Ex Parte Rajaiah et al

Patent Trial and Appeal Board

Aug 23, 2016

12939399 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/939,399 11/04/2010
27752 7590 08/25/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Jayanth Rajaiah
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.
11072MRR 5334
EXAMINER
YOON,TAEH
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
08/25/2016 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 JAY ANTH RAJAIAH,
FRANCO SILVA MEDEIROS, LUISA NAVARRO CERDA,
ROBERT SCOTT LEONARD, STEVEN DARYL SMITH,
MARK WILLIAM HAMERSKY, and
RAFAEL EDMUNDO BRAS 1
Appeal2015-001740
Application 12/939,399
Technology Center 1700
Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
LILAN REN, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 2
1 Appellants identify the real party in interest as The Proctor & Gamble
Company. Br. 1.
2 In our opinion below, we reference the Specification filed November 4,
2010 (Spec.), Final Office Action mailed May 19, 2014 (Final), the Appeal
Brief filed August 19, 2014 (Br.), and the Examiner's Answer mailed
September 29, 2014 (Ans.).
Appeal2015-001740
Application 12/939,399
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) the Examiner's decision
to reject claims 1, 11-23, 25, 34, 38, and 39. Br. 1. The Examiner
maintains rejections of the claims under 35 U.S.C. § 103(a) as obvious, and
also provisionally rejects the claims on the ground of nonstatutory
obviousness-type double patenting. Ans. 2; Final 2-7. We have jurisdiction
under 35 U.S.C. §§ 6(b).
We AFFIRM.
The claims are directed to a denture adhesive composition comprising
a denture adhesive component and a viscosity index improver. The viscosity
index improver comprises a microcrystalline wax. Claim 1 is illustrative:
1. A denture adhesive composition, comprising:
a) from about 10.0 % to about 60.0 %, by weight of the
denture adhesive composition, of a denture adhesive component
compnsmg at least one of alkyl vinyl ether-maleic acid or
anhydride copolymer (AVE/MA), salts of AVE/MA, mixed
salts of A VE/MA, or sodium carboxymethylcellulose;
b) from about 0.001 % to about 30.0 %, by weight of the
denture adhesive composition, of a viscosity index improver
comprising microcrystalline wax having a melting point
ranging from about 50°C to about 100°C;
wherein the denture adhesive composition can be
dispensed from a tube; and
wherein the composition has an instant viscosity ratio of
about 0.25 to about 0.8.
Claims Appendix, Br. 13 (formatting added).
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Appeal2015-001740
Application 12/939,399
OPINION
Provisional Nonstatutory Obviousness-type Double Patenting Rejections
The Examiner provisionally rejects claims 1, 11-23, 25, 34, 38, and
39 on the ground of nonstatutory obviousness-type double patenting over
claims in a number of copending applications. Final 5-7. Appellants do not
address these provisional rejections. Thus, Appellants do not identify an
error in them, and we summarily sustain the rejections.
Obviousness Rejections
The Examiner rejects claims 1, 11-23, 25, 34, 38, and 39 as obvious
over Keegan3 with or without the Encyclopedias and commercial
Multiwaxes Appellants discuss in their Specification (citing US
2012/0037038 i-fi-193-99). Final 2-3. The Examiner also rejects those
claims as obvious over Patel4 or Chang5 or Prosise,6 or Wong.7 Final 3--4.
Appellants' arguments are the same for each rejection, and no claim is
argued apart from the others. We select claim 1 as representative to decide
the issues on appeal. Moreover, we limit our discussion to the rejection over
Keegan with or without the Encyclopedia and commercial Multiwaxes
evidence with the understanding that our reasoning will extend to the other
obviousness rejections.
There is no dispute that it was known in the art to form a denture
adhesive composition including the denture adhesive component comprising
at least one of alkyl vinyl ether-maleic acid or anhydride copolymer
3 Keegan, US 5,011,868, patented Apr. 30, 1991.
4 Patel et al., US 2004/0034120 Al, pub. Feb. 19, 2004.
5 Chang et al., US 5,753,723 A, patented May 19, 1998.
6 Prosise, US 5,286,764 A, patented Feb. 15, 1994.
7 Wong et al., US 6,025,411 A, patented Feb. 15, 2000.
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Appeal2015-001740
Application 12/939,399
(A VE/MA), salts of A VE/MA, mixed salts of A VE/MA, or sodium
carboxymethylcellulose in the concentration of claim 1 with additional
materials such as microcrystalline waxes. See, e.g., Keegan, col. 2, 1. 62-
col. 3, 1. 10 and col. 4, 11. 45-57.
Appellants point out that Keegan lists microcrystalline wax in a longer
list of waxes including paraffin wax. Br. 3. Appellants also correctly point
out that "Keegan does not disclose or suggest that microcrystalline wax acts
as a viscosity index improver while other waxes, such as paraffin wax do
not." Id. Appellants state that:
Br. 3.
Compositions made with microcrystalline wax have a higher
instant viscosity ratio than those made with paraffin wax
showing that they are more temperature resistant. This
indicates microcrystalline wax is a viscosity index improver,
while paraffin wax is not a viscosity index improver.
In support of their statement Appellants cite to the Rajaiah
Declaration, 8 which shows that a specific composition containing
Microcrystalline Wax W835 has a higher instant viscosity ratio (0.38) than a
comparative composition containing paraffin wax from Sigma Aldrich
(0.07). Br. 3--4.
The problem is that this evidence does not negate the obviousness of
selecting microcrystalline wax from the list of waxes expressly taught by
Keegan for use in Keegan's denture adhesive composition. Once one makes
this selection, the resulting composition would have the properties inherent
to the microcrystalline wax. The Examiner finds that the microcrystalline
wax would inherently act as a viscosity index improver, and this finding is
8 Declaration filed Apr. 25, 2014 by inventor Rajaiah.
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Appeal2015-001740
Application 12/939,399
reasonable given that a material and its properties are inseparable. Jn re
Papesch, 315 F.2d 381, 391(CCPA1963).
Appellants' own Specification indicates that microcrystalline wax
inherently has properties that allow it to act as a viscosity index improver.
Spec. 20:28-21:8 (US 2012/0037038 i-f 93 as cited by the Examiner).
Although the Examiner characterizes Appellants' declaratory
evidence as presenting an issue of whether Appellants have shown an
unexpected result commensurate in scope with the breath of the claims, 9 we
note that Appellants, in fact, do not rely upon the Rajaiah Declaration to
support a showing of unexpected results. Br. 3--4. Appellants only rely
upon the Rajaiah Declaration to provide evidence that microcrystalline wax
is a viscosity index improver, while paraffin wax is not. Id. Nor does
Rajaiah declare in the Declaration that the result would have been
unexpected to the ordinary artisan. Rajaiah Deel. Nevertheless, we agree
with the Examiner that Appellants comparison is not commensurate in scope
with the breath of the claim. Ans. 2. See In re Greenfield, 571 F .2d 1185,
1189 (CCPA 1978) (concluding that evidence of secondary considerations
was not commensurate with the scope of the claims where that evidence
related to a single compound and there was no adequate basis to conclude
that other compounds included within the scope of the claims would exhibit
the same behavior).
CONCLUSION
We sustain the Examiner's rejections.
9 Ans. 2-3.
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Appeal2015-001740
Application 12/939,399
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 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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