Ex Parte Smith et al

Patent Trial and Appeal Board

Aug 31, 2017

13856457 (P.T.A.B. Aug. 31, 2017)

United States Patent and Trademark Office
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.
13/856,457 04/04/2013 Edward Dewey SMITH III 12276MD 2392
27752 7590 09/05/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
KANTAMNENI, SHOBHA
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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 EDWARD DEWEY SMITH III, JASON EDWARD COOK, and
MARK WILLIAM HAMERSKY
Appeal 2016-006460
Application 13/856,4571
Technology Center 1600
Before ULRIKE W. JENKS, JOHN G. NEW, and DAVID COTTA,
Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method of enhancing the deposition of zinc pyrithione. The Examiner
rejected the claims on appeal as obvious under 35 U.S.C. § 103(a) and,
provisionally, on the ground of obviousness-type double patenting.
We affirm.
1 According to Appellants, the real party in interest is The Proctor & Gamble
Company. App. Br. 1.
Appeal 2016-006460
Application 13/856,457
STATEMENT OF THE CASE
Claims 1—7, 9, 11—13, 15, and 16 are on appeal. Claim 1, the only
independent claim, is illustrative and reads as follows:
1. A method of enhancing the deposition of zinc pyrithione,
comprising combining zinc pyrithione with a polymer and
drying the zinc pyrithione polymer combination to form a dried
zinc pyrithione-polymer aggregate.
App. Br. 5.
In response to a restriction requirement, Appellants elected
acrylamide polymers. See, April 8, 2014 Election of Species under 37
C.F.R. § 1.146.
The claims stand rejected as follows:
Claims 1—7, 9, 11, 12, 15, and 16 were rejected under 35 U.S.C.
§ 103(a) as obvious over the combination of Parran,2 Fleurot,3 and
Whistler.4
Claim 13 was rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Parran, Fleurot, Whistler and Peffly.5
Claims 1—7, 9, 11—13, 15, and 16 were provisionally rejected on the
ground of non-statutory obviousness-type double patenting over claims 1—
13, and 21—25 of U.S. Patent Application No. 13/585,929 (“the ‘929
Application”) in view of Whistler. Subsequent to the briefing in this appeal,
the ‘929 Application was abandoned. See, September 16, 2016 Notice of
2 Parran, US Patent No. 3,761,418, issued Sept. 25, 1973 (“Parran”).
3 Fleurot et al., US Patent No. 6,255,264 Bl, issued July 3, 2001 (“Fleurot”).
4 Whistler, US Patent No. 5,486,507, issued Jan. 23, 1996 (“Whistler”).
5 Peffly et al., US Patent Application Publication No. 2007/0207109 Al,
published Sept. 6, 2007 (“Peffly”).
2
Appeal 2016-006460
Application 13/856,457
Abandonment. Accordingly, the double patenting rejection is rendered moot
and we need not discuss it further.
OBVIOUSNESS OVER PARRAN, FLEUROT AND WHISTLER
Appellants argue claims 1—7, 9, 11, 12, 15, and 16 together. We
designate claim 1 as representative.
In rejecting claim 1 as obvious, the Examiner found that Parran
disclosed detergent compositions containing water-insoluble particulate
substances, such as antimicrobial agents and cationic polymers. Final Act.
3.6 The Examiner further found that Parran disclosed that cationic polymers
“serve to enhance the deposition and retention of the particulate substances
on surfaces washed with the detergent composition.” Id.
The Examiner acknowledged that Parran does not teach the elected
cationic acrylamide based polymers, but found that Fluerot disclosed the use
of cationic polymers including copolymers of acrylamide. Id. at 5. The
Examiner concluded that it would have been obvious to employ acrylamide
polymers in the composition of Parran because: “1) Parran teaches that
nitrogen containing cationic polymers are employed in mixing with zinc
pyrithione to obtain detergent composition with enhanced retention and
deposition, and 2) Fleurot teaches that nitrogen containing cationic polymers
such as copolymers of acrylamide are employed in skin care composition.”
Id. at 6—7. The Examiner reasoned that the skilled artisan would have had a
reasonable expectation of success because both Parran and Fleurot teach the
mixture of cationic polymers with a “benefit agent” to enhance delivery of
the benefit agent. Id. The Examiner thus concluded that the substation of
6 Office Action mailed April 21, 2015 (“Final Act.”).
3
Appeal 2016-006460
Application 13/856,457
Fleurot’s cationic polymer for Parran’s cationic polymer was a substitution
of functionally equivalent elements that yields predictable results. Id.
The Examiner also acknowledged that Parran does not teach drying
the admixed zinc polymer aggregate as required by claim 1. Id. at 5. The
Examiner found, however, that Whistler disclosed “a method of making [a]
particle aggregate by forming a suspension of the particulate component in a
solution of a binder and spray drying the resulting suspension” and that these
aggregates “facilitate handling and mixing of the functional substance in
product formulations, and have utility in the areas of food/nutrition, in cream
and lotions, deodorant/antiperspirants, cosmetics, agricultural products, and
products for human and veterinary medicine.” Id. at 6. The Examiner
concluded that it would have been obvious to dry the formulation of Parran
in order to obtain compositions “with better handling and mixing.” Id. at 7—
8.
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 3—11; Final Act. 2—18) and agree
that the claims are obvious over Parran, Fleurot and Whistler. We address
Appellant’s arguments below.
Appellants argue that the Specification defines dried zinc pyrithion-
polymer aggregate as having 25% or less, by weight of the aggregate,
moisture. App. Br. 2. Appellants contend that the Examiner has not
demonstrated that the prior art discloses an aggregate having the require
moisture content. We are not persuaded.
The Examiner found that it would have been obvious to dry the
composition of Parran as disclosed in Whistler. Whistler discloses: “In
accordance with the method embodiment of the present invention, porous
