Ex Parte Smets et al

Patent Trial and Appeal Board

Sep 22, 2017

13079880 (P.T.A.B. Sep. 22, 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.
13/079,880 04/05/2011 Johan Smets 11680ML 1652
27752 7590 09/26/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
KUMAR, PREETI
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
09/26/2017 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 JOHAN SMETS, SUSANA FERNANDEZ PRIETO,
ROBERT STANLEY BOBNOCK,
SANDRA JACQUELINE GUINEBRETIERE,
PETER MARIE KAMIEL PERNEEL, and
JAN-SEBASTIAAN UYTTERSPROT1
Appeal 2017-000738
Application 13/079,880
Technology Center 1700
Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
BEVERLY A. FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as The Proctor & Gamble
Company. App. Br. 1.
Appeal 2017-000738
Application 13/079,880
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1—6, 8—14, 17, 18, 20, and 21. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A consumer product comprising a particle, said particle comprising:
a) a shell material, said shell material comprising a material
selected from the group consisting of:
(i) a material comprising polyvinyl pyrrolidone;
(ii) polymers derived from hydrophilic monomers
comprising diamines, triamines, dials and mixtures
thereof;
(iii) polymers derived from hydrophobic monomers
comprising diacyl chlorides, diisocyanates,
bischloroformates and mixtures thereof;
(iv) a material comprising a polyvinyl alcohol derivative;
(v) a material comprising an acrylate derivative;
(vi) a material comprising a polymer with a cloud point
between 0° and 120°C;
(vii) a material comprising a cellulosic polymer; and
(viii) a material comprising a non-cellulosic, natural
polymer;
and
b) a core material, said core material comprising a protective
suspension agent, wherein said protective suspension agent
comprises an organosilicone, wherein said
organosilicone has a viscosity at 25°C of from about 500
centistokes to about 2,000,000 centistokes.
said core material further comprising a solid, water soluble benefit
agent, wherein said solid, water soluble benefit agent comprises
a material selected from the group consisting of a metal
catalyst, a non-metal catalyst, an activator, a pre-formed peroxy
carboxylic acid, a diacyl peroxide, a hydrogen peroxide source,
an enzyme and mixtures thereof,
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Application 13/079,880
and said core material further comprising a hydrophobic organic
material; said shell material encapsulating said core material,
wherein at least 75% of said particles have a particle size of from
about 1 micron to about 120 microns; and wherein at least 75% of
said particles have a particle wall thickness of from about 30 nm
to about 500 nm.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Boutique et al. US 6,949,496 B1
(hereinafter “Boutique”)
Grate et al. US 7,311,926 B2
(hereinafter “Grate”)
Baker et al. EP 1 222 244 B1
(hereinafter “Baker”)
THE REJECTIONS
1. Claim 8 is rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§112, second paragraph.
Sept. 27, 2005
Dec. 25, 2007
Nov. 29, 2006
2. Claims 1—6, 8—14, 17, 18, 20, and 21 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Boutique in view of Baker and
Grate.
ANALYSIS
To the extent that Appellants have presented substantive arguments
for the separate patentability of any individual claims on appeal, we will
address them separately consistent with 37 C.F.R. § 41.37(c)(l)(vii).
We review the appealed rejections for error based upon the issues
identified by the Appellants and in light of the arguments and evidence
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produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal, including the record set forth in the
Appeal Brief and Reply Brief, including each of Appellants’ arguments, we
are not persuaded that Appellants identify reversible error. Thus, we affirm
the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Rejection 1
Claim 8 is rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§ 112, second paragraph. Ans. 2. Appellants do not address this rejection in
the Appeal Brief or Reply Brief, and we therefore summarily affirm this
rejection. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining
that summary affirmance without consideration of the substantive merits is
appropriate where an appellant fails to contest a ground of rejection).
Rejection 2
Claims 1 and 20
Appellants similarly argue independent claims 1 and 20 (Appeal Br.
4—6 and 8—9), and we therefore group these claims together and select claim
1 as representative of this grouping.
Appellants argue that a prima facie case of obviousness has not been
established because the cited references do not teach or suggest all the
limitations of the claims. More particularly, Appellants argue that Boutique
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does not teach particles of the claimed size that have the claimed structure,
particularly with regard to the contents of the core. Appeal Br. 5.
