Ex Parte Scheffler

Board of Patent Appeals and Interferences

Nov 2, 2010

11630180 (B.P.A.I. Nov. 2, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/630,180 06/08/2007 Armin Scheffler WEM-088US 5281
54004 7590 11/02/2010
MUIRHEAD AND SATURNELLI, LLC
200 FRIBERG PARKWAY
SUITE 1001
WESTBOROUGH, MA 01581
EXAMINER
KEYS, ROSALYND ANN
ART UNIT PAPER NUMBER
1621
MAIL DATE DELIVERY MODE
11/02/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ARMIN SCHEFFLER
__________

Appeal 2010-007357
Application 11/630,180
Technology Center 1600
__________

Before CAROL A. SPIEGEL, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of producing a triterpene-containing oleogel. The Examiner rejected the
claims as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

1 The two-month time period for filing an appeal or commencing a
civil action, as recited in 37 C.F.R. § 1.304, or for filing a request
for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from
the “MAIL DATE” (paper delivery mode) or the
“NOTIFICATION DATE” (electronic delivery mode) shown on
the PTOL-90A cover letter attached to this decision.
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Statement of the Case
The Specification teaches that the “invention relates to an oleogel-
forming agent, an oleogel having this gel-forming agent and a method for
producing an oleogel” (Spec. 1, ll. 6-7). “Oleogels are based on a nonpolar
liquid, e.g., an oil, a wax or a paraffin, to which a gel-forming agent is added
to achieve the desired physical properties” (App. Br. 3).
The Claims
Claims 1, 3-11, and 25 are on appeal. Other than claims 1 and 25, the
claims have not been argued separately and therefore stand or fall together.
37 C.F.R. § 41.37(c)(1)(vii). Claims 1 and 25 are representative and read as
follows:
1. A method for producing a triterpene-
containing oleogel, comprising:
forming an oleogel using at least one highly
dispersed triterpene having an average particle size
of less than 50 µm that acts as an oleogel-forming
agent in the oleogel.

25. The method as recited in Claim 1, wherein
the at least one highly dispersed triterpene is the
only oleogel-forming agent in the oleogel.

The issue
The Examiner rejected claims 1, 3-11, and 25 under 35 U.S.C. §
102(b) as anticipated by Scheffler2 (Ans. 3).
The Examiner finds that “Scheffler discloses a process for making
gels comprising triterpenes (see paragraph 0054) having a particle size of

2 Scheffler, US 2003/0087789 A1, published May 8, 2003.
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less than 40 µm, in particular 2 to 32 µm (see paragraph 0035). The
triterpene is betulin and is obtained in a quantity of 90% by weight or
above” (Ans. 3). The Examiner finds that it “is inherent that the surface area
would coincide with that which is claimed as the particle size is less than 10
µm. The triterpenes may be employed individually” (Ans. 3).
Appellant contends that “Scheffler is entirely silent in these
paragraphs about the triterpene being used as a gel-forming agent, for
example, with respect to the identified gel cosmetic. Indeed, nothing in these
paragraphs distinguishes a gel from any other of the other cosmetics in terms
of their formulations” (App. Br. 3).
Appellant contends that the “Scheffler discloses in paragraph 0037
that the triterpenes emulsify the emulsion. An emulsifier, however, is not a
gel-forming agent. Furthermore, emulsifiers usually do not have gel-forming
properties” (App. Br. 4). Appellant contends that:
Appellant has distinguished in the specification an oleogel
from an oleosol (a viscous preparation). Accordingly, the
Examiner’s citation in the Scheffler reference to thickening
using a triterpene, with no disclosure or any statements
concerning thickening beyond a gelation limit to form an
oleogel, cannot satisfy the requirements for inherency on
which the Examiner's entire arguments rely to reject
Appellant’s claimed invention.

(App. Br. 6). Appellant “submits that the cited cream example does not
necessarily disclose the use of a highly dispersed triterpene as an oleogel-
forming agent in forming an oleogel” (App. Br. 7).
Appellant also contends that “reliance on an inherency argument
cannot be sustained for the feature of the at least one highly dispersed
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triterpene is the only oleogel-forming agent in the oleogel, as is recited in
claim 25” (App. Br. 8).
The issues with respect to this rejection are:
(i) Does the evidence of record support the Examiner’s conclusion
that Scheffler inherently teaches the claimed method for forming a
triterpene-containing oleogel?
(ii) Does the evidence of record support the Examiner’s conclusion
that Scheffler inherently teaches at least one highly dispersed triterpene is
the only oleogel-forming agent in the oleogel as recited in claim 25?
Findings of Fact
1. The Specification teaches a powder which “contains 85% by
weight betulin, 5% by weight betulinic acid, 3% oleanolic acid, 0.7% by
weight lupeol, and 6.3% by weight other triterpene derivatives” (Spec. 6, ll.
20-22).
2. The Specification teaches that “[u]sing this highly dispersed
powder as a gel-forming agent, an oleogel was produced by mixing the
powder with 9% by weight sunflower oil, based on the total weight of the
oleogel. The result was a semisolid gel with a very strong thixotropic
behavior” (Spec. 6, ll. 23-25).
3. The Specification teaches that the oleogel contains “a nonpolar
liquid in proportion between 80% by weight and 99% by weight, based on
the total weight of the gel” (Spec. 4, ll. 5-7).
4. The Specification teaches that the “nonpolar liquid is, for
example, a vegetable oil such as sunflower oil, olive oil, avocado oil, or a
mixture of these oils” (Spec. 5, ll. 15-17).
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5. The Specification teaches that the oleogel contains “the above
mentioned triterpene-containing oleogel-forming agent as the gel-forming
agent in a proportion between 1% by weight and 20% by weight, preferably
between 3% by weight and 15% by weight . . . based on the total weight of
the gel” (Spec. 4, ll. 8-11).
6. Scheffler teaches a “plant extract [which] contains at least one
of the substances betulin . . . A particularly suitable combination is
comprised of betulin>80%, betulinic acid<10%, lupeol<3%, oleanolic
acid<4%, erythrodiol<4% and water<1%” (Scheffler 4 ¶ 0039).
7. Scheffler teaches that “[d]epending upon the desired
consistency, the proportion of the triterpene and/or its derivative can be
varied in the mentioned concentration range. . . . If the emulsion is used in
the form of a cream, the concentration of the triterpene and/or its derivative
is preferably 3.5 and 10%” (Scheffler 4 ¶ 0040).
8. Scheffler teaches the “the use of the triterpenes for manufacture
of a cosmetic, preferably in the form of a salve, a lotion, a cream, a gel”
(Scheffler 5 ¶ 0054).
9. Scheffler teaches, regarding the composition of Birch cork
extract, that a typical gas chromatogram shows “values of 84 to 86% betulin,
4 to 5% betulinic acid, approximately 1% lupeol and approximately 1%
oleanolic acid” (Scheffler 8 ¶ 0128).
10. Scheffler teaches, in Table 1, a composition composed of 4%
Birch cork extract, 29.3 % Avocado oil, 14.7 % Almond oil and 52% water
(see Scheffler 8 ¶ 0132).
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11. Scheffler teaches that the “inventive process has also been
found to be of particular advantage, when the crystallization of the triterpene
occurs as micro-crystallization with an average particle size of <40 µm, in
particular from 2 to 32 µm” (Scheffler 4 ¶ 0035).
Principles of Law
“Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102,
on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively,
the burden of proof is the same, and its fairness is evidenced by the PTO’s
inability to manufacture products or to obtain and compare prior art
products.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Analysis
Claim 1
The Specification teaches that an oleogel according to the present
invention contains “a nonpolar liquid in proportion between 80% by weight
and 99% by weight, based on the total weight of the gel” (Spec. 4, ll. 5-7; FF
3) and “an oleogel was produced by mixing the powder with 9% by weight
sunflower oil, based on the total weight of the oleogel” (Spec. 6, ll. 22-23;
FF 2). The Specification teaches that the “nonpolar liquid is, for example, a
vegetable oil such as sunflower oil, olive oil, avocado oil, or a mixture of
these oils” (Spec. 5, ll. 15-17; FF 4).
Thus, the Specification teaches that an oleogel can be formed with a
nonpolar liquid in ranges from 9% to 99% by weight of the gel (FF 2-3).
The Specification also teaches a “triterpene-containing oleogel-
forming agent as the gel-forming agent in a proportion between 1% by
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weight and 20% by weight, preferably between 3% by weight and 15% by
weight . . . based on the total weight of the gel” (Spec. 4, ll. 8-11; FF 5).
Scheffler teaches a Birch Cream A composition in Table 1 which is
composed of 4% of a triterpene-containing oleogel-forming agent (FF 9),
which is substantially identical to the composition of the triterpene-
containing oleogel-forming agent disclosed in the Specification (FF 1).
The Birch Cream A composition of Scheffler comprises 29.3%
Avocado oil and 14.7% Almond oil, for a total nonpolar liquid concentration
of 44% (FF 10). This falls directly within the 9% to 99% range of amounts,
by weight, of nonpolar liquids disclosed by the Specification as forming
oleogels and uses the same nonpolar liquids as those disclosed by the
Specification (FF 2-4).
Scheffler further teaches the claimed particle size, teaching that the
“inventive process has also been found to be of particular advantage, when
the crystallization of the triterpene occurs as micro-crystallization with an
average particle size of <40 µm, in particular from 2 to 32 µm” (Scheffler 4
¶ 0035; FF 11).
We agree with the Examiner that “since the triterpene of Scheffler is
formed in an emulsion (a highly dispersed form) that has a particle size that
overlaps with the claimed particle size it is inherently a gel-forming agent in
the cosmetic/pharmaceutical preparations of Scheffler” (Ans. 5).
Appellant contends that “Scheffler is entirely silent in these
paragraphs about the triterpene being used as a gel-forming agent, for
example, with respect to the identified gel cosmetic. Indeed, nothing in these
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paragraphs distinguishes a gel from any other of the other cosmetics in terms
of their formulations” (App. Br. 3).
We are not persuaded. First, Scheffler explicitly teaches using a
triterpene to manufacture a gel (FF8). Second, Scheffler teaches using the
triterpene in amounts which fall within the range of gel-forming agents
disclosed in the Specification (FF 5), which would therefore inherently
function as gel forming agents. See Best, 562 F.2d at 1255. Appellant has
provided no evidence to rebut this presumption, based upon the teachings of
Scheffler and of Appellant’s own Specification (FF 1-11).
We are also not persuaded by Appellant’s argument that the art does
not recognize triterpenes as gel-forming agent, specifically that “Scheffler
discloses in paragraph 0037 that the triterpenes emulsify the emulsion. An
emulsifier, however, is not a gel-forming agent. Furthermore, emulsifiers
usually do not have gel-forming properties” (App. Br. 4).
In Schering, the Federal Circuit noted that “this court rejects the
contention that inherent anticipation requires recognition in the prior art.”
Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373, 1377
(Fed.Cir.2003). Schering also commented that “[o]ther precedents of this
court have held that inherent anticipation does not require that a person of
ordinary skill in the art at the time would have recognized the inherent
disclosure. E.g., In re Cruciferous Sprout Litig., 301 F.3d 1343, 1351
(Fed.Cir.2002).” Id. Also see MEHL/Biophile Int’l Corp. v. Milgraum, 192
F.3d 1362, 1366 (Fed.Cir.1999) (“Where … the result is a necessary
consequence of what was deliberately intended, it is of no import that the
article’s authors did not appreciate the results.”)
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Appellant contends that:
Appellant has distinguished in the specification an oleogel
from an oleosol (a viscous preparation). Accordingly, the
Examiner’s citation in the Scheffler reference to thickening
using a triterpene, with no disclosure or any statements
concerning thickening beyond a gelation limit to form an
oleogel, cannot satisfy the requirements for inherency on
which the Examiner's entire arguments rely to reject
Appellant’s claimed invention.

