Michael URBAN et al.

Patent Trials and Appeals Board

Jun 4, 2021

2020002701 (P.T.A.B. Jun. 4, 2021)

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.
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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
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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
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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.
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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
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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
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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.
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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
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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
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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. . . .

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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
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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