Ex Parte Scavone et al

Patent Trial and Appeal BoardOct 29, 2018

14308764 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/308,764 06/19/2014 27752 7590 10/31/2018 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 FIRST NAMED INVENTOR Timothy Alan Scavone 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. CM3866 2770 EXAMINER VASAT,PETERS ART UNIT PAPER NUMBER 3782 NOTIFICATION DATE DELIVERY MODE 10/31/2018 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 TIMOTHY ALAN SCAVONE, MISAEL OMAR A VILES, PETER CHRISTOPHER ELLINGSON, and DEAN LARRY DUVAL Appeal2017-010237 Application 14/308,764 Technology Center 3700 Before ANTON W. PETTING, AMEE A. SHAH, and ROBERT J. SILVERMAN, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL 1 The Appellants2 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1-12. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Throughout this Decision, we refer to the Appellants' Appeal Brief ("Br.," filed Jan. 23, 2017) and Specification ("Spec.," filed June 19, 2014), and to the Examiner's Answer ("Ans.," mailed May 16, 2017) and Non-Final Office Action ("Office Act.," mailed Aug. 1, 2016). 2 According to the Appellants, the real party in interest is "The Procter & Gamble Company." Br. 1. Appeal2017-010237 Application 14/308,764 STATEMENT OF THE CASE The Appellants' invention "relates to an absorbent article comprising a fastening adhesive and an effective fragrance or odor control composition which does not alter the properties of the adhesive." Spec. 1, 11. 5-7. Claims 1 and 12 are the independent claims on appeal. Claim 1 (Br. 10 (Claims App.)) is exemplary of the subject matter on appeal and is reproduced below (with added paragraphing and bracketing for reference): 1. An absorbent article selected from a sanitary napkin, an incontinence pad and a pantyliner, the absorbent article having a body-facing surface and a garment-facing surface, said absorbent article comprising: [ (a)] a top sheet layer; [ (b)] a backsheet layer; [ ( c)] optionally one or more intermediate layers enclosed between said topsheet and said backsheet [ ( d)] a fastening adhesive applied on the backsheet garment facing surface said adhesive comprising one or more thermoplastic elastomers [ ( e)] a fragrance or odor control composition applied on or within at least one layer of said absorbent article, [(f)] wherein said fragrance or odor control composition comprises one [or] more esters having a log P value of 2.9 or higher and a Kovats Retention Index of 1450 or higher, [ (g)] wherein at least 90% by weight of said one or more esters are comprised in encapsulated or complexed form. REJECTIONS Claims 1--4, 6-9, 11, and 12 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Scavone et al. (US 2008/0215023 Al, pub. Sept. 4, 2008) ("Scavone") and Hasse (US 5,591,146, iss. Jan. 7, 1997 ("Hasse"). 2 Appeal2017-010237 Application 14/308,764 Claim 5 stands rejected under 35 U.S.C. Â§ 103 as being unpatentable over Scavone, Hasse, and Chen et al. (US 4,460,364, iss. July 17, 1984). Claim 10 stands rejected under 35 U.S.C. Â§ 103 as being unpatentable over Scavone, Hasse, and Nilsson et al. (US 3,654,929, iss. Apr. 11, 1972). 3 ANALYSIS We agree with the Appellants' contention that the Examiner's rejection under 35 U.S.C. Â§ 103(a) of the independent claims is in error because the teachings of Scavone, upon which the Examiner relies, would not have disclosed the fragrance composition comprising one or more esters which have a log P value of less than 2.9 and a Kovats Retention Index ("KI") of more than 1450, wherein at least 90% by weight of the one or more ester is comprised in encapsulated or complexed form, as recited in limitations (f) and (g) of claim 1 and similarly recited in claim 12. See Br. 3-7. The Examiner finds, in relevant part, that Scavone discloses an absorbent article of a feminine hygiene product having a fragrance or odor control composition applied within at least one layer, the composition comprising benzyl salicylate, a salicylic acid benzel ester inherently having a log P value higher than 2.9 and a KI higher than 1450, with at least 90% by weight of that ester in comprised in complexed form. Office Act. 6 ( citing Scavone ,r,r 24, 44, 45); Ans. 4. The Appellants do not disagree that Scavone provides for a fragrance composition that can comprise benzyl salicylate, and acknowledge that 3 The Examiner withdraws the rejection of the claims under double patenting. Ans. 2. 