Ex Parte Smith et al

Patent Trial and Appeal Board

May 10, 2013

10303287 (P.T.A.B. May. 10, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/303,287 11/25/2002 Daniel W. Smith 6983-00 2805
7590 05/10/2013
COLGATE-PALMOLIVE COMPANY
909 River Road
P.O. Box 1343
Piscataway, NJ 08855-1343
EXAMINER
HYUN, PAUL SANG HWA
ART UNIT PAPER NUMBER
1772
MAIL DATE DELIVERY MODE
05/10/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL W. SMITH, AMJAD FAROOQ,
DONGHUI WU, MARIJA HEIBEL, and KAREN DREHS
____________

Appeal 2012-000822
Application 10/303,287
Technology Center 1700
____________

Before RICHARD TORCZON, GEORGE C. BEST, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000822
Application 10/303,287
2
On December 22, 2010, the Examiner finally rejected claims 1, 9, 11,
13, and 16 of Application 10/303,287 under 35 U.S.C. § 102(b) as
anticipated. Appellants1 seek reversal of these rejections pursuant to 35
U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
BACKGROUND
The ’287 application describes acetals, hemiacetals, ketals, and
hemiketals that serve as fragrance precursor molecules. Spec. 1; Fig. 1.
These compounds can be deposited on surfaces such as fibers, skin, hair, and
hard surfaces. Spec. 1. Once deposited, the fragrance precursors decompose
and release perfume. Id. Claim 1 is representative of the ’287 application’s
claims and is reproduced in relevant part below:
1. A fragrance precursor compound comprising one or more
of the compounds derived from the reaction of X-OH and an
aldehyde or ketone,
said fragrance precursor compounds being of the formula
X-O-C(R)(R*)(R**)
wherein
R is . . . ; R* is . . . ; R** is O-H or O-X; O-X
representing a moiety derived from X-OH, and wherein
X-OH is a material containing at least one hydroxyl
group chosen from surfactants . . . , fabric softener
materials . . . , and polymers . . . ;

1 The real party in interest is Colgate-Palmolive Co. (App. Br. 2).
Appeal 2012-000822
Application 10/303,287
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wherein X-OH is of the following structure:
R1
|
R2― Y―(CH2)q―(Q)m―B
wherein Rl and R2 are each independently, H or:
(a) C1-C22 alkylenecarboxy moiety having the formula
―(CH2)eR3
wherein R3 is ―NHCOR4; or ―OCOR4; or
―NR5COR4; and
wherein R4 and R5 are each independently
C1-C22 alkyl or alkenyl; and e is an integer
from 1 to 22; or
(b) C1-C22 linear or branched alkyl; or
(c) C1-C22 linear or branched alkenyl; or
(d) C2-C22 substituted or unsubstituted alkylenoxy; or
(e) C3-C22 substituted or unsubstituted alkylenoxy
alkyl; or
(f) C6-C22 substituted or unsubstituted aryloxy; or
(g) C7-C22 substituted or unsubstituted alkylenearyl; or
(h) C7-C22 substituted or unsubstituted
alkyleneoxyaryl; or
(i) C7-C22 oxyalkylenearyl; or
(j) an anionic unit having the formula:
―(CH2)yR6
wherein R6 is ―SO3M, ―OSO3M,
―PO3M, ―OPO3M, Cl or mixtures thereof,
wherein M is hydrogen, or one or more salt
forming cations sufficient to satisfy charge
Appeal 2012-000822
Application 10/303,287
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balance, or mixtures thereof; y is an integer
from 1 to 22; or
(k) a mixture comprising at least two of (a) through
(j); and
q is an integer from 0 to 22;
m is an integer from 0 to 22;
Q is (CH2)m or (CH2CHR7O);
R7 is independently hydrogen, methyl, ethyl, propyl or benzyl;
B is H if Q is (CH2CHR7O) or OH; and
Y is N.
(App. Br. 9-10 (Claims App’x) (some paragraphing and indentation added)).
REJECTIONS
On appeal, the Examiner maintains the following grounds of rejection:
1. Claims 1, 9,2 11, 13, and 16 were rejected under 35 U.S.C.
§ 102(b) as anticipated by Sivik ’7103 (Ans. 4).
2. Claims 1, 9, 11, 13, and 16 were rejected under 35 U.S.C. § 102(b)
as anticipated by Sivik ’7964 (Ans. 5).
3. Claims 1, 9, and 16 were rejected under 35 U.S.C. § 102(b) as
anticipated by Morelli5 (Ans. 6).

