Ex Parte Campbell et al

Patent Trial and Appeal Board

Oct 25, 2017

11917486 (P.T.A.B. Oct. 25, 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.
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.
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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.
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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
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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
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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)
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