4
Appeal 2016-006460
Application 13/856,457
aggregates of discrete particles are prepared by spray-drying a suspension of
such particles in a solution of a suitable binder utilizing conventional spray­
drying equipment/conditions.” Whistler col. 4,11. 40-45. Spray drying is
among the methods disclosed in the specification for drying zinc pyrithion-
polymer aggregated. See, Spec. 8 (“The dried zinc pyrithione-polymer
aggregate can be formed from one or more of a variety of drying processes.
Examples of such drying processes can include, but are not limited to spray
drying”). We agree with the Examiner that since the prior art and the
Specification teach the same method of drying, the burden shifted to
Appellant to demonstrate that the prior art method would produce different
results. Final Act. 9 (citing In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990);
see also, In re Best, 562 F.2d 1252, 125A-55 (CCPA 1977)).
Appellants argue that, in Fleurot, “the benefit agents being
aggregrated [sic] are not particulate, but in fact are liquid droplets.” App.
Br. 2. Appellants then argue that “Parran and Fleurot are directed to
different benefit agent forms when combined with the polymer (liquid
versus particulate), and the Office Action has pointed to nothing that would
show applicability of teachings with respect to agglomerating droplets in a
liquid composition to agglomerating particulates in a dried aggregate.” Id.
We are not persuaded.
Fleurot teach that the benefit agents in its composition “may be solid
or liquid at room temperature.” Fleurot col. 3,11. 16—18. Accordingly we
agree with the Examiner that Fleurot “teach[es] the phase state of the benefit
agent is immaterial to its aggregation by cationic polymers i.e one can use
benefit agents that are solid to aggregate with cationic polymers therein.”
Ans. 6. Appellants attempt to discount this statement by arguing that only
5
Appeal 2016-006460
Application 13/856,457
“the phase state ... at the time of aggregation ... is relevant” and Fleurot
“appears to be making a pre-emulsion, so the benefit agents at the time of
aggregation appear to be in a liquid state.” App. Br. 3. We are not
persuaded because the teaching that the benefit agent is in a pre-emulsion
(Fleurot col. 2,11. 28—29) is limited to a preferred embodiment and there is
no indication that the broader teaching of Fleurot that the benefit agent may
be in either solid or liquid form {id. at col. 3,11. 16—18) would not apply at
the time of aggregation. See, In re Bode, 550 F.2d 656, 661 (CCPA 1977) (a
prior art “reference must be evaluated for all it teaches and is not limited to
its specific embodiments”).
Appellants argue that unexpected results overcome any prima facie
case of obviousness. As evidence of unexpected results, Appellants cite
statements in the Specification that the inclusion of polymers in personal
care compositions is traditionally thought to interfere with bioavailability of
antimicrobial agents, and that it was surprising a polymer could be added to
zinc pyrithione without compromising antimicrobial efficacy. App. Br. 3^4;
Spec. 4 and 7. Appellants also point to the potential use of the polymer as a
binder, which “provide[s] added benefits when selecting other ingredients to
be included with a dried zinc pyrithione-polymer aggregate.” App. Br. 4.
We are not persuaded at least because Appellants do not compare the
claimed method to the closest prior art — Parran. In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are
used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art.”). Appellants speculate that
“Parran may get enhanced deposition (as he claims) [but] the use of
polymers in this way would still likely suffer from the drawback described
6
Appeal 2016-006460
Application 13/856,457
above since it is utilizing a similar mechanism of action (i.e. the
antimicrobial agent is less bioavailable).” In the absence of comparative
data, Appellants’ speculation cannot overcome Parran’s express teaching
that zinc pyridinethione compositions including a cationic polymer had
greater bioavailability than compositions lacking the polymer. Parran col.
10,11. 54—61 (“The degree of deposition of zinc pyridinethione from this
composition was much greater than the degree of deposition attained with a
similarly formulated product which contained no cationic polymer. Residual
antimicrobial activity of surfaces washed with this composition is markedly
greater as compared to surfaces washed with a control product without
polymer.”). On the record before us, we cannot conclude that the benefits
identified by Appellants support a finding of unexpected results.
Accordingly, we affirm the Examiner’s rejection of claim 1 as
obvious over the combination of Parran, Fleurot, and Whistler. Because
they were not argued separately claims 2—7, 9, 11, 12, 15, and 16 fall with
claim 1.
OBVIOUSNESS OVER PARRAN, FLEUROT, WHISTLER,
AND PEFFLY
Appellants argue that claim 13 is non-obvious over the same art for
the reasons advanced in connection with claim 1. App. Br. 4. Accordingly
we affirm the Examiner’s rejection of claim 13 as obvious over the
combination of Parran, Fleurot, Whistler and Peffly for the reasons
discussed in connection with claim 1.
SUMMARY
For these reasons and those set forth in the Examiner’s Answer and
Final Action, we affirm the Examiner’s rejection of claims 1—7, 9, 11, 12,
7
Appeal 2016-006460
Application 13/856,457
15, and 16 as obvious over the combination of Parran, Fleurot, and Whistler
and the Examiner’s rejection of claim 13 as obvious over the combination of
Parran, Fleurot, Whistler and Peffly. We do not consider the Examiner’s
rejection of claims 1—7, 9, 11—13, 15, and 16 on the ground of non-statutory
obviousness-type double patenting on the ground that it is moot because the
application on which this rejection is based has now been abandoned.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
8