Ex Parte CETTI et al

Patent Trials and Appeals BoardJun 11, 2019

14105549 - (D) (P.T.A.B. Jun. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/105,549 12/13/2013 27752 7590 06/13/2019 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 FIRST NAMED INVENTOR Jonathan Robert CETTI 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. 13161 1081 EXAMINER CHICKOS, SARAH J ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 06/13/2019 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 JONATHAN ROBERT CETTI, ZERLINA GUZDAR DUBOIS, VIRGINIA TZUNG-HWEI HUTCHINS, and MICHAEL WAYNE KINSEY Appeal2018-001910 Application 14/105,549 1 Technology Center 1600 Before JEFFREY N. FREDMAN, JOHN G. NEW, and ELIZABETH A. LA VIER, Administrative Patent Judges. LA VIER, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134(a), Appellants seek review of the Examiner's rejections of claims 1, 4---6, 8, 9, 11, 13-15, and 18. We have jurisdiction under 35 U.S.C. Â§ 6(b ). For the reasons set forth below, we AFFIRM. 1 Appellants identify the real party in interest as The Procter & Gamble Company. Br. 1. Appeal 2018-001910 Application 14/105,549 BACKGROUND The Specification describes compositions and methods of making antiperspirants and deodorants, comprising perfumes and sulfur-based perfume raw materials. Spec. 1 :4--6. Claim 1 is illustrative: 1. An antiperspirant composition comprising a perfume, the perfume comprising, based on total perfume weight, from about 0.000001 % to about 0.035% of a perfume raw material, the perfume raw material comprises a sulfur atom, such that the perfume raw material resists the fragrance habituation of a consumer to the antiperspirant composition, wherein the peifume raw material is below the odor detection threshold in the antiperspirant composition. Br. 7 (Claims Appendix) ( emphasis added). REJECTIONS MAINTAINED ON APPEAL 1. Claims 1, 4--6, 8, 9, 11, 13-15, and 18 stand rejected under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement by introducing new matter into the claims. Ans. 3. 2. Claims 1, 4--6, 8, 9, 11, 13-15, and 18 stand rejected under 35 U.S.C. Â§ 112, second paragraph, as indefinite. Ans. 5. 3. Claims 1, 4--6, 8, 9, 11, 13-15, and 18 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Mookherjee2 and Dykstra. 3 Ans. 7. 2 Mookherjee et al., US 3,928,248, issued Dec. 23, 1975. 3 Dykstra, US 2007/0275866 Al, published Nov. 29, 2007. 2 Appeal 2018-001910 Application 14/105,549 A. Rejection 1: New Matter DISCUSSION The phrase "wherein the perfume raw material is below the odor detection threshold in the antiperspirant composition" was added by amendment into independent claims 1 and 5. Final Action 3. Appellants point to Tables 8 and 9, and pages 46-50, of the Specification as providing supporting disclosure. See Br. 1. Having reviewed these passages, we agree with the Examiner's assessment that they "teach habituation amounts but do not otherwise address the odor detection threshold in the antiperspirant composition." Final Action 3. Appellants point to a single example in Table 9 comprising 1-butylsulfanylbutane in an amount below the odor detection threshold (see Br. 3), but there is no indication of what that threshold is. In any event, the claims are not limited to 1-butylsulfanylbutane, and so this single example is inadequate to support the scope of the claimed subject matter. We find this situation analogous to Fujikawa, where the court found an "application contained no blazemarks as to what compounds, other than those disclosed as preferred, might be of special interest. In the absence of such blazemarks, simply describing a large genus of compounds is not sufficient to satisfy the written description requirement as to particular species or sub-genuses." Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996). As such, claims 1 and 5 lack adequate written descriptive support, and so do the remaining claims on appeal, which all depend ( directly or indirectly) from claim 1 or claim 5. Accordingly, we affirm Rejection 1. 3 Appeal 2018-001910 Application 14/105,549 B. Rejection 2: Indefiniteness Although Appellants do not expressly cite to it in their brief, the Specification includes a discussion of odor detection threshold (ODT) values that provides a sufficiently clear, objective definition of the phrase "odor detection threshold": The ODT value for each panelist is determined at each of three time points the during four week daily exposure period, namely; at an initial baseline, at two weeks, and at four weeks. The ODT values are always determined in accordance with test method ASTM E679-04 (Standard Practice for Determination of Odor and Taste Thresholds by a Forced-Choice Ascending Concentration Series of Limits) as reapproved in 2011 except, the following replaces the protocol of such test method's Sub- articles 4.4, 8.2 and 8.3. Spec. 37:3-5. It is evident from this disclosure that the detection of odorant threshold values is both well understood and standardized in the art, and would be practicable by a person of ordinary skill. Accordingly, we reverse Rejection 2. C. Rejection 3: Obviousness The Examiner relies on Mookherjee as teaching perfumed compositions comprising 1-butylsulfanylbutane (Final Action 6 ( citing Mookherjee Example VI)), albeit present in an amount of 0.1 %, which is outside the range of perfume raw material recited in claim 1 (i.e., about 0.000001 % to about 0.035% by weight). 4 But the Examiner also finds that 4 The Examiner makes no finding that Mookherjee's disclosure of 1- butylsulfanylbutane at 0.1 % is sufficiently close to the upper end of the claimed range (0.035%) as to render obvious the claimed range. Cf 4 Appeal 2018-001910 Application 14/105,549 Mookherjee also teaches using perfumed components at levels as low as 100 parts per million, which does lie within the range of claim 1. Final Action 6-7 (citing Mookherjee 8:10-27). We agree with Appellants (see Br. 4--5), however, that the disclosure at column 8 of Mookherjee is limited to particular compounds recited therein (none of which the Examiner finds comprises a sulfur atom), and that these compounds are utilized at levels above their particular odor detection thresholds: "as little as 100 parts per million ... will suffice to impart a low keyed floral, seashore, clary sage, orrisy character which is one of the key odor characteristics of 'mimosa' and 'orris' perfume compositions" (Mookherjee 8:11-19). The Examiner also points to teachings in Dykstra of the use of free perfumes within the claimed range. See Final Action 7 ( citing Dykstra ,r 41 ). However, this is not sufficient to cure the aforementioned deficiencies in Mookherjee with respect to claim 1, at least because the Examiner points to no indication in Dykstra that its free perfumes are used below their odor detection thresholds. Further, the Examiner's proposed combination of references (see Final Action 7-8) relies on Dykstra for its solid invisible antiperspirant stick formulation, not for the ranges of its perfumes. 5 Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985) ( drawing conclusion of obviousness where proportions disclosed in prior art were "so close [ to claimed proportions] that prima facie one skilled in the art would have expected them to have the same properties"). 5 As such, it is not surprising that the Examiner offers no analysis to suggest that the ordinarily skilled artisan would have been motivated (whether by Dykstra or otherwise) to reduce the level of 1-butylsulfanylbutane taught in Mookherjee to a level within the range recited in claim 1. 5 Appeal 2018-001910 Application 14/105,549 For these reasons, we conclude that the Examiner has not made a prima facie case of obviousness with respect to claim 1. The same is true for claim 5, which recites similar limitations. As noted above with respect to Rejection 1, the other appealed claims depend directly or indirectly from claims 1 and 5. Accordingly, we reverse Rejection 3. CONCLUSION We affirm Rejection 1. We reverse Rejections 2 and 3. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 6