Ex Parte Behler et al

Patent Trial and Appeal Board

May 27, 2016

12937821 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/937,821 10/14/2010
23657 7590 06/01/2016
SERVILLA WHITNEY LLC/BASF
33 WOOD A VE SOUTH
SUITE 830
!SELIN, NJ 08830
FIRST NAMED INVENTOR
Ansgar Behler
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.
C3220PCT/US(CGG0167-00US) 5945
EXAMINER
BUNKER, AMY M
ART UNIT PAPER NUMBER
1639
NOTIFICATION DATE DELIVERY MODE
06/01/2016 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):
docket@dsiplaw.com
spedersen@dsiplaw.com
jescobar@dsiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANSGAR BEHLER, ACHIM ANSMANN, CATHERINE
WEICHOLD, FRANK CLASEN, ANJA WICK, EIKE ULF MAHNKE,
BJOERN KLOTZ, CARSTEN NEUMANN, MATTIAS HLOUCHA,
ROLF KAWA, and PETRA SCHULTE1
Appeal2014-005247
Application 12/93 7 ,821
Technology Center 1600
Before ERIC B. GRIMES, MELANIE L. McCOLLUM,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to mixtures
of alkyl polyglycosides, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the Real Party in Interest as Cognis IP Management
GmbH, which Appellants state was acquired by BASF SE. (Appeal Br. 3.)
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Application 12/93 7 ,821
STATEMENT OF THE CASE
"The invention is in the field of cosmetic and/or pharmaceutical
preparations and relates to alkyl and/or alkenyl ethers of alkyl and/or alkenyl
(poly)glycosides, mixtures thereof, and their use, in particular in
nanoemulsions." (Spec. 1, 11. 6-10.) According to the Specification, "[t]he
invention further relates to novel solubility promoters (solubilizers) with an
increased dissolving capacity." (Id. at 1, 11. 11-13.)
Claims 16, 18, 25, and 30-32 are on appeal. 2 Claim 16 is illustrative:
16. A nanoemulsion comprising:
( d) an aqueous phase,
( e) an oil phase, and
(f) at least one alkyl and/or alkenyl ether of alkyl and/or
alkenyl (poly)glycosides having formula (I-B):
(Cirn-R1)R2n (I-B)
wherein CJ is a sugar moiety having 5 or 6 carbon atoms,
R1 is C6-C22 alkyl and/or alkenyl bound via the sugar
acetal moiety,
R2 is Cl---C4 alkyl and/or alkenyl bound as a sugar ether,
mis an average value from 1.0 to 3.0, and
n is a number from 0. 5 to 5. 0;
wherein at least 50% by weight of said components of
formula (I-B) comprise an R1 group having 12 or more carbon
atoms.
(Appeal Br. 14 (Claims App'x).)
2 In response to a species election requirement, Appellants elected "Species
A, i.e., a nanoemulsion without a co-emulsifier." (Final Act. 2; see also,
Resp. to Restriction Requirement dated 1/10/2013.) We limit our analysis of
claims to the patentability of the elected species. See Ex parte Ohs aka, 2
USPQ2d 1460, 1461 (BPAI 1987).
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Application 12/93 7 ,821
The claims stand rejected under 35 U.S.C. § 103(a) over Baur et al.,
(US 5,077,039, issued Dec. 31, 1991) ("Baur") in view ofOchomogo et al.,
(WO 2007/133934 Al, published Nov. 22, 2007) ("Ochomogo").
DISCUSSION
Issue
Has the Examiner established by a preponderance of the evidence that
claims 16, 18, 25, and 30-32 would have been obvious under 35 U.S.C.
§ 103(a) over Baur in view of Ochomogo?
Findings of Fact
1. Baur teaches substituted glucosides of the following formula:
"(Glum-R1)Rn2 [formula I] where Glu is a glucose unit, R1 is Cs-C1s-alkyl
held by an acetal bond, R2 is C1--C4-alkyl or arylmethyl held by an ether
bond, m is a mean value from 1 to 10 and n is a mean value from 0.1 m to 2
m." (Baur col. 1, 11. 1-12.) Baur further teaches that "radical R1 is a longer-
chain alkyl of 8 to 18, preferably of 8 to 14, carbon atoms, linked to the 1-C
atom of the glucose molecule by an acetal bond." (Id. at col. 1, 11. 50-52.)
