Sanggu Kim

Patent Trials and Appeals Board

Oct 5, 2020

13603335 - (D) (P.T.A.B. Oct. 5, 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.
13/603,335 09/04/2012 Sanggu Kim 089854-001910US-0853695 1809
20350 7590 10/05/2020
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
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EXAMINER
SOROUSH, LAYLA
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
10/05/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SANGGU KIM
____________

Appeal 2020-001677
Application 13/603,335
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, TAWEN CHANG, and
MICHAEL A. VALEK, Administrative Patent Judges.

VALEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 submits this appeal under 35 U.S.C. § 134(a) involving
claims to an oil-in-water microemulsion composition. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the Agency for Science, Technology
and Research as the real party in interest. Appeal Br. 3. Herein, we refer to
the Non-Final Action mailed June 4, 2018 (“Non-Final Act.”); Appellant’s
Appeal Brief filed June 28, 2019 (“Appeal Br.”); Examiner’s Answer mailed
November 1, 2019 (“Ans.”); and Appellant’s Reply Brief filed December
30, 2019 (“Reply Br.”).
Appeal 2020-001677
Application 13/603,335

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STATEMENT OF THE CASE
Claims 1–21 are on appeal and can be found in the Claims Appendix
of the Appeal Brief. Claim 1 is the only independent claim and
representative of the claims on appeal. It reads as follows:
1. An oil-in-water microemulsion for a cosmetic or a
pharmaceutical application, said microemulsion comprising:
(a) 1% to 20% w/w of sucrose ether, wherein the
surfactant system has an HLB of between 9 and 16;
(b) 1% to 10% w/w/ of a polyhydric alcohol;
(c) 0.5% to 10% w/w of an essential oil selected from the
group consisting of eucalyptus oil, lavender oil, tea tree oil,
green tea oil, rosemary oil, patchouli oil, cedar wood atlas oil,
clove leaf oil, palmarosa oil, grapefruit oil, bergamot calabrian
oil, pine oil, cardamom oil, clary sage oil, peppermint oil,
cinnamon leaf oil, ylang oil, and a combination thereof;
(d) triacetin; and
(e) water,
wherein the microemulsion includes less than 2% w/w/ of a
monohydric alkanol; and wherein the microemulsion is suitable
for topical application.
Appeal Br. 13.
Appellant seeks review of the following rejections:
I. Claims 1–4 and 7–21 under 35 U.S.C. § 103 as obvious
over De Campo2 and Bradbury3; and
II. Claims 5 and 6 under 35 U.S.C. § 103 as obvious over De
Campo, Bradbury, and Bala.4
Appeal Br. 5.

2 EP 1 598 060 A1, published Nov. 23, 2005 (“De Campo”).
3 US 6,124,362, issued Sept. 26, 2000 (“Bradbury”).
4 WO 96/06920, published Mar. 7, 1996 (“Bala”).
Appeal 2020-001677
Application 13/603,335

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Analysis
Examiner’s rejections are premised on the same combination of De
Campo and Bradbury as applied to claim 1. See Non-Final Act. 6. For this
reason, Appellant argues the rejections together “as a unit.” Appeal Br. 6.
We too consider the rejections together, selecting claim 1 as the
representative claim for our analysis.
The issue is whether the preponderance of the evidence supports
Examiner’s conclusion that the oil-in-water microemulsion of claim 1 is
obvious over the articulated combination of De Campo and Bradbury.
Examiner finds that De Campo discloses a microemulsion
composition containing all of the components in claim 1 with the exception
of triacetin. See Ans. 5; Non-Final Act. 4–5; (acknowledging that De
Campo “fails to specifically teach . . . triacetin”). Examiner relies on
Bradbury’s teaching that a variety of different components including
“plasticizers” such as “triacetin” may be used as vehicles for certain
pharmaceutical compositions. Ans. 5; Non-Final Act. 5. According to
Examiner, a skilled artisan would have been motivated to add triacetin to De
Campo’s microemulsion by “the teaching of Bradbury et al. that plasticizers
including triacetin are useful vehicles in the formulation to act as diluent,
dispersant or carrier for the active components in the composition.” Ans. 9.
Appellant contends, inter alia, that the rejection is premised on
improper hindsight because Examiner selects triacetin “from Bradbury’s
long lists [of components] without any plausible rationale for [its] use in an
emulsion formulation.” Appeal Br. 9. According to Appellant, Bradbury
presents “laundry lists of each type of vehicle – broadly described as being
in solid, semi-solid, or liquid form – that could possibly be used in [its] hair
Appeal 2020-001677
Application 13/603,335