Appellants explain that, as recited in claim 1, the claimed particles
comprise a shell and a core, wherein the core comprises at least three
components: a protective suspension agent (e.g., organosilicone having a
certain viscosity), a solid water soluble benefit agent (e.g., an enzyme), and a
hydrophobic organic material (e.g., certain oils). Appeal Br. 4—5.
Appellants refer to the Fernandez Prieto Declaration in support of the
position that the claimed combination improves the stability of the benefit
agent in the particle and reduces the interactions of the soluble benefit agent
with water. Fernandez Prieto Declaration, | 8. Appeal Br. 4—5. We are
unpersuaded by such argument for essentially the reasons provided in the
record on pages 3^4 of the Answer, and add that Appellants can rebut a
prima facie case of obviousness by showing “unexpected results,” i.e.,
showing that the claimed invention possesses a superior property or
advantage that a person of ordinary skill in the art would have found
surprising or unexpected. See In re Geisler, 116 F.3d 1465, 1469 (Fed.
Cir.1997) (quoting In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). However,
the burden rests with Appellants to establish, inter alia, (1) that the
comparisons are to the disclosure of the closest prior art, and (2) that the
supplied evidentiary showing is commensurate in scope with the claimed
subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The
Fernandez Prieto Declaration falls short of meeting this required burden.
Appellants also submit that the recited particles are relatively small; at
least 75% of the particles have a particle size of from about 1 micron to
about 120 microns, and at least 75% of the particles have a particle wall
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thickness of from about 30 nm to about 500 nm. Appeal Br. 5. Appellants
submit that Boutique gives no indication of the distribution of the size of the
base powder particles, distribution of particle shell thickness, or even if a
shell is formed at all. Appeal Br. 5. Appellants argue that while Boutique
discloses particles having a wide range of sizes (“median particle size of
from 0.1 um to 1500 um” (Boutique, claim 4)), Boutique does not disclose
whether the particles having sizes that overlap with the recited ranges are
core/shell particles as claimed. Boutique, col. 11,11. 4-22. Appeal Br. 5—6.
We are unpersuaded by such argument essentially for the reasons set
forth in the record by the Examiner, emphasized hereafter. The
aforementioned arguments do not address squarely the Examiner’s stated
position in the record. As explained by the Examiner in the record, Boutique
teaches the same polydimethylsiloxane (PDMS) having the same viscosity
of from 20cs to about 1500cs at 25°C. The Examiner states that Boutique
teaches solid enzyme prills having a particle size from 100 pm to 1000 pm.
Boutique, col. 27,11. 44-46. The Examiner states that Boutique exemplifies
enzymes in their solid phase (col. 40,1. 56) of the non-aqueous liquid
consumer product Example I (teaching duramyl and carezyme). Boutique,
Example I, col. 41. Ans. 3.
The Examiner also finds that Boutique teaches protease enzymes,
along with an antifoaming agent comprising a fatty acid organic material
meeting the claimed hydrophobic organic material (Boutique, col. 29,11. 5—
20), as well as teaching PDMS and solid silica and ethoxylated
quatemized amine clay (each component encompassing the claimed core).
The Examiner states the Boutique also teaches use of PEG, meeting
the claimed shell portion of the claimed particle (Boutique, col. 45,11. 46),
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and further teaches that the solid phase PEG is sprayed onto the base powder
composition A in Table 1 found in column 46. Ans. 3. The Examiner also
finds that Boutique teaches microspheres used as the core of a particle which
is formed by substantially encapsulating the core with detergent
components. Boutique, col. 35,11. 30—35 and col. 45,11. 33—37. Ans. 3.
The Examiner summarizes that because the one example (in
col. 41 of Boutique) has each component as claimed with the same
properties as claimed (i.e., enzymes, the particulate foam
control agent used has polydimethylsiloxane having the claimed
viscosity (col. 29,11. 35—40), and hydrophobic organic material
(defined in col. 29,11. 5—15)), and because, in an example of making
the tablet (Example la at col. 45 46 of Boutique), Boutique teaches
that PEG shell material is sprayed onto the base powder components,
Appellants’ arguments are unpersauave (Ans. 3—4), and we agree.
