Ex Parte Wendel et al

Patent Trial and Appeal Board

Sep 14, 2016

12952711 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/952,711 11/23/2010
123223 7590 09/16/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Volker Wendel
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.
074008-1097-US (286146) 2202
EXAMINER
KANTAMNENI, SHOBHA
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
09/16/2016 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VOLKER WENDEL, MATTHIAS LAUBENDER,
JEAN-FRACOIS STUMBE, and BERND BRUCHMANN1
Appeal2015-002697
Application 12/952,711
Technology Center 1600
Before ERIC B. GRIMES, RICHARD J. SMITH,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to cosmetic
formulations comprising a highly-branched polyester, which have been
rejected as obvious and for obviousness-type double patenting. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
"An object of the present invention [was] to find rheology-modifying,
in particular thickening, in particular oil-thickening, polymers which are
1 Appellants identify the Real Party in Interest as BASF SE. (Br. 2.)
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Application 12/952,711
highly suitable for cosmetic applications and have good application
properties especially in the field of skin cosmetics." (Spec. 2, 11. 19-22.)
According to the Specification, "[t]he object is achieved by the [described]
substituted highly-branched polyesters." (Id. at 2, 1. 31.)
Claims 9, 10, 12, 18, 20-26, and 28 are on appeal. Claim 9 is
illustrative:
9. A skin cosmetic formulation which comprises a highly
branched polyester which is completely or partly
substituted by linear or branched C4- to C40-alkyl- or
alkenyl radicals, wherein the highly branched polyester is
a reaction product of:
A2: at least one aliphatic, cycloaliphatic, araliphatic,
or aromatic dicarboxylic acid, or derivatives
thereof;
B2: a dihydric, aliphatic, cycloaliphatic, araliphatic,
or aromatic alcohol, having 2 OH groups; and
Cx: at least one x-hydric aliphatic, cycloaliphatic,
araliphatic, or aromatic alcohol, having x OH
groups, wherein xis an integer greater than 2;
and wherein the ratio of reactive groups in the reaction
mixture is chosen so that a molar ratio of OH groups to
carboxyl groups, or derivatives thereof, is from 5: 1 to 1:5
and wherein the highly branched polyester is an oil
thickener.
(Br. 11 (Claims App'x).)
The claims stand rejected as follows:
Claims 9, 10, 12, 18, 20-26, and 28 under 35 U.S.C. § 103(a) over
Stumbe.2
2 Stumbe et al., US 7, 148,293 B2, issued Dec. 12, 2006 ("Stumbe").
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Claims 9, 10, 12, 18, 20-26, and 28 under 35 U.S.C. § 103(a) over
Stumbe and Seiler. 3
Claims 9, 12, 18, and 20-26 under the doctrine of obviousness-type
double patenting over claims 1--4 and 10-17 of the '905 Patent.4
OBVIOUSNESS
Issues
Has the Examiner established by a preponderance of the evidence that
claims 9, 10, 12, 18, 20-26, and 28 would have been obvious over (i)
Stumbe or (ii) Stumbe and Seiler.
Findings of Fact (FF)
FF 1. Stumbe teaches synthesis of hyperbranched polyesters by
combining dicarboxylic acids and polyols having at least three OH groups.
(Id. at col. 6, 11. 29-67; see also id. at Abstract.) According to Stumbe,
"examples of dicarboxylic acids (A) include saturated aliphatic dicarboxylic
acids such as malonic acid, succinic acid, glutaric acid, [and] adipic acid."
(Id. at col. 6, 11. 43--45.) Stumbe teaches "[t]he dicarboxylic acids [] may
also be substituted, for example, by one or more radicals such as alkyl
groups, in particular C 1-C 1 o-alkyl groups." (Id. at col. 6, 11. 49-51.) Stumbe
teaches "[a]s a second component for the synthesis, use is made of a
polyether polyol (B) having n OH groups, where n is a natural number
greater than or equal to 3." (Id. at col. 6, 11. 64---66.) Stumbe discloses
"compounds having at least 3 groups containing acidic H atoms include
3 Seiler et al., US 2008/0274149 Al, published Nov. 6, 2008 ("Seiler").
4 Stumbe et al., US 8,236,905 B2, issued Aug. 7, 2012 ("the '905 Patent").
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alcohols ... which have at least 3 OH groups, e.g. glycerol,
trimethylolethane, [and] trimethylolpropane." (Id. at col. 7, 11. 11-14.)
According to Stumbe "the components (A) and (B) are reacted in such an
amount that the molar ratio of the OH groups to the COOR groups is from
2:1to1:2." (Id. at col. 7, 11. 29-31.) Stumbe teaches working examples; for
instance, Example 7 combines, inter alia, adipic acid ( dicarboxylic acid),
polyglycerol (PG-3), and stearic acid, and discloses that following a reaction
time of 8 hours, a "wax-like, hyperbranched polyester was obtained." (Id. at
col. 14, 11. 16-30.)
FF 2. Stumbe also teaches "use can optionally also be made of diols
as chain extenders (V) ... [that] make it possible to lengthen the arms of
ABx units." (Id. at col. 7, 11. 43--45; see also id. col. 16, claim 10.) Stumbe
teaches the amount of such a chain extender "should in general not exceed
40 mol % of the amount of the polyether polyol used ... [and] the amount is
calculated so that the OH/COOR ratio mentioned above is still adhered to
when the OH groups of (V) are taken into account." (Id. at col. 7, 11. 51-56.)
Stumbe discloses "[p]reference [among diols] is given to ethylene glycol,
1,2-propanediol, and diethylene glycol, triethylene glycol, dipropylene
glycol and tripropylene glycol." (Id. at col. 8, 11. 8-10.)
FF 3. Seiler teaches "encapsulated, microparticulate active ingredient
formulations for the controlled release of active ingredients on skin ...
characterized in that enzymatically degradable organic hyperbranched
polymers containing ester groups are used as encapsulation materials."
(Seiler Abstract; see also id. at i-f 29.) In a working example, Seiler teaches
use of a "hyperbranched, fatty-acid-modified polyester ... , which was
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obtained by esterifying 50% of the hydroxy groups of the commercially
available hyperbranched polyester Boltom H30 ... with a mixture of stearic
acid and palmitic acid." (Id. at i-f 117.)
Analysis
1) Obviousness Over Stumbe
We start with the rejection of claims 9, 10, 12, 18, 20-26, and 28 over
Stumbe alone. We select claim 9 as representative.
The Examiner finds that Stumbe "discloses hyperbranched polyesters
substituted with C6-C20 alkyl such as stearyl groups which are reaction
products of dicarboxylic acids [limitation A2] ... polyols [limitation Cx] and
C6-C20 carboxylic acid." (Ans. 3.) The Examiner finds that Stumbe
teaches additional alcohols - diols/dihydric alcohols (limitation B2)- may
be added to the reaction mixture as chain extenders. (Id. at 4.) The
Examiner finds Stumbe teaches "[t]he molar ratio of OH groups to COOR
groups is 2: 1 to 1 :2." (Id. at 3--4.) Based on these teachings, the Examiner
reasons the skilled artisan would have predictably designed a substituted,
highly-branched polyester as a reaction product of A2, Cx, and B2 with the
molar ratio of OH groups to carboxyl groups as provided in claim 9. (Id. at
3--4, 7-9.)
Although Appellants argue the rejection of claim 18 over Stumbe
under one heading, and claims 9, 10, 12, 20-26, and 28 under another
heading (Br. 6-7), the arguments are redundant. We thus address the
arguments together.
Appellants argue "the Examiner has not accounted for at least claimed
component B2 of claim 9, a necessary component of [dependent] claim 18."
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(Id. at 6.) Appellants further contend the Examiner "implicitly
acknowledges that Stumbe fails to disclose claimed component B2" because,
earlier in prosecution, the Examiner did not reject claims that required
limitation B2 as anticipated by Stumbe. Because claim 9 has since been
amended to make limitation B2 a required instead of an optional additive,
Appellants argue claim 9 (and its dependent claims) should be allowed over
Stumbe. (Id. at 5---6.)
These arguments are unpersuasive. A prior art reference may disclose
every limitation of a claim, yet not anticipate that claim. One interpretation
of the earlier anticipation rejection - indeed, the interpretation consistent
with the present record - is that Stumbe discloses all the limitations of
claim 9, but does not arrange the limitations in a single embodiment
precisely as claimed. (Ans. 4 ("Stumbe et al. does not specifically teach the
employment of dihydric alcohol (diol) i.e[.] does not provide an
example.").)5 Hence, the Examiner rejected claim 9 as obvious over
Stumbe, rather than as anticipated. (Id. at 3--4; see also Adv. Act. 2
(maintaining rejections under§ 103(a) notwithstanding Appellants' after-
final amendment of claims 9 and 18.)
In any event, contrary to Appellants' contention, the Examiner finds
that Stumbe discloses limitation B2 of claim 9. (Id. at 4 ("Stumbe et al.
5 Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
("[U]nless a prior art reference discloses within the four comers of the
document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the claim, it
cannot be said to prove prior invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102.")
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teach[ es] that diols (instant B2) can be added as chain extenders.") We
agree; among other things, Stumbe teaches "use can optionally also be made
of diols as chain extenders (V) ... to lengthen the arms of ABx units." (FF
2.) In fact, the diols listed in Stumbe substantially overlap with the suitable
diols (B2) identified in the Specification. (Compare FF 2 with Spec. 5, 1. 31
through 6, 1. 11.) The Examiner thus concludes, and we agree, that "[i]t
would have been obvious ... to employ dihydric alcohol [limitation B2] as a
reactant with a reasonable expectation of success of obtaining hyper
branched polyester with desirable properties" based on Stumbe's express
suggestion to use such alcohols as chain extenders. (Ans. 4; FF 1-2.)
Having considered Appellants' arguments, we are not persuaded the
Examiner's fact-finding, reasoning, and conclusion are incorrect. We
conclude the Examiner established by a preponderance of the evidence that
claim 9 would have been obvious over Stumbe. The argument with respect
to claim 18 is redundant and, for the same reasons, unpersuasive. Claims 10,
12, 20-26, and 28 have not been argued separately and thus fall with claims
9 and 18. 37 C.F.R. § 41.37(c)(l)(iv).
