BASF SE

Patent Trials and Appeals Board

Jan 28, 2020

14763203 - (D) (P.T.A.B. Jan. 28, 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.
14/763,203 07/24/2015 Sophia EBERT 456548US99PCT 2846
22850 7590 01/28/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
ASDJODI, MOHAMMADREZA
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
01/28/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SOPHIA EBERT, BJOERN LUDOLPH,
CHRISTOPH MUELLER, STEPHAN HUEFFER, and
ALEJANDRA GARCIA MARCOS

Appeal 2019-000023
Application 14/763,203
Technology Center 1700
____________

Before CATHERINE Q. TIMM, JEFFREY R. SNAY, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–11. We have jurisdiction under
35 U.S.C. § 6(b).
Oral hearing was held January 9, 2020.
We affirm in part.

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 BASF SE.
Appeal Br. 2.
Appeal 2019-000023
Application 14/763,203

2

CLAIMED SUBJECT MATTER

The present application generally relates to an aqueous formulation
for “hard surface cleaning such as hand dishware cleaning applications” and
a process of making such formulations. Specification filed July 24, 2015
(“Spec.”) 1. The Specification teaches that such formulations comprise at
least one alkoxylated polypropyleneimine,2 and at least one nonionic
surfactant, selected from either alkyl polyglycosides or alkoxylated Guerbet
alcohols having from 8 to 14 carbons. Id. The Specification further teaches
that the alkoxylated polypropyleneimine comprises alkoxy side chains and a
backbone of polypropyleneimine. Id. at 2.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. An aqueous formulation comprising
(A) at least one alkoxylated polypropylenimine, and
(B) at least one non-ionic surfactant, selected from
(B1) alkyl polyglycosides and
(B2) alkoxylated C8-C14-Guerbet alcohols.
Appeal Br. 35 (Claims App.).

2 The Specification and Appellant’s briefs refer to “polyethylenimine” and
“polypropylenimine.” See, e.g., Spec. 1. The Examiner generally refers to
“polyethyleneimine” and “polypropyleneimine.” See, e.g., Non-Final Act. 3.
The present decision will use the same spellings as used by the Examiner
except where quoting from the Specification or Appellant’s briefs.
Appeal 2019-000023
Application 14/763,203

3
REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Haerer US 5,602,093 Feb. 11, 1997
Cooremans et al.
(“Cooremans”)
US 2007/0275868 A1 Nov. 29, 2007
Evers et al. (“Evers”) US 2010/0323942 A1 Dec. 23, 2010
Hahn et al. (“Hahn”) US 2011/0183883 A1 July 28, 2011

REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1–5 and 8–11 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Cooremans in view of Hahn.
Non-Final Action dated Dec. 26, 2017 (“Non-Final Act.”) 3–4.
2. Claim 6 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Cooremans in view of Hahn and further in
view of Haerer. Id. at 4.
3. Claim 7 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Cooremans in view of Hahn and further in
view of Evers. Id. at 5.
DISCUSSION
Rejection 1. The Examiner rejects claims 1–5 and 8–11 as obvious
over Cooremans in view of Hahn. Id. at 3–4. In support of the rejection, the
Examiner finds that Cooremans teaches an aqueous dishwashing
composition that includes an alkoxylated polyalkyleneimine and nonionic
surfactants such as alkylpolyglycoside. Id. at 3. The Examiner concedes
Appeal 2019-000023
Application 14/763,203