(App. Br. 6). Appellant “submits that the cited cream example does not
necessarily disclose the use of a highly dispersed triterpene as an oleogel-
forming agent in forming an oleogel” (App. Br. 7).
We are not persuaded. In Table 1, the Birch Cream A formulation,
Scheffler teaches a composition with 4% of the identical triterpene to that
claimed, and 44% of a nonpolar liquid, which falls within the range of 9% to
99% disclosed in Appellant’s Specification as forming an oleogel (FF 1-10).
Having identified a composition which falls within the scope of Appellant’s
claims and the disclosure of Appellant’s Specification, the Examiner
reasonably relied upon the inherency doctrine to shift the burden to
Appellant to demonstrate that the Birch Cream A formulation of Scheffler
does not inherently satisfy the requirements of the claim. Appellant has
provided no such data.
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Claim 25
Appellant argues that “Scheffler does not disclose at least one highly
dispersed triterpene being the only oleogel-forming agent in an oleogel”
(App. Br. 10).
We are not persuaded. Having already concluded that Scheffler’s
Birch Cream A formulation inherently meets the claim requirements as
discussed above, we note that other than water and the nonpolar liquids of
Avocado oil and Almond oil, the only component in the Birch Cream A
formulation is the highly dispersed triterpene agent. Consequently, the
Birch Cream A formulation has only the highly dispersed triterpene agent as
an “oleogel-forming agent” and is reasonably found to inherently anticipate
claim 25.
Conclusion of Law
(i) The evidence of record supports the Examiner’s conclusion that
Scheffler inherently teaches the claimed method for forming a triterpene-
containing oleogel.
(ii) The evidence of record supports the Examiner’s conclusion that
Scheffler inherently teaches at least one highly dispersed triterpene is the
only oleogel-forming agent in the oleogel as recited in claim 25.
SUMMARY
In summary, we affirm the rejection of claims 1 and 25 under 35
U.S.C. § 102(b) as anticipated by Scheffler. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 3-11 as these
claims were not argued separately.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED

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MUIRHEAD AND SATURNELLI, LLC
200 FRIBERG PARKWAY
SUITE 1001
WESTBOROUGH MA 01581