Ex Parte Dell

Patent Trial and Appeal Board

Nov 16, 2018

12677714 (P.T.A.B. Nov. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/677,714 06/29/2010
51414 7590 11/20/2018
GOODWIN PROCTER LLP
PATENT ADMINISTRATOR
100 Northern A venue
BOSTON, MA 02210
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Ian Thomas Dell
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.
IIP-001 2608
EXAMINER
PURDY, KYLE A
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
11/20/2018 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):
PA TENTBOS@GOODWINPROCTER.COM
PSOUSA-ATWOOD@GOODWINPROCTER.COM
GLENN .WILLIAMS@GOODWINPROCTER.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IAN T. DELL 1
Appeal2017-002921
Application 12/677,714
Technology Center 1600
Before FRANCISCO C. PRATS, ULRIKE W. JENKS, and JOHN G. NEW,
Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from Examiner's
decision to reject claims directed to an insect repellent. Examiner rejects the
claims as obvious and as being indefinite. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 According to Appellant, the Real Party in Interest is Ian T. Dell. Appeal
Br. 2.
Appeal2017-002921
Application 12/677,714
STATEMENT OF THE CASE
Claims 1, 2, and 32-3 8 are on appeal, and can be found in the Claims
Appendix of the Appeal Brief. Claim 1, the sole independent claim, is
representative of the claims on appeal, and reads as follows:
1. A moderately viscous liquid suitable for being used as an
insect repellent, said liquid comprising from 5 to 12 %w/w of
PMD-citronellal acetal[[;]], from 7 to 14 %w/w isopulegol and
the remainder being p-menthane-3,8-diol, which approximates to
a ternary eutectic and is liquid at ambient temperatures.
Appeal Br. 11 (Claims Appendix)(bracketing in original).
Examiner rejects the claims as follows:
I. Claim 1 under 35 U.S.C. § 112(b) or pre-AIA § 112, second
paragraph as being indefinite. Non-Final Act. 2 4.
II. Claims 1, 2, and 32-38 under 35 U.S.C. § I03(a) as
unpatentable over Lett3 in view of Molyneux. 4 Id. at 5---6.
I. Indefiniteness
Examiner's position is that the word "approximates" as used in the
claim when referencing a ternary eutectic is unclear because one of ordinary
skill would not know whether this encompasses a formulation with two,
four, six or more ingredients. Ans. 2.
Appellant contends that "[a] person of skill in the art, in light of the
application disclosure and the teachings of the prior art, also knows that the
phrase 'approximates a ternary eutectic' covers formulations with three
2 Non-Final Office Action mailed July 15, 2015 ("Non-Final Act.").
3 Lett et al., US 5,298,250, issued Mar. 29, 1994 ("Lett").
4 Molyneux, US 6,337,071 Bl, issued Jan. 8, 2002.
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components that melt at approximately one temperature (i.e., the eutectic
temperature)." Appeal Br. 4.
On this record, we find that Appellant has the better position because
Examiner's rejection appears to be taking the term "approximate" out of
context. Terms such as "approach each other," "close to," "substantially
equal," and "closely approximate" are "ubiquitous in patent claims. Such
usages, when serving reasonably to describe the claimed subject matter to
those of skill in the field of the invention, and to distinguish the claimed
subject matter from the prior art, have been accepted in patent examination
and upheld by the courts." Andrew Corp. v. Gabriel Electronics, Inc., 847
F.2d 819, 821(Fed. Cir. 1988). When a word of degree is used it is
reasonable for the court to "determine whether the patent's specification
provides some standard for measuring that degree." Seattle Box Co. v.
Indus. Crating & Packaging, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). The
same analysis applies to a determination of patentability by an Examiner.
Here, the claim recites a composition "which approximates to a
ternary eutectic and is liquid at ambient temperatures." Appeal Br. 11
(Claims Appendix)( emphasis added).
According to the Specification,
para-menthane-3,8-diol is a crystalline material at room
temperature which separates as long needle crystals in other
methods of synthesis, the method of this invention results in a
product which is a viscous liquid. It is believed that the presence
of isopulegole and the acetal condensate of citronella) withpara-
menthane-3,8-diol approximates to a ternary eutectic.
Spec. 14.
Although the term "approximate" by itself may be a word of degree,
the term in the context of the claim is not used in isolation because the claim
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Application 12/677,714
further explains that the mixture "is liquid at ambient temperatures." We
agree with Appellant that one of ordinary skill in the art at the time of the
invention would understand that a eutectic mixture is one in which the
components when combined lowers the melting point of at least one of the
components. Here, the Specification provides that it was observed that the
combination of para-menthane-3,8-diol with isopulegole and an acetal
prevents the crystal formation of para-menthane-3,8-diol at room
temperature. See Spec. 14. The limitation "approximates to a ternary
eutectic" in the context of the claim describes the theory of why the
composition remains liquid at room temperature. The claim specifically
recites that the composition remains liquid at ambient temperatures. Even if
one of skill in the art would not know what "approximate" entails as
suggested by Examiner, the claim limitation that the composition remains a
liquid as opposed to forming crystals at the particular temperature provides a
standard for ascertaining the limitation of the claims description of
"approximates to a ternary eutectic."
