ARKEMA FRANCE

Patent Trials and Appeals Board

Aug 19, 2020

2020000348 (P.T.A.B. Aug. 19, 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.
15/034,698 05/05/2016 Jean-Marc Boutillier EANF-250US 4194
23122 7590 08/19/2020
RATNERPRESTIA
2200 Renaissance Blvd
Suite 350
King of Prussia, PA 19406
EXAMINER
FALKOWITZ, ANNA R
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
08/19/2020 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):
PCorrespondence@ratnerprestia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JEAN-MARC BOUTILLIER and SYLVAIN BOURRIGAUD
__________

Appeal 2020-000348
Application 15/034,698
Technology Center 1600
__________

Before ERIC B. GRIMES, FRANCISCO C. PRATS, and
LILAN REN, Administrative Patent Judges.

PRATS, 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, 3–10, 13, 14, and 16–21. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

STATEMENT OF THE CASE
The sole rejection before us for review is the Examiner’s rejection of
claims 1, 3–10, 13, 14, and 16–21 under 35 U.S.C § 103 as being

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Arkema France as the real party in
interest. Appeal Br. 1.
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unpatentable over Galleguillos,2 Trinh,3 Steinwall,4 and Polymerdatabase.5
Final Act. 2–10 (entered October 19, 2018).6
Appellant’s claim 1, the sole independent claim on appeal, and its
dependent claims 4 and 5, reproduced below, illustrate the appealed subject
matter:
1. A composition, comprising:
- an elastomeric phase of macromolecular sequences
having a flexible nature with a glass transition
temperature of less than 20°C, wherein the elastomeric
phase of macromolecular sequences is formed from
blocks of a block copolymer which is amorphous; and
- at least one active ingredient as odoriferous active
compound which is an organic molecule having a
molecular weight of at least 16g/mol and an odour
threshold value in air of at least 0.5 ppb,
wherein the block copolymer has a water solubility of
less than 0.5 g/l.
4. A composition according to claim 1, wherein said
elastomeric phase of macromolecular sequences is
formed from blocks of an acrylic block copolymer.
5. A composition according to claim 4, wherein said acrylic
block copolymer has a general formula (A)nB in which:
• n is an integer of greater than or equal to 1,

2 WO 00/40628 A1 (published July 13, 2000).
3 US 5,849,310 (issued Dec. 15, 1998).
4 http://www.steinwall.com/wp-content/uploads/2016/05/Polymethyl-
methacrylate-PMMA.pdf (citation provided by the Examiner).
5 http://polymerdatabase.com/polymer%20physics/Polymer%20Density.html
(accessed Oct. 13, 2017).
6 The Final Action lists claim 2 among the rejected claims. Final Act. 2.
Claim 2 has been canceled, however. See Appeal Br. 7.
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• A is: an acrylic or methacrylic homo- or
copolymer having a Tg of greater than 50°C, or
polystyrene, or an acrylic/styrene or
methacrylic/styrene copolymer;
• B is an acrylic or methacrylic homo- or copolymer
having a Tg of less than 20°C.
Appeal Br. 7 (emphasis added to claimed feature at issue).
DISCUSSION
The Examiner cited Galleguillos as describing a block copolymer
composition having all of the features of the rejected claims, except for an
odoriferous compound having the properties recited in claim 1. Final Act. 4.
The Examiner cited Trinh as evidence that it would have been obvious to
include an odoriferous compound encompassed by claim 1 in Galleguillos’s
composition. Id. at 4–5. The Examiner cited Steinwall and
Polymerdatabase as evidence that the block polymers disclosed in
Galleguillos are inherently amorphous (i.e., not crystalline), as required by
dependent claim 3. See id. at 5.
As to the disputed limitation, the requirement in Appellant’s claim 1
for the block copolymer to have a water solubility of less than 0.5 g/l, the
Examiner reasoned that because Galleguillos discloses that its compositions
may contain block copolymers composed of acrylic and/or methacrylic
monomers recited in Appellant’s claims, in proportions recited in
Appellant’s claims, Galleguillos’s compositions must necessarily have the
claimed water solubility. See Final Act. 5–6 (“[I]f the prior art teaches the
identical chemical structure, the properties applicant discloses and/or claims
are necessarily present.” (citing In re Spada, 911 F.2d 705, 709 (Fed. Cir.
1990))); see also Ans. 6 (“As Galleguillos discloses an AB type copolymer
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that . . . can include the same monomers as instantly claimed, within the
same weight ranges as instantly claimed, therefore a polymer with instantly
claimed water solubility can be made from the disclosure of Galleguillos.”).
Appellant contends that, because Galleguillos repeatedly describes its
block copolymer compositions as being water soluble, the Examiner failed
to establish that Galleguillos’s compositions inherently meet claim 1’s
requirement for the block copolymer to have a water solubility of less than
0.5 g/l, as required by Appellant’s claim 1. Appeal Br. 2–5.
We agree with Appellant.
“Inherency is established in the context of obviousness when the
limitation at issue necessarily must be present, or [is] the natural result of the
combination of elements explicitly disclosed by the prior art.” Hospira, Inc.
v. Fresenius Kabi USA, LLC, 946 F.3d 1322, 1329 (Fed. Cir. 2020) (internal
quotations omitted).
“Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA
1981).
Rather, the “very essence of inherency is that one of ordinary skill in
the art would recognize that a reference unavoidably teaches the property in
question.” Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366,
1383 (Fed. Cir. 2009) (emphasis added).
In the present case, we are not persuaded that the Examiner has shown
that following the teachings in Galleguillos unavoidably results in a block
polymer with the low solubility of less than 0.5 g/l required by Appellant’s
claim 1. While it is undisputed on this record that Galleguillos describes
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preparing block copolymers composed of monomers encompassed by
Appellant’s claims, Galleguillos nonetheless repeatedly discloses that its
block copolymers, which are useful in hair styling compositions, are water
soluble:
[T]he copolymers of this invention are designed to provide long
lasting hair style retention at high humidity, natural feel, good
hair combing, reduced flaking, no build up, and good hair
styling and restyling. They are . . . water and alcohol soluble
or dispersible and washable with water and shampoo.
Galleguillos 7 (emphasis added); see also id. at 17 (“The exact ratio of the
monomers A and B is not critical to solubility. Copolymers with a high
proportion of the hydrophobic A-Block can be dissolved in water by
adjusting the pH.”); id. at 19–20 (“The copolymers can be dissolved in
water, water-ethanol or water-solvent mixtures by dispersing the copolymer
in the solvent and adjusting the pH with an organic or inorganic base
between pH3 and pH12. . . . Within this pH range, water clear solutions of
the copolymer can be prepared.”); id. at 30 (inclusion of allyl methacrylate
chain extender in block copolymer rendered block copolymer soluble in
water).
Because Galleguillos expressly discloses that its block copolymers are
water soluble, the Examiner does not persuade us that claim 1’s water
solubility of less than 0.5 g/l is an unavoidable or natural result of following
Galleguillos’s teachings. The fact that it might be possible to prepare a
block copolymer with a water solubility of less than 0.5 g/l by using the
monomers disclosed in the reference (see Ans. 6) does not establish that
Galleguillos inherently describes such a block copolymer. See Oelrich, 666
F.2d at 581 (“Inherency . . . may not be established by probabilities or
possibilities.”).
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Moreover, given Galleguillos’s teachings, noted above, that water
solubility is a desired property of its block copolymers, we are not persuaded
that the Examiner has explained sufficiently why Galleguillos would have
motivated a skilled artisan to prepare a block copolymer with a water
solubility of less than 0.5 g/l, for use in the hair styling applications taught in
the reference, much less combine such a block copolymer with one of
Trinh’s personal care fragrances, as posited in the rejection. See In re
Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (When evaluating
obviousness, it is “impermissible . . . to pick and choose from any one
reference only so much of it as will support a given position, to the exclusion
of other parts necessary to the full appreciation of what such reference fairly
suggests to one of ordinary skill in the art.”).
In sum, for the reasons discussed, we are not persuaded that the
Examiner has shown that following Galleguillos’s teachings inherently
results in a block copolymer with claim 1’s water solubility of less than 0.5
g/l, nor are we persuaded that the Examiner has explained sufficiently why
the cited references suggest combining a block copolymer having a water
solubility of less than 0.5 g/l with a fragrance encompassed by claim 1.
Accordingly, we reverse the Examiner’s obviousness rejection of claim 1,
and its dependent claims 3–10, 13, 14, and 16–21, over Galleguillos, Trinh,
Steinwall, and Polymerdatabase.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–10,
13, 14, 16–
21
103 Galleguillos, Trinh,
Steinwall,
Polymerdatabase
1, 3–10, 13,
14, 16–21

REVERSED