Ex Parte Corzani et al

Patent Trial and Appeal Board

Dec 13, 2016

11147702 (P.T.A.B. Dec. 13, 2016)

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.
11/147,702 06/08/2005 Italo Corzani CM2868 7129
27752 7590 12/15/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
SONG, JIANFENG
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
12/15/2016 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):
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 ITALO CORZANI, CALUM MacBEATH, and
MANUEL MARIANI1
Appeal 2014-005533
Application 11/147,702
Technology Center 1600
Before ERIC B. GRIMES, ULRIKE W. JENKS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims directed
to a fragrance containing a polymeric mixture. The Examiner rejects the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is “The Procter &
Gamble Company of Cincinnati, Ohio.” (App. Br. 1.)
Appeal 2014-005533
Application 11/147,702
STATEMENT OF THE CASE
The Specification explains that prior art “polymeric compositions can
normally incorporate and release a very limited amount of volatile material,
in most cases not exceeding 10% of the total weight of the compositions”
(Spec. 1). The problem is that “whenever a volatile material is introduced
in[to] the [polymeric] melt, a large amount of said [volatile] material is lost
due to the high temperature” of the processing {id. at 2). Appellants disclose
that “a certain polarity match between the plasticized polymeric matrix and
the volatile material is required to provide good incorporation and sustained
delivery of the volatile material” {id. at 5).
Claims 1—6, 8, 11, 13, and 14 are on appeal, and can be found in the
Claims Appendix of the Appeal Brief. Claim 1 is representative of the
claims on appeal, and reads as follows:
1. A homogeneous polymeric composition comprising:
a) a copolymer of ethylene with at least one other
monomer, said monomer comprising at least one heteroatom;
b) from 15% to 40% by weight of the polymeric
composition of a compatible plasticizer or blend of plasticizers,
said plasticizer comprising at least one heteroatom;
c) greater than 50% by weight of the polymeric
composition of a compatible volatile material dissolved in said
copolymer and said plasticizer or blend of plasticizers;
wherein said volatile material is a perfume comprising an
aldeyhyde [sic], a ketone, an alcohol, or an ester;
wherein the copolymer and compatible plasticizer or
blend of plasticizers comprise a plasticized polymeric matrix,
and the polarity of the plasticized polymeric matrix matches the
polarity of the volatile material.
(App. Br. 6, Claims Appendix.)
2
Appeal 2014-005533
Application 11/147,702
Appellants request review of the Examiner’s rejection of claims 1—6,
8, 11, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable over Sharak2 in
view of Vick.3 As Appellants do not argue the claims separately, we focus
our analysis on claim 1, and claims 2—6, 8, 11, 13, and 14 stand or fall with
that claim. 37 C.F.R. § 41.37 (c)(l)(iv).
The Examiner finds that Sharak teaches fragrance containing hot melt
adhesives comprising volatile oil, a copolymer of ethylene, and plasticizers
in the range of 5—30% (Ans. 3). The Examiner acknowledges that “Sharak
do[es] not expressly teach the percentage of fragrance over 50% and the
matching of the polarity between the polymer, plasticizer and fragrance”
(Ans. 5).
The Examiner finds that Vick “does exemplify (Example II, column 7,
line 46-58) a hot-melt adhesive embodiment containing 60% fragrance, 36%
ethylene vinyl copolymer, and 4% plasticizer (admittedly not a plasticizer
containing a heteroatom, and not in the claimed range)” (Ans. 4).
The Examiner concludes that
[o]ne of ordinary skill in the art would have been motivated to
have the percentage of fragrance between 50% to 90% because
Sharak teaches the amount of fragrance in the composition
should be whatever is effective to generate the desired
perception and also depends on the identity of the fragrance
being used, so the amount of fragrance is result-effective
variable in the composition, [an] artisan would optimize the
amount of fragrance for the best result, guided by Vick et al.
teaching that the amount of fragrance in hot-melt adhesive
composition at 60%, it is obvious for one of ordinary skill in the
art to have the percentage of fragrance between 50% to 90% to
produce the instant claimed invention with reasonable
2 Sharak, US 2003/0105183 Al, published June 5, 2003.
3 Vick et al., US 5,861,128, issued Jan. 19, 1999 (“Vick”).
3
Appeal 2014-005533
Application 11/147,702
expectation of success in the absence of [evidence to the]
contrary. See MPEP 2144.05 for optimization within prior art
condition or through routin[e] experimentation.
(Ans. 5—6).
Appellants contend that it would require more than routine
optimization to arrive at the claimed invention (App. Br. 3; Reply Br. 1) and
that picking and choosing among the references does not render the claims
prima facie obvious (Reply Br. 2).
The issue is: Does the preponderance of evidence of record support
the Examiner’s conclusion that the combination of references renders
obvious the claimed compositions comprising a copolymer of ethylene, a
compatible heteroatom-containing plasticizer, and a compatible volatile
material in amounts greater than 50% by weight?
