Michael URBAN et al.Download PDFPatent Trials and Appeals BoardJun 4, 20212020002701 (P.T.A.B. Jun. 4, 2021) Copy Citation 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. 14/073,320 11/06/2013 Michael URBAN 3321-P50049 6987 13897 7590 06/04/2021 Abel Schillinger, LLP 12414 Alderbrook Drive Suite 201 Austin, TX 78758 EXAMINER FRITCHMAN, REBECCA M ART UNIT PAPER NUMBER 1797 NOTIFICATION DATE DELIVERY MODE 06/04/2021 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): hmuensterer@abel-ip.com mail@Abel-IP.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL URBAN, HEIKE MIERTSCH, STEFAN BIEL, SABINE KUEHNE, STEFAN BRUENING, and ROLF KAWA Appeal 2020-002701 Application 14/073,320 Technology Center 1700 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and LILAN REN, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellant requests rehearing of our Decision of March 25, 2021. See Request for Rehearing of May 24, 2021 (“Request”). Because, as pointed out by Appellant (Request 4), our Decision was in part based on a finding not relied on by the Examiner, we GRANT Appellant’s Request for Rehearing and modify our Decision to make new grounds of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). However, we do not modify our Decision as to the affirmance of the Examiner’s rejections. Appeal 2020-002701 Application 14/073,320 2 OPINION In our Decision, we affirmed the Examiner’s decision to reject claims 1, 2, 4–6, 9, 10, 13–15, 18, and 20 under 35 U.S.C. § 103(a) as being obvious over Siegal in view of Paloheimo and Geria and also affirmed the rejection of claims 3, 7, 8, 11, 12, 16, 17, and 19 under 35 U.S.C. § 103(a) as being obvious over Siegal in view of Paloheimo, Geria and Kamiya. Decision 13. In so affirming, we agreed with the Examiner that Siegal’s step of rinsing is a form of washing, but made a further finding that “Geria's protocol includes washing and drying before rating the fabrics for staining” and determined that “adding detergent would have been viewed as a normal step in a testing protocol for determining if staining remains after washing.” Decision 7. Appellant submits “that this is a completely new argument and should have been designated as a new ground for rejection.” Request 4. Although we continue to agree with the Examiner that Siegal’s rinsing step is a form of washing as required by Appellant’s claim 1, step (iii), Appellant’s argument that our reliance on Geria’s washing step was new and we should have designated a new ground of rejection has persuaded us that the best course of action is to enter new grounds of rejection to more specifically rely on Geria’s teachings as a basis for obviousness. Thus, we enter the following new grounds of rejection. New Ground over Geria and Poloheimo We reject claims 1, 2, 4–6, 9–15, and 18–20 under 35 U.S.C. § 103(a) as obvious over Geria in view of Poloheimo. Turning first to claims 1 and 14, we find that Geria teaches a method of gauging stains on or in clothing, the stains being caused at least in part by an antiperspirant substance. Geria tests various antiperspirant stick Appeal 2020-002701 Application 14/073,320 3 compositions according to the protocol disclosed in columns 6 and 7 of that reference. Geria col. 6, l. 33–col. 7, l. 11. As required by claims 1 and 14, step (i), Geria successively applies, i.e., applies one after the other, to an identical location of a swatch of clothing (central 1 inch warp area across the full 10 inch filling area) an antiperspirant preparation and sebum. Geria col. 6, ll. 35–62. Geria discloses applying 2 grams of the “product,” i.e., the antiperspirant stick composition to the treatment area, i.e., 2 grams over a 1 inch by 10 inch area (10 in2 area) of the swatch. Geria col. 6, ll. 58–62. Geria’s 2 g/10 in2 equals 31 mg/cm2, which is squarely within the 10 mg/cm2 to 50 mg/cm2 range of claim 1 and the 13 mg/cm2 to 40 mg/cm2 of claims 2 and 14. Step (i) requires a range of sebum of from 2 mg/cm2 to 15 mg/cm2 (claim 1) or 5 mg/cm2 to 10 mg/cm2 (claims 4 and 14). Geria is silent as to the amount of sebum used, but there must be some amount. Given Geria, like Appellant, is using sebum in a method for determining staining by antiperspirant substances, the evidence supports a determination that the ordinary artisan would arrive at an amount within Appellant’s claimed range through routine experimentation and, thus, the claimed amount would have been obvious. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (explaining that a change in concentration is normally an unpatentable modification). In regard to steps (ii) to (vi) of claims 1 and 14, Geria further teaches hanging the treated fabric swatch on a line to dry at room temperature for 16 to 24 hours, washing it in a Kenmore home washer on the normal setting with warm water and detergent, drying, ironing, and rating the fabrics for Appeal 2020-002701 Application 14/073,320 4 staining. Geria col. 6, l. 33–col. 7, l. 11. Thus, Geria teaches the required washing and drying steps. Geria’s rating step does not meet the requirements of step (iv). Instead of “subjecting the dried clothing to a photometrical measurement by means of colorimetric measures in a CIE L*a*b color space and comparing an obtained value to a value obtained with an untreated area of the clothing” as required by step (iv), Geria rates the fabrics for staining by “placing them over a black surface and comparing them to a set of Deering Milliken oil stains.” Geria col. 7, ll. 4–6. Geria does not disclose what is used to do the comparing, but it is reasonable to assume it is a visual comparison using the human eye given the discussion of “visible stains” and lack of discussion of equipment. Geria col. 7, ll. 14–21. Paloheimo provides evidence that the photometrical measurement technique of step (iv) was known in the art. As we stated in the Decision: Paloheimo discloses a novel laccase enzyme useful in, for instance, bleaching denim and removing stains. Paloheimo ¶¶ 3, 31. Paloheimo measures bleaching, i.e., the increase in lightness, of the denim as by measuring the color as reflectance values with a spectrophotometer using L*a*b color space coordinates as described in Examples 7–10. Paloheimo ¶ 72. The increase in lightness is measured as lightness unit L * of the fabric after treatment minus lightness unit L* before treatment using L*a*b* color space coordinates. Paloheimo ¶¶ 72, 181. Paloheimo also discloses testing DeniLite II Base laccase preparations for the ability to remove stains as described in Example 11. Paloheimo ¶¶ 131. Paloheimo uses both photometrical measurement in a L *a*b color space and visual inspection to evaluate staining. Paloheimo ¶¶ 198–199. Decision 5–6. Appeal 2020-002701 Application 14/073,320 5 As we further stated in the Decision, Appellant’s arguments against the obviousness of substituting a photometrical measurement method of the type recited in claim 1 for a visual method are unpersuasive. As we said: Appellant's arguments are not persuasive because the prior art provides evidence that both visual viewing and photometrical measurement were known methods of testing for color changes including those due to staining. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,416 (2007); see also In re Fout, 675 F.2d 297,301 (CCPA 1982) (“Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious.”). Use of either visual or photometrical measurement would have been recognized as providing the predictable result of determining color changes due to staining. Decision 6. It would have been obvious to one of ordinary skill in the art at the time of the invention to have used the photometrical measurement technique of Paloheimo in the testing protocol of Geria as the photometrical measurement technique was a known alternative to visual inspection for evaluating color changes in fabric. See, e.g., Paloheimo ¶ 199. Turning to claims 5, 6, and 15, which require particular ratios of preparation to sebum, we determine that, given the teaching of the general conditions of the method, it is reasonable to presume that the particular ratios would have been arrived at through routine experimentation. See Aller, 220 F.2d at 456. Claim 9 requires step (ii), i.e., storing the clothing at 38°C and 80 % relative humidity, be employed and be carried out for at least 12 hours. Geria teaches hanging the treated fabric swatch on a line to dry at room Appeal 2020-002701 Application 14/073,320 6 temperature for 16 to 24 hours. Hanging the fabric to dry on a line can be considered “storing.” Although