4
that the “polyalkyleneimine of Cooremans is a polyet[h]yleneimine, which is
a derivative with one less carbon atom than what is instantly claimed.” Id.
The Examiner explains that “the rejection is based on close structural
similarity (analogous) between chemical compounds. This is founded on the
expectation that compounds similar in structure will have similar
properties.” Id. Thus, the Examiner relies on the structural similarity of
polyethyleneimine and polypropyleneimine.
The Examiner additionally relies upon the Hahn reference. Id. The
Examiner finds that Hahn teaches “a dishwashing composition comprising
alkoxylated polypropyleneimine (C2--C5 alkylimines).” Id. The Examiner
determines that Cooremans and Hahn are analogous art as they both relate to
dishwashing compositions. Id. The Examiner further determines that a
person of ordinary skill in the art would have had reason “to add (or
substitute) alkoxylated polypropyleneimine of Hahn [to] Cooremans[’]
composition with the motivation of using a midrange alkylimine as
equivalent (equal alternative) ingredient.” Id. at 3–4. The Examiner
determines that “the chemical analogousness of the ethyleneimine and
propyleneimine is such that it makes it very unlikely that an artisan of
ordinary skill in the art would be unaware of propyleneimine’s utilization in
the instantly claimed field of endeavor.” Id. at 6. The Examiner indicates
that Hahn is relied upon “[t]o provide a more direct reason for obviousness.”
Examiner’s Answer dated Aug. 10, 2018 (“Answer”) 6.
Appellant asserts error as to the rejection of claims 1, 8, 10, and 11 on
several bases. Appeal Br. 7–24. Appellant additionally asserts error as to
each of the rejections of claims 2, 3, and 9 and as to the rejection of claims 4
Appeal 2019-000023
Application 14/763,203

5
and 5 as a group. Id. at 24–27. To the extent the arguments raise separate
issues, we address the arguments separately.

Claims 1, 8, 10, and 11
With regard to the rejection of claims 1, 8, 10, and 11, we select claim
1 as representative.
Appellant first argues that the test data provided in the Specification
shows that “the inventive alkoxylated polypropylenimines are superior over
formulations containing comparative alkoxylated polyethylenimines. Thus,
there is no reasonable expectation that alkoxylated polypropylenimine and
alkoxylated polyethylenimine are ‘functional equivalents.’” Id. at 9; see also
id. at 9–12.
In the Answer, the Examiner contends that “polyalkyleneimines have
a broad application . . . in many fields of endeavor including that of
detergent industry (i.e. surface treating and dishwashing). Therefore,
appellant’s argument above is construed as being about the intensity of a
chemical effect and not the type of the effect.” Answer 6. The Examiner
further explains that “[t]his has been the basic reason for the above
mentioned rejection (Cooremans et al.) and the fact that appellant’s selection
of a very similar structure has produced a better result is considered an
obvious matter, indeed.” Id.
The Federal Circuit has offered the following guidance regarding
structural similarity:
To be clear, we recognize that structural similarity is an
important factor in assessing the motivation to combine and
reasonable expectation of success. It has been long recognized
that chemical compounds with similar structures often have
Appeal 2019-000023
Application 14/763,203

6
similar properties and that similarity in properties can be inferred
from structural similarity. In re Hass, 141 F.2d 122, 125 (CCPA
1944). Our cases have held that the greater the structural
similarity between the compounds, the greater the motivation to
combine and reasonable expectation of success. Eli Lilly & Co.
v. Zenith Goldline Pharm., Inc., 471 F.3d 1369, 1377 (Fed. Cir.
2006) (noting that, for a new chemical compound, finding
obviousness requires “structural similarity” and a “reason or
motivation to make the claimed compositions” (quoting In re
Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990) (en banc))); In re
Deuel, 51 F.3d 1552, 1558 (Fed. Cir. 1995) (“Structural
relationships may provide the requisite motivation or suggestion
to modify known compounds to obtain new compounds.”). The
opposite is true, too: the less the structural similarity, the less the
motivation to combine and the reasonable expectation of success.
In re Jones, 958 F.2d 347, 350 (Fed. Cir. 1992) (reversing the
prima facie obviousness finding because of the “lack of close
similarity of structure”).
Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1384–85 (Fed. Cir. 2018).
Here, the Examiner relies upon the structural similarity between
alkoxylated polypropyleneimine (as claimed) and alkoxylated
polyethyleneimine (as taught by Cooremans). Non-Final Act. 3. The
Examiner further relies upon Hahn as teaching that the two compounds are
“equal alternative[s].” Non-Final Act. 4; Answer 4.
Appellant does not dispute the structural similarity of the compounds.
Reply Brief filed Sept. 28, 2018 (“Reply Br.”) 3–4. Appellant does,
however, dispute the functional similarity of the compounds. Appeal Br. 9.
Appellant’s argument is largely predicated upon data set forth in its
Specification which, it contends, shows that the inventive alkoxylated
polypropyleneimines are superior to alkoxylated polyethyleneimines in the
context of dishwashing. Id. That is, Appellant argues that a person of
Appeal 2019-000023
Application 14/763,203

7
ordinary skill in the art would not have regarded the two compounds as
functionally similar because of its test results.
We do not find this reasoning persuasive. The Examiner has set forth
a reasoned basis why one of ordinary skill in the art would have had reason
to use alkoxylated polypropyleneimines in addition to, or instead of, the
alkoxylated polyethyleneimines of Cooremans. Non-Final Act. 3–4.
Appellant has not shown error in such reasoning. Data in the Specification
indicating that the claimed composition possesses properties not taught by
the references does not by itself defeat a prima facie case of obviousness.
See In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc) (“There is no
question that all evidence of the properties of the claimed compositions and
the prior art must be considered in determining the ultimate question of
patentability, but it is also clear that the discovery that a claimed
composition possesses a property not disclosed for the prior art subject
matter, does not by itself defeat a prima facie case.”) (emphasis added);
see also id. (“In particular, the statement that a prima facie obviousness
rejection is not supported if no reference shows or suggests the newly-
discovered properties and results of a claimed structure is not the law.”).
As its second argument, Appellant argues that the combination of
Cooremans and Han is improper. Appeal Br. 14–20. Appellant asserts that
Cooremans is directed toward improved grease cleaning when washing by
hand. Id. at 14–16. Appellant additionally contends that Hahn is directed
toward the prevention of corrosion of glassware when subject to automatic
dishwashing processes. Id. at 16–17.
Appellant seems to argue that one of skill in the art would not have
combined the teachings of Cooremans and Hahn because Cooremans relates
Appeal 2019-000023
Application 14/763,203

8
to hand washing while Hahn relates only to machine washing. Id. at 14–17.
This is not well supported by evidence. Hahn teaches a composition for the
prevention of corrosion “in particular during an automatic dishwashing
process.” Hahn, Abstract. Similarly, Hahn teaches that corrosion resistance
“has been found particularly in automatic dishwashing processes.” Id. ¶ 44.
The foregoing suggests that, while Hahn may have a “particular” use in
automatic dishwashing, other applications are not precluded.
Moreover, it is not apparent that the Examiner seeks to rely on Hahn
for its teachings regarding corrosion resistance. Rather, the Examiner relies
on Hahn for its teaching of the functional similarity of alkoxylated
polyethyleneimines and alkoxylated polypropyleneimines in a similar
application. Answer 6. This teaching is not rebutted.
Appellant further argues that Hahn does not describe alkoxylated
polypropyleneimine with specificity and does not teach that it is a preferred
embodiment. Id. at 17–19. This is not persuasive. A reference must be
considered for all that it teaches. See In re Applied Materials, Inc., 692 F.3d
1289, 1298 (Fed. Cir. 2012) (“A reference must be considered for everything
that it teaches, not simply the described invention or a preferred
embodiment.”). Further, Federal Circuit precedent indicates that inclusion
in a list does not render a particular formulation less obvious. Merck & Co.
v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the
[reference] discloses a multitude of effective combinations does not render
any particular formulation less obvious.”); see also Purdue Pharma Prods.
L.P. v. Par Pharm., Inc., 377 F. App’x 978, 982 (Fed. Cir. 2010) (finding
claim obvious over argument that “a person of skill in the art would not have
selected tramadol out of the myriad other possible active ingredients for use
Appeal 2019-000023
Application 14/763,203

