Ex Parte Dierker

Patent Trial and Appeal Board

Aug 3, 2016

12599173 (P.T.A.B. Aug. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/599, 173 11/06/2009
23657 7590 08/05/2016
SERVILLA WHITNEY LLC/BASF
33 WOOD A VE SOUTH
SUITE 830
!SELIN, NJ 08830
FIRST NAMED INVENTOR
Markus Dierker
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.
C3245PCT/US(CGG0272-00US) 7472
EXAMINER
YU, HONG
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
08/05/2016 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@dsiplaw.com
spedersen@dsiplaw.com
jescobar@dsiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARKUS DIERKER
Appeal2014-007067
Application 12/599,173 1
Technology Center 1600
Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving a
claims directed to esters and compositions comprising esters. Claims 1, 3,
and 7-10 are on appeal from the Examiner's Final Rejection, as rejected
under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Real Parties in Interest are Cognis IP Management GmbH, assignee,
and BASF SE. App Br. 3.
Appeal2014-007067
Application 12/599,173
STATEMENT OF THE CASE
The appealed claims can be found in the Claims Appendix of the
Appeal Brief. Claims 1 and 7 are independent claims. Claim 1 is
representative, and reads as follows:
1. An ester of general formula (I),
(I)
where R is an alkyl group having 6 to 12 carbon atoms,
optionally substituted by up to 3 OH groups, excluding the ester
2-propylheptyl 2-propylheptanoate.
App. Br. 16 (Claims App'x).
The following rejection is on appeal: 2
Claims 1, 3, and 7-10 rejected under 35 U.S.C. § 103(a) over Schar3
and Hawley's.4 Final Action 3.
2 The rejection of claim 1 under 35 U.S.C. § 103(a) over Dierker (U.S.
Patent Application Pub. No. US 2009/0182046 Al (published July 16, 2009;
based on WO 2006/097235) was withdrawn by the Examiner. Ans. 2.
3 U.S. Patent Application Pub. No. US 2007/0027244 Al (published Feb. 1,
2007) (hereinafter "Schar").
4 HAWLEY'S CONDENSED CHEMICAL DICTIONARY, 14th Edition
(2 002) (hereinafter "Hawley's") (definition of ester; http://www.knovel.com,
visited Feb. 23, 2012).
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Application 12/599, 173
The Examiner determined the claimed subject matter was obvious
over Schar (in view of Hawley's), which disclosed making an ester blend for
use as a polymer additive. Final Action 4. The Examiner determined Schar
was directed to reacting a carboxylic acid and an alcohol to form an ester
and that the reference disclosed, inter alia, reacting 2-propylheptanoic acid
with any of hexanol, heptanol, octanol, nonanol, decanol, and dodecanol,
which would form an ester within the scope of the claims. Id.
We adopt the Examiner's findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer. We identify the following only to highlight certain facts.
FINDINGS OF FACT
FPL Schar disclosed, "[t]he present invention relates to ester blends
and their use as polymer additives. Furthermore, this invention relates to
polymer compositions containing said ester blends." Schar lf l; see also
Final Action 4 (discussing Schar).
FF2. Schar disclosed:
Preferably, the alcohols of the esters have a chain length from Cs
to C1s, preferably Cs to C13, most preferably C12 to C13. The acid
can be an aliphatic, cyclic and/or aromatic acid. The aliphatic
acid can be a branched or linear, saturated or unsaturated C2 - to
C22 monocarboxylic acid, such as ... 2-propylheptanoic acid.
Schar i-f 25; see also Final Action 4 and Ans. 3 (discussing Schar).
FF3. Schar disclosed:
In addition, the present invention relates to esters based on acids
having a chain length from Cs to C1s, preferably Cs to C13, most
preferably C12 to C13, comprising for example aliphatic or cyclic
or aromatic, branched or linear, saturated or unsaturated C2 - to
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Application 12/599, 173
C22 monoalcohols, such as ... hexanol, heptanol, octanol,
nonanol, decanol, [and] dodecanol.
Schar i-f 26; see also Final Action 4 and Ans. 3 (discussing Schar).
FF4. Schar disclosed, "[s]aid esters are useful as additives for various
polymers, such [as] ... biopolymers (e.g.[,] polylactic acid (PLA) ... ), ...
cellulose and cellulose derivatives (e.g.[,] nitrocellulose (NC) ... )." Schar
i-f 27; see also Final Action 4 and Ans. 5 (discussing Schar).
FF5. Schar disclosed, "esters comprising 1 to 4 carboxyl groups and
12 to 60 carbon atoms, obtained by reacting ... carboxylic acid(s) having
from 1to4 carboxyl groups ... with one or more alcohol(s)," where "the
alcohol is ... selected from the group consisting of ... C6 to C22 mono- or
diols and mixtures thereof," and where "the mono-, di-, tri-, and/or
tetracarboxylic acid is one carboxylic acid or a plurality of carboxylic acids
selected from the group consisting of ... a C6- to C22 mono- or dicarboxylic
acid." Schar claims 1, 5, and 6; see also Final Action 4 and Ans. 3
(discussing Schar ).
FF6. Schar disclosed, "[a] polymer blend comprising 1 to 150 phr of
the ester as claimed in any one of claims 1 or 2, preferably 20 to 100 phr,
most preferably 30 to 60 phr." Schar claim 9; see also Final Action 4
(discussing Schar ).
DISCUSSION
Appellant's arguments do not persuade us that the Examiner failed to
establish a prima facie case for obviousness. We address Appellant's
arguments below.
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Application 12/599, 173
Appellant does not dispute that Schar discloses a process and
precursors to produce the ester of claim 1 (as identified in the Final Action-
see FF1-FF6), but contends, generally, that, absent impermissible hindsight,
a person "of ordinary skill would have no reason to select 2-
propylheptanoate esters based on the teachings of Schar," i.e., that the
skilled artisan would not have chosen 2-propylheptanoic acid and any one of
hexanol, heptanol, octanol, nonanol, decanol, and/or dodecanol from among
the ester precursors listed in the reference. App. Br. 9. Appellant also
contends that the Schar disclosure amounts to nothing more than, "at best
... disclos[ure] of a genus that encompasses the Appellants' invention."
App. Br. 9. 5
Appellant's arguments are not supported by a preponderance of the
evidence of record. As determined by the Examiner, Schar' s express
disclosure of an acid and several alcohols, as well as a method of reacting
such acids and alcohols, within the scope of the appealed claims, is more
than a generic disclosure because the claimed species is identified-the
precursors for forming the claimed ester are presented in a list. Ans. 3--4.
"Reading a list and selecting a known compound to meet known
requirements is no more ingenious than selecting the last piece to put into
5 Appellant cites In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994), In re Jones,
958 F.2d 347, 350 (Fed. Cir. 1992), andin re Deuel, 51F.3d1552, 1559
(Fed. Cir. 1995), to support its argument that a reference disclosing a genus
does not necessarily render a claimed species obvious. None of the cited
case law is applicable here because none addresses a scenario where claimed
subject matter is expressly disclosed in the prior art; the Schar reference
expressly discloses the ester precursors here.
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Application 12/599, 173
the last opening in a jig-saw puzzle. It is not invention." Sinclair & Carroll
Co. v. Interchemical Corp., 325 U.S. 327, 335 (1945).
In fact, Schar establishes the importance of using the ester precursor
2-propylheptanoic acid (an acid within the range of C6---C22 mono-carboxylic
acids) when it recites such in claim 6. Id. 3; see FF5. Also, Schar likewise
establishes the importance of using one of hexanol, heptanol, octanol,
nonanol, decanol, and dodecanol (i.e., C6---C22 monoalcohols) ester
precursors when it recites such in claim 5. Id. 3; see FF5. Therefore, the
reference itself suggests the claimed subject matter, without the need to
resort to hindsight.
Also, Appellant contends, generally, there would have been no
motivation to produce esters of 2-propylheptanoate with alcohols having 6-
12 carbon atoms, e.g., from the list at Schar i-f 26. App. Br. 9. This
argument is not persuasive for at least the reasons discussed above.
Schar juxtaposes disclosures of suitable acids, of which 2-
propylheptanoic acid is listed, and suitable alcohols, of which the above-
discussed C6---C12 monoalcohols are listed. See FF2 and FF3. These are the
very ester precursors that, when reacted (as Schar discloses they are at i-f 21 ),
produce an ester within the scope of the invention defined by appealed claim
1. Moreover, as the Examiner determined, Schar identifies such precursor
components as important when it recites them in its claims. See FF5.
Therefore, the reference itself suggests and provides motivation for the
combination of elements.
That Schar might express a preference for another embodiment, as
highlighted by Appellant, is also not compelling evidence of
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Application 12/599, 173
nonobviousness. Expressed preference for certain embodiments within
disclosed genus does not teach away from rest of embodiments within
genus. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). "[J]ust because
better alternatives exist in the prior art does not mean that an inferior
combination is inapt for obviousness purposes." In re Mouttet, 686 F.3d
1322, 1334 (Fed. Cir. 2012).
Regarding claim 3, Appellant contends the claim is separately
patentable because it recites a narrower list of alcohols (than claim 1) to be
used to produce esters, i.e., one of seven specific esters. App. Br. 10. Claim
3 merely recites esters that result from reacting the acid and alcohols
disclosed by Schar as discussed above (see Final Action 4). Therefore,
Appellant's argument is not persuasive for the same reasons discussed above
regarding claim 1.
Regarding claim 7, Appellant contends that Schar does not teach
including a pharmaceutically I cosmetically acceptable emulsifier, surfactant,
wax, polymer, or oil body in the recited composition. App. Br. 10. This
argument is not persuasive.
Although Schar is focused on blending esters with a variety of
polymers, it does not overlook pharmaceutically and/or cosmetically
acceptable polymers. For example, Schar disclosed that the ester polymer
additives taught in its disclosure could be used as lubricants and
antioxidants, which would have pharmaceutical and/or cosmetic
applications. See Schar i-f 22. Moreover, Schar expressly disclosed
combining its esters with biopolymers such as polylactic acid (PLA), which
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Application 12/599, 173
the Examiner determined is a pharmaceutically and/or cosmetically
acceptable polymer within the scope of claim 7. FF4.
That Schar does not expressly identify its esters in a pharmaceutical or
cosmetic setting is also not determinative because the claimed ester would
have been obvious over those disclosed by Schar and such uses are
suggested by the reference.
[T]he discovery of a previously unappreciated property of a prior
art composition, or of a scientific explanation for the prior art's
functioning, does not render the old composition patentably new
to the discoverer . . . . This same reasoning holds true when it is
not a property, but an ingredient, which is inherently contained
in the prior art.
Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999).
For the above reasons, we find the claims would have been obvious
over Schar (in view of Hawley's), therefore, the respective rejection is
affirmed.
SUMMARY
The rejection of claims 1, 3, and 7-10 under 35 U.S.C. § 103(a) over
Schar and Hawley's is affirmed.
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)(l )(iv).
AFFIRMED
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