KING SAUD UNIVERSITY

Patent Trials and Appeals Board

Aug 19, 2020

2020000703 (P.T.A.B. Aug. 19, 2020)

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.
15/084,441 03/29/2016 ZIYAD BINKHATHLAN 32693.64 4813
37833 7590 08/19/2020
Richard C. Litman
Nath, Goldberg & Meyer
112 S. West Street
Alexandria, VA 22314
EXAMINER
KANTAMNENI, SHOBHA
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
08/19/2020 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):
litman@4patent.com
mbashah@nathlaw.com
uspto@nathlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ZIYAD BINKHATHLAN,
ABDULLAH H. ALOMRANI, AWS ALSHAMSAN,
IBRAHIM I. ALJUFFALI, and RAISUDDIN ALI

Appeal 2020-000703
Application 15/084,441
Technology Center 1600
____________

Before RICHARD M. LEBOVITZ, JASON V. MORGAN, and
DEBORAH KATZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 103 as obvious.
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject the claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as King Saud
University, Riyadh, Saudi Arabia. Appeal Br. 3.
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STATEMENT OF THE CASE
Claims 1 and 4 stand rejected by the Examiner as follows:
Claims 1 and 4 under 35 U.S.C. § 103 as obvious in view of
Bogdanov et al. (Polymer, 1998, 39(8–9):1631–36) (“Bogdanov”). Final Act
3; Ans. 3–4.
Claims 1 and 4 under 35 U.S.C. § 103 as obvious in view of JP
3818457 (published Sept. 6, 2006) (English translation) (“Kuroda”). Final
Act. 5; Ans. 7–8.
Independent claim 1 is reproduced below:
1. A poly(ɛ-caprolactone)-ethoxylated fatty alcohol
copolymer, comprising a block copolymer having at least one
ɛ-caprolactone units and ethoxylated fatty alcohol units, the
block copolymer having the structural formula:

wherein n and m are integers, and further wherein n is 1 to 100,
m is 10 to 100, and R is an alkyl group having 18 carbon atoms.

REJECTION BASED ON BOGDANOV
The Examiner found that Bogdanov describes a caprolactone block
copolymer having a structure similar to the structure recited in claim 1. Final
Act. 3. The Examiner found that Bogdanov does not describe the recited n
and m values or the R alkyl group as having 18 carbon atoms as recited in
the claim. Id. However, the Examiner found it would have been obvious to
one of ordinary skill in the art to make a polymer with the recited n and m
values because Bogdanov “teaches that copolymers with different PCL
[poly(ɛ-caprolactone)] block length can be obtained by varying the
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concentration of caprolactone monomer” and that it would have been routine
optimization to do so. Id. at 4.
The Examiner also found that, based on Bogdanov’s teachings, it
would have been obvious to one of ordinary skill in the art to make the
copolymer with an R alkyl group having 18 atoms with the expectation of
obtaining a biodegradable polymer with the desired properties. Ans. 4.
Appellant argues that Bogdanov “does not teach or suggest or render
obvious the claimed caprolactone block copolymer having a structural
formula as in Claim 1,” but does not identify a defect in the Examiner’s fact-
finding or reasoning. Consequently, we find that the Examiner met the initial
burden of presenting a prima facie case of obviousness. In re Huai-Hung
Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011). Once the examiner establishes a
prima facie case of obviousness, the burden shifts to the applicant to rebut
that case. Id.
In rebuttal, Appellant contends that “the chain length of C18 provides
superior drug solubilization capacity and membrane activity than those with
shorter or longer chain lengths.” Appeal Br. 12. As evidence of this,
Appellant cites Ribeiro,2 which Appellant argues demonstrates that “the R
value is critical and that R being 18 provides unexpected and superior results
over that of Bogdanov.” Appeal Br. 13. Appellant also states that Ribeiro
“demonstrated that poly(ethylene oxide) based copolymers, Brij 78
(C18H37E20) showed superior results in loading drugs as compared to other
Brij surfactants having different R values and other di-block[ ]and tri-block
copolymers.” Id. This evidence, as found by the Examiner, is not persuasive.

