their specific
limitations, but also all the contradicting limitations of
claim 11. However, we do not observe, and appellant does not
point to, any teaching in the specification which would lead
to clarification of these inconsistencies. Accordingly, we
affirm the examiner’s decision to reject claims 19 and 20
under
35 U.S.C. § 112, second paragraph.
The examiner has rejected claims 11 through 21 under
Appeal No. 95-1215
Application No. 07/750,777
9
35 U.S.C. § 103 as unpatentable over the combined teachings of
Oneto, Schafer and Dawson. We will not sustain this
rejection. While the examiner has pointed to the various
individual components of the claimed cleansing agent described
in the prior art references, the examiner has not established
on this record why one of ordinary skill in the art would have
been led to combined the individual components. Specifically,
the record is devoid of any evidence or sound scientific
reasoning as to why one of ordinary skill in the art would
have been led to add a water swellable organic polymer useful
for “soil release and antistatic finishing, for reducing the
deposition of soil during washing and for hydrophilizing
textiles” (see column 7, lines
49-55, of Schafer referred to by the examiner) in Oneto’s
single liquid phase detergent composition useful as a foam
bath product. The examiner’s proposed combination, in our
opinion, is based purely on impermissible hindsight gained by
first having read appellant’s disclosure, and not on what the
teachings of the prior art references themselves would have
fairly suggested to one of ordinary skill in the art. See In
re Warner, 379 F.2d 1011, 1016, 154 USPQ 173, 177 (CCPA
Appeal No. 95-1215
Application No. 07/750,777
10
1967)(the examiner has the initial duty of supplying the
factual basis for his rejection;
he may not, because he doubts that the invention is
patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in the factual
basis).
As a final point, we note that appellant acknowledges
(see specification, page 1):
Flowable or paste-like skin cleansing
agents are generally used to clean
extremely soiled skin areas, e.g., in the
metal-working industry or lacquer and
varnish factories. Known skin cleaning
formulations, in most cases these are
pastes, contain surfactants as detergent
surfactant, oleophilic and/or oleophobic
solutizer, organic solubilizers, and
optionally water. These known products
furthermore contain as abrasives sand, wood
flour, or plastic powder. These solid
substances remove the dirt due to their
abrasivity.
Upon return of this application, the examiner is to determine
whether the plastic powder acknowledged to be known includes
water-swellable polymer. It appears from page 3 of the
specification that water insoluble plastic powders may be
Appeal No. 95-1215
Application No. 07/750,777
11
water-swellable. If these powders are in fact water-
swellable, the examiner must also consider the applicability
of a rejection under 35 U.S.C. § 102(b) or § 103.
In summary:
(1) The rejection of claim 21 under 35 U.S.C. § 101 is
reversed;
(2) The rejection of claims 12, 14 and 17, 19 under
35 U.S.C. § 112, second paragraph, is reversed;
(3) The rejection of claims 19 and 20 under 35 U.S.C.
§ 112, second paragraph, is affirmed; and
Appeal No. 95-1215
Application No. 07/750,777
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(4) The rejection of claims 11 through 21 under 35
U.S.C.
§ 103 is reversed.
Accordingly, the decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Appeal No. 95-1215
Application No. 07/750,777
13
Sprung, Kramer, Schaefer & Briscoe
660 White Plains Road
Tarrytown, NY 10591-5144
Appeal No. 95-1215
Application No. 07/750,777
14
CKP/jrg
APPEAL NO. 95-1215 - JUDGE PAK
APPLICATION NO. 07/750,777
APJ PAK
APJ KIMLIN
APJ WALTZ
DECISION: AFFIRMED-IN-
PART
Typed By: Jenine Gillis
DRAFT TYPED: 20 Oct 00
1st Revision: 23 Feb 98
FINAL TYPED: