Ex Parte Scavone et al

Board of Patent Appeals and Interferences

Sep 14, 2010

11712771 (B.P.A.I. Sep. 14, 2010)

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.
11/712,771 03/01/2007 Timothy Alan Scavone 10728 8219
27752 7590 09/14/2010
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
KASSA, TIGABU
ART UNIT PAPER NUMBER
1619
MAIL DATE DELIVERY MODE
09/14/2010 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 TIMOTHY ALAN SCAVONE, MICHAEL JUDE LEBLANC,
LOWELL ALAN SANKER, and ADRIAN GREGORY SWITZER
__________

Appeal 2010-006170
Application 11/712,771
Technology Center 1600
__________

Before CAROL A. SPIEGEL, DONALD E. ADAMS, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
personal care product. The Patent Examiner rejected the claims on the
ground of obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Claims 37 and 39-47, which are all the pending claims, are on appeal.
(App. Br. 2.) Claim 37 is representative and reads as follows:
37. A personal care product, comprising:

(a) a liquid carrier;
(b) an antiperspirant active dispersed within the liquid carrier;
(c) a plurality of particles dispersed within the liquid carrier, the
plurality of particles comprising a cyclodextrin complexing material
and a fragrance material, wherein the percent of the fragrance material
that is complexed with the cyclodextrin is greater than about 90%, so
that the perceptibility of the fragrance is minimized prior to its
release; and
(d) a second fragrance material that is not complexed with
cyclodextrin complexing material and that is different from the
fragrance material in chemical make-up,
wherein the personal care product is in the form of a spray, a roll-on,
or an aerosol.

The Examiner rejected the claims as follows:
• claims 37, 39, 41, 43 and 44 under 35 U.S.C. § 103(a) as
unpatentable over Bacon;2
• claims 37, 40, 42 and 45 under 35 U.S.C. § 103(a) as unpatentable
over Bacon and Peterson;3 and
• claims 37, 46 and 47 under 35 U.S.C. § 103(a) as unpatentable over
Bacon and Faryniarz.4

2 US 6,110,449, issued to Dennis Ray Bacon et al., Aug. 29, 2000.
3 US 5,861,144, issued to Liezl Gonzales Peterson, Jan. 19, 1999.
4 US 5,135,747, issued to Joseph R. Faryniarz et al., Aug. 4, 1992.
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OBVIOUSNESS
The Issue
The Examiner’s position is that Bacon disclosed a personal care
product with perfume materials complexed with cyclodextrin. (Ans. 4-5.)
The Examiner found that Bacon taught that at least 90%, and preferably
essentially all, of the perfumes in the perfume/cyclodextrin complexes were
highly volatile, the purpose of the complex being to stabilize the perfumes
and provide a sustained release for extended fragrance odor impressions.
(Id. at 5.) The Examiner found that the difference between Bacon’s product
and Appellants’ product is that “Bacon et al. doesn’t give [a] specific
example teaching that the antiperspirant cream composition [is] in the form
of a spray, roll-on, or aerosol.” (Id. at 6.) However, because Bacon taught
that roll-on liquid products were known in the art, the Examiner concluded
that it would have been obvious to formulate Bacon’s product in roll-on or
aerosol form “because these forms of formulation are conventional forms
known by the skilled artisan.” (Id.)
Appellants contend that “Bacon fails to teach a first fragrance
material that is complexed with cyclodextrin at a level of greater than 90%
so that perceptibility of the first fragrance is minimized prior to its release.”
(App. Br. 3.) “[T]he pending claims require greater than about 90%
complexing efficiency. The Bacon disclosure . . . does not teach or suggest
this feature.” (Id. at 5-6.) Appellants rely on this argument to dispute all
three rejections. (Id. at 6-7.)
The Examiner responds by (1) again pointing to Bacon’s teaching
(col. 9, ll. 35-48) that at least 90%, and preferably all, of the perfume in the
perfume/cyclodextrin complex should be highly volatile; (2) arguing that
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“the claim can be broadly interpreted to mean the percent of the complexed
fragrance material within the perfume/cyclodextrin complexes;” and
(3) arguing that “complexation efficiency” is not recited in the claims. (Ans.
12-14.)
The issue is whether the evidence supports a finding that Bacon taught
or suggested claim 37’s feature “wherein the percent of the fragrance
material that is complexed with the cyclodextrin is greater than about 90%.”
Findings of Fact
1. Bacon disclosed “antiperspirant cream compositions” (Bacon,
Abstract).
2. Bacon’s compositions comprised “(a) antiperspirant active, and (b) a
perfume/cyclodextrin inclusion complex.” (Id.)
3. Bacon taught:
[i]t is believed that highly volatile perfume materials can
provide improved fragrance aesthetics such as fresh and clean
odor impressions, and it is desirable that these perfume
materials be included in the compositions via
perfume/cyclodextrin complexes. Preferably, at least about
90%, more preferably at least about 95%, even more preferably
at least about 98%, most preferably essentially all of the
perfumes present in these perfume/cyclodextrin complexes are
highly volatile perfume materials.

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(Id. at col. 9, ll. 39-48.)
4. Appellants’ Specification states: “[t]he efficiency or level of
complexing with a fragrance material is another parameter of
cyclodexrin complexes that can vary greatly depending on the
manufacturing techniques employed.” (Spec. 7, ll. 13-15.)
5. Appellants’ Specification defines “complexation efficiency” as
follows:
“Complexation Efficiency = % Complexed / [% Complexed + %
Free].” (Id. at 8, l. 19.)
Principles of Law
When determining whether a claim is obvious, an Examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995).
Analysis
Appellants have explained how the record evidence does not support a
prima facie case of obviousness. (App. Br. 4-6.) Bacon did teach a
perfume/cyclodextrin complex, and Bacon described the kind of perfume in
the complex, i.e., at least 90% should be highly volatile, but Bacon did not
teach the percent of the perfume in the particle that is complexed with
cyclodextrin. (FF3.) We agree with Appellants that “the percentage of
volatile perfumes within the fragrance to be complexed has nothing to do
with the complexation efficiency parameter recited in the rejected claims.”
(Id. at 5.) The Examiner’s objection that a complexation efficiency
parameter is not recited in the claims (Ans. 13) is inconsistent with the claim
requirement that at least 90% of the fragrance material must be complexed
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with the cyclodextrin. Appellants’ “complexation efficiency” appears to be
a reasonable reference to claim 37’s requirement “wherein the percent of the
fragrance material that is complexed with the cyclodextrin is . . . .” (See
FF4.) The claimed parameter “percent of the fragrance material that is
complexed with the cyclodextrin,” is different from Bacon’s parameter
defining how much of the complexed perfume is of the highly volatile kind.
(See FF5.) The rejection did not account for that difference between
Bacon’s product and the claimed product.
CONCLUSION
The evidence does not support a finding that Bacon taught or
suggested claim 37’s feature “wherein the percent of the fragrance material
that is complexed with the cyclodextrin is greater than about 90%.”

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SUMMARY
We reverse the rejection of claims 37, 39, 41, 43 and 44 under 35
U.S.C. § 103(a) as unpatentable over Bacon.
We reverse the rejection of claims 37, 40, 42 and 45 under 35 U.S.C.
§ 103(a) as unpatentable over Bacon and Peterson.
We reverse the rejection of claims 37, 46 and 47 under 35 U.S.C. §
103(a) as unpatentable over Bacon and Faryniarz.

REVERSED

alw

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