The Procter & Gamble Company

Patent Trials and Appeals Board

Sep 2, 2021

2020005520 (P.T.A.B. Sep. 2, 2021)

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.
14/865,257 09/25/2015 Jonathan Robert CETTI 14035 6397
27752 7590 09/02/2021
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
TCHERKASSKAYA, OLGA V
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
09/02/2021 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 JONATHAN ROBERT CETTI,
GAYLE MARIE FRANKENBACH,
STEVEN ANTHONY HORENZIAK, and
JUDITH ANN HOLLINGSHEAD
Appeal 2020-005520
Application 14/865,257
Technology Center 1600
Before JEFFREY N. FREDMAN, DEBORAH KATZ, and
TAWEN CHANG, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 8, 13, and 17. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

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 14/865,257

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STATEMENT OF THE CASE
The Specification states that
malodor control technologies typically cover up the malodor
with a stronger scent and thus interfere with the scent of the
perfumed or unperfumed situs that is treated with the malodor
control technology. . . . [P]ersonal care compositions
comprising the malodor control technologies disclosed herein
provide malodor control without leaving an [undesirable] scent
and, when perfume is used to scent such compositions, such
scent is not [unduly] altered by the malodor control technology.
Spec. 1:19–30.
CLAIMED SUBJECT MATTER
The claims are directed to a liquid rinse-off personal care
composition. Claim 1 is illustrative:
1. A liquid rinse-off personal care composition comprising,
based on total composition weight,
a) from about 0.001% to about 0.025%, by weight of
the composition of a malodor reduction material
comprising 1, 3, 4, 6, 7, 8 alpha-hexahydro – 1, 1,
5, 5-tetramethyl – 2H – 2, 4 alpha-
methanophthalen–8(5H)-one; and
b) from about 0% to about 12% of a perfume;
c) from about 60% to about 95% of an aqueous
carrier; and
d)
e) from about 3% to about 30% of a surfactant.
Appeal Br. 5 (Claims App.).2

2 No limitations are provided by element d) of claim 1. Accordingly, we
review the issues presented by the rejections of Appellant’s claims as if
element d) were not included. We leave it to the Examiner and Appellant to
determine what claim amendment, if any, should be made with respect to
element d) if prosecution resumes.
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Application 14/865,257

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REJECTION(S)
A. Claim 13 is rejected under 35 U.S.C. § 112(b) as being indefinite.
Ans. 3.
B. Claims 1, 8, 13, and 17 are rejected under 35 U.S.C. § 103 as being
unpatentable over Smets.3 Ans. 3.
C. Claims 1, 8, 13, and 17 are rejected on the ground of nonstatutory
double patenting as being unpatentable over claims of U.S.
6,153,567. Ans. 3.
D. Claims 1, 8, 13, and 17 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims of
copending Application No. 14/865,048. Ans. 3.
E. Claims 1, 8, 13, and 17 are rejected on the ground of nonstatutory
double patenting as being unpatentable over claims of copending
Application 14/865,066 (now U.S. 10,113,140).4 Ans. 3.
F. Claims 1, 8, 13, and 17 are rejected on the ground of nonstatutory
double patenting as being unpatentable over claims of copending
Application No. 14/865,089 (now U.S. 10,552,557).5 Ans. 3.
G. Claims 1, 8, 13, and 17 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims of
copending Application No. 15/597,376. Ans. 3.
H. Claims 1, 8, 13, and 17 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims of
copending Application No. 15/708,205. Ans. 3.6

