Ex Parte Miret Carceller et alDownload PDFPatent Trial and Appeal BoardMay 29, 201811997160 (P.T.A.B. May. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/997, 160 03/05/2008 7609 7590 05/29/2018 RANKIN, HILL & CLARK LLP 23755 Lorain Road - Suite 200 North Olmsted, OH 44070-2224 FIRST NAMED INVENTOR Jordi Miret Carceller 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. GIL-18017 3665 EXAMINER PURDY, KYLE A ART UNIT PAPER NUMBER 1611 MAIL DATE DELIVERY MODE 05/29/2018 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 PATENT TRIAL AND APPEAL BOARD Ex parte JORDI MIRET CARCELLER, SERGI FIGUERAS ROCA, and ROGER SEGRET PONS Appeal2016-008401 Application 11/997, 160 1 Technology Center 1600 Before DONALD E. ADAMS, RY ANH. FLAX, and RACHEL H. TOWNSEND, Administrative Patent Judges. TOWNSEND, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a preservative system comprising a cationic surfactant, which have been rejected as anticipated and/or obvious. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm-in-part. 1 Appellants identify the Real Party in Interest as "Laboratorios MIRET, S.A." (Br. 2.) Herein, when citing to Appellants' Appeal Brief, we refer to the brief submitted April 8, 2015 ("Br."), except when referring to the appealed claims specifically, which were submitted as the Claims Appendix by supplemental Appeal Brief filing on June 16, 2015 (also "Br."). Appeal2016-008401 Application 11/997, 160 STATEMENT OF THE CASE Food and cosmetic products require protection from microbial contamination. (Spec. 2.) Cationic surfactants are used as preservatives in the food industry. (Id.) A large number of preservatives are used in cosmetic compositions, but most preservative systems have been shown to have incompatibilities with skin, such as causing irritation or allergies. (Id.) Cationic surfactants derived from lauric acid and arginine have been found to protect against growth of microorganisms and the ethyl ester of the lauramide of arginine monohydrochloride ("LAE") has been found to be well tolerated in humans. (Id.) LAE combined with potassium sorbate, calcium sorbate, or sorbic acid was determined "to be highly effective in food preservation." (Id. at 2-3.) The present invention is directed to "provid[ing] further improved preservative systems on the basis of LAE." (Id. at 5.) Claims 21, 23, 25, 27, 29-32, 34, and 35 are on appeal. Claims 21, 23, and 29 are representative and read as follows: 21. A preservative system comprising a cationic surfactant, of the formula: / / ! / i ( \ \ \ .... \+ \ '\ \ l f { I ,i l / wherein x- is an anion derived from an acid selected from the group consisting of lactic acid and glutamic acid. 2 Appeal2016-008401 Application 11/997, 160 23. A preservative system comprising: and (a) a cationic surfactant, of the formula: wherein x- is an anion derived from organic or inorganic acids, (b) at least one salt selected from the group consisting of sodium citrate, sodium glutamate, sodium fumarate, sodium gluconate, sodium laurate, sodium lactate, sodium hexametaphosphate, sodium tertiary butyl hydroquinonate, sodium propylparabenate, glucosamine hydrochloride and ethanolamine hydrochloride, and combinations thereof, excluding salts of sorbic acid. 29. A preservative system comprising a cationic surfactant, of the formula: I / / I I I' \ \ \ wherein X is an anion derived from organic or inorganic acids, and wherein the cationic surfactant is in an encapsulated form. (Br., Claims App. 2, 4.) 3 Appeal2016-008401 Application 11/997, 160 The following grounds of rejection by the Examiner are before us on review: Claims 29 and 30 under 35 U.S.C. § I02(a) as anticipated by Urgell. 2 Claims 21, 23, 25, 27, 29, 30, 32, 34, and 35 under 35 U.S.C. § 103 as unpatentable over Urgell, Bastin, 3 Waranis, 4 and Raths. 5 Claim 31 under 35 U.S.C. § 103 as unpatentable over Urgell, Bastin, W aranis, Raths, and Herpens. 