Ex Parte Rieth et al

Patent Trial and Appeal Board

Jun 8, 2016

13104823 (P.T.A.B. Jun. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/104,823 05/10/2011 Lee Richard RIETH
11924 7590 06/10/2016
Cantor Colburn LLP-Segetis
20 Church Street
22nd Floor
Hartford, CT 06103
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.
SGT0029US2 2010
EXAMINER
BASQUILL, SEAN M
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
06/10/2016 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):
jamie_ackley@segetis.com
USPTOPatentMail@cantorcolburn.com
segetis _ docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEE RICHARD RIETH,
DORIE J. YONTZ, and NICHOLAS MORANTE
Appeal2014-004092
Application 13/104,823 1
Technology Center 1600
Before ULRIKE W. JENKS, RYAN H. FLAX, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to dispersions and compositions containing an alkyl ketal
ester. Claims 1-25 are on appeal as rejected under 35 U.S.C. § 103(a) and
under the doctrine of nonstatutory obviousness-type double patenting. We
have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 The Real Party in Interest is Segetis. Br. 2.
Appeal2014-004092
Application 13/104,823
STATEMENT OF THE CASE
The appealed claims can be found in the Claims Appendix of the
Appeal Brief. Claims 1 and 17 are independent claims. Claim 1 is
representative and reads as follows:
1. A dispersion comprising
a liquid or semi-solid continuous phase,
a dispersed solid phase comprising a plurality of orgamc,
inorganic or inorganic-organic particles, and
an alkyl ketal ester having the structure
R1
/
Hf~ifc~O
R2 0 a
'tcH-;fb I
wherein
a is 0 or an integer of 1 to 12;
bis 0 or 1;
R2 is a divalent C1-s group optionally substituted with up
to 5 hydroxyl groups; and
R1 is Ci-6 alkyl, and
wherein at least a portion of the alkyl ketal ester is present in the
continuous phase, on a surface of at least some of the dispersed
particles, or a combination thereof
Br. 15 (Claims Appendix).
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Appeal2014-004092
Application 13/104,823
The following grounds of rejection are on appeal:
A. Claims 1-12, 16-21, and 23-25 under 35 U.S.C. § 103(a) as
obvious over Baker,2 Mercado, 3 and Selifonov. 4 Final Action 2.
B. Claims 1-7, 10, 13, 14, 17-21, and 23-25 under 35 U.S.C.
§ 103(a) as obvious over Busch5 and Selifonov. Final Action 8.
C. Claims 1-5, 7, 10-15, and 17-22 under 35 U.S.C. § 103(a) as
obvious over Qu6 and Selifonov. Final Action 11.
D. Claims 1-22 provisionally rejected under the doctrine of
nonstatutory obviousness-type double patenting over claims 6, 13-15, and
18-35 of Application Serial No. 13/104,5707 in view of Baker, Busch, and
Qu. Final Action 14.
2 U.S. Patent 5,093,111 to Baker et al. (issued Mar. 3, 1992) (hereinafter
"Baker").
3 U.S. Patent 5,013,543 to Mercado et al. (issued May 7, 1991) (hereinafter
"Mercado").
4 International Patent Application Pub. No. WO 2007/062118 A2 (published
May 31, 2007) (hereinafter "Selifonov").
5 U.S. Patent US 6,627,181 Bl to Busch, Jr. et al. (issued Sep. 30, 2003)
(hereinafter "Busch").
6 U.S. Patent US 7,094,395 Bl to Qu et al. (issued Aug. 22, 2006)
(hereinafter "Qu").
7 U.S. Patent Application No. 13/104,570 was abandoned Nov. 10, 2014, for
Applicant's failure to timely reply to an Office letter.
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Appeal2014-004092
Application 13/104,823
DISCUSSION
The rejection of the claims under 35 USC§ 103(a) as obvious over
Baker and Mercado and/or Busch and/or Qu, each in view of Selifonov.
We address the obviousness rejections together because each relies on
the Selifonov reference for its disclosure of "the alkyl ketal esters as set forth
in the instant claims." See Final Action 3--4, 9, 12.
The Examiner determined that Baker (and Mercado), Busch, and Qu
failed to teach or suggest the inclusion of alkyl ketal esters as recited in the
appealed claims and determined that the alkyl ketal esters disclosed by
Selifonov could have been combined with the compositions disclosed by
these references because they include a plasticizer and Selifonov's alkyl
ketal esters may also be a plasticizer. See, e.g., Final Action 4.
Appellants acknowledge Baker's, Busch's, and Qu's lacking
disclosure and argue that there would have been no motivation to combine
the plasticizer of Selifonov with the compositions of these other references
because there is no indication in any of the references, or otherwise, that
Selifonov's plasticizer is suitable for such combination. See, e.g., Br. 7-8.
Appellants' argument relies on Selifonov's disclosure that "[t]he glycerol
ketal levulinic adducts of formula (3), (4), and (5a) are useful as plasticizer
compounds for PVC, poly(3-hydroxyalkanoates), poly(lactate) and various
