Ex Parte Beilfuss et alDownload PDFPatent Trial and Appeal BoardSep 14, 201612864301 (P.T.A.B. Sep. 14, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/864,301 07/23/2010 466 7590 YOUNG & THOMPSON 209 Madison Street Suite 500 Alexandria, VA 22314 09/16/2016 FIRST NAMED INVENTOR Wolfgang Beilfuss 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. 0503-1195 3717 EXAMINER ROBINSON, LISBETH C ART UNIT PAPER NUMBER 1611 NOTIFICATION DATE DELIVERY MODE 09/16/2016 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): DocketingDept@young-thompson.com yandtpair@firs ttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WOLFGANG BEILFUSS, KLAUS WEBER, RALF GRADTKE, and SABINE HERWIG1 Appeal2014-001933 Application 12/864,301 Technology Center 1600 Before DONALD E. ADAMS, FRANCISCO C. PRATS, and ULRIKE W. JENKS, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134(a) involves claims to active ingredient combinations, useful for the treatment of undesired body odor. The Examiner rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE The sole rejection before us for review is the Examiner's rejection of claims 34, 35, 41, and 43 under 35 U.S.C. § 103(a) for obviousness over Beilfuss et al. (US 2003/0149097 Al, published Aug. 7, 2003 (hereinafter 1 Appellants state that the "real party in interest in this appeal is the assignee AIR LIQUIDE SANTE (INTERNATIONAL) of Paris, France." App. Br. 2. Appeal2014-001933 Application 12/864,301 "the '097 App.")), Beilfuss et al. (US 2006/0165612 Al, published July 27, 2006 (hereinafter "the '612 App.")), Beilfuss et al. (US 2004/0151742 Al, published Aug. 5, 2004 (hereinafter "the '742 App.)), and Behrends et al. (US 2005/0119313 Al, published June 2, 2005 (hereinafter "Behrends")). Final Action 3-11. Claims 34 and 35 are representative and read as follows (Br. 15): 34 An active ingredient combination, comprising: a) 8 to 30% by weight of 1-(2-ethylhexyl) glycerol ether; b) 0.8 to 3.0% by weight of octenidine dihydrochloride; c) 40 to 88% by weight of 1,2-propylene glycol; and d) 0.003 to 0.02% by weight of vitamin E, wherein the sum of components a), b) and d) to component c) has a weight ratio of 1 :4 to 1:5, wherein the active ingredient combination is free from aliphatic alcohol, wherein the active ingredient combination is free from amine oxide. 35. The combination according to claim 34, comprising: a) 14 to 18% by weight of 1-(2-ethylhexyl) glycerol ether; b) 1.4 to 1.8% by weight of octenidine dihydrochloride; c) 70 to 85% by weight of 1,2-propylene glycol; and d) 0.006 to 0.010% by weight of vitamin E. OBVIOUSNESS In rejecting claims 34 and 35 for obviousness, the Examiner found that, except for octenidine dihydrochloride, the '097 App. reasonably suggested compositions including all of the ingredients required by the claims, in the concentrations recited in the claims. Final Action 3-8. The Examiner noted in particular that, although the '097 App. taught that 2 Appeal2014-001933 Application 12/864,301 antimicrobial additives were suitable in its compositions, octenidine dihydrochloride was not among the antimicrobial compounds listed. Id. at 8. To address that deficiency, the Examiner cited the '612 App. as describing the use of octenidine dihydrochloride in compositions containing the same glycerol monoalkyl ether present in the compositions of the '097 App., and also teaching that "the presence of octenidine dihydrochloride improved the solubility of the glycerol monoalkyl ether in water (paragraph [0056]) and that the combination exhibited fast acting disinfecting activity." Id. at 8-9. Based on the references' teachings, the Examiner concluded that an ordinary artisan would have considered it obvious "to modify the compositions suggested by the '097 App. by adding 0.1 to 2% octenidine dihydrochloride to improve the antimicrobial activity of the composition, as taught by the '612 App." Id. at 9. The Examiner reasoned that an ordinary artisan "would have had a high expectation of success because the '612 App. suggests that combining 1-(2-ethylhexyl)glycerol ether, octenidine dihydrochloride, and 1,2-propylene glycol is advantageous for solubility of 1-(2-ethylhexyl) glycerol ether, and efficacy of the octenidine dihydrochloride." Id. The Examiner found, moreover, that based on the teachings of suitable concentration ranges of ingredients in the compositions described in the '097 App. and the '612 App., and ordinary artisan would have arrived at a composition meeting the ratio for the sum of the components recited in claim 34. Final Action 9-10. As to the requirement for the compositions of claims 34 and 35 to be free from aliphatic alcohols and amine oxides, the Examiner noted that 3 Appeal2014-001933 Application 12/864,301 neither of those ingredients is a required component of the compositions of either the '097 App. or the '612 App. Id. at 10. The Examiner nonetheless cited the '742 App. and Behrends as evidence that those components were known in the art to undesirable in compositions to be applied to the skin, and, therefore, would desirably have been omitted from the compositions of the '097 App. and the '612 App. Id. at 10-11. As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992): [T]he examiner bears the initial burden . . . of presenting a primafacie case ofunpatentability .... 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. 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 34, Appellants first contend that the cited references do not suggest a composition having the claimed concentrations of the recited ingredients, because the composition in the '097 App. identified by the Examiner as providing the claimed concentration range of the recited glycerol ether is a concentrated working solution that is intended to be diluted to produce a final composition suitable for cosmetic or pharmaceutical use. Br. 6-7. In contrast, Appellants contend, the compositions in the '612 App. identified by the Examiner as including a concentration of octenidine dihydrochloride encompassed by claim 34 are final compositions. Id. at 7-8. Therefore, Appellants contend, "the combination of the teachings from the '097 App. and the '612 App., contrary to the Examiner's position, does not teach 8-30% of 1-(2-ethylhexyl) 4 Appeal2014-001933 Application 12/864,301 glycerol ether and 0.01-2% of octenidine dihydrochloride" as required by claim 34. Id. at 9. Moreover, Appellants contend, because the concentration of octenidine dihydrochloride taught in the '612 App. is the concentration used in final compositions, whereas the concentration of glycerol ether relied upon by the Examiner to meet claim 34' s glycerol ether concentration is present in a more concentrated working solution in the '097 App., an ordinary artisan would not have expected the octenidine hydrochloride at the concentrations in the '612 App. to improve the solubility of glycerol ethers at the higher concentration of the '097 App.'s working solution. Id. at 9-10. Appellants' arguments, thus, are essentially that an ordinary artisan would not have had a reason to include claim 34' s concentration of octenidine dihydrochloride in the working solutions of the '097 App., because the '612 App. teaches that octenidine hydrochloride at the claimed concentration should only be combined with glycerol ethers when the ethers are present at concentrations lower than present in the working solutions of the '097 App. We are not persuaded. As the Supreme Court has explained, in determining whether the prior art supplied a reason for practicing the claimed subject matter, the analysis "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also id. at 421 ("A person of ordinary skill is ... a person of ordinary creativity, not an automaton."). 5 Appeal2014-001933 Application 12/864,301 In the instant case, the '097 App. teaches compositions that are amenable to a variety of cosmetic/pharmaceutical applications, including deodorants, skin disinfectants, and antimicrobial washes. '097 App. i-f 53. The '097 App. compositions undisputedly include the glycerol ether recited in claim 34 (id. at i-fi-1 1-3), the propylene glycol recited in claim 34 (id. at i-f 37), and the vitamin E recited in claim 34 (id. at i-f 30). Although the '097 App. might not include the octenidine hydrochloride recited in claim 34, the '097 App. teaches that its compositions may contain antimicrobial active ingredients. Id. at i-f 37. The '612 App. also teaches compositions that are amenable to a variety of pharmaceutical applications, including hand and skin disinfectants, antimicrobial washes, and bath additives. '612 App. i-f 12. In addition to teaching the inclusion of octenidine dihydrochloride in its compositions (id. at i-f 16), the '612 App. compositions undisputedly include the glycerol ether recited in claim 34 (id. at i-f 14), and the propylene glycol recited in claim 34 (id. at i-f 19). The '612 App. discloses that "the water-solubility of glycerol monomenthyl [sic, monoalkyl?] ether is significantly improved by the addition of the bispyridiniumalkane (especially octenidine dihydrochloride)." Id. at i-f 49; see also id. at i-f 56 (The presence of bispyridiniumalkane in the compositions according to the invention leads to a significantly improved solubility in water of the glycerol monoalkyl ether."). The '612 App. discloses that, because glycerol monoalkyl ethers were known as antimicrobial, as opposed to microbicidal compounds, it was "surprising that glycerol mono alkyl ethers contribute in the compositions according to the invention to the hand-disinfectant effect." Id. at i-f 50. 6 Appeal2014-001933 Application 12/864,301 Given the '097 App.' s disclosure of the desirability of including antimicrobial compounds in its compositions, we agree with the Examiner that an ordinary artisan would have included the known antimicrobial agent octenidine dihydrochloride in the '097 App. 's compositions, particularly given the '612 App.'s disclosures of the improvements that result from combining octenidine dihydrochloride with compositions containing precisely the ingredients in the '097 App. 