Ex Parte Angel et al

Patent Trial and Appeal Board

Feb 7, 2017

12065525 (P.T.A.B. Feb. 7, 2017)

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.
12/065,525 03/03/2008 Maximilian Angel 074008-0648-US (286092) 1578
123223 7590 02/09/2017
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
MERCIER, MELISSA S
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
02/09/2017 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):
IPDocketWM @ dbr.com
penelope. mongelluzzo @ dbr. com
DB RIPDocket @ dbr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAXIMILIAN ANGEL and KARL KOLTER
Appeal 2016-003741
Application 12/065,525
Technology Center 1600
Before DONALD E. ADAMS, RICHARD J. SMITH, and DAVID COTTA,
Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134(a) involves claims 17, 19-24, and
26—38 (Br. 3). Examiner entered rejections under 35 U.S.C. § 103(a). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify the real party in interest as “BASF SE” (Br. 2).
Appeal 2016-003741
Application 12/065,525
STATEMENT OF THE CASE
Appellants’ disclosure “relates to polyvinyl acetate dispersions with
improved shear stability and to a process for preparing such dispersions”
(Spec. 1: 5—6). Claims 17, 23, 30-32, 35 are representative and reproduced
below:
17. An aqueous polymer dispersion prepared by a process
comprising:
providing a monomer composition comprising a vinyl
acetate monomer component and second monomer component
comprising an additional monomer selected from the group
consisting of acrylic acid, methacrylic acid and mixtures thereof
in an amount of 0.1 to 0.6% by weight, wherein the vinyl
acetate monomer component and the second monomer
component comprise 100% by weight of the monomer
composition; and
ffee-radically polymerizing the monomer composition in
the presence of 0.1 to 0.5% by weight of an ionic emulsifier,
based on the weight of the monomer composition.
(Br. 18.)
23. The aqueous polymer dispersion according to claim 17,
further comprising a protective colloid.
(Id.)
30. A polymer in powder form prepared by a process
comprising drying an aqueous polymer dispersion according to
claim 17.
(Id. at 19.)
31 A pharmaceutical or cosmetic formulation comprising an
aqueous polymer dispersion according to claim 17.
(Id.)
32. A pharmaceutical or cosmetic formulation comprising a
powdered polymer according to claim 30.
(Id. at 20.)
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35. A delayed-release pharmaceutical formulation comprising
at least one active pharmaceutical ingredient coated with a film
prepared from an aqueous polymer dispersion according to
claim 17.
(Id.)
The claims stand rejected as follows:
Claims 17, 19—22, 26—28, 31, 33, and 37 stand rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Corey2 and
Brown.3
Claims 32 and 34—36 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Corey, Brown, and Hotko.4
Claims 23, 24, 28—30, and 38 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Corey, Brown, Hotko, and Kolter.5
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Corey “relates to polyvinyl acetate lattices in which the polymer
particles are of ultra fine size, a characteristic which in combination with
high polymer molecular weight renders polyvinyl acetate available for uses
2 Corey et al., US 3,245,936, issued Apr. 12, 1966.
3 Brown, US 6,306,952 Bl, issued Oct. 23, 2001.
4 Hotko et al., US 3,325,365, issued June 13, 1967.
5 Kolter et al., WO 02/26845 Al, published Apr. 2, 2002. Examiner relied
upon Kolter et al., US 7,094,831 B2, issued Aug. 22, 2006 “as an English
translation of WO 02/26845 [Al]” (see Ans. 7).
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hitherto beyond its compass” (Corey 1: 10-14; see generally Final Act.6 5
(“Corey [] taught there were [] uses other than for the purpose of coating
paper”); see Corey 1: 40-44 (Although “the observations, [] concepts and []
methods that follow will be presented in their relation to mineral printing
paper coating, one of the most important commercial uses for the new
lattices. There are other[]” uses for the lattices disclosed by Corey)).
FF 2. Corey discloses that the “lattices are formed by the polymerization of
vinyl acetate monomer in aqueous emulsion at a temperature sensibly lower
than that normally necessary for such polymerization reaction to occur
within an economically reasonable period, such a temperature becoming
functional through the agency of a free radical producing redox initiator”
(Corey 3: 9-15).
FF 3. Corey discloses:
1. A stable aqueous latex comprising as essential constituents
30 to 55 % by weight of a resinous binder which is the
polymerized produce of a monomer mixture, consisting of
[(a)] vinyl acetate and [(b)] 0.5 to 3.0%, based on the total
monomer mixture weight, of acrylic acid, and from about 1
to 5% by weight, based on the latex weight, of
emulsifier [/surfactant]; wherein the diameter of the polymer
particles is smaller than the wavelength of visible light.
(Corey 8: 48—55 (Corey’s claim 1) (emphasis added);; see Final Act. 2-4;
Final Act. 3 (Examiner reasons that, because “the monomer mixture
‘consists’ of [vinyl acetate and acrylic acid] these two types of monomers . .
. comprise 100% by weight of the monomer composition (see also [Corey’s]
Example 1, at column 4, where the only two polymerizable monomers are
vinyl acetate and acrylic acid)); Final Act. 3, citing Corey 4: 9-21 (for a
6 Examiner’s Final Office Action mailed Jan. 29, 2015.
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disclosure of a polyvinyl acetate latex prepared from ingredients wherein
vinyl acetate and acrylic acid are “the only two polymerizable monomers” in
the composition.)
FF 4. Corey discloses:
It has been found that in the exercise of [Corey’s]
invention the best results are obtained when the polymerized
vinyl acetate contains from 1.0 to \.5% of acrylic acid, based
on the total weight of the monomers. Satisfactory stabilization
and increased adhesion to substrates may be obtained, however,
with any acrylic acid content within the range of 0.5 to 3.0 %.
(Corey 7: 22-28.)
FF 5. Corey discloses “[a] printing paper coating composition comprising
essentially an aqueous pigment suspension and the latex of claim 1, in
proportions such that there are 3 to 25 parts by weight of the resinous binder
for each 100 parts of pigment, on a dry basis” (Corey 8: 61—65 (Corey’s
claim 3); see Final Act. 3; Final Act. 4 (Examiner reasons that “[although
Corey [discloses] a printing paper coating composition, it is submitted that
one could also apply such a composition to one’s skin, if desired; hence
[Corey suggests] a ‘cosmetic formulation’ comprising pigment”)).
FF 6. Corey discloses that
[t]he surfactants usable in [Corey’s] formulations may be
anionic, cationic or nonionic [and that] [variations in the type
and amount of [surfactants] will influence the stability of the
emulsions as well as the progress of the polymerization in
known manner but the effect of such variations is not
contemplated as part of [Corey’s] invention, except as further
influenced by the action of the acrylic acid.
(Corey 7: 34^42; Final Act. 4.)
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FF 7. Examiner finds that Corey fails to disclose a composition comprising
an ionic emulsifier in the range of 0.1 to 0.5% and relies on Brown to make
up for this deficiency in Corey (Final Act. 4).
FF 8. Brown discloses “coating compositions having a low [volatile
organic components (VOC)] content and which are quick to dry but easy to
apply, [as well as,] their preparation and use” (Brown 1: 9-11; see generally
Final Act. 4).
FF 9. Brown discloses that “vinyl acetate copolymers are well-known and
include copolymers such as vinyl acetate/butyl acrylate/2-ethylhexyl
acrylate, vinyl acetate/butyl maleate, vinyl acetate/ethylene, vinyl
acetate/vinyl chloride/butyl acrylate and vinyl acetate/vinyl
chloride/ethylene” (Brown 7: 45 49; Final Act. 4).
FF 10. Brown discloses that “[t]he polymerization techniques used for
preparing the latex binder of [Brown’s] invention are well known in the art.
The binder may be prepared by emulsion or solution polymerization,
preferably by free-radical initiation” (Brown 8: 6—9; Final Act. 4).
FF 11. Brown discloses that “[w]hen the latex binder in the form of a
dispersed polymer is utilized, the polymer particle size is controlled by the
amount of conventional surfactants added during the emulsion
polymerization process,” that “[conventional surfactants include anionic,
nonionic emulsifiers or their combination,” and that “[t]ypical ranges for
surfactants are between 0.1 to 6 percent by weight based on the total weight
of the monomer mixture” (Brown 8: 47—51 and 63—65; Final Act. 4).
FF 12. Examiner finds that the combination of Corey and Brown fails to
suggest “a delayed release pharmaceutical formulation” and relies on Hotko
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to make up for this deficiency in the combination of Corey and Brown (Final
Act. 5).
FF 13. Hotko “relates to a process for coating tablets, and in particular to a
process for the compression coating of tablets with an enteric coating
containing a film-forming copolymer” (Hotko 1: 10—13; Final Act. 5).
FF 14. Hotko’s “tablets can be compressed coated with an enteric coating
by using an enteric coating granulate composition containing a polyvinyl
acetate copolymer as the film-forming copolymer and a substrate” (Hotko 2:
54—57; Final Act. 5—6).
FF 15. Hotko discloses that “[t]he polyvinyl acetate copolymer[ is] prepared
according to known methods [ and] is made up of two comonomers, one of
which is[] vinyl acetate monomer” and the other monomer is preferably a
compound “having [an] acrylic acid moiety” (Hotko 3: 8—19).
FF 16. Hotko’s “objective] is to obtain a coating impermeable to gastric
fluids, which, however, erodes or yields the core contents in the intestinal
tract” (Hotko 2: 2-4; Final Act. 5 (Examiner interprets Hotko’s disclosure to
read on “a ‘delayed-release’ formulation”).
FF 17. Hotko discloses that “a plasticizer [may be, if desired,] added to the
granulate composition to give the enteric coating the desired plasticity”
(Hotko 3: 46-47; Final Act. 6).
FF 18. Examiner finds that “whether the aqueous polymer of Corey had
been dried to a powder form or not, the finished product (i.e. the coated
tablet of Hotko made with the polymer of Corey) would be of the same
composition and structure” (Final Act. 6).
FF 19. Examiner finds that the combination of Corey, Brown, and Hotko
does not suggest “a ‘protective colloid’” or “drying [the] aqueous polymer
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dispersion” and relies on Kolter to make up for this deficiency in the
combination of Corey, Brown, and Hotko (Final Act. 7).
FF 20. Kolter “relates to an aqueous polymer dispersion prepared by free-
radical polymerization of vinyl acetate, to a process for preparing an
aqueous polymer dispersion of this type, and to the use thereof’ (Kolter 1:
3—6; see generally Final Act. 7).
FF 21. Kolter discloses:
It is an object of [Kolter’s] invention to provide starting
materials for producing in particular pharmaceutical dosage
forms, which are very stable on storage, which can be processed
very easily, which in particular easily result in good,
homogeneous film coatings with very reproducible release and
which, where appropriate, need not be prepared from powders
which are initially dried and then redispersed in H20.
(Kolter 2: 26—33; Final Act. 8.)
FF 22. KoIter’s
objective] is achieved by an aqueous polymer dispersion
prepared by free-radical polymerization of vinyl acetate in the
presence of at least one ionic emulsifier, at least one free-
radical initiator and at least one protective colloid, wherein the
polymerization is carried out in the presence of a
polymerization regulator and wherein the ratio by weight of
protective colloid to ionic emulsifier is at least 4:1, preferably at
least 8:1, particularly preferably in the range between 8:1 and
12:1, and wherein the ratio by weight of vinyl acetate monomer
to protective colloid is between 19:1 and 4:1, preferably
between 15:1 and 6:1.
(Kolter 2: 34-44; Final Act. 8—9.)
FF 23. Kolter discloses “aqueous polymer dispersions” and “polymer
powders produced therefrom in a conventional way” (Kolter 4: 30-32; see
Final Act. 9).
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ANALYSIS
The combination of Corey and Brown:
Based on the combination of Corey and Brown, Examiner concludes
that, at the time Appellants’ invention was made, it would have been prima
facie obvious “to modify the compositions and processes disclosed by Corey
from 1% to 0.5% emulsifier, [because] both Corey and Brown taught the
amount of emulsifier to be a results-effective variable and thus subject to
routine optimization” (Final Act. 4—5). See In re Alter, 220 F.2d 454, 456
(CCPA 1955) (“[W]here the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation”).