polysaccharide polymers." Selifonov 17. Appellants' argument is
persuasive.
Selifonov is specific in its disclosure with regard to what materials its
alkyl ketal esters are suitable to serve as plasticizers and those materials are
listed at, inter alia, pages 16-17 of the reference. Nowhere does Selifonov
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Appeal2014-004092
Application 13/104,823
indicate that its alkyl ketal esters can be plasticizers for any materials other
than PVC, PHA, PLA, and polysaccharides. Baker, Busch, and Qu do not
use plasticizers for such materials.
Selifonov also discloses, "[ t ]he glycerol ketal derivatives of levulinic
esters of formula (3), (4), (5), and 5(a), as well as the separated individual
cis- and trans- stereo isomers (3 a), (3b ), ( 4a ), and ( 4b ), are excellent solvents
for a variety of both hydrophobic compounds (e.g., fats, oils, greases, waxes,
varnishes) and many hydrophilic compounds" and that "[ t ]hese compounds
can be used alone or in various combinations with other surfactants,
solvents, glycols, polyols, fragrances, colors, biologically-active and inert
additives, enzymes, and wetting agents that constitute the base compositions
of preparations used in ... cosmetic and personal care products." Selifonov
15 and 28. The Examiner argues that this disclosure shows Selifonov's
compounds' usefulness as a plasticizer is actually much broader - and is
thus not limited to use with PVC, PHA, PLA, and polysaccharides. We find
no evidence of record to support this position.
The Examiner points to Doolittle8 as evidence that "[a] skilled artisan
would understand that plasticizers act to increase the plasticity or fluidity of
a material into which they have been incorporated, by in essence acting as
solvents for the component being plasticized," and so argues that the skilled
artisan would recognize the Selifonov's compounds acting as solvents would
be useful in the compositions of Baker, Busch, and/or Qu as plasticizers.
8 Arthur K. Doolittle, Application of a Mechanistic Theory of Solvent Action
to Plasticizers and Plastization, 2 J. POLYMER SCI. 121-141 (1947)
(hereinafter "Doolittle").
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Appeal2014-004092
Application 13/104,823
While Doolittle does explain the relationship between solvents and
plasticizers, it also indicates that there are differences between the two and
describes plasticizers as a special sub-set of solvents. See Doolittle, e.g.,
135-136. Therefore, there is no evidence of record that indicates one of
ordinary skill in the art would have looked to Selifonov's solvents for an
alternate plasticizer to use for the waxes or film formers of the other
references.
For the above reasons, we find that the evidence of record does not
provide adequate reason to combine the disclosure of Selifonov with the
other cited prior art and the obviousness rejections must be reversed.
Additionally, Appellants argue that claim 24 recites a two-step,
sequential method that "comprises [ 1] wetting the plurality of solid particles
with the alkyl ketal ester; then [2] combining the wetted particles with the
continuous phase," and that such a method, in the recited sequence is not
taught or suggested by any combination of the cited references. Br. 19
(Claims Appx.); Br. 11, 12. The Examiner fails to make a convincing
argument otherwise. See Final Action 7, 10. Therefore, we are persuaded
by Appellants' argument on this point and find that the obviousness
rejections of claim 24 over the cited prior art must be reversed for this
reason as well.
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Application 13/104,823
The provisional rejection of claims 1-22 under the doctrine of
nonstatutory obviousness-type double patenting over claims 6, 13-15, and
18-35 of Application Serial No. 131104,570 in view of Baker, Busch, and Qu.
Application Serial No. 13/104,570 is abandoned and, so, the double
patenting rejection is moot. For this reason, the respective rejection is
dismissed.
SUMMARY
The rejection of claims 1-12, 16-21, and 23-25 under 35 U.S.C.
§ 103(a) as obvious over Baker, Mercado, and Selifonov is reversed.
The rejection of claims 1-7, 10, 13, 14, 17-21, and 23-25 under
35 U.S.C. § 103(a) as obvious over Busch and Selifonov is reversed.
The rejection of claims 1-5, 7, 10-15, and 17-22 under 35 U.S.C.
§ 103(a) as obvious over Qu and Selifonov is reversed.
The provisional rejection of claims 1-22 under the doctrine of
nonstatutory obviousness-type double patenting over claims 6, 13-15, and
18-35 of Application Serial No. 13/104,570 in view of Baker, Busch, and Qu
is dismissed.
REVERSED
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