2) Obviousness Over Stumbe and Seiler
We tum now to the rejection of claims 9, 10, 12, 18, 20-26, and 28
over Stumbe and Seiler, and again select claim 9 as representative.
The Examiner relies on the same findings discussed above with
respect to Stumbe' s teachings of substituted, hyperbranched polyesters
formed as reaction products of dicarboxylic acids, triols, and dihydric
alcohols, and with the particular molar ratio of OH to COOR groups. (Ans.
5---6.) The Examiner cites Seiler as teaching the use of hyperbranched
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polyester polymers, which the Examiner finds are similar to the polyesters
disclosed in Stumbe, to encapsulate active agents in skin-care/cosmetic
compositions. (Id. at 5, 11.) The Examiner reasons it "would have been
obvious ... to employ the hyperbranched hydrophobically modified
polyesters taught by Stumbe et al. to encapsulate a skin care cosmetic," such
as taught in Seiler. (Id. at 6.) We agree.
Appellants raise three arguments. First, Appellants repeat the
argument concerning the absence of limitation B2 in the applied prior art.
(Br. 8.) Second, Appellants argue "the claimed 'oil thickener' limitation
should be given patentable weight because in contrast to mere use, that
limitation sets a selection criteria for the polyester." (Id.) And third,
Appellants argue "the Examiner impermissibly relies on the doctrine of
inherency." (Id.) We address these arguments further below.
We reject Appellants' first argument for the reasons discussed above.
Stumbe discloses limitation B2 of claim 9, and Appellants have not provided
persuasive argument or evidence to the contrary. (FF 2.)
Appellants' second argument concerning giving patentable weight to
the phrase "wherein the highly branched polyester is an oil thickener" is also
unpersuasive. Appellants contend this phrase reflects more than a "mere
use" and "is not merely a property of the claimed polyester." (Br. 8.)
Appellants do not, however, persuasively explain what more it is.
Appellants contend the claimed polyester's "ability to act as an oil thickener
... [is] a means of differentiating the claimed polyesters from the universe
of other polyesters." (Id.) But how? Claim 9 is a composition claim, yet
Appellants do not state what, if any, structural difference is imparted by the
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term "oil thickener" that would distinguish the claimed composition from
the prior art. The claimed formulation's "ability to act as an oil thickener"
- as Appellants have described it - is more consistent with the "oil
thickener" being an intended use or property. (See id. at 8-9 (emphasis
added).) So, on the record before us, we agree with the Examiner that "oil
thickening capability is a property of the highly branched polyesters ... [that
is] inseparable from its compound." (Ans. 6.) In re Pearson, 494 F.2d
1399, 1402 (CCPA 1974) ("[T]erms [that] merely set forth the intended use
for, or a property inherent in, an otherwise old composition ... do not
differentiate the claimed composition from those known in the prior art.")
Appellants' final argument, that the Examiner is improperly relying
on inherency, is similarly unpersuasive. According to Appellants, "it cannot
properly be concluded that the Examiner's proposed combination of the
cited references inherently disclose the oil thickening ability of the pending
claims." (Br. 9.) We disagree. As discussed above, Stumbe discloses
formulations of the claimed alcohols and acids, and in the claimed molar
ratios, for a reaction mixture to form hyperbranched polyesters. (FF 1-2.)
The formulation of claim 9, thus, would have been obvious over the
teachings of Stumbe alone. The Examiner relies on Seiler only to show the
use of such polyesters in cosmetics would also have been obvious. (FF 3;
Ans. 11.) Under such circumstances, the Examiner appropriately shifted to
Appellants the burden to show that the formulation disclosed in Stumbe
would not inherently function as an oil thickener. (Ans. 6.) In re Best, 562
F.2d 1252, 1255 (CCPA 1977) ("Where ... the claimed and prior art
products are identical or substantially identical ... the PTO can require an
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applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. 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.") (citations and
footnote omitted).
For these reasons, we conclude the Examiner established by a
preponderance of the evidence that claim 9 would have been obvious over
Stumbe and Seiler. Claims 10, 12, 18, 20-26, and 28 have not been argued
separately and thus fall with claim 9.
DOUBLE PATENTING
The Examiner's statement of the rejection of claims 9, 12, and 18-26
under the judicially created doctrine of obviousness-type double patenting
over claims 1--4 and 10-17 of the '905 Patent may be found at pages 11-12
of the Office Action dated December 31, 2013.
Appellants ask only that this rejection "be held in abeyance until the
full scope of allowable subject matter is known in this application." (Br.
10.) Absent separate argument, we affirm.
SUMMARY
We affirm the rejection of claims 9, 10, 12, 18, 20-26, and 28 under
35 U.S.C. § 103(a) over (i) Stumbe and over (ii) Stumbe and Seiler.
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We affirm the rejection of claims 9, 12, and 18-26 under the doctrine
of obviousness-type double patenting over claims 1--4 and 10-17 of the '905
Patent.
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
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