9
in a once-daily formulation” where the prior art reference listed tramadol as
one of fourteen different opioid analgesics). Accordingly, the teaching of
compounds other than alkoxylated polypropyleneimine does not negate the
teaching relied upon by the Examiner.
Appellant further argues that a person of ordinary skill in the art
would have lacked a reasonable expectation of success that alkoxylated
polypropyleneimine “would have provided successful properties to clean
grease to the manual dish washing composition of Cooremans.” Appeal Br.
19–20. Appellant argues as follows:
One may try to use a different polyalkylenimine in the
composition of Cooremans et al., but there is no evidence on the
record that another polyalkylenimine would have reasonably
successfully achieved the goal of Cooremans et al. Based on the
composition of Hahn et al., a skilled person may at best try to use
various polyalkylenimines (derivatized or not) for an automatic
dishwashing in a manual dish washing composition, but there is
no reasonable expectation that any other polyalkylenimine, not
to mention specific alkoxylated polypropylenimine, would have
provided successful properties to clean grease to the manual dish
washing composition of Cooremans et al., which is the goal of
Cooremans et al., or any other improved properties.
Appeal Br. 19–20.
The Examiner determines that the rejection “is founded on the
expectation that compounds similar in structure will have similar
properties.” Non-Final Act. 3. The Examiner further determines that “the
chemical analogousness of the ethyleneimine and propyleneimine is such
that it makes it very unlikely that an artisan of ordinary skill in the art would
be unaware of propyleneimine’s utilization in the instantly claimed field of
endeavor.” Id. at 6. Appellant does not dispute the structural similarity of
Appeal 2019-000023
Application 14/763,203

10
ethyleneimine and propyleneimine. This close similarity supports the
Examiner’s finding of a reasonable expectation of success.
Third, Appellant argues that, even if the Examiner has set forth an
adequate prima facie case of obviousness, such case is rebutted by evidence
of unexpected results. Appeal Br. 9–13, 20. Rebuttal evidence may include
evidence of “secondary considerations,” such as “commercial success, long
felt but unsolved needs, [and] failure of others.” Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966). Rebuttal evidence may also include evidence that
the claimed invention yields unexpectedly improved properties not present
in the prior art. In re Fenn, 639 F.2d 762, 765 (CCPA 1981) (“Although it is
well settled that comparative test data showing an unexpected result will
rebut a prima facie case of obviousness, the comparative testing must be
between the claimed invention and the closest prior art.”).
The Examiner determines that the evidence of unexpected results is
not commensurate with the scope of the claims. Answer 6–7. “It is the
established rule that ‘objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.”’ Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 965 (Fed. Cir. 2014)
(quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). This is as true for
evidence of unexpected results as it is for any other type of objective
evidence of non-obviousness. See In re Peterson, 315 F.3d 1325, 1330 (Fed.
Cir. 2003) (“the applicant’s showing of unexpected results must be
commensurate in scope with the claimed range”); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980) (“In order to establish unexpected results for a
claimed invention, objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
Appeal 2019-000023
Application 14/763,203

11
support.”); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978)
(“Establishing that one (or a small number of) species gives unexpected
results is inadequate proof, for it is the view of this court that objective
evidence of non-obviousness must be commensurate in scope with the
claims which the evidence is offered to support.”) (internal citation omitted).
Here, claim 1 generally requires an aqueous formulation comprising
(A) an alkoxylated polypropylenimine, and (B) a nonionic surfactant.
Appeal Br. 35 (Claims App.). Thus, claim 1 encompasses every formulation
including any alkoxylated polyproyleneimine in combination with any of the
surfactants meeting the requirements of claim elements (B1) or (B2). The
claim lacks any limitation regarding the type or number of alkoxy groups
bound to the polyproyleneimine. Further, it encompasses the alkoxylated
polyproyleneimine when combined with any nonionic alkyl polyglycoside or
with any nonionic alkoxylated C8-C14-Guerbet alcohols. Accordingly, in
order to show unexpectedly beneficial results commensurate with the scope
of the claim, Appellant must provide evidence indicating that formulations
that include every alkoxylated polyproyleneimine demonstrate the asserted
beneficial results. Further, Appellant must show that a formulation
including an alkoxylated polyproyleneimine demonstrates the asserted
benefits when combined with any nonionic alkyl polyglycoside (B1) or with
any nonionic alkoxylated C8-C14-Guerbet alcohols (B2).
Appellant presents data indicating the results of two tests – the “oil
test” and the “clean plate test.” Table 3 from the Specification and
associated text, setting forth Appellant’s test data, are reproduced below.

Appeal 2019-000023
Application 14/763,203

12
Table 3: Formulations according to the invention, comparative formulations, and their properties
C-AF.1 C-AF.2 AF.3 AF.4 C-AF.5 AF.6 C-AF.7 AF.8
(A): GC.3 --- 0.35 0.16 --- 0.35 --- 0.35
PEI 0.35 0.35 --- --- 0.35 --- 0.35 ---
RF C-RF.1 RF.3 RF.3 RF.4 RF.5 RF.5 RF.7 RF.7
Oil test 1 41 68 72 65 65 60 71 73
Oil test 2 33 61 70 62 60 65 69 72
Clean
plates 1
18 27 30 26 25 27 28 32
Clean
plates 2
22 29 31 28 28 30 31 33
Clean
plates 3
16 26 29 24 26 28 29 32
All quantities in % by weight, based upon total formulation.
A difference of two plates is considered to be significant.

Table 3 (continued):
AF.9 AF.10 C-AF.11 AF.12 AF.13 C-AF.14 AF.15
(A): GC.5 0.35 2.0 --- 0.35 0.16 --- 0.35
PEI --- --- 0.35 --- --- 0.35 ---
RF RF.9 RF.10 RF.10 RF.10 RF.10 RF.14 RF.14
Oil test 1 64 63 70 74 68 71 73
Oil test 2 61 51 66 71 65 70 71
Clean
plates 1
26 24 28 31 27 29 31
Clean
plates 2
27 25 29 32 29 31 32
Clean
plates 3
25 22 28 31 28 30 31
Spec. 34.
The two tables reproduced above collectively comprise Table 3 from
the Specification. Id. In the top row of each chart, aqueous formulations
designated “AF” fall within the claims while those designated “C-AF” are
comparative and fall outside the scope of the claims. Appeal Br. 12. Row 2
Appeal 2019-000023
Application 14/763,203

13
indicates the concentration of “GC.3” and “GC.5” which are stated to be
alkoxylated polypropyleneimines that fall within the scope of the claims.
Appeal Br. 12; Spec. 28–29, ¶¶ 1.2.3, 1.2.5. In Row 3, “PEI” indicates
polyethyleneimine which is regarded as a comparative prior art formulation.
Appeal Br. 12. In Row 4, surfactants falling outside the scope of the claims
are designated “C-RF” while those falling within the claims are designated
as “RF.”
Appellant presents data for only two alkoxylated polyproyleneimines:
GC.3 and GC.5. The Specification includes information regarding the
synthesis of these alkoxylated polyproyleneimines. Spec. 28–29. Appellant
has not, however, cited us to any information regarding the structure of GC.3
and GC.5. Id. Test results for two polymers of unspecified structure are
inadequate to show unexpected results commensurate in scope with the
claims. Appellant has not shown that GC.3 and GC.5 are representative of
all alkoxylated polyproyleneimines regardless of differences in alkoxylation,
molecular weight, and branching.
Further, the data includes results for only a single comparative
surfactant (C-RF.1). See Table 3 (C-AF.1). The surfactant (C-RF.1) is
included within a formulation that also includes polyethyleneimine (PEI)
rather than a polypropyeneimine. Thus, Table 3 lacks even a single test
result of a formulation having an alkoxylated polyproyleneimine in
combination with a comparative surfactant. See Table 3.
Similarly, Appellant seeks to claim compositions having any
concentration of nonionic surfactant but supplies data only for the range 1–
4.5%. The Specification teaches that “formulations according to the
invention are more efficient, for example with respect to dishwashing and
Appeal 2019-000023
Application 14/763,203

14
degreasing, if surfactant (B) is present in comparably low amount.” Spec.
14. This suggests that formulations including surfactant (B) at higher
concentrations are less efficient and may not yield beneficial results. In
view of all of the foregoing, Appellant has not shown beneficial results
commensurate in scope with the claims at issue.
Additionally, one must show that the asserted benefit is surprising or
unexpected. An appellant may show that the claimed invention has an
unexpected property over the prior art “with evidence that the claimed
invention exhibits some superior property or advantage that a person of
ordinary skill in the relevant art would find surprising or unexpected.” In re
Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). An examination for
unexpected results is a factual, evidentiary inquiry. Id. Here, Appellant has
not cited to factual evidence in the Specification or elsewhere that indicates
that the test results are unexpected. See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997) (“Only if the ‘results of optimizing a variable’ are
‘unexpectedly good’ can a patent be obtained for the claimed critical
range.”).
In view of the foregoing, we determine that Appellant has not shown
error in the Examiner’s prima facie case of obviousness and has not rebutted
the prima facie case as to claims 1, 8, 10, and 11.

Claim 2
Claim 2 depends from claim 1 and further requires that “the at least
one alkoxylated polypropylenimine (A) is selected from those with a
polypropylenimine backbone having a molecular weight Mn of from 300 to
4,000 g/mol.” Appeal Br. 35 (Claims App.).
Appeal 2019-000023
Application 14/763,203

15
In seeking reversal of the rejection, Appellant briefly describes the
disclosures of Cooremans and Hahn, then concludes that they “do not
describe or suggest selecting an alkoxylated polypropylenimine (A) with a
polypropylenimine backbone having a molecular weight Mn of from 300 to
4,000 g/mol.” Id. at 24. However, Appellant does not address the
Examiner’s reasoning underlying the rejection, which is based on the finding
that the cited molecular weights overlap the range specified in claim 1 and
such overlapping ranges are evidence of prima facie obviousness. Non-Final
Act. 3; Ans. 8.
Further, we note that Cooremans teaches an embodiment that specifies
“Polyethyleneimine (Backbone Molecular Weight 600).” Cooremans ¶ 29
(Example 4). Accordingly, Appellant has not shown error with regard to the
rejection of claim 2.

Claim 3
Claim 3 depends from claim 1 and further requires that “the at least
one alkoxylated polypropylenimine (A) is selected from those having
alkylene oxide units and N atoms in a molar ratio of from 1 : 1 to 100 : 1.”
Appeal Br. (Claims App.). In the Non-Final Rejection, the Examiner finds
that Cooremans teaches a composition “wherein the molar ratio of N atom to
EO units (EO = 1-40) is within the claimed range.” Non-Final Act. 3 (citing
Cooremans ¶¶ 15–22, claim 1).
In its opening brief, Appellant asserts that the references “do not
describe or suggest selecting an alkoxylated polypropylenimine (A) having
alkylene oxide units and N atoms in a molar ratio of from 1: 1 to 100 : 1.”
Appeal Br. 24. Appellant further asserts that the cited portions of
Appeal 2019-000023
Application 14/763,203

16
Cooremans “do not describe or suggest selecting the claimed molar ratio[].”
Id. at 25. This is not persuasive. Formula (I) found in ¶ 21 of Cooremans
shows that there are “n” ethoxy groups attached to nitrogens in the
polyethyleneimine backbone. Cooremans ¶ 21, formula (I). Cooremans
teaches that “n of formula (I) has an average of 5-10.” Id. This indicates
that there are approximately 5 to 10 ethoxy units per nitrogen. Accordingly,
Appellant has not shown that the Examiner erred in finding that Cooremans
teaches the claimed alkoxylation.

Claims 4 and 5
Claim 4 depends from claim 1 and further requires that “the at least
one alkoxylated polypropylenimine (A) is selected from alkoxylated
polypropylenimines (A) having a linear polypropylenimine backbone.”
Appeal Br. 35 (Claims App.) (emphasis added). Claim 5 also depends from
claim 1 and further requires that “the at least one alkoxylated
polypropylenimine (A) is selected from alkoxylated polypropylenimines (A)
having a linear polypropylenimine backbone that bears no hydroxyl groups.”
Id. (emphasis added).
In the Non-Final Rejection, the Examiner finds that “the poly
alkyleneimine of Cooremans is linear and bears no hydroxyl group.” Non-
Final Act. 3. The Examiner, however, does not cite to any portion of
Cooremans in support of this finding. Id. In the Answer, the Examiner finds
that Cooremans formulae I and II teach that “each nitrogen (with electronic
valence of 3) is connected to three linear alkoxylation chain(s).” Answer 8.
The Specification indicates that the “polypropylenimine backbone can
be linear, predominantly linear or branched, predominantly linear being
Appeal 2019-000023
Application 14/763,203

17
preferred and linear being more preferred.” Spec. 2. The Specification
further indicates that “L (linear) correspond[s] to the fraction of secondary
amino groups.” Id. In formulae I and II, the amino groups are tertiary, not
secondary. Cooremans ¶¶ 21, 22. Accordingly, Appellant has shown error
in the Examiner’s finding that Cooremans teaches a linear
polypropyleneimine backbone and claims 4 and 5 have been shown to be
rejected in error.

Claim 9
Claim 9 depends from claim 1 and further requires that the
formulation comprise “from 0.1 to 1.0 % by weight of the at least one
alkoxylated polypropylenimine” and “from 0.5 to 5.0 % by weight of the at
least one nonionic surfactant.” Appeal Br. 37 (Claims App.). Claim 9
further includes an optional claim element. Id.
In seeking reversal of the rejection, Appellant briefly describes the
disclosures of Cooremans and Hahn, then concludes that the references fail
to “describe or suggest selecting the claimed combination of specific ranges
of the alkoxylated polypropylenimine (A) (0.1-1.0 wt. %); of the nonionic
surfactant (B) (0.5-5.0 wt.%) . . . from the broad ranges of each of the
components of a dishwashing formulation suggested in Cooremans et al. and
Hahn.” Appeal Br. 26–27 (argument regarding optional limitation omitted).
In the Non-Final Rejection, the Examiner finds that “Cooremans
teaches . . . alkoxylated polyalkyleneimine in the amount of 0.01-2%;
[0014], and nonionic surfactant in the amount of 0.1-20%; [0045].” Non-
Final Act. 4. In the Answer, the Examiner determines that “the instantly
claimed ranges are taught by both prior arts of Hahn and Cooremans. More
Appeal 2019-000023
Application 14/763,203

18
importantly, the corresponding ranges, taught by prior arts, are not required
to be exactly the same as questioned by appellant.” Answer 9.
Federal Circuit precedent provides that a prior art teaching of a
broader range may establish a prima facie case of obviousness.
[A] prior art reference that discloses a range encompassing a
somewhat narrower claimed range is sufficient to establish a
prima facie case of obviousness. That is not to say that the
claimed composition having a narrower range is unpatentable.
Rather, the existence of overlapping or encompassing ranges
shifts the burden to the applicant to show that his invention
would not have been obvious.
In re Peterson, 315 F.3d at 1330. Here, Appellant simply asserts that the
prior art references “do not describe or suggest selecting the claimed
combination of specific ranges.” Appeal Br. 26; see also Reply Br. 9. This
is inadequate to rebut the prima facie case of obviousness. Accordingly,
Appellant has not shown error with regard to the rejection of claim 9.

Rejection 2. The Examiner rejects claim 6 as obvious over
Cooremans, Hahn, and Haerer. Non-Final Act. 4. Claim 6 depends from
claim 1 and further specifies a particular structure of alkyl polyglycoside
(B1). Appeal Br. 36 (Claims App.). The Examiner finds that Cooremans
does not teach the claimed alkyl polyglycoside but that Haerer does teach
such structure. Non-Final Act. 4. The Examiner further determines that one
of skill in the art would have had reason “to substitute Cooremans’ alkyl
polyglycoside with that of Haerer with the motivation of promoting the
homogeneity in the composition and enhancing the storage duration as
taught by Haerer; [1:54-67].” Id.
Appeal 2019-000023
Application 14/763,203