We add that the test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of
the primary reference; nor is it that the claimed invention must be
expressly suggested in any one or all of the references. Rather, the
test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art. In re Keller, 642 F.2d
413, 425 (CCPA 1981) (citations omitted.) In this light, we agree
with the Examiner’s conclusion regarding the suggestions provided by
the teachings of Boutique. The Examiner’s further reliance upon
Grate and Baker, discussed infra, further buttresses the Examiner’s
stated position in the record.
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Claims 2—5
Claim 2 is dependent upon claim 1 and recites that the core material
comprises, based on total core weight, from about 0.01% to about 80% of
said solid, water soluble benefit agent. Claim 3 is dependent upon claim 1
and recites that the core material comprises, based on total core weight, from
about 0.1% to about 99% of said protective suspension agent. Claim 4 is
dependent upon claim 1 and recites that the core material comprises, based
on total core weight, from about 0.1% to about 99% of said hydrophobic
organic material. Claim 5 is dependent upon claim 1 and recites that the
particle comprises, based on total particle weight, from about 1% to about
95% of said core material.
Appellants argue that the tablets of Boutique have sizes that are orders
of magnitude greater than the claimed core-shell particles. Appeal Br. 7.
In response, the Examiner states that Boutique would have suggested
to one of ordinary skill to have used core-shell composite (see col. 4,11.1—20
of Boutique) particles having an average particle size of from 1 pm to 150
pm (claim 5 of Boutique) in their tablets having a diameter of 20—60 mm
(col. 23,11.17 of Boutique). Ans. 4. The Examiner further states that
Boutique teaches a coating of any desired thickness can be applied, and that
the coating forms from 1% to 10%, of the tablet weight. Boutique, col. 24,
11. 17-20. Ans. 5.
The Examiner concludes, based upon the aforementioned teachings,
one of ordinary skill would have logically then looked to the teachings of
Grate, involving teachings in the analogous art of enzymatic detergent
composite particles (see col. 14,11. 39-40 of Grate). Ans. 5.
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Regarding the teachings of Grate, the Examiner finds that Grate
teaches composite particulate compositions comprising a plurality
of particles, whereby each particle comprises at least one enzyme molecule
and at least one silicon-containing polymer, and having a silicon-containing
polymer shell with an average thickness of about 0.2 to about 200 nm.
Grate, claim 17. Ans. 5. The Examiner states that while Boutique is silent
regarding specific dimensions for the particle wall thickness, Boutique
teaches that it can be of any thickness, and one of ordinary skill would have
logically looked for similar components, namely a particle with PEG,
silicone and enzymes such as taught by both Boutique and Grate, and would
have arrived at the claimed particle wall thickness. Ans. 5—6.
The Examiner concludes that the subject matter of claims 2—5 are
suggested by the applied art because Boutique exemplifies the same
components having similar particle sizes in general and Grate teaches the
claimed particle wall thickness range is commonly known in particles
having a polymer shell with polyethylene glycol, enzymes and silicone.
Grate, Example 6 and claim 17. Ans. 6. We agree with the Examiner’s
conclusion, and are not persuaded of error by Appellants’ arguments in the
Appeal Brief or Reply Brief for the reasons provided in the record by the
Examiner. Again we note that the test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. In re Keller at 425.
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Appellants also argue that Boutique in combination with Grate do not
teach the claimed amounts of core materials. Appeal Br. 7.
The Examiner responds and states that this argument is not persuasive
(and we agree) because one of ordinary skill in the art would have
been motivated to arrive at Appellants’ claimed product having at least 75%
of the particles of a particle size of 1—120 pm, with a particle wall thickness
of from about 30-500 pm as claimed, because Boutique teaches a similar
consumer product comprising microspheres of a particles size of 10 pm to
150 pm (Boutique, claim 5) having a solid phase comprising organosilicone
with same viscosity, enzymes, hydrogen peroxide source and solid silica,
ethoxylated quatemized amine clay and fatty acids (meeting the
broadly claimed water soluble benefit agents and hydrophobic organic
material). Boutique, Example 1 in col. 40-41. Ans. 6. The Examiner also
states that Boutique further suggests that the polyethylene glycol shell is
sprayed onto the base powder composites (Boutique, Example la in col. 45,
1.46) in general, and Grate teaches (in the similar technology of composite
particles comprising similar polyethylene glycol, an enzyme, and a silicone
(such as those in Boutique) an average particle shell thickness of about 0.2
to about 200 nm. Grate, Example 6, col. 21 and claim 17. Ans. 6. Also, the
Examiner notes that Boutique suggests any coating thickness in general.
