Ex Parte Mongiat et al

Patent Trial and Appeal Board

Mar 30, 2016

12744495 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121744,495 08/20/2010
324 7590
BASF Corporation
Patent Department
500 White Plains Road
P.O. Box 2005
Tarrytown, NY 10591
04/01/2016
FIRST NAMED INVENTOR
Sebastien Mongiat
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
C23819/PCT 2784
EXAMINER
SINGH, RANDEEP
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
04/01/2016 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):
andrea.dececchis@basf.com
basf-ip@basf.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEBASTIEN MONGIAT, JULIE GRUMELARD,
and THOMAS EHLIS 1
Appeal 2014-001112
Application 12/744,495
Technology Center 1600
Before ERIC B. GRIMES, TINA E. HULSE, and RICHARD J. SMITH,
Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of preparing a composition that have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is BASF SE. (Br. 2.)
Appeal 2014-001112
Application 12/744,495
STATEMENT OF THE CASE
Background
"The present invention relates to a method for producing new
formulations of UV absorbers and to their use in sunscreen compositions
which, in tum, are useful, in particular, for the protection of human skin."
(Spec. 1, 11. 2--4.)
Claims on Appeal
Claims 1, 4, 5, 7, and 14--22 are on appeal. (Br. 10-13.) Claim 1
reads as follows (formatting modified):
1. A method of preparing a composition, comprising (a) a micronised
insoluble organic UV absorber selected from the compounds of formula
(2) , wherein
Ri and Rs independently from each other are hydrogen; C1-C1salkyl; or
C6-C12aryl; ~' R7 and Rs independently from each other are hydrogen;
hydroxy; halogen; C1-C1salkyl; C1 C1salkoxy; C6-C12aryl; biphenylyl;
C6-C12aryloxy; C1-C1salkylthio; carboxy; -COOM; C1-C1s-alkylcarboxyl;
aminocarbonyl; or mono- or di-C1-C1salkylamino; C1-C1oacylamino;
-COOR;
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Appeal 2014-001112
Application 12/744,495
and a compound of formula (7) (7)
which method comprises grinding the insoluble organic UV absorber, in
coarse particle form, in a grinding apparatus, in the presence of a grinding
aid selected from the groups
(b 1) Sodium Lauroyl Lactylate,
(b2) Isocetyl isostearate, or glycol oleate,
(b3) DEA-oleth-3 phosphate,
(b4) PEG-20 Laurate,
(bs) Ceteth-10, Laureth-7 or PEG-I 0 Behenyl Ether (Beheneth-10),
(b7) PEG-10 Nonyl Phenyl ether,
(bs) PEG-10 polyglyceryl-2 laurate,
(b9) PEG-120 Methyl Glucose Dioleate or Polyglyceryl-3 Methylglucose
Distearate,
(b 10) PEG-20 Sorbitan Isostearate, or PEG/PPG-125/30 coplymer, and
(b 11 ) Sodium dicocoylethylene diamine PEG-15 sulfate or Dimethicone
PEG/PPG - 7 /4 Phosphate.
Examiner's Rejection
Claims 1, 4, 5, 7, and 14--22 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Luther,2 Ehlis, 3 and Haase.4 (Final Act. 2.) 5
Appellants have indicated that the appeal will stand or fall on the basis
of claim 1, the only independent claim. (Br. 2.)
2 Luther et al., US 5,980,872, issued Nov. 9, 1999 ("Luther").
3 Ehlis et al., US 2004/0191191 Al, published Sept. 30, 2004 ("Ehlis").
4 Haase et al., WO 2004/052837 A2, published June 24, 2004 ("Haase").
5 Office Action dated Oct. 12, 2012.
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Appeal 2014-001112
Application 12/744,495
FINDfNGS OF FACT
We adopt the Examiner's findings and analysis concerning the scope
and content of the prior art. The following findings are included for
emphasis and reference convenience.
FF 1. The Examiner finds that Luther discloses "methods of preparing a
composition comprising a micronized insoluble organic UV absorber, the
method comprising grinding the insoluble organic UV absorber, in a coarse
particle form, in a grinding apparatus, in the presence of a grinding [aid]
such as surfactants." (Final Act. 3.)
FF 2. The Examiner finds that Ehlis discloses triazine derivatives for the
protection of skin against UV radiation, and specifically triazine derivatives
of claimed formula (2) as an example of effective UV absorbers used in
cosmetic compositions. (Id. at 4.) Appellants do not dispute this finding.
FF 3. Ehlis teaches that "a grinding-aid (surfactant, emulsifier) and a
polymeric grinding aid may be used" in preparing micronised triazine
derivatives. (Ehlis i-fi-136-39.)
FF 4. Ehlis teaches useful grinding aids as including emulsifiers and
surfactants "as disclosed below in the chapters 'emulsifiers' and
'surfactants."' (Id. i-f 45.)
FF 5. The chapter ofEhlis regarding emulsifiers teaches "[a]ny
conventionally usable emulsifier can be used for the compositions.
Emulsifier systems may comprise for example ... [ fJatty acid and
polyglycerol ester." (Id. i1241.)
FF 6. Ehlis teaches an example sunscreen that includes the emulsifier
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Application 12/744,495
Polyglyceryl-3 Methylglucose Distearate. 6 (Id. il 431.) Appellants do not
dispute this finding.
FF 7. The Specification identifies polyglyceryl-3 methylglucose distearate
as an ester of fatty acids and saccharose. (Spec. 8, 11. 23-24.)
FF 8. The Examiner finds that polyglyceryl-3 methylglucose distearate is a
polyglyceryl ester. (Ans. 5.)
FF 9. The Examiner finds that Haase discloses amino substituted
hydroxyphenyl benzophenone derivatives for the protection of skin against
UV radiation, including amino substituted hydroxyphenyl benzophenone
derivatives of claimed formula (7). (Final Act. 5.) Appellants do not
dispute this finding.
ISSUE
Whether a preponderance of evidence of record supports the
Examiner's conclusion of obviousness with respect to claim 1.
ANALYSIS
The Examiner concluded that it would have been obvious to one of
ordinary skill in the art to incorporate, via routine experimentation, a
grinding aid as disclosed in Ehlis, such as the emulsifier polyglyceryl-3
methylglucose distearate, in the process of micronization of organic UV
absorbers as taught in Luther. (Adv. Act. 2.)7 The Examiner also concluded
that a skilled artisan would have had a reasonable expectation the triazine
derivatives of Ehlis and the amino substituted hydroxyphenyl benzophenone
derivatives of Haase would be effective UV absorbers when incorporated
6 Polyglyceryl-3 Methylglucose Distearate is recited as a grinding aid at (b9)
of claim 1.
7 Office Action dated Feb. 26, 2013.
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Application 12/744,495
into the formulations of Luther. (Final Act. 5---6.)
We find that the Examiner has satisfied the burden of showing "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). Moreover, the Examiner has established a prima facie case of
obviousness and, as discussed below, Appellants have not overcome that
prima facie case.
Teachings of Luther
Appellants argue that Luther "teaches alkyl polyglucosides only and
in particular and does not equate surfactants in general with alkyl
polyglucosides." (Br. 6.) In support of that argument, Appellants refer to
the statement in Luther that "the insoluble organic UV absorbers, when
micronized with a particular type of surfactant, namely an alkyl
polyglucoside, provide high SPF values." (Id., citing Luther, col. 18, 11. 41-
44, Appellants' emphasis.) Thus, according to Appellants, nothing in Luther
would lead a person skilled in the art to assume that all surfactants are
equivalent, or would provide the same effect, such as high SPF. (Id. at 6-7.)
We are not persuaded by Appellants' arguments. Appellants are
reminded that one cannot show nonobviousness by attacking references
individually where the Examiner bases the rejection on a combination of
references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Furthermore, the test
for obviousness is what the combined teachings of Luther, Ehlis, and Haase
would have suggested to those of ordinary skill in the art. See Keller, 642
F.2d at 425 (citing cases).
We note that Luther also discloses zirconium silicate as a "grinding
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Application 12/744,495
aid[]" and that its teaching regarding grinding aids is thus not limited to only
the use of an alkyl polyglucoside. (Luther, col. 20, 11. 45--46.) Moreover,
Ehlis clearly teaches that many different polymers, emulsifiers, surfactants,
and fatty acids can be used as grinding aids. (FF 3-5.) Thus, the combined
teachings of the prior art would lead a person skilled in the art to other
grinding aids for their desired effects.
Teachings of Ehlis
Appellants argue that the chapters that Ehlis refers to for grinding aids
"comprise a great many emulsifiers, surfactants and fatty alcohols." (Br. 7.)
Appellants also argue that the chapter regarding emulsifiers "lists hundreds
of different emulsifiers" and that not one of the surfactants is encompassed
by the present claim limitations. (Id.)
We are not persuaded. The fact that Ehlis discloses a number of
emulsifiers, surfactants, and fatty alcohols does not overcome a conclusion
of obviousness. See l'vferck & Co., Inc. v. Biocraft Labs, Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) ("That the [prior art] patent discloses a multitude of
effective combinations does not render any particular formulation less
obvious"). Moreover, a person skilled in the art would not interpret the
Ehlis chapter regarding emulsifiers to be limited to just those emulsifiers
listed because it clearly states that any conventionally usable emulsifier can
be used, and provides examples. (FF 5; Ehlis i-f 241.) Listed in those
examples is "polyglycerol ester" and polyglyceryl-3 methylglucose
distearate is a polyglycerol ester. (FF 8; Ehlis i-f 241.)
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Appeal 2014-001112
Application 12/744,495
Polyglyceryl-3 Methylglucose Distearate
Appellants argue that, in the example sunscreen taught by Ehlis, "[t]he
function of the polyglyceryl-3-methylglucose distearate is as a typical
emulsifier" and there is no teaching of its use as a grinding aid. (Br. 8.)
Furthermore, Appellants argue that Ehlis does not suggest such use as a
grinding aid since "this particular emulsifier is not listed in the grouping of
emulsifiers referenced by Ehlis ... as possible grinding aids." (Id.)
Appellants also argue that there "would be no expectation that use of
polyglyceryl 3-methylglucose distearate as a grinding aid would preserve"
the properties taught by Luther. (Id.)
We are not persuaded by Appellants' arguments. "A person of
ordinary skill is also a person of ordinary creativity, not an automaton."
KSR, 550 U.S. at 421. A person of ordinary skill would not look only to the
emulsifiers listed in paragraph 241 of Ehlis as grinding aids because ( 1)
paragraph 241 suggests the use of emulsifiers other than those listed, (2)
paragraph 241 also specifically references "polyglycerol ester," and (3)
polyglyceryl-3 methylglucose distearate is an emulsifier and a polyglycerol
ester, and is expressly disclosed in Ehlis. (FF 4--6, 8.) Moreover, we are not
persuaded by Appellants' argument that there "would be no expectation that
use of polyglyceryl 3-methylglucose distearate as a grinding aid would
preserve" the properties taught by Luther. The point is that a person of
ordinary skill in the art would have a reasonable expectation of success in
practicing the claimed method of preparing a composition. See, e.g., Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007) ("obviousness
cannot be avoided simply by a showing of some degree of unpredictability
in the art so long as there was a reasonable probability of success").
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Application 12/744,495
Extinction Coej)7cients
Appellants state in one sentence that the particular grinding agents
used in combination with formula (7) "maintain very high extinction
coefficients, an important attribute of the micronized insoluble UV
absorber." (Br. 8.) Although Appellants cite "dispersion 20-37" after that
sentence, they do not explain the nature or significance of this alleged
attribute, and make no substantive argument with respect thereto. Moreover,
we are not persuaded by this statement because the claimed invention is
suggested by the prior art, and the mere recognition of latent properties in
the prior art does not render nonobvious an otherwise known invention. See
In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (citing
cases).
CONCLUSION OF LAW
A preponderance of evidence of record supports the Examiner's
conclusion that claim 1 is obvious under 35 U.S.C. § 103(a). Claims 4, 5, 7,
and 14--22 were not argued separately and fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection of all claims on appeal.
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
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