Ex Parte DIHORA et al

Patent Trial and Appeal Board

May 29, 2018

14101395 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/101,395 12/10/2013
27752 7590 05/31/2018
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Jiten Odhavji DIHORA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
11070MC 7978
EXAMINER
HAMMER, KATIE L
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
05/31/2018 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 JITEN ODHA VJI DIHORA,
WALTERFRANCISCUSJOANNA VANDERVEKEN,
SANFORD THEODORE KIRKSEY JR.,
JOHN CHARLES DEBRAAL,
ROBERT STANLEY BOBNOCK, GARY THOMAS HART,
and ADAM KEITH DRUCKREY
Appeal2017-008200
Application 14/101,395
Technology Center 1700
Before TERRY J. OWENS, BRIAND. RANGE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
1 In this Decision, we refer to the Specification filed December 10, 2013
("Spec."), the Final Office Action dated December 1 7, 2015 ("Final Act."),
the Appeal Brief filed May 13, 2016 ("Br."), and the Examiner's Answer
dated November 14, 2016 ("Ans.").
Appeal2017-008200
Application 14/101,395
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-7, 17-19, 22, and 23. 3 We have
jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART.
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection I: Claims 1-7, 17, and 18 under 35 U.S.C. § 102(b) as
anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as obvious
over Popplewell et al. (US 2005/0153135 Al, published July 14, 2005)
("Popplewell") (Ans. 2);
Rejection II: Claims 1 and 2 under 35 U.S.C. § 102(b) as anticipated
by, or in the alternative, under 35 U.S.C. § 103(a) as obvious over Warr et
al. (EP 1767185 Al, published March 28, 2007) ("Warr") (Ans. 5);
Rejection III: Claim 19 under 35 U.S.C. § 103(a) as obvious over
Anastasiou et al. (US 2007/0138674 Al, published June 21, 2007)
("Anastasiou") (Ans. 6); and
Rejection IV: Claims 22 and 23 under 35 U.S.C. § 103(a) as obvious
over Popplewell (Ans. 7).
2 Appellant is the Applicant, The Proctor & Gamble Company, which,
according to the Appeal Brief, is the real party in interest. Br. 3.
3 Claims 8-16, 20, and 21 are withdrawn from consideration by the
Examiner. Final Act. 1.
2
Appeal2017-008200
Application 14/101,395
Rejections I, II, & IV
DISCUSSION
Independent claim 1, subject to the first and second-stated grounds of
rejection, and independent claim 22, subject to the fourth-stated ground of
rejection are reproduced below from the Claims Appendix of the Appeal
Brief with emphasis to highlight key disputed limitations.
1. A consumer product comprising an adjunct
material and, based on total composition weight, from about
0.1 % to about 20% of a benefit agent delivery composition
comprising, based on total benefit agent delivery composition
weight:
a.) from about 2% to about 95% of an encapsulated
benefit agent, said encapsulated benefit agent
optionally comprising a sufficient amount of
benefit agent to provide, based on total benefit
delivery composition weight from about 1 % to
about 85% benefit agent;
b.) from about 1% to about 12% shell particles; and
c.) the balance of said benefit agent delivery
composition being one or more processing aids
and/or carriers.
Br. 22 (Claims App.).
22. A consumer product comprising an adjunct material and,
based on total composition weight, from about 0 .1 % to about
20% of a benefit agent delivery composition comprising, based
on total benefit agent delivery composition weight:
a.) from about 2% to about 95% of an encapsulated
benefit agent, said encapsulated benefit agent
optionally comprising a sufficient amount of benefit
agent to provide, based on total benefit delivery
composition weight from about 1 % to about 85%
benefit agent;
3
Appeal2017-008200
Application 14/101,395
Id. at 24.
b.) from about 0.1% to about 5% shell particles; and
c.) the balance of said benefit agent delivery
composition being one or more processing aids
and/or carriers.
