Ex Parte Dierker et al

Patent Trial and Appeal Board

Aug 17, 2016

12665532 (P.T.A.B. Aug. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/665,532 12/18/2009
23657 7590 08/19/2016
SERVILLA WHITNEY LLC/BASF
33 WOOD A VE SOUTH
SUITE 830
!SELIN, NJ 08830
FIRST NAMED INVENTOR
Markus Dierker
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.
C3339PCT/US(CGG0273-00US) 1719
EXAMINER
GULLEDGE, BRIAN M
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
08/19/2016 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 MARKUS DIERKER, BETTINA JACKWERTH, ROLF KA WA,
and STEFANIE MAURER1
Appeal2015-002419
Application 12/665,532
Technology Center 1600
Before DONALD E. ADAMS, RICHARD J. SMITH, and RY ANH. FLAX,
Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving a claims to a
cosmetic and/or pharmaceutical formulation. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Cognis IP
Management GmbH, assignee, and BASF SE who acquired Cognis IP
Management GmbH. (Appeal Br. 4.)
Appeal2015-002419
Application 12/665,532
STATEMENT OF THE CASE
Claims on Appeal
Claims 10-15 are on appeal. (Claims Appendix, Appeal Br. 21.)
Claim 10 is illustrative and reads as follows (emphases added):
10. A cosmetic and/or pharmaceutical formulation comprising 0.1 to
80% by weight of a hydrocarbon mixture which comprises at least two
different hydrocarbons whose carbon numbers differ by more than 1, said at
least two different hydrocarbons making up at least 60% by weight, based on
the sum of the hydrocarbons, and wherein the hydrocarbon mixture
comprises less than or equal to 50% by weight of branched hydrocarbons,
based on the sum of the hydrocarbons, and wherein the at least two different
hydrocarbons are selected from the group consisting a/linear Cl l and
linear Cl3 hydrocarbons, linear Cl l and linear Cl5 hydrocarbons, linear
C 13 and linear C 15 hydrocarbons, linear C 15 and linear C 1 7 hydrocarbons,
linear C 1 7 and linear C 19 hydrocarbons, and linear C 19 and linear C2 l
hydrocarbons. 2
Examiner's Rejections
1. Claims 10-15 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Chen. 3 (Ans. 2.)
2. Claims 10-12, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Araujo. 4 (Id. at 4.)
2 Because the hydrocarbon mixture comprises at least 60% by weight of "at
least two different [linear] hydrocarbons," the branched hydrocarbons would
comprise less than or equal to 40% by weight of the hydrocarbon mixture.
3 Chen et al., US 2006/0018858 Al, published Jan. 26, 2006 ("Chen").
4 Araujo et al., WO 2005/020938 Al, published Mar. 10, 2005 ("Araujo").
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Application 12/665,532
3. Claims 10-15 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting over claims 11-14 of U.S.
Patent No. 8,309,065. 5 (Id. at 5.)
Appellants argue the respective claims as a group in response to each
rejection. Accordingly, we limit our consideration to claim 10.
FINDINGS OF FACT
We adopt as our own the Examiner's findings and analysis concerning
the scope and content of the prior art. The following findings are included
for emphasis and reference convenience.
FF 1. Chen teaches a skin care composition comprising an oil
continuous phase carrier. (Chen Abstract.)
FF 2. Chen teaches that oils useful in the composition include
tridecane (C13), tetradecane (C14), hexadecane (C16), and mixtures thereof.
(Chen if 66.)
FF 3. The Examiner finds that the C 14 and C 16 hydrocarbons taught
by Chen are homologs of the claimed C15 hydrocarbon. (Ans. 6.)
FF 4. Chen teaches that the composition may comprise about 20% to
80% by weight of an oil component. (Chen iii! 46-47.)
FF 5. Araujo teaches a cosmetic microemulsion comprising "a
solvent selected from the group consisting of hexadecane and isomers
thereof and dodecane and isomers thereof," and wherein "hexadecane,
5 Ansmann et al., US 8,309,065 B2, issued Nov. 13, 2012 ("the '065
patent"). While the specific rejection states that it is provisional, the
Examiner clarifies that it is not provisional since it is over an issued patent.
(Ans. 9.) Appellants acknowledge that the characterization of the rejection
is not pertinent to the appeal of the rejection ("regardless of whether the
rejection is provisional"). (Reply Br. 3.)
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dodecane or isomers thereof~ either combined or not are used." (Araujo
Abstract; 7, 11. 22-23.)
FF 6. Araujo teaches that "[i]n the preferred embodiments,
hexadecane or preferably isohexadecane are used as solvent in an amount
ranging from about 1 % to about 8%." (Araujo 9, 11. 15-17.)
