Ex Parte Baldaro et al

Patent Trial and Appeal Board

Oct 11, 2016

12515526 (P.T.A.B. Oct. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/515,526 0911712009 EvaBaldaro
87627 7590 10/13/2016
Mossman, Kumar & Tyler PC
P.O. Box 421239
Houston, TX 77242
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
LSP-1032-US 1541
EXAMINER
LAU, JONATHAN S
ART UNIT PAPER NUMBER
1673
NOTIFICATION DATE DELIVERY MODE
10/13/2016 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):
docket@mktlaw.us.com
tthigpen@mktlaw.us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EV A BALDARO,
MAURO TENCONI, and GIUSEPPE LI BASSI1
Appeal2014-001861
Application 12/515,526
Technology Center 1600
Before FRANCISCO C. PRATS, JEFFREYN. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to cationic guar
derivatives and cosmetic formulations that contain those derivatives. The
Examiner rejected the claims for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants' invention "relates to a procedure for the preparation of
glyoxalated purified cationic guar which is soluble at basic pH and suitable
for the use in the cosmetic field and in household cleaning products." Spec.
i-f 1. The Specification explains that cationic derivatives of polysaccharides,
such as guar, were known in the art to be "useful for the preparation of
1 Appellants state that the "real party in interest in this appeal is Lamberti
SpA." Br. 3.
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Application 12/515,526
shampoos, hair conditioners, creams, personal or household care detergents
and for softeners that confer a soft touch and antistatic properties to fabrics."
Spec i-f 4 (citation omitted).
The Specification discloses that, in one prior art method, cationic
moieties are linked to guar's hydroxyl groups by reacting the guar with 3-
chloro-2-hydroxypropyltrimethylammonium chloride in the presence of
sodium hydroxide as a catalyst. Id. at i-f 16 (citing U.S. Patent No.
3,859,978). The Specification discloses, however, that 3-chloro-2-
hydroxypropyltrimethylammonium chloride is classified as a carcinogenic
substance, and in alkaline medium is converted to an epoxide that is more
strongly carcinogenic. Id. at i-f 17.
The Specification discloses that one prior art method of removing
undesired byproducts from cationic guar derivatives is by including boron in
the derivatization procedure, resulting in an insoluble borate-crosslinked
product that can be washed effectively. Id. at i-fi-124--26. The Specification
discloses that borate crosslinking has certain shortcomings, however, in that
borate crosslinked cationic guar products are limited to applications below
pH 7, and also in that certain boric acid derivatives are classified as
carcinogenic. Id. at i-f 29-30.
The Specification discloses that, in addition to borate crosslinking, it
was known in the art that glyoxal was useful for crosslinking
polysaccharides, including non-cationic guar. Id. at i-fi-134--37.
Pursuant to addressing the above issues, the Specification discloses
that Appellants have "now found a procedure for the preparation of
glyoxalated purified cationic guar, soluble at basic pH, free from boron and
with a reduced content of other impurities that can compromise the stability
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Application 12/515,526
or the characteristics of the cosmetic formulations" that contain the guar
derivatives. Id. at i-f 38. In particular, the Specification discloses that "[i]t is
believed that in the procedure of the invention the use of guar in the form of
flour is fundamental in order to obtain the characteristics of purity which are
typical of the cationic guar of the invention." Id. at i-f 61.
The Specification includes two examples of the invention in which
guar flour is reacted with 3-cloro-2-hydroxypropyl trimethylammonium
chloride in the presence of sodium hydroxide, then neutralized, then treated
with glyoxal, the glyoxalated product then being washed twice and
recovered by filtration. Id. at i-fi-163-74.
Claim 23, the only independent claim on appeal, and claim 25
illustrate the appealed subject matter read as follows (Br., Claims
Appendix):
23. A composition of matter comprising guar 2-hydroxy-
3-(trimethylammonium)propyl ether chloride having a cationic
degree of substitution of from 0.01to3.0, \vherein the guar 2-
hydroxy-3-(trimethylammonium)propyl ether chloride: contains
from 0.3 to 1.5% by weight of glyoxal;
is soluble at pH>8;
is insoluble at pH < 7;
is boron free;
is free from 3-chloro-2-hydroxypropyltrimethylammonium
chloride; and
contains less than 2% by weight of inorganic salts.
