11584905 (B.P.A.I. Sep. 9, 2010)

Ex Parte Kenar et al

Board of Patent Appeals and InterferencesSep 9, 2010

11584905 (B.P.A.I. Sep. 9, 2010)

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. 11/584,905 10/23/2006 James A. Kenar 0123.05 6132 25712 7590 09/10/2010 USDA-ARS-OFFICE OF TECHNOLOGY TRANSFER NATIONAL CTR FOR AGRICULTURAL UTILIZATION RESEARCH 1815 N. UNIVERSITY STREET PEORIA, IL 61604 EXAMINER KARPINSKI, LUKE E ART UNIT PAPER NUMBER 1616 MAIL DATE DELIVERY MODE 09/10/2010 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte JAMES A. KENAR, DAVID L. COMPTON, and FREDERICK C. FELKER __________ Appeal 2010-005048 Application 11/584,905 Technology Center 1600 __________ Before ERIC GRIMES, LORA M. GREEN, and JEFFREY N. FREDMAN, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL1 This is an appeal under 35 U.S.C. § 134 involving claims to a composition comprising droplets of a cinnamate-modified vegetable oil distributed in a starch phase. The Examiner has rejected the claims as 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-005048 Application 11/584,905 2 obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The Specification discloses that the “transesterification between the ethyl ester of ferulic acid … and soybean oil produces a mixture of feruloylated acylglycerols (FAG)” (Spec. 2, ¶ 0004). The Specification further discloses that the “feruloyl moiety of the FAG has a strong ultraviolet A (UVA) and B (UVB) absorbance while the acylglycerol portion of the FAG provides water resistance” (id.). The Specification discloses “a delivery system for FAG and other cinnamate-modified vegetable oils (CMVO) useful as UV-protective sunscreen agents … in which the agents are incorporated into starch-based composites” (id. at 4, ¶ 0007). Claims 1-18 are on appeal. Claim 1 is representative and reads as follows: 1. A composition comprising droplets of a cinnamate-modified vegetable oil stably and substantially uniformly distributed in a continuous starch phase in the absence of an external emulsifier, wherein said starch phase consists essentially of completely disrupted starch granules and said droplets are surrounded by a boundary layer separating them from the starch phase. Issue The Examiner has rejected claims 1-18 under 35 U.S.C. § 103(a) as being obvious in view of either Eskins2 and Compton ‘6733 (Answer 4) or Eskins and Compton ‘2364 (Answer 8). 2 Eskins et al., US 5,882,713, Mar. 16, 1999 3 Compton et al., US 7,163,673 B2, Jan. 16, 2007 4 Compton et al., US 6,346,236 B1, Feb. 12, 2002 Appeal 2010-005048 Application 11/584,905 3 Appellants do not dispute the Examiner’s conclusion that the cited references support a prima facie case of obviousness, but contend that they “have unexpectedly discovered that the encapsulation of the cinnamate- modified vegetable oils in the starch-based composite matrix synergistically enhances their UV absorbing ability” (Appeal Br. 9). The issue with respect to both rejections is: Have Appellants provided evidence of unexpected results that, when weighed with the evidence supporting the Examiner’s obviousness rejection, is sufficient to support a conclusion that the claimed invention is nonobvious? Findings of Fact 1. Eskins discloses a “stable and non-separable composition comprised of starch and a water-immiscible material” (Eskins, abstract). 2. Eskins discloses that the compositions “are useful as carriers or vehicles in … sun tan lotions,” among other things (id. at col. 13, ll. 55-60). 3. Compton ‘673 discloses “a novel class of UVA- and UVB- absorbing compounds derived from hydroxy triglycerides and other hydroxy-substituted acylglycerols that are reacted with a variety of cinnamic acids.… These agents are readily formulated into standard UV-absorbing … sunscreen formulations” (Compton ‘673, col. 2, ll. 47-58). 4. Compton ‘236 discloses that “transesterification reactions yield novel ferulyl-substituted or coumaryl-substituted acylglycerols with properties suitable for use as sunscreen agents having broad spectrum UV protection” (Compton ‘236, abstract). 5. The Specification provides a comparison of UV absorbance by a starch-based film, a feruloylated acylglycerol (FAG) film, and a starch-based FAG film (SB-FAG) (Spec. 31-32; Fig. 2). Appeal 2010-005048 Application 11/584,905 4 6. The Specification states that a 1:1 mixture of starch base (SB) and FAG, containing an amount of FAG equivalent to 0.35 mg/cm2, provided the same UV absorbance as 0.65 mg/cm2 of FAG alone (id. at 33). 7. The Specification states that this result was unexpected because “the starch-based … control films permitted almost complete transmittance of the UV radiation” (id. at 32). 8. The Specification also provides a comparison of UV absorbance over time for FAG alone and SB-FAG (id. at 34-35; Fig. 4). 9. The Specification reports that FAG alone “quickly lost its UV absorptivity within 1 h of exposure to the UV radiation, rendering it as efficacious as the … control film,” while the SB-FAG’s “UV absorbance was extended for more than 4 h before it degraded to the irradiance of the … control” (id. at 34). 10. The Specification concludes that “formulation of FAG within the starch matrix resulted in half the quantity of FAG providing equal or better UV stability over time compared to the non-formulated FAG” (id. at 35). Principles of Law “Consistent with the rule that all evidence of nonobviousness must be considered when assessing patentability, the PTO must consider comparative data in the specification in determining whether the claimed invention provides unexpected results. In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). “[W]hen an applicant demonstrates substantially improved results … and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary.” Id. at 751. Appeal 2010-005048 Application 11/584,905 5 Analysis Appellants do not dispute the Examiner’s conclusion that the claimed composition would have been prima facie obvious based on the cited references. Appellants contend, however, that they “have unexpectedly discovered that the encapsulation of the cinnamate-modified vegetable oils in the starch-based composite matrix synergistically enhances their UV absorbing ability and thus allows the use of greatly reduced concentrations of cinnamate-modified vegetable oils for equivalent UV protection” (Appeal Br. 9). Appellants also argue that “the UV absorbance of the SB-FAG films resulted from the FAG in the composite and not the starch, since the starch- based … control films … permitted almost complete transmittance of the UV radiation” (id. at 10). Appellants contend that the “synergistic increase in absorbancy resulting from the combination of the starch-based composite matrix and FAG is unexpected” (id.) The Examiner responded to Appellants’ unexpected results by noting that “applicant has no claims drawn to any synergistic effect” (Answer 11). The Examiner has not adequately explained why the results disclosed in the Specification do not overcome the prima facie case of obviousness for the appealed claims. The Specification provides evidence that the claimed composition provides UV absorbance that is equivalent to the UV absorbance of twice as much FAG alone (FF 6) as well as a four-fold increase in the duration of UV absorbance (FF 9). The Specification also states that the greater UV absorbance of SB-FAG was unexpected (FF 7). The Examiner has not provided any basis for doubting the accuracy of either the Specification’s data or its statement that the results were unexpected. While the claims do not recite a synergistic effect, the fact that Appeal 2010-005048 Application 11/584,905 6 making the composition results in unexpected synergism is evidence of nonobviousness. See In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988) (“There is always at least a possibility of unexpected results, that would then provide an objective basis for showing that the invention, although apparently obvious, was in law nonobvious.”). Claim 12, the only other independent claim, is directed to a “method of preparing a composition characterized by a uniform and stable distribution of cinnamate-modified vegetable oil throughout a continuous starch phase” by steps that include, among other things, combining a starch composition with cinnamate-modified vegetable oil. Appellants’ evidence of unexpected results is sufficient to outweigh the evidence of obviousness with respect to claim 12 for the same reasons discussed above. Conclusion of Law Appellants have provided evidence of unexpected results that, when weighed with the evidence supporting the Examiner’s obviousness rejection, is sufficient to support a conclusion that the claimed invention is nonobvious. SUMMARY We reverse the rejection of claims 1-18 under 35 U.S.C. § 103(a). REVERSED Appeal 2010-005048 Application 11/584,905 7 lp USDA-ARS-OFFICE OF TECHNOLOGY TRANSFER NATIONAL CTR FOR AGRICULTURAL UTILIZATION RESEARCH 1815 N. UNIVERSITY STREET PEORIA IL 61604