2. Baur discloses that
The novel glucosides I are used as surfactants, especially
as nonionic surfactants or emulsifiers in detergents and
cleansing agents .... They are also used as emulsifiers in
personal hygiene compositions such as skin creams and
shampoos. These detergents, cleansing agents and personal
hygiene compositions contain from 20 to 70% by weight,
preferably from 30 to 50% by weight, based on the total amount
of the preparation, of the novel glucoside I or of mixtures of
these.
In addition to their good performance characteristics,
such as marked lowering of surface tension, low foaming and
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Application 12/93 7 ,821
adequate wetting, the novel glucosides I are distinguished by
good biodegradability.
(Id. at col. 2, 11. 36-59.)
3. Baur discloses working examples of substituted glucosides,
prepared from "glucose and a Cio----C12 alkanol distillation cut, the glucoside
having a mean degree of condensation m of from 2.6 to 2.8." (Id. at col. 3,
11. 1---6, Examples 1-3.)
4. Baur teaches
an obstacle to the more extensive use of longer-chain
alkylglucosides as surfactants or emulsifiers in detergents,
cleansing agents, and personal hygiene compositions was the
excessively low hydrophobic character of the compounds,
which resulted in too little lowering of the surface tension and
too great foaming of the formulations containing these
substances.
(Id. at col. 1, 11. 37--44.) The longer-chain alkylglucosides described by Baur
are (i) alkyl-oligosaccharides where Risa C11--C32-alkyl, and (ii)
"acetalizing glucose with a monohydric Cs-C2s alcohol." (Id. at col. 1, 11.
21-27; see generally, id. at col. 1, 11. 17--45.)
5. Ochomogo teaches "a cleaning composition [that] comprises: an
essential oil, a food-safe nonionic surfactant and water." (Ochomogo i-f 10.)
More specifically, Ochomogo discloses
[t]he cleaning composition is in the form of a stable and clear
microemulsion ... formed by mixing of an oil phase, an
aqueous phase and a food safe nonionic surfactant. The
microemulsions of the present invention form spontaneously
and creates a nano-self structured liquid (NSSL). The NSSL is
thermodynamically stable over a wide range of temperatures
and has droplets in the size range of 10 to 100 nm.
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(Id. at i-f 11.) The essential oils may include, for example, tea tree oil,
lavender oil, eucalyptus oil, and balsam. (Id. at i-fi-124--25.) Ochomogo
further teaches "[i]n a preferred embodiment the glycoside surfactant is an
alky polyglycoside ... [that] has about 6-22 carbons." (Id. at i-f 27.)
Ochomogo discloses the surfactant is "present at levels from at least 1 %, by
weight of the composition." (Id. at i-f 10.)
Principles of Law
"A prima facie case of obviousness typically exists when the ranges
of the claimed composition overlap the ranges disclosed in the prior art." In
re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Analysis
The Examiner rejected claims 16, 18, 25, and 30-32 as obvious over
Baur in vie\~1 of Ochomogo. In support, the Examiner finds that Baur
teach[ es] substituted gl ycosides of the formula ( G lum-R 1)Rn2
(glucoside I) where Glu is a glucose unit, R1 is C1---C1s-alkyl
[sic] held by an acetal bond, R2 is C1---C4 alkyl or arylmethyl
held by an ether bond, m is a mean value from 1 to 10, and n is
a mean value from 0.1 to 2m (Abstract), falling within the
scope of formula (I-B) of claim 16, [and] formula (I-C) of
claims 18 and 2 5.
(Ans. 3.)
The Examiner finds that Baur does not teach a nanoemulsion or a
composition including oils, and so turns to Ochomogo. According to the
Examiner, Ochomogo discloses "an aqueous food safe nanoemulsion
cleaning composition ... comprising a food safe non-ionic surfactant, an
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essential oil and water." (Id.) The Examiner cites Ochomogo's teaching
that the surfactant is preferably an "alkyl polyglycoside having linear or
branched alkyl groups with 6-22 carbons" and is present "at levels at least
1 % by weight" (as in claim 30). Further, the Examiner finds, Ochomogo
discloses essential oils, such as "lavender oil (perfume oils)" (as in claims 31
and 32). (Id. at 4--5.)
The Examiner finds it would have been obvious to combine the
glucosides disclosed in Baur in the nanoemulsion taught by Ochomogo. (Id.
at 5.) The Examiner finds "the non-ionic surfactants taught by Baur ...
possess improved surface tension, low foaming, good wetting properties,
and improved biodegradability." (Id.) Thus, according to the Examiner, "it
would have been prima facie obvious to one of ordinary skill in the art at the
time the invention was made to use the non-ionic surfactant taught by Baur
[] in the cleaning compositions taught by Ochomogo" to "provide the
composition with improved performance characteristics." (Id.)
