Ex Parte Scavone et al

Patent Trial and Appeal BoardAug 28, 2018

14308754 (P.T.A.B. Aug. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/308,754 06/19/2014 27752 7590 08/30/2018 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. CM3864 6651 EXAMINER VASAT,PETERS ART UNIT PAPER NUMBER 3778 NOTIFICATION DATE DELIVERY MODE 08/30/2018 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, BRIAN FRANCIS GRAY, PETER CHRISTOPHER ELLINGSON, and DEAN LARRY DUVAL Appeal2017-010722 Application 14/308,754 Technology Center 3700 Before DANIEL S. SONG, CHARLES N. GREENHUT, and SEAN P. O'HANLON, Administrative Patent Judges. O'HANLON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1-20. We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b). 1 Appellant is the Applicant, The Procter & Gamble Company, which, according to the Appeal Brief, is the real party in interest. Appeal Br. 1. Appeal2017-010722 Application 14/308,754 SUMMARY OF THE DECISION We AFFIRM and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. Â§ 4I.50(b). SUMMARY OF THE INVENTION Appellant's disclosed invention relates to "an absorbent article comprising ... one or more complexed or encapsulated compounds which are particularly effective in counteracting malodors." Spec. 1: 5-6. Claims 1 and 16 are independent. Claim 1, reproduced below from page 11 (Claims Appendix) of the Appeal Brief, is illustrative of the claimed subject matter: 1. An absorbent article comprising an encapsulated component mixture having a thiol vapor pressure suppression index (TVPS) of more than 25.8. REFERENCES The Examiner relies on the following prior art references in rejecting the claims on appeal: Cummings Scavone Woo Caputi us 5,951,534 US 2008/0215023 Al US 2011/0152804 Al US 2012/0226248 Al REJECTIONS 2 Sept. 14, 1999 Sept. 4, 2008 June 23, 2011 Sept. 6, 2012 I. Claims 1-16 and 19 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Cummings and Scavone. II. Claim 17 stands rejected under 35 U.S.C. Â§ 103 as being unpatentable over Cummings, Scavone, and Caputi. 2 A rejection of claim 20 under 35 U.S.C. Â§ 112(a) was withdrawn. Final Act. 2-3; Ans. 3. 2 Appeal2017-010722 Application 14/308,754 III. Claim 18 stands rejected under 35 U.S.C. Â§ 103 as being unpatentable over Cummings, Scavone, and Woo. ANALYSIS Rejection I Appellant addresses the rejection of claims 1-16 and 19 collectively. Appeal Br. 2-7. We select claim 1 as representative. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). The Examiner finds that Cummings discloses an absorbent article comprising an encapsulated component mixture having a thiol vapor pressure suppression index ("TVPS") of more than 20, but "is silent as to whether the encapsulated component mixture has a [TVPS] of more than 25.8." Final Act. 5. Finding that Cummings discloses "the encapsulated agents ingredients and compositions ... of this invention are the conventional ones known in the art" and "[ s ]election of any encapsulated agents component, or amount of encapsulated agents, is based on functional and aesthetic considerations," the Examiner further finds that Scavone "teaches that 5-methyl-2-thiophenecarboxaldehyde is a suitable fragrance or odor controlling material." Id. (citing Cummings 15:55-59; Scavone ,r 45). The Examiner finds that "Scavone teaches that fragrant and odor controlling material such as 5-methyl-2-thiophenecarboxaldehyde are able to improve the odor perception of the composition or article [with] which they are associated." Id. (citing Scavone ,r 43). Thus, the Examiner determines, it would have been obvious to one of ordinary skill in the art "to modify Cummings with fragrant and odor controlling material such as 5-methyl-2- thiophenecarboxaldehyde, as taught by Scavone." Id. at 6. Citing 3 Appeal2017-010722 Application 14/308,754 Appellant's Specification, which discloses that 5-methyl-2- thiophenecarboxaldehyde has a TVPS of 67.4, the Examiner finds that Scavone's 5-methyl-2-thiophenecarboxaldehyde inherently possess a TVPS of more than 25.8. Id. ( citing Spec. 17). Appellant acknowledges that "Scavone teaches the use of 5-methyl-2- thiophenecarboxaldehyde," but notes that Scavone teaches "approximately 168 fragrance materials" and mixtures thereof. Appeal Br. 3--4. Characterizing Scavone' s disclosure as providing "an infinite number of choices of fragrance materials," Appellant argues that, "without any teaching or suggestion by either Cummings or Scavone regarding the problems being solved by the Appellants," and "without a teaching or suggestion in the prior art regarding which of an infinite number of possibilities may be appropriate," the rejection is based on impermissible hindsight. Id. at 4--5. Appellant also argues that, because "neither Cummings nor Scavone taught or suggested the problem being solved by the Appellants," "the combination of fragrance materials would not have a reasonable expectation of success nor would they be predictable regarding combating odors described in the [Appellant's] specification." Id. at 6. Initially, we note that Appellant does not address the rationale for combining Cummings and Scavone as set forth by the Examiner, which is based on the teachings of the cited prior art references. See Ans. 6, 9. Instead, Appellant appears to focus on a separate rationale that can be used to support a