Ex Parte Campbell et alDownload PDFPatent Trial and Appeal BoardOct 25, 201711917486 (P.T.A.B. Oct. 25, 2017) Copy Citation 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. 11/917,486 12/19/2007 Stuart John Campbell 9416-00-SN 7000 23909 7590 10/27/2017 COLGATE-PALMOLIVE COMPANY 909 RIVER ROAD PISCATAWAY, NJ 08855 EXAMINER JONAITIS, JUSTIN M ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 10/27/2017 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): Paten t_Mail @ colpal. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STUART JOHN CAMPBELL and ANDREW IWAN DE BEER Appeal 2015-0040461 Application 11/917,4862 Technology Center 3700 Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and ROBERT J. SILVERMAN, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 1—10, 13, 16, and 17. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).. 1 Our decision references the Appeal Brief (“Br.,” filed Oct. 31, 2014), the Examiner’s Answer (“Ans.,” mailed Dec. 11, 2014), the Examiner’s Advisory Action (“Advisory Act.,” mailed July 31, 2014), and Final Office Action (“Final Act.,” mailed June 3, 2014). 2 According to Appellants, the real party in interest is Colgate-Palmolive Europe SARL. Br. 2. Appeal 2015-004046 Application 11/917,486 BACKGROUND According to the Specification, “[t]he present invention relates to aerosol antiperspirant systems, in particular to such systems comprising a water-based antiperspirant composition together with a suitable dispenser for aerosolization of the composition.” Spec. 1,11. 4—6. CLAIMS Independent claim 1 is illustrative of the appealed claims and recites: An antiperspirant system comprising: a pressurized container in which a water-based antiperspirant composition in the form of an oil in water emulsion consists of (i) one or more astringent active salt, (ii) water, and (iii) a propellant and (iv) optionally one or more materials selected from the group consisting of emollients, emulsifiers, glycols, alcohols, perfumes, antibacterial agents, antimicrobial agents, zinc ricinoleate, coloring agents, skincare agents, and vitamins, wherein the emulsifier is present, a valved outlet on the surface of the container through which antiperspirant is ejected into an inlet port of a capillary tube, a capillary tube having one inlet port and one exit port through which antiperspirant is dispensed from the system, and a coupling means to closely couple the inlet port of the capillary tube to the valved outlet of the pressurized container, so that a void volume between the inlet port and the valved outlet is minimized, such that upon use of the antiperspirant system, the valved outlet, the capillary tube, and the void volume do not become obstructed by solid deposits of the astringent active salt. Br. 5. 2 Appeal 2015-004046 Application 11/917,486 REJECTION3 The Examiner rejects claims 1—10, 13, 16, and 17 under 35 U.S.C. § 103(a) as unpatentable over Rohrschneider4 in view of Mahe5 and Schafer.6 DISCUSSION New Ground of Rejection As an initial matter, we note that there is some ambiguity regarding which claims are pending in the application and the form of claim 1 that is before us on appeal. On July 20, 2014, Appellants filed a response to the Final Action of the Examiner, including an amendment to claim 1 and the cancellation of claim 14. In the Advisory Action, the Examiner inconsistently indicates both that the amendment to the claims will and will not be entered for purposes of appeal. See Advisory Act., Boxes 3, 7(b). However, the application file also includes a page from Appellants’ Response to Office Action with an annotation initialed by the Examiner stating “DO NOT ENTER.” The Examiner also indicates in the Advisory Action that the proposed amendment would render the scope of the claim unclear. Id. at Box 12. Appellants raised this issue in their Pre-Appeal Brief Request for Review dated September 2, 2014. However, the issue was not 3 Because we conclude below that Appellants’ amendment of July 20, 2014 has been entered and because that amendment cancelled claim 14 and incorporated its limitations into claim 1, we understand that the rejection before us incorporates both the Examiner’s findings and analysis with respect to Rohrschneider and Mahe and also the separate analysis with respect to Rohrschneider, Mahe, and Schafer. 4 Rohrschneider et al., US 2005/0103892 Al, pub. May 19, 2005. 5 Mahe et al., US 2004/0101503 Al, pub. May 27, 2004. 