Although the Examiner finds that Baur and Ochomogo "do not
specifically describe a nanoemulsion containing a alkyl and/or alkenyl ether
mixture of alky and/or alkenyl (poly)glycosides, wherein at least 50% by
weight of the compounds of formula I-B and I-C comprise an R 1 group
having 12 or more carbon atoms," the Examiner determines this would have
been obvious due to predictable optimization over Baur. The Examiner
finds Baur
teach[ es] that R1 of glycoside I is preferably 8-14 carbon atoms
and compositions comprising 20-70% by weight of glucoside I
(or a mixture of glucosides) based on the total amount of the
preparation. Therefore, one or ordinary skill in the art would
have known to use any of [the] compounds alone or in
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Application 12/93 7 ,821
combination in order to achieve the best means for achieving a
desired result including effectiveness to increase [the]
solubilizing property of a nanoemulsion.
(Id. at 6.) According to the Examiner, "the normal desire of scientist[ s] [or]
artisans to improve upon what is already generally known provides the
motivation to determine whe[re] in a disclosed set of percentage ranges is
the ... optimum combination percentages." (Id.) Further, in view of Baur's
"teaching different aqueous preparations containing novel glucoside
mixtures with distinct foaming power, wetting power and cloud point," the
Examiner states "the skilled artisan would have recognized that the
(glucoside I) is a result effective variable." (Id.)
Appellants argue the Examiner erred in finding the claims prima facie
obvious because "there is no motivation articulated in the Office Action to
choose at least 50% by weight of compounds having an R1 group having 12
or more carbon atoms." (ii,ppeal Br. 7.) 1A .. ppellants also argue there is no
expectation of success that a substituted glucoside of Baur that comprises at
least 50% of compounds with R 1 having 12 or more carbon atoms would be
suitable to combine in the nanoemulsion of Ochomogo. (Id. at 11.) And,
even if a prima facie case has been shown, Appellants argue "the data in the
application shows that use of 50% by weight of compounds having an R 1
group having 12 or more carbon atoms provides better solubilizing
properties" and thus rebuts the Examiner's determination that the claims are
obvious. (Id. at 7.)
Appellants' arguments are unpersuasive. The polyglycoside formula
and ranges of the claims overlap, encompass, or are encompassed by the
formula and ranges in Baur. For example, Baur's disclosure that "R1 is a
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longer-chain alkyl of between 8 to 18 carbons and more preferably 8 to 14
carbons" is within the claimed range of R 1 being 6 to 22 carbons. (FF 1.)
As a further example, Baur' s disclosure that "m" is a mean value between 1
and 10 encompasses the claimed ranges of 1.0-3.0 (as in claim 16) and 1.2-
1.8 (as in claims 18 and 25). (FF 1.) This overlap supports the Examiner's
determination that the claims are prima facie obvious. In re Peterson, 315
F.3d at 1329 ("In cases involving overlapping ranges, we and our
predecessor court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness.")
Notwithstanding this overlap between the claims and the prior art,
Appellants argue it would have been nonobvious to form a polyglycoside
mixture where 50% of the R1 groups include a chain of 12 or more carbons.
(Appeal Br. 9-10.) In support, Appellants emphasize that examples in Baur
show R 1 groups 10 to 12 carbons in length, and thus Appellants argue "Baur
exemplifies at best only a maximum carbon size ofC12 at R1." (Id. at 10.)
We are not persuaded. Appellants' reading of Baur, which focuses on
working examples only, is too narrow. Baur teaches that R1 may include 8
to 18 carbons, and more preferably 8 to 14 carbons. (FF 1.) Baur thus
reasonably teaches one could use glycosides having R1 groups with 12 or
more carbons only (e.g., C12---C18 or C12---C14). (Ans. 8.)3
3 Appellants also point out that "R2 is only exemplified as benzyl, which is
not within the scope of the claimed invention." (Appeal Br. 11.) Here
again, Appellants' emphasis on the working example of Baur is misplaced as
Baur also discloses R2 may be a "C1---C4-alkyl or arylmethyl held by an ether
bond" and thus overlaps with the claims. (FF 1.)
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Application 12/93 7 ,821
It is true that Baur does not explicitly disclose the respective
proportion of glycosides in the mixture that would have R 1 groups with 12 or
more carbons, but the Examiner found this would be obvious through
predictable optimization of a result-effective variable. (Ans. 6.) Absent
evidence to the contrary, we agree. In re Boesch, 617 F .2d 272, 27 6 (CCP A
1980) ("[D]iscovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art.") (citations omitted)).
The Examiner explained that Baur' s compounds had lower surface tension,
lower foaming power, and adequate wetting relative to other longer-chain
glycosides in the art. (Ans. 4, 8.) These characteristics of surfactants and
emulsifiers, like the compounds of Baur and the claimed polyglycosides,
depend on the respective hydrophobic/hydrophilic properties of the
compounds. Indeed, as the Examiner notes, one obstacle with longer-chain
glycosides (e.g., where R is C11--C32-alkyl) when used as cleansing agents or
personal hygiene compositions "was the excessively low hydrophobic
character (e.g., increasing aqueous solubility with longer chain length) of the
compounds, which resulted in too little lowering of the surface tensions and
too great foaming of the formulations containing these substances" - issues
Baur teaches are remedied by its compounds. (Id. at 4; FF 2, 4.) On this
record, we are persuaded that glucoside I in Baur, including its carbon-chain
length, is a result-effective variable.
Appellants counter that "Baur and Ochomogo must recognize the
weight percentage of compounds of formula (I-B) comprsing [sic] R 1 group
having 12 or more carbon atoms as a result-effective variable for producing
nanoemulsions having improved solubilizing properties." (Reply Br. 4.)
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Application 12/93 7 ,821
We disagree that such a specific disclosure is required. "[T]he prior art need
not provide the exact method of optimization for the variable to be result-
effective. A recognition in the prior art that the property is affected by the
variable is sufficient to find the variable result-effective." In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). And here we find it
would have been known by those of ordinary skill in the art that the length
of the glycoside's carbon chain affects its behavior as a solubilizer.
The length of the carbon chain affects the hydrophobic and
hydrophilic properties of the glycoside. As the Examiner explained, this is
reasonably understood from Baur' s disclosure that its compounds exhibited
lower surface tension, low foaming, and adequate wetting compared to
glycosides with different carbon-chain lengths. (Ans. 4, 8; FF 2, 4.) The
Specification confirms that it was known in the art that a compound's
behavior as a solubilizer depends on its respective hydrophilic/hydrophobic
properties in describing the "State of the Art" "solubility promoters ... ,
which are individual substances or mixtures with average HLB values which
thus to a certain extent form a bridge from the polar environment to the
nonpolar substrate." (Spec. 2, 11. 28-31; see generally, id. at 2, 1. 23 through
3, 1. 13.)4 We thus find the skilled artisan would have known that adjusting
4 HLB values are a well-known measure of a compound's proportional
hydrophilic/lipophilic balance. (Ochomogo i-f l 0 ("The nonionic surfactants
selected preferably have a hydrophilic-lipophilic balance (HLB) greater than
about 10, more preferably a HLB of about 13 or greater. . . . A high HLB
value is also desirable for an aqueous composition because the higher the
HLB the more hydrophilic the surfactant."); see also, Spec. 26, 11. 18-32
(discussing HLB values/Griffin scale with citations to prior art).)
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Application 12/93 7 ,821
the length of the glycoside' s carbon chain (as well as the proportion of
glycosides with longer carbon chains in a mixture) affects solubilizing
characteristics of the glycoside.
As for Appellants' argument that there is "no expectation of success"
in combining Baur and Ochomogo, we are not persuaded. Appellants
contend that "for an emulsion to deliver a desired ingredient, such as the
essential oils of Ochomogo ... the choice of surfactant much [sic] be made
very carefully and proportioned in a way that results in a clear emulsion."
(Appeal Br. 11.) At best, this suggests some unpredictability may exist. Yet
the expectation of success need only be reasonable, not absolute. 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.") In addition, claim
16 does not require any specific degree of clarity.
Appellants also argue Ochomogo identifies a "most preferred alkyl
polyglycoside [that] has in total 8-10 carbons." But Ochomogo teaches
more broadly that its nanoemulsions preferably include surfactants that are
alkyl polyglycosides with about 6 to 22 carbons. (FF 5.) Baur teaches alkyl
glucosides with carbon chains of 8 to 18 carbons (FF 1) can be used as
surfactants or emulsifiers and have improved properties, such as low
foaming and improved surface tension reduction. (FF 2.) So the references
themselves suggest a reason for combining. We thus agree with the
Examiner that a person of ordinary skill in the art would have predictably
combined Baur's glucoside with the nanoemulsion of Ochomogo, expecting
to produce a nanoemulsion with improved properties. (Ans. 5.)
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Appellants separately argue the patentability of claim 25, but only
because they contend Baur "fails to exemplify" a glycoside with an "m"
value "from 1.2 to 1.8." (Appeal Br. 11.) Like Appellants' other arguments
that read Baur as limited to its working examples, this argument fails.
Although the working examples of Baur recite compositions with "m"
values of 2.6 to 2.8 (FF 3), Baur teaches more generally that "mis from 1 to
10, preferably from 1 to 5." (Baur col. 1, 11. 61-62; FF 1.) These
disclosures encompass the range of 1.2 to 1.8 as in claim 25, and Appellants
have not shown any criticality or unexpected results related to selection of
an "m" value between 1.2 and 1.8.
We next tum to Appellants' argument that "the data of the
application" overcomes the Examiner's prima facie case. (Appeal Br. 12;
Reply Br. 3.) Appellants point to two portions of the Specification in
support. The first is a statement that "[s]urprisingly, it has been found that
by selecting alkyl ethers of alkyl and/or alkenyl polyglucosides with this
carbon length [at least 50% having greater than or equal to 12 carbons],
improved solubilizers compared to the prior art are obtained." (Reply Br. 3
(citing Spec. 5, 11. 16-19) (emphasis omitted).) The second is a comparison
of working examples of the claimed emulsion with a "comparative example"
described in the Specification. (Appeal. Br. 12 (citing Spec. 73-75).) We
address each in tum.
The statement expressing surprise is the concluding sentence of a brief
description of "EP 0 364 852 A2," which appears to be the European-patent
counterpart of Baur. (Spec. 4, 1. 31 through 5, 1. 19.) Unexpected results
compared to the closest prior art can show nonobviousness. In re Baxter
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Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997) ("Only if the 'results of optimizing a variable'
are 'unexpectedly good' can a patent be obtained for the claimed critical
range.") (citations omitted). But there is a total absence of evidence
supporting the assertion of surprising results. For example, the description
in the Specification does not reveal what glucoside of Baur was tested, no
testing methodology is described, and no data is provided to quantify any
results. Accordingly, we are left with an unsubstantiated conclusion of
surprising and improved results. In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984) ("[I]t is well settled that unexpected results must be established
by factual evidence. Mere argument or conclusory statements in the
specification does not suffice."). This is insufficient to overcome the
Examiner's prima facie case.
The data comparing working examples with a "comparative example"
is also insufficient, but for different reasons. The Specification describes
testing of the "solubilizing property" of three "Examples" of the inventive
polyglycoside mixture versus a mixture of a different polyglycoside. (Spec.
72-75.) Appellants have not, however, demonstrated that the different
polyglycoside tested ("Glucopon® 215 CSUP (alkyl polyglucosides based
on C8 and ClO fatty alcohols;" Spec. 73, 11. 31-33) represents the closest
prior art. Even under Appellants' narrow reading of Baur, it discloses alkyl
polyglucosides with C10-C12 chains at R1, rather than C8 and ClO chains in
the composition tested. (FF 3.)
Moreover, the "Examples" used in this testing are not commensurate
in scope with the claims. The claims include any mixture of the glycosides
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of formula I-B where those having 12 or more carbons at R 1 make up from
50-100%. The Specification, however, tests three "Examples" where "93-
100% are C12 or greater" and compares them with a glycoside that "used R1
of C8-10 having a fraction of <5% by weight of C12 or greater." (Reply Br.
3--4 (citing Spec. 72-75.) In other words, the testing showed a comparison
of the extremes (i.e., 95-100% with no chains having 12 or more carbons
versus 93-100% with chains having 12 or more carbons). There are no
results showing the solubilizing properties of, for instance, mixtures with
50%, 60%, or 70% of the R1 groups having 12 or more carbons-yet those
would all be within the scope of the claims. In re Peterson, 315 F.3d at
1330-31 ("[T]he applicant's showing of unexpected results must be
commensurate in scope with the claimed range. . . . Although those data
[showing results for 1%and2% rhenium] show that alloy strength improved
with the addition of rhenium, they do not evidence unexpected results for the
entire claimed range of about 1-3% rhenium.") For these reasons, the data
related to the "comparative example" in the Specification does not overcome
the Examiner's prima facie case.
Conclusion of Law
We conclude that the Examiner established by a preponderance of the
evidence that claims 16 and 25 would have been obvious over Baur in view
of Ochomogo. Claims 18 and 30-32 have not been argued separately and
therefore fall with claims 16 and 25. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claims 16, 18, 25, and 30-32 as
unpatentable under 35 U.S.C. § 103(a) over Baur in view of Ochomogo.
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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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