Ex Parte Sakuma et al

Board of Patent Appeals and Interferences

Apr 21, 2010

10502404 (B.P.A.I. Apr. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte YASUMITSU SAKUMA and KAZUHITO MIYOSHI
__________

Appeal 2009-0069341
Application 10/502,404
Technology Center 1600
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Decided:2 April 21, 2010
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Before TONI R. SCHEINER, RICHARD M. LEBOVITZ, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to an anionic
surfactant powder. The Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 Kao Corporation is the real party in interest.
2 Oral argument was presented in this case on April 14, 2010.

Appeal 2009-006934
Application 10/502,404

STATEMENT OF THE CASE
Claims 1-4 and 9-16 stand rejected and are on appeal (App. Br. 2).
Claim 1 is representative and reads as follows:
Claim 1: An anionic surfactant powder comprising
polyoxyalkylene alkyl ether sulfates in powder form in which
the average addition mol number of alkylene oxides is 0.05 to 1
and the content of polyoxyalkylene alkyl ether sulfates
provided with alkylene oxides added thereto in an amount of 4
mol or more is 30% by weight or less based on the total anionic
surfactant.

The only rejection before us for review is the Examiner’s rejection of
claims 1-4 and 9-16 under 35 U.S.C. § 103(a) as being obvious in view of
Breitzke3 (Ans. 3-4).
OBVIOUSNESS
ISSUE
The Examiner finds that Breitzke discloses a composition that
contains the claimed polyoxyalkylene ether sulfates in powder form, but
does not “explicitly teach all the ranges of instant claims 1-3 and 9-16”
(Ans. 3). The Examiner nonetheless contends that an ordinary skilled artisan
would have considered it obvious “to determine suitable ranges through
routine or manipulative experimentation to obtain the best possible results,
as these are variable parameters attainable within the art” (id.).
Appellants argue, among other things, that claim 1 requires the
average addition mole number of alkylene oxides to be 0.5 to 1, whereas
Breitzke discloses a minimum average value of 2 for this parameter (App.
Br. 4). In view of the difference between the claims and the prior art,

3 Willi Breitzke et al., U.S. Pat. No. 5,362,479, issued Nov. 8, 1994.
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Appellants argue, the Examiner’s rationale that the claimed range would
have been obtained through routine experimentation is erroneous (id. at 4-5).
The Examiner responds that Appellants have not shown criticality for
the claimed range in the form of unexpected results (App. Br. 6). Moreover,
the Examiner argues, Appellants’ Specification discloses that a value as high
as 2 for this parameter is useful (Ans. 6).
Appellants reply that the large difference between the ranges in
Breitzke and claim 1 factually distinguishes the instant situation from the
cases cited by the Examiner as establishing prima facie obviousness based
on the proximity between prior art and claimed ranges (Reply Br. 2 (citing
Titanium Metals v. Banner, 778 F.2d 775 (Fed. Cir. 1985) and In re
Woodruff, 919 F.2d 1575 (Fed. Cir. 1990)). Appellants also argue that a
conclusion of obviousness cannot be based on equivalence known only to an
applicant (Reply Br. 3 (citing In re Ruff, 256 F.2d 590, 598 (CCPA 1958)).
In view of the positions advanced by Appellants and the Examiner,
the issue with respect to this rejection is whether the Examiner erred in
concluding that an ordinary artisan would have considered polyoxyalkylene
alkyl ether sulfates in powder form, with an average addition mol number of
alkylene oxides of 0.05 to 1, obvious in view of Breitzke’s teachings.
FINDINGS OF FACT (“FF”)
1. Breitzke discloses “the use of special alkyl ether sulfates as a
surfactant component in oral hygiene and dental care preparations”
(Breitzke, col. 1, ll. 5-7).
2. In particular, Breitzke discloses that “alkyl ether sulfates having
an average content of 2 to 10 glycol ether groups, which satisfy a
limited specification in regard to homolog distribution and alkyl
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sulfate content, ideally fulfil[l] the taste requirements which a
surfactant for oral hygiene and dental care preparations is expected to
satisfy” (id. at col. 1, ll. 41-46).
3. Thus, Breitzke discloses alkyl ether sulfates of the formula (I):
R1—O— (C2H4O)x —SO3M

