S. C. Johnson & Son, Inc.

Patent Trials and Appeals Board

Mar 30, 2022

2021002258 (P.T.A.B. Mar. 30, 2022)

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. 15/094,542 04/08/2016 Paul A. Clark J5674AUS03 1821 156414 7590 03/30/2022 S.C. Johnson & Son, Inc/Breiner & Breiner, LLC 1525 Howe Street Racine, WI 53403-2236 EXAMINER PROSSER, ALISSA J ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 03/30/2022 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): MJZolnow@scj.com mbreiner@bbpatlaw.com selechne@scj.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL A. CLARK, KIMBERLY J. HARRIS, PETER N. NGUYEN, RACHEL E. SALOWITZ, BHAVESHKUMAR SHAH, MACIEJ K. TASZ, and JOHN S. TRENT Appeal 2021-002258 Application 15/094,542 Technology Center 1600 Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and TAWEN CHANG, Administrative Patent Judges. CHANG, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-3, 5-25, and 31. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as S. C. Johnson & Son, Inc. Appeal Br. 2. Appeal 2021-002258 Application 15/094,542 2 STATEMENT OF THE CASE The Specification states that “corrosion control and lining delamination have been a problem” in metal containers storing compressed gas compositions. Spec. ¶ 3. The Specification states that “[p]lastic containers would be a desirable alternative . . . for packaging gas pressurized compositions” because of “the lower weight of the product . . . and versatility of design configuration.” Id. ¶ 4. The Specification states, however, that “[i]n prior art devices, . . . plastic containers, when used as pressurized dispensing containers, had negative effects as to the stability of both the composition contained in the plastic container and the plastic container itself.” Id. ¶ 4. According to the Specification, therefore, “a stable plastic pressurized dispensing container for fragrance-containing compositions under pressure, for example as provided by compressed gas in the composition, would be advantageous and desirable.” Id. CLAIMED SUBJECT MATTER The claims are directed to a pressurized storage and dispensing system. Claim 1 is illustrative: 1. A pressurized storage and dispensing system comprising (a) a pressurized container for storing and dispensing a composition, wherein said container includes a spray nozzle and a plastic body for containing said composition, wherein said container is pressurized by a component of said composition present in said plastic body and wherein said plastic body avoids occurrence and growth of crazes and stress cracks in the surface of the plastic body due to the composition Appeal 2021-002258 Application 15/094,542 3 contained therein, and wherein the plastic of the plastic body is clear; and (b) said composition for storing in said plastic body and dispensing from said container through said nozzle, said composition being transparent or translucent and being at least substantially ion-free or substantially salt-free, comprising (i) at least one pressurizing component for pressurizing said composition in said plastic body of said container; (ii) at least one active ingredient; (iii) at least one nonionic surfactant consisting of at least one high molecular weight nonionic surfactant having greater than 8 carbon atoms; (iv) water as a solvent carrier in an amount to serve as a major component of said composition, wherein said water is at least substantially ion-free and at least substantially salt-free; wherein said composition has a pH of about 4 to about 8.5, is present in said container under an initial pressure of about 80 to about 150 psig at 50°C (122°F), and excludes anionic, zwitterionic and amphoteric surfactants. Appeal Br. Claims App. 1-2. Appeal 2021-002258 Application 15/094,542 4 REJECTION(S) A. Claims 1-3, 5-7, 10-14, 18-22, 25, and 31 are rejected under pre- AIA 35 U.S.C. § 103(a) as being unpatentable over Trinh,2 Clark3 as evidenced by Wikipedia “Polysorbate 20,”4 and Altonen.5 Ans. 3. B. Claims 8, 9, 15-17, 23, and 24 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Trinh, Clark as evidenced by Wikipedia “Polysorbate 20,” Altonen, and Smith.6 Ans. OPINION A. Issue The Examiner has rejected claims 1-3, 5-7, 10-14, 18-22, 25, and 31 as obvious over Trinh, Clark as evidenced by Wikipedia “Polysorbate 20,” and Altonen. The Examiner has also rejected claims 8, 9, 15-17, 23, and 24 as obvious over Trinh, Clark as evidenced by Wikipedia “Polysorbate 20,” Altonen, and Smith. The same issues are dispositive for both rejections; we therefore discuss them together. The Examiner finds that Trinh discloses all of the limitations of claim 1, except that it does not “specifically teach or exemplify an embodiment comprising a plastic / polymer resin body, wherein said plastic / polymer resin is clear and said body avoids occurrence and growth of crazes and 2 Trinh et al., US 6,248,135 B1, issued June 19, 2001. 