Ex Parte Takeda et al

Patent Trial and Appeal Board

Jun 19, 2017

10590151 (P.T.A.B. Jun. 19, 2017)

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.
10/590,151 08/21/2006 Kyoichi Takeda 129093 5738
759025944
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
06/21/2017 EXAMINER
LOVE, TREVOR M
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
06/21/2017 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):
OfficeAction25944@oliff.com
j armstrong @ oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KYOICHI TAKEDA, YUKI KOKEGUCHI,
MARI YOSHIDA, and KIYOSHI MAENO
Appeal 2015-005842
Application 10/590,151
Technology Center 1600
Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
RICHARD J. SMITH, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134(a) involving claims to a
cosmetic. The Examiner rejected the claims as failing to comply with the
written description requirement and as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We reverse and enter a new ground of rejection.
Statement of the Case
Background
“The present invention relates to a cosmetic comprising a hydroxyl
compound obtained by reacting diglycerin with isostearic acid and dimer
acid” (Spec. ^ 1).
1 Appellants identify the Real Party in Interest as KOKYU
ALCOHOL KOGYO CO., LTD. (see App. Br. 1).
Appeal 2015-005842
Application 10/590,151
The Claims
Claims 1-3, 5, 8, and 10-13 are on appeal. Claim 1 is representative
and reads as follows:
1. A cosmetic comprising a hydroxyl compound obtained
by reacting a glycerin compound consisting essentially of di
glycerin with isostearic acid, and then reacting the obtained
ester compound with dimer acid, wherein
a molar ratio among the diglycerin of the glycerin
compound, isostearic acid, and dimer acid is 1.0 : 1.4 to 1.6 :
0.5 to 0.8;
a hydroxyl value of the hydroxyl compound is in a range
of from 30 to 80;
a viscosity at 60 degrees C of the hydroxyl compound is
in a range of from 2,500 to 10,000 mPa.s; and
a number average molecular weight of the hydroxyl
compound is in a range of from 2,000 to 7,000.
The Issues
A. The Examiner rejected claims 1-3, 5, 8, and 10-13 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement (Ans. 2-3).
B. The Examiner rejected claims 1-3, 5, 8, and 10-13 under 35
U.S.C. § 103(a) as obvious over Gruning2 (Ans. 3-7).
A. 35 U.S.C. § 112, first paragraph
The Examiner finds that “amended claims 1-3 and 11-13 recite that
the composition comprises a ‘glycerin compound’. Thus, the claim broadly
encompasses the presence of a compound which can comprise all forms of
2 Gruning et al., US 6,242,499 Bl, issued June 5, 2001.
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Application 10/590,151
glycerin, which was not previously encompassed by the claims or the
specification as originally filed” (Ans. 2).
Appellants contend:
Original claim 1 recited (emphasis added):
A cosmetic comprising a hydroxyl compound obtained
by reaction of a di- or a higher-valent alcohol with a
monovalent carboxylic acid and dimer acid,
characterized in that the hydroxyl compound is obtained
by reacting diglycerin with isostearic acid, and then
reacting the obtained ester compound with dimer acid,
and that a molar ration among diglycerin, isostearic acid,
and dimer acid is 1.0 : 1.4 to 1.6 : 0.5 to 0.8.
See also paragraphs (0001] and [0018] of the originally filed
specification. Those of ordinary skill in the art would
understand from the above disclosure that Appellants had
possession of the broad concept of a hydroxyl compound
obtained by reaction of a di- or a higher-valent alcohol with a
monovalent carboxylic acid and dimer acid, characterized in
that the hydroxyl compound is obtained by reacting diglycerin
with isostearic acid, which encompasses the presently claimed
subject matter.
(App. Br. 5).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that replacement of “diglycerin” in
claims 1 and 11 with “a glycerin compound consisting essentially of
diglycerin” represents new matter?
Findings of Fact
1. The Specification teaches the “present invention relates to a
cosmetic comprising a hydroxyl compound obtained by reacting diglycerin
with isostearic acid and dimer acid” (Spec. ^] 1).