Findings of Fact
FF1. Sharak teaches the production of hot melt adhesives with fragrance
(Sharak Abstract). Sharak identifies essential oils as suitable
fragrances. “Essential oils are highly concentrated, volatile liquids
originating from a botanical source. A typical essential oil is a
complex mixture of alcohols, aldehydes, esters, ketones, oxides,
phenols and terpenes” (Sharak 124; see ]Hf 25—26). Sharak explains
that “the amount of fragrance incorpoated [sic] into the adhesive will
depend on the origin, composition, purity, type of modification/
derivation, degree and type of adulteration” and usually ranges “from
0.05 to about 15[% by weight]” (Sharak 152).
FF2. The hot melt adhesives can comprise ethylene containing polymers
such as ethylene vinyl acetate (Sharak 141, see also 143). The hot
melt adhesive “may be formulated with tackifying resins, plasticizers,
4
Appeal 2014-005533
Application 11/147,702
waxes and/or other conventional additives in varying amounts”
(Sharak 143). “Various plasticizing or extending oils are also present
in the composition in amounts of 5% to about 30%, preferably 5 to
25%, by weight in order to provide wetting action and/or viscosity
control” (Sharak 146).
FF3. Vick teaches a method of combining fragrance and adhesive.
“[W]arm liquid fragrance is added to the melted hot melt adhesive and
stirred until a homogeneous mixture results” (Vick col. 7,11. 51—53).
“The fragrant material [is] typically [] supplied in liquid form, as most
fragrances are oily liquids” (Vick col. 4,11. 63—64).
FF4. Vick teaches two methods of producing the fragrance containing
adhesive. “In method II, the ethylene vinyl acetate typically used in
hot melt adhesives is highly non-polar. The fragrant liquid used in the
device must likewise be non-polar to blend and mix homogeneously.
A preferred non-polar solvent for the fragrant liquid in method II is
diethyl phthalate” (Vick col. 6,1. 67—col. 7.1. 5). Example II of Vick
exemplifies a method II production that combines “27 g of hot melt
adhesive (ethylene vinyl acetate copolymer) and 3 g of polybutene
plasticizer [which] is heated until melting occurs (about 250° F.). 45 g
of honeysuckle fragrant liquid is warmed . . . [and] added to the
melted hot melt adhesive and stirred” (Vick col. 7,11. 45—53).
FF5. The Examiner finds that Vick’s Example II exemplifies “a hot-melt
adhesive embodiment containing 60% fragrance, 36% ethylene vinyl
copolymer, and 4% plasticizer (admittedly not a plasticizer containing
a heteroatom, and not in the claimed range)” (Ans. 4).
5
Appeal 2014-005533
Application 11/147,702
FF6. Vick teaches that the hot melt adhesive and the volatile liquid
fragrance once combined “are preferably homogeneous and single
phase. By this is meant the solution and the solid each have uniform
properties through the material. The polymer, the liquid fragrance,
and the solvent have common polarity characteristics” (Vick col. 6,11.
55—61). “Surprisingly, the liquified [sic] hot melt adhesive and the
volatile liquid fragrance readily mix together to form the solution of
heated homogeneous liquid without the heat of the liquified [sic] hot
melt adhesive driving off the volatile fragrance” (Vick col. 6,11. 26—
30).
Principle of Law
“[Discovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art.” In re Boesch, 617
F.2d 272, 276 (CCPA 1980). “[I]t is not inventive to discover the optimum
or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454,
456 (CCPA 1955).
Analysis
We have reviewed Appellants’ contentions that the Examiner erred in
rejecting claim 1 as obvious over the cited art. (App. Br. 2-4; Reply Br. 1—
2.) We disagree with Appellants’ contentions and adopt the findings
concerning the scope and content of the prior art set forth in the Examiner’s
Answer and the Final Rejection dated June 27, 2007. For emphasis, we
highlight and address the following:
6
Appeal 2014-005533
Application 11/147,702
Appellants contend that it would require more than routine
optimization to arrive at the claimed invention (App. Br. 3; Reply Br. 1
(“Matching desired characteristics of the matrix portion (e.g. a hot melt
adhesive) and the fragrant portion requires trade-offs as both references
acknowledge. This is the antithesis of a ‘routine optimization problem’”)).
We are not persuaded by Appellants’ contention that more than
routine optimization is involved at arriving at the claimed homogenous
polymer matrix. Sharak teaches the production of a hot melt adhesive
containing fragrance, polymer, and plasticizer (FF1 & FF2), and Vick
similarly teaches the production of a hot melt adhesive containing the same
ingredients (FF3—FF6). Both references teach that the same oily fragrances
and polymers can be incorporated into a hot melt adhesive (FF1FF4). As the
Examiner explains, Sharak teaches that “[tjypically, the amount of an
essential oil composition used in an adhesive in accordance with the
invention will be will be [sic] from 0.05 to about 15 weight percent” (Sharak
1 52; FF1) “but that the amount should be whatever is effective to generate
the desired perception and also depends on the identity of the fragrance
being used” (Ans. 4).