The evidence of record does not support the Examiner's conclusion
that the claim is indefinite. Accordingly, we reverse this rejection.
II. Obviousness Lett and Molyneux
Examiner finds that Lett is directed to insect repellent formulations
that contain p-menthane-3,8-diol and a synergist such as PMD-citronellal
acetate. Non-Final Act. 5. Examiner finds that this combination in Lett
forms a base that is then formulated into insect repellent products. Id. at 6.
Examiner acknowledges that "Lett fails to teach the composition as
comprising isopulegol." Id. Examiner relies on the teaching of Molyneux to
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include 9-15% by weight isopulegol into an insect repellent composition.
See id.
The issue is: Does the preponderance of evidence of record support
Examiner's conclusion that based on the teachings of Lett and Molyneux
one of ordinary skill in the art at the time the invention was made would
have formulated a composition containing PMD-citronellal acetal,
isopulegol, and p-menthane-3,8-diol as claimed?
Findings of Fact
FFl. Lett teaches that p-menthane-3,8-diols are naturally occurring
compounds that are known to exert a repellent effect on mosquitos.
Lett 1:44--46, see id. at 2:11-16. Lett teaches subjecting citronella! to
acid catalysed cyclization in order to form p-menthane-3,8,-diols and
acetals. See Lett 9:30-55. Lett teaches that "[t]he products of such a
reaction will include the [p-menthane-3,8-] diols and acetals of
formulae C and D [ (PMD-citronellal acetal)] ... to give a synergized
insect repellent composition that can then be used as a base to form a
variety of insect repellent products." Id. at 6:26-33. Lett teaches
p-menthane-3,8-diols and acetals in a weight ratio of 99: 1 to 1:99,
with a preferred range is 38: 1 to 1: 19, most preferably 3.5: 1 to 1.3: 1.
Id. at 6:44--50.
FF2. Lett teaches that the base active made according to its described
method "[ w ]ould typically contain 65± 8% w/w of cis and trans p-
menthane-3,8-diols in a weight ratio of about 1.4: 1-1.6: 1 and about 30
± 10% w/w acetals C and D." Id. at 10:34--35.
FF3. Molyneux teaches an oil extract of Leptospermum liversidgei which
can be used as a mosquito repellent. Molyneux, Abstract. Molyneux
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teaches that mosquitoes are attracted by heat and carbon dioxide, and
that certain essential oils are able to block the carbon dioxide message
in a mosquito. Id. at 1: 14--20. Molyneux teaches plant extracts
having "citronella! and/or analogue content which falls substantially
within the range of at least 55-95% of total extractable volatile oil."
Molyneux 1 :59---62. "The oil which is most suitable ... is citronella!
however the citronella! analogues isopulegol and pulegol are also
effective." Id. at 1:55-57. Molyneux teaches that the oil extract may
be formulated into creams or lotions. Id. at 2:31-36.
FF4. Molyneux teaches that the oil extract will contain "citronella!,
isopulegol and pulegol which fall substantially within the ranges of
59---68%, 9-14% and 0-5% respectively." Id. at 2: 1-3. "It is
preferred that the extracted oil will contain 55-95% citronella! and/or
the citronella! analogues isopulegol and pulegol. It is more preferred
that the oil will comprise at lease [sic] 70% citronella! and/or
analogues." Id. at 2: 10-14.
Principle of Law
"[E]xaminer bears the initial burden, on review of the prior art or on
any other ground, of presenting aprimafacie case ofunpatentability." In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Analysis
Examiner acknowledges that "Lett fails to teach the inclusion of
isopulegol," but finds that this is corrected by the teachings of Molyneux.
Ans. 9; see FFI-FF4. Specifically, Examiner relies on the teaching in
Molyneux to provide isopulegol in the range of 9-15%. See Ans. 9; FF4.
Examiner, in the Answer, concludes that it "is prima facie obvious to
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combine two compositions each of which is taught by the prior art to be
useful for the same purpose, in order to form a third composition to be used
for the very same purpose." Ans. 9 (citing MPEP 2144.06 (I)). This
rationale differs from Examiner's rationale presented in the Non-Final
Office Action. Specifically, in the Non-Final Action Examiner concluded
that one having ordinary skill in the art would have been "motivated to
modify Lett so that it further comprised between 9-15% by weight of
isopulegol so as to broaden the repellent activity of the final composition."
Non-Final Act. 6.
[O]ne of ordinary skill could have worked within the framework
of Lett and identified useful ratios of p-me[n]thane-3,8-diol and
the PMD for repelling insects. If it were found that a
composition comprised between 5-12% by weight PMD-
citronellal acetate, 7-14% by weight isopulegol and the
remainder being p-me[ n ]thane-3,8-diol effectively repelled
insects such as mosquitoes, such a composition would have been
the product of ordinary skill and common sense.
Id. at 7.
First, Appellant contends that the combination of references does not
teach the claimed range of p-menthane-3,8-diol (about 74 to 88 % w/w).
Appeal Br. 8 (footnote 23); see id. at 11 (claim 2). Second, Appellant
contends that even if one were to follow Examiner's rationale as presented
in the Answer, simply mixing the composition of Lett and Molyneux one
would still not arrive at the claimed invention. Reply Br. 3. Third,
Appellant submits that it was unexpectedly discovered that by combining
para-menthane-3,8-diol with of isopulegole and the acetal condensate of
citronella! the para-menthane-3,8-diol would not form crystals at room
temperature. Appeal Br. 9.
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We find that Appellant has the better position. A rejection for
obviousness must include "articulated reasoning with some rational
underpinning to support the legal conclusion." KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398,418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006). In formulating the rejection based on the combined references,
Examiner is relying on the insect repellant effect taught in both Lett and
Molyneux in arriving at the conclusion that is obvious to combine the
teachings of these references. We do not disagree with Examiner's
assessment that both references teach insect repellants. We note, however,
that Molyneux teaches an oil extract that in addition to citronella! also
contains the citronella! analogues isopulegol and pulegol and explains that
all three components have insect repelling activity. FF3. Even equipped
with the knowledge that isopulegol by itself has insect repelling activity, it is
not clear why one of ordinary skill would choose the citronella! analog
isopulegol to include in Lett's active base.
The rationale given by the Examiner is that it is obvious to broaden
the repellent activity of the final composition of Lett. See Non-Final Act. 6.
The Examiner, however, has not explained why one of ordinary skill would
select only isopulegol to include in Lett's base composition in order to
broaden the repellant activity when Lett's base composition also does not
contain pulegol or citronella!. In order to arrive at the base active (FF2) Lett
teaches removing the known insect repellant component, citronella!, from
the base composition. Specifically, Lett teaches that "[ a ]t the completion of
the reaction, the mixture contains about 15-20% low boiling materials,
including citronella! about 50-60% p-menthane-3,8-diols and about 20%
acetals." Lett 9:40-43. Lett, then goes on to teach that in order to obtain the
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base composition citronella! is removed from the p-menthane-3,8-diols and
acetal containing fraction. See id. at 9:44--55. Here, Lett specifically
removes low boiling martials, such as citronella! a known insect repellant, in
order to form the base composition that contains 65± 8% w/w of cis and
trans p-menthane-3,8-diols. Because Lett specifically removes a known
insect repellant in order to form the base composition, it is not clear why one
of ordinary skill in the art at the time the invention was made would then
include an analogue of that repellant into the base composition.
Appellant contends that Lett's base compositions is not taught to be
suitable for application to the skin and "Lett's compositions that are 'suitable
for application to human skin' (i.e., liquid insect repellent) include from 17 .1
to 21.9 %w/w ofp-menthane-3,8-diols. These insect repellent compositions
have low concentrations of p-menthane-3,8-diol that fall well below the 60%
threshold for crystallization described in the instant application." Appeal
Br. 7. We agree with Appellant's contention that the Examiner has not
articulated a sufficient reason why one of ordinary skill in the art would have
chosen to add the isopulegol into the Lett's base composition (FF2) rather
than adding the component into the formulated lotion or aerosol insect
repellants as taught by Lett in order to broaden the insect repellant activity.
See Appeal Br. 6-7.
In the Answer, the Examiner presents a new alternative approach to
reach the conclusion of obviousness. See Ans. 9 (citing MPEP 2144.06(I)).
In this approach the Examiner relies on Kerkhoven to conclude that:
It [ would have been] prima facie obvious to combine two
compositions each of which is taught by the prior art to be useful
for the same purpose, in order to form a third composition which
is to be used for the very same purpose. . . . [T]he idea of
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combining them flows
logically from their having been individually taught in the prior
art.
In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). Appellant contends that
this approach is also flawed because when combining the two compositions
to arrive at a third composition one would not necessarily arrive at a mixture
that contains the requisite concentration of p-menthane-3,8-diol. See Reply
Br. 3--4. We agree with Appellant that even if one of ordinary skill in the art
would be motivated to arrive at a third composition that can be used for the
same purpose, in this case function as an insect repellant, one would not
necessarily arrive at the composition as claimed. See Reply Br. 4 (table 1 ).
Examiner has not explained why one of skill in the art at the time the
invention was made would maintain only the p-menthane-3,8-diol
concentration and change the acetal concentration in Lett's base active in
order to accommodate the additional repellant actives taught in Molyneux's
oil extract.
Because the Examiner has not presented a prima facie case of
obviousness we do not need to address Appellant's unexpected result
argument.
As the Examiner has failed to adequately articulate any other rationale
explaining how the combination of Lett and Molyneux discloses an insect
repellent containing at least 74% p-menthane-3,8-diol in conjunction with
PMD-citronellal acetal and isopulegol, we are constrained to reverse each
rejection that relies on Lett and Molyneux.
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SUMMARY
We reverse the indefiniteness rejection of claim 1.
We revere the rejection of claims 1, 2, and 32-38 under 35 U.S.C.
§ 103(a) over Lett in view of Molyneux.
REVERSED
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