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Application 10/590,151
2. The Specification teaches:
Thus, the present invention is (1) a cosmetic comprising a
hydroxyl compound obtained by reaction of a di- or higher-
valent alcohol with a monovalent carboxylic acid and dimer
acid, characterized in that the hydroxyl compound is obtained
by reacting diglycerin with isostearic acid, and then reacting the
obtained ester compound with dimer acid, and that a molar ratio
among diglycerin, isostearic acid, and dimer acid is 1.0 : 1.4 to
1.6 : 0.5 to 0.8.
(Spec. If 18).
3. The Specification teaches “cosmetics comprising a mixed ester
of aliphatic acids obtained by esterification of polyglycerin” (Spec. ^ 14).
4. The Specification teaches “diglycerin and isostearic acid are
selected from various known raw materials for ester compounds and reacted
in the predetermined order and in the predetermined amounts to successfully
obtain the hydroxyl compound with an appropriate hydroxyl value” (Spec.
120).
5. Appellants’ Response filed Feb. 15, 2011, includes gas
chromatography charts, with chart 1 showing that “Diglycerin 801”
comprises 94.63% diglycerin, 1.97% triglycerin, 0.69% glycerin, as well as
other minor components. Chart 2 shows that “Solvey Diglycerol” comprises
93.28% diglycerin, 2.41 % triglycerin, 0.17% glycerin, as well as other minor
components (see Resp. 2/15/2011, Charts 1 and 2).
Principles of Law
“[I]t is the specification itself that must demonstrate possession. And
while the description requirement does not demand any particular form of
disclosure ... or that the specification recite the claimed invention in haec
verba, a description that merely renders the invention obvious does not
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Appeal 2015-005842
Application 10/590,151
satisfy the requirement.” Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1352 (Fed. Cir. 2010).
Analysis
As we will discuss further below, we find the claim phrase “glycerin
compound consisting essentially of diglycerin” indefinite. With that in
mind, we do find that the Specification provides substantive descriptive
support for the use of diglycerin (FF 1, 2, 4) and even discusses polyglycerin
(FF 3). Moreover, Appellants cite to charts that demonstrate the commercial
compositions identified as diglycerin in the Specification itself (see Spec.
7:13-14) may comprise other components as contaminants (FF 5).
We therefore agree with Appellants that the Specification provides
support for glycerin compounds that comprise diglycerin, where the
“consisting essentially of’ language is read, consistent with the Examiner’s
position, as open and “comprising” diglycerin (see Ans. 7). Consequently,
there is descriptive support for the use of diglycerin compositions, including
those commercially available that comprise contaminants, in the reaction
used to produce the cosmetic recited in claim 1.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that replacement of “diglycerin” in claims 1 and 11 with “a glycerin
compound consisting essentially of diglycerin” represents new matter.
B. 35 U.S.C. § 103(a) over Gruning
The Examiner finds:
Gruning teaches a polyglycerol ester that is prepared in two
stages. The polyglycerol, which includes diglycerol
(diglycerin), is esterified using fatty acid, and then isostearic
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Application 10/590,151
acid is mixed with the polyglycerol. The composition is heated
to 250°C for three hours. The reaction mixture is then cooled to
180°C and is mixed with a dimer acid. The composition is then
heated again to 250°C for three hours. An amber-colored
viscous product is obtained which is characterized by a
hydroxyl number of 68 and an acid number of 1.5.
(Ans. 3—4).
The Examiner acknowledges that Gruning “does not directly teach the
viscosity of the composition . . . the molar ratios between the components
. . . [or] the molecular weight of the composition” (Ans. 4).
The Examiner finds “the viscosity of the composition of Gruning
would have been within the claimed ranges since the composition comprises
the same components, is reacted in the same way, and has the same hydroxyl
and acid values” (Ans. 5). The Examiner finds it obvious “to vary the molar
ratio of the components in order to arrive at a desirable amount of
esterification. Furthermore, the molecular weight of the composition
depends on the intended use and is readily varied” {Id.).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Gruning renders the composition of
claim 1 obvious?