6 DISCUSSION I. Anticipation: Claims 29 and 30 The Examiner finds that Urgell discloses a preservative system that includes LAE used in cosmetic formulations. (Final Action 7; Ans. 2.) The Examiner explains that the formulations to which the LAE may be added are oil-in-water emulsions, e.g., Example 1, and that the preservative system that includes LAE can also include the cationic molecule quatemium-15. (Id.) According to the Examiner, because Appellants "define[] the encapsulated form as being an oil-in water emulsion ... the composition ofUrgell would necessarily have the surfactant being in an encapsulated form." (Final Action 7; Ans. 3; see also Ans. 10.) In furtherance of this position, the 2 Urgell-Beltran et al., US 2004/0166082 Al, published Aug. 26, 2004 ("Urgell"). 3 Bastin et al., Salt Selection and Optimisation Procedures for Pharmaceutical New Chemical Entities, 4 Organic Process Res. & DEV. 427-35 (2000). 4 Waranis et al., US 7,029,698 B2, issued Apr. 18, 2006. 5 Raths et al., US 6,277,359 Bl, issued Aug. 21, 2001 6 Herpens et al., US 2002/0119109 Al, published Aug. 29, 2002. 4 Appeal2016-008401 Application 11/997, 160 Examiner notes that the oil-in-water emulsion of Example 1 ofUrgell, which is "completed with LAE," is "essentially identical" to Example 177 of Appellants' Specification and that "the only disclosed process of making the instantly claimed LAE [oil-in-water] emulsion is identical to that of [Urgell], [ therefore,] the resulting product must be the same." ( Ans. 10-11.) Appellants argue that Urgell's oil-in-water emulsion to which LAE is added does not meet the limitations of claim 29 because the LAE is not an encapsulated LAE. (Br. 10-11.) The LAE that is added is not described as LAE that has been encapsulated, and the LAE when added to the oil-in- water emulsion does not inherently become encapsulated in oil and dispersed in water as required by Claim 30. (Id.) Appellants' provided two declarations of Dr. Joan Bonaventura, 8 which they contend provide evidence that the oil-in-water emulsion of Urgell does not inherently result in the encapsulation of LAE. (Br. 11-15.) We find Appellants argument and evidence persuasive in demonstrating that Urgell does not inherently anticipate an encapsulated form of LAE surfactant. 7 In light of the description of the composition provided by the Examiner in the rejection, we conclude that the Examiner meant to refer to Example 17 of Appellants' Specification and not Example 18, because Example 18 does not provide the list of ingredients and the amounts in which they are used, to which the Examiner refers in the rejection. 8 A first declaration of Joan Seguer Bonaventura was submitted by Applicants November 29, 2012 with a response to the Office Action of September 6, 2012, (hereinafter the "2012 Bonaventura Declaration"). (See Br. 11-13.) A second declaration of Joan Seguer Bonaventura was submitted on by Applicants on August 4, 2014 with a response to the Office Action of February 11, 2014 (hereinafter the "2014 Bonaventura Declaration"). (Id.) 5 Appeal2016-008401 Application 11/997, 160 "A reference may anticipate inherently if a claim limitation that is not expressly disclosed 'is necessarily present, or inherent, in the single anticipating reference.' The inherent result must inevitably result from the disclosed steps; '[i]nherency ... may not be established by probabilities or possibilities."' In re Montgomery, 677 F.3d 1375, 1379-80 (Fed. Cir. 2012) ( citations omitted, alterations in original). Even if it were true that the process described for making the oil-in- water emulsion of Example 1 ofUrgell is the same as making the oil-in- water emulsion of Example 17 of Appellants' Specification, as posited by the Examiner (Ans. 10-11), such does not establish the LAE that is added to Example 1 of Urgell is "in an encapsulated form" as required by claim 29. First, in Appellants' Specification's Example 17, it is explained that already encapsulated LAE compositions are added to an oil-in-water emulsion or free LAE is added. (Spec. 53-54; see also 2014 Bonaventura Declaration ,r 7.) Example 17 of the Specification notes that the oil phase, which consists of stearic acid, glyceryl stearate S.E., cetyl alcohol, paraffinum, isopropyl myristate, caprylic-caproic triglycerides, and dimethicone, is added to the water phase, which consists of propylene glycol, cellulose gum, triethanolamine and water, under stirring at