19
Appellant argues that the Examiner has not advanced a persuasive
reason to combine the teachings of Cooremans and Haerer. Appeal Br. 30–
31. Appellant argues that the stated reason to combine, the promotion of
homogeneity in the composition and enhancement of storage duration,
relates only to rinsing aids that contain a foaming agent which are known to
have such problems. Id. at 31. Appellant asserts that Cooremans is not
known to have problems with homogeneity or storage duration. Id. We find
this reasoning to be persuasive. The advantages of the alkyl polyglycoside
disclosed by Haerer are taught in the context of maintaining the stability of a
rinse aid. In the Non-Final Action, the Examiner does not show that the
composition of the hypothetical combination lacked stability or would have
otherwise benefited from the alkyl polyglycoside of Haerer.
In the Answer the Examiner modifies the reasoning underlying the
rejection. Answer 9. There, the Examiner finds that Cooremans teaches
alkyl polyglycosides having only “slightly different structures” from those of
Haerer. Id. Cooremans teaches that “[t]he liquid detergent composition of
the present invention may further comprise surfactants other than the mid-
branched amine oxide discussed above, and are selected from nonionic,
anionic, cationic surfactants . . . and mixtures thereof.” Cooremans ¶ 35.
Under the heading for “Nonionic Surfactants,” Cooremans teaches that
“[a]lso suitable are alkylpolyglycosides having the formula R2O(CnH2nO)l
(glycosyl)x (formula (III)).” Id. ¶ 45.
The Examiner further determines as follows:
[A]ppellant’s argument that presence of a specific structure of
alkyl polyglycoside which is useful in machine washing would
not be useful for hand washing is not persuasive in absence of
any evidence to the contrary. Because, chemically it is unlikely
Appeal 2019-000023
Application 14/763,203

20
that alkyl polyglycoside of Haerer would lose its chemical
properties and advantages once placed in Cooremans’
composition instead of another very similar alkyl polyglycoside.
Answer 9. Thus, in the Answer, the Examiner seems to regard the basis for
the combination as a substitution of one nonionic surfactant for another
nonionic surfactant that is somewhat structurally similar. The Examiner,
however, has not shown the functional similarity of all alkyl polyglycosides
as nonionic surfactants. See Reply Br. 11. Further, both Haerer and
Cooremans include detailed teachings regarding their respective disclosed
alkyl polyglycosides, suggesting that not all alkyl polyglycosides are
regarded as equivalent in the prior art. Accordingly, the Examiner has not
shown adequate reason to combine the teachings of Haerer and Cooremans.
In view of the foregoing, Appellant has shown error in the rejection of
claim 6.

Rejection 3. The Examiner rejects claim 7 as obvious over
Cooremans, Hahn, and Evers. Non-Final Act. 5. Claim 7 depends from
claim 1 and further specifies that “an alkoxylated Guerbet C8-C14-Guerbet
alcohol (B2) is present and is selected from alkoxylated C8-C14-Guerbet
alcohols having from 3 to 40 alkoxide units per mole.” Appeal Br. 36
(Claims App.).
The Examiner determines that Evers teaches a dishwashing detergent
comprising nonionic surfactant such as ethoxylated C10-Guerbet alcohol
and that one of skill in the art would have had reason to use Evers’ Guerbet
nonionic surfactant with Cooremans composition in order to enhance grease
Appeal 2019-000023
Application 14/763,203

21
removal and increase shine efficacy. Non-Final Act. 5 (citing Evers,
Abstract).
In its brief, Appellant briefly summarizes Evers’ teachings and then
asserts that “[t]here is no motivation with a reasonable expectation of
success in substitution of the nonionic surfactants described in Cooremans et
al. with different nonionic surfactants.” Appeal Br. 32. This is insufficient
to present an issue for appeal. See 37 C.F.R. § 41.37(c)(1)(iv).
Accordingly, Appellant has not shown error with regard to the rejection of
claim 7.

CONCLUSION

The Examiner’s rejections of claims 1–3 and 7–11 are affirmed. The
Examiner’s rejections of claims 4–6 are reversed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 8–11 103(a) Cooremans, Hahn 1–3, 8–11 4, 5
6 103(a) Cooremans, Hahn,
Haerer
6
7 103(a) Cooremans, Hahn,
Evers
7
Overall
Outcome
1–3, 7–11 4–6

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED IN PART