Ex Parte Smith et al

Patent Trial and Appeal BoardMar 16, 2016

13036889 (P.T.A.B. Mar. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/036,889 02/28/2011 27752 7590 03/18/2016 THE PROCTER & GAMBLE COMPANY Global Patent Services - Legal IP Central Building, CS One Procter and Gamble Plaza CINCINNATI, OH 45202 FIRST NAMED INVENTOR Edward Dewey Smith III 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. 12005 5815 EXAMINER ALAWADI, SARAH ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 03/18/2016 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 BRIAN JOSEPH LIMBERG Appeal2013-007223 Application 13/036,889 Technology Center 1600 Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and JEFFREY N. FREDMAN, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL 1 This appeal under 35 U.S.C. Â§ 134(a) involves claims 1-20 (Final Rej. 2). Examiner entered rejections under 35 U.S.C. Â§ 103(a). We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. STATEMENT OF THE CASE Appellants' "invention relates to bar compositions for cleansing skin" (Spec. 1 ). Claims 1 and 9 are representative and reproduced in the Claims Appendix of Appellants' Brief. 1 Appellants identify the Real Party in Interest as "The Procter & Gamble Company of Cincinnati, Ohio" (Br. 1 ). Appeal2013-007223 Application 13/036,889 Claims 1-8 and 10-19 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Chakrabarty,2 Mohseni,3 and Polson.4 Claims 9 and 20 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Chakrabarty, Mohseni, Polson, and Ramachandran. 5 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Chakrabarty "relates to a synergistic detergent composition that provides anti-microbial activity" (Chakrabarty i-f l; see generally Final Rej. 3--4). FF 2. Chakrabarty's "detergent composition compris[es]: 10% to 80 weight % of a detergent active; 1 % to 60 weight % of a clay belonging to the smectite group; [and] 0.001 % to 10% ... zinc pyrithione" (Chakrabarty i-fi-113-16; Final Rej. 3). FF 3. Chakrabarty discloses "preferred embodiments, [wherein] the detergent composition is a detergent bar, preferably a soap bar" (Chakrabarty i-f 19; Final Rej. 3). FF 4. Chakrabarty discloses that detergent bars typically contain about 10% to 20% water (Chakrabarty i-f 2; Final Rej. 3). FF 5. Chakrabarty fails to disclose "platelet zinc pyrithione with a mean particle diameter of about 0.5 microns to about 10 microns, a median 2 Chakrabarty et al., US 2006/0111259 Al, published May 25, 2006. 3 Mohseni et al., US 2009/0215739 Al, published Aug. 27, 2009. 4 Polson et al., US 6,017,936, issued Jan. 25, 2000. 5 Ramachandran et al., US 5,834,409, issued Nov. 10, 1998. 2 Appeal2013-007223 Application 13/036,889 particle diameter of about 0.5 to about 10 microns and thickness of about 0.6 to about 15 microns" (Final Rej. 4). FF 6. Mohseni "relates generally to methods for preparing particles ... of pyrithione salts" and "to a personal care composition ... [such as] soap, [which] ... compris[ es] an antimicrobially effective amount of de- agglomerated [pyrithione] particles" (Mohseni i-fi-1 3 and 1 7; see id. i-fi-f 16 and 58; see generally Final Rej. 4). FF 7. Mohseni discloses that [k ]nown methods for producing insoluble polyvalent salts of pyrithione result in platelet-shaped (or other irregular shaped) particles having an average size greater than 1 micrometer (Âµm), and more frequently in the range of 3 to 5 Âµm. These particles are either used directly, or can be converted into smaller particles. Smaller particles of pyrithione salts (i.e., less than 1 micrometer or "submicron") are often desired because they more easily form suspensions, emulsions, or dispersions, and provide a larger surface area for enhanced biocidal activity. (Mohseni i1 7; id. i1 22 ("the term 'submicron-sized particles' refers to particles having an average diameter of less than one micron"); Final Rej. 4.) FF 8. Mohseni discloses that the "application of heat (at a temperature of at least 60 degrees Centigrade) to needle shaped pyrithione salt particles having particle sizes in the range of 1-50 microns causes the particles to decrease in size to the submicron range" (Mohseni i121; Final Rej. 4). FF 9. Mohseni discloses that [ s ]ubmicron-sized particles of pyrithione salts are usually generated by a separate mechanical manipulation