25. An article of manufacture comprising a guar 2-
hydroxy-3-(trimethylammonium)propyl ether chloride of Claim
23 wherein the article of manufacture is a cosmetic or cosmetic
formulation.
The sole rejection before us for review is the Examiner's rejection of
claims 23-26 under 35 U.S.C. § 103(a) for obviousness over Yeh (CA
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Application 12/515,526
2,063,365 (published Apr. 29, 1993)) and Oberstar (U.S. Patent No.
4,061,602 (issued Dec. 6, 1977)). Final Action 2-6.
OBVIOUSNESS
The Examiner's Position
In rejecting claims 23-26 for obviousness, the Examiner cited Yeh as
describing a process of derivatizing guar by reacting it with an alkylating
agent, such as 3-chloro-2-hydroxylpropyltrimethylammonium chloride, the
derivatized product then being reacted with glyoxal. Final Action 3--4.
The Examiner found that the product resulting from Yeh' s process
differed from the composition recited in claim 23 in that Yeh did not
"specifically teach the guar having a cationic degree of substitution of from
0.01 to 3.0, is soluble at pH>8, is insoluble at pH<7, and contains less than
2% by weight of inorganic salts (instant claim 23)." Id. at 4.
As to the degree of substitution required by claim 23, the Examiner
found that Yeh suggested that the degree of derivatization by the alkylating
agent was a result effective parameter that an ordinary artisan would have
considered obvious to optimize. Id. at 3 (citing Yeh 4); id. at 5.
As to claim 23 's requirement for the composition to be free from 3-
chloro-2-hydroxylpropyltrimethylammonium chloride, and contain less than
2% inorganic salts, the Examiner noted Yeh's teaching that the derivatized
guar should be washed to remove byproducts, and additionally reasoned that
an ordinary artisan would have considered it obvious to further purify the
derivatized guar. Id. at 5---6 (citing MPEP § 2144.04 VII as discussing
"[f]actors to be considered in determining whether a purified form of an old
product is obvious over the prior art").
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As to claim 23 's requirement for the derivatized guar to be soluble at
a pH above 8, and insoluble at a pH below 7, the Examiner concluded that it
was appropriate to shift to Appellants the burden of showing that the
products taught by Yeh did not possess that property, because "the prior art
teaching all structural limitations of the instant invention as claimed would
inherently include functions that are newly [re]cited" in claim 23. Id. at 6
(citing In re Best, 562 F.2d 1252 (CCPA 1977); In re Fitzgerald, 619 F.2d
67 (CCPA 1980)).
The Examiner cited Oberstar as evidence that it would have been
obvious to include guar derivatized with 3-chloro-2-hydroxylpropyl
trimethylammonium chloride in cosmetic compositions, as recited in claim
25, and obvious to formulate that cosmetic composition with a pH great than
7, as recited in claim 26. Final Action 4--5.
Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prim a facie case of unpatentability ....
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art as set out in the Final Action, discussed
above, and in the Examiner's Answer. We select claim 23 as representative
of the rejected claims. 37 C.F.R. 41.37(c)(l)(iv). Appellants' arguments do
not persuade us that a preponderance of the evidence fails to support the
Examiner's prima facie case of obviousness as to claim 23.
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Application 12/515,526
As the Examiner found, Yeh describes derivatizing the same
polysaccharide as recited in claim 23, guar, with any of a number of
alkylating agents, including the agent that undisputedly yields the guar
derivative recited in claim 23. See Yeh 4 ("The particularly preferred
polygalactomannan for use in the process of this invention is obtained from
guar beans."); see also id. at 5---6 ("Examples of [derivatizing] agents are ...
quaternary ammonium alkylating agents ... such as 3-chloro-2-
hydroxypropyl trimethylammonium chloride and the like.").
As the Examiner found, Yeh describes crosslinking with glyoxal to
allow washing and removal of byproducts from the derivatized guar:
[G]lyoxal is mixed with the products and by-products of
the derivatizing stage before the washing step. The pH is then
adjusted to the acid side, whereby the glyoxal crosslinks the
surface of the polygalactomannan particles, thereby inhibiting
the absorption of water into the particles and reducing the
stickiness of the surface of particles in a manner similar to
borax and aluminum salts. The derivatized polygalactomannans
are then washed with water to remove by-products and are
centrifuged to remove the excess water leaving particles having
a moisture content (post-centrifuge moisture) of about 60 to
about 80 weight percent.
Yeh 8-9. Yeh discloses using "about 0.2 to about 2 weight percent [glyoxal]
based on the weight of polygalactomannan originally present" (id. at 10), a
percentage range that overlaps the 0.3 to 1.5% by weight of glyoxal recited
in claim 23.
Given the teachings in Yeh, the Examiner persuades us that there is an
adequate basis to find that Yeh suggests a product that has all of the
properties required by claim 23.
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Appellants contend that they have met the burden of showing that
products made by Yeh' s process would not inherently meet all of the
requirements of claim 23. See Br. 10-11, 16-17. Specifically, Appellants
advance test results which were appended to their Response entered March
19, 2012, in the instant application, and which were included as part of a
reply letter, dated June 9, 2010, from inventor Guiseppe Li Bassi to the
European Patent Office (hereinafter "Test Results Letter"). Br. 10, 16.
We first note, as the Examiner points out (Ans. 6), that the Test
Results Letter is not presented in the form of a declaration or affidavit, and
does not include the averments required by the relevant rules, and
technically, therefore, cannot constitute evidence in this proceeding. See 37
C.F.R. § 1.132 ("[A]ny evidence submitted to traverse the rejection or
objection on a basis not otherwise provided for must be by way of an oath or
declaration under this section."); see also 3 7 C.F .R. § 1. 68 (explaining
requirements for written declaration, including (1) warning against willful
false statements and (2) requirement of positively stating that "all statements
made of the declarant's own knowledge are true and that all statements made
on information and belief are believed to be true").
Nevertheless, even if it were acceptable as evidence, we are not
persuaded that the Test Results Letter supports Appellants' assertions that
Yeh fails to suggest products having all of the properties required by claim
23.
As to the degree of substitution of the quaternary ammonium
alkylating agent on the guar polysaccharide, Appellants do not assert error in
the Examiner's finding (Final Action 3), noted above, that that parameter
would have been recognized as a result-effective variable that would be
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Application 12/515,526
obvious to optimize. In any event, contrary to Appellants' assertion (Br.
10), the Test Results Letter discloses that Example 5, said to correspond to
Yeh' s compositions, shows that the cationic guar has a degree of substitution
("DS ") of 0 .13, which falls within claim 23 's range of 0. 01 to 3. 0. See Test
Results Letter 4.
We acknowledge, as Appellants contend (Br. 10, 16-17), that Yeh
provides the guar used in its processes in the form of guar "splits." Yeh 4.
Yeh explains that "splits" are split seeds of the guar plant, composed of the
seed endosperm, from which the germ and hulls have been removed, and are
"in as pure and intact a form as possible with no other processing steps.
These purified splits contain, as impurities, about 6-12 percent moisture, 2-7
percent protein and 2-7 percent acid insoluble residue." Id. at 5.
We acknowledge, as Appellants contend (Br. 16), that the Test
Results Letter discloses that, when preparing cationic guar using the splits,
the resulting composition contains 0.29% 3-chloro-2-hydroxylpropyl
trimethylammonium chloride (Test Results Letter 4, Example 5), whereas
claim 23 requires the claimed composition to be free of that compound. As
the Examiner contends, however, in its first example, Yeh discloses washing
the final product three times with water (Yeh 11 ), whereas the Test Results
Letter describes washing only twice (Test Results Letter 3). Accordingly, it
is not clear that the Test Results Letter presents a fair comparison between
Yeh and Appellants' products.
In any event, the rejection at issue is for obviousness rather than
anticipation. In the instant case, Yeh discloses the desirability of washing to
remove byproducts from its polysaccharide derivatives. See Yeh 8-9.
Oberstar, moreover, discloses the desirability of including guar 2-hydroxy-3-
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Application 12/515,526
(trimethylammonium)propyl ether chloride, a compound resulting from
Yeh's processes, in shampoo compositions. Oberstar 1:26-2:25. Given
Yeh' s disclosure of the desirability of washing its compositions to remove
byproducts, and given an ordinary artisan's motivation to include such
products in cosmetic shampoo compositions, Appellants do not persuade us
that the Examiner erred in concluding that an ordinary artisan would have
been motivated to purify Yeh's products to the greatest extent possible,
particular given that the reactant for preparing the derivatized guar was
known in the art to be a carcinogen, as Appellants concede. See Spec. i-f 17.
As to reasonable expectation of success, we note that claim 23 's
requirement for the composition to be free from 3-chloro-2-hydroxypropyl
trimethylammonium chloride actually means that the content of that
compound need only be below 0.15% by weight. See Spec. i-f 58. As noted
above, the Test Results Letter discloses that the content of that compound in
Yeh's compositions is only 0.29%. Test Results Letter 4. Given that Yeh's
compositions contain only a small amount of 3-chloro-2-hydroxypropyl
trimethylammonium chloride in excess of that permitted by claim 23, and
given the impetus from Yeh and Oberstar to prepare as pure a product as
possible, Petitioner does not persuade us that the Examiner erred in finding
that an ordinary artisan had a reasonable expectation that thorough washing
of Yeh' s compositions would yield a composition meeting claim 23 's
requirement for the composition to be free from 3-chloro-2-hydroxypropyl
trimethylammonium chloride, as that limitation is understood in light of the
Specification.
To that end, we note Appellants' contention, and supporting evidence,
that Yeh' s splits have a significantly larger particle size than the guar flour
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Application 12/515,526
preferred by Appellants, and used in Appellants' examples. Br. 16-17
(citing Industrial Gums, Polysaccharides and Their Derivatives; Whistler
R.L., BeMiller, J.N., Academic Press, Inc., 3rd ed. 1993, Chapter 8, p. 182-
186). Appellants do not, however, direct us to persuasive evidence
suggesting that, based on the difference in particle sizes, an adequately
motivated ordinary artisan would have lacked a reasonable expectation that
thorough washing of Yeh' s compositions would yield a composition
meeting claim 23 's requirement for the composition to be free from 3-
chloro-2-hydroxypropyl trimethylammonium chloride.
In that regard, we note the following contention by Appellants:
By using less than 2.2% of glyoxal the derivatives tend to
swell in water and any attempt to wash with more water, or for
a longer time, or repeated washings, lead to the formation of a
swelled mass that cannot be filtered. It follows then that the
derivatives of Yeh cannot be purified by washing them with
water to obtain a ... product that contains less than 2% of
inorganic salts and is exempt from 3-chloro-2-
hydroxypropyltrimethylammonium chloride.
Br. 17-18.
Appellants, however, direct us to no persuasive evidence supporting
their assertion that the amounts of glyoxal used in Yeh would produce an
unfilterable, or unwashable, swelled mass. This assertion, therefore,
amounts to unsupported attorney argument, which is not an adequate
substitute for evidence. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir.
1997). Moreover, as noted above, Yeh directly contradicts Appellants'
assertion in this regard, disclosing that the glyoxal "crosslinks the surface of
the polygalactomannan particles, thereby inhibiting the absorption of water
into the particles and reducing the stickiness of the surface of particles in a
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manner similar to borax and aluminum salts. The derivatized
polygalactomannans are then washed with water to remove by-products ...
" Yeh 8.
