Ex Parte Mistry et al

Board of Patent Appeals and Interferences

Jan 13, 2009

10479945 (B.P.A.I. Jan. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KISHOR KUMAR MISTRY,
BRYAN DAVID GREY,
HELEN MARIE CLARE COULTER,
and JANINE ANDREA PRESTON
____________

Appeal 2008-5489
Application 10/479,945
Technology Center 1700
____________

Decided: January 13, 2009
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1 and 4-12. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2008-5489
Application 10/479,945

STATEMENT OF THE CASE
The invention relates to the use of a fabric conditioner in a swellable
polymer matrix for use in a detergent product. (Spec. 6, ¶ 2). Appellants’
Specification dictates that the invention is the particular combination of the
fabric conditioner as the active ingredient in a known swellable polymer
matrix, the combination of which provides that the fabric conditioning
particle is released in the rinse cycle, rather than in the wash cycle. (Spec. 7,
¶ 2). Claim 1 is illustrative of the subject matter on appeal:
1. A particulate composition comprising particles having a polymeric
matrix including a fabric conditioning active ingredient in which the fabric
conditioning active ingredient is released during a rinse cycle of a laundry
operation and wherein the polymeric matrix is formed of a co-polymer of (a)
an ethylenically unsaturated hydrophobic monomer with (b) a free base
monomer wherein the free base monomer has the formula

CH2 = CR1 COXR2 NR3 R4

wherein R1 is hydrogen or methyl, R2 is alkylene containing at least
two carbon atoms, X is O or NH, R3 is at least 4 carbon atoms and R4 is
hydrogen or a hydrocarbon group.

Appellants request review of the sole rejection maintained by the
Examiner, namely, the rejection of claims 1 and 4-12 under 35 U.S.C. §
102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
being obvious over International Application Publication No. WO 97/24178
to Langley et al. (“Langley”).
Since no claims are argued separately from the others, we decide this
Appeal on the basis of representative independent claim 1. See 37 C.F.R.
§ 1.37(c)(1)(vii) (“When multiple claims subject to the same ground of
rejection are argued as a group by appellant, the Board may select a single
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claim from the group of claims that are argued together to decide the appeal
with respect to the group of claims as to the ground of rejection on the basis
of the selected claim alone.”).
II. ANTICIPATION
A. ISSUE ON APPEAL
Appellants do not contend that the polymer matrix material taught by
Langley is different from that claimed. (See generally App. Br.). Rather,
Appellants contend that Langley does not teach a fabric conditioning agent
as the active ingredient in the polymer matrix taught by Langley. (App. Br.
3 and 5). The Examiner contends that page 9, lines 18-23, of Langley teach
that “suitable detergent active ingredients include fabric conditioners.”
(Ans. 3 and 4).
An issue on appeal arising from the contentions of Appellants and the
Examiner is: does Langley anticipate a “fabric conditioning active
ingredient” included in a polymer matrix, as called for in claim 1, within the
meaning of 35 U.S.C. § 102? We answer this question in the negative.
B. FACTUAL FINDINGS
The following Findings of Fact (FF) are directed to the above
identified issue on appeal:
1. Langley states that the active ingredient that is incorporated into
the polymer matrix “can be any active ingredient which can usefully be
incorporated into the detergent concentrate and which should preferably be
released from the matrix only after dilution of the concentrate into the wash
water.” (Langley 6, ll. 19-25).
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2. The examples of “active ingredients” taught by Langley include
an enzyme, bleach activator, an optical brightener or a photobleach.
(Langley 6, ll. 25-28).
3. Langley also teaches that “[t]he detergent may also contain
other conventional detergent ingredients such as, e.g., fabric conditioners
including clays, foam boosters, suds suppressors, anti-corrosion agents, soil-
suspending agents, anti-soil-redeposition agents, dyes, bactericides, optical
brighteners, or perfumes.” (Langley 9, ll. 18-23).
C. PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). “[R]ejections under
35 U.S.C. § 102 are proper only when the claimed subject matter is
identically disclosed or described ‘in the prior art.’” In re Arkley, 455 F.2d
586, 587 (CCPA 1972). In order to anticipate, the reference “must clearly
and unequivocally disclose the claimed compound or direct those skilled in
the art to the compound without any need for picking, choosing, and
combining various disclosures not directly related to each other by the
teachings of the cited reference.” Id.
Therefore, in order to anticipate, a reference must identify something
falling within the claimed subject matter with sufficient specificity to
constitute a description thereof within the purview of § 102. In re
Schaumann, 572 F.2d 312, 317 (CCPA 1978).
D. ANALYSIS
Langley teaches that fabric conditioners may be included as a
“conventional detergent ingredient” in a “detergent,” which we understand
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to be the detergent product. (FF 3). However, nowhere does Langley
dictate that these “other conventional detergent ingredients” are the same as
the “active ingredients” that are included in the polymer matrix. (FF 1).
Also, Langley does not specifically list fabric conditioners among the
examples of active ingredients. (FF 2). Thus, Langley does not disclose the
claimed invention without picking and choosing from unrelated teachings of
the reference. Arkley, 455 F.2d at 587. Therefore, Langley does not teach
the invention with sufficient specificity to anticipate claim 1 under 35 U.S.C.
§ 102. Schaumann, 572 F.2d at 317. Accordingly, we cannot sustain the
Examiner’s rejection based on 35 U.S.C. § 102.
II. OBVIOUSNESS
A. ISSUE ON APPEAL
The Examiner contends that “it would have nonetheless been obvious
to the skilled artisan to produce the claimed composition, as the reference
teaches each of the claimed ingredients with the claimed proportions.” (Ans.
4). Appellants contend that there is no suggestion in Langley to include the
“other conventional detergent ingredients” as the “active ingredient” in the
polymer matrix taught by Langley and that the examples of active
ingredients teach away from using a fabric conditioner as an active
ingredient. (App. Br. 6).
An issue on appeal arising from the contentions of Appellants and the
Examiner is: would it have been obvious to one of ordinary skill in the art,
having the teachings of Langley, to include a fabric conditioner as an active
ingredient in the polymer matrix? We answer this question in the
affirmative.