finding of obviousness; namely, the "obvious to try" rationale. Thus, we are not apprised of error in the Examiner's findings and reasoning. We are not persuaded by the arguments Appellant does make. Appellant's arguments appear to be based on the notion that the cited 4 Appeal2017-010722 Application 14/308,754 references must identify and solve the identical problem identified by Appellant in the Specification. See Appeal Br. 4, 5, 6; Reply Br. 2. The Supreme Court has spoken directly on this issue: The first error of the Court of Appeals in this case was to foreclose this reasoning by holding that courts and patent examiners should look only to the problem the patentee was trying to solve. The Court of Appeals failed to recognize that the problem motivating the patentee may be only one of many addressed by the patent's subject matter. The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) ( citation omitted); see also In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) ("As long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventor."). Nor are we persuaded by Appellant's characterization of the rejection as being "arrived at via metaphorical darts thrown at a board with an infinite number of possibilities." Appeal Br. 5; see also Reply Br. 2-3. To the contrary, given Scavone's description that any of its enumerated materials- 5-methyl-2-thiophenecarboxaldehyde included-would be effective at masking, covering, or improving odor perception, substitution of Cummings's encapsulated component with Scavone's 5-methyl-2- thiophenecarboxaldehyde appears to be the substitution of one known odor- controlling element with another known odor-controlling element with predictable results-improving the perceived odor of the absorbent article 5 Appeal2017-010722 Application 14/308,754 before, during, and/or after its use. See Scavone ,r,r 43, 45; KSR, 550 U.S. at 416; Ans. 6 ("the simple substitution of Scavone' s fragrance for the fragrance taught by Cummings results in the instant invention"). We note that Scavone specifically discloses the material cited by the Examiner. Scavone ,r 45. See Merck & Co., Inc. v. Biocraft Labs, Inc., 874 F.2d 804, 807 (1989) (recognizing that "the '813 patent instructs the artisan that any of the 1200 disclosed combinations will produce" desired results, and determining "[ t ]hat the '813 patent discloses a multitude of effective combinations does not render any particular formulation less obvious"); cf In re Baird, 16 F.3d 380,382 (Fed. Cir. 1994) (discussing whether a specific compound is suggested by a generic formula covering "more than 100 million" options); In re Jones, 958 F.2d 347,350 (Fed. Cir. 1992) ( discussing whether a specific species is suggested by the disclosure of its "potentially infinite" genus). Accordingly, we sustain the rejection of claims 1-16 and 19 as being unpatentable over Cummings and Scavone. Rejections II and III Appellant does not separately address the rejection of dependent claims 17 and 18, which depend from claim 1. See Appeal Br. 2-7. Accordingly, for the same reasons as discussed above, we sustain the rejection of these claims. New Ground of Rejection Pursuant to 37 C.F.R. Â§ 4I.50(b), we enter a new ground of rejection of claims 1-3, 6-9, 15, 16, and 19 under 35 U.S.C. Â§ 102(a)(l) as anticipated by Scavone for the reasons provided below. However, because the Board's 6 Appeal2017-010722 Application 14/308,754 exercise of authority under this provision is discretionary, no inference should be drawn from the decision to exercise that discretion with respect to only some of the claims on appeal. Should there be further prosecution of the application, we leave to the Examiner to determine whether to make a new ground of rejection of any other claims. Regarding claims 1-3, 6, 7, 16, and 19, Scavone discloses that its personal care product can take the form of an absorbent article ( claims 1 and 16) to which its cyclodextrin-fragrance complexes ( claim 6) are applied. Scavone ,r 14. Scavone further discloses that its personal care product can employ a scent-releasing system comprising a cyclodextrin-fragrance complex encapsulated in a starch encapsulating material ( claims 3 and 7). Id. ,r 41. Scavone further discloses that the complexed fragrance material can be 5-methyl-2-thiophenecarboxaldehyde (claim 2). Id. ,r,r 43, 45. This material inherently has a TVPS of more than 25.8 (claims 1, 16, and 19). Spec. 17 (disclosing a TVPS of 67.4 for this material). Regarding claims 8 and 9, Scavone discloses that the absorbent material can be, "for example, diapers, feminine hygiene products, incontinence products, and wound dressings." Scavone ,r 14. Regarding claim 15, Scavone discloses that its fragrance materials may be activated by becoming in contact with bodily fluids. Id. ,r,r 16, 46. DECISION The Examiner's decision to reject claims 1-20 is affirmed. We enter a new ground of rejection of claims 1-3, 6-9, 15, 16, and 19 under 35 U.S.C. Â§ 102(a)(l) as anticipated by Scavone. 7 Appeal2017-010722 Application 14/308,754 FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, 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 underÂ§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining ProcedureÂ§ 1214.01. 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; 37 C.F.R. Â§ 4I.50(B) 8