6 Schafer et al., US 2005/0053632 Al, pub. Mar. 10, 2005. 3 Appeal 2015-004046 Application 11/917,486 addressed in the “Notice of Panel Decision from Pre-Appeal Brief Review,” mailed September 30, 2014, except that this decision listed the rejected claims as 1—10, 13, 16, and 17, i.e., claim 14 was no longer listed as a rejected claim. Appellants’ Appeal Brief includes claim 1, as recited above, which includes the claim language included in the amendment filed on July 20, 2014. See Appeal Br. 5. In responding to Appellants’ arguments on appeal, the Examiner neither addresses the language added by this amendment nor does the Examiner indicate that Appellants have listed the wrong version of claim 1 on appeal in the Appeal Br. See Ans. 2-4. Thus, although we see no explicit indication in the application file that the amendment of July 20, 2014 was entered, it appears that both the Examiner and Appellants understand that the amendment has been entered. Accordingly, we address claim 1 as provided in the amendment of July 20, 2014. Turning to the language of claim 1, the only independent claim on appeal, we conclude that it is not reasonably possible to interpret the claim with sufficient clarity to satisfy 35 U.S.C. § 112,12. See In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (per curiam). In particular, we are unable to ascertain whether the antiperspirant composition in claim 1 is intended to be part of the antiperspirant system or whether it is only claimed as an intended use for the system recited. The claim states “a pressurized container in which a water-based antiperspirant composition in the form of an oil in water emulsion consists of. . .,” and we find that the relative clause here, “in which . . .,” is incomplete because it does not further indicate what is intended for the composition. This language may be interpreted in at least two ways, e.g., “in which a . . . composition [may be present]” or “in which 4 Appeal 2015-004046 Application 11/917,486 a . . . composition [is present].” We find that either interpretation is consistent with the Specification, which indicates that the invention is not only directed to the composition used in the system but also the specific structure of the system. See, e.g., Spec. 2,1. 30-3,1. 2 (stating that the inventors have found that the use of a capillary tube and/or minimizing the void volume in the container results in a reduction or elimination of blockages). In this matter, we are also guided by our reviewing court which has stated “during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed .... [T]his way . . . uncertainties of claim scope [can] be removed, as much as possible, during the administrative process.” In re Zletz, 893 F.2d 319, 321—22 (Fed. Cir. 1989). Thus, if Appellants wish to limit the claims to positively include the recited composition, rather than have us speculate that the claims do positively required the recited composition, the appropriate and more prudent procedure for doing so while prosecution is open is through an amendment to the claims. Accordingly, for the reasons set forth above, we conclude that claim 1 is indefinite under 35 U.S.C. § 112, second paragraph. We also conclude that each of the dependent claims, 2—10, 13, 16, and 17, are indefinite for the same reasons. Finally, in view of our determination that claims 1—10, 13, 16, and 17 are indefinite and because we find that an analysis of the prior art rejection would necessarily be based on a speculative assumption as to the meaning of the claims, we do not sustain the rejection of the claims under 35 U.S.C. § 103(a). See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). It should be 5 Appeal 2015-004046 Application 11/917,486 understood, however, that our decision in this regard is pro forma and based solely on the indefiniteness of the claimed subject matter, and does not reflect in any way on the adequacy of the prior art evidence applied in support of the rejection. CONCLUSION We pro forma reverse the Examiner’s rejection of claims 1—10, 13, 16, and 17 under 35 U.S.C. § 103(a). In a new ground of rejection, we reject claims 1—10, 13, 16, and 17 under 35 U.S.C. § 112, second paragraph, as being indefinite. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. 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). REVERSED 37 C.F.R, $ 41.501b) 6 Copy with citationCopy as parenthetical citation