LONZA LTD

Patent Trials and Appeals Board

May 21, 2021

2020003039 (P.T.A.B. May. 21, 2021)

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.
14/898,810 12/16/2015 Volker Ranft LZAS89PCTUS(LP2333USPC00) 5291
22827 7590 05/21/2021
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
LAZARO, DOMINIC
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
05/21/2021 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):
USDOCKETING@DORITY-MANNING.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte VOLKER RANFT

Appeal 2020-003039
Application 14/898,810
Technology Center 1600
Before FRANCISCO C. PRATS, ULRIKE W. JENKS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8, 13–16, and 22–26. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Lonza, Ltd., the assignee of record, as the
real party in interest. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to preservative compositions useful
in cosmetics and personal care products. See Spec. 1–3.
Claim 1 is representative and reads as follows:
1. A preservative composition comprising
(a) from 1 to 20 wt.% of sorbic acid or a salt thereof;
(b) from 10 to 89 wt.% of benzyl alcohol;
(c) from 10 to 89 wt.% of a mixture of
(i) 1,2-propanediol, 1,3-propanediol, or a
mixture thereof; and
(ii) 1,4-butanediol, 1,3-butanediol, or a mixture
thereof
in a weight ratio of (i) to (ii) of 1:4 to 4:1,
based on the total weight of (a), (b) and (c).
Appeal Br. 25.
REFERENCE(S)
The prior art relied upon by the Examiner is:
Name Reference Date
Henry A. Dymsza US 3,904,774 Sept. 9, 1975
Heinz Eggensperger et al.
(“Eggensperger”)
US 5,670,160 Sept. 23, 1997
Melissa Joerger et al.
(“Joerger”)
US 2008/0176957 A1 July 24, 2008
Wolfgang Beilfuss et al.
(“Beilfuss”)
EP 1 178 771 B1 Mar. 10, 2004
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REJECTION(S)
The following rejections are before us for review:
(1) Claims 1–8, 13–16, and 23–26, under 35 U.S.C. § 1032 as being
unpatentable over Eggensperger, Joerger, and Dymsza (Final Act. 3–16
(entered May 15, 2019)); and
(2) Claims 1–8, 13–16, and 22–24, under 35 U.S.C. § 103 as being
unpatentable over Beilfuss, Joerger, and Dymsza (Final Act. 24–34).
OBVIOUSNESS—
EGGENSPERGER, JOERGER, AND DYMSZA
The Examiner’s Rejection
In rejecting claims 1–8, 13–16, and 23–26 over Eggensperger,
Joerger, and Dymsza, the Examiner cited broader teachings in Eggensperger
as disclosing that it was useful to include sorbic acid and benzyl alcohol, at
concentration ranges overlapping those recited in Appellant’s claims, in
preservative compositions for use in personal care and cosmetic products.
Final Act. 4–7.
Based on Eggensperger’s broader teachings, the Examiner reasoned
that it would have been obvious to substitute sorbic acid for alternative acids
used in Eggensperger’s Example 1, to arrive at a composition having
concentrations of sorbic acid and benzyl alcohol encompassed by
Appellant’s claims. See Final Act. 7. In particular, the Examiner reasoned
that a skilled artisan would have had motivation and a reasonable
expectation of success in making the asserted substitution because

2 The Final Action states that “[t]he present application, filed on or after
March 16, 2013, is being examined under the first inventor to file provisions
of the AIA.” Final Act. 2.
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“Eggensperger categorically discloses benzoic acid, sorbic acid and
dehydro[a]cetic acid among equivalent organic acids for Eggensperger’s ‘a)’
component.” Id.
The Examiner found that Eggensperger’s compositions differ from the
compositions of Appellant’s claims in that Eggensperger does not include in
its compositions a propanediol/butanediol combination encompassed by
Appellant’s claims. See Final Act. 7–8. The Examiner noted, however, that
Eggensperger teaches that additional solvents, such as propylene glycol, are
useful in its preservative compositions. Id. at 7 (citing Eggensperger 5:1–6).
In addition, the Examiner determined, Joerger discloses that
propanediol/butanediol combinations encompassed by Appellant’s claims
are useful as solvents in preservative compositions, at ratios and
concentration ranges encompassed by Appellant’s claims. See Final Act. 8–
10.
Based on the combined teachings of Eggensperger and Joerger, the
Examiner concluded that it would have been obvious to include a
propanediol/butanediol combination as taught by Joerger in Eggensperger’s
preservative compositions. See Final Act. 10. In particular, the Examiner
reasoned that a skilled artisan would have had motivation and a reasonable
expectation of success in including Joerger’s propanediol/butanediol
combinations in Eggensperger’s preservative compositions because “both
Eggensperger and Joerger are concerned with similar problems in the art,
namely the preparation of preservative compositions for cosmetics, personal
care, and pharmaceuticals.” Id.
