Karl Kolter et al.

Patent Trials and Appeals Board

Nov 4, 2019

13919092 - (D) (P.T.A.B. Nov. 4, 2019)

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.
13/919,092 06/17/2013 Karl Kolter 29827/73103 4196
4743 7590 11/04/2019
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
EXAMINER
ROSENTHAL, ANDREW S
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
11/04/2019 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 KARL KOLTER, MAXIMILIAN ANGEL, MATTHIAS KARL,
SILKE GEBERT, and MICHAEL KLEMENS MŰLLER

Appeal 2018-000219
Application 13/919,092
Technology Center 1600
Before ERIC B. GRIMES, TAWEN CHANG and
JOHN E. SCHNEIDER, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–6, 17, and 18. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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
(BASF), Ludwigshafen, Germany. Appeal Br. 3.
Appeal 2018-000219
Application 13/919,092
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BACKGROUND

CLAIMED SUBJECT MATTER
The claims are directed to a solid dispersion. Claim 1 is illustrative:
1. A solid dispersion comprising a hydrophobic
active ingredient and an antioxidant embedded in a polymer
matrix that comprises a cationic copolymer of N,N-
diethylaminoethyl methacrylate and methyl methacrylate in a
weight ratio of the monomers of from 35:65 to 55:45, wherein
the solid dispersion comprises 10 to 50% by weight of the
hydrophobic active ingredient and the hydrophobic active
ingredient is not an antioxidant and wherein the hydrophobic
active ingredient is present in amorphous form, is embedded in
the polymer matrix in microdisperse or molecular disperse
form, and is a biologically active ingredient selected from the
group consisting of pharmaceutical active ingredients for
humans and animals for orally administrable formulations.
Appeal Br. A-1 (Claims App.).
REJECTION(S)
A. Claims 1, 2, 4–6, 17, and 18 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the Kollicoat® Presentation2 and

2 BASF, Kollicoat® Smartseal 30D: The First Aqueous Polymer Dispersion
for Taste Masking & Moisture Protection (Oct. 2010) (“Kollicoat®
Presentation”).
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Application 13/919,092
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Papageorgiou,3 as evidenced by the definition of alkannin in
Dictionary.com.4 Ans. 2.
B. Claims 1, 2, 4–6, 17, and 18 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Angel5 and Löbmann.6 Ans. 2.

DISCUSSION
A. Obviousness over the Kollicoat® Presentation and Papageorgiou,
as evidenced by the definition of alkannin in Dictionary.com
(Claims 1, 2, 4–6, 17, and 18)
1. Issue
The Examiner finds that the Kollicoat® Presentation teaches a
composition comprising a caffeine core and a spray dried coating, wherein
the coating comprises Kollicoat® Smartseal 30D, which reads on the
copolymer of the invention. Final Act. 4–5.
With respect to the limitations relating to “[a] solid dispersion”
wherein the active ingredient is “embedded in the polymer matrix in
microdisperse or molecular disperse form,” the Examiner finds that the
Kollicoat® Presentation teaches that its composition is prepared as a liquid
suspension comprising the polymer and other agents and finds that,

3 Vassilios P. Papageorgiou et al., The Chemistry and Biology of Alkannin,
Shikonin, and Related NAphthazarin Natural Products, 38 ANGEWANDTE
CHEMIE INT’L EDITION 270 (1999).
4 “Alkannin.” Dictionary.com, https://www.dictionary.com/browse/alkannin
(last visited Oct. 23, 2019) (defining alkannin as “a dark red, amorphous,
water-insoluble powder, C16H16O5, obtained from the root of the alkanet:
used chiefly for coloring fats, oils, and phamaceuticals”).
5 Angel et al., US 2011/0033532 A1, published Feb. 10, 2011.
6 Korbinian Löbmann et al., Coamorphous Drug Systems: Enhanced
Physical Stability and Dissolution Rate of Indomethacin and Naproxen, 8
MOLECULAR PHARMACEUTICS 1919 (2011).
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[b]ecause all the agents are combined and dispersed in a liquid
solvent prior to drying, it can be assumed that the polymer and
the other active agents are homogenously dispersed. Once
sprayed, the composition is dried as a film, which is implied as
being a solid composition, wherein the actives are
homogenously mixed (i.e. embedded) into the polymer. . . .
No alternative or special definition of “embedded” is
provide[d], thus the Examiner is interpreting simply mixing the
polymer matrix and the active agent will result in an embedded
mixture wherein the active agent is microdisperse or
molecularly dispersed. Moreover, it can be presumed that all
phases of the composition are solid, once dried, as required in
the definition of a solid dispersion in the instant specification.
Finally, the composition of [the Kollicoat® Presentation] is a
coating applied as a dried film as a sprayed suspension . . . .
The instant specification defines “solid dispersion” and teaches
preparing films prepared by spray-drying compositions as
suitable embodiments.
Final Act. 5 (citations omitted).
The Examiner finds that the Kollicoat® Presentation does not teach a
non-antioxidant hydrophobic active agent. Final Act. 6. However, the
Examiner finds that the Kollicoat® Presentation teaches that its composition
may comprise 0–50% pigments and 2–10% colorants. Id. at 5. The
Examiner finds that Papageorgiou teaches that alkannin is a pigment for
food colorings and cosmetics that is not toxic when administered orally and
that has also been shown to have “significant anti-tumor, antibacterial, and
anti-inflammatory activities.” Id. at 6. The Examiner finds that
dictionary.com defines alkannin as “an amorphous water-insoluble (aka
hydrophobic) powder obtained from the root of alkanet.” Id.
The Examiner concludes that
[i]t would have been prima facie obvious to have made the
coating composition of [the Kollicoat® Presentation] as a solid
dispersion and adjusted . . . the amount of pigment in the range
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Application 13/919,092
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of 0–50%, which overlaps with the claimed range of 20–50% of
active agent. . . . Since [the Kollicoat® Presentation] allows for
any pigment to be used, the skilled artisan would have found it
obvious to look to Papageorgiou, which teaches alkannin as a
pigment useful in cosmetic compositions. The resulting
composition would comprise alkannin in 0–50%, addressing
instant claims 1–6 and 17–18.
Id.
Appellant contends that the Kollicoat® Presentation “fails to teach or
suggest a solid dispersion of an amorphous, hydrophobic active ingredient
embedded in a polymer matrix in microdisperse or micromolecular form,” as
required by independent claim 1. Id. at 14, 18.
In particular, Appellant contends that “[t]he core/coating disclosed in
[the Kollicoat® Presentation] is substantially different from the presently
claimed solid dispersion wherein the hydrophobic active ingredient is
embedded in the polymer matrix in a microdisperse form or a molecular
disperse form.” Appeal Br. 13. Appellant contends that the coating
composition of the Kollicoat® Presentation is a dried suspension rather than
a solid dispersion. Id. at 16. Appellant also contends that caffeine, the
active ingredient in the composition described in the Kollicoat®
Presentation, is neither hydrophobic nor in amorphous form. Id. at 13.
Appellant further contends that “[a] skilled person would not consider
solubilizing a pharmaceutically active ingredient” based on the teachings of
the Kollicoat® Presentation. Id. at 14.
With respect to the Examiner’s assertion that alkannin, a pigment, is
also a “pharmaceutical active ingredient,” Appellant contends that dyes are
not pharmaceutically active ingredients within the meaning of the claims.
Id. at 15. Appellant contends that Papageorgiou discloses wound-healing
and anti-inflammatory effects of alkannin solely for ointments and does not
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suggest that alkannin has any antitumor, antimicrobial, or antithrombotic
activities. Id. at 11, 16–17. Appellant contends that alkannin is not
necessarily in an amorphous form. Id. at 17. Appellant contends that a
skilled artisan would not consider a cosmetic pigment such as alkannin to be
an orally administrable drug, particularly because alkannin has toxic effects.
Id. at 18.
Appellant further contends that a skilled artisan has no reason to
combine, or a reasonable expectation of success in combining, the
Kollicoat® Presentation with Papageorgiou to arrive at the claimed
invention. Id. at 18–19.
Finally, Appellant contends that the claimed subject matter exhibits
unexpected results. Id. at 19–20.
The issue with respect to this rejection is whether a skilled artisan
would have had reason to combine the teachings of the Kollicoat®
Presentation and Papageorgiou to arrive at the claimed invention.
2. Analysis
On balance, we find Appellant to have the better case.
Kollicoat® Smartseal 30D is a “30% aqueous dispersion” of a 6:4
methyl methacrylate — diethylaminoethyl methacrylate copolymer, which
meets the polymer matrix limitation of claim 1, the only independent claim.
Kollicoat® Presentation 5–6. However, as the Examiner acknowledges, the
Kollicoat® Presentation does not suggest embedding in the polymer matrix
a non-antioxidant, hydrophobic, and orally administrable “pharmaceutical
active ingredient[] for humans and animals,” as recited in claim 1. Final
Act. 6.
As discussed above, the Examiner argues that these limitations are
nevertheless met because the Kollicoat® Presentation also recommends that
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Application 13/919,092
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Kollicoat® Smartseal 30D be formulated with pigments such as talc, and
Papageorgiou teaches that alkannin, a pigment which is used for food
coloring, is also pharmaceutically active. Final Act. 5–6. The Examiner
asserts that such use of alkannin would have been obvious since the
Kollicoat® Presentation does not limit the pigments that may be used in the
formulation of Kollicoat® Smartseal 30D and Papageorgiou teaches that
alkannin is useful as a pigment.
We are not persuaded because the Examiner has not sufficiently
articulated a reason for a skilled artisan to use alkannin as the pigment in
Kollicoat® Smartseal 30D. In particular, the Examiner has not cited
persuasive evidence that all pigments are functionally equivalent for the
purposes of their usefulness in Kollicoat® Smartseal 30D. For instance, the
Kollicoat® Presentation explains that pigments are particularly important for
moisture barrier formulations and that talc shows the best results.
Kollicoat® Presentation 12. The Examiner has not cited evidence that
alkannin is functionally equivalent to talc as a moisture barrier.7
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of

7 In response to the Appeal Brief, the Examiner states that the Kollicoat®
Presentation teaches that its coating composition “may further comprise
coloring agents such as titanium dioxide, which is known as being a
hydrophobic active agent.” (Ans. 3.) We are not persuaded. As an initial
matter, the Examiner does not cite, and we have not been able to locate,
where the Kollicoat® Presentation teaches inclusion of titanium dioxide as a
coloring agent. More importantly, the Examiner has not cited evidence that
titanium dioxide is a “pharmaceutical active ingredient[] for humans and
animals for orally administrable formulations,” as required by claim 1.
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Application 13/919,092
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obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Accordingly, we
reverse the Examiner’s rejection of claims 1, 2, 4–6, 17, and 18 as obvious
over the combination of the Kollicoat® Presentation and Papageorgiou in
view of the definition of alkannin set forth in Dictionary.com.

B. Obviousness over Angel and Löbmann (Claims 1, 2, 4–6, 17, and
18)
1. Issue
The Examiner finds that Angel teaches a composition formulated as a
mixture of polymer dispersion and excipient in powder form. Final Act. 13.
The Examiner finds that the polymer of Angel’s composition comprises the
claimed ingredients in a weight ratio that overlaps the claimed ranges. Id.
The Examiner finds that Angel teaches that “[t]he polymeric dispersion has a
solids content . . . of 10–50% by weight of the total composition” and can
comprise at least one pharmaceutically acceptable active ingredient,
including hydrophobic active agents that may be administered orally, as
required by claim 1. Id. at 13–14.
With respect to the limitation that the composition be a solid
dispersion wherein the hydrophobic active ingredient is “present in
amorphous form” and “embedded in the polymer matrix in microdisperse or
molecular disperse form,” the Examiner finds that “simply mixing the
polymer matrix and the active agent will result in an embedded mixture
wherein the active agent is microdisperse or molecularly dispersed.” Id. at
14. The Examiner further finds that
it can be presumed that all phases of the composition are solid,
once dried, as required in the definition of a solid dispersion in
the instant specification. The instant specification . . . teaches
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Application 13/919,092
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preparing films prepared by spray-drying compositions as
suitable embodiments. Angel teaches that the polymer
dispersion of their invention can be “intimately mixed” for
making a coating composition. The coating composition,
which comprises the polymer dispersion, active agent, and
excipient, can be dried into a film by use of heat. Thus, it can be
at once envisaged that the intimate mixing of the dispersion
with the active followed by heating to dry results in the active
embedding in the polymer and the overall composition being a
solid dispersion.
Id. (citations omitted).
The Examiner finds that Angel does not teach the active agent being
amorphous. Id. at 15. However, the Examiner finds that Löbmann teaches
converting a crystalline drug into an amorphous form in order to increase its
solubility. Id.
The Examiner concludes that a skilled artisan would have found it
obvious to combine the various elements in Angel discussed above because
such combination is no more than “the predictable use of prior art elements
according to their established functions.” Id. at 16. The Examiner further
concludes that a skilled artisan would have found it obvious to use an
amorphous form of the active agent in the combination because Löbmann
teaches that “converting a crystalline agent to an amorphous one increases
dissolution and solubility of said agents.” Id.
Appellant contends that, like the Kollicoat® Presentation, Angel
“merely discloses a polymeric shell surrounding a drug core” and “does not
teach or suggest embedding a hydrophobic active ingredient and an
antioxidant in [the] polymer matrix, let alone in an amorphous form and in a
microdisperse or molecular disperse form.” Appeal Br. 23. Appellant
contends that a skilled artisan would not have had reason to “select[] a
claimed pharmaceutical active from the extensive list of . . . pharmaceutical
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agents disclosed” in Angel and then to modify Angel to arrive at the claimed
invention, with a reasonable expectation of success. Id. at 25.
Appellant contends that a skilled artisan would have had no reason to
combine Angel with Löbmann, because Angel is “directed solely to the
coating for a drug core.” Id. at 26. Appellant contends that, in any event,
Löbmann fails to cure the deficiencies of Angel because Löbmann teaches
“a coamorphous formulation in which a polymer is eliminated” in order to
“overcome the disadvantages of a polymer-stabilized amorphous drug
form.” Id. at 25. Appellant contends that, based on Löbmann, a skilled
artisan “would have had no apparent reason to consider stabilizing an
amorphous drug with a polymer,” because “Löbmann discourages the use of
a polymer as a stabilizer for amorphous drugs.” Id.
Finally, Appellant contends that the Examiner’s rejection is based on
impermissible hindsight and that the subject matter of the invention exhibits
unexpected results. Id. at 26.
The issue with respect to this rejection is whether a skilled artisan
would have had reason to combine the teachings of Angel and Löbmann to
arrive at the claimed invention.
2. Analysis
On balance, we find Appellant to have the better argument.
The Examiner asserts that Angel teaches a composition comprising a
polymer dispersion that meets the copolymer limitation of claim 1,
excipients such as antioxidants and pigments, and pharmaceutical active
ingredient. Final Act. 13–14. The Examiner asserts that, “under the
broadest reasonable interpretation of the prior art, the composition may be
blended together as required in the instant claims.” Id. at 17.
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Application 13/919,092
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We are not persuaded. We agree that Angel teaches a composition
comprising a hydrophobic active ingredient, a copolymer of N,N-
diethylaminoethyl methacrylate and methyl methacrylate, and antioxidant, as
recited in claim 1. See, e.g., Angel ¶¶ 42–49 (teaching a polymer dispersion
comprising N,N-diethylaminoethyl methacrylate and methyl methacrylate
wherein the N,N-diethylaminoethyl methacrylate is preferably in an amount
from 25–65% by weight and methyl methacrylate is preferably in an amount
from 35–75% by weight), ¶¶ 98, 137, and 213 (possible to add conventional
excipients and additives to the polymer dispersion, including, e.g.,
antioxidants), ¶¶ 185–188, 192 and claim 63 (describing pharmaceutical
composition comprising a polymer composition obtainable by drying and/or
forming a film of the polymer dispersion, a pharmaceutically acceptable
active ingredient, and a pharmaceutically acceptable excipient, and listing
examples of suitable active ingredients).
Nevertheless, the Examiner has not articulated a persuasive reason
why a skilled artisan would have combined these components in the
particular manner recited in claim 1, the only independent claim, i.e., where
the hydrophobic active ingredient is embedded in the polymer matrix.
The Examiner asserts that a skilled artisan would have found it
obvious to combine the various teachings of Angel in the manner of claim 1
because such combination is no more than “the predictable use of prior art
elements according to their established functions.” Final Act. 16. However,
the Examiner has cited to no persuasive evidence that embedding a
pharmaceutical active ingredients in a polymer matrix to form a solid
dispersion is a predictable use of these prior art elements.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
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Application 13/919,092
12
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Accordingly, we
reverse the Examiner’s rejection of claims 1, 2, 4–6, 17, and 18 as obvious
over the combination of Angel and Löbmann.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–6, 17,
18
103(a) Kollicoat®
Presentation,
Papageorgiou,
definition of
alkannin from
Dictionary.com
1, 2, 4–6, 17,
18
1, 2, 4–6, 17,
18
103(a) Angel, Löbmann 1, 2, 4–6, 17,
18
Overall
Outcome

1, 2, 4–6, 17,
18

REVERSED