3 Smets et al., US 2011/0098209 A1, published Apr. 28, 2011.
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OPINION
A. Obviousness rejection over Smets (claims 1, 8, 13, 17)
1. Issue
The Examiner finds “Smets teaches consumer products that can be
personal care compositions . . . and may include encapsulates/perfume
microparticles/perfume microcapsules” comprising all of the ingredients
recited in claim 1. Final Act. 5–6. The Examiner finds that
Smets teaches that encapsulates comprising said
materials can be present in said products in an amount of
0.01-80% based on the total weight of the product, and
also teaches that, depending on the end use, said
compositions may include 0.005-5 w% of such
encapsulates. Though Smets does not specifically teach
the amounts of malodor reduction material (i.e.,
isolongifolanone[)] as used in disclosed compositions in
combination with perfume, Smets teaches that the precise
compositions of the disclosed products depend on the
type and end use of said consumer product. Smets
provides examples of making said capsules/encapsulates
and using them in compositions in an amount of 0.3-0.6
wt%.
Id. at 6 (citations omitted).
The Examiner concludes that it would have been obvious to a skilled
artisan at the time of the invention “to control the concentration of

4 Because Application No. 14/865,066 has issued as a patent, this double
patenting rejection is no longer provisional.
5 Because Application No. 14/865,089 has issued as a patent, this double
patenting rejection is no longer provisional.
6 The Examiner notes that the following applications have been abandoned:
Application Nos. 14/864,927; 14/864,994; 14/865,010; 14/865,056;
14/865,099; 14/865,412; 15/407,477; 15/421,481; 15/421,642; 15/432,957;
15/597,391, and 15/716,544. Ans. 3.
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isolongifolanone (here as a density balancing agent), perfume [(here as]
benefit agent), and/or surfactant (here as adjunct additives[)] as taught by
Smets to provide the consumer product with desired
properties/scent/aroma.” Final Act. 6. In particular, the Examiner asserts
that,
[w]ith regards to the concentrations as instantly claimed,
. . . differences in . . . concentration of compounds in a
solution/formulation will not support . . . patentability . . .
unless there is evidence indicating such parameter is
critical. Given that cited prior art . . . teaches
formulations comprising the same components, it is
expected that the same beneficial properties and effects
would also be provided. The determination of suitable or
effective concentration/composition can be determined
by one of ordinary skill in the art through the use of
routine . . . experimentation to obtain optimal results
(e.g., desired properties/scent/aroma), as these are
variable parameters attainable within the art.
Id. at 6–7.
Appellant acknowledges that “the Office Action points to a teaching
of a Smets density modifier as a claimed malodor reduction material.”
Appeal Br. 2. Appellant argues among other things, however, that Smets
discloses only concentration ranges for encapsulates, not the density
balancing agent, and that the Examiner also “has pointed to nothing in Smets
indicating which portion of the cited range . . . is relevant for a personal care
composition as claimed.” Id. at 3. Appellant further contends that the
Examiner has pointed to nothing in Smets showing the amount of density
modifier, rather than the amount of the encapsulate, to be a result effective
variable. Id. at 2, 3.
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The issue with respect to this rejection is whether a preponderance of
evidence supports the Examiner’s conclusion that Smets renders obvious a
liquid rinse-off personal care composition comprising “from about 0.001%
to about 0.025% . . . of a malodor reduction material comprising 1, 3, 4, 6, 7,
8 alpha-hexahydro – 1, 1, 5, 5-tetramethyl – 2H – 2, 4 alpha-
methanophthalen–8(5H)-one.”
2. Analysis
We agree with Appellant that the Examiner has not established that
the claims are prima facie obvious over Smets. In particular, the Examiner
has not persuasively explained how Smets would suggest to a skilled artisan
to include the claimed range (from about 0.001% to about 0.025%) of
malodor reduction material comprising 1, 3, 4, 6, 7, 8 alpha-hexahydro – 1,
1, 5, 5-tetramethyl – 2H – 2, 4 alpha-methanophthalen–8(5H)-one in a
composition.
The Examiner asserts that Smets identifies the amount of its
