The Procter & Gamble Company

Patent Trials and Appeals Board

Apr 2, 2020

15665886 - (D) (P.T.A.B. Apr. 2, 2020)

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.
15/665,886 08/01/2017 Min MAO 13321MD 5290
27752 7590 04/02/2020
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
BOYLE, KARA BRADY
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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
mayer.jk@pg.com
pair_pg@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MIN MAO, MARK WILLIAM HAMERSKY,
ROBERT WAYNE GLENN JR., and TODD RYAN THOMPSON

Appeal 2019-003419
Application 15/665,886
Technology Center 1700
____________

Before KAREN M. HASTINGS, JEFFREY R. SNAY, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–21. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as The Procter &
Gamble Company. Appeal Br. 1.
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Application 15/665,886

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CLAIMED SUBJECT MATTER

The present application generally relates to dissolvable solid
structures. Specification filed Aug. 1, 2017 (“Spec.”) 1. The dissolvable
solid structures may find use in a variety of applications including hair and
skin treatment, fabric softening, and dish cleaning. Id. at 12–13.
Dissolvable solid products are known in the art, however, “the
processes for making them can have less than optimal cost, rate of
manufacture, and/ or product variability parameters.” Id. at 1. Additionally,
the Specification teaches that “it is desirable to improve the dissolving
properties of the solid product to facilitate improved consumer satisfaction.”
Id.
The Specification describes one embodiment as “[a] Structure in the
form of a porous dissolvable solid, comprising: (a) from about 1 wt% to
about 95 wt% surfactant; and (b) from about 5 wt% to about 50 wt% of a
vinyl acetate-vinyl alcohol copolymer, wherein said copolymer comprises
not more than about 84% alcohol units.” Id. The Specification further
includes the following diagram showing the described vinyl acetate-vinyl
alcohol copolymer:

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The Specification teaches that “[a]s used herein, ‘vinyl acetate-vinyl alcohol
copolymer’ (and ‘copolymer’ when used in reference thereto) refers to a
polymer of . . . structure (I).” Id. at 3.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with certain limitations bolded for emphasis:
A steel alloy composition comprising, in weight percent:

1. A fibrous dissolvable solid Structure comprising a
plurality of fibers, the Structure comprising:
(a) from about 1 wt% to about 95 wt% surfactant;
(b) from about 5 wt% to about 50 wt% of a copolymer
comprising vinyl acetate and vinyl alcohol units, wherein the
copolymer comprises not more than about 84% alcohol
units.
Appeal Br. 19 (Claims App.) (emphasis added).

REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Glenn, Jr. et al. (“Glenn”) US 2012/0021026 Al Jan. 26, 2012
B. Briscoe et al., The effects of hydrogen bonding upon the viscosity of
aqueous poly(vinyl alcohol) solutions, Polymer 41 (2000) 3851–3860
(“Briscoe”)

