Ex Parte Mort et al

Patent Trial and Appeal Board

Apr 18, 2017

13013339 (P.T.A.B. Apr. 18, 2017)

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.
13/013,339 01/25/2011 Paul R. Mort III 10376MC 8561
27752 7590 04/20/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
DOUYON, LORNA M
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
04/20/2017 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 PAUL R. MORT III, NIGEL PATRICK
SOMERVILLE ROBERTS,
MARK EDWARD WANDSTRAT,
GEORGE GREGORY SPONTAK, JULIE ELLIS, and
JOHN DEMETRIUS HATJOPOULOS
Appeal 2016-002928
Application 13/013,33 91
Technology Center 1700
Before TERRY J. OWENS, DONNA M. PRAISS, and
MONTE T. SQUIRE, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 11—24 and 41. We have jurisdiction under 35 U.S.C. § 6.
1 Appellants identify the real party in interest as The Procter & Gamble
Company. App. Br. 3.
2 This decision makes reference to the Specification filed Jan. 25, 2011
(“Spec.”), the Final Office Action dated Feb. 26, 2015 (“Final Act.”), the
Appeal Brief filed July 27, 2015 (“App. Br.”), the Examiner’s Answer dated
Dec. 18, 2015 (“Ans.”), and the Reply Brief filed Jan. 19, 2016 (“Reply
Br.”).
Appeal 2016-002928
Application 13/013,339
The subject matter of this appeal relates to flowable particulates.
Spec. 1:11. Claim 11 is illustrative (disputed elements italicized):
11. A particulate comprising detergent particles that
comprise a layer that comprises binder and a layer powder, said
layer coating a seed, said particles being produced by a process
comprising the steps of:
a. ) layering a mass of seeds, said seeds having:
(i) a median seed diameter of from about 150 microns to
about 1700 microns;
(ii) a size distribution span of from about 1.0 to about 2.0;
(iii) a seed bulk density of from about 50 grams per liter to
about 2000 grams per liter; and
(iv) a median particle aspect ratio of from about 1 to about
2;
said layering step comprising independently contacting
said mass of seeds with a binder, said binder having a viscosity
of from about 0.5 cp to about 4000 cp with a layering powder,
said layering powder having a median particle size from about 1
micron to about 100 microns to form said particles, and
optionally repeating said layering step;
wherein said layering step is conducted at a Layering
Stokes Number of from greater than 0 to about 10 and at; a
Coalescence Stokes Number of at least 0.5;
b. ) treating said particles to remove any materials that
would result in said particles having a Relative Jamming Onset
of greater than about 14.
App. Br. 17 (Claims Appendix).
The Examiner maintains, and Appellants appeal, the rejection of
claims 11—24 and 41 under 35 U.S.C. § 103(a) as unpatentable over
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Application 13/013,339
Wasserman3 and Joshi.4 Ans. 2; App. Br. 6; Final Act. 3.5 Appellants argue
the subject matter of claims 11—24 and 41 as a group. App. Br. 7—13. In
accordance with 37 C.F.R. § 41.37(c)(l)(iv), claims 12—24 and 41 will stand
or fall together with claim 11 on which they depend either directly or
indirectly.
OPINION
The dispositive issues for this appeal are (1) whether the Examiner
erred in finding that Wasserman’s coated detergent granules adhered with a
flow control agent suggests the recited “binder and a layer powder” and (2)
whether the Examiner erred in finding that Appellants’ evidence of
secondary considerations is insufficient to overcome the obviousness
rejection.
After review of the arguments and evidence presented by both
Appellants and the Examiner, we affirm the stated rejection.
It is the Examiner’s position that Wasserman and Joshi suggest the
subject matter of claims 11—24 and 41 for the reasons stated on pages 3—7 of
the Final Action.
In the Appeal Brief, Appellants argue that process conditions recited
in claim 11 imply structure, specifically the recited layering step “conducted
at a Layering Stokes Number of from greater than 0 to about 10”, and that
the “Layering Stokes number is required to describe conditions required for
3 Wasserman et al., US 2004/0235704 Al, published Nov. 25, 2004
(“Wasserman”).
4 Joshi et al., US 4,444,673, issued Apr. 24, 1984 (“Joshi”).
5 The rejection of claims 11—24 and 41 on the ground of non-statutory
obviousness-type double patenting stands withdrawn by the Examiner. Ans.
6.
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Application 13/013,339
efficiently building a detergent particle that comprises massive composite
layers comprising binder and layering powder.” App. Br. 8. Appellants
argue that the Stokes numbers recited in Wasserman “are a measure of
particle coalescence and thus a Coalescence Stokes Number and not a
Layering Stokes Number.” Id. According to Appellants, because the cited
prior art does not disclose a Layering Stokes Number, “particles made by
combining the teachings of the cited art, would not share the structure of
Appellant’s detergent particle.” Id. at 9. Appellants also contend that “if the
flow control aid of the cited art were equivalent to Appellants’] layering
powder, the cited art would recite a Layering Stokes Number.” Id.
Regarding the four declarations6 submitted as evidence of unexpected
results, Appellants contend that the Examiner erred in “not considering]
such declarations as a whole” and in finding that Mort Decl. I’s process
steps are not commensurate with the claimed product by process. Id. at 12.
Appellants argue that Mort Decl. II includes Stokes Layering Numbers
0. 424, 0.426, and 0.429 for process passes 1, 2, and 3, respectively. Id.
Appellants note that Mort Decl. II “states that Example 4, of Appellant’s
specification has a layering thickness of about 90 um” not that “the present
invention had a layering thickness of about 90 um”, which Appellants assert
constitutes reversible error. Id. at 13.
The Examiner responds that patentability of Appellants’ product-by­
process claims is determined based on the product and Wasserman need not
teach the layering step recited in claim 11. Ans. 7. The Examiner finds that
6 Three declarations were submitted from co-inventor Paul Mort III dated
Dec. 12, 2013 (“Mort Decl. I”), May 21, 2014 (“Mort Decl. II”), and Dec.
10, 2014 (“Mort Decl. Ill”) and one declaration was submitted from Gabriel
1. Tardos dated Dec. 13, 2013 (“Tardos Deck”).
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Application 13/013,339
Wasserman teaches coated detergent granules, the coating material being in
aqueous or slurry form, reading on “layer that comprises binder,” having a
viscosity of about 50 to about 100,000 centipoise and, preferably, about 100
to about 50,000 cp, overlapping the claimed viscosity, and that the surface of
the coated detergent granules is adhered with a flow control aid which is an
inorganic powder material reading on the “layer powder” recited in claim
11. Id. at 7—8. The Examiner also finds that the flow control aid has a mean
particle size of less than about 5 micron, which meets the median particle
size of the layering powder recited in claim 11. Id. at 8. Regarding the
diameter, bulk density, and median particle aspect ratio of the detergent
granules, the Examiner finds that Joshi teaches “spray dried detergent
particles having a bulk density of at least 0.5 g/cc (500 g/1), preferably 0.55
to .8 g/cc also have particle sizes such that at least 90% thereof passes
through an 8 mesh screen (2.36mm or 2360 microns).” Id.
The Examiner further responds that “while the Stokes number
disclosed by Wasserman may not necessarily equate to the Layering Stokes
number recited in instant claim 11, there is seen an overlap of process
parameters” based on the formulas provided in Wasserman and Appellants’
Specification that tends to show the claimed product is the same or similar to
that of the prior art shifting the burden to Appellants. Id. at 9—10 (citing
Wasserman 43; Spec. 15:28—16:29).
Regarding Appellants’ evidence of unexpected results, the Examiner
responds that the evidence is not commensurate in scope with the claims
because (1) the claims recite generic seeds, binder, and layering powder,
however the examples referenced in Mort Decl. 1 and Mort Deck 111 are to
specific seeds, binders, and layering powders that are not recited in the
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claims (id. at 13); (2) Mort Decl. I and the Tardos Decl. refer to multiple
layering steps whereas claim 11 recites “optionally repeating said layering
step” (id. at 14—15); (3) Mort Decl. II, which provides Layering Stokes
Numbers and Coalescence Stokes Numbers, does not compare a sufficient
number of tests both inside and outside the claimed range to show the
criticality of the claimed range (id. at 15—16); and (4) Mort Decl. II
distinguishes Wasserman from Appellants’ Example 4 based on the layer
thickness of the binder and layering powder, which is not a claimed feature,
and even if it was, Wasserman discloses applying coating solids at more than
about 3 wt % and most preferably more than about 5 wt % of the uncoated
granule, suggesting optimization of the coating such that the coating
thickness overlaps that required by the claim (id. at 16—18).
In the Reply Brief, Appellants argue that “the Layering Stokes
Number, implies a particle comprising massive composite layers comprising
binder and layering powder.” Reply Br. 2. Appellants also assert that a
mean and a median “do not necessarily overlap and, without more
information, regarding the ‘mean’ one cannot not mathematically show that
there is overlap.” Id. at 3. Regarding stokes values, Appellants argue that a
Coalescence Stokes value and a Layering Stokes value “measure two
entirely different properties” and “do not overlap” and would not be
substituted by one of ordinary skill in the art. Id. at 4. According to
Appellants, “[a] coalescence stokes value is a measure of seed particle
coalescence avoidance” and “Applicants avoid such coalescence.” Id.
Appellants also contend “[a] layering stokes number defines the tendency of
a layering powder to adhere seeds in a process” and “[a]s the layering stokes
number decreases, such adhesion is promoted.” Id. Regarding the formulas
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for Coalescence Stokes Number and Layer Stokes Number, Appellants point
to the harmonic mean (8iayering) in the Layering Stokes Number formula that
is missing from the formula for calculating a Coalescence Stokes value and
“reflects the binary interaction of between a layering powder and seed
particles.” Id.
We are not persuaded that the Examiner reversibly erred in
determining claim 11 obvious over the combination of Wasserman and Joshi
for the reasons stated by the Examiner in the Final Action and Answer. Ans.
6—18; Final Act. 3—8. We add the following primarily for emphasis.
Appellants’ arguments are not persuasive because Appellants do not
dispute the Examiner’s combination of Wasserman and Joshi, nor do
Appellants dispute the Examiner’s findings regarding the coated detergent
granules taught by the combination in terms of having a layer that comprises
binder, the viscosity of the coating material overlapping with the viscosity
range recited in claim 11, a layer powder that has a mean particle size of less
than about 5 micron, and a bulk density, particle diameter, and aspect ratio
within the recited ranges. Ans. 3—6. Appellants challenge the Examiner’s
findings as to the prior art coated detergent granules on the basis that (1) a
mean particle size is not necessarily the same as the recited “median,” and
that (2) Wasserman’s processing step that meets the recited Coalescence
Stokes Number does not necessarily meet the recited processing step that
also recites a Layering Stokes Number because these “process parameters do
not overlap.” Appellants do not direct us to evidence to support or explain
the significance of these contentions to the final product. It is well settled
that arguments of counsel cannot take the place of factually supported
objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir.
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1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Moreover, as
the Examiner correctly states, patentability of the claimed product does not
depend on its method of production. See In re Thorpe, 111 F.2d 695, 697,
(Fed. Cir. 1985) (internal citations omitted) (noting that “even though
product-by-process claims are limited by and defined by the process,
determination of patentability is based on the product itself. The
patentability of a product does not depend on its method of production. If
the product in a product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process”).
Because the record supports the Examiner’s findings that
Wasserman’s formula for determining the Stokes Number for Coalescence
includes some of the same process parameters used in Appellants’ formula
for Stokes Number, including particle density and binder viscosity, the
Examiner did not reversibly err in finding that Wasserman’s processing
parameters overlap with Appellants processing parameters. In re Best, 562
F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art
products are identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.”); see In re Spada, 911 F.2d 705,
708-09 (Fed. Cir. 1990) (“when the PTO shows sound basis for believing
that the products of the applicant and the prior art are the same, the applicant
has the burden of showing that they are not.”). Appellants’ response that the
formula for Layering Stokes Number includes an additional parameter,
Slayenng, does not adequately rebut the Examiner’s finding in this regard.
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Regarding Appellants’ asserted unexpected results, it is well settled
that Appellants have the burden of showing unexpected results. In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077,
1080 (CCPA 1972). Such burden requires Appellants to proffer factual
evidence that actually shows unexpected results relative to the closest prior
art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and
that is reasonably commensurate in scope with the protection sought by
claim 11 on appeal, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In
re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764,
786 (CCPA 1972). The extent of the showing relied upon by Appellants
also must reasonably support the entire scope of the claims at issue. See In
re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
Appellants’ evidence of unexpected results is insufficient to rebut the
Examiner’s finding of unpatentability because it does not compare the
claimed product to the closest prior art, namely Wasserman. Instead, Mort
Decl. II distinguishes processes, that is, the process of Wasserman as adding
the flow control aid “after forming the solid coating” rather than being
“incorporated within the layer structure.” Mort Decl. II, 4. Appellants’
evidence is also inadequate because it fails to establish unexpected results
for the full range of parameters claimed. As noted by the Examiner, the
declaration evidence describes improved flowability due to massive
layering, whereas claim 11 recites “optionally repeating said layering step.”
Ans. 14. Furthermore, it is only in the Appeal Brief and Declarations where
the results are said to be unexpected, not the Specification itself. Rather than
describing any surprising results with respect to critical parameters, the
Specification states that “solid products do not provide the degree of
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flowability that is desired” and that “what is needed is a particulate that
flows in a manner that is similar to a fluid.” Spec. 1:18—19, 1:28—29.
Wasserman similarly describes detergent granules with “improved . . . flow
properties” and “improved . . . flowability.” Wasserman, Abstract, || 7, 10,
49, 62.
For the foregoing reasons, we affirm all of the Examiner’s rejections
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(v).
AFFIRMED
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