Elevance Renewable Sciences, Inc.

Patent Trials and Appeals Board

Oct 28, 2020

14596092 - (D) (P.T.A.B. Oct. 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.
14/596,092 01/13/2015 Georgeta Hategan ERS-147-1-US-1 9934
144757 7590 10/28/2020
Elevance Renewable Sciences, Inc. (Main)
Kilpatrick Townsend & Stockton LLP
1100 Peachtree St. NE
Suite 2800
Atlanta, GA 30309
EXAMINER
LI, AIQUN
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
10/28/2020 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):
elevance_docketing@cardinal-ip.com
ipefiling@kilpatricktownsend.com
patents@elevance.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEORGETA HATEGAN, BRUCE FIRTH, FREDERYK
NGANTUNG, SELIM ERHAN, DHANANJAY PURANIK, and
CHARLES COBURN

Appeal 2019-006883
Application 14/596,092
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MICHAEL G. MCMANUS, and JANE
E. INGLESE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1, 2, 11, 16, 22, 23, 38, and 39.2
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—i.e., “Elevance Renewable Sciences, Inc.” (Application
Data Sheet filed January 13, 2015 at 6), which is also identified as the real
party in interest (Appeal Brief filed April 27, 2019 (“Appeal Br.”) at 3).
2 See Appeal Br. 9–10; Final Office Action entered April 19, 2018 (“Final
Act.”) at 3–5; Examiner’s Answer entered July 3, 2019 (“Ans.”) at 3–7.
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Application 14/596,092

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I. BACKGROUND
The subject matter on appeal relates to a composition for treating high
molecular weight components of a petroleum fluid (Specification filed
January 13, 2015 (“Spec.”) ¶ 2). According to the Inventors, such
compositions may be added to a petroleum fluid to improve rheological
properties or may also be used to remove deposits of high molecular weight
components from surfaces of equipment used for extracting or transporting
petroleum or natural gas (id.).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
1. A composition for dissolving petroleum wax or
asphaltenes, the composition comprising olefinic ester
compounds and a non-ionic surfactant having a hydrophilic-
lipophilic balance (HLB) ranging from 4 to 10, where HLB is
determined by Griffin’s Method, and wherein the olefinic ester
compounds are methyl esters of 9-decenoic acid, 9-undecenoic
acid, or 9-dodecenoic acid.
(Appeal Br. 11 (emphasis added)).
II. REJECTIONS ON APPEAL
The claims on appeal stand rejected under 35 U.S.C. § 103 as follows:
A. Claims 1, 2, 16, 22, 23, 38, and 39 as unpatentable over Gross3
in view of Allen et al.4 (“Allen”); and
B. Claim 11 as unpatentable over Gross, in view of Allen and
Heintz.5
(Ans. 3–7; Final Act. 3–5).

3 US 2004/0038847 A1, published February 26, 2004.
4 US 2013/0225469 A1, published August 29, 2013.
5 US 2007/0259802 A1, published November 8, 2007.
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III. DISCUSSION
1. Grouping of Claims
For Rejection A, the Appellant relies on the same arguments for all
claims subject to this rejection, focusing only on independent claim 1
(Appeal Br. 9–10). For Rejection B, the Appellant also relies on the same
arguments offered for claim 1, adding only that Heintz does not cure the
alleged deficiencies in the rejection as maintained against claim 1 (id. at 10).
Therefore, we confine our discussion to claim 1, which we designate as
representative pursuant to 37 C.F.R. § 41.37(c)(1)(iv). Claims 2, 11, 16, 22,
23, 38, and 39 stand or fall with claim 1.
2. The Examiner’s Position
The Examiner finds that Gross describes a cleaning composition for
hard surfaces comprising a methyl ester of a C6–C22 unsaturated carboxylic
acid, which encompasses the three methyl ester species highlighted in
reproduced claim 1 above, and a nonionic surfactant having a hydrophilic-
lipophilic balance (HLB) of 4–10 (Ans. 3; Final Act. 3). The Examiner
acknowledges that “Gross does not expressly name methyl 9-dodecenoate[,
methyl-9-undecenoate,] or methyl 9-decenoate” (id.). Relying on Allen,
which the Examiner finds as teaching that a methyl ester derived from
soybean oil comprising methyl 9-decenoate and methyl 9-dodecenoate may
be used as a hard surface cleaner in industrial degreaser formulations, the
Examiner concludes:
[I]t would have been obvious for a person of ordinary skill
in the art to utilize the methyl 9-decenoate and/or methyl 9-
dodecenoate of Allen in the hard surface clean composition of
Gross since it has been held that it is prima facie obviousness to
use a known material based on its suitability for its intended use,
in the instant case, a methyl ester of C6-22 unsaturated carboxylic
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acid derived from a natural oil for a hard surface cleaning
composition.
(Ans. 3–4; Final Act. 3).
3. The Appellant’s Contentions
The Appellant contends that Allen does not cure the deficiency in
Gross relative to claim 1’s subject matter because “[a]lthough Allen recites
the claimed methyl ester compounds, it nowhere suggests using these
compounds as components of cleaning compositions” (Appeal Br. 9). The
Appellant urges that, “[r]ather, Allen identifies the claimed methyl ester
compounds as starting materials for making sulfonates, amides, and other
compounds, which may, in turn, be used for cleaning” and that “[i]n fact, in
Table 10 of Allen, the claimed methyl esters are listed as comparative
examples and specifically identified as having ‘inferior’ performance as
industrial degreasers” (id. (emphases omitted)). According to the Appellant
“if ordinarily skilled artisans were looking to modify the teachings of Gross
in view of Allen, they would tend to follow Allen’s lead and convert the
methyl esters to sulfonates, amides, or other derivatives that Allen
identifies” and “would certainly not employ compounds that Allen
specifically identifies as ‘inferior[]’” (id.).
4. Opinion
We have fully considered the Appellant’s arguments but find them
insufficient to identify reversible error in the Examiner’s rejection. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Gross describes a terpene-free, hard surface cleaning composition
comprising a C1–C4 alkyl ester of a C6–C22 saturated or unsaturated
carboxylic acid and a surfactant having an HLB of from about 4 to about 10
(Gross ¶ 11). With respect to the surfactant component, Gross states that
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any surfactant with the specified HLB may be used, including linear alcohol
ethoxylates and nonyl phenol ethoxylates, which are nonionic (id. ¶ 18).
With respect to the ester component, which Gross refers to as a primary
solvent, methyl esters of C8–C10 fatty acids are mentioned as preferred
examples (id. ¶¶ 15–17). Given these teachings, we discern no error in the
Examiner’s finding that “Gross discloses a range of the esterified acids
where the alkyl ester can be methyl and [the] carboxylic acid can be
decenoic and dodecenoic acid” (Ans. 5). Thus, Gross alone would have
suggested to a person having ordinary skill in the art that a methyl ester of 9-
decenoic acid would be a suitable primary solvent because it is a known
species that falls within a limited number of compounds defined by the sub-
genus of preferred primary solvent compounds disclosed in Gross. Wm.
Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364–65 (Fed.
Cir. 2012) (“strong case of obviousness” exists where the combination of
ingredients recited in the claims were based on selections from a finite
number of identified, predictable solutions); Merck & Co., Inc. 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.”).
Regarding Allen, we agree with the Examiner’s assessment (Ans. 6–
7). The mere fact that Allen discovered an advance over previous prior art
compositions (Allen ¶¶ 224–25), such as that disclosed in Gross, does not
negate such previous prior art compositions from the realm of prior art that
may be applied against current claim 1. In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994) (“Even reading [the prior art]’s description as discouraging use of
epoxy for this purpose, Gurley asserted no discovery beyond what was
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known to the art.”); In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)
(“[C]ase law does not require that a particular combination must be the
preferred, or the most desirable, combination described in the prior art in
order to provide [the] motivation [or reason] for the current invention.”).
For these reasons, and those well-stated in the Answer, we uphold the
Examiner’s rejection as maintained against claim 1.

IV. CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 16, 22,
23, 38, 39
103 Gross, Allen 1, 2, 16, 22,
23, 38, 39

11 103 Gross, Allen,
Heintz
11
Overall
Outcome
1, 2, 11, 16,
22, 23, 38,
39

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