step (e.g., grinding or crushing) of larger particles or crystals that are made by conventional processes. . . . Unfortunately, mechanical grinding of large pyrithione particles into a submicron sized pyrithione particles tends to not produce 3 Appeal2013-007223 Application 13/036,889 submicron-sized particles having a desired uniform size, shape and narrow particle size distribution. (Mohseni i-f 8; see Final Rej. 4.) FF 10. Mohseni discloses the preparation of zinc pyrithione particles, wherein inorganic salts ... may be added to the reaction medium to control particle length and shape. For example, suitable addition of salts can result in particles of pyrithione salts having a variety of advantageous shapes, including nonspherical or non-platelet form, such as rods, needles, cylinders, cones, ellipsoids, prisms, parallelepipeds, pyramids, and the like. The particles formed by ... [Mohseni' s] invention may also take the form of tetrahedrons, hexahedrons (cube), octahedrons, dodecahedrons, icosahedrons, and the like. (Mohseni i-f 34; Final Rej. 4.) FF 11. Mohseni fails to disclose a "median [zinc pyrithione particle] size range from 0.6 to 0.7 microns" (Final Rej. 4). FF 12. Examiner finds that Polson discloses "the preparation of zinc pyrithione particles with a submicron range from 0.03 to 0.95 microns in size" and the addition of zinc pyrithione "particles ... to products including soap formulations" (id. at 5; see Polson 8:8-11 and 25-27). FF 13. Appellants disclose that it has been discovered that the use of platelet ZPT having a median particle diameter of about 1 micron to about 5 microns, a mean particle diameter of about 1 microns to about 5 microns, and a thickness of about 0.6 microns to about 15 microns in an antimicrobial bar composition such as the antimicrobial bar composition disclosed [by Appellants] ... provides improvements in the efficiency of the amount of ZPT deposited on the surface upon which the antimicrobial bar composition is being used on as well as reductions in the amount of 4 Appeal2013-007223 Application 13/036,889 antimicrobials that form after use in comparison with, for example, ... particulate ZPT having a median particle diameter of about 0.70 microns, a mean particle diameter of about 0.75 microns, and a thickness of less than 0.6 microns. (Spec. 6:31-7:9.) FF 14. Examiner finds that the combination of Chakrabarty, Mohseni, and Polson fails to suggest the combination of zinc pyrithione and triclosan and relies on Ramachandran to disclose "bar soap compositions ... compris[ing] mixtures of zinc pyrithione and triclosan" (Final Rej. 6; see Ramachandran 5:1-5 and 9:1-10:14). ANALYSIS The combination of Chakrabarty, Mohseni, and Polson: Based on the combination of Chakrabarty, Mohseni, and Polson, Examiner concludes that, at the time Appellants' invention was made, it would have been prima facie obvious "to incorporate platelet zinc pyrithione particles with diameters (thus thickness) in the submicron range (less than 1 micron e.g. from 0.03 up to 0.95 micron as disclosed by Polson et al.) or within the range of 1 to 3 microns within the soap products of Chakrabarty" (Final Rej. 5). Appellants contend that Examiner failed to establish an evidentiary basis on this record that supports a conclusion that the combination of Chakrabarty, Mohseni, and Polson suggests an antimicrobial bar composition that comprises platelet zinc pyrithione comprising a mean and median particle diameter of about 0.5 to about 10 microns and a thickness of about 0.6 to about 15 microns (see Br. 3; see also Appellants' claim 1). In this regard, Appellants contend that "[a] particle with a mean diameter of 5 [microns] (within the claimed range) could have a thickness of 50 [microns] 5 Appeal2013-007223 Application 13/036,889 (outside the claimed range)" and Examiner identified no disclosure in the combination of art relied upon that "would necessitate the other parameters would fall within the claimed range other than [Appellants'] ... claim itself (Br. 3). We are not persuaded. Mohseni discloses the production of platelet-shaped particles having an average size greater than 1 Âµm and more frequently in the range of 3 to 5 Âµm (FF 7). Appellants fail to establish an evidentiary basis on this record to support a conclusion that the combination of prior art relied upon by Examiner, which includes a composition comprising particles having an average size greater than 1 Âµm and more frequently in the range of 3 to 5 Âµm, fails to meet the requirements of Appellants' claimed invention (see FF 1-7). Stated differently, Appellants fail to establish an evidentiary basis on this record to support a conclusion that Mohseni's platelet-shaped particles that have an average size in the range of 3 to 5 Âµm fails to make obvious platelet zinc pyrithione comprising a mean and median particle diameter of about 0.5 to about 10 microns and a thickness of about 0.6 to about 15 microns (see FF 7; cf Appellants' claim 1). Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) ("[W]here there is a range disclosed in the prior art, and the claimed invention falls within that range, there is a presumption of obviousness"); see also In re Best, 562 F.2d 1252, 1255 (CCPA 1977) ("Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product"). 6 Appeal2013-007223 Application 13/036,889 For the foregoing reasons, we recognize, but are not persuaded by, Appellants' contentions regarding Mohseni' s disclosure of submicron sized particles or the use of inorganic salts to produce zinc pyrithione particles (Br. 3--4; FF 9-10). Unexpected Results: We recognize, but are not persuaded by, Appellants' asserted unexpected results, which compare: (1) platelet zinc pyrithione (platelet ZPT) comprising a mean and median particle diameter of about 1 to about 5 microns and a thickness of about 0.6 to about 15 microns to (2) "particulate ZPT having a median particle diameter of about 0.70 microns, a mean particle diameter of about 0. 7 5 microns, and a thickness of less than 0. 6 microns" (FF 13; see Br. 4). Initially, we note that the platelet ZPT asserted to result in efficiency improvements is not commensurate in scope with Appellants' claimed invention (see Br. 4; cf FF 13; Appellants' claims 1 and 14). In addition, as discussed above, Appellants' failed to establish an evidentiary basis on this record to support a conclusion that the platelet ZPT suggested by the combination of Chakrabarty, Mohseni, and Polson fails to exhibit the same results, when placed in an antimicrobial bar composition (as suggested by Chakrabarty, Moheseni, and Polson) as Appellants' obtain for their claimed invention. Absent evidence to the contrary, the platelet ZPT required by Appellants' claimed invention, appears to comprise a mean and median particle diameter and thickness that overlaps the mean and median particle diameter and thickness of the platelet ZPT suggested by the combination of Chakrabarty, Moheseni, and Polson. 7 Appeal2013-007223 Application 13/036,889 The combination of Chakrabarty, Mohseni, Polson, and Ramachandran: Based on the combination of Chakrabarty, Mohseni, Polson, and Ramachandran, Examiner concludes that, at the time Appellants' invention was made, it would have been prima facie obvious to formulate soap products as suggested by the combination of Chakrabarty, Mohseni, and Polson which comprise both zinc pyrithione and triclosan as suggested by Ramachandran (Final Rej. 7; see FF 1-12 and 14). Having found no deficiency in the combination of Chakrabarty, Mohseni, and Polson as it relates to claim 1, we are not persuaded by Appellants' contention that Ramachandran fails to make up for the deficiencies in the combination of Chakrabarty, Mohseni, and Polson (Br. 4-- 5). CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner supports a conclusion of obviousness. The rejection of claim 1 under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Chakrabarty, Mohseni, and Polson is affirmed. Claims 2-8 and 10-19 are not separately argued and fall with claim 1. 6 The rejection of claim 9 under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Chakrabarty, Mohseni, Polson, and Ramachandran is affirmed. Claim 20 is not separately argued and falls with claim 9. 6 We recognize Appellants' recitation of the limitations set forth in Appellants' claim 14 (Br. 2-3). Merely stating the different limitations of dependent claims does not constitute separate argument. See 37 C.F.R. 1.192(c)(7); In re Dance, 160 F.3d 1339, 1340 n.2 (Fed. Cir. 1998). 8 Appeal2013-007223 Application 13/036,889 TIME PERIOD FOR RESPONSE 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). AFFIRMED 9