about 5000 rpm by Ultraturrax. (Spec. 53-54.) The emulsion is then cooled to room temperature quickly while stirring at a low speed, and the pH of that emulsion is adjusted. (Id. at 54.) After the emulsion is formed either different LAE treatments are added to the emulsion or no additional treatment is added. (Id.) One of the treatments is the addition of free LAE, while four other treatments involve the addition of encapsulated LAE, e.g., "LAE encapsulated with palm oil." Thus, the process described by Example 6 Appeal2016-008401 Application 11/997, 160 17 is not one of encapsulating LAE, but as utilizing already-encapsulated LAE. Based on our review of Urgell Example 1, we do not find it to describe the addition of "encapsulated LAE." Table 1 of Urgell lists numerous preservative systems that were tested in combination with an oil in water emulsion that includes a non-ionic surfactant. (Urgell ,r,r 44--45.) The LAE preservative systems were: 1 LAE at 0.2% 9 LAE at 0.1 % with 2-bromo-2-nitro-1,3- propanediol (bronopol) at 0.01 % 10 LAE at 0.1 % with 2-methyl-5-chloro-3,4-isothiazolinone/2- methyl-3,4-isothiazolinone at 0.0005% 11 LAE at 0.1 % with 1,3-dimethylol-5,5-dimethylhydantoin at 0.11 % 12 LAE at 0.1 % with 2-phenoxyethanol at 0.17% 13 LAE at 0.1 % with imidazolidinyl urea at 0.15%. 14 LAE at 0.1 % with parabens (methyl and propyl parabens) at 0.16% 15 LAE at 0.1% with quatemium-15 at 0.03% (Id. ,r 45.) None of these LAE systems are the same as the encapsulated LAE enumerated in the Specification Example 17, which are: 3. LAE encapsulated with palm oil 0.20 g ofLAE/kg 4. LAE emulsion with soybean oil 0.20 g of LAE/kg 5. LAE in lecithin at 0.20 g ofLAE/kg 6. LAE with tween 20 at 0.20 g of LAE/kg LAE+palm LAE+emSy LAE+leci LAE+t20 (Spec. 54.) Consistent with our review ofUrgell, the 2012 Bonaventura Declaration states that the Urgell patent does not describe encapsulating LAE. (2012 Bonaventura Declaration ,r,r 6, 9.) In the 2014 Bonaventura Declaration, Bonaventura explains that in Urgell, "LAE is added to a preparation which is the form of an oil in water emulsion." (2014 Bonaventura Declaration ,r 6.) In other words, free LAE 7 Appeal2016-008401 Application 11/997, 160 is added to an already formed oil-in-water emulsion. Thus, the Examiner is incorrect in his assertion that "the art is not suggesting adding LAE to an already made 0/W." (Ans. 14.) Second, the Examiner provides no scientific evidence to support the assumption that when free LAE is added to the oil-in-water emulsion of Urgell, the LAE would become encapsulated LAE. (Ans. 13-14.) Appellants' Specification provides at pages 19-22 and 29-30 a number of methods for encapsulating a cationic surfactant such as LAE. The physical methods enumerated include "spray chilling, spray drying, rotary disk atomisation, fluid bed coating, stationary nozzle co-extrusion, centrifugal head co-extrusion, submerged nozzle co-extrusion, pan coating, etc." (Spec. 21, 29-30 (Examples 5 and 6)) and the chemical methods enumerated include "phase separation, solvent evaporation, solvent extraction, interfacial polymerisation, simple and complex coacervation, in-situ polymerisation, liposome technology, nanoencapsulation, etc." (Spec. 21, 30 (Examples 7 and 8) ). The Specification describes additional ways to encapsulate LAE "such as mixed micelles, emulsions oil in water, emulsions water in oil, micro emulsions (o/w, w/o or bicontinuous), multiple layered emulsion, solubilization of the cationic surfactants in different solvents or with different salts or products dissolved in order to change auto-aggregation of the cationic surfactants (micelles (size and quantity), crystal liquid, etc.), etc." (Spec. 21.) Notably, none of those methods of encapsulating LAE described in Appellants' Specification involve simply adding LAE to an already formed oil-in-water emulsion. Furthermore, the 2014 Bonaventura Declaration provides evidence demonstrating that the LAE added to the oil-in-water 8 Appeal2016-008401 Application 11/997, 160 emulsion of Urgell would more likely than not have exchanged places with the surfactant surrounding the oil droplet of the oil-in-water emulsion and not be encapsulated by the oil droplet. (2014 Bonaventura Declaration ,r,r 11-15.) Bonaventura explained that Ziani9 describes the exchange of surfactants, including LAE, with Tween 80 in an oil-in-water emulsion. (Id. ,r,r 12-13; Ziani 6251 (nanoemulsions consisted of "5% lipid phase (25% thyme oil/75% com oil) stabilized by 0.5% T80").) The nanoemulsion was made via homogenization, and then LAE was simply added to the prepared nanoemulsion. (Ziani 6248, 6251.) The initial nanoemulsion with Tween had a negative zeta potential 10 of about -4 m V, and after LAE was added, the zeta potential increased to a positive charge. (Ziani 6251.) Bonaventura notes that the fact that a surfactant exchange takes place with respect to the emulsifier coating is evidenced by the change in the electrical charge of the oil droplet. (Id.; Ziani 6251-52 ("There was an appreciable increase in the positive charge on the droplets from -4 to + 39 m V when the LAE concentration was increased from Oto 0.32%. The change in droplet charge with increasing LAE concentration was steepest from Oto 0.08%, but still increased gradually from 0.08 to 0.32%, and did not appear to reach a plateau region. This suggested that the cationic LAE molecules had adsorbed to the oil-water interface and displaced at least some of the nonionic T80 molecules.").) Bonaventura explains that the same effect is 9 K. Ziani et al., Influence of Surfactant Charge on Antimicrobial Efficacy of Surfactant-Stabilized Thyme Oil Nanoemulsions, 59 J. Agric. Food Chem. 6247-55 (2011). 10 Zeta potential is a measure of the electrical charge of the droplets. (Ziani 6248.) 9 Appeal2016-008401 Application 11/997, 160 described in Saberi. 11 (2014 Bonaventura Declaration ,r 14.) In Saberi, the nanoenmlsions were of vitamin E in buffer. (Saberi 1626, 1628 ("increasing amounts of cationic surfactant (lauric arginate) to the VE-nanoemulsions increased the positive charge on the droplets. . . . These results suggested that the ionic surfactants adsorbed to the surfaces of the droplets in the VE- nanoemulsions and altered their electrical characteristics.").) Bonaventura notes that the change in charge would not have been observed if the LAE surfactant were incorporated into the inside of the droplet. (2014 Bonaventura Declaration ,r 16.) Bonaventura further explains that there is "no theoretical basis" to assume that "in an oil-in-water emulsion system containing the cationic surfactant LAE in the aqueous phase of the emulsion there will be a new equilibrium in which LAE will be distributed between the oil phase and the aqueous phase." (2014 Bonaventura Declaration ,r 17). The Examiner contends that because the LAE added to the oil-in-water emulsion in Urgell exhibited lower antimicrobial activity than the LAE added to the water-in-oil formulations in Urgell, such "supports the notion that the 0/W results in encapsulated LAE because encapsulated LAE would reduce the amount of aqueous LAE available to inhibit microbes." (Ans. 13.) According to the Examiner, "[g]iven that the 0/W emulsion exhibits less activity than the W/0 emulsion, [this] suggests that the LAE is in fact encapsulated." (Id.) We disagree. Appellants have provided scientific evidence that suggests the LAE is not encapsulated, but rather exchanges place with the emulsifier 11 A.H. Saberi et al., Stabilization of Vitamin £-Enriched Nanoemulsions: Influence of Post-Homogenization Cosurfactant Addition, 62 J. Agric. Food Chem. 1625-33 (2014). 10 Appeal2016-008401 Application 11/997, 160 coating of the oil-in-water emulsion. This exchange would result in the reduction of "free" LAE available for antimicrobial activity. And, thus, while the same amount of free LAE may have been added in the oil-in-water emulsion as was added to the water-in-oil system, there is less of it available for antimicrobial activity. Given the scientific evidence provided by Appellants, we do not find the Examiner's conclusion of encapsulation, which is unsupported by scientific evidence, persuasive. In addition to the foregoing, Appellants' Specification establishes a head-to-head comparison of the addition of free LAE to an oil-in-water emulsion versus addition of encapsulated LAE added to an oil-in-water emulsion. (Spec. 55.) The data demonstrates that encapsulated LAE when added has better antimicrobial activity than when free LAE is added (id.), which supports that free LAE added to an already prepared oil-in-water emulsion does not result in encapsulated LAE. In light of the foregoing, we disagree with the Examiner that the formulation of Example 1 of Urgell and the formulation of Example 17, in which free LAE was added, even if they were both produced with the same process, inherently produce an encapsulated LAE as required by claim 29, much less an encapsulated form that is an oil-in-water emulsion as required by claim 30. Thus, for the reasons above, we reverse the Examiner's rejection of claims 29 and 30 under 35 U.S.C. § 102(a) as anticipated by Urgell. 11 Appeal2016-008401 Application 11/997, 160 II. Obviousness: Claims 21 and 32 The Examiner contends that claim 21 is obvious over Urgell, Bastin, Waranis, and Raths. 12 Unlike claim 29, claim 21 does not require an encapsulated LAE. Rather, claim 21 requires the preservative system to be LAE and an anion that is "selected from the group of lactic acid and glutamic acid." The Examiner explains that Urgell teaches the use of LAE as an antimicrobial in cosmetic formulations, but does not "teach the X component as being an anion with the proviso that X is not a chloride ion, a bromide ion or a sulfate ion." (Final Action 8-10; Ans. 4). The Examiner notes, however, that Bastin teaches that salt selection and optimization is well known for pharmaceuticals to maximize various properties, such as aqueous solubility and chemical stability. (Final Action 10-11; Ans. 5.) The Examiner notes that Bastin provides a table of commonly used salts to optimize those properties, and in that table is lactate and glutamate. (Id.) According to the Examiner, "while the use of anions such as chloride, bromide and sulfate are excluded by some of the instant claims, other counter ions such as acetate, lactate (lactic acid), glutamate (glutamic acid), benzoate, tartrate, etc. would be readily envisaged because salt selection is routinely performed so as to optimize the chemical stability and utility of the compound." (Id.) The Examiner relies on Waranis, which teaches acetaminophen complexed with an alkali metal lactate salt, such as sodium 12 The rejection of claim 21 under 35 U.S.C. § 103 is lumped together with claims 23, 25, 27, 29, 30, 32, 34, and 35 and includes the Raths reference as well. However, the Examiner does not rely on Raths for any limitation relevant to claim 21. Raths is only relied upon for the alleged obviousness of including chitosan and the enzyme inhibitor triethyl citrate, which relate to limitations recited in claims 25 and 27. (See Final Action 12.) 12 Appeal2016-008401 Application 11/997, 160 lactate, to establish that it would have been obvious to use an acid form of lactate with LAE. (Final Action 11; Ans. 5---6.) In light of the foregoing, the Examiner contends that it would have been obvious to modify Urgell with Bastin and Waranis and arrive at LAE with lactate as the product of "ordinary skill and common sense in optimizing the formulation, not one of innovation." (Final Action 11; Ans. 6). As to Bastin, Appellants argue that "[t]he skilled artisan reading the Bastin article, would not find it obvious to develop new salts of LAE and find effectiveness in them." (Br. 17.) The Examiner bears the burden of establishing a prima facie case of obviousness based upon the prior art. In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992). The Supreme Court has stated: When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that is was obvious under § 103. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,421 (2007). Moreover, we note that the Supreme Court has further explained that it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does ... because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known. Id. at 418-19. 