Ex Parte Lueck et al

Patent Trial and Appeal Board

Aug 31, 2016

12552865 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/552,865 0910212009
72960 7590 09/02/2016
Casimir Jones, S,C,
2275 DEMING WAY, SUITE 310
MIDDLETON, WI 53562
FIRST NAMED INVENTOR
Rainer Lueck
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.
GLAWE-31000/US-l/ORD 5440
EXAMINER
HAGHIGHATIAN, MINA
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
docketing@casimirjones.com
pto .correspondence@casimirjones.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAINER LUECK and SWEN NEANDER
Appeal2014-006476
Application 12/552,865
Technology Center 1600
Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a
mixture for wound dressing. The Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as Muhlbauer Technology
GmbH (see App. Br. 3).
Appeal2014-006476
Application 12/552,865
Statement of the Case
Background
"The invention relates to a mixture which is suitable as wound
dressing and to the use thereof as wound dressing." (Spec. 1: 10-12).
The Claims
Claims 17--48 are on appeal. Claim 17 is representative and reads as
follows:
17. A mixture, which comprises:
a) wax esters, wherein said wax esters are esters of long-
chain carboxylic acids with long-chain alcohols;
b) at least one metal hydroxide; and optionally
c) radio-opaque filler;
the proportion of the components a), b) and c) in the
mixture being at least 93 % by weight.
The issue
The Examiner rejected claims 17--48 under 35 U.S.C. § 103(a) as
obvious over Muhlbauer2 and Mordhorst3 (Final Act. 3-8)4.
The Examiner finds that Muhlbauer teaches "a mixture for use as
wound dressing, which comprises: a) paraffins complying with DAB and/or
synthetic waxes selected from the group consisting of montan waxes,
2 Muhlbauer, W., US 6,541,040 B2, issued Apr. 1, 2003.
3 Mordhorst et al., EP 1 224 924 A2, published July 24, 2002 (We rely upon
the machine translation).
4 "[W]here a rejection is predicated on two references each containing
pertinent disclosure which has been pointed out to the applicant, we deem it
to be of no significance, but merely a matter of exposition, that the rejection
is stated to be on A in view of B instead of on B in view of A, or to term
one reference primary and the other secondary." In re Bush, 296 F.2d 491,
496 (CCPA 1961).
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Application 12/552,865
Fischer-Tropsch waxes, oxidates, etc of the aforementioned substances; b)
at least one metal hydroxide" where oxidates includes esters (Final Act. 4).
The Examiner finds that Muhlbauer teaches particular ranges for the
components (Id.), but finds that Muhlbauer "does not anticipate the claims
because there is no example showing a wax ester and metal hydroxide at
least 93% by weight of the formulation" (Id. at 6).
The Examiner finds that Mordhorst teaches a kit comprising
"component a): esters of a fatty acid mixture, wherein the fatty acids are of
vegetable or synthetic origin and component b ): at least one metal
hydroxide" (Final Act. 5). The Examiner finds that Mordhorst teaches
particular ranges for the components (Id.)
The Examiner finds that while the prior art "does not exemplify a
formulation comprising at least 93% by weight of components a), b) and
optionally c ), the disclosure teach[ es] that the formulation may contain up to
60% of fats and oils such asjojoba oil and up to 75% by weight of the metal
hydroxide and sufficient amount of a radio opaque filler such as barium
sulfate" (Final Act. 6).
The issues with respect to this rejection are:
(i) Does the evidence of record support the Examiner's conclusion
that Muhlbauer and Mordhorst render the claims obvious?
(ii) If so, have Appellants presented evidence of secondary
considerations that, when weighed with the evidence of obviousness, is
sufficient to support a conclusion of non-obviousness?
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Application 12/552,865
Findings of Fact
1. The Specification teaches that "the wax esters comprise jojoba
oil or are essentially composed of jojoba oil" (Spec. 5: 16-17).
2. The Specification teaches that it "is possible in the context of
the invention, but less preferred, for the mixture to comprise a small
proportion (maximum 7% by weight) of additional additives, such as
paraffin hydrocarbons or other hydrocarbon-based synthetic waxes" (Spec.
5:30 to 6:4).
3. The Specification teaches that "radioopaque filling powders,
such as powders of glasses or salts of heavy metals or rare earth metals, are
preferably present .... Particularly suitable heavy metals or rare earth
metals are, for example ... barium, strontium" (Spec. 6: 19-26).
4. Muhlbauer teaches
[A] mixture for use as wound dressing which comprises
the follo\'l1ing constituents:
a) paraffins complying with DAB and/or synthetic waxes
selected from the group consisting of montan waxes, petroleum
waxes, Fischer-Tropsch waxes, polyolefin waxes, petrolatum,
wax alcohols, and oxidates of the aforementioned substances;
b) at least one metal hydroxide.