DISCUSSION
Issue: 35 US.C. § 103(a)
Whether a preponderance of evidence of record supports the
Examiner's conclusion of obviousness under 35 U.S.C. § 103(a).
Rejection No. 1 (Chen)
Analysis
The Examiner concludes that claim 10 would have been obvious to a
person of ordinary skill in the art based on Chen. (Ans. 2-3.) In particular,
the Examiner finds that the combination of the C 13 hydrocarbon with a C 15
hydrocarbon (a one carbon homolog of both the C14 and C16 hydrocarbons)
is suggested by Chen. (Id. at 3.)
We find that the Examiner has satisfied the burden of showing "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). Moreover, the Examiner has established a prima facie case of
obviousness and, as discussed below, Appellants have not overcome that
prima facie case.
While Appellants acknowledge that Chen discloses mixtures of
hydrocarbons that may include tridecane (C13), Appellants argue that Chen
does not teach "the specific odd-numbered hydrocarbons recited by the
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claims" and that Chen's disclosure "amounts to a genus, while the claims
recite a species." (Appeal Br. 12-13.) Appellants also argue that there has
been "no showing by the Examiner that the even numbered hydrocarbons of
Chen ... would have behaved chemically similarly, only that they have
similar empirical formulas." 6 (Reply Br. 2.)
We are not persuaded. The C 14 and C 16 hydrocarbons differ from
C 15 by only one carbon atom (e.g., a methyl group) and are homo logs of
C15. (FF 3.) That structural similarity creates a prima facie case of
obviousness. See In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990); In re
Shetty, 566 F.2d 81, 85-86 (CCPA 1977) (concluding that "the difference of
a mere methylene group between the compound of the claim and the prior
art compounds" is clearly obvious). Moreover, given that Chen teaches that
C 13, C 14, and C 16 hydrocarbons, and mixtures thereof, are all useful (and
interchangeable) in its composition (FF 2), one of skill in the art would
expect that their properties are also similar. See In re Papesch, 315 F.2d
3 81, 3 91 ( CCP A 1963) ("a compound and all of its properties are
inseparable").
Rather than requiring a "showing by the Examiner" (Reply Br. 2), the
establishment of a prima facie case of obviousness shifts the burden to
Appellants to rebut that prima facie case, such as by showing that the
claimed formulation possesses "unexpectedly improved properties or
properties that the prior art does not have." See Dillon, 919 F.2d at 692-93.
6 We also acknowledge, but are unpersuaded by, Appellants' argument that
claim 10 "clearly [delineates] a continuous phase." (Appeal Br. 12.) We
agree with the Examiner that claim 10 does not recite a continuous phase.
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Appellants have not made any such showing or provided any evidence to
rebut the prima facie case.
Conclusion of Law
A preponderance of evidence of record supports the Examiner's
conclusion that claim 10 is obvious under 35 U.S.C. § 103(a) based on Chen.
Claims 11-15 were not argued separately and fall with claim 10.
Rejection No. 2 (Araujo)
Analysis
The Examiner concludes that claim 10 would have been obvious to a
person of ordinary skill in the art based on Araujo. (Ans. 4--5.) In
particular, the Examiner finds that the C12 hydrocarbon dodecane is a
homolog of a C13 hydrocarbon and the C16 hydrocarbon hexadecane is a
homo log of a C 15 hydrocarbon, and that such close structural similarities
give rise to a prima facie case of obviousness. (Id.)
Appellants argue that "[t ]he Examiner failed to establish prima facie
obviousness due to the fact there is no teaching or suggestion in Aruajo of
the specific odd-numbered hydrocarbons recited by the claims." (Appeal Br.
14.) Appellants also argue that there has been "no showing by the Examiner
that the even numbered hydrocarbons of ... Araujo would have behaved
chemically similarly, only that they have similar empirical formulas."
(Reply Br. 2.)
We agree that the Examiner has established a prima facie case of
obviousness and are not persuaded by Appellants' arguments, for the reasons
set forth above in connection with Rejection No. 1. Moreover, we are
persuaded by the Examiner that:
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it does appear reasonable to conclude that both the C13 and C15
hydrocarbons would have similar properties, given that the C12
and C16 hydrocarbons taught by Araujo [] have similar
properties as each other. Araujo[] teaches that both can be used
either alone or together and both have the similar properties
desired by [Araujo] (solubilizing dirt and impurities to effect the
cleaning of the hair: page 7, lines 22-25). As these two
hydrocarbons are more different from each other than both of the
C13 and C15 homologs, it appears reasonable to conclude that
all four compounds would be expected to have similar properties.
(Ans. 8.)
Again, it is Appellants' burden to show "unexpectedly improved
properties or properties that the prior art does not have," Dillon, 919 F.2d at
692-93, and Appellants have not done so.
Conclusion of Law
A preponderance of evidence of record supports the Examiner's
conclusion that claim 10 is obvious under 35 U.S.C. § 103(a) based on
Araujo. Claims 11, 12, 14, and 15 were not argued separately and fall with
claim 10.
Issue: Obviousness-type double patenting
Whether a preponderance of evidence of record supports the
Examiner's conclusion of nonstatutory obviousness-type double patenting.
Principles of Law
Obviousness-type double patenting prohibits the issuance of claims in
a second patent that are "not patentably distinct from the claims of the first
patent." In re Langi, 759 F.2d 887, 892 (Fed. Cir. 1985) (citations omitted).
"A later patent claim is not patentably distinct from an earlier patent claim if
the later claim is obvious over, or anticipated by, the earlier claim." Eli Lilly
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& Co. v. Barr Labs., Inc., 251F.3d955, 968 (Fed. Cir. 2001) (citations
omitted).
Analysis
The Examiner concluded that claim 10 was not patentably distinct
from claims 11-14 of the '065 patent "because the issued claims recite a
more specific composition than the one instantly recited (the mixture of
hydrocarbons [in claims 11-14 of the '065 patent] is limited to Cl 1 and C13
hydrocarbons)." (Ans. 5.) Appellants acknowledge that "[t]he claims of
[the '065 patent] are narrower and represent an improvement (added
limitations) over the present application." (Appeal Br. 17.) Appellants
argue, however, that the double-patenting rejection be reversed, and no
terminal disclaimer be required, because (1) the present application and the
'065 patent have the same filing date, with the present application being the
base application, thus justifying withdrawal of the double-patenting rejection
pursuant to MPEP § 804, and (2) a terminal disclaimer was filed for the '065
patent over the present application. 7 (Id. at 16-18.)
We are not persuaded by Appellants' arguments. As an initial matter,
we agree that claim 10 is not patentably distinct from claims 11-14 of the
'065 patent because those issued claims are a species of the generic claim
10. See In re Hubbell, 709 F.3d 1140, 1144 (Fed. Cir. 2013) (genus claim in
application anticipated by issued claims directed to a species falling within
that genus).
The fact that the present application and the '065 patent have the same
7 Terminal Disclaimer to Obviate a Provisional Double Patenting Rejection
Over a Pending "Reference" Application, filed June 13, 2012,
Application/Control No. 12/665,425 ("Terminal Disclaimer").
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filing date does not overcome the double-patenting rejection or obviate the
need for a terminal disclaimer in the present case. As the Examiner points
out, the MPEP section relied upon by Appellants refers to provisional
rejections of applications filed on the same day, and the present double-
patenting rejection is not provisional. (Ans. 9.) Moreover, one of the
justifications for obviousness-type double patenting (i.e., unjustified
timewise extension of patent rights), Hubbell, 709 F.3d at 1145, may still
exist notwithstanding that the present application and the '065 patent were
filed on the same day. Abbvie Inc. v. Mathilda and Terence Kennedy
Institute of Rheumatology Trust, 764 F.3d 1366, 1373 (Fed. Cir. 2014)
("[p ]atents claiming overlapping subject matter that were filed at the same
time still can have different patent terms due to examination delays at the
PTO").
The fact that the Terminal Disclaimer was filed in connection with the
'065 patent likewise does not overcome the double-patenting rejection or
obviate the need for a terminal disclaimer in the present case. The second
rationale for obviousness-type double patenting is "to prevent multiple
infringement suits by different assignees asserting essentially the same
patented invention." Hubbell, 709 F.3d at 1145. While the Terminal
Disclaimer on the '065 patent limits the enforceability of the '065 patent
"only for and during such period that it and any patent granted on the
[present application] are commonly owned," no such restriction on
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enforceability exists with respect to any patent that may issue on the present
application.
Accordingly, we affirm the Examiner's rejection of claim 10 for
obviousness-type double patenting based on claims 11-14 of the '065 patent.
Claims 11-15 were not argued separately and fall with claim 10.
Conclusion of Law
A preponderance of evidence of record supports the Examiner's
conclusion that claim 10 is unpatentable on the ground of nonstatutory
obviousness-type double patenting. Claims 11-15 were not argued
separately and fall with claim 10.
SUMMARY
We affirm the rejection of claims 10-15 under 35 U.S.C. § 103(a)
based on Chen.
We affirm the rejection of claims 10-12, 14, and 15 under 35 U.S.C.
§ 103(a) based on Araujo.
We affirm the rejection of claims 10-15 on the ground ofnonstatutory
obviousness-type double patenting.
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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