The dispositive issue before us in this appeal is:
Has the Examiner reversibly erred in finding that each of Popplewell
and Warr teaches or would have suggested a benefit agent delivery
composition comprising, inter alia, "from about 1 % to about 12% shell
particles" as recited in claim 1, and reversibly erred in finding that
Popplewell teaches or would have suggested a benefit agent delivery
composition comprising, inter alia, "from about 0.1 % to about 5% shell
particles" as recited in claim 22? We answer these questions in the
affirmative.
We begin our analysis with claim construction. During prosecution,
the PTO gives the language of the proposed claims "the broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant's specification." In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
According to Appellant's Specification, encapsulation processes
typically transform two or more monomeric materials into one or more
macromolecules that coat a benefit agent. Spec. 4, 11. 3--4. Appellant
discovered that the encapsulation yields encapsulated benefit agents and
shell particles comprising primarily the macromolecules that coat or
encapsulate a benefit agent. Id. at 11. 9--11. The encapsulated benefit agents
4
Appeal2017-008200
Application 14/101,395
comprise a benefit agent core encapsulated by a melamine-formaldehyde
shell, and the shell particles comprise essentially only shell material without
a benefit agent core. Declaration under 37 C.F.R. § 1.132 executed by
Jiten Odhavji Dihora on September 4, 2015 ("Dihora Declaration"), i-f 8.
Thus, in the context of Appellant's Specification, the broadest reasonable
interpretation of the claim phrase "shell particles" is a particle comprising
essentially only shell material, for example melamine-formaldehyde, and
devoid of a benefit agent. Spec. 4, 11. 11-12. In other words, shell that coats
the benefit agent is not a "shell particle" in the context of the Specification.
We disagree with the Examiner's contention that Appellant's
arguments in their Appeal Brief that a "shell particle" is devoid of a benefit
agent contradicts their Specification, which defines "particles" as equivalent
to "benefit agent delivery particles" Ans. 10. Appellant's Specification
defines the term "particle," not "shell particle," as synonymous with "benefit
agent delivery particle," "capsule," and "microcapsule." Spec. 3, 11. 12-13.
As discussed above, Appellant's Specification describes a "shell particle" as
"comprising primarily ... macromolecules" that "may be essentially devoid
of [a] benefit agent." Id. at 4, 11. 3-14.
For the shell particle limitation of claims 1 and 22, the Examiner finds
that Popplewell teaches mixing approximately 25% by weight fragrance, and
approximately 10% by weight shell-wall material to obtain a slurry of
capsules containing fragrance and having shell walls comprising an
acrylamide-acrylic acid co-polymer crosslinked with melamine-
formaldehyde resin. Popplewell i-fi-f 184--195; see also id. i-f 164 (disclosing
encapsulating polymers include those formed from melamine-formaldehyde
or urea-formaldehyde condensates).
5
Appeal2017-008200
Application 14/101,395
Additionally, the Examiner finds that Warr teaches core-shell type
capsules where the shell is constituted of 50% to 100% formaldehyde-
melamine or formaldehyde-melamine-urea or formaldehyde-urea
condensation polymers or partially corresponding etherified formaldehyde
condensation polymers. See Ans. 14 (citing Warr i-f 33).
The Examiner finds that Popplewell's and Warr's shell material is a
shell particle because shell wall material "by [its] very nature [is] essentially
devoid of benefit agent," and "comprise[s] a different chemical
composition" than the benefit agent (fragrance). Ans. 10, 14.
We disagree with the Examiner. Both Popplewell and Warr teach that
their shell wall material is a polymer used for encapsulating a fragrance
(benefit agent). Popplewell i-fi-1162, 164; Warr Abstract, i-f 1. Indeed,
Popplewell' s Examples 2--4 relied upon by the Examiner describes
encapsulated fragrance particles where the particles include a particular
amount of shell-wall material and fragrance. Id. i-fi-1185, 189. The Examiner
has not directed us to sufficient disclosure in either Popplewell or Warr that
teaches or would have suggested a particle comprising essentially only shell
material (i.e., a shell particle). As a result, we do not sustain the Examiner's
rejections of claims 1-7, 17, 18, 22, and 23 as unpatentable over Popplewell
or the Examiner's rejection of claims 1 and 2 as unpatentable over Warr.