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growth regulating formulations to act as a diluent, dispersant, or carrier for
the active components (i.e., triterpenes)” of those formulations. Reply Br.
11. Appellant acknowledges that triacetin is mentioned as a “plasticizer” in
those lists, but urges
there are literally hundreds of thousands of possible
components that could be used as vehicles for Bradbury's
triterpene compositions for hair growth regulation, and there is
no discussion as to which components could be used in
combination to arrive at the stable oil-in-water micremulsions
as claimed. Bradbury provides insufficient guidance. Just
because Bradbury mentions "triacetin" as a plasticizer does not
mean one of skill in the art would be motivated to incorporate
triacetin as a component in an oil-in-water microemulsion as
claimed, nor would a skilled artisan have any expectation of
success for doing so.
Id. at 13; see also Appeal Br. 10–11.
On this record, we are persuaded by Appellant’s argument and
determine that Examiner has not articulated a sufficient rationale for
combining Bradbury’s teaching regarding triacetin with the microemulsion
composition of De Campo. As Examiner acknowledges, there is no mention
of triacetin, nor of plasticizers more generally, in De Campo. See Non-Final
5. The only rationale Examiner provides for why it would have been
obvious to add triacetin to De Campo’s microemulsion compositions is the
fact that Bradbury lists triacetin as a plasticizer and identifies plasticizers as
a type of “vehicle to act as a diluent, dispersant or carrier for the active
components” in its formulations. Bradbury 12:41–46. That teaching,
however, does not evidence any rationale for why one of ordinary skill in the
art would have been motivated to add a plasticizer such as triacetin to the
microemulsion composition of De Campo.
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Nor is this a case where the prior art reference can be interpreted as
teaching a “multitude of effective combinations” all of which are suitable for
producing the desired property or effect. See Merck & Co., Inc. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). As Appellant points out,
Bradbury lists a multitude of wide-ranging vehicles for the preparation of
topical compositions in “any form” including creams, gels, tonics, sprays or
pomade. Appeal Br. 10 (quoting Bradbury 5:48–51); see also Bradbury
12:20–22:59 (listing categories and examples of “acceptable vehicles”).
Thus, while Bradbury teaches that its compositions may be “in the form of
an emulsion” (Bradbury 12:50), the lengthy lists of vehicles it identifies are
intended for the preparation of a broad range of compositions many of which
are unrelated to emulsions. For this reason, Bradbury cannot be viewed as
teaching that triacetin is useful as “a diluent, dispersant or carrier for the
active components” specifically in an emulsion (id. at 12:24), much less an
“oil-in-water microemulsion” as recited in claim 1.
In sum, neither De Campo, nor Bradbury, evidence a rationale for
adding either a plasticizer generally, nor triacetin specifically, to an oil-in-
water microemulsion. Because Examiner has not articulated a sufficient
rationale for combining these references, Examiner has not met the burden
to establish a prima facie showing of obviousness.5 Accordingly, the
preponderance of the evidence does not support the rejection of claim 1 and
we, therefore, reverse that rejection. We reverse the rejections of the other
claims for the same reason as claim 1.

5 Because there is no prima facie showing, we do not reach Appellant’s
argument that its evidence of unexpected results is sufficient to overcome
Examiner’s prima facie case. See Appeal Br. 7–8; Reply Br. 3–10.
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Application 13/603,335

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 7–21 103 De Campo,
Bradbury
1–4, 7–21
5, 6 103 De Campo,
Bradbury, Bala
5, 6
Overall
Outcome
1–21

REVERSED