Ex Parte Ansmann et al

Patent Trial and Appeal Board

Mar 29, 2017

12518208 (P.T.A.B. Mar. 29, 2017)

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.
12/518,208 05/17/2010 Achim Ansmann CC00003137U SOI 3021
(CGG0109)
23657 7590 03/31/2017
SFRVTT T A WHTTNFY T T ClR ASF
EXAMINER
33 WOOD AVE SOUTH OTTON, ALICIA L
SUITE 830
ISELIN, NJ 08830 ART UNIT PAPER NUMBER
1626
NOTIFICATION DATE DELIVERY MODE
03/31/2017 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):
docket @ dsiplaw. com
spedersen@dsiplaw.com
j escobar @ dsiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ACHIM ANSMANN, BERND BOUTTY, MARKUS DIERKER,
STEFAN BRUNING, and ROLF KAWA
Appeal 2016-003538
Application 12/518,20s1
Technology Center 1600
Before MELANIE L. McCOLLUM, ULRIKE W. JENKS, and DAVID
COTTA, Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a dialkyl
carbonate. The Examiner rejected the claims on appeal as obvious under
35 U.S.C. § 103(a).
We affirm.
1 According to Appellants, the real parties in interest are Cognis IP
Management GmbH and BASF SE. App. Br. 3.
Appeal 2016-003538
Application 12/518,208
STATEMENT OF THE CASE
Claims 1 and 11 are on appeal. Claim 1, the only independent claim,
is illustrative and reads as follows:
1. A dialkyl carbonate of the formula (I)
R'o-co-or m
wherein
R1 is a 2-propyl-1-heptyl group and R2 is 2-propyl-1-
heptyl.
App. Br. 14.
The Examiner rejected claims 1 and 11 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Elliott2 and Hauser.3
FINDINGS OF FACT
1. Elliott discloses: “cosmetic compositions according to [its]
invention comprise a shine agent having the formula R—X—R’, wherein R
and R’ are C6-C10 alkyl groups and X is an oxygen atom or a carbonate
group, i.e. a group having the structure:”
o
G G
Elliott 118.
2. Elliott discloses:
Preferably, X is a carbonate group.
R may be identical to or different from R’. Preferably, R
and R’ are, independently, straight or branched chain C1-C9.
Preferably, both R and R’ are Cs alkyl groups.
2 Elliott et al., US Patent Publication No. 2005/0281770 Al, published Dec.
22, 2005 (“Elliott”).
3 Hauser et al., WO 2005/074864 Al, published Aug. 18, 2005 (“Hauser”).
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Application 12/518,208
Highly advantageously, both R and R’ are 2-ethyl-hexyl
groups and X is a carbonate group.
Id. at 1119-21.
3. Elliott discloses:
Shine agents of the defined type have the advantage of
being sufficiently non-volatile to remain on skin at low
viscosities and of being highly spreadable. This combination of
low viscosity and high spreadability allows these materials
readily to form an even film, which provides not only improved
shine benefits, but also much improved feel in comparison with
currently employed shine agents.
Id. at 122.
4. Elliott claims a composition where R is identical to R’ and a
composition where R and R’ comprise “straight or branched chain alkyl
groups.” Id. at claims 2 and 6.
5. Hauser discloses:
Particular embodiments of [its] invention are products
with a wax dispersion having wax particles comprising a
combination of wax components selected from dialkyl(ene),
ethers, dialkyl(ene) carbonates, dicarbonic acids or hydroxy fatty
alcohols and any mixtures thereof. These particular wax
dispersions have excellent sensorial properties, good caring
properties and are characterized by their less ‘heavy’ and less
greasy and dry skin feel.
Hauser p. 5,11. 24—29.
6. As noted by the Examiner, each branch of each secondary alkyl
chain [of Elliott’s preferred compound, di-(2-ethyl-hexyl) carbonate,] differs
from the instantly claimed compound in only a single CH2 group.” Ans. 11.
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Appeal 2016-003538
Application 12/518,208
ANALYSIS
Appellants argue claims 1 and 11 together as a group. We designate
claim 1 as representative for the group.
The Examiner found that Elliot taught a genus of “cosmetic
compositions comprising a shine agent having the formula R-X-R’ as one of
the components, where R and R’ are C6-C10 alkyl groups and X is an
oxygen atom or a carbonate group.” Ans. 4. The Examiner found that the
claimed compound was encompassed within this genus {id. at 5), but
acknowledged that the claimed species was not explicitly taught. Id. at 9.
The Examiner noted, however, that Elliot taught that X is preferably a
carbonate group, that R and R’ may be identical, and that R and R’ may be
either linear or branched. Id. at 4.
Given that the prior art “disclosed a narrow range of only C6—CIO
alkyl,” that the claimed compound and Elliott’s preferred embodiment were
“members of the same homologous series,” and the “expectation that
structurally similar compounds would possess similar activity,” the
Examiner concluded that the claimed compound would have been obvious.
Id. at 5—6 (noting that homologs “are generally of sufficiently close
structural similarity that there is a presumed expectation that such
compounds possess similar properties.”). The Examiner found that the
motivation to make the claimed compound was furthered by Hauser’s
teaching that dialkyl(ene) carbonates have “excellent sensorial properties,
good caring properties and are characterized by their less ‘heavy’ and less
greasy and dry skin feel.” Id. at 7; FF5.
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 3—18; Final Act. 2—13) and agree
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Application 12/518,208
that the claims are obvious over Elliott and Hauser. We address Appellants’
arguments below.
Appellants argue that Elliott does not specifically disclose the claimed
di-(2-propyl-l-heptyl) carbonate and that Elliott’s preferred ranges of carbon
atoms (7—9, with 8 being particularly preferred), do not encompass the
claimed compound. App. Br. 8. Appellants contend “even within C6-C10
alkyl groups, there are many possible groups with varying branching, and []
one would have to select Appellants’ claimed branched alkyl groups, and
select having the same substituents on either side of the molecule to arrive at
the claimed invention.” Reply Br. 2. Appellants also argue that neither
Elliott nor Hauser shows alkyl chain length to be a variable which can be
optimized. App. Br. 9. We are not persuaded.
The number of compounds encompassed with Elliott’s genus of
“shine agents” C6-C10 is finite and limited to alkyl groups. FF1. Elliott
suggests that compounds within this genus of shine agents share similar
advantageous properties. FFlandFF3. Further, the claimed compound and
Elliott’s preferred shine agent are homologs, differing only in the presence
of a single CH2 group in each branch of the alkyl chains. FF6. A person of
ordinary skill in the art would thus reasonably have expected that
structurally similar compounds within the genus of shine agents defined by
Elliott, including the claimed homolog, would share similar advantageous
properties. This expectation is furthered by Hauser’s teaching that
“dialkyl(ene) carbonates . . . have excellent sensorial properties, good caring
properties and are characterized by their less ‘heavy’ and less greasy and dry
skin feel.” FF5.
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Accordingly, the preponderance of the evidence supports the
Examiner’s finding that “the instantly claimed compounds would have been
suggested to one skilled in the art.” Ans. 7; see In re Dillon, 919 F.2d 688,
693 (Fed. Cir. 1990) (“ structural similarity between claimed and prior art
subject matter, proved by combining references or otherwise, where the
prior art gives reason or motivation to make the claimed compositions,
creates a prima facie case of obviousness”); In re Payne, 606 F,2d 303, 314
(C.C.P.A. 1979) (“the similarity in chemical structures and properties
between the prior art: and claimed compounds is sufficiently close to support
a prima facie case of obviousness”); see also In re Shetty, 566 F.2d 82, 85—
86 (CCPA 1977) (finding claim that differed from the prior art by “a mere
methylene group” obvious, explaining, “we think that a person skilled in
chemical and/or pharmaceutical arts would not hesitate to extend the
alkylene linkage of the prior art compound”).
