Modification Must Be Satisfactory For The Intended Use

In a recent decision, Ex parte Kleinwaechter (Appeal No. 2011-009329, Serial No. 11/225,949) the BPAI overturned an examiner’s finding of obviousness for including an alternative scented compound into a tissue, as the particular scent of the proposed modification would not have achieved the scent goals of the primary reference.

The claimed invention related to a particular type of tissue containing a “volatile rhinological effective composition” comprising menthyl methyl ether. The composition was recited to be effective on human skin by either providing physiological or perceived sinus relief.

The primary reference disclosed a lotion composition for killing viruses, e.g. rhinovirus and influenza, in addition to imparting a pleasant feel on tissue paper. The primary reference disclosed that cineole could be used as an optional ingredient in its tissue to give the product a medicinal scent.

The examiner relied on a secondary reference directed to rhinologically active substances provide the refreshing activity of cineole, but without its deleterious effects, e.g. unpleasant taste sensation. Such compounds could include menthyl methyl ether. The secondary reference taught that cineole is a very pungent compound that is unpleasant to many consumers when present in great quantities, and that menthyl methyl ether is an excellent compound to provide similar benefits but lacks such unfavorable characteristics when present. The examiner argued there would have been a motivation to switch the two.

The secondary reference, cited for its disclosure of cineole and menthyl methyl ether, recognized that cineole has a “pronounced medicinal note,” and that menthyl methyl ether did not exhibit this strong, and consumer-perceived unpleasant characteristic. Therefore, it was apparent that replacing the scented compound in the primary reference may have been motivated, but for a different purpose than the primary reference proposed to add the optional component in the first place.

The applicants argued that a person of ordinary skill in the art would not substitute cineole, in the tissue of the primary reference for its medicinal scent, with a compound that the art recognized to lack such a scent. The Board agreed that no prima facie case of obviousness had been established because such a substitution would result in the loss of the medicinal scent, which was the reason that cineole was included in the tissue of the primary reference. That is, the modification would have rendered the primary reference’s tissue unfit for its intended use.