Ex Parte McKiernan et al

Patent Trial and Appeal Board

Nov 29, 2018

13598795 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/598,795 08/30/2012
27752 7590 12/03/2018
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Robin Lynn McKiernan
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
12235 3490
EXAMINER
MRUK,BRIANP
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
12/03/2018 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 ROBIN LYNN MCKIERNAN, STEVEN DARYL SMITH,
ROBERT JOSEPH MCCHAIN, and
CHARLES WILLIAM NEAL
Appeal2017-001780
Application 13/598,795
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
1 In explaining our Decision, we cite to the Specification of August 30, 2012
(Spec.), Final Office Action of February 19, 2016 (Final), Appeal Brief of
July 5, 2016 (Appeal Br.), Examiner's Answer of October 14, 2016 (Ans.),
and Reply Brief of November 11, 2016 (Reply Br.).
Appeal2017-001780
Application 13/598,795
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision to reject claims 1-26. We have jurisdiction under
35 U.S.C. § 6(b). A hearing was held on November 19, 2018.
We AFFIRM.
The claims are directed to a cleaning composition containing a
polymer that absorbs, captures, and retains soil. See, e.g., claims 1, 18, and
23. Claim 1, with the limitation at issue highlighted, is illustrative:
1. A cleaning composition comprising greater than 95%
to about 99% by weight of water and greater than 0.005% to
about 5% by weight of a soil capture agent comprising a
polymer, wherein the polymer itself adsorbs, captures, and
retains soil such that the cleaning composition in use exhibits a
Soil Adsorption Value of about 3 8 mg or more as measured
according to a Soil Adsorption Test Method, the polymer
comprising two or more monomeric units selected from the
group consisting of:
a. nonionic monomeric units;
b. anionic monomeric units;
c. cationic monomeric units; and
d. zwitterionic monomeric units;
wherein the polymer comprises at least one monomeric
unit from group a and at least one monomeric unit selected
from groups b, c and d, and wherein the cleaning composition
exhibits a pH of from about 2.5 to about 5.0.
2 Appellants identify the real party in interest as The Procter & Gamble
Company of Cincinnati, Ohio. Appeal Br. 1.
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Application 13/598,795
Appeal Br. 7 ( claims appendix) ( emphasis added). Claims 18 and 23 do not
require the composition exhibit a Soil Adsorption Value of about 3 8 mg or
more as measured according to a Soil Adsorption Test Method. Claim 18
instead further limits the molar ratio of the monomeric units and claim 23
instead further limits the number average molecular weight of the polymer.
The key limitation in all the claims is the limitation that the "polymer itself
adsorbs, captures, and retains soil." Claims 1, 18, 23 ( emphasis added).
The Examiner maintains the following rejections:
A. The rejection of claims 1-26 under 35 U.S.C. § I02(e) as
anticipated by or, in the alternative, under 35 U.S.C. § I03(a) as
obvious over Jaynes3;
B. The rejection of claims 1-26 under 35 U.S.C. § I02(e) as
anticipated by or, in the alternative, under 35 U.S.C. § I03(a) as
obvious over Neal4;
C. The rejection of claims 1-26 on the ground of non-statutory
double patenting as being unpatentable over claims 1-18 of
U.S. Patent 9,212,243;
D. The provisional rejection of claims 1-26 on the ground of non-
statutory double patenting over claims 1-16 and 18-29 of
copending Application No. 13/598,782.
3 US 2010/0240563 Al, published Sep. 23, 2010.
4 US 2012/0055643 Al, published Mar. 8, 2012.
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Application 13/598,795
OPINION
The Rejection over Jaynes
There is no dispute that Jaynes teaches an ampholytic polymer
containing 0.5--40% by weight of a cationic monomer, such as
diallydimethylammonium chloride (DADMAC) (Jaynes ,r,r 20-25, 44), 0.1-
20% by weight of an anionic monomer, such as acrylic acid (Jaynes ,r,r 27-
31, 45), and 15-95% by weight of a nonionic monomer, such as acrylamide
(Jaynes ,r,r 32-35, 46-48). Compare Ans. 2, with Appeal Br. 3-5, and Reply
Br. 2. The Examiner specifically notes Example 1 and Tables 1-2 of Jaynes.
Ans. 3. Example 1 describes forming a terpolymer of75.6 wt% N,N-
dimethylacrylamide/20 wt% DADMAC/ 4.4 wt% acrylic acid. Jaynes ,r
128. Table 1 lists polymers formed from Ml (DADMAC), M2 (acrylic
acid), and M3 (N,N-dimethylacrylamide) having specific weight percentages
of each monomer unit.
The Examiner finds that the compositions disclosed in Jaynes "would
inherently meet the soil adsorption value and polydispersity index
requirements of the instant invention." Ans. 3. The Examiner's inherency
finding is based on the underlying finding that "the compositions disclosed
in Jaynes et al contain all of the required components in the amounts
required in the instant claims to achieve the required soil adsorption values
and polydispersity indexes." Id.
