April 6, 2022
Authored and Edited by Kaitlyn S. Pehrson; Taylor L. Stark; Paul W. Browning, Ph.D.; Amanda K. Murphy, Ph.D.; Shannon M. Patrick; Thomas L. Irving; Stacy Lewis†
In Ex parte Sturgis, No. 2021-002857 (P.T.A.B. Mar. 1, 2022), the Patent Trial and Appeal Board (“the Board”) reversed the examiner’s decision to reject claims to an anhydrous stick composition as allegedly obvious and for obviousness-type double patenting.
The claims of U.S. Patent Application 15/696,282 (“the ’282 application”) are directed to antiperspirant and deodorant compositions that include cyclodextrin-complexed fragrance materials. During prosecution, the examiner rejected claims 1-3, 5-13, and 15-20 of the ’282 application as obvious and for obviousness-type double patenting. Specifically, the examiner rejected claims 13 and 15-20 as obvious over a single reference, Scavone; claims 1-3 and 5-12 as obvious over Scavone in view of another reference, Bianchi; and all pending claims as invalid for obviousness-type double patenting in view of U.S. Patent No. 9,649,386, Scavone, and Bianchi. On appeal, the Board reversed, finding Scavone did not support the examiner’s findings and therefore that claims 1-3, 5-13, and 15-20 were not unpatentable as obvious or for obviousness-type double-patenting. The Board’s decision centered on obviousness determinations.
The Board concluded that Scavone does not teach or suggest that where two or more fragrances are complexed with cyclodextrin, differences in the concentrations of the complexed fragrances generate differences in the resulting products. Id. at 6. It noted that while Scavone teaches that the amount of fragrance complexed to the inside of the cyclodextrin complex may influence the properties of the resulting complex or product, it does not address whether or how complexing different percentages of different perfume materials with cyclodextrin would impact said properties. Id. Moreover, Scavone’s disclosed preference for using different concentrations of complexed and neat fragrances does not teach or suggest that incorporating different percentages of different complexed fragrances would alter the properties of the complex or product. Id. at 7.
The Board further agreed with Appellant that Scavone discloses nothing about the claimed parameters for individual perfume raw materials. Id. at 7. Scavone does not identify or discuss in any detail how the complex stability constant, ClogP, and weight average molecular weight of perfume raw materials contribute to their advantageous properties, and no evidence indicated that those properties are inherent in the representative cyclodextrin-complexing materials Scavone inventories. Id. Thus, the Board concluded that Scavone neither teaches nor suggests, in a mixture of fragrance materials complexed with cyclodextrin, using an amount of a fragrance selected from those listed in claim 13 or with the properties identified in claim 1 in a particular percentage range—much less the range identified in claim 13. Id.
The Board recognized that some of the fragrance materials Scavone lists inherently have the characteristics recited in claim 1 and are enumerated in claim 13 but found that the examiner provided insufficient evidence to establish the obviousness of using those materials in the amounts recited in claims 1 and 13. Id. at 7-8 (citing In re Stepan Co., 868 F.3d 1342, 1345-46 (Fed. Cir. 2017)).
The Board held that the examiner’s rejection could not be sustained and therefore reversed. Id. at 8-9.
Sturgis echoes the Federal Circuit’s decision in Stepan that a conclusion of obviousness cannot stand where there is no appropriately supported explanation for why selecting and adjusting percentages of a claim element constitutes routine optimization. Parties should therefore be clear and cogent in this regard when responding to examiners’ rejections based on similar grounds of obviousness.
A successful argument against an obviousness rejection may also be made by pointing out that a rejected claim includes an element (or amount of an element) that a cited reference does not include or describe.
Patent Trial and Appeal Board (PTAB), Obviousness (35 USC § 103), Obviousness-type Double Patenting (OTDP)
Copyright © 2022 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
Conference
4th Annual Passport to Proficiency on the Essentials of Hatch-Waxman and BPCIA
October 8-24, 2024
Virtual
Conference
2024 Corporate Counsel Women of Color: Career Strategies Conference
October 2-5, 2024
Las Vegas
Seminar
Intellectual Property in the Age of AI: What Do You Own and How Do You Balance Risks?
September 25, 2024
Boston
Webinar
September 10, 2024
Webinar
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.