REJECTION
The Examiner maintains the following rejection:
Claims 1–21 are rejected under 35 U.S.C. § 103 as being unpatentable
over Glenn and further in view of Briscoe. Final Action dated Dec. 28, 2017
(“Final Act.”) 4–9.
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DISCUSSION
The Examiner rejects claims 1–21 as obvious over Glenn in view of
Briscoe. Id.
The primary reference, Glenn, is titled “Dissolvable Fibrous Web
Structure Article Comprising Active Agents.” Glenn, code (54). It teaches a
water soluble article that is “from about 10% to about 70% water soluble
polymeric structurant.” Id. ¶ 9. It further teaches that the water soluble
polymer may “include polyvinyl alcohols.” Id. ¶ 55. In one embodiment,
Glenn uses a polyvinyl alcohol that is “87–89% hydrolyzed.” Id. ¶ 145
(Table 1). The Examiner finds that Glenn teaches all elements of claims 1–3
other than “that the number of alcohol units present in (i.e. the hydrolysis
level of) the PVA used to make the fibers of the fibrous solid structure of the
invention is less than about 84%; less than about 82.5%; or less than about
81%.” Final Act. 6.
The Examiner additionally finds that Briscoe teaches PVA having a
hydrolysis of less than 88%. Id. at 7. The Examiner finds that Briscoe
teaches specific embodiments having a degree of hydrolysis of 72.5%, 78%,
and 83%. Id. The Examiner further finds that Briscoe teaches that the
decrease in the degree of hydrolysis increases the solubility of PVA. Id.
The Examiner determines that a person of ordinary skill in the art
would have had reason “to use PVA having a hydrolysis of less than 88%,
particularly at a degree of hydrolysis of, 72.5%, 78%, and 83% . . . in order
to increase the solubility of the porous dissolvable structures of Glenn.” Id.
Appellant contends that the rejection is in error on several bases.
Appeal Br. 4–19. Appellant aggregates the claims into several groups for
purposes of argument.
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Claims 1, 4, 5, 9, 10, 12, and 13
Appellant argues that claims 1, 4, 5, 9, 10, 12, and 13 are not obvious
over the combination of Glenn and Briscoe. Appeal Br. 5–12. First,
Appellant argues that one of skill in the art would have recognized that the
solubility of the article described by Glenn would be impacted by a number
of factors beyond the solubility properties of the PVA material.
Accordingly, Appellant argues, Briscoe’s teachings regarding the solubility
properties of PVA would be insufficient reason to modify the article of
Glenn. Id. at 6–7.
Appellant’s argument is not persuasive. Appellant does not direct us
to factual evidence that supports its position. An argument made by counsel
in a brief does not substitute for evidence lacking in the record. Estee
Lauder, Inc. v. L’Oréal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
Second, Appellant argues that “Briscoe neither teaches nor suggests
that 84% or less hydrolyzed PVA is more water soluble than the 87–89%
hydrolyzed PVA described by Glenn.” Appeal Br. 7. In support, Appellant
observes that the primary focus of Briscoe concerns the viscosity
characteristics of PVA. Id. Appellant further argues that the Examiner may
not properly rely on Figure 4 of Briscoe because it “is not at all
quantitative.” Id. at 7–8. Appellant similarly asserts that Briscoe’s
discussion regarding solubility of PVA is qualitative and general. Id. at 9.
Appellant further asserts that the Examiner is in error in finding that “[t]he
specific levels of hydrolysis disclosed in Briscoe are . . . 72.5%, 78% and
83% . . . , which fall within the range of the instant claims, dissolves in water
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much more readily at room temperature than one with a higher degree of
hydrolysis.” Id. at 10 (quoting Final Act. 10).
In the Answer, the Examiner refers to Briscoe’s statement that “[a]
PVA with a degree of hydrolysis below 88% dissolves in water much more
readily at room temperature than one with a higher degree of hydrolysis.”
Examiner’s Answer dated July 25, 2018 (“Answer”) 10 (citing Briscoe
3853). The Examiner further finds that “the only specific values in the
reference below 88% are those in Table 1 at 72.5, 78, and 83% hydrolysis.”
Id. at 11. The Examiner finds that one of skill in the art would regard the
specific values enumerated in Briscoe as having increased water solubility.
Id. at 10–11.
We find the Examiner’s reasoning to be persuasive. Briscoe clearly
teaches that “the solubility of PVA in water is primarily determined by the
degree of hydrolysis.” Briscoe 3853. Briscoe further teaches that “[a] PVA
with a degree of hydrolysis below 88% dissolves in water much more
readily at room temperature than one with a higher degree of hydrolysis.”
Id. (emphasis added). Briscoe additionally teaches that an “increase in
number of hydrophobic acetate groups, i.e. decrease of degree of
hydrolysis, disrupts inter and intra chain hydrogen bonding and
consequently increases the solubility of the PVA.” Id. (emphasis added).
Considered as a whole, Briscoe suggests that the specific hydrolysis values
disclosed therein have increased solubility. It would be anomalous to teach
that PVA with a degree of hydrolysis below 88% has greater solubility and
then test PVA with a degree of hydrolysis below 88% having a lesser
solubility.
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Figure 4 of Briscoe does indicate that PVA achieves a maximum
solubility at some hydrolysis value and that water solubility would decline
from such maximum with either an increase or decrease in hydrolysis.
Figure 4, however, is described as only a “[s]chematic diagram.” Id. at
3854. Accordingly, one may not infer numerical data from the figure.
In view of the foregoing, we determine that Appellant has not shown
error in the Examiner’s finding that one of skill in the art would have had
reason to employ the several polyvinyl alcohols of Briscoe in making the
article of Glenn so as to achieve a structure having increased solubility.

Claim 9
Appellant argues claim 9 separately. Claim 9 depends from claim 1
and further requires “at least one additional copolymer comprising vinyl
acetate and vinyl alcohol units, wherein the at least one additional
copolymer comprises not more than about 84% alcohol units and has a
weight average molecular weight of from about 40,000 to about 300,000.”
Appeal Br. 19–20 (Claims App.).
In the Final Action, the Examiner rejects claim 9 on the basis that “the
‘additional polymer’ may be identical to the copolymer recited in instant
claims 1-8.” Final Act. 7.
Appellant argues that this is contrary to the doctrine of claim
differentiation. Appeal Br. 11. Appellant argues that the claim requires
at least two distinct copolymers. Id. at 11–12.
In the Answer, the Examiner relies, in part, on an alternative basis of
rejection. Answer 13–15. There, the Examiner finds that Glenn teaches two
copolymers having different molecular weights. Id. at 14.
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The Specification teaches that “[i]n one embodiment, the porous
dissolvable Structures can be prepared by combining two or more vinyl
acetate-vinyl alcohol copolymer materials described herein, wherein the
copolymer materials differ with respect to either or both their degree of
polymerization and/or their degree of hydrolysis.” Spec. 7. In view of such
teaching, we determine that a difference in average molecular weight
(degree of polymerization) is a sufficient distinction to comprise “two
copolymers” for purposes of claim 9. We further find that Appellant has not
addressed and not shown error in the Examiner’s alternative basis for
affirmance of claim 9.

