2019004000 (P.T.A.B. May. 20, 2020)

Elevance Renewable Sciences, Inc.

Patent Trials and Appeals BoardMay 20, 2020

2019004000 (P.T.A.B. May. 20, 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. 14/596,044 01/13/2015 Ryan Littich ERS-120-1-US-1 2609 144757 7590 05/20/2020 Elevance Renewable Sciences, Inc. (Main) Kilpatrick Townsend & Stockton LLP 1100 Peachtree St. NE Suite 2800 Atlanta, GA 30309 EXAMINER MRUK, BRIAN P ART UNIT PAPER NUMBER 1761 NOTIFICATION DATE DELIVERY MODE 05/20/2020 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 RYAN LITTICH, GEORGETA HATEGAN, BRUCE FIRTH, DHANANJAY PURANIK, STEVEN BLOCK, ANDREW CORR, GARRETT ZOPP, and ALEXANDER ILSEMAN Appeal 2019–004000 Application 14/596,044 Technology Center 1700 Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 38 and 48–54. 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(a). Appellant identifies the real party in interest as Elevance Renewable Sciences, Inc. Appeal Br. 3. Appeal 2019–004000 Application 14/596,044 2 CLAIMED SUBJECT MATTER Claim 38 is illustrative of Appellant’s subject matter on appeal and is set forth below: 38. A method for cleaning a surface, comprising: contacting a surface with a composition, the composition comprising water and olefinic ester compounds, wherein the olefinic ester compounds are C1-6 alkanol esters of 9-dodecenoic acid, and wherein the olefinic ester compounds make up from 1 to 70 percent by weight of the composition, based on the total weight of the composition. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Di Biase et al. US 2013/0281688 A1 Oct. 24, 2013 THE REJECTION Claims 38 and 48–54 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over Di Biase. OPINION Upon consideration of the evidence and each of the respective positions set forth by each party, we find that the preponderance of evidence supports Appellant’s position. We thus reverse the Examiner’s decision to reject the appealed claims for the reasons provided by Appellants, and add the following for emphasis. Claims 38 recites a method for cleaning a surface with a composition that includes 1-70 weight percent of certain 9-dodecenoic acid esters. Appellant argues that Di Biase fails to anticipate the pending claims because Di Biase nowhere discloses or suggests such a method for the reasons Appeal 2019–004000 Application 14/596,044 3 presented on pages 9–10 of the Appeal Brief. Therein, Appellant persuasively argues that the Examiner fails to identify any reaction in Di Biase that would necessarily leave behind residual amounts of 9- dodecenoate esters in the resulting 9-dodecen-1-ol compositions. Appellant argues that paragraph [0076] in Di Biase expressly notes that the mass spectrum and the IR spectrum for the resulting reaction product were consistent with those of pure 9-dodecen-1-ol. Thus, Appellant submits that there is nothing in Di Biase to suggest that residual amounts of 9-dodecenoic esters would necessarily remain within the purified product. Appeal Br. 9–10. We are persuaded by such argument. The Examiner’s response is set forth on page 4 of the Answer, to which Appellant explains that paragraph [0018] of Di Biase does not disclose 9-dodecenoic acid esters as cleaning agents, and although paragraphs [0065] and [0066] of Di Biase refer to cleaning compositions, the compositions it describes are compositions of various unsaturated alcohols, not compositions of 9-dodecenoate esters. Reply Br. 2. Appellant also states that paragraphs [0071]–[0076] of Di Biase merely mention methyl 9- dodecenoate as a starting material for making unsaturated alcohols. Id. We agree. We thus also agree with Appellant that the Examiner has not identified disclosure in Di Biase that recites the claimed cleaning methods in a manner that satisfies the legal standard for anticipation (either explicitly or inherently) for the reasons provided by Appellant. Reply Br. 3. We likewise agree with Appellant that the Examiner had failed to identify any apparent reason why one skilled in the art would ignore Di Biase’s teaching concerning the use of unsaturated alcohols as cleaning agents, and, instead, use the unsaturated esters that serve as a starting Appeal 2019–004000 Application 14/596,044 4 material for making the unsaturated alcohols. Appeal Br. 10. Notably, the Examiner does not adequately respond to this argument. See Answer generally. We thus agree with Appellant that Di Biase cannot be relied upon to establish a prima facie case of obviousness either. Reply Br. 3. In view of the above, we reverse the rejection. CONCLUSION We reverse the Examiner’s decision. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Reversed Affirmed 38, 48–54 102/103 Di Biase 38, 48–54 REVERSED