encapsulate as a result effective variable. Ans. 5. The Examiner asserts that
Smets teaches that its encapsulates comprising isolongifolanone (i.e., 1, 3, 4,
6, 7, 8 alpha-hexahydro – 1, 1, 5, 5-tetramethyl – 2H – 2, 4 alpha-
methanophthalen–8(5H)-one) may be included “in an amount of 0.01-80%
(Para. 0034) or even in an amount of 0.005-5 w% (Para. 0039) and provides
examples of making said capsules/encapsulates and using them in
compositions in an amount of 0.3-0.6 wt% (Para[s]. 0104–0111).” Id. The
Examiner asserts that “[t]his implies that concentration of compounds
included into said encapsulates can be less than 0.01%, or even less than
0.005% by the weight of composition” and that Smets thus teaches a range
that overlaps the claimed range (i.e., from about 0.001% to about 0.025%).
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Id. The Examiner asserts that, accordingly, a prima facie case of
obviousness exists, and “[o]ptimization within prior art conditions or
through routine experimentation does not support patentability absent . . .
evidence of criticality of the claimed range.” Id.
Although we agree with the Examiner that “[a] prima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art,” In re Peterson, 315 F.3d 1325,
1329–30 (Fed. Cir. 2003), we are not persuaded that the above rationale
applies in the instant case. In cases such as Peterson, where courts have
held that overlapping ranges typically indicate a prima facie case of
obviousness, the prior art disclosed overlapping ranges for the specific
components claimed. See, e.g., In re Peterson, 315 F.3d at 1329 (comparing
range recited for each component in the prior art to claimed range). Here,
however, the range at issue in the claim is the percentage by weight of
isolongifolanone (together with other malodor reduction materials), whereas
the ranges by weight relied on by the Examiner as overlapping this claimed
range is not the disclosed range for any particular component such as
isolongifolanone. Instead, it is the range for all components in the
encapsulate, including “a core comprising a benefit agent and a shell that at
least encapsulate said core, . . . further comprising a density balancing
agent” such as isolongifolanone. Smets ¶ 18.
We do not disagree that a composition satisfying all of the teachings
of Smets could also meet all of the limitations of claim 1. Nevertheless,
what is missing from the Examiner’s analysis is articulated reasoning how
the teaching of Smets would have lead a skilled artisan to choose a
combination of components for its encapsulates such that the amount of
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isolongifolanone (together with any other malodor reduction materials) is
between 0.001% to about 0.025% by weight of the composition. Belden Inc.
v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (explaining that
“obviousness concerns whether a skilled artisan not only could have
made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention”).
Neither do we agree that Smets renders the claimed range of
isolongifolanone (together with any other malodor reduction materials)
obvious because it requires only optimization and routine experimentation to
arrive at the claimed range. It is true that, “where the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.” In re Aller, 220
F.2d 454, 456 (CCPA 1955). In this case, however, Smets teaches using
isolongifolanone as a density balancing agent rather than as a malodor
reduction material. The Examiner has pointed to no evidence of record that
the optimal concentration of isolongifolanone as a density balancing agent
would be the same as the optimal concentration of isolongifolanone as a
malodor reduction material. Thus, the Examiner has not persuasively
shown that optimization according to the teachings of Smets would result in
a composition with the claimed concentration of isolongifolanone.
The Examiner asserts that Smets is directed to
maximizing the effectiveness of benefit agent/perfume by
making encapsulates comprising a core/perfume,
shell/isolongifolanone, surfactants, etc. wherein said
encapsulates can be used in various applications. . . . [I]t is well
known in the [field] that isolongifolanone is used as an odor
masking active (US 6,794,356); as a fragrance (US
2008/0176780; US 2012/0237469); as a lipophilic perfume (US
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Application 14/865,257