Claim 17:
Corey claims a composition comprising “0.5 to 3.0%, based on the
total monomer mixture weight, of acrylic acid” (FF 3) and discloses that
“[satisfactory stabilization and increased adhesion to substrates may be
obtained, however, with any acrylic acid content within the range of 0.5 to
3.0% (FF 4). The range of 0.5 to 3.0% overlaps the concentration of acrylic
acid required by Appellants’ claimed invention. Overlapping ranges support
a prima facie case of obviousness. See In re Geisler, 116 F.3d 1465, 1468
(Fed. Cir. 1997). Therefore, we are not persuaded by Appellants’
contentions regarding Corey’s disclosure of “[t]he best results” or that Corey
“teaches away” from Appellants’ acrylic acid concentration (Br. 11). “A
known or obvious composition does not become patentable simply because
it has been described as somewhat inferior to some other product for the
same use.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
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We are not persuaded by Appellants’ contention that modifying the
amount of emulsifier in Corey’s composition “would be in direct
contradiction to the express teachings of Corey which specifies much higher
amounts of emulsifier” (Br. 12). To the contrary, Corey discloses variations
in the amount of emulsifier and discloses that such “[variations in the type
and amount of [surfactants] will influence the stability of the emulsions as
well as the progress of the polymerization in known manner’’ (FF 6
(emphasis added)). In this regard, Brown discloses that “polymer particle
size is controlled by the amount of conventional surfactants added during the
emulsion polymerization process,” and that “[tjypical ranges for surfactants
are between 0.1 to 6 percent by weight based on the total weight of the
monomer mixture” (FF 11). Therefore, notwithstanding Appellants’
contention to the contrary, we find no error in Examiner’s conclusion that “it
is not inventive to discover the optimum or workable ranges by routine
experimentation” (Final Act. 5, citing Alien, 220 F.2d at 456; cf. Br. 12).
We recognize Appellants’ assertion “that both Corey and Brown are
concerned with controlling particle size” (Br. 12). We are not, however,
persuaded by Appellants’ contention that Examiner’s conclusion of
obviousness is in error, because “controlling particle size ... is not the
inventive concept of [Appellants’] claimed invention” (id.). In re Beattie,
91A F.2d 1309, 1312 (Fed. Cir. 1992) (“[T]he law does not require that the
references be combined for the reasons contemplated by the inventor”).
Therefore, we are not persuaded by Appellants’ contentions regarding
“shear-stability of the dispersion,” which is not required by Appellants’
claim 17 (see Br. 11—12; cf. Br. 18 (Appellants’ claim 17)).
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Claim 31\
While Corey exemplifies the use of Corey’s composition for coating
paper, Corey expressly discloses that other uses are within the scope of
Corey’s disclosure (FF 1). Examiner reasons that “[although Corey
[exemplifies] a printing paper coating composition, it is submitted that one
could also apply such a composition to one’s skin, if desired; hence [Corey
suggests] a ‘cosmetic formulation’ comprising pigment” (FF 5). Thus,
Examiner articulated a rationale with some rational underpinning that
supports Examiner’s conclusion of obviousness. Cf. In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006). A fact-finder “need not seek out precise
teachings directed to the specific subject matter of the challenged claim [in
an analysis of obviousness], for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSRInt’lv. Teleflex Inc., 550 U.S. 398, 418 (2007).
Appellants provide no persuasive evidence or argument to support a
conclusion that a person of ordinary skill in this art would not have found it
prima facie obvious to utilize the composition suggested by the combination
of Corey and Brown as a cosmetic formulation or component thereof (see FF
5; cf. Br 13 (“[A]pellant[s] believe[] that there is no disclosure that the
printing paper coating composition could be applied to a person’s skin. The
Examiner has just asserted this statement without any basis”); Br. 14 (“There
is nothing in Corey to indicate that the other uses can be pharmaceutical or
cosmetic”)). “Attorney’s argument in a brief cannot take the place of
evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). For the
foregoing reasons we are not persuaded by Appellants’ contention that
Examiner’s conclusion of obviousness is based in hindsight (Br. 14).
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The combination of Corey, Brown, and Hotko\
Based on the combination of Corey, Brown, and Hotko, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious “to use the polymer dispersion taught by Corey to
provide the enteric coating taught by Hotko[, because] Hotko expressly
suggested using a copolymer of vinyl acetate and [a compound having an]
acrylic acid [moiety] as the enteric coating” (Final Act. 6). In this regard,
Examiner reasons that “the selection of Corey’s vinyl acetate/acrylic acid
copolymer would have represented nothing more than selecting a known
material for its intended purpose” (id.). See KSR Int T Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007) (“The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.”).
