Ex Parte Scavone et al

Patent Trial and Appeal Board

Dec 12, 2016

13101865 (P.T.A.B. Dec. 12, 2016)

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.
13/101,865 05/05/2011 Timothy Alan Scavone 10728C2 5877
27752 7590 12/14/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
KASSA, TIGABU
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
12/14/2016 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 TIMOTHY ALAN SCAVONE, MICHAEL JUDE LEBLANC,
LOWELL ALAN SANKER, and ADRIAN GREGORY SWITZER
Appeal 2015-006715
Application 13/101,865
Technology Center 1600
Before DONALD E. ADAMS, ULRIKE W. JENKS, and JOHN G. NEW,
Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134(a) involves claims 1—3, 7—9, and
19-21 (Final Act. 1). Examiner entered rejections under 35 U.S.C. § 103(a)
and obviousness-type double patenting. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify the real party in interest as “The Procter & Gamble
Company” (Br. 1).
Appeal 2015-006715
Application 13/101,865
STATEMENT OF THE CASE
Appellants disclose “personal care products containing cyclodextrin
complexing material and a fragrance material complexed with the same”
(Spec. 1: 11—12). Claim 1 is representative and reproduced below:
1. A personal care product, comprising:
(a) a composition that is applied to the body;
(b) a plurality of spray dried particles associated with the
composition, the plurality of spray dried particles comprising a
cyclodextrin complexed with a first fragrance material, wherein
the percent of the first fragrance material that is complexed with
the cyclodextrin is greater than about 75%, so that the
perceptibility of the first fragrance is minimized prior to its
release;
wherein the cyclodextrin is encapsulated with an
encapsulating material prior to association with the composition
in order to prevent premature release of the first fragrance
material; and
wherein the particle cannot be perceived by a consumer.
(Br. 15.)
The claims stand rejected as follows:
Claims 1—3, 7, 9, and 19—21 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Bacon,2 Strassburger,3 and Hedges.4
2 Bacon et al., US 6,110,449, issued Aug. 29, 2000.
3 Strassburger, WO 2006/137958 Al, published Dec. 28, 2006.
4 Allan R. Hedges, Industrial Applications of Cyclodextrins, 98 Chem. Rev.
2035^14 (1998).
2
Appeal 2015-006715
Application 13/101,865
Claims 1, 2, 7, 8, and 19-21 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Buchanan,5 Strassburger, and
Hedges.
Claims 1—3, 8, and 9 stand provisionally rejected under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over claims 1—3, 8, and 9 of Scavone ’147.6
Claims 1 and 2 stand provisionally rejected under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over claims 37—39, and 43 of Scavone ’1917 in view of Bacon.
Obviousness-type Double Patenting'.
“Appellants respectfully reserve their right to respond to the
provisional rejections until such time as the provisional rejections are no
longer provisional” (Br. 13). We interpret Appellants’ contention as a
waiver of the appeal of the obviousness-type double patenting rejections.
Therefore, we summarily affirm, and will not further discuss, the
obviousness-type double patenting rejections of record.
Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
5 Buchanan et al., US 2002/0025946 Al, published Feb. 28, 2002
6 Scavone et al., US 2011/0212147 Al, published Sept. 1, 2011.
7 Scavone et al., US 2008/0213191 Al, published Sept. 4, 2008.
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Appeal 2015-006715
Application 13/101,865
FACTUAL FINDINGS (FF)
FF 1. Examiner relies on Bacon or Buchanan to disclose Appellants’
claimed invention with the exception of a disclosure that: (1) “the percent of
the fragrance material that is complexed with the cyclodextrin is greater than
about 75%” and (2) “the cyclodextrin material is encapsulated with
encapsulating material prior to association with the composition” (Ans. 5;
see generally id. at 3—5; see also id. at 16—17).
FF 2. Examiner relies on Strassburger to make up for the failure of Bacon
and Buchanan to disclose that the percent of the fragrance material that is
complexed with the cyclodextrin is greater than about 75% (Ans. 5—8; see
also id. at 17—19).
FF 3. Examiner relies on Hedges to disclose the encapsulation of a
complex in a wax coating (see Ans. 9, citing Hedges 2043).
FF 4. Examiner finds that Hedges discloses that
A wax coating can be placed over a complex to protect it from
the effects of water. In applications, such as the use of
fragrance complexes in laundry dryer sheets, the dryer sheet
comes into contact with the clothing when it is wet enough to
release fragrance from the complex. The complex is encased in
a wax which does not melt until certain temperature conditions
are met. While there is still some water in the clothing being
dried, some of the fragrance is release[d] as the wax melts,
exposing the complex, but a sufficient amount of fragrance
remains to obtain the intended effect.
(Ans. 9 (emphasis removed); see Hedges 2043.)
FF 5. Examiner finds that “body heat would [] be able to heat the wax-
melting would just depend on the melting point of the selected wax” (Ans.
16).
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Appeal 2015-006715
Application 13/101,865
ANALYSIS
The combination of Bacon or Buchanan with Strassburger and Hedges:
Based on the combination of Bacon or Buchanan with Strassburger
and Hedges, Examiner concludes that, at the time Appellants’ invention was
made, it would have been prima facie obvious to, inter alia, encapsulate a
plurality of spray dried particles comprising a cyclodextrin complexed with
a first fragrance material, as suggested by the combination of Bacon or
Buchanan with Strassburger in wax as suggested by Hedges (see Ans. 11—13
and 23—24). In this regard, Examiner finds that, while Hedges suggests that
the wax must melt before a fragrance containing composition that is encased
in the wax is released, a person of ordinary skill in this art would select a
wax capable of melting when exposed to body heat (see FF 4—5; see also Br.
5—7, 11, and 13). Examiner, however, failed to: (a) explain why a person of
ordinary skill in this art would have found it prima facie obvious to
formulate a personal care product, as suggested by the combination of Bacon
or Buchanan with Strassburger, with wax encapsulated particles comprising
a cyclodextrin complexing material or, if such a reason existed, (b) establish
an evidentiary basis on this record to support a conclusion that a person of
ordinary skill in this art would have had knowledge of a wax that is capable
of: (i) encapsulating a composition within the scope of Appellants’ claimed
invention and (ii) melting in the presence of body heat {see generally Br. 6—
7; cf. FF 5). See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“rejections
on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”).
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Appeal 2015-006715
Application 13/101,865
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 1—3, 7, 9, and 19—21 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Bacon, Strassburger, and Hedges is
reversed.
The rejection of claims 1, 2, 7, 8, and 19—21 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Buchanan, Strassburger, and
Hedges is reversed.
SUMMARY
We reverse the obviousness rejections of record and affirm the
provisional obviousness-type double patenting rejections of record.
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)(iv).
AFFIRM-IN-PART
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