Lastly, the Examiner cited Dymsza as evidence that, when preparing
preservative compositions containing propanediol/butanediol combinations,
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a range of propanediol/butanediol ratios overlapping the ratio ranges recited
in Appellant’s claims were known to be useful. See Final Act. 14–15.
Analysis—Claim 1
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant in
response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (holding that requiring an applicant to
identify “reversible error” in an examiner’s rejection is consistent with long
standing Board practice).
Having carefully considered all of the evidence and argument
presented by Appellant and the Examiner, we are not persuaded that
Appellant has shown reversible error in the Examiner’s conclusion of
obviousness as to claim 1 in view of Eggensperger, Joerger, and Dymsza.
To the extent Appellant argues that none of Eggensperger’s working
examples includes both sorbic acid and benzyl alcohol (see Appeal Br. 10;
Reply Br. 2), we agree with Appellant. See Eggensperger 5:7–15:20
(especially Tables I–IX and Examples 1–14). It is extremely well settled,
however, that “[a]ll the disclosures in a reference must be evaluated,
including nonpreferred embodiments, and a reference is not limited to the
disclosure of specific working examples.” In re Mills, 470 F.2d 649, 651
(CCPA 1972) (citations omitted).
In the present case, Appellant does not persuade us that the Examiner
erred in determining that, when the broader teachings in Eggensperger are
viewed alongside the reference’s examples, a skilled artisan had good reason
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for including both sorbic acid and benzyl alcohol in a preservative
composition, at concentrations encompassed by Appellant’s claim 1. See
Appeal Br. 11–12; Reply Br. 2–3.
Eggensperger discloses a preservative for compositions having an
aqueous phase, the preservative having a first component (a) “5 to 60% by
weight of an organic acid selected from the group consisting of benzoic acid,
4-hydroxybenzoic acid, salicylic acid, formic acid, acetic acid, propionic
acid, sorbic acid, undecylenic acid and dehydracetic acid or their mixtures
including their sodium, potassium, calcium, magnesium, ammonium and
ethanolamine salts,” and a second component (b) “10 to 95% by weight of
alcohols of the general formula[]I,” which undisputedly encompasses benzyl
alcohol. Eggensperger, Abstract (emphasis added).
As the Examiner noted, Eggensperger discloses using benzyl alcohol
as the alcohol of formula I in multiple exemplified compositions. See
Eggensperger 11:45–12:65, 13:45–14:8 (Eggensperger’s Examples 1–3 and
7–9 including benzyl alcohol as the alcohol of formula I).
Given Eggensperger’s express teachings that sorbic acid and benzyl
alcohol are useful in its preservatives, Appellant does not persuade us that
Eggensperger failed to provide sufficient motivation for including both of
those ingredients in its compositions. The fact that those ingredients are in
lists that include a number of other ingredients does not negate
Eggensperger’s express teaching that sorbic acid and benzyl alcohol are
useful in its preservatives. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (species claim held obvious where it recited one of
1200 possible combinations of embodiments disclosed by reference and
where reference suggested no preference for claimed embodiment); see also
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id. at 807 (That a reference “discloses a multitude of effective combinations
does not render any particular formulation less obvious.”). Indeed, the use
of benzyl alcohol in multiple examples would have led the skilled artisan to
benzyl alcohol in particular.
Moreover, the 5 to 60% by weight of sorbic acid expressly taught by
Eggensperger as being useful in its preservative compositions significantly
overlaps the 1 to 20% sorbic acid recited in Appellant’s claim 1. And,
Eggensperger’s express teaching of including in its compositions 10 to 95%
by weight of alcohols of formula I, which undisputedly encompasses benzyl
alcohol, significantly overlaps the 10 to 89% benzyl alcohol recited in
Appellant’s claim 1. We therefore agree with the Examiner that the
concentrations of sorbic acid and benzyl alcohol recited in Appellant’s claim
1 would have been prima facie obvious. See In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003) (“A prima facie case of obviousness typically exists
when the ranges of a claimed composition overlap the ranges disclosed in
the prior art.”).
Appellant also does not persuade us that the Examiner erred in
determining that a skilled artisan had good reason to include a
propanediol/butanediol mixture encompassed by Appellant’s claim 1, such
as that of Joerger discussed below, in Eggensperger’s preservative
compositions. See Appeal Br. 11–14; Reply Br. 3–5. We acknowledge
Eggensperger’s teaching, cited by Appellant, that omission of supplemental
solvents in certain examples yielded an improved result: “In the
preparations of Examples 4–9, an additional solvent was largely dispensed
with. The higher content of the alcohol components was noticeable by an
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enhanced action in comparison with the preservative of Example 1.”
Eggensperger 13:5–8.
In the immediately preceding sentence, however, Eggensperger
expressly discloses that compositions containing supplemental solvents, in
the form of glycols, are useful as preservatives: “In general, 0.2–0.3% of
these preparations, based on the product to be preserved, is adequate for
sufficiently protecting for example cosmetic products against microbial
degradation.” Eggensperger 13:1–4. Moreover, Eggensperger includes
broader teachings stating that inclusion of supplemental solvents, such as
glycols, is advantageous in certain instances:
[I]t may be advantageous to replace one part of the alcohol
components by a further solvent, for example for increasing
stability to low temperatures on storage or on transport.
Suitable solvents beside water are glycols such as propylene
glycol, dipropylene glycol, triethylene glycol or glycol ethers
such as butyl diglycol.
Eggensperger 5:1–6.
Given Eggensperger’s express teachings regarding the
advantageousness of including additional solvents in its compositions,
Appellant does not persuade us that only impermissible hindsight would
have led a skilled artisan to add supplemental solvents to Eggensperger’s
compositions. See Appeal Br. 12. For the same reasons, we are not
persuaded that “Eggensperger cautions against even one additional solvent.”
Reply Br. 3. See In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (“It is
impermissible within the framework of section 103 to pick and choose from
any one reference only so much of it as will support a given position, to the
exclusion of other parts necessary to the full appreciation of what such
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reference fairly suggests to one of ordinary skill in the art.”) (internal
quotations omitted).
It is extremely well settled moreover, “[n]on-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. . . . [The reference] must
be read, not in isolation, but for what it fairly teaches in combination with
the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986). In the present case, we agree with the Examiner that the combined
teachings of Eggensperger, Joerger, and Dymsza would have suggested
including a propanediol/butanediol mixture encompassed by Appellant’s
claim 1 in Eggensperger’s preservative compositions.
Joerger discloses “preservative compositions comprising
1,3-propanediol, wherein the 1,3-propanediol in said composition has a bio-
based carbon content of about 1% to 100%.” Joerger, Abstract.
Joerger explains that 1,3-propanediol is useful in glycol-containing
preservatives used in applications, such as cosmetics, because the
1,3-propanediol “act[s] as a potentiator to reduce the amount of preservative
required in the formulations and thus, reduce[s] the corresponding amount of
the preservative’s negative effects.” Joerger ¶ 9.
Joerger discloses that its bio-based 1,3-propanediol, prepared by
fermentation of plant sugars (Joerger ¶ 29), is advantageous as compared to
1,3-propanediol obtained by other methods because it has “less
environmental impact than similar compositions comprising petroleum
based glycols” (id. ¶ 84) and because “risk of introducing impurities that
may cause irritation is reduced by its use over commonly used glycols, such
as propylene glycol” (id. ¶ 85).
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Directly contrary to Appellant’s assertion that Joerger “contains no
teaching of any diol blends” (Appeal Br. 14), Joerger not only discloses that
its bio-based 1,3-propanediol can be blended with additional glycols, such as
the 1,3-butanediol recited in Appellant’s claim 1, but also that those blends
can be incorporated into preservative compositions at a wide range of
concentrations overlapping the concentration range recited in Appellant’s
claim 1:
Bio-PDO™ [(bio-based 1,3 propanediol)] can be present
. . . as a solvent in preservative compositions in concentration
ranges from about 1% to about 100%. . . . Bio-PDO™ can be
used as a mixture with other compounds, such as alcohols
(methanol, ethanol, propanol, isopropanol, butanol), glycols
(1,2-propanediol, ethylene glycol, 1,3-butanediol), water or
with Bio-PDO™-esters.
Joerger ¶ 94 (emphasis added).
In addition, to show the solubility of its bio-based 1,3-propanediol
with “common preservatives,” Joerger discloses a 50:50 blend (i.e., a 1:1
weight ratio encompassed by the Appellant’s claim 1) of its bio-based
1,3-propanediol with 1,4-butanediol. Joerger ¶ 94. Thus, as the Examiner
found, Joerger suggests that a 1:1 blend of 1,3-propanediol/1,3-butanediol
and/or 1,3-propanediol/1,4-butanediol would be a useful ratio of those
ingredients in Joerger’s glycol mixtures.
Thus, to summarize, Eggensperger teaches that, in addition to sorbic
acid and benzyl alcohol, it is advantageous to include additional solvents,
such as glycols, in its preservative compositions. Eggensperger 5:1–6.
Joerger, in turn, teaches that its bio-based 1,3-propanediol is useful as a
glycol solvent in preservative compositions, including in combination with
other glycols, such as 1,3-butanediol and 1,4-butanediol. Joerger ¶ 94.
