714 F.2d 1127 (Fed. Cir. 1983), 82-592, In re Smith

Docket Nº:Appeal No. 82-592.
Citation:714 F.2d 1127
Party Name:218 U.S.P.Q. 976 In re James A. SMITH and James H. McLaughlin, and Sterling Drug, Inc., Intervenor.
Case Date:August 03, 1983
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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714 F.2d 1127 (Fed. Cir. 1983)

218 U.S.P.Q. 976

In re James A. SMITH and James H. McLaughlin, and Sterling

Drug, Inc., Intervenor.

Appeal No. 82-592.

United States Court of Appeals, Federal Circuit

August 3, 1983

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        Paul H. Heller, New York City, argued for appellants. With him on brief were Hugh A. Chapin, Albert J. Breneisen, and Philip G. Hampton, II, New York City.

        Karl F. Jorda, Harry J. Falber and Michael W. Glynn, Ardsley, N.Y., of counsel.

        Harris A. Pitlick, Washington, D.C., argued for appellee. With him on brief were Joseph F. Nakamura, Sol. and Fred E. McKelvey, Associate Sol., Washington, D.C.

        John D. Foley, New York City, argued for intervenor. With him on brief were John F. Sweeney and James P. Welch, New York City.

        James H. Luther, Robert B. Simonton and Joseph Sessa, New York City, of counsel.

        Before NICHOLS, Circuit Judge, COWEN, Senior Circuit Judge, BALDWIN, KASHIWA and MILLER, Circuit Judges.

        KASHIWA, Circuit Judge.

        This is an appeal from the decision of the United States Patent and Trademark Office (the "PTO") Board of Appeals (the "board") sustaining the examiner's rejection of claims 1-3, 8, 10-13, 18, 23, 25, 26, 28 and 29 in reissue application serial No. 163,300, filed June 27, 1980. Original U.S. Patent No. 4,161,449, entitled "Powdered Carpet Composition" was issued on July 17, 1979, from an application filed September 2, 1977. All of the claims at bar stand rejected as unpatentable under, inter alia, 35 U.S.C. § 102(b). 1 We affirm the rejections under section 102(b).

The Invention

        Appellants' invention relates to a vacuumable, powdered carpet composition which

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is used as a carpet and room deodorizer and a method for treating carpets by using the powdered carpet composition. The patented product, CARPET FRESH, after application on the carpet in powdered form and removal by vacuuming, imparts deodorizing, antistatic and antisoil characteristics to the carpet. Appellants' invention is best described by their broadest independent claim:

        1. A powdered carpet-treating composition comprising a blend of from about 40.0-98.99%, by weight, of an inorganic salt carrier selected from the group consisting of sulfates, chlorides, carbonates, bicarbonates, borates, tripolyphosphates, nitrates and blends thereof, substantially all of the particles of said carrier being between 0.06-0.25 millimeters; from about 1.0-25.0%, by weight, of an agglomerating agent selected from the group consisting of starch, silica powders, grain flour, wood flours, talc, pumice, clays and calcium phosphate; from about 0.01-20.0%, by weight, of a volatile odorous agent and an effective amount, up to about 15%, by weight, of an antistatic agent, said composition being adapted for application onto a carpet and for removal by vacuuming to impart a deodorizing effect.

        All of the remaining claims at bar recite the ingredients of claim 1. Claim 26 additionally recites a dedusting agent, described as "an alkyl phthalate dedusting agent, the combined concentration of phthalate and said odorous agent ranging up to about 5.0% by weight." The method claims at bar, claims 8, 10, 18 and 25, recite the application of the claimed composition onto a carpet in powdered form and the removal of the composition, such as by vacuuming, in order to impart deodorizing, antistatic and antisoil characteristics to the carpet.

Procedural Background

        Appellants applied for reissue in connection with a patent infringement suit pending in a United States district court. 2 That action was between appellants' assignee, Airwick Industries, Inc. ("Airwick"), and the intervenor of this case, Sterling Drug, Inc., which appeared as a protestor 3 before the PTO throughout the reissue prosecution. The district court issued a stay pending the reissue decision.

Background

        In August, 1976, more than one year before appellants' filing date of September 2, 1977, Airwick conducted a consumer test in St. Louis, involving 76 consumers. During the first stage of the St. Louis test carried out on August 9 and 10, 86 consumers viewed a video tape presentation of the product concept. Similar tests, consisting of only video tape presentations, had previously been used in Philadelphia and Houston. After viewing the video presentation, the consumers were questioned about the pricing of the product, the believability of the claims made for the product, and their purchase intent.

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        In an internal memorandum dated August 19, 1976, James A. Smith, director of research and development at Airwick and one of the co-inventors, wrote to Wesley M. Buckner, the vice president for marketing at Airwick:

Results [of the first stage test] were good, but not as good as noted in the previous two cities. The respondents [consumers] overall reactions were rather dull and lacked the highly enthusiastic research seen earlier. Outlined below is the purchase intent scores.

Purchase intent # of Respondents % --------------- ---------------- - Definitely would buy 21 24.4 Probably would buy 37 43.0 Might or might not buy 19 22.1 Probably would not buy 8 9.3 Definitely would not buy 1 1.2 -- ----- 86 100.0         Smith further observed in this memorandum:

Again, suggested pricing was reviewed with the respondents and there apparently is no problem with $1.89 for 14 oz. It did not affect the purchase intent trial of the women [consumers] questioned.

        Smith concluded this memorandum by stating that "[t]he results will guide our future product development activities especially in fragrance type and level as well as product form."

        In the second stage of the test, 40 of the consumers were then given a granular version of the composition and 36 given a powdered version. The composition had the following ingredients:

Ingredients Percent ----------- ------- Sodium sulfate 52.2 Sodium bicarbonate 25.0 Aluminum oxide (Dispal)4 10.0 Starch 10.0 Perfume 2.5

This composition is identical to that of formulation 3 of Example III in appellants' original patent and in the instant reissue application. In an internal memorandum        This composition is identical to that of formulation 3 of Example III in appellants' original patent and in the instant reissue application. In an internal memorandum dated August 6, 1976, Smith observed that the powdery product had, inter alia, the following characteristics:

[P]roduct should have better deodorization, anti-static and anti-soil properties.

Easier to vacuum up (even on shag carpeting--according to Jim McLaughlin).

Would be easier to manufacture, and less costly to manufacture--it's a complete dry blend. [Emphasis in original.]

        Moreover, Smith stated, with regard to the upcoming St. Louis test, that "[h]opefully, we will have some guidance as to product form--large or small particle size."

        These 76 consumers were allowed to use the products in their own homes for about two weeks and were instructed to return any unused portion. They did not enter into any agreement of confidentiality with Airwick and were allowed to use the products in their own homes without legal restriction.

        On August 29 and 30, 68 of the consumers (33 of whom received the powdery product) were personally interviewed by the appellants regarding their experience with the product. The record, however, does not indicate whether the appellants attempted to contact the remaining eight consumers or to retrieve the product. Smith detailed the results of the St. Louis test in his memorandum dated September 20, 1976. Smith pointed out:

There was a difference in the ease of vacuuming up the two product forms. * * * [T]he more powdery one, vacuumed up the best. * * * [T]the granular version, was definitely more difficult to vacuum up. The product bounced under furniture or up against the baseboard resulting in greater effort to vacuum up. Neither of the products got trapped in carpeting at all.

* * *

* * *

The overwhelming majority of participants stated the product does deodorize. Some commented upon specific applications to rid the carpeting and room of pet

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odors especially. In a few instances, the odor was so overpowering that no opinion could be formed. Again, this will be further evaluated in any revised formulas.

* * *

* * *

Although the product usage period was relatively short, no mechanical problems with any of the vacuum cleaners used was evident. There was no mention of any bags breaking or machines clogging due to the product, either.

* * *

* * *

[W]e are pursuing alternate fragrances to remove the sweet note of the current fragrance * * *.

* * *

* * *

[W]e will pursue only the powdery form in our final product development efforts because of favorable product testing results and anticipated lower manufacturing costs.

        After the St. Louis consumer test, work continued at Airwick in experimenting with different formulations. For instance, Example I 5 of appellants' original patent and the instant reissue application, which is the CARPET FRESH formulation as first made, was first recorded in an Airwick worker's notebook on October 5, 1976. Moreover, testing for the antistatic and antisoil properties of the CARPET FRESH product was not planned until early October, 1976.

        In his affidavit dated December 22, 1980, James H. McLaughlin, one of the co-inventors, stated:

Airwick * * * was seeking to technically develop the product while testing consumer reaction to the concept and to various prototype forms. In preparation for this Affidavit, I previewed the film of the video presentation given in Philadelphia and Houston in the summer of 1976. The video shows white beads being sprinkled onto...

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