Ex Parte Vicari

Patent Trial and Appeal Board

Nov 5, 2012

11147831 (P.T.A.B. Nov. 5, 2012)

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.
11/147,831 06/07/2005 Richard Vicari C-7236 (SSC-09-10) 7700
40256 7590 11/06/2012
FERRELLS, PLLC
P. O. BOX 312
CLIFTON, VA 20124-1706
EXAMINER
LE, HOA T
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
11/06/2012 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 RICHARD VICARI
____________

Appeal 2011-009067
Application 11/147,831
Technology Center 1700
____________

Before RICHARD E. SCHAFER, ROMULO H. DELMENDO, and
KAREN M. HASTINGS, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-29 under 35 U.S.C. § 103(a) as
unpatentable over Verrall (US 6,787,512 B1, issued Sep. 7, 2004), in view
of Yang (Re. 34,988, issued Jul. 4, 1995).1 We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 Other rejections made in the Final Office Action were withdrawn (see Ans.
3).
Appeal 2011-009067
Application 11/147,831

2
Claim 1 is illustrative of the claimed subject matter:
1. A water-soluble package comprising a film comprising:

(i) 100 parts by weight of a first component selected from a copolymer
comprised of vinyl alcohol units and sulfonic acid units derived from a
sulfonic acid selected from the group consisting of 2-acrylamido-2-methyl
propane sulfonic acid, 2-methacrylamindo-2-methyl propane sulfonic acid,
and combinations thereof; and

(ii) less than 0.05 parts by weight of a second component selected from
the group consisting of gallic acid, salts of gallic acid, C1-5 alkyl esters, and
combinations thereof,

wherein the water-soluble package comprises particles comprising a
boron-containing detergent compound, and wherein the film is freely
dissolvable in an aqueous solution of the boron-containing detergent
compound.

ANALYSIS
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellants’ claims is unpatentable over the applied prior art. We sustain the
above rejections based on the findings of fact, conclusions of law, and
rebuttals to arguments expressed by the Examiner in the Answer .
We add the following for emphasis. The Examiner implicitly treated
Appellant’s alleged evidence of unexpected results (App. Br. 23-27), since
the Examiner’s position is that the claimed copolymers were known to be
resistant to crosslinking under alkaline conditions even in the presence of
borate detergents, which is exactly the effect the Appellant believes is his
contribution (Ans. 5, 7-8; Spec. 1, ll. 19-22 and 7, ll. 7-10). As pointed out
Appeal 2011-009067
Application 11/147,831

3
by the Examiner, Yang teaches that PVAc-sulfonic acid copolymers are
resistant to crosslinking at alkaline conditions due to borates. See col. 7, ll.
14-16; col. 8, ll. 40-44. The Examiner also correctly found that the specific
PVAc-sulfonic acid copolymers recited in claim 1 are explicitly taught by
Verrall to be useful for a water-soluble copolymer film packet for a laundry
detergent (Ans. 4, 6, 7). The Examiner found that boric acid was a
conventional additive in detergents (Ans. 5). Notably, boric acid is not even
recited in claim 1.
Accordingly, it is questionable whether the results shown by Appellant
are actually unexpected. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed.
Cir. 2007) (“[A]ny superior property must be unexpected to be considered as
evidence of non-obviousness”).
In addition, we emphasize that, although secondary considerations such
as unexpected results must be taken into account, they do not necessarily
control the obviousness conclusion. See Sud-Chemie, Inc. v. Multisorb
Technologies, Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“[E]vidence of
unexpected results and other secondary considerations will not necessarily
overcome a strong prima facie showing of obviousness”).
Here, the case of obviousness established by the Examiner is so strong
that Appellants' alleged superior results are ultimately insufficient.

DECISION
We affirm the § 103 rejection of all the claims on appeal.

AFFIRMED

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