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B. FACTUAL FINDINGS
The additional following Findings of Fact are directed to the above
identified issue on appeal:
4. Langley states that the encapsulation of an active ingredient is
advantageous in that the active ingredient remains entrapped within the
polymer matrix particles under detergent storage and releases the active
ingredient under wash conditions. (Langley 2, ll. 19-31; 20, ll. 13-16).
5. Appellants’ Specification indicates that it was well known in
the art that fabric conditioners “are applied separately from the laundry
detergent product and are normally introduced into the laundry operation
during one of the rinse cycles.” (Spec. 1, ¶ 2).
C. PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”).

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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 127 S. Ct. at 1739. The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id., at 1740. “[I]f a technique has been used
to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.”
Id.
A reference may be relied upon for all that it would have reasonably
suggested to one having ordinary skill in the art, including non-preferred
embodiments. Merck & Co v. Biocraft Laboratories, 874 F.2d 804, 807
(Fed. Cir. 1989). Disclosed examples and preferred embodiments do not
constitute a teaching away from a broader disclosure or non-preferred
embodiments. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971).
D. ANALYSIS
Applying the preceding legal principles to the Factual Findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness.
Langley does not provide any limitation as to what may constitute an
active ingredient. Rather, Langley teaches that the active ingredient may be
“any active ingredient which can usefully be incorporated into the detergent
concentrate.” (FF 1). An active ingredient takes an active role in the
laundering process, as opposed to an inert ingredient (such as a dye or
perfume) which provides no active role in the laundering process. One of
ordinary skill in the art would define a fabric conditioner as an ingredient
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that takes an active role in the laundering process. Also, Langley clearly
teaches that fabric conditioners are incorporated into a detergent product.
(FF 3).
Further, we note that “optical brighteners” are considered both “active
ingredients” and “other conventional detergent ingredients.” (FF 2 and 3).
Thus, the mere designation of fabric conditioners as “other conventional
detergent ingredients” does not distinguish these ingredients from active
ingredients that one of ordinary skill in the art would include in a polymer
matrix.
Although Langley also teaches that the active ingredient “should
preferably be released from the matrix only after dilution of the concentrate
into the wash water” (FF 1), we note that releasing a fabric conditioner in the
rinse water is “after dilution of the concentrate into the wash water,” since
the rinse water is provided after the wash water. Also, this requirement is
preferential only, which along with the specific examples of “active
ingredients” recited in Langley, does not teach away from other alternatives
which would be apparent to one of ordinary skill in the art. Merck, 874 F.2d
at 807; Susi, 440 F.2d at 446 n.3.
Appellants’ Specification indicates that it was well known to
introduce fabric conditioners and detergents separately. (FF 5). Yet,
Langley teaches including fabric conditioners in the detergent product. (FF
3). Thus, one of ordinary skill in the art at the time of the invention would
have used the polymer matrix of Langley as a mechanism to keep the
included fabric conditioners separate from the rest of the detergent product,
since Langley teaches that encapsulating active ingredients in a polymer
matrix keeps the active ingredients separate from the detergent. (FF 4). The
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use of the polymer matrix to keep the fabric conditioner separate from the
detergent product would be no more than the predictable use of the polymer
matrix according to its established functions. KSR, 127 S. Ct. at 1740.
Therefore, it would have been obvious to one of ordinary skill in the
art, having the teachings of Langley, to include a fabric conditioner as an
active ingredient in the polymer matrix. Accordingly, we sustain the
Examiner’s rejection based on 35 U.S.C. § 103.
IV. CONCLUSION
In summary:
1. We do not sustain the Examiner’s rejection of claims 1 and 4-12 under
35 U.S.C. § 102(b) as anticipated by Langley; and
2. We sustain the Examiner’s rejection of claims 1 and 4-12 under
35 U.S.C. § 103(a) as obvious over Langley.
V. DECISION
We affirm the Examiner’s decision.
VI. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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