's compositions. We acknowledge, as Appellants contend, that the composition identified by the Examiner as meeting the 8 to 30% by weight glycerol ether concentration requirement of claim 34 is described as a "working solution [which] comprises 60% by weight or less, preferably 40% by weight or less, more preferably 20% by weight or less, of glycerol mono alkyl ethers." '097 App. ii 50. We acknowledge, as Appellants also contend, that the composition in the '612 App. identified by the Examiner as meeting claim 34's octenidine dihydrochloride concentration of 0.8 to 3.0% by weight has, in "a preferred embodiment, ... in the range from 0.01 to 2% by weight, more preferably 0.02 to 1.5% by weight, in particular 0.04 to 0.6% by weight, such as 0.06 to 0.2% by weight, for example about 0.1 % by weight" of that component. '612App.ii17. As Appellants contend, in contrast to the up to 60% of the glycerol ether in working solution ofil 50 of the '097 App., the '612 App. discloses that, in its compositions, the "content of glycerol monoalkyl ether is generally in the range from 0.03 to 5% by weight, preferably 0.05 to 3% by weight, more preferably 0.1 to 1 % by weight, such as 0.15 to 0.5% by weight, for example about 0.25% by weight." '612 App. ii 15. 7 Appeal2014-001933 Application 12/864,301 Nonetheless, we agree with the Examiner (Ans. 4-7) that, although the '612 App. teaches that its preferred 0.01to2% by weight concentration of octenidine dihydrochloride is used in compositions that include glycerol ethers at a concentration somewhat less than that of the working solutions of the '097 App., an ordinary artisan would have reasonably inferred that, even when employed at a concentration of 0.01to2% by weight, the octenidine dihydrochloride would impart its known antimicrobial properties to the '097 App. 's working composition. Indeed, as the Examiner points out (Ans. 6), by disclosing the use of its compositions as bath additives ('612 App. i-f 12), the '612 App. suggests that octenidine dihydrochloride retains its disinfectant properties even upon significant dilution. Appellants, moreover, do not direct us to any specific teaching in any of the cited references, or persuasive evidence elsewhere in the record, suggesting that the antimicrobial and glycerol ether-solubilizing properties of octenidine dihydrochloride would have been expected only when combined with glycerol ethers at the concentrations taught in the '612 App. To that end, we note that Appellants direct us to no persuasive evidence suggesting that the claimed combination of known elements, even at the claimed concentrations, produces a composition having properties beyond those expected by an ordinary artisan. Cf KSR, 550 U.S. at 417 ("[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.") (internal quotations omitted). In sum, for the reasons discussed, Appellants' arguments do not persuade us that a preponderance of the evidence fails to support the 8 Appeal2014-001933 Application 12/864,301 Examiner's prima facie case of obviousness as to claim 34. Accordingly, we affirm the Examiner's rejection of that claim, as well as claims 41 and 43, which were argued in the same grouping. See Br. 5. As to claim 35, Appellants present similar arguments. See Br. 10-13. While we acknowledge that claim 35 recites a narrower concentration range than claim 34 for glycerol ethers (14 to 18% by weight (Br. 15)), claim 35's concentration range is entirely encompassed within the suitable ranges taught for that ingredient in the '097 App. 's working solutions ("more preferably 20% by weight or less" ('097 App. i-f 50)). As to claim 3 5 's octenidine dihydrochloride concentration, 1.4 to 1.8% by weight (Br. 15), the '612 App. discloses octenidine dihydrochloride in "a preferred embodiment, ... in the range from 0.01to2% by weight" ('612 App. i-f 17), a range entirely overlapping the claimed range. Again, that the '612 App. discloses including those concentrations of octenidine hydrochloride in compositions having glycerol ether concentrations somewhat lower than the '097 App. 's working solution (see '612 App. i-f 15) does not persuade us that an ordinary artisan would have failed to recognize, based on the teachings in the '612 App. discussed above, that including 0.01 to 2% by weight octenidine hydrochloride in the working solutions of the '097 App. would result in a solution having enhanced antimicrobial and glycerol ether-solubilizing properties. Appellants do not direct us to specific persuasive evidence supporting their arguments to the contrary. Nor do Appellants direct us to specific persuasive evidence suggesting that the compositions recited in claim 3 5 possess unexpected properties. Cf KSR, 550 U.S. at 417 ("[W]hen a patent simply arranges old elements with each performing the same function it had been known to 9 Appeal2014-001933 Application 12/864,301 perform and yields no more than one would expect from such an arrangement, the combination is obvious.") (internal quotations omitted). In sum, for the reasons discussed, 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 35. Accordingly, we affirm the Examiner's rejection of that claim over the cited references. SUMMARY For the reasons discussed, we affirm the Examiner's rejection of claims 34, 35, 41, and 43 under 35 U.S.C. § 103(a) for obviousness over the '097 App., the '612 App., the '742 App., and Behrends. 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 10 Copy with citationCopy as parenthetical citation