3 Appeal2017-010237 Application 14/308,764 benzyl salicylate has the log P and KI values as claimed. See Br. 3; Spec. 11, Table (listing benzyl salicylate has an example ester with a log P value of 3.56 and KI value of 1920.3). Rather, the Appellants argue that "Scavone teaches 100 [and possibly an infinite number of] possible compositions in paragraph [0045] which are suitable for use as fragrant or odor control materials." Br. 5. Without recognition of the problem being solved by the Appellants, "one of ordinary skill in the art would not have any reasonable expectation of success in resulting articles of the proposed combination." Br. 6-7; see also id. at 5. The Appellants direct attention to the Specification at page 11, lines 10-15, that discusses the problem of esters with the claimed log P and KI values having a detrimental effect on the properties of adhesive, particularly adhesives comprising thermoplastic elastomers as claimed. By having at least 90% by weight of the one or more esters comprised in encapsulated or complexed form, adhesive "degradation was prevented without affecting the character of the fragrance or odor control composition nor the stay in place performance of the article." Spec. 12, 11. 14--21. The Examiner maintains that "the instant rejection relies upon Scavone (PGPub 20080215023) to disclose the odor control composition as claimed." Ans. 4. The Examiner further finds [ s ]ince Scavone (PGPub 20080215023) expressly names benzyl salicylate, which inherently is an ester having a log P value of 2.9 or higher and a Kovat's Retention Index of 1450 or higher, Scavone is considered to fully disclose a specific species (i.e. benzyl salicylate) that falls within the broadly claimed genus (i.e. any ester having a log P value of 2.9 or higher and a Kovat's Retention Index of 1450 or higher) of Appellants. 4 Appeal2017-010237 Application 14/308,764 Id. at 6. We disagree. Here, Scavone discloses at least one hundred representative, non-limiting, suitable fragrance materials. Scavone ,r,r 44, 45. The Examiner relies on only one of these possibilities that happens to have the claimed log P and KI values. The majority, if not all, of the other possibilities do not have the claimed values. Scavone does not discuss or disclose a preference for any particular one or group of the enumerated possibilities to narrow the possibilities to those esters with the claimed values. See Sanofi-Synthelabo v. Apotex, Inc., 470 F.3d 1368, 1377 (Fed. Cir. 2006) ("In this case, however, there is no such clear 'pattern of preferences' that serves to narrow the genus in claim 2 to a narrow class that includes clopidogrel bisulfate."); cf In re Petering, 301 F.2d 676, 681 (CCPA 1962) (upholding aÂ§ 102(b) anticipation rejection of a claim that covered specific chemical compounds in light of a prior art patent that disclosed a class of compounds of which those specific compounds were members, noting that the prior art disclosed specific preferences, constituting "a definite and limited class of compounds"); In re Schaumann, 572 F.2d 312, 316-17 (CCPA 1978) (upholding aÂ§ 102(b) anticipation rejection of claims covering a specific compound in light of a prior art patent that disclosed a narrowed class of compounds considering expressed preferences). It is not clear, and the Examiner does not adequately explain, why one of ordinary skill in the art would select, based on particular characteristics, the specific compound benzyl salicylate from the hundred or so other compounds listed in Scavone. See In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994) ("A disclosure of millions of compounds does not render obvious a claim to three compounds, particularly when that disclosure indicates a preference leading away from the claimed compounds."). 5 Appeal2017-010237 Application 14/308,764 Thus, we are persuaded of error on the part of the Examiner, and we do not sustain the Examiner's rejection of independent claims 1 and 12 and dependent claims 2--4, 6-9, and 11 under 35 U.S.C. Â§ 103(a) as obvious over Scavone and Hasse. We also do not sustain the rejections under 35 U.S.C. Â§ 103(a) of claims 5 and 10, which rely on the same findings regarding Scavone. DECISION The Examiner's rejections of claims 1-12 under 35 U.S.C. Â§ 103(a) are REVERSED. REVERSED 6