in which R1 is a linear alkyl group containing 12 to 18 carbon
atoms, M is an alkali metal or magnesium ion and x has an
average value of 2 to 10, at least 50% by weight of the mixture
consisting of homologs with x-1 to x+1 glycol ether groups and
the content of alkyl sulfates in which x=0 being below 10% by
weight, as a surfactant component in oral hygiene and dental
care preparations.

(Id. at col. 1, ll. 50-59.)
4. Breitzke discloses:

It has now been found that particular advantages in terms
of processing and application can be obtained by converting the
alkyl ether sulfate mixtures to be used in accordance with the
invention into free-flowing powders and incorporating them in
this form in the oral hygiene and dental care preparations.
The aqueous solutions of the alkyl ether sulfate mixtures
which accumulate in the production process cannot be
converted into free-flowing powders simply by removal of
water, for example by spray drying. Instead, the aqueous
solutions or pastes have to be mixed with inert carrier materials
and converted together with the carrier materials into the form
of free-flowing powders by removal of water.

(Id. at col. 3, ll. 7-10.)
5. The Specification discloses that polyoxyalkylene alkyl ether sulfates
having an average addition mol number of alkylene oxides of 0.05 to 1, and
which have 30% by weight or less, based on the total anionic surfactant, of
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molecules with 4 mol of added alkylene oxide, do not require the addition of
inert carriers to form powders (Spec. 33-38).
PRINCIPLES OF LAW
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
1992).
“[A] prima facie case of obviousness exists when the claimed range
and the prior art range do not overlap but are close enough such that one
skilled in the art would have expected them to have the same properties.” In
re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
ANALYSIS
We agree with Appellants that the Examiner has not made a prima
facie case of obviousness.
As to the Examiner’s optimization rationale (Ans. 3), the highest
value for the average molar number of alkylene oxides recited in claim 1 is
half the lowest value of the corresponding range in Breitzke. Moreover, the
difference between the uppermost claimed value (1) and lowermost prior art
value (2) is a significant portion of the prior art range of 2 to 10 average
moles of alkylene oxide.
We acknowledge that prima facie obviousness can be shown by a
finding that a prior art range for a particular parameter is close enough to the
claimed range such that an ordinary artisan would have expected the claimed
composition to have the same properties as the prior art composition. In re
Peterson, 315 F.3d at 1329.
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Again, however, the highest value for the average molar number of
alkylene oxides recited in claim 1 is half the lowest value of the Breitzke’s
corresponding range. The Examiner points to no evidence, other than
Appellants’ own disclosure, that would have suggested to an ordinary artisan
that the claimed compositions would have the same properties as Breitzke’s
compositions, despite this difference. Nor has the Examiner pointed to any
evidence of record suggesting that an ordinary artisan would have
considered it desirable, or even suitable, to reduce the degree of alkylene
oxide substitution in Breitzke’s compositions to the extent recited in claim 1.
In sum, the Examiner has not provided sufficient evidence that the
differences between what is claimed and what is in the prior art are so
“close” that persons of ordinary skill in the art would have arrived at the
claimed values through routine optimization.
Moreover, as noted above, the Specification provides evidence that
compositions having the claimed degree of alkylene oxide substitution can
be prepared in powdered form in the absence of inert carriers (FF 5),
whereas Breitzke explicitly discloses that its compositions cannot (FF 4).
Thus, the evidence of record supports Appellants’ assertion that the claimed
compositions do in fact have different properties than Breitzke’s.
In sum, because we are not persuaded that the Examiner has made a
prima facie case of obviousness with respect to claim 1, we reverse the
Examiner’s obviousness rejection of that claim, and its dependents, over
Breitzke.

REVERSED

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cdc

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA VA 22314
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