Claims 32 and 34:
Appellants correctly explain that Appellants’ claim 32 and 34 depend
directly or indirectly from Appellants’ claim 30, which was not included in
the rejections over: (i) Corey and Brown or (ii) Corey, Brown, and Hotko
(Br. 14). Therefore, Examiner failed to establish a prima facie case of
obviousness with respect to Appellants’ claims 32 and 34. Thus, we are
compelled to reverse the rejection of claims 32 and 34 over the combination
of Corey, Brown, and Hotko.
Claim 35:
For the reasons set forth above, we are not persuaded by Appellants’
arguments relating to claim 31 (“Group II”) (see Br. 15). In this regard, we
are not persuaded by Appellants’ contention that “Corey does not disclose
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polymers with a low content of emulsifier,” which fails to account for
Brown’s contribution to the rejection over the combination of Corey, Brown,
and Hotko (Br. 16). Similarly, we are not persuaded by Appellants’
contention that “Hotko is completely silent on the amount of acidic
monomers” and “Hotko contains no information on the composition of the
co-monomers,” which fails to account for the contribution of the
combination of Corey and Brown, to the rejection over the combination of
Corey, Brown, and Hotko. In this regard, we note that Hotko discloses that
“[t]he polyvinyl acetate copolymer[ is] prepared according to known
methods[ and] is made up of two comonomers, one of which is[] vinyl
acetate monomer” and the other monomer is preferably a compound “having
[an] acrylic acid moiety (FF 15 (emphasis added); cf. Br. 16).
Hotko’s “objective] is to obtain a coating impermeable to gastric
fluids, which, however, erodes or yields the core contents in the intestinal
tract” (FF 16). Examiner interprets Hotko’s disclosure to read on “a
‘delayed-release’ formulation” (id.). We find no error in Examiner’s
conclusion of obviousness. Appellants provide no persuasive evidence or
argument to support a contrary conclusion (cf. Br. 16 (“[A]ppellant[s] do[]
not believe that [Hotko’s disclosure] necessarily means that this is time
release”)). “Attorney’s argument in a brief cannot take the place of
evidence.” Pearson, 494 F.2d at 1405.
The combination of Corey, Brown, Hotko, and Kolter.
Based on the combination of Corey, Brown, and Hotko, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious “to modify the teachings of Corey and Hotko by
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including a protective colloid during the polymerization process, [because]
Kolter taught this provided the advantage of stability, easy processing, and
good, homogeneous film coatings with very reproducible release” (Final
Act. 9 ; see FF 21). Claim 23 is representative.
Having found no error in the rejections over Corey and Brown with or
without Hotko as they apply to Appellants’ claims 17, 31, and 35 we are not
persuaded by Appellants’ reference to their foregoing arguments or
contention that, because “the combination of Corey, Brown and Hotko does
not lead to the claimed invention, the further combination with Kilter cannot
render these claims obvious” (Br. 16).
We are not persuaded by Appellants’ contention that “Kolter does not
cure the deficiencies of Corey and Brown[, because Kolter] does not hint or
suggest the combination of low emulsifier contents and low acrylic acid
monomer contents,” which fails to account for the combination of Corey,
Brown, and Hotko in the rejection over the combination of Corey, Brown,
Hotko, and Kolter (see Br. 16).
We recognize, but are not persuaded by Appellants’ contentions
regarding “shear stability” which are not commensurate in scope with claim
23, which does not require any particular shear stability (see Br. 17; cf. Br.
18 (Appellants’ claim 23)).
For the foregoing reasons, we are not persuaded by Appellants’
contention that Examiner’s conclusion of obviousness is based in hindsight
(Br. 16).
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CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness with respect to claims 17, 31, 35, and 23.
The rejection of claims 17 and 31 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Corey and Brown is affirmed. Claims
19-22, 26—28, and 37 fall with claim 17 (see Br. 7 (“Group I”). Claim 33
falls with claim 31 (see Br. 13 (“Group [II]”).
The rejection of claim 35 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Corey, Brown, and Hotko is affirmed. Claim 36 is
not separately argued and falls with claim 35 (see Br. 14 (“Group IV”).
The rejection of claim 23 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Corey, Brown, Hotko, and Kolter is affirmed.
Claims 24, 28—30, and 38 are not separately argued and fall with claim 23
(see Br. 16 (“Group V”).
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness with respect to claims 32 and 34.
The rejection of claims 32 and 34 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Corey, Brown, and Hotko is reversed.
TIME PERIOD FOR RESPONSE
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
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