Although typical fragrance ranges are provided in Sharak, this does
not limit the fragrance concentration to only those ranges disclosed because
the reference further recognizes that the concentration can vary based on
“the origin, composition, purity, type of modification/derivation, degree and
type of adulteration” of the fragrance (FF1). In other words, there is nothing
in Sharak that would indicate higher concentrations of fragrance are
detrimental to the composition. This is also recognized by the Examiner
(see Ans. 4 (“amount should be whatever is effective to generate the desired
7
Appeal 2014-005533
Application 11/147,702
perception”) and 5). The Examiner relies on Vick for teaching that the same
polymer utilized in Sharak can incorporate much higher amounts of
fragrance (Ans. 5; FF4 and FF5). We agree with the Examiner that based on
the combined teachings of the references it would only require routine
optimization to arrive at a composition having a fragrance concentration in
excess of 50%. Furthermore, Appellants do not direct us to any disclosure in
the references that teaches against the use of higher concentrations of
fragrance.
Appellants contend that “[a]t best, the Vick et al. document shows that
different hot melt polymers can incorporate higher amounts of fragrance
than Sharak” but the “different hot melt polymers would ultimately have
different properties” (App. Br. 3).
We are not persuaded by Appellants’ contention because Vick does
more than show higher incorporation of fragrance. Vick teaches that it is
important to produce a homogenous mixture, and to arrive at such a mixture
requires that “[t]he polymer, the liquid fragrance, and the solvent have
common polarity characteristics” (FF6). In addition, Vick discloses that
when using ethylene vinyl acetate as the copolymer in the hot melt adhesive
the non-polar solvent for the fragrant liquid is preferably “diethyl phthalate”
(FF4). Phthalates are identified in the Specification as a suitable plasticizer
(Spec. 7:7; see Ans. 4 (“solvent for the fragrant material is diethyl
phthalate . . . , which when combined with the liquefied polymer would
additionally function as a plasticizer (with an ester group)”).
Appellants contend that the Examiner acknowledges that Vick “does
not disclose a plasticizer containing a heteroatom and that the plasticizer is
not in the claimed range” (App. Br. 3; see also FF5 (Vick does not
8
Appeal 2014-005533
Application 11/147,702
exemplify “a plasticizer containing a heteroatom, and not in the claimed
range”)).
The Examiner, however, is not relying on Vick to disclose the
plasticizer; rather, the Examiner looks to Sharak as disclosing similar hot
melt adhesives as those disclosed in Vick, noting that Sharak’s adhesives
contain higher concentration of plasticizer (FF2). We agree with the
Examiner that it is the combination that renders the claims obvious and
presenting arguments directed at one or the other reference is not presenting
arguments with respect to the combination (Ans. 8). See In re Keller, 642
F.2d 413, 425 (CCPA 1981).
Appellants contend that “[o]nly by selectively choosing pieces of the
two references does the Examiner’s Answer arrive at the claimed invention”
(Reply Br. 2).
“[PJicking and choosing may be entirely proper in the making of a
103, obviousness rejection.” In reArkley, 455 F.2d 586, 587 (CCPA 1972).
With regard to picking and choosing parts of the references, it is not clear
what selections are beyond the scope of the ordinary artisan when
considering the references as a whole. To arrive at the instant invention
requires either increasing Sharak’s fragrance or increasing the amount of
Vick’s plasticizer. Increasing Sharak’s fragrance is reasonable because as
the Examiner points out Sharak teaches that “the amount of fragrance
incorpoated [sic] into the adhesive will depend on the origin, composition,
purity, type of modification/derivation, degree and type of adulteration and
the like” (FF1 ; see Ans. 4 and 5). To increase the amount of plasticizer in
Vick the Examiner looks to Sharak to establish that plasticizers in a hot melt
adhesive can comprise up to 30 % of the composition (FF2). Additionally,
9
Appeal 2014-005533
Application 11/147,702
Vick teaches that “the ethylene vinyl acetate typically used in hot melt
adhesives [in method II] is highly non-polar. The fragrant liquid used in the
device must likewise be non-polar to blend and mix homogeneously. A
preferred non-polar solvent for the fragrant liquid in method II is diethyl
phthalate” (FF4). The Examiner finds that the diethyl phthalate solvent of
the fragrant material in Vick “would additionally function as a plasticizer
(with an ester group)” in the composition (Ans. 4; see also Spec. 7 (suitable
plasticizers include “phthalates”)). Thus, Vick teaches additional
plasticizers present in the composition beyond the polybutene plasticizer
specifically identified as such (FF4). Accordingly, we are not persuaded that
the Examiner is making selections that are not already taught in the
references.
In so far as Appellants are arguing that it would require hindsight to
arrive at the claimed invention, i.e. “selectively choosing pieces of the two
references” (Reply Br. 2), we are not persuaded by this reasoning either.
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). As just discussed,
the Examiner has not relied on knowledge gleaned only from Appellants’
disclosure, but, rather, has relied on the teachings of Sharak and Vick.
10
Appeal 2014-005533
Application 11/147,702
SUMMARY
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Sharak and Vick. Claims 2—6, 8, 11, 13, and 14 we not
separately argues and fall with claim 1.
TIME PERIOD FOR RESPONSE
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
11