Geria discloses line drying at room temperature, other conditions of line drying clothes including outside on a hot 38°C and 80 % humid day “are of such notorious nature that they are capable of such instant and unquestionable demonstration as to defy dispute and, thus, evidence is not required. In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970).” Further, after clothes are worn, they sometimes sit for a while before they are washed. This sitting sometimes occurs at 100°F and 80 % humidity, i.e., a rainy summer day in Alexandria, Virginia. Ans. 11. Again, these conditions “are of such notorious nature that they are capable of such instant and unquestionable demonstration as to defy dispute and, thus, evidence is not required.” Ahlert, 424 F.2d at 1091. In our Decision, we offered an example: “For instance, those of us that have raised soccer-playing children with August training schedules have discovered stained, sweaty, sebum covered soccer clothes stuffed into the bottom of a soccer bag that has survived (barely) an August thunderstorm and a 38°C (100°F) day.” Decision 10. “That the ordinary artisan would want to mimic those conditions in testing would have been obvious to those testing antiperspirant staining as one would want to use the harshest possible conditions to set any possible stain and see if the clothes manage to become stain-free after normal washing.” Id. As to claims 10 and 18, Geria teaches using cotton and cotton/polyester fabrics. Geria 6, ll. 35–36. As to claim 11, Geria teaches washing in a Kenmore home washer using the normal setting in warm water, Geria col. 6, ll. 65–67, but washing Appeal 2020-002701 Application 14/073,320 7 machines have hot settings as well. It would have been obvious to one of ordinary skill in the art to test for staining using a Kenmore home washer using the hot setting to mimic another normal laundering outcome. As required by claims 12 and 19, Geria uses detergent. Geria col. 6, ll. 67–68. As required by claims 13 and 20, Geria tests antiperspirant substances that include aluminum compounds such as aluminum chlorohydrate. Geria col. 5, ll. 48–63. New Ground Adding Kamiya We reject claims 3, 7, 8, 16, and 17 under 35 U.S.C. § 103(a) as obvious over Geria in view of Poloheimo and Kamiya. Claim 3 requires the addition of from 7 mg/cm2 to 30 mg/cm2 of human sweat in step (i). Claims 7, 8, 16, and 17 require particular ratios of preparation to human sweat. Geria’s protocol does not use human sweat, but Kamiya teaches a testing protocol in which 0.012 g/cm2 (12 mg/cm2) of artificial sweat is added to fabric along with a solid antiperspirant stick product before exposing the fabric to sunlight, washing, and evaluating the degree of stain adhesion. Kamiya ¶ 91. It would have been obvious to add sweat to the testing protocol of Geria to evaluate the effects of sweat along with the antiperspirant and sebum on staining. The concentration of sweat used by Kamiya is squarely within the range of claim 3. As to claim 7, Kamiya discloses a ratio of preparation to sweat of 0.06 to 0.012, which is a ratio of preparation: sweat of 5:1, a ratio within the 1:3 to 7:1 ratio of claim 7. Appeal 2020-002701 Application 14/073,320 8 As to claims 8, 16, and 17, although Kamiya’s ratio is not within the 1:1 to 1:4 ratio of these claims, the concentrations used are found in an example and those of ordinary skill in the art would have understood that people sweat in different amounts in different environments. Varying the amount of sweat to evaluate staining under different sweating conditions would have been within the ordinary skill in the art and no more than ordinary routine experimentation absent evidence to the contrary. See Aller, 220 F.2d at 456. Remaining Arguments in the Request We now turn to Appellant’s other contentions raised in the Request and consider them to the extent they apply to the Examiner’s rejections, apply to our new grounds of rejection, and insofar as they conform with 37 C.F.R. § 41.52. Under rule 41.52, Appellant is limited to raising, with particularity, points Appellant believes we misapprehended or overlooked in rendering our Decision, 37 C.F.R. § 41.52(a)(1), and may not raise new arguments except as allowed by 37 C.F.R. §§ 41.52(a)(2) through (a)(4). Restricting rehearing in this way “is intended to prevent useless and unnecessary reargument of issues which had once been decided,” and, at the same time, to afford Appellant the opportunity to call to our attention “errors inadvertently committed” in our Decision. Reusch v. Fisher, 53 F.2d 270, 270 (CCPA 1931). To paraphrase Reusch, it is entirely beyond the scope of this rule to permit a reargument of the issues. To do so simply adds to the expense of [appeal] and entails unnecessary labor upon the Board. Id. Although Appellant opens the Request by submitting “that from the Decision it appears that the Board has overlooked and misapprehended Appeal 2020-002701 Application 14/073,320 9 several important facts,” much of the Request is a rehash of arguments we addressed in our Decision. Appellant’s Point 1 (Request 2–3) falls in this category. Appellant has not persuaded us we overlooked or misapprehended any fact in determining that “a preponderance of the evidence supports the Examiner's finding of a reason within the prior art to use the photometrical measurement method of Paloheimo when testing Siegal's antiperspirant composition for staining.” Decision 6–7. We weighed the facts Appellant discusses in the Request in coming to that determination. We have now weighed the relevant facts in making the new grounds of rejection. That Appellant disagrees with the determination is not a basis for us to grant rehearing. We made a new ground of rejection in response to Appellant’s Point 2. Thus, we do not discuss that point further here except to say that we stand by our statement that rinsing is a form of washing. Rinsing is a form of washing that does not use detergent. That Appellant’s washing, as recited in claim 1, does not require detergent is evidenced by dependent claim 12, which requires detergent. As to Point 3 (Request 5–6), we did not overlook the arguments made by Appellant, we merely concentrated our discussion on the most relevant arguments. That Siegal is concerned with physical damage does not negate Siegal’s teaching of “[a] similar use test procedure was established to determine the fabric staining propensities of the composition of [Siegal’s] invention.” Siegal col. 6, ll. 53–57. As to Point 4, which merely “[points] out again that none of the documents relied upon by the Examiner discloses any amount of sebum to be employed in the testing for fabric staining,” we addressed this argument Appeal 2020-002701 Application 14/073,320 10 in the Decision. Decision 8. Appellant’s argument in the Request does not persuade us that we overlooked or misapprehended any fact in reaching our Decision. As to Point 5, Appellant merely disagrees with our assessment that the ratios of preparation to human sweat of these claims would have been arrived at through routine experimentation. Request 8–9. Again, Appellant has not persuaded us that we overlooked or misapprehended any fact in reaching our determination. CONCLUSION Appellant’s request for rehearing is GRANTED and a new ground of rejection entered under 37 C.F.R. § 41.50(a). This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Appeal 2020-002701 Application 14/073,320 11 Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. OUTCOME OF DECISION ON REHEARING Claims 35 U.S.C § Reference(s)/Basis Denied Granted 1, 2, 4–6, 9, 10, 13–15, 18, 20 103(a) Siegal, Poloheimo, Geria 1, 2, 4–6, 9, 10, 13– 15, 18, 20 3, 7, 8, 11, 12, 16, 17, 19 103(a) Siegal, Poloheimo, Geria, Kamiya 3, 7, 8, 11, 12, 16, 17, 19 1, 2, 4–6, 9– 15, 18–20 103(a) Geria, Poloheimo 1, 2, 4–6, 9–15, 18– 20 3, 7, 8, 16, 17 103(a) Geria, Poloheimo, Kamiya 3, 7, 8, 16, 17 Overall Outcome 1–20 Appeal 2020-002701 Application 14/073,320 12 FINAL OUTCOME OF APPEAL AFTER REHEARING DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 2, 4–6, 9, 10, 13– 15, 18, 20 103(a) Siegal, Poloheimo, Geria 1, 2, 4–6, 9, 10, 13– 15, 18, 20 3, 7, 8, 11, 12, 16, 17, 19 103(a) Siegal, Poloheimo, Geria, Kamiya 3, 7, 8, 11, 12, 16, 17, 19 1, 2, 4–6, 9–15, 18– 20 103(a) Geria, Poloheimo 1, 2, 4–6, 9–15, 18– 20 3, 7, 8, 16, 17 103(a) Geria, Poloheimo, Kamiya 3, 7, 8, 16, 17 Overall Outcome 1–20 1–20 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). GRANTED Copy with citationCopy as parenthetical citation