by Dennis Crouch
Ex parte The Procter & Gamble Co., Appeal 2021-002928, APN. 16/388,898 (PTAB 2021) [2021002928_Mail_Decision]
The PTAB recently issued an odd opinion in this case focusing on the written description requirement. The application is directed to a “package of absorbent articles.” I.e., a bag full of diapers. These particular diapers are designed to include a higher percentage of “bio-based materials” and fewer petrochemicals. As such, the claims require that the bag contain “a plurality of absorbent articles … wherein the absorbent articles are devoid of lotion, fragrance or perfume, chlorine, and green number 7 dye.”
The patent examiner rejected the claims as obvious based upon several prior art references. Those rejections were affirmed by the PTAB, but then the PTAB also added two new grounds of rejections: Indefiniteness and Failure of Written Description. Basically, the PTAB was concerned with the claim limitation that the diapers are “devoid of … green number 7 dye.”
Appellant’s Specification is silent as to what, exactly, “green number 7 dye” is, or what “undesirable” materials or features it possesses that might warrant its absence from absorbent articles. . . . Further, there is no indication that “green number 7 dye” is a well-known dye, that it has a certain meaning in the industry, or that it falls within any of a number of classifications or descriptions by which dyes are often characterized.
In addition, the specification provided no criteria for determining why “green number 7 dye” is “undesirable.” Based upon those perceived failures in the specification, the PTAB concluded that “the term ‘green number 7 dye’ … lacks adequate written description support and is indefinite.” Although I have no experience in this area, I did do a 2 minute Google search and found that Green No. 7 is a term of art for Phthalocyanine Green G.
Question: Did the applicant err by not including a better definition of Green No. 7 and by particularly explaining why it is undesirable? The decision here has clear errors, but it does beg the question of the extent that a patent specification needs to explain “why” the inventor made certain choices. P&G sells diapers both with and without Green No. 7, and I expect that its reasoning is simply that some customers will pay more for the version without.
As claimed, is it obvious that the absorbent articles are free of both No. 1 and No. 2?
This decision belongs in that diaper.
Perchance P&G meant the well-known soylent green?
link to youtube.com
Probably not. It’s well-known that Soylent Green is made of people.
. . . then again, Earth does seem a little over-crowded these days . . . 🙂
I mean I would have made the WD rejection up front when they amended it in, but to do it after they uphold the obviousness rejection is just kinda tacky. I guess it minorly protects against them re-appealing with someone who knows how to argue better, but that seems remote.
The applicant did not err, but the PTAB did, IMHO.
These APJs are stating that something is indefinite because they themselves don’t understand what that something is because it is not described at length in the spec. However, specifications are not required to be a “how to” for non-POSITAs, and the PTAB position is only correct if they are holding themselves out as POSITAs. But where are they setting forth their credentials as POSITAs? Nowhere. It is nothing but PTAB arrogance, and likely from APJs who started out as Examiners making the same sort of rejections.
I’m likely not alone in getting indefiniteness rejections from examiners who make similar statements that something is indefinite because they themselves don’t understand what that something is. When I respond to that argument by pointing out the Examiner hasn’t explained how it would be indefinite to a POSITA, 99.9% of the time they withdraw the rejection.
Some things I found difficult to “absorb” in this ex parte PTAB diaper patent appeal decision: Should a negative [not-present] claim limitation necessarily have the same “how to make and use” enablement requirements as an affirmative claim limitation? What about something like “free of pins and splinters?” To put it another way, would not a more generic such negative [not-present] claim limitation like “free of chemical color dyes” have been accepted here? Was there any teaching that Green No. 7 was previously considered essential or otherwise unobvious not to use here? Could not the examiner have found and cited some of the widespread “green” and “environmental” literature that for years has ranted against anything chemical or un-natural in human products as obviousness evidence for any KSR POSITA re such very negative limitations?
BTW, the claim-chart in this decision is nice. Sort of sets it up for an IPR if it ever gets allowed.
Should a negative [not-present] claim limitation necessarily have the same “how to make and use” enablement requirements as an affirmative claim limitation?
Of course.
What about something like “free of pins and splinters?”
Same. Of course, a specification is directed to one of skill in the art, so enabling something to be free of splinters when it does not ordinarily have splinters is enabled just by mentioning those words.
To put it another way, would not a more generic such negative [not-present] claim limitation like “free of chemical color dyes” have been accepted here?
It is generally (but not always) easier to enable not putting a single thing into an invention than not putting a whole class of things into an invention, just like it is generally easier to enable one way of doing things than a whole class of ways of doing something.
Was there any teaching that Green No. 7 was previously considered essential or otherwise unobvious not to use here?
Probably not, which is why it doesn’t really affect obviousness in either manner.
Thanks for the response, and just to continue the discussion, it still puzzles me why, logically, something claimed as NOT IN the claimed product [if that negative claim expression is not ambiguous*] needs the same “how to make and use” enablement description as an affirmative claim requirement for something that has to be IN the claimed product? It’s an area of patent law I never researched since most of the negative limitations I ever saw were in EPO applications.
* like “free of chemical dyes”
Obviousness seems to be the major problem here. My guess is that the written description/indefiniteness rejections popped up only after the applicant began focusing all its attention on this “lack of green dye” like it was some kind of miraculous discovery that you could make a diaper without dye and then (omg!) put that diaper in a bag with similar diapers.
My diaper bag doesn’t include fluorescent diapers.
No your diaper only include poop like your noggin. “The Poopy Diaper” is with us again and needs frequent changing.
I’m hoping that a someone with a better sense of the mindset of a person of ordinary skill in the absorbent article/chemical arts will weigh in, but my “2 minutes of googling” pointed me to a completely different chemical that is sometimes called green 7 (compare PubChem CID number: 61388 Pyranine – Solvent Green 7, to CID number: 26932 – Phthalocyanine Green – Pigment Green 7).
This is my thought as well. The §112 rejections are not that far off base, because “green #7” is a loose definition. A better definition was entirely within the applicant’s control to give.
I remember my property professor saying “every common law state in this country has enacted a statute to save lawyers from the mistake of saying ‘to Tim’ instead of ‘to Tim and his heirs‘ when you mean to convey the fee simple absolute, so if you make this mistake, there is no malpractice liability. But you will be well educated lawyers, and there is no reason for you not to do it right. If you mean to convey the fee simple, write ‘to Tim and his heirs.'”
Mutatis mutandis, the same goes for patent law. If you means to claim phthalocyanine green G, then write “phthalocyanine green G,” rather than “green dye #7.” That way you avoid the confusion with trisodium 8-hydroxypyrene-1,3,6-trisulfonate (also known as “solvent green #7”). Do not rely on the PTAB to bail you out with a lame “the skilled reader knows which ‘green #7’ was intended here… .”
Indeed.
I would have assumed “green number 7 dye” referred to an FDA color additive, but the only candidate there is D&C Green #7, which hasn’t been permitted in drugs or cosmetics since 1966, although perhaps it can still be used in articles such as diapers. It took several minutes of searching, but D&C Green #7 is a coal-tar derived dye with no common name and a long IUPAC name not worth transcribing here.
So now we have at least 3 candidates for what “green number 7 dye” can refer to.
“No dye called green dye #7 by a skilled artisan is in the diapers.”
Now we’re getting into the kinds of arguments made by the softie woftie types.
Comments are closed.