Ex Parte Torres et al

Patent Trial and Appeal BoardMar 29, 2017

13615765 (P.T.A.B. Mar. 29, 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. 6635A 2409 EXAMINER AGUIRRE, AMANDA L ART UNIT PAPER NUMBER 1626 MAIL DATE DELIVERY MODE 13/615,765 09/14/2012 25280 7590 Legal Department (M-495) P.O. Box 1926 Spartanburg, SC 29304 03/29/2017 Eduardo Torres 03/29/2017 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 EDUARDO TORRES, GREGORY S. MIRACLE, and JOHN D. BRUHNKE1 Appeal 2016-003085 Application 13/615,765 Technology Center 1600 Before DEMETRA J. MILLS, TIMOTHY G. MAJORS, and DEVON ZASTROW NEWMAN, Administrative Patent Judges. NEWMAN, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims to a composition comprising a thiophene azo carboxylate dye. The Examiner entered final rejections for anticipation. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the Real Party in Interest as Milliken & Company. Br. 2. Appeal 2016-003085 Application 13/615,765 STATEMENT OF THE CASE Background The Specification discloses: a method of treating a polyester and/or nylon-comprising textile, the method comprising the steps of (i) treating the textile with an aqueous solution comprising a laundry care adjunct and from lppb to 500ppm of a thiophene azo carboxylate dye; and (ii) rinsing and drying the textile, the dye comprising a dye having a structure of Formula I: wherein R/and R2 are independently selected from . . . [specifying multiple R groups and subgroups within R1 and R2]. Spec. 1:29-2:27. The Claims Claims 1— 6, 9-13, 16, 17, and 23—30 are on appeal. Claim 1 is illustrative and reads as follows: 1. A composition comprising a thiophene azo carboxylate dye having the structure of Formula I: Formula l 2 Appeal 2016-003085 Application 13/615,765 wherein R'and R2 are independently selected from [(CH2CR’HO)x(CH2CR”HO)yQ], CM2 alkyl, C6-ioaryl, C7-C22 aryl alkyl, with the requirement that at least one of R1 or R2 is [(CH2CR’HO)x(CH2CR”HO)yQ], wherein R’ is selected from the group consisting of H, Cm alkyl, CH20(CH2CH20)zQ, phenyl and CH2OR5; wherein R” is selected from the group consisting of H, Cm alkyl, CH20(CH2CH20)zQ, phenyl and CH2OR5; wherein 1 or 2 < x + y < 50; wherein y > 1; wherein z = 0 or 1 to 20; and wherein Q is selected from the group consisting of H and Y wherein Y is as defined below; with the proviso that the dye comprises at least one Q group that is Y; each R5 is selected from the group consisting of C1-C16 linear or branched alkyl, C6-C14 aryl and C7-C16 arylalkyl; and wherein Y is an organic radical represented by Formula II C’OA! m it. Formula II wherein independently for each Y group, M is H or a charge balancing cation; m is 0 to 5; n is 0 to 5; the sum of m + n is 1 to 10; each R8 is independently selected from the group consisting of H and C3-18 alkenyl, and wherein at least one R8 group is not H. Br. (Claims Appendix) 7—8. 3 Appeal 2016-003085 Application 13/615,765 Anticipation Claims 1—6, 9—13, 16, 17, and 23—30 are rejected under pre-AIA 35 U.S.C. § 102(e) as anticipated by Miracle et al., US 2012/0304398 Al, published December 6, 2012. (“Miracle”). Ans. 2. ISSUE Does the preponderance of evidence on this record support the Examiner’s finding that Miracle teaches Appellants’ claimed invention? DISCUSSION The instant application was filed September 14, 2012. The Examiner summarizes the priority claims of the application before us in paragraph 8 of the Final Action:2 “The instant application claims benefit of provisional application 61/597,925, filed 13 Feb. 2012, and is a CIP of 13/479,340, filed 5/24/2012, which claims benefit to provisional application 61/492,935, filed 6/3/2011.” Final Act. 3, | 8. Miracle, which shares three inventors with the instant application, also claims priority to US Provisional Patent Application Number 61/492,928, which was filed on June 3, 2011. See Miracle “Related U.S. App. Data.” Appellants argue that, having amended to add their priority claim,3 Miracle “no longer qualifies as prior art under 35 USC Section 102(e) 2 Examiner’s Final Action, mailed February 12, 2015. 