Boutique, col. 24,1. 17. Ans. 6—7. We thus agree with the Examiner’s
position with regard to claims 2—5. In re Keller at 425.
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Claim 21
Claim 21 depends upon claim 20, and recites the product according to
Claim 1, wherein the process of forming the particle comprises an aqueous
emulsion.
Appellants argue that claim 21 is a product-by-process claim and the
Fernandez Prieto Declaration discusses how the interaction with water is
beneficial such that the claimed structure is beneficial. Appeal Br. 8.
In response, the Examiner states that Appellants’ claim 21 is not
limited to a solid consumer product or a liquid consumer product. Ans. 7.
We agree. The Examiner further states that the reference teaching (Boutique)
has to be evaluated as a whole, and just because there is the word “liquid” in
front of composition A, does not make the entire consumer product a
flowing liquid. It is the Examiner’s further position that the solid phase (col.
40,1. 56) in the non-aqueous liquid detergent consumer product example in
column 40-41 of Boutique meets the claimed core by its teaching of the
amine clay and antifoam silicone made up of polydiorganosiloxane and solid
silica and fatty acid organic material. Boutique, col. 28,11. 65—col. 29,1. 42.
We agree with this interpretation of Boutique in this regard, and Appellants’
argument (in both the Appeal Brief and Reply Brief) have not persuaded us
otherwise. Ans. 7.
With regard to the secondary reference of Baker, Appellants argue
that Baker does not teach the core comprising the organosilicone, solid water
soluble agent, and hydrophobic agent, and the shell as claimed. Appeal Br.
6- 7.
We are in agreement with the Examiner’s stated reply made on page
7— 8 of the Answer as Appellants have not convinced of error in the
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Examiner’s stated position. Therein, the Examiner explains that the
rejection is based upon the combination of references, including Baker, and
that Appellants’ arguments do not adequately address the combination. The
Examiner explains that Baker was relied upon for its teaching that a
protective shell is a coating that encapsulates. The Examiner states that
Boutique does not literally teach that the shell/coating material encapsulates
their core material, however Boutique does teach that PEG is sprayed onto
core materials in general. Boutique, Table 1, col. 46. The Examiner states
that Boutique also suggests to use the microsphere as the shell or as the core
of a particle which is formed by substantially encapsulating the core with
detergent components. Boutique, col. 35,1. 33. The Examiner states that
Baker, in 1262 on page 36, teaches that protective shell coatings are
encapsulative coatings that allow for preservation and protection of the
cleaning composition ingredients. Ans. 8. The Examiner concludes that
therefore the combination of Boutique and Baker suggests the modification
of the examples of Boutique such that the polyethylene glycol/shell material
that is sprayed in Example la of Boutique encapsulates the base powder core
material, thereby arriving at a particle wherein the shell material
encapsulates the core material, as recited by Appellants’ claims.
In reaching the aforementioned conclusion of obviousness, the
Examiner emphasizes that Boutique suggests in a product having a solid
phase comprising (col.40-41, Example 1) each component as claimed with
the same properties as claimed (i.e., enzymes, the particulate foam control
agent used has polydimethylsiloxane having the claimed viscosity (col. 29,
11. 35—40) and fatty acid hydrophobic organic material (defined in col. 29,11.
5—15), and in an example of making the tablet (Example la, col. 45—46),
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Boutique teaches the PEG shell material is sprayed onto the base powder
components in general, and Baker suggests the beneficial utility
of encapsulated detergents in protection and preservation. Ans. 8.
Appellants’ stated position as set forth in the Appeal Brief and in the Reply
Brief has not convinced us of error in the Examiner’s conclusion for the
reasons well expressed by the Examiner in the record. We reiterate that the
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference; nor is it
that the claimed invention must be expressly suggested in any one or all of
the references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. In re
Keller at 425.
In view of the above, we affirm Rejection 2.
DECISION
Each rejection is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
ORDER
AFFIRMED
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