2 Ribeiro et al., “Solubilisation capacity of Brij surfactants,” International
Journal of Pharmaceutics, 2012, 436:631–35.
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“One way for a patent applicant to rebut a prima facie case of
obviousness is to make a showing of ‘unexpected results,’ i.e., to show that
the claimed invention exhibits some superior property or advantage that a
person of ordinary skill in the relevant art would have found surprising or
unexpected.” In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). The burden of
establishing unexpected results rests with the appellant. In re Klosak, 455
F.2d 1077, 1080 (CCPA 1972). To meet this burden, appellant must provide
objective evidence demonstrating that the claimed subject matter imparts
results that would have been unexpected by one of ordinary skill in the art at
the time of the invention, relative to the closest prior art. See In re Baxter-
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art.”).
In this case, as discussed by the Examiner, Ribeiro only analyzed the
drug solubilizing properties of poly(ethylene oxide)-based copolymers have
an R group alkyl chain of 18 carbon atoms. Ans. 6. Specifically, Ribeiro
compared the ability of Brij 78, Brij 98, and Brij 700, each with an 18
carbon atom alkyl chain and a poly(ethylene oxide) chain, to solubilize a
poorly water-soluble drug. Ribeiro, Abstract. The Brij compounds had the
same length alkyl chain of 18 carbon atoms, but differed in the number of
oxyethylene (E) groups present in the poly(ethylene oxide) chain. Id. Ribeiro
found that drug solubility varied with the number of oxyethylene groups. Id.
Ribeiro did not show that a carbon chain length of 18 carbon atoms was
superior to carbon chain lengths of any other number; only one carbon chain
length was tested by Ribeiro. The effect on solubility was shown by Ribeiro
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to be related to the poly(ethylene oxide) chain, not the length of the alkyl
group. Id.
These results are not sufficient to establish unexpected superiority of a
compound of claim 1 having an R alkyl group of 18 carbon atoms. To
establish unexpected results, there must be a comparison to the closest prior
art. Baxter, F.2d at 392. Here, there was no comparison made to a compound
have the number of R groups disclosed in the compounds described by
Bogdanov. No comparison was made to any other R group length. It cannot
be determined whether the claimed compound having an R alkyl group of 18
carbon atoms is unexpectedly superior to compounds with the same
structure, but differing by the length of the alkyl group chain. Appellant also
presented no arguments regarding the n and m values.
Appellant also did not provide any evidence that the results described
in Ribeiro would have been unexpected by one ordinary skill in the art as
required by Soni, 54 F.3d at 750. The only statement of “superiority” we
have been directed to, was made by the attorney in the Appeal Brief.
An applicant cannot prove unexpected results with attorney
argument and bare statements without objective evidentiary
support. See In re Lindner, 59 C.C.P.A. 920, 457 F.2d 506, 508
(CCPA 1972); In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997) (“attorney argument [is] not the kind of factual evidence
that is required to rebut a prima facie case of obviousness”); In
re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (“It is well settled that
unexpected results must be established by factual evidence. Mere
argument or conclusory statements . . . [do] not suffice.”)
(quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)).
CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).

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Consequently, because the Examiner established prima facie
obviousness of the claimed subject matter, and Appellant did not provide
adequate rebuttal evidence, after considering all the evidence anew, we
afform the obviousness rejection of claim 1 and dependent claim 4 which
was not separately argued.

REJECTION BASED ON KURODA
The Examiner found Kuroda describes a block copolymer with the
same general structure as the formula recited in claim 1. Final Act 5–6. The
Examiner also found that Kuroda teaches that various alcohols can be used
to make the claimed structure, including stearyl alcohol which has an R alkyl
group of 18 carbon atoms as recited in the claim. Id. The Examiner stated
that Kuroda does not describe the specifically recited n and m values, but
determined it would have been obvious to have made a copolymer with the
claimed values by optimizing result specific parameters. Id. at 6.
With respect to the claimed compound having an R alkyl group of
C18, the Examiner also found Kuroda describes a copolymer where the R
alkyl group is C19, a difference of one CH2 group. Final Act. 6. The
Examiner found such difference to be obvious because “homologous
compounds are considered to be obvious” and cited case law to support this
statement. Id. The Examiner also cited Kuroda’s disclosure of stearyl
alcohol having an R alkyl group of 18 atoms as further evidence of the
obviousness of the claimed compound. Id. at 6–7.
Appellant argues that Kuroda “does not teach or suggest or render
obvious the claimed caprolactone block copolymer having a structural
formula as in Claim 1,” but does not identify a defect in the Examiner’s fact-
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finding or reasoning. Appeal Br. 13. Consequently, we find that the
Examiner met the initial burden of presenting a prima facie case of
obviousness. Huai-Hung Kao, 639 F.3d at 1066. Once the examiner
establishes a prima facie case of obviousness, the burden shifts to the
applicant to rebut that case. Id.
Appellant contends that the claimed compound provides “unexpected
and superior results over that of Kuroda.” Appeal Br. 13. However,
Appellant does not provide any objective evidence that the claimed
compound has superior properties to the compound described in Kuroda.
There is only a statement by the attorney in the Appeal Brief that the results
are unexpected. As indicated above, [a]n applicant cannot prove unexpected
results with attorney argument and bare statements without objective
evidentiary support.” CFMT, 349 F.3d at 1342.
Consequently, because the Examiner establish prima facie
obviousness of the claimed subject matter, and Appellant did not provide
adequate rebuttal evidence, after considering all the evidence before us, we
afform the obviousness rejection of claim 1 and dependent clam 4 which
was not separately argued.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1, 4 103 Bogdanov 1, 4
1, 4 103 Kuroda 1, 4
Overall
Outcome
1, 4

Appeal 2020-000703
Application 15/084,441

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TIME PERIOD
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).

AFFIRMED