11225949 (B.P.A.I. Jul. 9, 2012)

Ex Parte Kleinwaechter

Board of Patent Appeals and InterferencesJul 9, 2012

11225949 (B.P.A.I. Jul. 9, 2012)

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. 11/225,949 09/14/2005 Joerg Kleinwaechter CM2951Q 5685 27752 7590 07/09/2012 THE PROCTER & GAMBLE COMPANY Global Legal Department - IP Sycamore Building - 4th Floor 299 East Sixth Street CINCINNATI, OH 45202 EXAMINER PURDY, KYLE A ART UNIT PAPER NUMBER 1611 MAIL DATE DELIVERY MODE 07/09/2012 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 JOERG KLEINWAECHTER __________ Appeal 2011-009329 Application 11/225,949 Technology Center 1600 __________ Before DONALD E. ADAMS, DEMETRA J. MILLS, and MELANIE L. McCOLLUM, Administrative Patent Judges. McCOLLUM, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a fibrous tissue. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Claims 1, 4, 6-8, 11-14, and 16-18 are pending and on appeal (App. Br. 2). Claims 1 and 17 are independent and are set forth in the Claims Appendix to Appellant’s Appeal Brief (id. at 17-19). Appeal 2011-009329 Application 11/225,949 2 Claims 1, 4, 6-8, 11-14, and 16 stand rejected under 35 U.S.C. § 103(a) as obvious over Klofta et al. (US 5,830,487, Nov. 3, 1998) in view of Yamazaki et al. (US 5,980,924, Nov. 9, 1999), Furman (US 5,451,404, Sep. 19, 1995), and Surburg et al. (US 2002/0120014 A1, Aug. 29, 2002) (Ans. 3-4). Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as obvious over Klofta in view of Furman and Surburg (Ans. 6). ANALYSIS We agree with Appellant that one of ordinary skill in the art would not have substituted Klofta’s cineole with Surburg’s menthyl methyl ether for the reasons set forth in part b on page 10 of the Appeal Brief. In particular, we agree with Appellant that the skilled person would not substitute cineole, which is in the Klofta tissue “to give the product a medicinal scent” (Klofta, col. 19, ll. 13-17), with a compound that is not known for having such a scent. Thus, we conclude that the Examiner has not set forth a prima facie case of obviousness. We are therefore compelled to reverse the rejections. REVERSED cdc