9
6,153,567); and/or as a bulky perfumery molecule[] that . . .
typically leak less than non-bulky perfumer molecules (US
2016/0206522). Therefore, the concentration of
fragrance/perfume/odor masking actives is considered as a
result effective variable for providing desired scent/aroma/odor
of the product/composition. The fact that applicant has
recognized another advantage, which would flow naturally from
following the suggestion of the prior art, cannot be the basis for
patentability when the differences would otherwise be obvious.
Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter.
1985).
Ans. 5–6.
We are not persuaded. As an initial matter, while the Examiner cites
to various other prior art references to show that isolongifolanone is well-
known as a perfume and/or odor masking active, the rejection is based on
Smets alone rather than in combination with such other references. Indeed,
the Final Action explicitly states that the rejection does not rely upon certain
of these references. Final Act. 7–8. Moreover, as discussed above, Smets
teaches using isolongifolanone as a density balancing agent rather than as a
perfume and/or odor masking active in its composition, and the Examiner
has not articulated persuasive reasoning why a skilled artisan would have
modified Smets’ composition so as to include a concentration of
isolongifolanone optimized for providing desired scent/aroma/odor instead
of a concentration optimized for balancing density. Similarly, while the
Examiner is correct that “[t]he discovery of a new property or use of a
previously known composition, even when that property and use are
unobvious from the prior art, can not impart patentability to claims to the
known composition,” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990), that
rationale is not applicable to a situation where, as here, the Examiner has not
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established that the claimed composition was known or would have been
obvious from the prior art.
Finally, the Examiner asserts that “the reason or motivation to modify
the reference may often suggest what the inventor has done, but for a
different purpose or to solve a different problem,” and that “[i]t is not
necessary that the prior art suggest the combination to achieve the same
advantage or result discovered by appellant.” Ans. 6. The Examiner asserts
that “recitation of the intended use of the claimed invention must result in a
structural difference between the claimed invention and the prior art in order
to patentably distinguish the claimed invention from the art” and that, “[i]f
the prior art structure is capable of performing the intended use, then it
meets the claim.” Id. at 6–7.
Once again, we agree with the Examiner’s general statements of the
law. However, we are not persuaded that the legal principles articulated
above render the claimed composition obvious over Smets, because, as
discussed above, the Examiner has not articulated a reason or motivation to
modify Smets that would suggest a composition comprising the claimed
concentration of isolongifolanone.
Accordingly, we reverse the Examiner’s rejection of claim 1.
We reverse the rejection of claims 8, 13, and 17, which depend from claim
1, for the same reasons. In re Fine, 837 F.2d 1071, 1076 (Fed. Cir.
1988) (“Dependent claims are nonobvious under section 103 if the
independent claims from which they depend are nonobvious.”).
B. Other rejections
Appellant has not disputed the merits of the rejection of claim 13 as
indefinite and the rejection of claims 1, 8, 13, and 17 on the grounds of
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obviousness-type double patenting. Accordingly, we summarily affirm
these rejections. See MPEP § 1205.02 (“If a ground of rejection stated by
the examiner is not addressed in the appellant's brief, appellant has waived
any challenge to that ground of rejection and the Board may summarily
sustain it.”); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential) (“If an appellant fails to present arguments on a
particular issue -- or, more broadly, on a particular rejection -- the Board will
not, as a general matter, unilaterally review those uncontested aspects of the
rejection.”).

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
13 112(b) Indefiniteness 13
1, 8, 13,
17
103 Smets 1, 8, 13,
17
1, 8, 13,
17
Non-statutory obviousness-
type double patenting over
claims of U.S. 6,153,567

1, 8, 13,
17

1, 8, 13,
17
Non-statutory obviousness-
type double patenting over
claims of Application No.
14/865,048

1, 8, 13,
17

1, 8, 13,
17
Non-statutory obviousness-
type double patenting over
claims of Application No.
14/865,066 (now U.S.
10,113,140)

1, 8, 13,
17

Appeal 2020-005520
Application 14/865,257

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1, 8, 13,
17
Non-statutory obviousness-
type double patenting over
claims of Application No.
14/865,089 (now U.S.
10,552,557)

1, 8, 13,
17

1, 8, 13,
17
Non-statutory obviousness-
type double patenting over
claims of Application No.
15/597,376

1, 8, 13,
17

1, 8, 13,
17
Non-statutory obviousness-
type double patenting over
claims of Application No.
15/708,205

1, 8, 13,
17

Overall
Outcome
1, 8, 13,
17

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED