Ex Parte Mongiat et alDownload PDFPatent Trial and Appeal BoardMar 30, 201612744495 (P.T.A.B. Mar. 30, 2016) Copy Citation 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; 2 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. 3 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 4 Appeal 2014-001112 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. 5 Appeal 2014-001112 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 6 Appeal 2014-001112 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.) 7 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"). 8 Appeal 2014-001112 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 9 Copy with citationCopy as parenthetical citation