Relying on two declarations submitted by co-inventor, Dr. Markus
Dierker, Appellants argue that the claimed di-(2-propyl-l-heptyl) carbonate
shows unexpected results as compared to the di-(2-ethyl-hexyl) carbonate
exemplified in Elliott. App. Br. 10—12. The First Dierker Declaration4
states that when the claimed compound was tested “using an epicutaneous
24 hour patch test (05-ECT) according to standard protocol-V06,” the skin
irritation score for the claimed di-(2-propyl-l-heptyl) carbonate was 0.10
while the skin irritation score of the Elliott’s di-(2-ethyl-hexyl) carbonate
was 0.38. First Dierker Decl. 1 9. Appellants assert that this data shows
“that the [] properties of di-(2-propyl-l-heptyl) carbonate are unexpectedly
4 Declaration Under 37 C.F.R. § 1.132 of Markus Dierker, Ph.D., submitted
May 16, 2013 (“the First Dierker Declaration”).
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superior to those of di-(2-ethyl-hexyl) carbonate.” App. Br. 11 (citing First
Dierker Decl. 111). We are not persuaded.
As an initial matter, we agree with the Examiner that Appellants have
not provided sufficient information about how the data relied upon to show
unexpected results was generated. The First Dierker Declaration states that
skin tolerance was tested “using an epicutaneous 24 hour patch test (05-
ECT) according to standard protocol-V06,” but does not provide the
referenced protocol and does not describe the testing in any detail. First
Dierker Decl. 19. The Second Dierker Declaration5 states that testing was
conducted by an “objective third party institution” with the goal of
“determin[ing] the level of primary skin irritation caused by a single
application of a given test material for a period of 24 hours.” Second
Dierker Decl. | 6. It further states that “Assignment of test areas was
randomization:cyclic permutation” and that “the lead investigator was a
dermatologist, who conducted the study on a significantly statistical number
of human subjects using the main principals of Good Clinical Practices
(GCP).” Id. The information provided in the Dierker Declarations is not
sufficient to enable us to evaluate the significance of the data reported. As
the Examiner explained:
There is no clear description in the Declaration as to how the
score is calculated. How is a numerical score determined? Is the
determination made purely objectively, or is there a subjective
consideration from the human volunteers involved? . . . Were
the same areas of skin tested on each participant? Were the
same number of trials conducted for each compound? Were the
tested compositions identical except for the identity of the
carbonate present? There are a great number of variables in any
5 Second Declaration Under 37 C.F.R. § 1.132 of Markus Dierker, Ph.D.,
submitted February 26, 2013 (“the Second Dierker Declaration”).
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human study and without a detailed description of the
conditions of the study and an explanation of the manner in
which the reported score was calculated, it is impossible to
objectively consider the significance of the data reported as
“irritation score.”
Ans. 15—16.
In addition, Appellants fail to provide sufficient context from which to
evaluate the degree of improvement provided by the claimed composition
over the prior art. Put another way, the evidence of record does not allow us
to determine whether the 0.28 difference between the scores of the claimed
and prior art compounds would result in a meaningful difference in
properties. Dr. Dierker testifies that an irritation score of 3.71 (the score for
sodium lauryl ether sulfate) is considered “very irritating” while a score of
0.14 (the score for water) is considered “non-irritating.” Second Direker
Decl. 17. However, this does not establish that the difference between
scores of 0.10 and 0.38 — both scores at the lower end of the contextual
range provided by Dr. Dierker — amounts to a difference in kind rather than
degree. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (a “32—43%
increase in stress-rupture life, however, does not represent a ‘difference in
kind’ that is required to show unexpected results.”). The irritation scores of
the claimed and the prior art compounds are both an order of magnitude less
than “very irritating” sodium lauryl ether sulfate. It may well be that both
the claimed and the prior art compounds would be considered similarly mild
for purposes of cosmetic formulation. Conversely, it may be that Elliott’s
composition would be considered significantly more irritating for purposes
of cosmetic formulation. On this record we cannot determine how
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Application 12/518,208
significantly the irritation properties of the claimed and prior art
compositions differ.
Accordingly, we affirm the Examiner’s decision to reject claim 1
under 35 U.S.C. § 103(a) as unpatentable over the combination of Elliott and
Hauser. Because it was not argued separately, claim 11 falls with claim 1.
SUMMARY
For these reasons and those set forth in the Examiner’s Answer and
the Final Office Action, the Examiner's decision to reject claims 1 and 11 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1).
AFFIRMED
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