Ex Parte Catalfamo

Board of Patent Appeals and Interferences

Mar 23, 2012

11824700 (B.P.A.I. Mar. 23, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/824,700 07/02/2007 Vincenzo Catalfamo CM-3112 3857
27752 7590 03/23/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
REDDY, SATHAVARAM I
ART UNIT PAPER NUMBER
1785
MAIL DATE DELIVERY MODE
03/23/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VINCENZO CATALFAMO
____________

Appeal 2010-012478
Application 11/824,700
Technology Center 1700
____________

Before TERRY J. OWENS, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection under 35 U.S.C. § 103(a) of claim 1 as unpatentable over Haq (US
4,416,791, issued November 22, 1983) in view of Meiwa (JP 2001-162708,
issued June 19, 2001; as translated), and further in view of Oles (US
Appeal 2010-012478
Application 11/824,700

2
2002/0164443 A1, issued November 7, 2002).1 We have jurisdiction under
35 U.S.C. § 6.
We REVERSE.
Claim 1 reads as follows:
1. A container comprising a water-soluble substrate having a
thickness of from about 25 to about 125 micrometer, said substrate
comprising a first and a second surface opposite to said first surface, and a
thickness between said first and second surfaces, said first surface
comprising protuberances [sic] comprising partially embedded water-
insoluble particles having:
a. an average distance between adjacent peaks of said protruberances
from about 200 nanometer to about 2 micrometer; and
b. an average diameter of from about 0.001 to about 0.1 micrometer;
wherein said first surface forms an outside surface of said container
and said container holds a product composition.

"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted
with approval in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417-18
(2007).

1 Appellant only appeals claim 1 (e.g., App. Br. 2, dated June 21, 2010).
Accordingly, this appeal is dismissed as to claims 5 and 6. See Ex parte
Ghuman, 88 USPQ2d 1478 (BPAI 2008). Upon return of the application to
the jurisdiction of the Examiner, the Examiner should cancel claims 5 and 6.
Since the Examiner’s rejection of claims 1, 5, and 6 under 35 U.S.C. 112
pertains to the alleged inconsistency of the preamble of dependent claims 5
and 6 with the preamble of claim 1, we agree with Appellant that this
rejection is moot (App. Br. 3).
Appeal 2010-012478
Application 11/824,700

3
After consideration of the record on appeal, we determine that the
preponderance of the evidence supports the Appellant’s position that the
Examiner has not established a prima facie case of obviousness because the
references have been combined “without providing any evidence of a
teaching or suggestion to combine the three references” (App. Br. 3).
As more thoroughly explained in the Appeal Brief, Haq does not
disclose an outside surface of a container having water-insoluble particle
protruberances as required by Claim 1 (App. Br. 4). Rather, Haq teaches it
is important for the inside surface of a sachet of liquid detergent
compositions to have a water insoluble surface to prevent attack of the
package by the contents during storage. The Examiner does not provide any
direct response to this argument (generally Ans.). Furthermore, the
Examiner has not responded to the Appellant’s reasonable contention that
contrary to the Examiner’s stated position, Oles is not directed to water-
soluble products (App. Br. 5, 6; Reply Br. 2, 3). We agree that the
preponderance of the evidence supports Appellant’s position that Oles does
not state that the container/reaction vessel thereof is water-soluble.
The Examiner has provided this record with no rational explanation
why one with ordinary skill in this art would have combined these references
in the manner required by the independent claims. For example, the
Examiner has failed to give any specific logical reasoning why the spacing
of the protruberances of Oles’ reaction vessel which are designed to promote
self-cleaning of an outside surface would have suggested the requisite
modification of the liquid detergent sachet invention described by Haq. The
Examiner also does not give any apparent reason or explain why the
diameter of the water-insoluble particles of Meiwa which are designed to
Appeal 2010-012478
Application 11/824,700

4
provide a film having high storage stability in humid conditions (that is,
exposed to a gaseous atmosphere) would have been useful for protecting the
inside surface of the liquid detergent sachet of Haq. On this record, the only
reason for so modifying Haq appears to derive from the impermissible
hindsight of Appellant’s own disclosure.

The decision of the Examiner is reversed.

REVERSED

sld