Claims 2 and 6
Appellant presents argument regarding claims 2 and 6. Appeal Br. 12.
Claims 2 and 6 each require that the copolymer comprises not more than
82.5% alcohol units. Id. at 19 (Claims App.). Appellant essentially relies on
the arguments it presented above with regard to claim 1. As we have not
found such arguments to be persuasive, we determine that Appellant has not
shown error with regard to claims 2 and 6.

Claims 3 and 7
Appellant argues claims 3 and 7 separately. Appeal Br. 12–13.
Claims 3 and 7 each require that the copolymer comprises not more than
“about 81% alcohol units.” Id. at 19 (Claims App.). Appellant essentially
relies on the arguments it presented above with regard to claim 1. As we
have not found such arguments to be persuasive, we determine that
Appellant has not shown error with regard to claims 3 and 7.
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Claim 8
Appellant argues claim 8 separately. Appeal Br. 13. Claim 8 depends
from claim 1 and further requires that the structure have “a weight of from
about 1 gram to about 10 grams and a hand dissolution value of from about 1
stroke to about 15 strokes.” Id. at 19 (Claims App.).
The Examiner rejects claim 8 finding that “[e]mbodiments of the
Article of Glenn JR. et al. have a hand dissolution value of from about 4 to
about 15 strokes.” Final Act. 5 (referring to Glenn ¶ 135).
Appellant contends that Glenn’s teaching is not directly relevant
because, in Glenn, the tested article is only 0.5 g while the Specification
discloses the results of tests of articles of 1.25 g. Appeal Br. 13. Appellant
further asserts that the comparative example described in its Specification,
having an 87–89% hydrolyzed vinyl acetate-vinyl alcohol copolymer, was
shown to be poorly soluble. Id. Appellant concludes that “a POSA would
not expect such an improvement in dissolvability from the use of the lower
hydrolysis PVA copolymer.” Id.
In the Answer, the Examiner determines that the testing of 1.25 g
articles described in the Specification is of little relevance because the claim
concerns an article having “a weight of from about 1 gram to about 10
grams.” Answer 15–16. The Examiner further determines that a “weight of
0.5 g meets the requirement of about 1 gram as recited in instant claim 8.”
Id. at 15.
In the alternative, the Examiner finds that the article of Glenn as
modified by the teachings of Briscoe “would also necessarily result in any
improvements of dissolvability because using the hydrolysis levels of
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Briscoe increases the water solubility of the PVAs disclosed therein.” Id. at
16.
Claim 8 concerns the solubility of the article at issue. See Spec. 3, 32.
The Examiner determines that one of skill in the art would have been
motivated to modify the article of Glenn “in order to increase the solubility
of the porous dissolvable structures of Glenn.” Final Act. 7. Appellant has
not shown error in this determination. Accordingly, it is reasonable to infer
that the modified article as proposed by the Examiner would have the
claimed hand dissolution value. Ex parte Obiaya, 227 USPQ 58, 60 (BPAI
1985). This is particularly so where, as here, the value taught by Glenn is
substantially similar to that claimed.

Claim 11
Claim 11 depends from claim 1 and further requires that the structure
have “a Distance to Maximum Force value of from about 6 mm to about 30
mm.” Appeal Br. 20 (Claims App.). Appellant asserts that the claimed
“property reflects how far the Structure can flex before the countering force
reaches its maximum point.” Id. at 13–14. Thus, a greater value indicates a
more flexible structure. Id. at 14.
In rejecting the claim, the Examiner determines that the article
formed by the hypothetical combination of the teachings of Glenn and
Briscoe would have the same constituents, and therefore the same properties
as the claimed structure including the “Distance to Maximum Force value
recited in instant Claim 11.” Final Act. 9.
In its brief, Appellant argues that the articles described by Glenn do
not necessarily have the same properties as the claimed articles. Appeal Br.
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14. Appellant further contends that Glenn does not describe any particular
flexibility properties. Id. Appellant, however, does not address the
Examiner’s hypothetical combination. Accordingly, we find no basis in the
record for concluding the Examiner reversibly erred in determining that the
claimed flexibility is the natural result of the combination of prior art
elements taught in Glenn and Briscoe. See Par Pharm., Inc. v. TWi Pharms.
Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014) (it may be appropriate “to
rely on inherency to establish the existence of a claim limitation in the prior
art in an obviousness analysis” where the limitation at issue is “the natural
result of the combination of elements explicitly disclosed by the prior art.”).

Claims 14–17
Claim 14 is an independent claim that is somewhat similar in scope to
claim 1. See Appeal Br. 20 (Claims App.). Claim 14 differs from claim 1,
inter alia, in that it requires “from about 65% to about 82.5% alcohol units”
as well as both a first copolymer and a second copolymer of different
molecular weight. Id.
The Examiner’s analysis regarding the degree of hydrolysis of the
copolymer is discussed above. The Examiner further finds as follows:
it would have been obvious, given the teachings of Glenn Jr., to
use two copolymers, one having a molecular weight of, for
example, 40,000 and the second having a molecular weight in a
range of 70,000 to 200,000, in amounts which meet instant
claim 14, given the teachings in paragraphs [0052]-[0053]
because (1) Glenn Jr. expressly teach[es] the one or more
copolymers are present in amounts ranging from 10 to 70% by
weight and (2) these one or more copolymers have molecular
weights falling within a range of from 40,000 to 500,000.

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Final Act. 8.
Appellant argues that the Examiner’s analysis is in error in two
respects. First, Appellant argues that the combination of Glenn and Briscoe
would not have taught a polyvinyl acetate/polyvinyl alcohol copolymer
having degree of hydrolysis of about 65% to about 82.5%. Appeal Br. 15.
This is found not to be persuasive for the reasons set forth above with regard
to claim 1.
Second, Appellant argues that Glenn lacks any specific teaching to
use a copolymer of lower molecular weight with one of higher molecular
weight matching the requirements of claim 14. Id. We find this argument to
be persuasive.
The relevant portion of Glenn is set forth below:
The one or more water-soluble polymers can be selected such
that their weighted average molecular weight is from about
40,000 to about 500,000, in one embodiment from about 50,000
to about 400,000, in yet another embodiment from about 60,000
to about 300,000, and in still another embodiment from about
70,000 to about 200,000.

Glenn ¶ 53. While Glenn does teach that one may use “one or more”
copolymers, and such copolymers may naturally have different molecular
weights, the Examiner does not direct us to any teaching that would guide
one of skill in the art to select one copolymer having a molecular weight in
the range of 20,000 to 60,000 and a second copolymer having a molecular
weight in the range of 70,000 to 500,000. Accordingly, Appellant has
shown error in this regard. Because claims 15–17 depend from claim 14,
this determination is also applicable to those claims.

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Claims 18–21
Claim 18 is an independent claim that includes limitations regarding
hydrolysis, molecular weight, hand dissolution value, and distance to
maximum force (flexibility). Appeal Br. 21 (Claims App.). Appellant
argues that the rejection of claim 18 should be reversed for the same reasons
argued with regard to claim 11 (which requires certain Distance to
Maximum Force properties). As we have not found Appellant’s arguments
regarding claim 11 to be persuasive, we determine that Appellant has not
shown error with regard to claim 18 or dependent claims 19–21.
Criticality
Appellant additionally argues that the articles of the present claims
provide unexpected benefits. Appeal Br. 16–17.
In general, an applicant may overcome a prima facie case of
obviousness by establishing “that the [claimed] range is critical, generally
by showing that the claimed range achieves unexpected results relative to the
prior art range.” In re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997)
(alteration in original) (citation omitted). “Although it is well settled that
comparative test data showing an unexpected result will rebut a prima facie
case of obviousness, the comparative testing must be between the claimed
invention and the closest prior art.” In re Fenn, 639 F.2d 762, 765 (CCPA
1981) (citation omitted). Moreover, “[i]t is well settled that unexpected
results must be established by factual evidence. Mere argument or
conclusory statements in the specification does not suffice.” In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (citation omitted), quoted with
approval in In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995).
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Appellant makes general reference to “the comparative testing
included in the specification” (Appeal Br. 15) but does not cite to or discuss
any particular testing data. Appellant further asserts that “[t]here was no
reasonable basis to predict that use of lower hydrolysis PVA would provide
the improved dissolution properties presented in Appellant's specification.”
Appeal Br. 17. As above, this is contrary to Briscoe’s teaching that “[a]
PVA with a degree of hydrolysis below 88% dissolves in water much more
readily at room temperature than one with a higher degree of hydrolysis.”
Briscoe 3853.
Further, in the absence of relevant briefing, it is not apparent that the
data in Table 5 (Spec. 44) supports Appellant’s position regarding the effect
of the degree of hydrolysis upon solubility.
In view of the foregoing, we decline to determine that Appellant has
demonstrated the criticality of the claims at issue.

CONCLUSION

The Examiner’s rejection of claims 1–13 and 18–21 is affirmed. The
Examiner’s rejection of claims 14–17 is reversed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–21 103 Glenn, Briscoe 1–13, 18–21 14–17

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED IN PART