We also do not find persuasive Appellants' contention (Br. 10, 16)
that the Test Results Letter demonstrates that Yeh's compositions fail to
meet claim 23 's requirement for the compositions to contain less than 2% by
weight inorganic salts. Appellants direct us to no specific discussion or
disclosure in the Test Results Letter regarding the content of inorganic salts.
Moreover, as discussed above, because Yeh exemplifies washing three times
with water, more than the two washes performed in the process described in
the Test Results Letter, it is not clear that Appellants advance a fair
comparison to Yeh. Further, as also discussed above, we agree with the
Examiner that an ordinary artisan would have been prompted to thoroughly
wash Yeh's compositions to obtain as pure a product as possible.
We also do not find persuasive Appellants' contention (Br. 13-14 ),
that Yeh' s compositions do not contain the amount of glyoxal required by
claim 23. As noted above, Yeh discloses using "about 0.2 to about 2 weight
percent [glyoxal] based on the weight of polygalactomannan originally
present" (Yeh 10), a percentage range that overlaps the 0.3 to 1.5% by
weight of glyoxal recited in claim 23.
We acknowledge, as Appellants argue (Br. 13), that Yeh describes
treating the glyoxalated guar "with a base to break the glyoxal crosslinking
bonds and to convert the aldehyde groups to alcohol and acid groups
(Cannizzaro reaction)." Yeh 9. As is evident, however, Yeh does not
remove the glyoxal from its compositions, but instead simply dries the base-
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treated product by heating. Id. Thus, the glyoxal would remain in the
composition, as the Examiner contends. See Ans. 8-9.
Appellants do not direct us to any limitation in claim 23 requiring the
glyoxal to be crosslinked to the guar derivative. To the contrary, Appellants
effectively concede that claim 23 encompasses the presence of glyoxal in
uncrosslinked form:
While it is true that in claim 23 the residual are rather remaining
glyoxal (which is greater than 0.3%) is not explicitly said to
crosslink the product, it is not necessary to do so because as the
defining difference is the presence of some glyoxal in the
compositions as claimed in the lack thereof in the compositions
of Yeh.
Br. 14.
We also do not find persuasive Appellants' contention that the
claimed invention is unobvious based on its "financial success." Br. 18.
Appellants direct us to no specific persuasive evidence to support this
assertion.
In sum, for the reasons discussed, Appellants' arguments do not
persuade us that a preponderance of the evidence fails to support the
Examiner's conclusion that the composition recited in claim 23 would have
been obvious to an ordinary artisan in view of Yeh and Oberstar.
Accordingly, we affirm the Examiner's rejection of claim 23 as unpatentable
under 35 U.S.C. § 103(a) over those references. Because they were not
argued separately, claims 24--26 fall with claim 23. 37 C.F.R.
41.37(c)(l)(iv).
In that regard, we note Appellants' contention regarding claim 25, that
"[ o ]ne attempting to solve the technical problem contemplated by the
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present application would not have been motivated to make accommodation
[of the] art cited by the examiner." Br. 14. As seen above, claim 25 recites
a cosmetic or cosmetic formulation that contains the guar derivative recited
in claim 23. Br., Claims Appendix.
Technically, however, to present separate argument regarding
appealed claims, "[u]nder each heading identifying the ground of rejection
being contested, any claim(s) argued separately or as a subgroup shall be
argued under a separate subheading that identifies the claim( s) by number."
37 C.F.R. 41.37(c)(l)(iv). Appellants have not provided a separate
subheading, as required.
Appellants, moreover, do not explain specifically or persuasively why
the Examiner erred in finding that an ordinary artisan would have been
motivated to include a cationic guar prepared according to Yeh in Oberstar' s
shampoo, particularly given Oberstar' s disclosure that those types of
compounds are desirable in its shampoo. See Oberstar 1 :26-2:25.
Accordingly, we do not find Appellants' arguments as to claim 25
persuasive.
SUMMARY
For the reasons discussed, we affirm the Examiner's rejection of
claims 23-26 under 35 U.S.C. § 103(a) for obviousness over Yeh and
Oberstar.
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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
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