3 Clark et al., US 2009/0311195 A1, published Dec. 17, 2009. 4 “Polysorbate 20.” WIKIPEDIA: THE FREE ENCYCLOPEDIA, https://en.wikipedia.org/wiki/Polysorbate_20 (last visited Mar. 1, 2017). 5 Altonen et al., US 2008/0003387 A1, published Jan. 3, 2008. 6 Smith et al., US 2009/0084870 A1, published Apr. 2, 2009. Appeal 2021-002258 Application 15/094,542 5 stress cracks in the surface of the plastic / polymer resin body due to the composition contained therein.” Final Act. 4-6. As to the limitation, “wherein the plastic of the plastic body is clear,” the Examiner finds that Altonen teaches “a plastic pressurized package . . . able to contain and dispense a pressurized fluid of . . . at least about 60 psi greater than atmospheric pressure but no more than about 140 psi at 25 ºC” and further teaches that “[i]t is advantageous for the plastic package to be clear to permit the contents to be viewed by the user.” Final Act. 7-8. Regarding the wherein clause, the Examiner finds that, because the combined teachings of Trinh and Altonen ’387 render obvious the clear composition as instantly claimed present within a clear plastic container/dispenser pressurized to 20 to 110 psig, the plastic container of modified Trinh is presumed to avoid crazes/cracks due to the composition contained therein because all that is required to achieve such is to place the instantly claimed clear composition into a pressurized clear plastic container. In further support of this presumption, Altonen ’387 expressly teach the plastic packaging is capable of being exposed to and containing a variety of personal care or household products such as perfumes, has high impact resistance, chemical resistance and thermal stability. Final Act. 9. Appellant contends that the prior art does not teach “a composition in interrelation with a plastic container body for protecting the plastic body against the occurrence or growth of crazes or stress cracks in the plastic body.” Appeal Br. 20. In the same vein, Appellant contends that the prior art contains “[n]o recognition of the problem addressed by applicant’s claimed invention,” and, thus, no suggestion as to which composition components to include (e.g., “high molecular weight nonionic surfactant Appeal 2021-002258 Application 15/094,542 6 with a required number of carbon atoms”) or exclude (e.g., metallic salts and anionic and amphoteric surfactants) to arrive at the claimed invention. Id. at 21, 32-33. Finally, Appellant contends that a skilled artisan would not have been motivated to combine the teachings of the cited prior art. Id. at 30-32. Appellant does not separately argue the claims. We therefore focus our analysis on claim 1 as representative. The issue with respect to these rejections is whether a skilled artisan would have had reason to combine the cited prior art to arrive at the claimed invention. B. Analysis Unless otherwise noted, we adopt the Examiner’s findings of fact and reasoning regarding the scope and content of the prior art with respect to claim 1 (Final Act. 4-13; Ans. 3-12.) and agree that claim 1 is obvious over Trinh, Clark as evidenced by the “Polysorbate 20” entry in Wikipedia, and Altonen. Only those arguments made by Appellants in the briefs have been considered; arguments not presented in the briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv). As set forth above, claim 1 recites “a pressurized storage and dispensing system” comprising (1) a transparent or translucent composition having pH within a specified range and comprising certain recited ingredients (i.e., pressurizing component, active ingredient, high molecular weight nonionic surfactant having greater than 8 carbon atoms, and substantially ion/salt-free water) while excluding others (i.e., “substantially ion-free or substantially salt-free,” “excludes anionic, zwitterionic and amphoteric surfactants), and (2) a pressurized container comprising a spray nozzle and a clear plastic body that “avoids occurrence and growth of crazes and stress cracks . . . due to the composition contained therein,” wherein the Appeal 2021-002258 Application 15/094,542 7 composition is present in the container under an initial pressure within a specified range. Appeal Br. 36 (Claims App.). Appellant contends that a skilled artisan would not have had reason to combine the prior art to arrive at the composition recited in claim 1. More particularly, Appellant contends that the prior art does not recognize “the problem addressed by applicant’s claimed invention” and, thus, does not suggest “which components to selectively choose to provide applicant’s claimed combination of components.” Appeal Br. 21; see also id. at 31, 33. Appellant further contends that Trinh teaches preferred compositions that include metallic salts, which are excluded from claim 1, and that Clark teaches compositions including anionic and amphoteric surfactants, which are also excluded from claim 1. Id. at 21-22, 32-33. We are not persuaded. The Supreme Court has explained that, [i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. . . . [A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007). Thus, Trinh and Clark need not teach or even recognize the particular problem addressed by Appellant’s invention to render the recited composition obvious, so long as there is some reason to combine the elements as claimed. In this case, Trinh suggests a composition comprising all of the components, and possessing the recited characteristics, of the composition recited in claim 1. See, e.g., Trinh 1:14-18 (teaching an aqueous, preferably clear, composition comprising an active ingredient, i.e., perfume); 1:18-21, Appeal 2021-002258 Application 15/094,542 8 9:44-10:28 (teaching optional suitable solubilizing aid including, among others, non-ionic surfactants containing alkyl chains of from about 5 to about 14 carbon atoms); 14:44-46 (pressurizing component); 12:60-63 (preferably having a pH greater than about 4.5); 14:33-36 (pressure). Appellant does not appear to dispute that Trinh teaches all of the components and characteristics of the composition recited in the claim, but contends that the rejections “selectively pick and choose only isolated components from a disclosure while ignoring the rest of the disclosure,” without articulating any motivation to do so. See, e.g., Appeal Br. 22-23, 30-31, 33-34. We are not persuaded. The gravamen of Appellant’s complaint appears to be that Trinh discloses a large number of optional ingredients (and therefore a large number of possible compositions), and there is no reason to combine the particular components recited in claim 1. However, “disclos[ing] a multitude of effective combinations does not render any particular formulation less obvious.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Neither are we persuaded by Appellant’s arguments regarding Trinh’s preferred embodiment comprising metallic salt or Clark’s teaching that anionic and amphoteric surfactants may be used in its composition. “[I]n a section 103 inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered.’” Merck & Co. Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976).) In this case, Trinh clearly teaches that metallic salts are optional in its Appeal 2021-002258 Application 15/094,542 9 compositions. Trinh Abstract. Likewise, Trinh and Clark do not require the use of anionic or amphoteric surfactants. Trinh 9:44-10:28; Clark ¶ 47. Appellant cites for support to Polaris, which states that a reference’s “statements regarding preferences are relevant to . . . whether a skilled artisan would be motivated to combine that reference with another,” “even if a reference is not found to teach away.” Polaris Industries, Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018). However, the facts of this case are distinct. In that case, appellant Polaris introduced undisputed evidence that a proposed modification in a prior art all-terrain vehicle (ATV) “would have required significantly raising the occupancy area,” which a prior art reference taught would have resulted in raising the ATV’s center of gravity and “‘a decrease in vehicle stability and subsequent increased risk of rollovers.”’ Id. at 1067. The Federal Circuit held that the Board used a “subjective preference” analysis that (1) “disregard[ed] certain teachings as ill-defined ‘subjective preferences”’ and thus “invited . . . ‘hindsight bias”’; (2) “focused on what a skilled artisan would have been able to do, rather than what a skilled artisan would have been motivated to do at the time of the invention”; and (3) “encourage[d] the fact-finder to . . . discard evidence relevant both to ‘teaching away’ and . . . motivat[ion] to combine references.” Id. at 1068-1069. In this case, in contrast and as discussed above, Trinh itself explicitly teaches that metallic salts are optional. Trinh Abstract. Likewise, Trinh teaches that surfactants meeting the claim limitation of a “high molecular weight nonionic surfactant having greater than 8 carbon atoms” may be used, and neither Trinh nor Clark requires the use of the excluded Appeal 2021-002258 Application 15/094,542 10 surfactants. Trinh 9:44-10:28; Clark ¶ 47. Thus, the Examiner’s rejection is consistent with, and does not disregard, the teachings of the prior art. Appellant contends that its claimed combination is unique in that it contains . . . a compressed gas propellant, within the composition held within a plastic storing and dispensing container body and that the plastic storing and dispensing body avoids occurrence and growth of crazes and stress cracks in the surface of the plastic body due to the composition contained in the plastic storing and dispensing body, in particular due to the composition being at least substantially ion-free or substantially salt- free. Appeal Br. 20. Appellant contends that none of the cited art teaches “a composition in interrelation with a plastic container body for protecting the plastic body against . . . crazes or stress cracks.” Id. at 19-21, 23, 33. Appellant contends that “Altonen is the only reference relied on for describing a pressurized plastic container having resistance to polar liquids and impact stresses,” but it does not teach the use of compositions containing any particular components and overcomes the “disadvantages of plastic pressurized containers . . . with regard to their structural integrity” by “provid[ing] a particular polymer blend for making the plastic container” and/or “treating a formed plastic bottle with heat in a defined manner,” instead of “modify[ing] the composition contained within [the] plastic dispensing container” as recited in claim 1. Id. at 17-18, 29-30. Appellant contends that there is no reason or suggestion to combine a composition as claimed with a plastic container such as that disclosed in Altonen: Trinh and Clark do not recognize the problem of plastic instability addressed by the claimed invention, and Altonen “has addressed the problem of plastic Appeal 2021-002258 Application 15/094,542 11 instability by a different means, i.e., by modifying the plastic of the container.” Appeal Br. 19-21, 23-24, 30, 32-34; Reply Br. 2-5, 9. We are not persuaded. Trinh teaches that its composition may be placed in an aerosol dispenser comprising a container, “which can be constructed of any of the conventional materials employed in fabricating aerosol containers.” Trinh 14:30-33.7 Thus, Trinh provides a reason and motivation to combine its compositions, which includes those meeting the requirements of claim 1, with known containers including those disclosed in Altonen.8 Moreover, the Supreme Court has explained that “[t]he 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). Thus, the combination of a known composition, such as that suggested by Trinh, and a known container, such as that taught by Altonen, is prima facie obvious absent some evidence that the combination of such compositions and containers yield unexpected results. Appellant has not pointed to any persuasive evidence of such unexpected results. In the Reply Brief, Appellant contends that “Altonen provides high impact and chemical resistance due to the polymer materials blend used to 7 Appellant contends that, “[i]n describing suitable aerosol dispensers . . . , the use of plastic dispensers is not taught or suggested.” Appeal Br. 19. As noted above, however, Trinh teaches that the container of its aerosol dispenser “can be constructed of any of the conventional materials employed in fabricating aerosol containers.” Trinh 14:30-33. 8 Appellant contends that, “since Clark teaches the inclusion of a corrosion inhibitor . . . , the container would be metal and necessarily, not clear.” Appeal Br. 33. However, as Appellant acknowledges, the Examiner does not rely on Clark for disclosing the limitation regarding plastic containers. Appeal 2021-002258 Application 15/094,542 12 make the plastic container and not due to the composition held within the container.” Reply Br. 4-5. We are not persuaded. Appellant relies on the limitation in claim 1 “wherein said plastic body avoids occurrence and growth of crazes and stress cracks in the surface of the plastic body due to the composition contained therein.” Appeal Br. 1 (emphasis added). We note, however, that the claim is to a system, and Appellant has not persuasively explained how the highlighted limitation introduces any additional structural limitations into the claims. To the extent that the prior art suggests a composition and a container that meet the limitations recited in claim 1, therefore, the functional limitations of “avoiding occurrence and growth of crazes and stress cracks . . . due to the composition contained therein” is necessarily met. In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (quoting In re Swinehart, 439 F.2d 210, 212-13 (CCPA 1971)) (“[W]here the Patent Office has reason to believe that a functional limitation . . . may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.”). In this regard, we also note that Appellant has not persuasively explained why the claim should be construed to require that occurrence and growth of crazes and stress cracks in the surface of the plastic body to be due solely to the composition. Indeed, the Specification suggests that the crazes and stress cracks in a plastic container result from the interaction between the plastic and the composition. See, e.g., Spec. ¶ 11 (“A further manner of determining and controlling compatibility of the composition with the plastic container is through the use of Hansen Solubility Parameters (HSP),” which Appeal 2021-002258 Application 15/094,542 13 are used to “control solvent-polymer interactions so as to minimize or avoid crazing or stress-cracking polymer.”).9 Finally, Appellant contends that the Examiner has not articulated any reasoning to combine the cited art to arrive at the claimed invention and that, thus, the rejections rely on improper hindsight. Appeal Br. 24-29; Reply Br. 7 (“One skilled in the art would not look to modifying a plurality of compositions to obtain a specific composition not recognized as having a particular benefit or advantage.”). We are not persuaded. As the predecessor to our reviewing court has explained, [a]ny judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). As discussed above, the Examiner’s rejection is based only on the teachings available from the prior art. Contrary to Appellant’s apparent position that a combination of known elements according to known methods is non-obvious 9 We further note that Altonen teaches that pressurized plastic containers are known in the art. Altonen ¶¶ 3-5 (discussing the disadvantages of existing plastic containers). Trinh teaches that its composition may be placed in an aerosol dispenser comprising a container, “which can be constructed of any of the conventional materials employed in fabricating aerosol containers.” Trinh 14:30-33. Thus, it also would have been obvious to a skilled artisan to combine the compositions of Trinh, which includes compositions that meet the limitations recited in claim 1, with such conventional pressurized plastic containers to arrive at the claimed invention. Appeal 2021-002258 Application 15/094,542 14 unless the combination is recognized to have a “particular benefit or advantage,” the Supreme Court has explained that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416.10 Accordingly, we affirm the Examiner rejection of claim 1 as obvious over Trinh, Clark as evidenced by Wikipedia “Polysorbate 20,” and Altonen. Claims 2, 3, 5-7, 10-14, 18-22, 25, 31, which are not separately argued, fall with claim 1. Appellant does not make additional arguments with respect to the rejection over Trinh, Clark as evidenced by the entry of “Polysorbate” in Wikipedia, Altonen, and Smith, contending only that “Smith does not make up for the shortcomings of Trinh, Clark, Wikipedia and Altonen as set forth above.” Appeal Br. 34. As discussed above, we are not persuaded by Appellant’s arguments regarding the alleged shortcomings of Trinh, Clark, Wikipedia “Polysorbate 20,” and Altonen. Accordingly, we also affirm the rejection of claims 8, 9, 15-17, 23, and 24 as obvious over Trinh, Clark as evidenced by Wikipedia “Polysorbate 20,” Altonen, and Smith. 10 For this reason, Appellant’s reliance on the statement in Rouffet that “the examiner must show reasons that the skilled artisan, confronted with the same problems as the inventor and with no knowledge of the claimed invention, would select the elements from the cited prior art references for combination in the manner claimed,” is misplaced. Appeal Br. 24-25 (quoting In re Rouffet, 149 F.3d 1350 (Fed. Cir. 1998)), 31-32. That is, subsequent to Rouffet, the Supreme Court not only made it clear that “a combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results,” but also explained that, “[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.” KSR, 550 U.S. at 401, 419. Appeal 2021-002258 Application 15/094,542 15 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1-3, 5-7, 10-14, 18-22, 25, 31 103 Trinh, Clark, Wikipedia “Polysorbate 20,” Altonen 1-3, 5-7, 10-14, 18-22, 25, 31 8, 9, 15-17, 23, 24 103 Trinh, Clark, Wikipedia “Polysorbate 20,” Altonen, Smith 8, 9, 15-17, 23, 24 Overall Outcome 1-3, 5-25, 31 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. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED