Ex Parte Kang et al

Patent Trial and Appeal Board

Feb 27, 2019

13521832 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/521,832 07/12/2012 Gyung Don Kang
23413 7590 03/01/2019
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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.
YPL1155US 3094
EXAMINER
HENRY, MICHAEL C
ART UNIT PAPER NUMBER
1623
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GYUNG DON KANG, HYUN YOUNG PARK, and
JINKYUKANG
Appeal2018-004400
Application 13/521,832
Technology Center 1600
Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and
MICHAEL A. VALEK, Administrative Patent Judges.
VALEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 submit this appeal under 35 U.S.C. § 134(a) involving
claims to an acetylated hydroxyalkylalkylcellulose. The Examiner rejected
the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Claims 1-3, 5, 11, and 12 are on appeal, and can be found in the
1 Appellants identify the real party in interest as Samsung Fine Chemicals
Co., Ltd. App. Br. 2. Herein we refer to the Amendment filed January 3,
2017 ("Amendment"), Final Office Action mailed May 11, 2017 ("Final
Act."), Appeal Brief filed October 4, 2017 ("App. Br."), Examiner's
Answer, mailed January 31, 2018 ("Ans."), and Reply Brief filed March 22,
2018 ("Reply").
Appeal2018-004400
Application 13/521,832
Claims Appendix of the Appeal Brief. Claim 1 is the only independent
claim and is representative of the claims on appeal. Claim 1 reads as
follows:
1. An acetylated hydroxyalkylalkylcellulose having a degree of
substitution (DS) of alkyl group of 1.21 to 2, a molar
substitution (MS) of hydroxyalkyl group of greater than O to
1, and a degree of substitution (DS) of acetyl group of 1 to 2
wherein the acetylated hydroxyalkylalkylcellulose is not
soluble in water, but is soluble in an organic solvent.
App. Br. 13. Appellants do not argue claims 2, 3, 5, 11, and 12 separately so
those claims stand or fall with claim 1. 37 C.F.R. § 41.37 (c)(l)(iv).
Appellants seek review of the following grounds of rejection made by
Examiner:
I. Claims 1-3, 5, 11, and 12 under 35 U.S.C. § I03(a) as obvious
over Panzer2 and Babcock. 3
II. Claims 1-3, 5, 11, and 12 under 35 U.S.C. § I03(a) as obvious
over Babcock.
App. Br. 3.4
The issue is: Does the preponderance of evidence of record support
Examiner's conclusion that the cited prior art renders obvious the claimed
acetylated hydroxyalkylalkylcellulose polymer?
2 Hans W. P. Panzer et al., US 3,322,130, issued May 30, 1967 ("Panzer").
3 Walter C. Babcock et al., US 2008/0262107 Al, published Oct. 23, 2008
("Babcock").
4 Appellants identify claim 13 as being at issue on appeal (see App Br. 4),
but that claim was withdrawn and is not before us now. Amendment at 2;
see App. Br. 2.
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Application 13/521,832
Findings of Fact
FF 1. Panzer teaches a modified methyl cellulose adhesive for binding
together tobacco sheet compositions. Panzer col. 1, 11. 37--48. The methyl
cellulose is modified so that "at least some of the hydroxy groups of the
constituent glucose units are altered by the introduction of relatively
hydrophobic groups, [and] is employed to decrease the water sensitivity or
hydrophilicity of the methylcellulose gum." Id. at col. 1, 11. 26-31.
FF2. Panzer teaches that these hydrophobic groups are introduced by
substituting them for the unreacted hydroxyl radicals in the methylcellulose.
Id. at col. 2, 11. 16-33. There are three available hydroxyl groups in the
anhydroglucose monomeric unit of a cellulose molecule so the "practical
maximum degree of substitution is 3.0." Id. at col. 2, 11. 34--38. Panzer
teaches that the degree of substitution ("DS") of its methyl groups generally
ranges from "about 1.0 to about 2.6" and that the remaining hydroxyl groups
are substituted for "ester and/ or ether substituents so that the modified
methylcellulose ... attains a degree of substitution more nearly approaching
3.0." Id. at col. 2, 11. 28-38.
FF3. In Example 6, Panzer teaches that methylhydroxypropylcellulose (DS
methoxyl 1.4; DS hydroxypropyloxyl 0.2) is acetylated according to the
procedure in Example 5 to result in an acetylated methylhydroxypropyl-
cellulose that is "practically fully acetylated." Id. at col. 5, 1. 19. The
introduction of the relatively hydrophobic ester ( acetyl) and ether
(hydroxypropyl) substituents in Example 6 results in an "improvement in
hydrophobic property." Id. at col. 6, 1. 15.
FF4. Babcock teaches acetylated methyl hydroxypropyl cellulose polymers,
specifically hydroxypropyl methyl cellulose acetate (HPMCA). Babcock,
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Application 13/521,832
Abstract. Babcock teaches these polymers for use in pharmaceutical
compositions as a controlled-release matrix or coating material. Id. ,r,r 52-53.
Babcock teaches that for such uses the DS of acetyl group "should range
from about 0.2 to about 1.0" Id. ,r 53; see also ,r 52 (teaching that the DS of
acetyl group can be "about 1.0 and still be effective as a controlled-release
matrix"). Babcock explains that if the DS of acetyl group "is too high, the
HPMCA becomes so hydrophobic it is no longer water soluble or
dispersible." Id. ,r 48.
FF5. Babcock teaches that its acetylated methyl hydroxypropyl cellulose
polymers can be used in "melt processes" to prepare pharmaceutical
compositions. Id. ,r 123. The processing temperature in such processes
varies "depending on the melting point of the drug and polymer." Id. ,r 124.
Analysis
Because both of Examiner's rejections rely on the teachings in
Babcock and present related issues, we discuss them together.
Appellants contend that the cited prior art does not teach an acetylated
hydroxyalkylalkylcellulose with a DS of acetyl group of 1 to 2, as claimed.
Appellants point to Panzer Example 4, which they calculate has a DS of
acetyl group of less than 1. App. Br. 7. While acknowledging that Babcock
discloses a DS of "about 1.0" for its acetyl group, Appellants argue that
Babcock does not also disclose that its polymer is water insoluble, but
soluble in an organic solvent. Id. at 8. Appellants also assert that there is no
rationale to modify Panzer and Babcock to provide an acetylated
hydroxyalkylalkylcellulose with that combination of elements. Id.
According to Appellants, "an increase in hydrophobicity and insolubility in
water, as taught by Babcock, does not necessarily equate to solubility in an
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Application 13/521,832
organic solvent." Id. at 9. Appellants argue that the claimed DS range
results in polymers with the "unexpected benefit of being insoluble in water
and soluble in an organic solvent" and of being amenable to melt processing
because they melt upon heating rather than decomposing. Id. at 10.
We are not persuaded by Appellants' arguments and agree with
Examiner's statement of the rejection and thoughtful responses to
Appellants' arguments in both the Answer and Final Action, which we adopt
and incorporate by reference. We conclude that Examiner has provided
sufficient evidence and articulated rationale to demonstrate a prima facie
case of obviousness. We provide the following additional comments to
Appellants' arguments.
We agree with Examiner that Panzer teaches a DS of acetyl group
within the claimed range of 1 to 2. As explained above, Panzer teaches the
substitution of ether and ester groups onto methylcellulose such that the total
DS of the three substituent groups approaches 3.0. FF2. In Example 6 a
methylhydroxypropylcellulose having a total DS of 1.6 for its alkyl and
hydroxyalkyl substituents is esterified "until it is practically fully
acetylated." Ans. 11 (quoting Panzer col. 5, 1. 19); FF3. The DS of acetyl
group in the fully acetylated monomer is 1.4 (i.e., the maximum possible DS
of 3 minus the starting DS of 1.6). Id. Thus, a skilled artisan would
understand Panzer to teach that the DS of acetyl group in Example 6 is about
1.4, which is well-within the claimed range. Ans. 11. We are not persuaded
by Appellants' argument that the DS of acetyl group in Panzer Example 4 is
outside the claimed range because the rejection was premised on both
examples. Final Act. 3. And, Appellants do not dispute that Examiner's
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calculation of the DS of acetyl group in Example 6 is correct. See generally
Reply 1-3.
Like Panzer, Babcock teaches an acetylated hydroxyalkylalkyl-
cellulose with DS for its substituents that are within the claimed ranges. See
FF3, FF4. For this reason, we determine that Examiner has established a
prima facie case of obvious over Panzer and Babcock, and over Babcock
alone. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("[W]e and
our predecessor court have consistently held that even a slight overlap in
range establishes a prima facie case of obviousness.").
We also agree that Examiner has articulated a sufficient rationale to
combine Panzer and Babcock. Both references teach acetylated methyl
hydroxypropylcellulose or HPMCA. See FF3; FF4. Babcock teaches that
increasing the DS of acetyl group in HPMCA increases hydrophobicity. Id.
Panzer teaches that when such polymers are used as a binder or adhesive
substance, hydrophobicity is a desirable property because it reduces
sensitivity to water. FFl; In re Boesch, 617 F.2d 272,276 (CCPA 1980)
("[D]iscovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art."). Accordingly, a skilled
artisan would have found it obvious to follow Babcock's teaching to further
increase the desirable hydrophobicity in Panzer's polymers by increasing the
DS of acetyl group.
We are not persuaded by Appellants' argument that Panzer and
Babcock fail to teach the claimed solubility properties (i.e., that the polymer
be insoluble in water, but soluble in an organic solvent). App. Br. 8-9.
Examiner has shown that a "sufficiently close relationship" exists between
the structure of the claimed compounds and those taught in Panzer and
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Babcock to "'create an expectation' ... that the new compound will have
'similar properties' to the old." Aventis Pharma Deutsch/and GmbH v.
Lupin, Ltd., 499 F.3d 1293, 1301 (Fed. Cir. 2007) (quoting In re Dillon, 919
F.2d 688, 692 (Fed. Cir. 1990) (en bane)). In other words, a skilled artisan
would expect Panzer and Babcock's cellulose compounds, which have the
same type and DS of substituents as the compounds in Appellants' claims, to
exhibit the same claimed solubility properties. Indeed, Babcock teaches that
if the DS of acetyl group is high enough the polymer "is no longer water
soluble or dispersible." Babcock ,r 48. Moreover, we agree with Examiner
that "it is well known and accepted in the art that 'like dissolves like."' Ans.
18. A skilled artisan would therefore understand that substituting relatively
hydrophobic groups, like acetyl, for the more polar hydroxyl groups on
cellulose would tend to make the resulting polymer more soluble in organic
solvents, which are generally less polar than water.
We are not persuaded by Appellants' argument that the data in Table
2 of the Specification shows that increasing the DS of acetyl group "does not
necessarily equate to solubility in an organic solvent." App. Br. 9.
Appellants rely on Comparative Example 1, which they say has a DS of
acetyl group of 2.43 and was found to be insoluble in some organic solvents.
Id. But the same data shows that Comparative Example 1 was soluble in
several other organic solvents. Specification, Table 2. Claim 1 requires
only that the polymer be "soluble in an organic solvent." Comparative
Example 1 meets that requirement even though its DS of acetyl group
exceeds the upper limit in Appellants' claims. Accordingly, Appellants have
not shown that the claimed range is somehow critical or yields unexpected
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results sufficient to outweigh the evidence of obviousness on this record.
See Peterson, 315 F.3d at 1330-31.
Appellants' argument that polymers within the claimed DS range
exhibit the unexpected benefit of being amenable to melt processing fails for
the same reason. A skilled artisan would reasonably expect the polymers
taught in Panzer and Babcock to exhibit the same properties because they
have the same structural features, especially in light of Babcock, which
specifically teaches that such polymers are amenable to melt processing.
FF5; see Aventis, 499 F.3d at 1301.
We are also unpersuaded by Appellants' argument that the cited prior
art discloses only the lower limit of the claimed DS of acetyl group range.
App. Br. 10. Panzer teaches that the maximum total DS is 3.0 and that the
DS of methyl on its starting material is "about 1.0." FF2. Given those
teachings, a skilled artisan would expect the upper limit of the DS that could
be achieved by fully acetylating Panzer' s methyl cellulose compounds to be
2-the same upper limit in Appellants' claims. But even if we agreed with
the premise of Appellants' argument, which we do not, both Panzer and
Babcock still disclose polymers that overlap with the claimed DS ranges.
FF3; FF4. That structural overlap between the prior art and the claimed
polymers supports a conclusion of obviousness. And, as explained above,
Appellants have not provided persuasive evidence to the contrary. See
Peterson, 315 F.3d at 1329.
For all these reasons, Appellants' arguments fail to persuade us that
Examiner erred in rejecting the claims. Accordingly, we affirm.
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Application 13/521,832
SUMMARY
We affirm the rejection of claims 1-3, 5, 11, and 12 under 35 U.S.C.
§ 103 over Panzer and Babcock.
We affirm the rejection of claims 1-3, 5, 11, and 12 under 35 U.S.C.
§ 103 over Babcock.
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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