(Muhlbauer 1 :48-56).
5. Muhlbauer teaches that the "mixture preferably comprises
jojoba oil" (Muhlbauer 2:45).
6. Muhlbauer teaches that:
The content of the metal hydroxide or metal hydroxides in the
mixture is preferably 10-75% by weight. Where the mixture
according to the invention comprises vegetable oils, fats and/or
waxes, the content thereof is preferably 10-60% by weight. The
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Application 12/552,865
content of synthetic waxes and/or their oxidates is preferably
between 10 and 50% by weight.
(Muhlbauer 2:49-56).
7. Muhlbauer teaches that the "mixture according to the invention
may comprise additional bulking agents. Suitable examples are the glasses
or glass ceramics customary in the dental sector, in particular barium or
strontium glasses" (Muhlbauer 2:57-60).
8. Muhlbauer teaches that "the synthetic waxes or their oxidates
present in the mixture according to the invention stabilize the complete
mixture, leading to adequate stability on storage" (Muhlbauer 2 :41--44 ).
9. Mordhorst teaches a "kit of an oil mixture (component a)) and a
solid (component b)) contains. The invention further relates to the use of this
kit for applying a pasty mixture and the use thereof as a medicament"
(Mordhorst i-f 1 ).
10. Mordhorst teaches that the "proportion of the oil mixture to the
total weight of the ingredients of the kit is preferably 25 - 70 wt-%" and that
the amount of component bis "75 -40 wt-%, more preferably 65 - 75 wt -
%, more preferably 40 wt -%" where component b) preferably comprises
calcium hydroxide (Mordhorst i-fi-1 10-11 ).
11. Mordhorst teaches that "an X-ray opacity of the mixture may be
desirable . . . . Preferably, the barium sulphate content in the kit is based on
the total weight of all the components, at least 33 weight-%, preferably 33 -
45 wt -%" (Mordhorst i-f 13).
Principles of Law
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Application 12/552,865
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Final Act 3-8; FF 1-11) and agree that the
claims are rendered obvious by Muhlbauer and Mordhorst. We address
Appellants' arguments below.
Appellants contend that
Muhlbauer teaches that plant-derived oils, fats, or waxes may
additionally be used in the synthetic wax/paraffin compositions
... However, Muhlbauer makes it clear that the use of
vegetable oils is only possible if the synthetic paraffins or
waxes are also present ... Muhlbauer classifies jojoba oil as
one such vegetable oil.. ..
(ii .. pp. Br. l 0, emphasis and citations omitted). Appellants contend that "the
term 'comprising' as used in Claim 17 simply cannot permit the addition of
more than 7% by weight of other materials. To interpret the wording
otherwise is tantamount to reading the 93 % by weight limitation out of the
claim altogether" (Reply Br. 3).
We do not find these arguments persuasive because, as Appellants
acknowledge, Muhlbauer suggests a wound dressing where vegetable oils
such as jojoba oil may comprise 10 to 60% of the composition (FF 5---6),
metal hydroxides 10 to 7 5% of the composition (FF 6), and that may contain
barium filler (FF 7). In particular, Muhlbauer suggests that synthetic waxes
may only make up 10% of the composition with 90% being the combination
of wax ester, metal hydroxides, and radio-opaque filler (FF 6-7).
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When compared to the composition of claim 1 7, Appellants'
Specification teaches that up to 7% paraffin waxes may be included in the
claimed composition (FF 2). We agree with Appellants that claim 17, which
uses the open "comprising" transitional phrase, requires 93% of the required
components, but claim 17 therefore does not exclude the presence of up to
7% paraffin waxes.
Therefore, the difference between the obvious wound dressing of
Muhlbauer and that of claim 1 7 is that Muhlbauer may comprise 10%
synthetic wax and 90% of the other components and claim 1 7 may comprise
7% synthetic wax and 93% of the other components. Because Muhlbauer
teaches a range for the amounts of synthetic wax (FF 6) and teaches that the
synthetic waxes "stabilize the complete mixture" (FF 8), Muhlbauer
recognizes that the amount of synthetic wax is a results-effective variable.
See In re Antonie, 559, F.2d 618, 620 (CCPA 1977), rendering the exact
amounts optimizable (cf Final Act. 10). See In re Aller, 220 F.2d 454, 456
(CCP A 1955).
In cases involving overlapping ranges, we and our predecessor
court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness .... We have also
held that a prima facie case of obviousness exists when the
claimed range and the prior art range do not overlap but are
close enough such that one skilled in the art would have
expected them to have the same properties.
In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
While the ranges of synthetic wax used in Muhlbauer does not overlap
the amounts permitted by claim 17, the claimed range ending at 7%
synthetic wax is reasonably interpreted as close enough to Muhlbauer' s 10%
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Application 12/552,865
synthetic wax that the compositions would, absent evidence to the contrary,
be expected to have the same properties. Moreover, Muhlbauer merely
discloses that the "content of synthetic waxes and/or their oxidates is
preferably between 10 and 50% by weight" (FF 6 (emphasis added)), not
that having at least 10% is critical.
Appellants contend that "Muhlbauer teaches away from modifying the
disclosed formulations in a manner that would produce this formulation"
(App. Br. 12). Appellants contend that
Muhlbauer teaches only mixtures comprising both synthetic
waxes and vegetable oils and waxes, and teaches that the
smallest fraction by weight of synthetic waxes is 10% of the
total composition ... In contrast, in the instant claims ... even
if a synthetic wax is further added, as urged by the Office, it
could be provided at no more than a weight fraction of 7°/o.
(App. Br. 13).
\X/ e find the teaching a\'l1ay arguments unpersuasive. ii~ teaching a\'l1ay
requires a reference to actually criticize, discredit, or otherwise discourage
the claimed solution. See In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004)
("The prior art's mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed"). Appellants do not identify, and we do not find, any teaching in
Muhlbauer that teaches that the difference between 10% synthetic waxes and
7% synthetic waxes would make the resulting product nonfunctional, nor
that discourages or discredits the use of less than 10% synthetic waxes.
Appellants contend that
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Application 12/552,865
The reduction of the synthetic wax component from 10% by
weight to 7% by weight urged by the Office to "optimize" the
formulation ... is not an insignificant deviation from the
formulation taught by Muhlbauer, it is a 30% reduction of the
minimum amount of this component taught by Muhlbauer.
Further, in claims 23, 24, and 25, the fraction of the
composition that could be a synthetic wax as urged by the
Office is further reduced to 5%, 2%, and 1 %, respectively,
representing reductions 50%, 80%, and 90%, respectively, from
Muhlbauer' s stated minimum amount.
(App. Br. 13).
We are not persuaded because Appellants provide no evidence that
any of the values more than 1 %, 2%, 5%, or 7% synthetic wax were
necessary to stabilize the complete mixture as desired by Muhlbauer (FF 8).
While Muhlbauer requires some amount of synthetic wax, and prefers 10 to
50 % by weight (FF 7), evidence, not argument, is required to demonstrate
that optimization to lower amounts would not have been expected to retain
Muhlbauer's desired result. See In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984) (Arguments and conclusions unsupported by factual evidence
carry no evidentiary weight.)
Appellants address several arguments to the Examiner's alternative
rejection relying on Mordhorst (see App. Br. 14), but because we do not rely
upon that formulation of the rejection to render the claims obvious, we will
not further discuss that rejection or those arguments.
Appellants contend that "Muhlbauer teaches that synthetic waxes are
used in a proportion of 10% to 50% by weight to form stable compositions
when vegetable waxes are present. In contrast, Appellants have shown that
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Application 12/552,865
synthetic waxes need not be used at all in the compositions of the instant
claims" (App. Br. 15).
We are not persuaded. Appellants do not identify a claim that
requires the complete exclusion of synthetic waxes, nor do Appellants
identify any comparative data showing that reduction in the amount of
synthetic waxes has any unexpected benefit or otherwise supports a
secondary consideration that rebuts the Examiner's obviousness analysis.
See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) ("[A]ttomey
argument [is] not the kind of factual evidence that is required to rebut a
prima facie case of obviousness"). Moreover, to the extent that Muhlbauer
includes synthetic waxes based on concerns with long term stability (FF 8),
claim 17 and the remaining claims do not require any specific degree of
stability (cf Ans. 11) and the ordinary artisan would have recognized that as
less stability was required, less stabilizing components would also be
required, as the Examiner notes "it would have been obvious to one of
ordinary skill in the art to have modified the formulations of Muhlbauer et al
by reducing or eliminating the amount of paraffin in the said formulations"
(Ans. 15).
Conclusion of Law
(i) The evidence of record supports the Examiner's conclusion that
Muhlbauer and Mordhorst render the claims obvious.
(ii) Appellants have not presented evidence of secondary
considerations that, when weighed with the evidence of obviousness, is
sufficient to support a conclusion of non-obviousness.
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SUMMARY
In summary, we affirm the rejection of claims 17 and 23-25 under 35
U.S.C. § 103(a) as obvious over Muhlbauer and Mordhorst. Claims 18-22
and 26-48 fall with claim 17.
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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