Ex Parte McKiernan et al

Patent Trial and Appeal Board

May 29, 2018

13598782 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/598,782 08/30/2012
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
Robin Lynn McKiernan
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.
12234 1210
EXAMINER
MRUK,BRIANP
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 ROBIN LYNN McKIERNAN, STEVEN DARYL SMITH,
ROBERT JOSEPH McCHAIN, and CHARLES WILLIAM NEAL
Appeal2016-008071
Application 13/598, 782
Technology Center 1700
Before MICHAEL P. COLAIANNI, CHRISTOPHERL. OGDEN, and
MICHAEL G. McMANUS, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL 1
1 "The real party in interest is The Procter & Gamble Company." App. Br. 1
Appeal2016-008071
Application 13/598,782
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-16 and 18-29. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b). Oral arguments were heard in this appeal on May 16, 2018.
We AFFIRM.
Appellants' invention is directed to an article and soil capture agent
for cleaning surfaces (Spec. 1:9-10).
Claim 1 is illustrative:
1. An article for cleaning a surface, the article comprising
a fibrous structure impregnated with an aqueous composition
comprising a soil capture agent comprising a polymer that is
retained by the fibrous structure during use, wherein the
polymer itself agglomerates, captures, and binds soil to form a
soil agglomerate bound to the soil capture agent such that the
soil agglomerate being retained by the fibrous structure, the
polymer comprising two or more monomeric units selected
from the group consisting of:
a. nonionic monomeric units;
b. anionic monomeric units;
c. cationic monomeric units; and
d. zwitterionic monomeric units;
wherein the polymer comprises at least one monomeric
unit from group a and at least one monomeric unit selected
from groups b, c and d, wherein at least a portion of the article
exhibits a Soil Adsorption Value of at least 7 5 mg as measured
according to a Soil Adsorption Test Method.
Appellants appeal the following rejections2 :
1. Claims 1-16 and 18-29 are rejected under 35 U.S.C. § 102(e) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
2 The provisional obviousness-type double patenting rejection over
Application No. 13/223,719 was withdrawn by the Examiner as moot due
abandoning of the application (Ans. 5-6).
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Appeal2016-008071
Application 13/598,782
obvious over Jaynes (US 2010/0240563 Al, published Sept. 23,
2010).
2. Claims 1-16 and 18-29 are rejected under 35 U.S.C. § I02(e) as
anticipated by Neal (US 2012/0055643 Al, published Mar. 8, 2012).
3. Claims 1-16 and 18-29 are rejected on the ground ofnonstatutory
double patenting as being unpatentable over claims 1-20 of copending
Application No. 13/598,7703•
4. Claims 1-16 and 18-29 are rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 1-26 of copending
Application No. 13/598,795.
Appellants' arguments focus on the subject matter of independent claims
1, 22, and 27 only (App. Br. 4---6). We select claim 1 as representative of the
grouping of claims argued on appeal.
FINDINGS OF FACT & ANALYSIS
Rejection (1):§§ I02(e)/103 Rejections
The Examiner finds that Jaynes teaches a composition that includes a
polymer formed from monomeric units that include those recited in claim 1
and included in the dependent claims (Ans. 2). The Examiner finds that
Jaynes teaches that the amount of polymer present in the cleaning
composition is between 0.01 to 10% by weight and the polymer has a
molecular weight of 10,000 to 2,500,000 (Ans. 2). The Examiner finds that
because Jaynes' polymer composition contains all the required components
in amounts required by claim 1, the soil adsorption value and polydisperity
3 Application 13/598,770 has issued as US Patent 9,212,243. Accordingly,
the rejection is now a non-provisional rejection.
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Appeal2016-008071
Application 13/598,782
index requirements are inherent properties of the composition in the wipe
(Ans. 3). Alternatively, the Examiner determines that if Jaynes' disclosure
is insufficient to anticipate, it would have been obvious to produce the
claimed composition because Jaynes teaches each of the claimed ingredients
within the claimed proportions for the same utility (Ans. 3).
Appellants argue that Jaynes fails to teach that the polymer itself, not
its wipe, agglomerates, captures, and retains soil (App. Br. 4). Appellants
contend that Jaynes teaches that its polymer repels and does not retain soil
(App. Br. 4). Appellants argue that Jaynes' polymers have been chemically
designed to repel soil, for example by tailoring the molecular weight and/or
charge ratio (App. Br. 4). Appellants contend that Jaynes' polymer forms a
film which remains on the surface of the article to repel soil and prevent soil
from sticking (App. Br. 4). Appellants contend that the "fact that similar
general classes of monomers are used to make Jaynes' polymer and the
claimed polymer, does not mean that ... the polymers exhibit the same
function" (App. Br. 6). Appellants contend that molecular weight, charge
ratio, and other features of the polymers and/or monomers result in the
polymers exhibiting opposite functions; namely Jaynes' polymer exhibiting
soil repellency and the claimed polymer having soil retention properties
(App. Br. 6).
Contrary to Appellants' arguments, the Examiner finds that Jaynes
teaches using monomers for the polymer that are identical to those recited in
Appellants' dependent claims and Specification where Appellants further
limit the general classes of monomers recited in claim 1 (Ans. 2-3). The
Examiner further finds that Jaynes' polymer has a molecular weight that
encompasses the claimed molecular weight range of Appellants' claim 27
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Appeal2016-008071
Application 13/598,782
(Ans. 2). The Examiner finds that Jaynes teaches that the amount of
polymer used in the solution is in an amount that encompass the amount
used in the polymer solution (i.e., 0.02%, Spec. 30:7-10). The Examiner
finds that Jaynes teaches that the polymer may be applied using a wipe to a
surface that is being cleaned (Ans. 2). The Examiner finds that Jaynes'
polymer solution composition is identical to the polymer composition recited
in claim 1 and would, therefore, have the same soil adsorption value and
polydisperity index (Ans. 3). The Examiner further determines that the
claimed article would have been obvious over the teachings of Jaynes (Ans.
3).
Appellants do not dispute the Examiner's specific findings that Jaynes
uses monomers disclosed by Appellants from the general classes of
monomers recited in claim 1 to produce a polymer with a molecular weight
encompassing the molecular weight disclosed by Appellants and recited in
claim 27. Indeed, Jaynes uses solution polymerization to form the polymer,
which is the same polymerization method used by Appellants (Spec. 18:20;
Jaynes ,r 115). Other than Appellants' argument that the molecular weight
and charge density may affect the polymer's functionality, Appellants have
not shown how a polymer made from the same monomers using the same
process would yield a polymer with different properties as argued by
Appellants. Rather, Jaynes' polymer molecular weight encompasses the
range of molecular weights disclosed and claimed ( claim 27) by Appellants.
Contrary to Appellants' arguments, their claimed polymer also has a
tendency to adsorb to the surface being cleaned (Spec. 45:17-18). To
address the adherent property of the soil capture agent (i.e., polymer),
Appellants disclose using "surface stickiness mitigators." Id. In other
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Appeal2016-008071
Application 13/598,782
words, Appellants' polymer has the same adsorption characteristics as
Jaynes' polymer. Based upon the identity of material and process, it is
reasonable to find that Jaynes' polymer also possesses the soil capture
properties recited in claim 1. In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990) ("Products of identical chemical composition can not have mutually
exclusive properties.").
Moreover, Appellants' argument that Jaynes' polymer repels soil only
addresses the functionality of the polymer after it has been applied and
adhered to surface. Jaynes discloses that the polymer is formed into a
solution and may be applied to a surface using a wipe (Jaynes ,r,r 110-113).
Indeed, Jaynes discloses that during the cleaning procedure, the polymer in
the formulation adsorbs onto the surface (Jaynes ,r 113). In other words, the
initial surface is cleaned using the wipe with the polymer solution on it. The
soil retention properties are inherent to the polymer based upon identity of
polymer monomers and polymerization method. Therefore, during the
initial cleaning, the soil on the surface would have been retained by the
polymer-solution incorporated into the wipe absent a showing to the
contrary. Jaynes' wipe incorporating the polymer solution is capable of
performing the soil retention function (Ans. 6).
On this record, we affirm the Examiner's§§ 102(e)/103 rejections of
claims 1-16 and 18-29 over Jaynes.
Rejection (2): § 102(e) over Neal
Appellants contend that Neal is not prior art because "the claimed
invention has a priority date that predates the priority date of ... teachings
within Neal that the Examiner is relying on for this rejection." (App. Br. 6).
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Application 13/598,782
Appellants contend that the teachings of Neal that the Examiner is relying on
are not present in the U.S. Provisional Application (Serial No. 61/379,792).
Id. Appellants argue that the teachings relied upon by the Examiner have a
priority date of September 1, 2011, not the earlier provisional application
priority date.
The Examiner does not respond specifically to Appellants' argument
that the teachings the Examiner relies upon are not present in the provisional
priority application (Ans. 7). The Examiner does not dispense with the
initial burden of establishing that all the relevant teachings of Neal qualify
for the benefit of the provisional application filing date. Although
Appellants' argument is not overly specific, the teachings the Examiner
relies upon are those stated in the rejection. The Examiner has not shown
that all of those teachings are disclosed in the provisional application in
accordance with 35 U.S.C. § 112 to qualify for priority.
On this record, we reverse the Examiner's§ 102(e) rejection of claim
1-16, and 18-32 over Neal.
Rejections (3) and ( 4): Obviousness-type Double Patenting
Appellants state that they will file a terminal disclaimer if this
rejection ripens (App. Br. 6-7). Appellants have not shown reversible error
in the Examiner's obviousness-type double patenting rejections. We
summarily affirm rejections (3) and ( 4).
DECISION
The Examiner's decision is affirmed.
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Appeal2016-008071
Application 13/598,782
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
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