13 Appeal2016-008401 Application 11/997, 160 While we agree with the Examiner that the selection of an appropriate salt is grounded in optimization and is a standard part of product development, that alone is insufficient to support a conclusion of obviousness. Claim 21 requires one of two specific salt forms. KSR authorized an "obvious-to-try" analysis where there is a design need or market pressure, and "there are a finite number of identified, predictable solutions." Id. at 421. That mere routine testing is required to ascertain the properties of various salt forms ignores the KSR predicate requirement of up- front predictability. That is, the Examiner's obviousness position does not explain how the two salt forms claimed would have been known to yield an optimized LAE preservative system. Indeed, there is no persuasive evidence that using the claimed salts would have been expected to provide any advantage. The Examiner has not established why the skilled artisan would have modified the preservative used in a cosmetic formulation of Urgell by substituting, or trying to substitute, lactate or glutamate disclosed from the table of "common pharmaceutical salts" in Bastin. That it would be possible to do so is not enough. Thus, for the reasons above, we reverse the Examiner's rejection of claim 21 under 35 U.S.C. § 103 as unpatentable over Urgell, Bastin, Waranis, and Raths. Claim 32 depends from claim 21 and adds further limitations. We reverse the Examiner's rejection of claim 32 under 35 U.S.C. § 103 as unpatentable over Urgell, Bastin, Waranis, and Raths for the same reasons we reverse the obviousness rejection as to claim 21. 14 Appeal2016-008401 Application 11/997, 160 III. Obviousness: Claims 34 and 35 The Examiner has rejected claims 34 and 35 under 35 U.S.C. § 103 as being obvious over Urgell, Bastin, Waranis, and Raths. Claims 34 and 35, like claim 29, require the LAE to be in an encapsulated form. The Examiner's position regarding the encapsulated form requirement of the claim is the same as it was for the anticipation rejection, namely that Urgell teaches an emulsion formed by dispersion of an oil phase in a water phase (Example 1) and may comprise animal and vegetable oils "which would be expected to form a coating around the encapsulated LAE of the emulsion." (Compare Final Action 8-9, with Final Action 6-7; Ans. 4.) As for claim 35, the Examiner contends that the patentability of this product-by-process claim does not depend on its method of production where the product is the same or obvious from a product from the prior art. (Final Action 9; Ans. 4.) The Examiner notes that Urgell' s deficiency with respect to these claims ( and others) is that it does not provide for an anion X to be other than a chloride, bromide, or sulfate ion and proceeds to the remaining references to indicate why other anions would have been obvious. (Final Action 10-12; Ans. 4.) 13 Thus, we understand the Examiner's rejection of claims 34 and 35 to be the same as the anticipation position with respect to claim 29, i.e., that Urgell necessarily results in an encapsulated form as claimed. As discussed above with respect to the Examiner's rejection of claims 29 and 30 as being anticipated by Urgell, we find the Examiner's position regarding Urgell 13 We note that claims 34 and 35 do not exclude X anions from being chloride, bromide, or sulfate. 15 Appeal2016-008401 Application 11/997, 160 teaching an encapsulated form of the claimed LAE surfactant is not supported. For the reasons above, we reverse the Examiner's rejection of claims 34 and 35 under 35 U.S.C. § 103 as unpatentable over Urgell, Bastin, Waranis, and Raths. IV. Obviousness: Claims 23, 25, and 27 The Examiner has also rejected claims 23, 25, and 27 under 35 U.S.C. § 103 as being obvious over Urgell, Bastin, Waranis, and Raths. Unlike claims 34 and 35, claims 23, 25, and 27 do not recite that the LAE cationic surfactant is in an encapsulated form. And, unlike claim 21, claims 23, 25, and 27 do not require that the preservative system of LAE include a specific amon. As with claims 21, 32, 34, and 35, the Examiner's obviousness rejection of claims 23, 25, and 27 addresses the obviousness of providing an anion X to be other than a chloride, bromide, or sulfate ion. We note, however, that none of claims 23, 25, and 27 recite a proviso that the anion X not be bromide, chloride, or sulfate. Rather, each of these claims merely requires the anion X to be "derived from organic or inorganic acids." Claims 23, 25, and 27 require an additional compound be included in the preservative system aside from the LAE plus anion derived from organic or inorganic acids. Claim 23 requires a salt selected from a particular group of salts, but excluding salts of sorbic acid. Claim 25 requires the addition of at least one of "an ester compound, arginine acetamide, and an enzyme inhibitor." (Br., Claims App. 3.) Claim 27 requires the addition of at least one of "ethyl arginate, glucosamine, of [sic] chitosan and glutamic acid." (Id. at 3--4.) 16 Appeal2016-008401 Application 11/997, 160 A. Claim 23 In the obviousness rejection of claim 23, the Examiner's position is that Bastin supports the obviousness of including "counter ions such as acetate, lactate (lactic acid), glutamate (glutamic acid), benzoate, tartrate, etc. [as they] would be readily envisaged because salt selection is routinely performed so as to optimize the chemical stability and utility of the compound." (Final Action 10-11; Ans. 5.) The Examiner asserts that while "[t]he combination ofUrgell and Bastin fail to teach the counter ions as being in the form of a salt such as sodium lactate," such a counter ion would have been obvious in light of Waranis, which teaches acetaminophen "complexed with an alkali metal lactate salt such as sodium lactate." (Final Action 11; Ans. 5---6.) The Examiner, however, does not explain why the addition of sodium lactate as a separate salt apart from also being the X anion of LAE being derived from organic or inorganic acids would have been obvious. (See Ans. 14--15 ("Waranis is provided to demonstrate that lactate salts include sodium lactate and are known for producing salts with other compounds such as acetaminophen. It would have been well within the skill of an ordinary artisan to modify Bastin such that the counter ion associated with the LAE was any one of the species suggested, such as lactate, with a reasonable expectation for success in modulating the properties of the compound.").) As noted above, the Examiner bears the burden of establishing a prima facie case of obviousness based upon the prior art. Fritch, 972 F.2d at 1265. In the absence of any discussion by the Examiner as to the obviousness of including one of the salts listed in (b) of claim 23 in addition to providing LAE complexed with an X anion as 17 Appeal2016-008401 Application 11/997, 160 required by claim 23, we are constrained to reverse the Examiner's rejection of claim 23 as being obvious over Urgell, Bastin, Waranis, and Raths. B. Claims 25 and 27 The Examiner explains with respect to claim 25 and 27 that Raths, which is directed to deodorizing shampoo formulations, renders obvious the addition of chitosan and the enzyme inhibitor triethyl citrate to the shampoo formulation disclosed in Urgell that includes an LAE preservative system with a reasonable expectation of success. (Final Action 12; Ans. 6-7.) The Examiner explains that Raths teaches that "chitosan is a useful antidandruff agent and that triethyl citrate inhibits extracellular enzymes such as esterases which are responsible for malodor formation." (Final Action 12; Ans. 6.) In light of this, the Examiner explains that "[ o ]ne would have been motivated to include chitosan [in the Urgell shampoo formulation] as it provides an antidandruff benefit" and "[ o ]ne would have been motivated to [likewise] include an esterase inhibitor such that the formation of bad odors on the scalp or hair would be inhibited." (Final Action 12; Ans. 7.) We agree with the Examiner's findings with regard to Raths. Moreover, as noted above, claims 25 and 27 do not exclude the bromide, chloride, and sulfate acids being the X anion of the LAE surfactant system. Thus, Urgell' s disclosure of LAE with any one of those ions meets the cationic surfactant requirements of claims 25 and 27. Consequently, we agree with the Examiner's conclusion that claims 25 and 27 would have been obvious to one of ordinary skill in the art over 18 Appeal2016-008401 Application 11/997, 160 Urgell and Raths. 