BASF SE

Patent Trials and Appeals Board

Feb 26, 2020

15115704 - (D) (P.T.A.B. Feb. 26, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/115,704 08/01/2016 Eva Max 32471/76062 1893
4743 7590 02/26/2020
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
EXAMINER
ZHANG, YANZHI
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
02/26/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EVA MAX and ANSGAR BEHLER
____________

Appeal 2019-004845
Application 15/115,704
Technology Center 1600
____________

Before DONALD E. ADAMS, JOHN G. NEW, and
JAMIE T. WISZ, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1–4, 6, 7, and 9–11. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as BASF SE
(Appellant’s January 24, 2019 Appeal Brief (Appeal Br.) 3).
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STATEMENT OF THE CASE
Appellant’s disclosure “relates to aqueous surfactant compositions
with a content of alpha-sulfo fatty acid disalts and specific alkyl or alkenyl
oligoglycosides” (Spec.2 1: 6–7). Appellant’s claims 1, 3, 9, and 10 are
reproduced below:
1. An aqueous surfactant composition comprising
one or more alpha-sulfa fatty acid disalt (A) of general
formula (I),
R1CH(SO3M1)COOM2 (I)
in which radical R1 is a linear or branched alkyl or
alkenyl radical with 6 to 16 carbon atoms and the radicals M1
and M2, independently of one another, are selected from the
group consisting of H, Li, Na, K, Ca/2, Mg/2, ammonium, and
alkanolamine,
one or more alkyl glycosides (B) of general formula (II),
R2O-[G]p (II),
in which R2 is an alkyl and/or alkenyl radical with 8 to 18
carbon atoms, G is a sugar radical with 5 or 6 carbon atoms,
and p is numbers between 1 and 10,
optionally one or more ester sultanate (E) of general
formula (V),
R5CH(SO3M5)COOR6 (V),
in which radical R5 is a linear or branched alkyl or
alkenyl radical with 6 to 18 carbon atoms and radical R6 is a
linear or branched alkyl or alkenyl radical with 1 to 20 carbon
atoms, and the radical M5 is selected from the group consisting
of Li, Na, K, Ca/2, Mg/2, ammonium, and alkanolamine, and
water,
wherein a pH of the composition is in a range of 4.3 to
5.8,

2 Appellant’s August 1, 2016 Specification.
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where the following provisos apply:
with regard to the compound (A), it is the case that a
fraction of the compound (A) in which the radical R1 is an alkyl
or alkenyl radical with 14 or more carbon atoms, based on the
total amount of the compound (A) in the aqueous surfactant
composition, is 20% by weight or less;
with regard to the compound (B), it is the case that a
fraction of the compound (B) in which the radical R2 is an alkyl
or alkenyl radical with 15 or more carbon atoms, based on the
total amount of the compound (B) in the aqueous surfactant
composition, is 5% by weight or less;
when the aqueous surfactant composition comprises one
or more optional ester sultanate (E) of general formula (V),
then it is the case that the compound (A), based on the
totality of the compounds (A) and (E), is present to 50% by
weight or more; and
a weight ratio of the compounds (A): (B) in the aqueous
surfactant composition is in the range from 0.6: 1 to
1: 0.6.
(Appeal Br. A-1.)
3. The composition according to claim 1, wherein the
composition additionally comprises one or more compound (C)
of general formula (III),
R4COOM3 (III),
in which the radical R4 is a linear or branched alkyl or
alkenyl radical with 7 to 19 carbon atoms and the radical M3 is
selected from the group consisting of H, Li, Na, K, Ca/2, Mg/2,
ammonium, and alkanolamine.
(Id. at A-2.)

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9. The composition according to claim 3, wherein the
composition additionally comprises one or more inorganic salts
of sulfuric acid (D) of the general formula (IV)
(M4)2SO4 (IV),
wherein M4 is selected from the group consisting of Li, Na, K,
Ca/2, Mg/2, ammonium, and alkanolamine.
(Id.)
10. The composition according to claim 9, wherein, based on a
mixture of components (A), (C), and (D),
a content of (A) is in a range from 60 to 100% by weight,
a content of (C) is in a range from 0 to 20% by weight,
and
a content of (D) is in a range from 0 to 20% by weight,
with a proviso that a sum of compounds (A), (C), and (D) in the
mixture is 100% by weight.
(Id. at A-3.)

Ground of rejection before this Panel for review:
Claims 1–4, 6, 7, and 9–113 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Dong4 and Llenado.5, 6

3 We recognize, but decline to address, the contentions on this record
regarding a restriction requirement (see Appeal Br. 12–13; see also
Appellant’s May 31, 2019 Reply Brief (Reply Br.) 1; cf. Examiner’s April 2,
2019 Answer (Ans.) 4). This issue relates to a petitionable rather than
appealable issue. See MPEP § 1002.02(c) (rev. 08.2017, Jan. 2018).
4 Dong et al., US 2012/0208898 A1, published Aug. 16, 2012.
5 Llenado, EP 0 070 074 A2, published Jan. 19, 1983.
6 Examiner’s rejection of claims 1–4, 6, 7, and 9 under 35 U.S.C. § 103 as
unpatentable over the combination of Dong and Llenado (see Ans. 3) is
cumulative to this rejection and, therefore, vacated.
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ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Dong discloses that “[s]alts of alpha sulfonated fatty acid esters and
salts of alpha sulfonated fatty acids have been used in detergents as primary
surfactants. They have excellent foaming and cleansing properties” (Dong
¶ 3; see Ans. 7).
FF 2. Dong “relates to the discovery of surfactant thickeners that can be
effectively used in combination with electrolytes to increase the viscosity of
cleansing compositions comprising alpha sulfonated fatty acid esters and/or
alpha sulfonated fatty acids and/or salts thereof,” wherein “[t]he use of the
surfactant thickener of . . . [Dong’s] technology further improves[, inter
alia,] foaming” (Dong ¶ 6; see id. ¶ 5 (Dong discloses that “polymeric
thickeners are more expensive than surfactants, and they do not have
desirable cost/performance efficiency in cleansing products”); see generally
Ans. 7).
FF 3. Dong discloses
a viscous liquid cleansing composition . . . which comprises or
consists essentially of:
a) from about 2% to about 70%, more preferably from
about 3% to about 50%, and most preferably from about 5% to
about 30% of a hydrotropic surfactant, for example, an alpha
sulfonated fatty acid ester and/or alpha sulfonated fatty acid, or
one or more salts thereof;
b) from about 1 % to about 50%, more preferably from
about 1 % to about 30%, and most preferably from about 2% to
about 20% of an alkyl betaine or sultaine;
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c) from about 0% to about 3% of an organic or inorganic
salt or electrolyte; . . .
d) from about 0% to about 50% of other surfactants and
additives; and
e) water present in an amount to balance the total
composition to 100%.
(Dong ¶¶ 8–13; see id. ¶ 37 (Dong’s “compositions and formulations can
also comprise one or more electrolytes,” such as sodium sulfate); id. ¶ 40
(Dong discloses, inter alia, “alkyl glucosides [and] alkyl poly glucosides” as
examples of “nonionic surfactants suitable for use with . . . [its]
technology”); Ans. 6 (Examiner finds that Dong discloses “Glucopon 628
UP” as an example of an alkyl polyglucoside within the scope of compound
(B) of Appellant’s claim 1) (emphasis omitted); see generally Dong ¶¶ 48–
50; Ans. 5–7.)
FF 4. Dong discloses:
In various embodiments of the present technology, the
hydrotropic surfactant is an alpha sulfonated fatty acid, an ester
thereof, or a salt of such an acid or such an ester, having the
structure of Formula 1:

where R is a C6-C20 hydrocarbyl group, preferably an alkyl or
other hydrocarbyl group, or a combination thereof, Z is -CH3,
ethyl or X, where X is H, Na, K, Ca, Mg, NH4,
monoethanolammonium, diethanolammonium,
triethanolammonium or a mixture thereof. The hydrotropic
surfactant can be a combination of such a sulfonated fatty acid,

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ester, or salt. R can represent a distribution of alkyl chain
lengths.
(Dong ¶ 22; see also id. ¶ 28; id. ¶ 32 (Dong discloses that “[e]xemplary
products in this category include ALPHA-STEP® PC-48, ALPHA-STEP®
MC-48, ALPHA-STEP® BSS-45 ALPHA-STEP® P-65 from Stepan
Company, Northfield, Ill.”); see Ans. 6–7.)
FF 5. Dong describes “ALPHA-STEP® PC-48” and “ALPHA-STEP® MC-
48” as “Sodium Sulfonated Methyl C12-C18 ester (mono) and Disodium
Sulfonated C12-C18 fatty acid (di) with average mono- to di- ratio of
approximately 7:1” (Dong ¶ 65, Table A; see Ans. 7).
FF 6. Dong describes “ALPHA-STEP P-65” as “Sodium Sulfonated
Methyl C14-C18 ester (mono) and Disodium Sulfonated C14-C18 fatty acid (di)
with average mono- to di- ratio of approximately 10:1” (Dong ¶ 65, Table
A).
FF 7. Dong’s
hydrotrophic surfactant can be an alpha sulfonated fatty acid, an
ester of an alpha sulfonated fatty acid, a di-cation salt (di-salt)
of an alpha sulfonated fatty acid, a mono-cation salt (mono-salt)
of an alpha sulfonated ester of a fatty acid, or a blend of any of
the foregoing acids, esters or salts.
(Dong ¶ 28.)
FF 8. Examiner finds that although Dong discloses compositions
comprising 1.5%–10% of an alpha-sulfo fatty acid disalt and 0.5% alkyl
polyglycoside, “Dong does not expressly disclose that the weight ratio of
compounds (A):(B) in the aqueous surfactant compositions is in the range of
0.66:1 to 1:0.6” (Ans. 7 (citing Dong, Examples 22 and 63; Tables 2, 3, 10,
and 11)).
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FF 9. Examiner finds that Llenado discloses a composition comprising
polyglycoside and an anionic co-surfactant “in the range from 1:10 to 10:1”
(Ans. 7 (citing Llenado, claim 1)).
FF 10. Examiner finds that Dong discloses “that a mixture of alkyl betaines
having different alkyl chain lengths can improve viscosity building and
foaming properties” (Ans. 10 (citing Dong ¶ 34)).
ANALYSIS
Claim 1:
Dong discloses a composition comprising an alpha-sulfo fatty acid
disalt within the scope of Appellant’s formula (I) (see FF 4; see also FF 7).
In contrast to Appellant’s contention, “Z” of Dong’s formula I “is -CH3,
ethyl or X, where X is H, Na, K, Ca, Mg, NH4, monoethanolammonium,
diethanolammonium, triethanolammonium or a mixture thereof” (see FF 4
(emphasis added); cf. Appeal Br. 17–18 (Appellant contends that Z of
Dong’s formula I “can be methyl or ethyl”)). Thus, Dong suggests
compositions comprising “from about 2% to about 70% . . . of a hydrotropic
surfactant,” that is the alpha-sulfo fatty acid disalt (A) of Appellant’s
claimed invention (see FF 3–4; cf. Appeal Br. 17–18).
A reference disclosure is not limited only to its preferred
embodiments, but is available for all that it discloses and suggests to one of
ordinary skill in the art. See In re Lamberti, 545 F.2d 747, 750 (CCPA
1976). Therefore, we are not persuaded by Appellant’s contentions relating
ALPHA-STEP® PC-48 and ALPHA-STEP® MC-48, i.e. products
comprising a mixture of alpha sulfonated fatty acid mono- and di-salts,
which Dong exemplifies as falling within the scope of Dong’s Formula I
(see Appeal Br. 18; Reply Br. 2; see also FF 4–5). In this regard, we note
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that Dong discloses that its hydrotrophic surfactant can be, inter alia, a di-
cation salt (di-salt) of an alpha sulfonated fatty acid or a mono-cation salt
(mono-salt) (FF 7). Thus, notwithstanding Appellant’s contention to the
contrary, Dong does not require that its compositions comprise a mono-salt,
which falls within the scope of Appellant’s optional ingredient (E) (see
Appeal Br. 20 (Appellant contends that Dong “fails to meet the claimed
feature of ester sulfonate (E) being absent from the composition, and, if
present, then only in an amount equal to or less than the amount of alpha-
sulfo fatty acid disalt (A)”); see id. (Appellant contends that Dong “contains
no disclosure and no example wherein an amount of claimed compound (A)
exceeds an amount of claimed optional component (E)”); see generally id. at
18–21, 28–29, and 32–33).
Dong discloses that its composition may comprise “from about 0% to
about 50% of other surfactants and additives,” wherein the “surfactant” may
be a nonionic surfactant, such as “alkyl glucosides” and exemplifies
compositions comprising an alpha sulfonated fatty acid in combination with
alkyl glucosides (FF 3 and 8). Thus, we find no error in Examiner’s finding
that Dong discloses a composition comprising the alpha-sulfo fatty acid
disalt (A) and alkyl glycosides (B) of Appellant’s claimed composition (see
Final Act. 6; Ans. 6).
In addition, Examiner finds that Dong exemplifies compositions
comprising 1.5% to 10% an alpha sulfonated fatty acid and 0.5% alkyl
polyglycoside (FF 8). Thus, because Dong suggests aqueous surfactant
compositions, comprising from about 2% to about 70% alpha-sulfo fatty
acid disalt and from about 0% to about 50% alkyl glycosides, we find no
error in Examiner’s conclusion that the combination of Dong and Llenado
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makes obvious aqueous surfactant compositions having a weight ratio of the
alpha-sulfo fatty acid disalt to alkyl glycoside compounds that encompasses
the range of from 0.6:1 to 1:06, as required by Appellant’s claimed invention
(see generally FF 8–9; cf. Appeal Br. A-1; Appeal Br. 21–22 (Appellant
contends that the combination of Dong and Llenado fails to make obvious a
composition comprising Appellant’s claimed weight ratio of alpha-sulfo
fatty acid disalt to alkyl glycosides)). As Examiner explains, at the time
Appellant’s invention was made, it would have been prima facie obvious, in
view of the combination of Dong and Llenado, “to vary the amount of each
ingredient to optimize the effect desired” (Ans. 7; see also id. at 9–10; see
generally FF 1–2). See In re Aller, 220 F.2d 454, 456 (CCPA 1955)
(“[W]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation.”).
We are not persuaded by Appellant’s contentions regarding the
removal of bentaine and sultaine from Dong’s composition (see Appeal Br.
22; Reply Br. 2 (Appellant contends that “alkyl betaines and alkyl
sultaines . . . are not claimed components of [Appellant’s] composition”)).
As Examiner explains, Appellant’s “claim 1 uses an open-ended transitional
phrase ‘comprising’,” and “[t]hus, it allows for the presence of additional
unrecited components,” such as Dong’s bentaine and sultaine (Ans. 5).
Therefore, we are not persuaded by Appellant’s contentions or
evidence relating to unexpected results (see Appeal Br. 22–24 (citing Spec.
10: 1–11 and 11: 1–12: 10; Brunn Decl.7 ¶ 8); see also Reply Br. 2). As

7 Declaration of Claudia Brunn, Ph.D., not dated (“Brunn Decl.”).
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discussed above, Appellant’s claimed invention is open to include
ingredients in addition to the alpha-sulfo fatty acid disalt (SFA-I) and fatty
alcohol glycoside (APG-I) tested by Appellant’s and Brunn (see Appeal Br.
A–1; see also FF 8 (directing attention to the compositions exemplified by
Dong); cf. Spec. 10: 1–11 and 11: 1–12: 10; Brunn Decl. ¶ 8). Appellant’s
evidence of unexpected results, however, is limited to comparing
compositions comprising only SFA-I and APG-I (Spec. 10: 1–11 and 11: 1–
12: 10; Brunn Decl. ¶ 8). Thus, Appellant’s evidence is not commensurate
in scope with Appellant’s claimed invention and fails to fairly compare the
claimed invention to the closest prior art, i.e., Dong, which discloses
compositions comprising alpha sulfonated fatty acid, alkyl glycoside, a
mixture of alkyl betaines having different alkyl chain lengths (see Ans. 10
(Examiner finds that Appellant’s evidence of unexpected results is not
commensurate with the scope of Appellant’s claimed invention); see also id.
(Examiner finds that Appellant’s evidence of unexpected results relates to “a
single species of alpha-sulfo fatty acid disalt (SFA-I) and a single species of
alky polyglycoside (APG-I) while claiming tens or hundreds of [compounds
within the] genus of alpha-sulfo fatty acid disalt and alkyl polyglycoside”);
cf. Appeal Br. 32). In this regard, we note that Dong discloses that “a
mixture of alkyl betaines having different alkyl chain lengths[, which are not
excluded from Appellant’s claimed invention,] can improve . . . foaming
properties” of a composition (FF 10; cf. Reply Br. 2–3).
Because Dong exemplifies a composition comprising alkyl glucoside,
we are not persuaded by Appellant’s contention that Dong “fails to teach or
suggest that a glucoside has any major effect on foaming properties”
(Appeal Br. 22; cf. FF 8).
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As discussed above, the ingredients of the composition suggested by
the prior art are present in amounts that encompass or overlap the
concentration of the same ingredients required by Appellant’s claim 1 and,
thus, the prior art supports a conclusion of obviousness. See Iron Grip
Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004); see
also In re Geisler, 116 F.3d 1465, 1468 (Fed. Cir. 1997). Therefore, we are
not persuaded by Appellant’s contentions based on In re Stephan Co., 868
F.3d 1342, 1346 (Fed. Cir. 2017), wherein our reviewing Court found
“[m]issing from the Board’s analysis . . . an explanation as to why it would
have been routine optimization to arrive at the claimed invention” (see
Appeal Br. 24–25; see also id. at 29–31 and 33–34; Reply Br. 2).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that Examiner’s rejection is based on improper hindsight or that a
person of ordinary skill in this art would have considered it unpredictable to
arrive at a composition within the scope of Appellant’s claim 1 based on the
combination of Dong and Llenado (Appeal Br. 25).

Claim 10:
As Examiner explains, Dong discloses a composition comprising from
about 2% to about 70% of a hydrotrophic surfactant, such as a mixture of
alpha sulfonated fatty acids, within the scope of Appellant’s formulas (I) and
(III); at least one alkyl betaine or sultaine; from about 0% to about 3% of an
electrolyte, such a sodium sulfate, which is within the scope of Appellant’s
formula (IV), water, and an additional surfactant or additive, such as alkyl
glucosides (see Ans. 5–6; see also FF 3–4). Thus, we are not persuaded by
Appellant’s contention that Examiner failed to examine Appellant’s claim 10
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(Appeal Br. 26). Further, having found no deficiency in Examiner’s
rejection of Appellant’s claim 1, we are not persuaded by Appellant’s
contention that its claim 10 is not obvious over the combination of Dong and
Llenado for the same reasons as Appellant asserted with respect to its claim
1 (id.).
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claims 1 and 10 under
35 U.S.C. § 103(a) as unpatentable over the combination of Dong and
Llenado is affirmed. Claims 2–4, 6, 7, and 9 are not separately argued and
fall with claim 1. Claim 11 is not separately argued and falls with claim 10.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6, 7, 9–
11
103 Dong, Llenado 1–4, 6, 7,
9–11

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED