Ex Parte Lin et al

Board of Patent Appeals and Interferences

Dec 20, 2011

10396916 (B.P.A.I. Dec. 20, 2011)

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.
10/396,916 03/25/2003 Peter Yau Tak Lin 8892M 5765
27752 7590 12/21/2011
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
TRAN LIEN, THUY
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
12/21/2011 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 PETER YAU TAK LIN, PAUL SEIDEN,
DAVID CAMMIADE GRUBER, and
ROBERT ALAN SANDERS
________________

Appeal 2011-001465
Application 10/396,916
Technology Center 1700
________________

Before EDWARD C. KIMLIN, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 3-7, 18, 19, 21,
and 22. We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:
1. An emulsifier composition comprising a sorbitan component, wherein
the sorbitan component comprises at least about 60%, by weight, sorbitan
monoesters of fatty acids having from about 12 to about 22 carbon atoms
and no more than about 10%, by weight, isosorbide esters; and wherein the
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sorbitan component comprises not more than about 20%, by weight, total
free polyol; and wherein the sorbitan component is a mixture which
comprises not more than about 50%, by total weight, of a single sorbitan
monoester positional isomer; said emulsifier composition being alpha-stable.

The Examiner relies upon the following references in the rejection of
the appealed claims (Ans. 3):
Du Ross 3,647,477 Mar. 07, 1972
Zaki 4,103,047 Jul. 25, 1978
Beshouri 5,200,433 Apr. 06, 1993

Appellants’ claimed invention is directed to an emulsifier composition
comprising a sorbitan component. The sorbitan component comprises at
least about 60%, by weight, of sorbitan monoesters of fatty acids having
from about 12 to about 22 carbon atoms.
Appealed claims 1, 3-6, and 18 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
being unpatentable over Beshouri in view of Zaki. Claims 7 and 21-22 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Beshouri.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Beshouri in view of Du Ross.
Appellants do not separately argue any particular claim on appeal.
Also, Appellants do not present separate, substantive arguments against the
separate rejections of claims 7 and 21-22, and claim 19. Accordingly, all the
appealed claims stand or fall together with claim 1.
We have thoroughly reviewed each of Appellants’ arguments for
patentability, as well as the declaration evidence relied upon in support
thereof. However, we fully concur with the Examiner that the claimed
subject matter is unpatentable over the cited prior art. Accordingly, we will
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sustain the Examiner’s rejections to the extent that they are based upon §
103.
There is no dispute that Beshouri, like Appellants, discloses an
emulsifier composition comprising a sorbitan component wherein the
sorbitan component comprises from about 5 weight % to about 95 weight %
of sorbitan monoesters of fatty acids having 12 or 18 carbon atoms. While
we do not find that the 5-95 weight % disclosed by Beshouri is a description
of the claimed range of at least about 60% within the meaning of § 102, we
are in agreement with the Examiner that the claimed amount of sorbitan
component would have been obvious to one of ordinary skill in the art.
The principal argument advanced by Appellants is that “Beshouri
does not provide an enabling disclosure that discloses, teaches, or suggests
this limitation, and nor does it enable one of ordinary skill in the art to make
and use an emulsifier composition with at least about 60% by weight
sorbitan monoester” (Br. 3, penultimate para.). Appellants maintain that
“Beshouri, while disclosing from about 10 to about 90 weight percent of
sorbitan monoesters in column 4, lines 14-30, does not enable one of
ordinary skill in the art to make an emulsifier composition with at least about
60% by weight sorbitan monoester” (Br. 3, last para.). Appellants rely upon
a declaration by one of the present inventors, Peter Yau Tak Lin, as evidence
that “a process for making an emulsifier composition with at least about
60% by weight sorbitan monoester was not known until the disclosure [sic,
of the] present application” (Br. 4, third para.).
It is well settled that there is a strong presumption of validity of a U.S.
patent and the burden to demonstrate the non-enablement of a patent is not
insignificant. Evidence must be presented that one of ordinary skill in the
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art, making adaptations within the skill of the artisan, could not have
successfully carried out the process disclosed in the patent. See In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976); In re Weber, 405 F.2d 1403,
1406-07 (CCPA 1969); In re Reid, 179 F.2d 998, 1001-02 (CCPA 1950); In
re Michalek, 162 F.2d 229, 231-32 (CCPA 1947). In the present case, our
review of Appellants’ declaration brings us to the same conclusion reached
by the Examiner, i.e., the declaration is lacking in the requisite objective
evidence that one of ordinary skill in the art would be unable to make a
sorbitan component comprising at least about 60% by weight of sorbitan
monoesters of fatty acids having from about 12 to about 22 carbon atoms.
The declarant states that he has studied or otherwise become familiar
with emulsifying agents disclosed by Beshouri, namely SPAN® emulsifying
agents 20, 40, 60, and 80, and that these commercially available emulsifying
agents do not contain at least about 60% by weight of the claimed sorbitan
monoesters (see Decl., paras. 10-12). However, Beshouri also exemplifies
SPAN® 85 as an emulsifying agent and the declaration offers no
information about the amount of sorbitan monoesters in this agent.
Furthermore, while declarant states that most of the emulsifying agents that
he is familiar with are less than about 40% sorbitan monoesters, Appellants
have not demonstrated that such a change in concentration produces any
unexpected results. It has generally been held that where patentability is
predicated upon a change in a condition of a prior art composition, such as a
change in concentration or the like, the burden is on the applicant to
establish with objective evidence that the change is critical, i.e., it leads to a
new, unexpected result. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
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1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). However, Appellants
have proffered no such objective evidence in the present case.
Declarant also states that “the sorbitan monoester composition of
greater than 60%, by weight of the surfactant, as claimed in the present
application was only obtained by substantial and considerable
experimentation” (para. 19). However, Appellants have presented no
objective evidence to support the assertion of undue experimentation.
Declarant further states that
[i]t is also noted that stripping, also considered to be
deodorizing, and distillation, also considered to be
purification, either of them practiced alone, will not result in
an emulsifier composition with at least about 60% by weight
sorbitan monoester. However, those processes, when
combined, result in an emulsifier composition with at least
about 60% by weight sorbitan monoester, as disclosed in the
present application

(para. 22). This statement, however, is not supported by Appellants’
Specification. The Specification states that “[t]he compositions of the
present invention can be made by either further purifying commercial
sorbitan compositions, or by controlling the synthesis of the sorbitan starting
with sorbitol” (p. 7, ll. 20-22). The Specification further discloses that “to
achieve the high sorbitan monoester content, the commercial sorbitan ester
prepared by the above process is molecular distilled to enrich the sorbitan
monoester content” (p. 11, ll. 18-20). Hence, Appellants’ Specification
teaches that the claimed composition can be made by purifying only, i.e.,
distilling commercial compositions, and Appellants have not established that
such distillation would have been unobvious to the skilled artisan. In
addition, Appellants have not established that controlling the synthesis of
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sorbitan from sorbitol was unobvious to one of ordinary skill in the art at the
time of filing the present application, especially in light of Beshouri and
Zaki.
The declarant also includes a confusing statement in the declaration.
The declarant states that “it is my belief that making a sorbitan monoester
composition of greater than about 60%, by weight of the surfactant, could
have been performed based on my experience, knowledge to those of
ordinary skill in the art, and using the teachings and disclosure of Beshouri”
(para. 18). Inasmuch as the declarant is presumed to be one of ordinary skill
in the art, it would appear that the declarant is stating that making the
claimed sorbitan monoester composition would have been obvious to one of
ordinary skill in the art based on the knowledge of one of ordinary skill in
the art and the disclosure of Beshouri.
As for the claimed amounts of isosorbide and free sorbitol, Appellants
have not refuted the Examiner’s position that “[i]n the affidavit filed on
2/23/09, appellant shows that the amounts of isosorbide in commercially
prepared sorbitan ester are all less than 10% and the amounts of free sorbitol
are very minute and less than the 20% allowed for in the claims” (Ans. 8,
second para.). Hence, we find no error in the Examiner’s reasoning that it
would be expected that the amounts of isosorbide and free sorbitol in the
sorbitan monoester of Beshouri would be within the claimed ranges, or
would have been obvious to one of ordinary skill in the art.
Appellants also state that “[a]s discussed in the specification at page 8,
lines 1-6, the proper formulation (as specified in claim 1) of the sorbitan
emulsifier mixture causes it to be alpha-stable” (Br. 7, last para.). However,
the Specification actually states that “it is believed that monoesters of a
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mixture of sorbitan positional isomers leads to a polymorphic behavior that
is alpha-tending and perhaps alpha-stable” (sentence bridging 7-8). The
Specification further states that “it is preferred in one aspect that the sorbitan
component will comprise not more than about 50%, by total weight, of a
particular sorbitan positional isomer (e.g., the 1,4 positional isomer)” (p. 8,
first para.). We note that Appellants’ Specification then discloses that it was
known in the art to avoid undesirably high concentrations of the 1,4
positional isomer, citing MacDonald, “Emulsifiers: Processing and Quality
Control”, Journal of the American Oil Chemists’ Society, Volume 45,
October, 1968 (p. 11, second para.). Accordingly, Appellants have not
established that it would have been non-obvious to one of ordinary skill in
the art to formulate the claimed sorbitan monoester composition that “is
alpha-tending and perhaps alpha-stable” (supra).
In conclusion, based on the foregoing, it is our judgment that the
evidence of obviousness presented by the Examiner outweighs the evidence
of non-obvious proffered by Appellants. Accordingly, the Examiner’s
decision rejecting the appealed claims is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a)(1)(v).
AFFIRMED

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