14 Appellants argue that there is no motivation to combine Raths with Urgell, Bastin, and Waranis. (Br. 17.) In light of our discussion above, the only relevant issue with respect to claim 25 and 27 is whether the Examiner has provided sufficient evidence of a motivation to combine the teachings of Raths with Urgell. We disagree with Appellants' position that evidence of motivation to combine is absent. Urgell teaches LAE used as a preservative in shampoo formulations. (Urgell i-fi-f73-7 4 (Example 11) and ,r 61 ("Further formulations 4 to 15 are described hereafter. The experimental results obtained in the examples 1 to 3 are representative for the examples 1 to 15.").) The Examiner's rationale, stemming from the teachings of Raths, to add chitosan as an antidandruff ingredient and triethyl citrate as an esterase inhibitor so as to inhibit malodor on the scalp is sound. Appellants additionally point out that Raths' surfactant is "completely different from a cationic surfactant as defined in the instant invention." (Br. 17-18.) While this difference may be exist, Appellants argument is unavailing. The test for obviousness is what the combined teachings of the prior art would have suggested to one of ordinary skill in the art. In re Keller, 642 F.2d 413,425 (CCPA 1981). Appellants have not established why the different surfactants used in Urgell as compared to the surfactants used in Raths would preclude one of ordinary skill in the art from recognizing that the chitosan used in Raths' shampoo formulation can be used as an antidandruff component in the Urgell shampoo formulation 14 The Board may rely on less than all of the references applied by the Examiner in an obviousness rationale without designating it as a new ground of rejection. In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966) (citing In re Bush, 296 F.2d 491,496 (CCPA 1961)). 19 Appeal2016-008401 Application 11/997, 160 containing the same LAE cationic surfactant encompassed by claims 25 and 27. Nor have Appellants established why the different surfactants used in Urgell as compared to the surfactants used in Raths would preclude one of ordinary skill in the art from recognizing that triethyl citrate, used as an esterase inhibitor so as to inhibit malodor on the scalp in Raths' shampoo formulation, can be used as such in the Urgell shampoo formulation. Accordingly, we affirm the Examiner's rejection of claims 25 and 27 as being unpatentable under 35 U.S.C. § 103 over Urgell, Bastin, Waranis, and Raths. V. Obviousness: Claim 31 Claim 31 depends from claim 30, which depends from claim 29. Thus, the LAE required by claim 3 1 is one that is encapsulated. The Examiner's rejection of claim 31 as being obvious under 35 U.S.C. § 103, over Urgell, Bastin, Waranis, Raths, and Herpens, relies on Herpens for teaching various oily phases in an oil-in-water type emulsion. (See Final Action 13.) As discussed above with respect to the Examiner's rejection of claims 29 and 30 as being anticipated by Urgell, we find the Examiner's position regarding Urgell teaching an encapsulated form of the claimed LAE surfactant is not supported. Because the addition by the Examiner of Herpens does not cure the defect of Urgell in not teaching an encapsulated LAE, as discussed above, we reverse the Examiner's rejection of claim 31 under 35 U.S.C. § 103 as being unpatentable over Urgell, Bastin, Waranis, Raths, and Herpens. 20 Appeal2016-008401 Application 11/997, 160 SUMMARY We affirm the Examiner's rejection of claims 25 and 27 under 35 U.S.C. § 103 as being unpatentable over Urgell, Bastin, Waranis and Raths. We reverse the Examiner's rejection of claims 29 and 30 under 35 U.S.C. § 102(a) as being anticipated over by Urgell. We reverse the Examiner's rejection of claims 21, 23, 32, 34, and 35 under 35 U.S.C. § 103 as being unpatentable over Urgell-Beltran, Bastin, Waranis, and Raths. We reverse the Examiner's rejection of claim 31 under 35 U.S.C. § 103 as being unpatentable over Urgell, Bastin, Waranis, Raths, and Herpens. 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). AFFIRMED-IN-PART 21 Copy with citationCopy as parenthetical citation