3 Following a rejection under 35 U.S.C. § 102(e) that the pending claims were anticipated by Miracle, Applicants amended the Specification to include a priority claim to state that the application “is a continuation-in-part of pending US Patent Application Number 13/479,340, filed on May 24, 4 Appeal 2016-003085 Application 13/615,765 because the present application and the Miracle reference have the same effective filing date of June 3, 2011.” Br. 5. The Examiner responds that “the new priority claim does not change the effective filing date of the instant claims since the parent application 13/479,340” does not provide written descriptive support for the claims and thus the instant application cannot claim priority back to the filing dates of the ’340 application or the ’935 provisional application that preceded and provided the priority claim for the ’340 application. Ans. 3. In essence, because the instant application was not filed within one year of the ’935 provisional application, it must claim priority to the ’340 application for Miracle not to anticipate the subject matter. However, the instant application is a continuation-in-part application, and if the ’340 application lacked the necessary disclosures, Appellants cannot perfect the priority claim. With regard to claim 1, the Examiner explains that the specification of the ’340 application does not disclose the subgenus of instant claim 1, 2012, which claims priority to US Provisional Patent Application Number 61/492,935 filed on June 3, 2011. See August 21, 2014, Specification “Cross Reference to Related Applications” and “Request to Grant Petition for Unintentional Delay of Priority Claim,” filed June 11, 2014. 5 Appeal 2016-003085 Application 13/615,765 with respect to the groups R1 and R2 and, more specifically, with respect to the variable Y (part of group Q), which corresponds to groups R4, R5 and Y (part of group R15), respectively, in the ’340 application. Ans. 4. The Examiner provides a detailed explanation of the alleged deficiency at Answer pages 4—8, which reasoning we adopt as our own. For brevity, we do not import those findings here, but note that the thrust of the deficiency is as follows: The variable Q of claim 1 can be H or Y, wherein Y is formula (II), and wherein R8 is H or C3-18 alkenyl, provided that one R8 is not H. Ans. 8. In the ’340 application, R15 is either H or Y, wherein Y is 0C(0)G02M, wherein G is a succinic, maleic, glutaric, adipic or phthalic anhydride derivative of formula IX, See Ans. 4—8. Thus, because “the variable Y defined by the ’340 application does not describe the variable Y as of the instant claims (e.g., claim 1),” the 6 Appeal 2016-003085 Application 13/615,765 Examiner concludes that the parent application fails to provide written descriptive support for the full breadth of claim 1. Id. Appellants do not address the Examiner’s findings regarding the lack of written descriptive support for claim 1 in the ’340 application. Accordingly, we affirm the rejection of claim 1. See Manual of Patent Examining Procedure § 1205.02 (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it.”). With respect to claim 6, Appellants argue that [cjlaim 1 of the ’935 application teaches the structure contained in Claim 6 of the present application. This structure is also shown on page 5 of the ’935 application. Although the structure is “excluded” from the claims of the ’935 application, it is still taught by the ’935 application [and therefore] the ’935 application provides support for the claims of the present application. Br. 5. The portion of the disclosure of the ’935 application that Appellants argue provides written descriptive support for claim 6 of the instant application provides: In one aspect, a composition comprising a thiophene azo carboxylate dye containing a carboxylic acid moiety, with the proviso that the thiophene azo carboxylate dye does not have the following structures 7 Appeal 2016-003085 Application 13/615,765 \Vs <