2 For examination purposes, Appellants selected subspecies (gg) of claim 9
(App. Br. 2, 4; Ans. 3).
3 U.S. Patent No. 6,156,710, issued Dec. 5, 2000.
4 U.S. Patent No. 6,277,796 B1, issued Aug. 21, 2001.
5 WO 98/47478, published Oct. 29, 1998.
Appeal 2012-000822
Application 10/303,287
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DISCUSSION
Appellants argue for reversal of each of the rejections solely on the
basis of limitations found in claim 1. Because the other claims remaining in
the ’287 application depend from claim 1, we shall confine our analysis to
that claim.
Rejection 1. The Examiner rejected claim 1 as anticipated by Sivik
’710 (Ans. 4 (citing Sivik ’710 col. 6, l. 1-col. 7, l. 35)). Sivik ’710 describes
compounds having the generic structure
R1
|
R―C―OR2
|
OR3
wherein R can be C1-C20 linear alkyl, R1 can be H, and R2 and R3 can be
alkylenearyl units that can comprise an amino group (id.). The Examiner
found that Sivik ’710 discloses that R2 and R3 may comprise alkylenearyl
groups that have a structure that falls within the scope of
R1
|
R2― Y―(CH2)q―(Q)m―B
as defined in claim 1 of the ’287 application (id.).
Appellants argue that this rejection should be reversed because Sivik
’710 contains a generic disclosure and does not provide any guidance which
suggests the combination and selection of the variable elements that places
the allegedly anticipatory compound in the public’s possession (App. Br. 4-5
(citing In re Brown, 329 F.2d 1006, 1011 (CCPA 1964); In re Arkley, 455
F.2d 586, 587 (CCPA 1972)).
Appeal 2012-000822
Application 10/303,287
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The Examiner replies:
It should be noted that [X-OH] is a very generic formula that
encompasses a very large number of species of moieties. Thus,
the claim should be interpreted to be reciting species of
moieties rather than a single species of moiety. That said, Sivik
et al. disclose a side chain that can be one of the following
species of moieties: [list of ten “species of moieties”].
. . . The Examiner maintains the position that having to choose
one species of compounds from ten species of compounds to
arrive at the claimed invention does not constitute undue
picking and choosing. Moreover, Sivik et al. disclose that each
of the ten species is derived from the hydrolysis of a compound
that corresponds to the claimed invention (see lines 1-10, col.
7). Thus, Sivik et al. provide directions for one of ordinary skill
in the art to follow in order to arrive at the claimed invention
without undue experimentation. For the foregoing reasons,
Appellant's argument that undue picking and choosing from the
disclosure of Sivik et al. is required to arrive at the claimed
invention is not persuasive.
(Ans. 7-8).
In essence, the Examiner is attempting to apply the reasoning of In re
Petering, 301 F.2d 676, 681-82 (CCPA 1962), to this alleged “genus-species
of moieties” situation. In Petering, the generic disclosure of 20 different
species was found to be a description
to those with ordinary skill in the art each of the various
[permutations] here involved as fully as if [the prior art
reference] had drawn each structural formula or had written
each name. . . . [W]e hold that each compound within the
limited class in [the prior art reference], as defined supra, has
been described in a printed publication within the meaning of
35 U.S.C. § 102(b), and that it is of no moment that each
compound is not specifically named or shown by structural
formula in that publication.
Id. at 682.
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We are not aware of any case that extends Petering in the manner
sought by the Examiner.6 We decline the opportunity to do so in the first
instance.
A reference that does not disclose a specific embodiment which
satisfies all of the claim limitations will nonetheless describe the claimed
invention within the meaning of § 102 if it “clearly and unequivocally
disclose[s] the claimed compound or direct[s] those skilled in the art to
compound without any need for picking, choosing, and combining various
disclosures not directly related to each other by the teachings of the cited
reference.” In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (emphasis in
original) (quoted with approval in Sanofi-Synthelabo v. Apotex, Inc., 550
F.3d 1075, 1083 (Fed. Cir. 2008)). Because the rejection requires substantial
picking and choosing of the various substituents and the reference does not
provide any guidance for making the required choices, we reverse the
rejection of claims 1, 9, 11, 13, and 16 as anticipated by Sivik ’710.
Rejections 2 and 3. The Examiner rejected claims 1, 9, 11, 13, and 16
as anticipated by Sivik ’796 (Ans. 5) and rejected claims 1, 9, and 16 as
anticipated by Morelli (Ans. 6). These rejections suffer from the same
infirmities as Rejection 1. For the reasons expressed above, we also reverse
these rejections.

6 Indeed, our review of the case law demonstrates that Petering is oft
distinguished. E.g., Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1086
(Fed. Cir. 2008); Eli Lilly & Co. v. Zenith Goldline Pharms., Inc., 471 F.3d
1369, 1376 (Fed. Cir. 2006).
Appeal 2012-000822
Application 10/303,287
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CONCLUSION
We have reversed all of the Examiner’s rejections of the ’287
application’s claims.

REVERSED

kmm/sld