Ex Parte Vial et al

Patent Trial and Appeal Board

Oct 17, 2017

12991506 (P.T.A.B. Oct. 17, 2017)

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.
12/991,506 11/08/2010 Christian Vial 81455-7380 9482
108145 7590
Winston & Strawn LLP
1700 K Street, N.W.
Washington, DC 20006
10/19/2017 EXAMINER
HIRT, ERIN E
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
10/19/2017 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):
patentdocket@winston.com
sfanelli @ winston. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN VIAL and ROGER LESLIE SNOWDEN1
Appeal 2016-001205
Application 12/991,506
Technology Center 1600
Before DONALD E. ADAMS, DEMETRA J. MILLS, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a method to confer, enhance, improve, or modify the odor
properties of a perfuming composition or of a perfumed article. Claims 9—
13, 19, and 20 are on appeal as rejected under 35 U.S.C. § 103(a).2 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Regarding the Real Party in Interest, Appellants identify, “Christian Vial
and Roger Leslie Snowden. An assignment to Firmenich Incorporated was
recorded on December 2, 2010.” App. Br. 1.
2 Claims 1—8, 17, 18, and 26—28 are cancelled and claims 14—16 and 21—25
stand withdrawn due to a restriction.
Appeal 2016-001205
Application 12/991,506
STATEMENT OF THE CASE
The Specification states, “[t]he present invention relates to the field of
perfumery. More particularly, it concerns some di-ester compounds which
possess a fruity odor.” Spec. 1:5—6. The Specification further states:
As non-limiting example of invention’s compounds one
may cite (-)-propyl (2S)-2-(isobutyryloxy)propanoate, which
represents a preferred embodiment of the invention, and
possesses a velvety fruity-apricot/mirabelle type note.
In fact, it has been found that this compound can be used
also to impart fruity-apricot odor as top-note, said top note being
fresh, ethery reminding of the apricot peel rather than an
alimentary note. This top note is quite surprising, indeed, other
known apricot type compounds, such as the lactones (e.g.
undecalactone gamma) or Veloutone (2,2,5-trimethyl-5-pentyl-
1-cyclopentanone; origin: Firmenich SA), are known to impart
only bottom-notes of the apricot type with a strong alimentary
aspect. . . .
Another example of invention’s compounds is represented
by (-)-ethyl (S)-2-(propanoyloxy)propanoate, which possesses a
fruity-vinous note with a floral aspect.
Id. at 2:15-28.
Claim 9 is representative and is reproduced below:
9. A method to confer, enhance, improve or modify the odor
properties of a perfuming composition or of a perfumed article
by imparting a fruity odor note which is devoid of herbaceous
notes, which method comprises adding to the composition or
article an effective amount of at least a compound of formula
R2 p
2
Appeal 2016-001205
Application 12/991,506
in the form of any one of its stereoisomers or of a mixture thereof,
and wherein R1 represents a C1-3 alkyl or alkenyl group, R2
represents a methyl group, R3 represents a Cm alkyl or alkenyl
group, and said compound (I) has from 8 to 11 carbon atoms.
App. Br. (Claims App’x).
The following rejection is on appeal:
Claims 9-13, 19, and 20 stand rejected under 35 U.S.C. § 103(a) over
Hirosuke3 and Rowe.4 Final Action 3.
DISCUSSION
An examiner bears the initial burden of presenting a prima
facie case of obviousness. . . . Once the examiner establishes a
prima facie case of obviousness, the burden shifts to the applicant
to rebut that case. . . . However, once the applicant has come
forward with rebuttal evidence, the examiner must consider the
totality of the evidence to determine whether the obviousness
rejection should stand....
In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011) (citations
omitted).
A claim can be obvious even where all of the claimed
features are not found in specific prior art references, where
“there is a showing of a suggestion or motivation to modify the
teachings of [the prior art] to the claimed invention.” SIBIA
Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349,1356
(Fed. Cir. 2000) (concluding that patent would have been
obvious in light of teachings in prior art which provided
motivation and suggestion to modify existing techniques to
arrive at method in question).
3 JP 08-113795 (published 1996) (English translation) (“Hirosuke”).
4 David J. Rowe, Chapter 4, Aroma Chemicals I: C, H, O Compounds, in
Chemistry and Technology of Flavours and Fragrances 63, Section
4.4, 1st paragraph (2005) (“Rowe”).
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Appeal 2016-001205
Application 12/991,506
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1307 (Fed. Cir. 2006).
However, “[e]ven when obviousness is based on a single prior art reference,
there must be a showing of a suggestion or motivation to modify the
teachings of that reference.” In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir.
2000). “[Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
The Examiner determined that Hirosuke, as supported by Rowe,
rendered the claims obvious because Hirosuke disclosed a perfuming
chemical compound that differed from the chemical compound recited by
the appealed claims only in having an isopropyl group in the position where
the claims require a methyl group, that spot being the claimed R2 location.
Final Action 4—5. The Examiner reasoned that the respective “R2 group”
options were so similar, both being esters, which Rowe identified as the
“workhorses of the flavour and fragrance industry,” that it would be obvious
to substitute a methyl group, as claimed, in place of the isopropyl group of
Hirosuke to achieve a fruity odor. Id.
Hirosuke discloses a chemical compound having the following
stmcture:
4
Appeal 2016-001205
Application 12/991,506
0
B*
I
O
o
Hirosuke 11 (annotated with dashed circle to indicate the R2 position, as
claimed). Hirosuke identifies the above-illustrated chemical compound as
“a publicly known compound,” “which has aroma flavor characteristics,
such as the durable flower, the fruits, and the grass, is blended with
consumption goods, such as food and drinks, luxury goods, and perfumeries
and cosmetics.” Id. 111,3.
In contrast to Hirosuke’s description of the fragrant properties of the
above-illustrated chemical compound, claim 9 recites that its compound
imparts a fruity odor without herbaceous notes. Appellants emphasize this
distinction in their arguments. App. Br. 7. Appellants argue that it is the
identified difference in chemical structure that imparts the lack of
herbaceous (grassy) odor to the claimed chemical compound as compared to
the chemical compound of Hirosuke and that such a difference was
unexpected and unpredictable in view of Appellants’ evidence submitted
with their Brief. Id. at 9-13 (citing C.S. Snell, On the Unpredictability of
Odor, 45 Agnew. Chem. Ind. Ed. 2654—61 (2006)). Appellants also argue
that neither Hirosuke nor Rowe suggest that Hirosuke’s chemical compound
should be modified to achieve the claimed compound, much less to adjust its
fragrance to do away with grassy notes. Id. at 11.
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Appeal 2016-001205
Application 12/991,506
We find the balance of evidence supports Appellants’ case. The
evidence suggests that there is a degree of unpredictability and uncertainly in
the perfumery arts and that even minute changes to chemical structure may
impart significant changes in odor (which rebuts any presumption that
somewhat similar compounds would possess similar properties). It is
without question that the chemical compound disclosed by Hirosuke is
different from that of the claims, both in chemical structure and in associated
odor. We conclude that the Examiner has not established a reason to change
Hirosuke’s chemical structure to that of the claims. “The mere fact that the
prior art may be modified in the manner suggested by the Examiner does not
make the modification obvious unless the prior art suggested the desirability
of the modification.” In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992).
In view of the above, we reverse the obviousness rejection.
SUMMARY
The rejection of the claims as obvious is reversed.
REVERSED
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