Rejection III
Claim 19, reproduced below from the Claims Appendix of the Appeal
Brief, is the sole claim subject to the Examiner's third-stated ground of
rejection.
6
Appeal2017-008200
Application 14/101,395
19. A consumer product comprising, based on total consumer
product weight:
a.) from about 0.1 % to about 5%, encapsulated benefit
agent, said benefit agent comprising an amino resin;
b.) from about 1 ppm to about 150 ppm, formaldehyde; and
c.) less than about 0.3 weight%, formaldehyde scavenger.
Br. 24.
The Examiner finds that Anastasiou teaches all the limitations of
claim 19's consumer product except "the encapsulated benefit agent is in the
product at a weight percentage from about 0.1 % to about 5%." Final Act. 7
(citing Anastasiou i-fi-15, 15, 25, 27-31, 57, 92, 109-119). The Examiner
finds, and Appellant does not dispute that,
It is well known in the art that to impart more benefit agent to an
application (for instance, more perfume for a stronger scent), one
would include more benefit agent in the capsule product (or to
impart less benefit (such as less fragrance), one would use less
benefit agent).
Compare Final Act. 8, with Br. 14--16. Based on this knowledge, the
Examiner determines that one of ordinary skill in the art would have been
led to optimize, using routine experimentation, the amount of encapsulated
benefit agent used in Anastasiou's composition. Final Act. 7-8.
Appellant argues that the experimental data provided in Dihora's
Declaration demonstrates that "[except] at very low levels [of] encapsulated
benefit agent, one of ordinary skill in the art would find it is necessary to
dose ... a significantly high concentration of formaldehyde scavenger into
the finished product (well beyond 0.3 wt% in [the] finished product) to
achieve low levels of free formaldehyde." Br. 14--15.
7
Appeal2017-008200
Application 14/101,395
Appellant's argument is not persuasive because it fails to address or
identify error in the Examiner's rejection. Appellant does not refute the
Examiner's finding that it is well-known in the art to modify the amount of
benefit agent in a consumer product based on its ultimate application, and
the Examiner's determination based on that finding that it would have been
obvious to optimize the levels of benefit agent in Anastasiou's microcapsule
product. Nor does Appellant refute that Anastasiou discloses that its
microcapsule can include a formaldehyde scavenger in "effective trace
amounts to 100 times the stoichiometric amount," which encompasses the
claimed range. Anastasiou i-f 27.
Additionally, Anastasiou teaches that the level of fragrance in the
microcapsule varies from about 5 to about 95 weight percent.
Anastasiou i-f 111. Thus, Anastasiou discloses a microcapsule product that
includes an amount of fragrance (benefit agent) that overlaps with the about
0.1 % to about 5% range recited claim 19. In re Peterson, 315 F.3d 1325,
1329--1330 (Fed. Cir. 2003) ("In cases involving overlapping ranges, we and
our predecessor court have consistently held that even a slight overlap in
range establishes a primafacie case of obviousness.").
Because Appellant does not identify error in the Examiner's§ 103(a)
rejection over Anastasiou, we sustain the rejection of claim 19.
DECISION
The rejection of claims 1-7, 17, and 18 under 35 U.S.C. § 102(b) or,
in the alternative, under 35 U.S.C. § 103(a) over Popplewell is reversed.
The rejection of claims 1and2 under 35 U.S.C. § 102(b) or, in the
alternative, under 35 U.S.C. § 103(a) as obvious over Warr is reversed.
8
Appeal2017-008200
Application 14/101,395
The rejection of claim 19 under 35 U.S.C. § 103(a) over Anastasiou is
affirmed.
The rejection of claims 22 and 23 under 35 U.S.C. § 103(a) over
Popplewell is reversed.
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
9