11998963 (P.T.A.B. Jul. 31, 2013)

Ex Parte Johnson et al

Patent Trial and Appeal BoardJul 31, 2013

11998963 (P.T.A.B. Jul. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ANDRESS K. JOHNSON and STEPHEN E. MINTER ____________________ Appeal 2012-001619 Application 11/998,963 Technology Center 1700 ____________________ Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and MARK NAGUMO, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1-5, 9-15, 29, and 30. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2012-001619 Application 11/998,963 2 The claims are directed to a premoistened cleaning disposable substrate for cleaning leather surfaces (see Claim 1). The Examiner rejects claims 1-4, 9, 14, 15, 29, and 30 under 35 U.S.C. § 103(a) as obvious over Serobian 1 in view of Colurciello 2 , Smith 3 , and Lupia 4 . To reject claims 5 and 10-13, the Examiner relies upon the same grounds as applied to claim 1 and further adds Viazmensky 5 as evidence of obviousness. The Examiner also rejects claim 30 under 35 U.S.C. § 112, ¶ 2 as indefinite. Obviousness All of the claims require that the cleaning composition on the disposable substrate include a mixture of: (1) polysiloxane copolymers of a specific generic formula (formula III); and (2) amino-substituted silicon copolymer derivatives of another specific generic formula (IV). The Examiner finds that Serobian does not teach including an amino- substituted silicon copolymer derivative of formula (IV) in the cleaning composition of that reference, but concludes that it would have been obvious to include a formula (IV) amino-substituted silicone copolymer derivative in Serobian’s cleaner based on the teachings of Smith (Ans. 6, citing Smith, col. 5, ll. 1-5). Appellants acknowledge that “the structure disclosed [in Smith] at the top of column 5, lines 1-5 is encompassed by present formula (IV).” (Br. 5.) However, Appellants contend that the polymers of formula (IV) structure 1 Serobian et al., US 2005/0250668 A1, pub. Nov. 10, 2005. 2 Colurciello, Jr., US 6,221,833 B1, patented Apr. 24, 2001. 3 Smith, US 4,495,226, patented Jan. 22, 1985. 4 Lupia et al., US 2006/0040836 A1, pub. Feb. 23, 2006. 5 Viazmensky et al., US 5,292,581, patented Mar. 8, 1994. Appeal 2012-001619 Application 11/998,963 3 taught by Smith are used as an intermediate for rendering starch sizing water repellent (Br. 5). According to Appellants, Smith’s polymers chemically bond with starch to form a derivatized starch not encompassed by the present claim limitations (Br. 5-6). To support their contention, Appellants cite Smith, column 9, lines 20-25 (Br. 5). The Examiner disagrees (Ans. 8). According to the Examiner, there is no chemical reaction, only an adhesion type interaction between the polymer and starch of Smith that is mechanical, not chemical. The only portion of Smith cited to support the Examiner’s position is column 7, line 39. Column 7, lines 36-43 do not disclose bonding or lack of bonding, but merely discuss the role of surfactant concentration in a method of treating starch where the starch is treated to enhance its water-resistance. Column 9, lines 20-25 of Smith expressly state that Smith believes chemical bonding occurs between the organosiloxane polymer and starch molecules during the process of treating the starch with the organosiloxane polymer. This belief is based upon extraction studies and differential scanning calorimetry (Smith, col. 9, ll. 24-34). The Examiner does not address the express disclosure of bonding in Smith at column 9 (Ans. 8). We determine that the evidence as a whole supports a finding that Smith teaches treating starch with organosiloxane polymers in a way that results in chemical bonding between the starch and polymer. The Examiner has not shown that Smith’s silicone-treated starch contains the formula (IV) amino-substituted silicone copolymer derivatives required by Appellants’ claims. Appeal 2012-001619 Application 11/998,963 4 Moreover, we agree with Appellants that the Examiner’s statement that Smith and Serobian are analogous art has no reasonable factual basis (Br. 6). The Examiner finds that “Smith and Serobian et al. are analogous art because they are from the same field of endeavour that of surface (e.g. leather) cleaning, and protecting, compositions.” (Ans. 6.) But, as pointed out by Appellants, Smith does not teach cleaning surfaces and makes no mention of leather (Br. 6). Smith is directed to preparing a silicone-treated starch to be used as a sizing agent to treat paper and textiles (Smith, col. 1, ll. 9-13). The purpose of a starch sizing agent is to level surfaces to make them smoother (Smith, col. 1, ll. 18-23). Therefore, the facts do not support the Examiner’s finding. The additional prior art applied by the Examiner does not cure the deficiencies in the rejection discussed above. Therefore, we do not sustain either of the obviousness rejections. Indefiniteness Turning to the rejection of claim 30 as indefinite, we agree with Appellants that the claims from which claim 30 depend from provide adequate antecedent basis for “the first UV absorber” as recited in claim 30 (Br. 10). Claim 30 depends from claim 29, which depends from claim 15, which depends from claim 14, which depends from claim 1. Claim 1 recites “at least two UV absorbers selected from a first UV absorber group and a second UV absorber group” followed by a listing of the first group and the second group of UV absorbers. Claim 14 further limits the second UV absorber group while claim 15, further limits the first UV absorber group. Claim 29 limits the second UV absorber group to a single UV absorber and claim 30 limits the first UV absorber group to a single UV absorber. Appeal 2012-001619 Application 11/998,963 5 Therefore, one of ordinary skill in the art would have understood claim 30 to be directed to a premoistened cleaning substrate in which the first and second groups of UV absorbers of claim 1 were limited to the first and second UV absorbers listed in claims 29 and 30. Claim 30 is sufficiently precise to meet the requirements of 35 U.S.C. § 11, ¶ 2. CONCLUSION We do not sustain the Examiner’s rejections. DECISION The Examiner’s decision is reversed. REVERSED ELD