Findings of Fact
6. Gruning teaches:
The polyglycerol ester can be prepared in two stages
which proceed in a manner known per se. Firstly, poly glycerol
was esterified using fatty acid. 264 g (0.93 mol) of isostearic
acid was mixed with 100 g of technical-grade polyglycerol,
distinguished by a hydroxyl number of 1180, and heated to
250° C. while nitrogen was passed through the mixture. After
reaction for three hours at this temperature, the acid number
was 6.4. The reaction mixture was then cooled to 180° C., and
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Application 10/590,151
121 g of dimer acid (Pripol 1025 from Unichema, comprising
approximately 5% of monocarboxylic acid, approximately 75%
of difunctional and approximately 20% of trifunctional
carboxylic acid) was added to the reaction mixture. The batch
was then heated to 250° C. again and maintained at this
temperature for three hours.
An amber-colored, viscous product was obtained which
was characterized by a hydroxyl number of 68 and an acid
number of 1.5.
(Gruning 4:45-62).
7. Gruning teaches:
Suitable polyglycerols are in particular those having a mean
degree of condensation of >2, preferably from 3 to 4. These are
technical-grade polyglycerol mixtures which are obtained, for
example, by alkali-catalyzed condensation of glycerol at
elevated temperatures and from which fractions with the desired
degree of condensation can be obtained if desired by distillation
methods. Also suitable are polyglycerols obtained by other
methods, e.g. from epichlorohydrin or glycidol.
(Gruning 3:16-24).
8. Gruning teaches:
Particularly suitable polyglycerols have the following
oligomer distribution:
Glycerol 0 to 30% by weight
Diglycerol 15 to 40% by weight
Triglycerol 10 to 55% by weight
Tetraglycerol 2 to 25% by weight
Pentaglycerol and higher components 0 to 15% by
weight.
(Gruning 3:25-31).
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Appeal 2015-005842
Application 10/590,151
9. The Sasaki Declaration3 teaches reactions using various
glycerin compositions in Table 3, reproduced below:
Average Vfacqsitv, Reaovsl with ~W»tpy attti
Cooiposittos
Ntrraber
owteet&U'
VSwesityat
$0*C;
[ksFoa]
Removed with
Water
j CL>ss
HAIEliCEWT
Asecrdittg
Prejjar&tJoa
4335 2940 “strong reratain"
by aB of Use five
paae3ist5
19
Lrf>t atKWfl?
Comparative
Example of Graaiag
2?27 909
by aJi of th£ fivs
piffidists
7]
ISULANGfr P1>I
CotBparatfra
Co&tf&erE&aj
Exasrate of Gruaiae
.2856 900 | Mtn> itmafn"
by all of the five
poasfssts
Table 3 shows a variety of parameters, in particular comparing viscosity of
the inventive composition with two examples of Gruning (see Sasaki Deck
6, Table 3).
Principles of Law
“Inherency . . . may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” MEHL/Biophile Int’l. Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999)(citation omitted).
Analysis
Appellants contend “the Examiner has not particularly detailed how
the multiple proposed modifications (i.e., molar ratio, molecular weight, and
viscosity) of Gruning based on an apparent reliance on case law make out a
prima facie case of obviousness as to any of the rejected claims” (App. Br.
14).
3 Declaration of Naoki Sasaki and Mari Yoshida, dated July 30, 2010.
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Application 10/590,151
We agree with Appellants that the Examiner has failed to establish
that the claimed viscosity range of 2,500 to 10,000 mPa.s at 60 degrees C of
the resultant hydroxyl compound would inherently and necessarily resulted
in optimizing the other parameters disclosed by Gruning. While we agree
with the Examiner that Gruning suggests routine optimization of other
parameters,4 the Examiner does not identify a teaching in Gruning
suggesting optimization of the viscosity. Nor does the Examiner provide
evidence demonstrating that optimization of the molar ratio, hydroxyl value,
and number average molecular weight would necessarily result in the
claimed viscosity range. Finally, the Examiner provides no reason to use
diglycerin in amounts greater than the 40% maximum as disclosed by
Gruning (FF 8).
Indeed, the evidence in the Sasaki Declaration demonstrates that two
examples using Gruning’s process did not result in the claimed viscosity,
unlike the inventive example based on the Specification (FF 9).
Consequently, the balance of the evidence supports the position that even
after optimization of the other parameters in Gruning, the viscosity would
not necessarily fall within the claimed range.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Gruning renders the composition of claim 1 obvious.
4 We also agree with the Examiner’s approach to interpreting the phrase
“consisting essentially of’ as equivalent to “comprising”, consistent with
MPEP § 2111.03, but note that in this case, because Gruning does not
reasonably suggest compositions containing more than 40% diglycerin by
weight (FF 8), the difference in diglycerin amounts also undercuts the
inherency position.
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Application 10/590,151
New Ground of Rejection
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new ground of rejection.
Claims 1-3, 5, 8, and 10-13 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as the invention.
Claims 1 and 11, the sole independent claims, both recite “a glycerin
compound consisting essentially of diglycerin”. However, the term
“compound” is defined5 as: “A substance formed by the combination of
elements in fixed proportions. The formation of a compound involves a
chemical reaction; i.e. there is a change in the configuration of the valence
electrons of the atoms. Compounds, unlike mixtures, cannot be separated by
physical means.” Therefore, a compound cannot fall within the meaning of
“consisting essentially of’ because that transitional phrase “limits the scope
of a claim to the specified materials or steps ‘and those that do not materially
affect the basic and novel characteristic(s)’ of the claimed invention.”
MPEP § 2111.03; In reHerz, 537 F.2d 549, 551-52 (CCPA 1976). Thus,
the transitional phrase “consisting essentially of’ expressly contemplates the
inclusion of additional materials, but the term “compound” expressly
excludes additional materials because a compound is not a mixture, creating
a contradiction.
5 Rennie, R., A Dictionary of Chemistry, 7th Ed. (2016). See
http://www.oxfordreference.com/view/10.1093/acref/9780198722823.00E0
001/acref-9780198722823-e-1024?rskey=yuiwmP&result=4.
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Application 10/590,151
Therefore, it is unclear if “a glycerin compound consisting essentially
of diglycerin” is limited to 100% pure diglycerin or whether, consistent with
the logic of the Examiner’s rejection over Gruning, the phrase may
encompass as little as 40% diglycerin and also include amounts of other
glycerin compounds as specified by Gruning (FF 8). Therefore, we
conclude that claims 1 and 13, and their dependent claims, are indefinite
because it is unclear what amounts of diglycerin are required by the phrase
“a glycerin compound consisting essentially of diglycerin.”
We note, to simplify any further prosecution that may occur following
this decision, that deletion of the phrase “a glycerin compound consisting
essentially of’ from claims 1 and 13, leaving only the term “diglycerin”,
would reasonably result in a claim limited to diglycerin or commercially
available diglycerin materials such as those found and disclosed by the
Specification (see Spec. 7 ^ 23). As with any commercial product, these
products contain impurities but the presence of impurities does not render
the term “diglycerin” indefinite, nor does the presence of these impurities
limit a claim from encompassing compositions that would reasonably be
interpreted as “diglycerin” by the person of ordinary skill in the art for either
prior art purposes by an Examiner or for infringement purposes for an issued
claim. See Conoco, Inc. v. Energy & Environmental Intern., L.C., 460 F.3d
1349, 1360 (Fed. Cir. 2006) (“Similarly, impurities that a person of ordinary
skill in the relevant art would ordinarily associate with a component on the
‘consisting of list do not exclude the accused product or process from
infringement.”)
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SUMMARY
In summary, we reverse the rejection of claims 1-3, 5, 8, and
10-13 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement.
We reverse the rejection of claims 1-3, 5, 8, and 10-13 under 35
U.S.C. § 103(a) as obvious over Gruning.
We reject claims 1-3, 5, 8, and 10-13 under 35 U.S.C. § 112, second
paragraph.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the
appellant, within two months from the date of the decision,
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
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Application 10/590,151
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED; 37 C.F.R, § 41.50(b)
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