Appellants contend that Jaynes fails to teach each and every element
of claims 1, 18, and 23, the independent claims, because Jaynes fails to teach
that its polymer itself, not its wipe, agglomerates, captures, and retains soil.
Appeal Br. 3.
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Application 13/598,795
The issue arising is: Have Appellants identified a reversible error in
the Examiner's finding that Jaynes teaches a polymer that is the same or
substantially the same as that disclosed by Appellants and would, thus, have
the property of absorbing, capturing, and retaining soil required by claims 1,
18, and 23?
Appellants have not identified such an error.
The Examiner's finding is based on the principle that products of
identical chemical compositions cannot have mutually exclusive properties.
Ans. 7. This is a well settled principle in patent law. See In re Papesch, 315
F.2d 381,391 (CCPA 1963) ("From the standpoint of patent law, a
compound and all of its properties are inseparable; they are one and the same
thing."). Where patentability rests upon a property of the claimed material
not disclosed within the art, the USPTO has no reasonable method of
determining whether there is, in fact, a patentable difference between the
prior art materials and the claimed material. In re Best, 562 F.2d 1252, 1255
(CCPA 1977). Therefore, where the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes, the USPTO can require an applicant to
prove that the prior art products do not necessarily possess the characteristics
of his claimed product. Id.
The Examiner has met the burden of showing Jaynes describes a
product that is identical or substantially identical to a product encompassed
by Appellants' claims such that the burden shifted to Appellants to show
otherwise. Specifically, the Examiner has pointed to portions of Jayne that
describe forming polymers from the same monomers disclosed by
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Appellants in amounts within the ranges Appellants disclose in their
Specification. For instance, the Examiner cites to Jaynes' example 1, which
produces a terpolymer ofN,N-dimethylacrylamide/diallydimethyl-
ammonium/acrylic acid with 75.6/20/4.4 respective wt% monomer content.
Ans. 3. This terpolymer contains monomer units that are the same or similar
to those Appellants disclose in their Specification in amounts disclosed as
resulting in a polymer that absorbs, captures, and retains soil. See Spec.
7: 10-11 ( teaching nonionic monomeric units of N ,N-
dimethylmethacrylamide ), 8: 1--4 ( teaching anionic unit of acylic acid),
9:9:6-7 (teaching cationic monomeric unit ofN,N-dimethyldiallyammonium
chloride (DADMAC), Spec. 23 at example 3.21 (teaching a similar
acrylamide (AAM)/acrylic acid (AA)/DADMAC polymer that has a Soil
Absorption Value of 53 mg, a value well above the about 38 mg minimum
value of claim 1. 5 The weight percentages are also within the ranges
disclosed by Appellants for their terpolymer. Spec. 13 ( disclosing that the
polymer may comprise at least 69.6 % monomer from group a (e.g. N,N-
dimethylmethacrylamide ), and from 0.1 to 30 % monomeric units from
groups b and c, respectively. Spec. 13. Because the Examiner met the
burden of supporting the finding of inherency, the burden shifted to
5 Note that claims 18 and 23 do not require the Soil Absorption Value be
within any particular range and Appellants do not argue claim 1 separately.
However, the fact that the polymer of example 3 .21 has a Soil Absorption
Value so much greater than the minimum value of claim 1 provides evidence
that the Examiner's finding that Jayne describes polymers that would
inherently absorb, capture, and retain soil is reasonable. This is so
particularly because the language "absorbs, captures, and retains soil"
encompasses any amount, including very low amounts, of absorption,
capture, and retention.
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Appellants to show that, in fact, Jayne's polymers do not inherently absorb,
capture, and retain soil.
Appellants contend that Jaynes teaches that its polymers repel soil
instead of retain soil. Appeal Br. 4. But Appellants placed no persuasive
evidence before the Examiner showing that the composition of the
terpolymer of Jaynes differs from that claimed and disclosed by Appellants
such that it would have different properties.
Moreover, the portions of Jaynes cited by Appellants do not persuade
us that Jaynes' polymer fails to retain soil.
First, the limitation "adsorbs, captures, and retains soil" is open to any
amount of soil retention, including very small amounts.
Second, Jaynes does not specifically teach that the polymer film
repels soil. Jaynes teaches that during the cleaning procedure, the polymer
absorbs onto the surface to be cleaned, forming a thin invisible film. Jaynes
,r,r 71, 113. Upon subsequent soiling, the polymer film "causes any new soil
layers to be easily removed from the swface" and "can also prevent soil
from adhering to a surface." Id. (emphasis added). The polymer film
provides both a soil release mechanism and a soil resistant mechanism as it
relates to the surface to be cleaned. Jaynes ,r 72. Jaynes does not state that
the polymer film itself repels soil; Jaynes only discusses how it protects the
surface from soil.
Given the breadth of the "adsorbs, captures, and retains soil"
limitation and the similarity of the polymers taught by Jaynes to those
Appellants disclose as having a soil retention property, we determine that, on
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balance, a preponderance of the evidence supports the Examiner's finding
that Jaynes' polymer would retain some amount of soil.
Appellants have not identified a reversible error in the Examiner's
rejection.
The Rejection over Neal
Turning to the rejection under 35 U.S.C. § 102(e) or, in the alterative,
under 35 U.S.C. § 103(a) as obvious over Neal, Appellants' sole argument is
that Neal is not prior art because the teachings relied on by the Examiner
have priority only to September 1, 2011, the same date as Appellants'
provisional filing date. Appeal Br. 6; Reply Br. 2-3. The Examiner
responds that Neal has priority to September 3, 2010, the date of Neal's
provisional application. Ans. 7.
We reproduce a table below with the relevant dates:
Provisional filing date 09/01/2011 09/03/2010
Non-provisional Filing date 08/30/2012 09/01/2011
The problem is that, on this record, neither Appellants nor the
Examiner can rely on the respective provisional date they seek to use to
support their positions.
To gain the benefit of the provisional filing date, Appellants' and
Neals' applications must satisfy 35 U.S.C. § 119(e)(l) (2006), which
provides that:
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Application 13/598,795
An application for patent filed under section 11 l(a) or section
363 of this title for an invention disclosed in the manner
provided by the first paragraph of section 112 of this title in a
provisional application filed under section 111 (b) of this title,
by an inventor or inventors named in the provisional
application, shall have the same effect, as to such invention, as
though filed on the date of the provisional application filed
under section 111 (b) of this title ....
35 U.S.C. § 119(e)(l) (2006) (emphases added). "In other words, the
specification of the provisional must 'contain a written description of the
invention and the manner and process of making and using it, in such full,
clear, concise, and exact terms,' 35 U.S.C. § 112 ,r 1, to enable an ordinarily
skilled artisan to practice the invention claimed in the non-provisional
application." Dynamic Drinkware, LLC v. Nat'! Graphics, Inc., 800 F.3d
1375, 1378 (Fed. Cir. 2015) (quoting New Railhead Mfg., L.L.C. v. Vermeer
Mfg. Co., 298 F.3d 1290, 1294 (Fed.Cir.2002)) (emphasis added).
As explained in the Manual of Patent Examining Procedure
("MPEP"):
If the filing date of the earlier provisional application is
necessary, for example, in the case of an interference or to
overcome a reference, care must be taken to ensure that the
disclosure filed as the provisional application adequately
provides (1) a written description of the subject matter of the
claim( s) at issue in the later filed nonprovisional application,
and (2) an enabling disclosure to permit one of ordinary skill in
the art to make and use the claimed invention in the later filed
nonprovisional application without undue experimentation.
MPEP § 211.05(I)(A) (2014) (emphasis added).
We do not presume that, for the claims of the non-provisional, the
statutory requirements of written descriptive support and enablement are met
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by the provisional applications. "[B]ecause the PTO does not examine
priority claims unless necessary, the Board has no basis to presume that a
reference patent is necessarily entitled to the filing date of its provisional
application." Dynamic Drinkware, 800 F.3d at 1380. As there is no
presumption, the burden is on the party seeking to rely on the provisional
date to provide evidence that the claims of the non-provisional application
are supported and enabled by the specification of the provisional application.
This burden cuts both ways: Appellants have the burden to show their
claims are supported and enabled by their relied upon provisional disclosure
and the Examiner has the burden to show that Neal's non-provisional
published application claims are supported and enabled by Neal's
provisional disclosure. Neither the Appellants nor the Examiner provided
the necessary evidence during prosecution. Thus, we can only rely on the
non-provisional filing dates. Neal has a non-provisional filing date of
September 1, 2011, which pre-dates Appellants' non-provisional filing date
of August 30, 2012. Given that Appellants' did not provide evidence during
prosecution that they are entitled to their provisional filing date, we
determine that Appellants have not shown reversible error in the Examiner's
determination that Neal is prior art under 35 U.S.C. § 102(e).
The Obviousness Double Patenting Rejections
Because Appellants do not advance any arguments against the
rejection of claims 1-26 on the ground of non-statutory obviousness-type
double patenting as being unpatentable over claims 1-18 of U.S. Patent
9,212,243, we summarily affirm that rejection.
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The Application No. 13/598,782 has been abandoned. Thus, the
provisional rejection of claims 1-26 on the ground of non-statutory
obviousness-type double patenting over claims 1-16 and 18-29 of
copending Application No. 13/598,782 is moot.
CONCLUSION
We sustain the rejection of claims 1-26 under 35 U.S.C. § 102(e) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Jaynes.
We sustain the rejection of claims 1-26 under 35 U.S.C.
§ 102(e) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as obvious over Neal.
We summarily sustain the rejection of claims 1-26 on the
ground of non-statutory obviousness-type double patenting as being
unpatentable over claims 1-18 of U.S. Patent 9,212,243.
The provisional rejection of claims 1-26 on the ground of non-
statutory obviousness-type double patenting over claims 1-16 and 18-
29 of copending Application No. 13/598,782 is moot.
DECISION
The Examiner's decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
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Application 13/598,795
AFFIRMED
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