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Given these teachings, we agree with the Examiner that a skilled artisan
would have had a good reason for, and a reasonable expectation of success
in, including a 1:1 blend of 1,3-propanediol/1,3-butanediol and/or
1,3-propanediol/
1,4-butanediol as the glycol component in Eggensperger’s preservative
compositions, at a concentration encompassed by Appellant’s claim 1.
Appellant does not persuade us, therefore, of error in the Examiner’s
determination that a skilled artisan would have had sufficient motivation to
combine Eggensperger and Joerger in the manner posited in the rejection, to
arrive at a composition encompassed by Appellant’s claim 1. See Appeal
Br. 13–15; Reply Br. 4–5.
In addition to the teachings in Eggensperger and Joerger discussed
above, Dymsza discloses that, when using propanediol/butanediol
combinations in food-preserving processes, a wide range of ratios of
propanediol and butanediol, overlapping the ratio range recited in
Appellant’s claim 1, is useful. See Dymsza 3:28–31 (“When a mixture of
1,3 butanediol and propylene glycol is employed, the butanediol to
propanediol ratio can be from 1:1 to 1:10 with a ratio of from 05:1 to 1:5
being preferred.”).
Dymsza explains further:
In carrying out the process of the present invention, a
proteinaceous food material is contacted with a dehydrating-
preservative medium comprising 1,3-butanediol or a mixture of
1,3-butanediol and 1,3-propanediol. The proportions of the
dehydration-preservative media to the food material are not
critical, with good results being obtained when the ratio by
weight is from 5:1 to 10:1 with the most preferred range being
about 5:1 by weight.
Dymsza 4:40–48 (emphasis added).
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Given Dymsza’s teachings, we agree with the Examiner that a skilled
artisan, preparing preservative blends of 1,3-propanediol/1,3-butanediol
and/or 1,3-propanediol/1,4-butanediol as expressly taught in Joerger, would
have reasoned that a wide range of ratios of propanediol and butanediol,
overlapping the ratio range recited in Appellant’s claim 1, would be useful in
preservative compositions, such as Eggensperger’s. The fact that Dymsza’s
teachings are made in relation to food preservatives (see Appeal Br. 15–16;
Reply Br. 5) does not persuade us that a skilled artisan would have ignored
Dymsza’s teachings. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007) (“A person of ordinary skill is . . . a person of ordinary creativity, not
an automaton.”).
In sum, for the reasons discussed, Appellant does not persuade us that
the Examiner erred in determining that the combined teachings of
Eggensperger, Joerger, and Dymsza would have suggested a composition
having all of the ingredients recited in Appellant’s claim 1, at concentrations
and ratios encompassed by the claim 1. Because Appellant does not identify
any specific objective evidence of nonobviousness in relation to claim 1 that
outweighs the evidence of prima facie obviousness, we affirm the
Examiner’s rejection of claim 1 over Eggensperger, Joerger, and Dymsza.3
Analysis—Claim 3
Appellant’s claim 3 reads as follows:
1. A preservative composition comprising
(a) from 2 to 10 wt.% of sorbic acid or a salt thereof;

3 Appellant includes separate argument in relation to claim 22 over
Eggensperger, Joerger, and Dymsza. See Appeal 18. Claim 18 was not
rejected over Eggensperger, Joerger, and Dymsza, however. See Final Act.
3–16.
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(b) from 20 to 50 wt.% of benzyl alcohol;
(c) from 40 to 70 wt.% of a mixture of
(i) 1,2-propanediol, 1,3-propanediol, or a
mixture thereof; and
(ii) 1,4-butanediol, 1,3-butanediol, or a mixture
thereof
in a weight ratio of (i) to (ii) of 1:4 to 4:1,
based on the total weight of (a), (b) and (c).
Appeal Br. 25.
In traversing the Examiner’s rejection of claim 3, Appellant reiterates
its arguments, addressed above, that a skilled artisan would not have
combined Eggensperger, Joerger, and Dymsza in the manner posited by the
Examiner. See Appeal Br. 17. For the reasons discussed above, we do not
find those arguments persuasive.
In addition, Appellant contends that the rejection’s “proposed
modification, even if taken as correct, admits to having a maximum of
37.5% glycol” which is less than the minimum of 40%
propanediol/butanediol mixture recited in Appellant’s claim 3. Appeal Br.
18; see also Reply Br. 6.
We are not persuaded. Although it might be true that Example 1 of
Eggensperger contains only 37.5% glycol based on the total weight of
components (a), (b), and (c) of Appellant’s claim 3, Appellant points to no
specific teaching in Eggensperger suggesting that 37.5% glycol would be the
maximum useful amount of the component of its compositions. To the
contrary, as discussed above, Eggensperger broadly teaches that, in addition
to sorbic acid and benzyl alcohol, it is advantageous to include additional
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solvents, such as glycols, in its preservative compositions, without regard to
any maximum amount. Eggensperger 5:1–6.
As discussed above, moreover, and as the Examiner points out,
Joerger teaches a very broad useful concentration range of 1,3-propanediol
(including in combination with 1,3-butanediol and 1,4-butanediol) that
significantly overlaps the 40 to 70% concentration range recited in
Appellant’s claim 3. See Joerger ¶ 94 (disclosing that bio-based
1,3-propanediol “can be present in as a solvent in preservative compositions
in concentration ranges from about 1% to about 100%” and “can be used as
a mixture with other compounds, such as . . . glycols (1,2-propanediol,
ethylene glycol, 1,3-butanediol)”) (emphasis added).
Given these teachings in Eggensperger and Joerger, Appellant does
not persuade us of error in the Examiner’s determination that skilled artisan
had a good reason for, and a reasonable expectation of success in, including
a propanediol/butanediol mixture encompassed by Appellant’s claim 3, at a
concentration range encompassed by claim 3, in Eggensperger’s preservative
compositions. We therefore affirm the Examiner’s rejection of claim 3 as
well.
Analysis—Claim 26
Appellant’s claim 26 reads as follows:
26. The preservative composition of claim 1 comprising
(a) from 1 to 6 wt.% of sorbic acid or a salt thereof;
(b) from 20 to 30 wt.% of benzyl alcohol;
(c) from 65 to 75 wt.% of a mixture of
(i) 1,2-propanediol; and
(ii) 1,4-butanediol;
in a weight ratio of (i) to (ii) of 1:4 to 4:1,
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based on the total weight of (a), (b) and (c).
Appeal Br. 25.
Appellant again contends that the rejection’s “proposed modification,
even if taken as correct, admits to having a maximum of 37.5% glycol.”
Appeal Br. 19. Therefore, Appellant contends, because Eggensperger
“clearly teaches that a preservative composition with a lower (or no)
additional solvent content has better biocidal properties, Appellants
respectfully submit that one having skill in the art would have no motivation
to increase the glycol component to be 65-75 % by weight, as claimed in
pending claim 26.” Id.
We are not persuaded. Although it might be true that Example 1 of
Eggensperger contains only 37.5% glycol based on the total weight of
components (a), (b), and (c) of Appellant’s claim 26, Appellant points to no
specific teaching in Eggensperger suggesting that 37.5% glycol would be the
maximum useful amount of the component of its compositions. To the
contrary, as discussed above, Eggensperger broadly teaches that, in addition
to sorbic acid and benzyl alcohol, it is advantageous to include additional
solvents, such as glycols, in its preservative compositions, without regard to
any maximum amount. Eggensperger 5:1–6.
As discussed above, moreover, and as the Examiner points out,
Joerger teaches a very broad useful concentration range of 1,3-propanediol,
(including in combination with 1,2-propanediol and 1,4-butanediol recited in
Appellant’s claim 26) that significantly overlaps the 60 to 75%
concentration range recited in Appellant’s claim 26. See Joerger ¶ 94
(disclosing that bio-based 1,3-propanediol “can be present in as a solvent in
preservative compositions in concentration ranges from about 1% to about
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100%” and “can be used as a mixture with other compounds, such as . . .
glycols (1,2-propanediol, ethylene glycol, 1,3-butanediol)”) (emphasis
added); see also id. (Table 1 disclosing combination of 1,3-propanediol and
1,4-butanediol).
Given these teachings in Eggensperger and Joerger, particularly when
viewed in light of the teachings in Dymsza discussed above, Appellant does
not persuade us of error in the Examiner’s determination that skilled artisan
had a good reason for, and a reasonable expectation of success in, including
a propanediol/butanediol mixture encompassed by Appellant’s claim 26, at a
concentration range encompassed by claim 26, in Eggensperger’s
preservative compositions. As our reviewing court has pointed out, in
situations such as the present one, “[w]here ‘the difference between the
claimed invention and the prior art is some range or other variable within the
claims . . . , the [applicant] must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results.’”
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir.
2004) (quoting In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)).
In the present case, we are not persuaded that Appellant has explained
sufficiently why the composition recited in Appellant’s claim 26 exhibits
unexpected properties sufficient to outweigh the evidence of prima facie
obviousness advanced by the Examiner. In that regard, Appellant asserts
that claim 26 “is directed towards ranges contained in the originally filed
examples.” Appeal Br. 20. Therefore, Appellant contends, because “the
claimed ranges correspond to examples that exhibited unexpected results as
compared to preservatives that did not contain components (a)-(c) in the
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claimed amounts, Applicant respectfully submits that claim 26 is also
independently patentable and nonobvious over the cited art.” Id.
Other than Appellant’s conclusory assertion of unexpectedness,
however, Appellant does not explain specifically which examples in the
Specification demonstrate that the composition recited in claim 26 has
unexpected properties, nor does Appellant explain specifically why those
examples represent a comparison of claim 26’s composition to the closest
prior art composition. Absent such explanations, we are not persuaded that
Appellant has shown sufficiently that claim 26’s composition possesses
unexpected properties sufficient to outweigh the evidence of prima facie
obviousness advanced by the Examiner. See In re Baxter Travenol Labs.,
952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art.”).
In sum, for the reasons discussed, Appellant does not persuade us of
error in the Examiner’s conclusion of obviousness as to the composition of
Appellant’s claim 26. We therefore affirm the Examiner’s rejection of claim
26 over Eggensperger, Joerger, and Dymsza.
Analysis—Claims 2, 4–8, 13–16, and 23–26
Appellant contends that “the patentability of the dependent claims
certainly does not hinge on the patentability of independent claims 1, 3 and
22” because “it is believed that some or all of these claims may possess
features that are independently patentable, regardless of the patentability of
the independent claims 1, 3, and 22.” Appeal Br. 19.
Appellant’s argument is tantamount to a statement that merely points
out what the dependent claims recite, which is insufficient under our rules to
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argue claims separately. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”). We note, moreover, that
claim 26, addressed above, is included in this grouping of claims argued by
Appellant.
Because, for the reasons discussed, we are not persuaded that
Appellant’s arguments have shown error in the Examiner’s rejection of
claims 2, 4–8, 13–16, and 23–26 over Eggensperger, Joerger, and Dymsza,
we also affirm that rejection.
OBVIOUSNESS—
BEILFUSS, JOERGER, AND DYMSZA
The Examiner’s Rejection
In rejecting claims 1–8, 13–16, and 22–24 over Beilfuss, Joerger, and
Dymsza, the Examiner cited Beilfuss as disclosing that it was useful to
include sorbic acid and benzyl alcohol, at concentrations encompassed by
the ranges recited in Appellant’s claims, in preservative compositions for use
in personal care and cosmetic products. Final Act. 24–25 (citing Beilfuss
¶¶ 1, 6, 41, 42; also citing Beilfuss’s claim 1).
The Examiner found that, although Beilfuss taught the presence of a
solvent in its compositions, Beilfuss’s compositions differ from the
compositions of Appellant’s claims in that Beilfuss does not include in its
compositions a propanediol/butanediol combination encompassed by
Appellant’s claims. See Final Act. 26.
The Examiner again cited Joerger as evidence that
propanediol/butanediol combinations encompassed by Appellant’s claims
were useful as solvents in preservative compositions, at ratios and
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concentration ranges encompassed by Appellant’s claims. See Final Act.
26–28.
Based on the combined teachings of Beilfuss and Joerger, the
Examiner concluded that it would have been obvious to include a
propanediol/butanediol combination as taught by Joerger in Beilfuss’s
preservative compositions, in particular Beilfuss’s “formulation R.” See
Final Act. 28. The Examiner reasoned that a skilled artisan would have had
motivation and a reasonable expectation of success in including Joerger’s
propanediol/butanediol combinations in Beilfuss’s preservative
compositions because “both Beilfuss and Joerger are concerned with similar
problems in the art, namely the preparation of preservative compositions for
cosmetics.” Id.
Lastly, the Examiner cited Dymsza as evidence that, when preparing
preservative compositions containing propanediol/butanediol combinations,
a range of propanediol/butanediol ratios overlapping the ratio ranges recited
in Appellant’s claims were known to be useful. See Final Act. 32.
Analysis—Claim 1
Having carefully considered all of the evidence and argument
presented by Appellant and the Examiner, we are not persuaded that
Appellant has shown reversible error in the Examiner’s conclusion of
obviousness as to Appellant’s claim 1 in view of over Beilfuss, Joerger, and
Dymsza.
Appellant initially argues that Beilfuss teaches away from its
formulation R, on which the Examiner largely focused the rejection, because
Beilfuss teaches that it is not possible to obtain a homogeneous, stable
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concentrate using potassium sorbate or sorbic acid. Appeal Br. 20 (citing
Beilfuss ¶ 42); Reply Br. 6.
The Examiner responds that the teachings in paragraph 42 of Beilfuss
identified by Appellant demonstrate that Beilfuss’s formulation R is merely
an unpreferred embodiment of the reference, which must be taken into
account when evaluating the obviousness of Appellant’s claim 1. See Ans.
19.
We find that the Examiner has the better position. Paragraph 42 of
Beilfuss is reproduced below:
It is clear from Table 3 that it is not possible to obtain a
homogeneous, stable concentrate (formulations M to P) using
K sorbate or using sorbic acid. Only the use of considerable
amounts of an organic solvent leads to a liquid concentrate
(formulation R). The low-temperature stability of this liquid
concentrate (R) is not, however, adequate: After storage
at -5°C, some of the sorbic acid crystallizes out.
Beilfuss ¶ 42 (emphasis added).
As is evident, while paragraph 42 of Beilfuss states that it is not
possible to obtain a homogeneous, stable concentrate using potassium
sorbate or sorbic acid, that statement is made in relation to “formulations M
to P” which Appellant excludes when reproducing paragraph 42 in its briefs.
Beilfuss ¶ 42.
Beilfuss, moreover, qualifies that statement in the sentences that
immediately follow by stating that “[o]nly the use of considerable amounts
of an organic solvent leads to a liquid concentrate (formulation R). The
low-temperature stability of this liquid concentrate (R) is not, however,
adequate: After storage at -5°C, some of the sorbic acid crystallizes out.”
Beilfuss ¶ 42 (emphasis added).
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We note that Beilfuss prefers formulations with low solvent content
and stability at low temperatures, unlike formulation R. See Beilfuss ¶¶ 15,
20. Beilfuss explains, nonetheless, that “it is not mandatory that the liquid
concentrate according to the invention arises as a clear solution[;] it is also
possible to use homogeneous-disperse preparations. However, the
homogeneous-disperse preparation is preferably free from relatively large
amounts of active ingredients which have crystallized out.” Id. ¶ 21.
Accordingly, Appellant does not persuade us that the Examiner erred
in determining that, when paragraph 42 of Beilfuss is viewed in its entirety,
and in context with other teachings in the reference, Beilfuss does not teach
away from formulation R. In particular, given the broader teachings in
Beilfuss identified by the Examiner, Appellant does not persuade us that the
statement in paragraph 42 should be viewed as a blanket teaching away from
using potassium sorbate in a preservative composition that also contains
benzyl alcohol, as recited in Appellant’s claim 1.
Specifically, Beilfuss discloses a liquid concentrate preservative that
“consists of a carboxylic acid component (A), an alcohol component (B), a
solvent (C) and optionally other auxiliaries, additives and/or active
ingredients . . . .” Beilfuss ¶ 6.
Contrary to Appellant’s contention that Beilfuss teaches away from
Appellant’s claim 1, Beilfuss teaches that “carboxylic acid component (A)
preferably comprises benzoic acid salts and/or sorbic acid salts, Na
benzoate and K sorbate being most preferred.” Beilfuss ¶ 7 (emphasis
added).
Beilfuss also discloses that the alcohol component (B) “preferably
comprises 2-phenoxyethanol, benzyl alcohol and/or 1-phenoxypropan-2-ol,
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2-phenoxyethanol and benzyl alcohol being most preferred.” Beilfuss ¶ 7
(emphasis added).
Beilfuss further discloses that its components (A) and (B) may have a
total concentration in the composition as low as 45%. See Beilfuss ¶ 6
(disclosing that the “the total content of components A and B, based on the
total concentrate, [are] greater than 45% by weight”).
We note, moreover, Beilfuss’s disclosure that the amounts of
ingredients in addition to Beilfuss’s components (A) and (B) can be readily
determined through routine experimentation:
In the individual case, the type and amount of other
active ingredients can be established by the person skilled in the
art in a simple and rapid manner by a few experiments, where
the resulting active ingredient system, which comprises the
liquid concentrate according to the invention, can have a broad
or else a very specific use potential.
Beilfuss ¶ 13.
Thus, to summarize, contrary to Appellant’s assertion that “Beilfuss
explicitly teaches that K sorbate and sorbic acid do not work” (Reply Br. 6),
Beilfuss expressly teaches that potassium sorbate and benzyl alcohol are
preferred ingredients in its preservative compositions, and that those
ingredients can be used in a combined amount as low as 45% by weight of
the overall composition. Beilfuss ¶¶ 6, 7. As noted above, Beilfuss teaches,
in addition, that the useful amounts of the ingredients included in its
compositions can be routinely determined. Id. ¶ 13.
Thus, even if we were to agree with Appellant’s argument that
Beilfuss’s formulation R did not use sorbic acid in an amount encompassed
by Appellant’s claim 1 (see Appeal Br. 21–22), given the broader teachings
in Beilfuss, Appellant does not persuade us that the Examiner erred in
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determining that a skilled artisan had good reason for, and a reasonable
expectation of success in, including potassium sorbate and benzyl alcohol in
preservative compositions at concentrations encompassed by Appellant’s
claim 1. See In re Mills, 470 F.2d at 651 (“All the disclosures in a reference
must be evaluated, including nonpreferred embodiments, and a reference is
not limited to the disclosure of specific working examples.”) (citations
omitted); see also Iron Grip Barbell, 392 F.3d at 1322 (“Where the
difference between the claimed invention and the prior art is some range or
other variable within the claims . . . , the [applicant] must show that the
particular range is critical, generally by showing that the claimed range
achieves unexpected results.”) (internal quotations omitted).
Appellant also does not persuade us that the Examiner erred in
determining that a skilled artisan would have considered it obvious to
include a propanediol/butanediol combination as taught by Joerger in
Beilfuss’s preservative compositions. As noted above, it is extremely well
settled that, “[n]on-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole.”
In re Merck & Co., 800 F.2d at 1097.
In the present case, the Examiner relies on the combined teachings of
Beilfuss, Joerger, and Dymsza to show that the composition of Appellant’s
claim 1 would have been obvious. Accordingly, Appellant’s argument, that
Beilfuss, when considered alone, does not disclose including a
propanediol/butanediol mixture in its compositions, does not demonstrate
that it would have been unobvious to do so. See Appeal Br. 21; Reply Br. 7.
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In particular, we first note that Beilfuss discloses that its preservative
compositions can contain up to 40% solvent, a concentration range
overlapping the concentration range of 10 to 89% of the diol mixture recited
in Appellant’s claim 1. See Beilfuss ¶ 15 (“[T]he solvent content is 40% or
lower or 20% or lower.”). We note, moreover, that Beilfuss discloses that its
preservative compositions can contain a variety of other ingredients that
have antimicrobial or preservative activity. See id. ¶¶ 8–11.
Joerger, as discussed above, in turn discloses that its bio-based
1,3-propanediol is useful as a solvent component in preservative
compositions, including in combination with other glycols, such as 1,3-
butanediol and 1,4-butanediol. Joerger ¶ 94. Viewing the relevant teachings
of Beilfuss and Joerger together, therefore, we agree with the Examiner that
a skilled artisan had a good reason for, and a reasonable expectation of
success in, including a 1:1 blend of 1,3-propanediol/1,3-butanediol and/or
1,3-propanediol/1,4-butanediol as the solvent component in Beilfuss’s
preservative compositions, at a concentration encompassed by Appellant’s
claim 1.
As discussed above, moreover, in addition to the teachings in Beilfuss
and Joerger discussed above, Dymsza discloses that, when using
propanediol/butanediol combinations in food-preserving processes, a wide
range of ratios of propanediol and butanediol, overlapping the ratio range
recited in Appellant’s claim 1, is useful. See Dymsza 3:28–31. Given
Dymsza’s teachings, we agree with the Examiner that a skilled artisan,
preparing preservative blends of 1,3-propanediol/1,3-butanediol and/or
1,3-propanediol/1,4-butanediol as expressly taught in Joerger, would have
reasoned that a wide range of ratios of propanediol and butanediol,
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overlapping the ratio range recited in Appellant’s claim 1, would be useful in
preservative compositions, such as Beilfuss’s. Accordingly, Appellant does
not persuade us of error in the Examiner’s determination that a skilled
artisan had sufficient motivation to combine Beilfuss, Joerger, and Dymsza
in the manner posited in the rejection, to arrive at a composition
encompassed by Appellant’s claim 1. See Appeal Br. 22–23; Reply Br. 7–8.
In sum, for the reasons discussed, Appellant does not persuade us that
the Examiner erred in determining that the combined teachings of Beilfuss,
Joerger, and Dymsza would have suggested a composition having all of the
ingredients recited in Appellant’s claim 1, at concentrations and ratios
encompassed by the claim 1. Because Appellant does not identify any
specific objective evidence of nonobviousness in relation to claim 1 that
outweighs the evidence of prima facie obviousness, we affirm the
Examiner’s rejection of claim 1 over Beilfuss, Joerger, and Dymsza.
Analysis—Claims 2–8, 13–16, and 22–24
Appellant contends that “the patentability of independent claims 3 and
22 and the dependent claims certainly does not hinge on the patentability of
independent claim 1” because “it is believed that some or all of these claims
may possess features that are independently patentable, regardless of the
patentability of the independent claim 1.” Appeal Br. 23.
As pointed out above, Appellant’s argument is tantamount to a
statement that merely points out what the dependent claims recite, which is
insufficient under our rules to argue claims separately. See 37 C.F.R.
§ 41.37(c)(1)(iv) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”).
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Accordingly, because Appellant has not advanced substantive
arguments in relation to claims 2–8, 13–16, and 22–24, separate from the
arguments advanced in relation to claim 1, claims 2–8, 13–16, and 22–24
fall with claim 1. We therefore also affirm the Examiner’s rejection of
claims 2–8, 13–16, and 22–24 over Beilfuss, Joerger, and Dymsza.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–8, 13–16,
23–26
103 Eggensperger,
Joerger, Dymsza
1–8, 13–16,
23–26

1–8, 13–16,
22–24
103 Beilfuss, Joerger,
Dymsza
1–8, 13–16,
22–24

Overall
Outcome
1–8, 13–16,
22–26

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED