Ex Parte Negishi et alDownload PDFPatent Trial and Appeal BoardOct 14, 201613265724 (P.T.A.B. Oct. 14, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/265,724 01109/2012 20529 7590 10/18/2016 NATH, GOLDBERG & MEYER Joshua Goldberg 112 South West Street Alexandria, VA 22314 FIRST NAMED INVENTOR Daisuke Negishi 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. 31885U 8158 EXAMINER DELCOTTO, GREGORYR ART UNIT PAPER NUMBER 1761 NOTIFICATION DATE DELIVERY MODE 10/18/2016 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): USPTO@nathlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAISUKE NEGISHI, MASAHIKO MATSUBARA, YUKI NISHIYAMA, KENSUKE ITAKURA, and KENJI MORIMURA1 Appeal2015-004187 Application 13/265,724 Technology Center 1700 Before BRADLEY R. GARRIS, N. WHITNEY WILSON, and DEBRA L. DENNETT, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner'sdecision rejecting claims 1-7. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. Appellants claim a solid mixture of solid fatty acid alkyl ester sulfonate metal salts consisting of (a) one such salt having an endothermic peak area at 50 to 130°C of less than 50% relative to the whole endothermic 1 LION Corporation is identified as the real party in interest. App. Br. 3. Appeal2015-004187 Application 13/265,724 peak area at 0 to 13 0°C as measured on a differential scanning calorimeter and (b) another such salt having an endothermic peak area at 50 to 130°C of 50% or more relative to the whole endothermic peak area (independent claims 1 and 2). A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, appears below. 1. A solid mixture of a solid fatty acid alkyl ester sulfonate metal salt consisting of: (a) a solid fatty acid alkyl ester sulfonate metal salt having an endothermic peak area at 50 to 130°C of less than 50% relative to the whole endothermic peak area at 0 to 130°C as measured on a differential scanning calorimeter, and (b) a solid fatty acid alkyl ester sulfonate metal salt having an endothermic peak area at 50 to 130°C of 50% or more relative to the whole endothermic peak area at 0 to 130°C as measured on a differential scanning calorimeter, with a ratio of (a) to (b) by mass of95/5 or less. The Examiner rejects claims 1-7 under 35 U.S.C. § 103(a) as unpatentable over Itakura et al. (US 2006/0160717 Al, published July 20, 2006) ("Itakura") with the Examiner (i) concluding that, in light of Itakura's teaching of methyl palmitate combined with methyl stearate as starting materials, it would have been obvious to formulate a mixture of fatty acid alkyl ester sulfonate metal salts in the claimed amounts and (ii) determining that the resulting salts would have the claimed endothermic peak values because these salts are chemically identical to, and are made with processes similar to those for making, the claimed salts (Final Action 4--5). The Examiner also rejects claims 1-7 under 35 U.S.C. § 102(a) as anticipated by Abe et al. (WO 2009/054406 Al, published Apr. 30, 2009 with US 8,501,972 B2, issued Aug. 6, 2013 relied on and cited to as an 2 Appeal2015-004187 Application 13/265,724 English language translation) ("Abe") based on the finding that Abe discloses a salt mixture chemically identical to, and made by processes similar to those for making, the claimed mixture whereby the former inherently would have the same endothermic peak values as the latter (id. at 5---6). Finally, the Examiner rejects claims 1-7 on the ground of obviousness-type double patenting as unpatentable over claims 1--4, 6, 9, 10, 15, and 16 of US Patent No. 8,501,972 B2 wherein the Examiner, as above, (i) concludes that it would have been obvious to formulate the metal salts of these US Patent claims as a mixture in Appellants' claimed amounts and (ii) determines that such formulated salts would have the claimed endothermic peak values because they are chemically identical to, and are made by processes similar to those for making, Appellants' claimed salts (id. at 8). Appellants do not present separate arguments specifically directed to dependent claims 3-7 (App. Br. 7-18). Therefore, these dependent claims will stand or fall with their parent independent claims of which claim l is representative. We will sustain the above rejections for the reasons expressed in the Final Action, the Answer, and below. The§ 103 Rejection Appellants do not dispute the Examiner's specific obviousness conclusion but rather argue "Itakura may disclose the stable solid (b) [i.e., having an endothermic peak area of 50% or more] and the metastable solid (a) [i.e., having an endothermic peak area of less than 50%], but does NOT disclose a solid mixture in which the metastable solid (a) and the stable solid (b) exist independently and separately" (App. Br. unnumbered 13). 3 Appeal2015-004187 Application 13/265,724 However, we agree with the Examiner that Itakura discloses a salt- making process similar to Appellants' disclosed process for making salts (a) and (b) of claim 1 (Ans. 8 (citing Itakura i-fi-1 68-88) ). For example, Itakura discloses a cooling step at paragraph 78 that corresponds to Appellants' cooling technique for creating a metastable solid salt (Spec. 5:20-24) and a subsequent aging step at paragraph 88 that corresponds to Appellants' technique for transforming a metastable solid salt into a stable solid salt (id. at 8: 1-5). These disclosures reasonably support the Examiner's determination that the salt mixtures suggested by Itakura would possess the claimed endothermic peak values (i.e., values corresponding to a metastable solid salt and a stable solid salt respectively). 2 As correctly explained by the Examiner, "[ w ]here the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established" (Ans. 8-9, citing In re Best, 562 F.2d 1252, 1255 (CCPA 1977)), and Appellants have not carried their resulting burden of showing that Itakura' s product does not consist of a salt mixture having the endothermic peak values defined by claim 1 (Ans. 9). In summary, Appellants fail to present arguments or evidence persuasively showing error in the Examiner's above determination that the salt mixtures suggested by Itakura necessarily and inherently would possess 2 Appellants discuss Itakura's disclosures in paragraphs 66-88 but do not explain with any reasonable specificity why the cooling and subsequent aging steps of Itakura would fail to produce the solid salt mixture and endothermic peak values required by claim 1 (Reply Br. 11-13). 4 Appeal2015-004187 Application 13/265,724 the endothermic peak values required by claim 1. We sustain, therefore, the § 103 rejection of claims 1-7 over Itakura. The§ 102 Rejection Appellants concede that "Abe produced metastable solids in the Examples (Table 1)" (App. Br. 10) but argue that Abe "did not produce a solid mixture of the metastable solids and the stable solids" (id.). More specifically, Appellants argue that "the metastable solids in Abe are merely starting materials" (Reply Br. 8) and that Abe "further describes keeping the MES flakes [i.e., metastable solids] at certain temperatures for certain periods of time" (id. (citing Abe, Examples, col. 13 to col. 16, line 20 and col. 17 to col. 20)). According to Appellants, because "the metastable solid is merely a starting material ... , Abe does NOT disclose a solid mixture in which the metastable component (a) and the stable component (b) exist independently and separately" (id. at 9). Similar to Itakura's previously discussed aging step, Abe's step of keeping metastable solids at certain temperatures for certain periods of time (see, e.g., Abe col. 16, 11. 12-20 and TABLE 2) corresponds to Appellants' technique for transforming metastable solids salts into stable solid salts (Spec. 8: 1-5). Appellants' argument that Abe does not disclose a mixture of metastable and stable solids implies that Abe transforms all the metastable solids into stable solids. However, Appellants do not explain why such a complete transformation necessarily would occur. In any event, the argument is contradicted by Abe's express teaching that "[w]hen the crystalline MES [i.e., fatty acid alkyl ester sulfonate metal salt (Abe col. 1, 11. 32-33)] exists together with the MES not in the crystalline state, ... the adhesion ascribable to the metastable solid MES can be reduced, thereby controlling the caking properties" (Abe col. 9, 11. 12-19). 5 Appeal2015-004187 Application 13/265,724 For the above-stated reasons, we agree with the Examiner that Abe inherently discloses salt mixtures having endothermic peak values as required by claim 1 and that Appellants have not carried their burden of showing otherwise (see, e.g., Ans. 6-7). See Best, 562 F.2d at 1255 ("Whether the rejection is based on 'inherency' under 35 U.S.C. § 102, on 'prima facie obviousness' under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO' s inability to manufacture products or to obtain and compare prior art products." (internal footnote and citations removed)). The§ 102 rejection of claims 1-7 over Abe is sustained. The Obviousness-type Double Patenting Rejection Once again, Appellants do not dispute the Examiner's specific obviousness conclusion (App. Br. 17-18). Instead, Appellants argue "[t]he above discussion with respect to Abe and the rejection under § 102 applies here" (id. at 17). For reasons analogous to those discussed earlier, we agree with the Examiner's determination that the solid salt mixtures suggested by the identified claims of the US Patent necessarily would possess the endothermic peak area values of claim 1. This determination is convincingly supported by the similarities of the processes for making the salts defined by the US Patent claims and defined by the appealed claims. Moreover, Appellants do not show error in the Examiner's determination. Accordingly, we also sustain the Examiner's rejection of claims 1-7 on the ground of obviousness-type double patenting. Conclusion The decision of the Examiner is affirmed. 6 Appeal2015-004187 Application 13/265,724 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 7 Copy with citationCopy as parenthetical citation