How Sweet It Smells: Examiner Rejection of Composition Claims Reversed

Holding

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.

Background

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.

Obviousness

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.

Take-Aways

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.