Maria Dalko

Patent Trials and Appeals Board

Mar 3, 2020

13499503 - (D) (P.T.A.B. Mar. 3, 2020)

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.
13/499,503 06/14/2012 Maria Dalko 085507-536395 4592
30678 7590 03/03/2020
POLSINELLI PC
(DC OFFICE)
1000 Louisiana Street
Suite 6400
HOUSTON, TX 77002
EXAMINER
BERRIOS, JENNIFER A
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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):
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIA DALKO
Appeal 2019-000950
Application 13/499,5031
Technology Center 1600
Before RYAN H. FLAX, DAVID COTTA, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.
HARDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims related to
cosmetic, dermatological, or pharmaceutical compositions comprising the
compound ethyl gingerone. The Examiner rejected the claims as obvious
under 35 U.S.C. § 103(a) and on the ground of nonstatutory double
patenting. We heard oral argument on January 30, 2020. 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. Appellant identifies the real party in interest as L’OREAL.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to compositions comprising a particular
compound, which we refer to herein as “ethyl gingerone.” See Final Act. 7.
Claim 11 is the only independent claim on appeal, and is illustrative
of the claimed subject matter. Claim 11 reads:
11. A cosmetic, dermatological or pharmaceutical composition
comprising the compound of the following formula

wherein said compound, is present in a proportion of from
0.01% to 5% by weight relative to the weight of the
composition,

and a physiologically acceptable medium comprising at least
one ingredient selected from the group consisting of silicone
fatty substances, nonsilicone fatty substances, glycols, ketones,
thickeners, emulsifiers, surfactants, gelling agents, fragrances,
fillers, dyestuffs, moisturizers, vitamins and polymers.
Appeal Br. 24 (Claims Appendix).
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REFERENCES
The Examiner relied upon the following prior art references:
Name Reference Date
Warren US 6,287,583 B1 Sept. 11, 2001
Scott US 2008/0253976 A1 Oct. 16, 2008
Maruyama (English
translation)
JP2003-206239 July 22, 2003
SciFinder SciFinder database
entry for “zingerone,”
available at
https://scifinder-
n.cas.org
Sept. 9, 2015
REJECTIONS
Claims 11, 15, 16, 18, 19, and 27–29 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Maruyama, as evidenced by
SciFinder. Final Act. 3.
Claims 11, 15, 16, 18, 19, and 27–29 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Scott and Warren, as
evidenced by SciFinder. Final Act. 10.
Claims 11 and 16 stand rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1 and 5–10 of US Patent
9,161,893. Final Act. 7.
Claims 11, 16, and 18 stand rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 1, 4–6, 13, and 15 of
copending Application 14/007853 (now US Patent 10,117,816, issued
November 6, 2019). Final Act. 8.

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OPINION
Obviousness Rejection Over Maruyama and SciFinder
The Examiner found that Maruyama teaches a composition for
application to the skin comprising zingerone,2 which can be present in
amounts ranging from 0.001–3%. Final Act. 3. The Examiner further found
that Maruyama’s compositions can include a nonsilicone fatty substance, as
recited in Appellant’s claim 11. Final Act. 5.
The Examiner found that ethyl gingerone and zingerone are
homologs, because they differ only by a CH2 group. Final Act. 4. For
reference, the zingerone and ethyl gingerone structures are reproduced
below:

zingerone ethyl gingerone
The structure of zingerone is shown above on the left, and the structure of
ethyl gingerone is shown above on the right. See Final Act. 3–4.
The Examiner found that, given the structural similarity between the
two compounds, “one of skill in the art would expect such compounds to
possess similar properties,” thus it would have been obvious “to make and
use the claimed compound in place of zingerone in the composition of
Maruyama with a reasonable expectation of success, absent factual evidence
to the contrary.” Final Act. 4.

2 Zingerone is also known as gingerone. See SciFinder, “Other Names.”
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Findings of Fact
The following findings of fact highlight certain evidence of record.
FF1. Khimii3 discloses zingerone and ethyl gingerone (compound
(I)). Khimii 759.
FF2. Winter4 discloses zingerone (compound (XVII)) and ethyl
gingerone (compound (XVIII)). Winter 2112.
FF3. The chemical structures of zingerone and ethyl gingerone differ
by a single CH2 group. Final Act. 3–4.
FF4. Maruyama teaches dermatological compositions comprising
zingerone that have a heat sensation. See Maruyama 1.
FF5. Scott’s claim 13 recites an oral care composition comprising
zingerone as an antimicrobial. See Scott 17.
FF6. Ethyl gingerone has antimicrobial activity. Spec. 7–9 (Example
1 shows antimicrobial activity of ethyl gingerone); Dalko Decl.5 ¶ 5
(addressing data in Specification); Menard-Szczebara Decl.6 ¶ 9 (providing
experimental results showing antimicrobial activity of ethyl gingerone).

3 Zhurnal Obshohey Khimii, 19(4), 759–68 (1949) (partial translation)
(“Khimii”). Appellant cited Khimii as evidence that zingerone and ethyl
gingerone do not necessarily possess similar properties. Appeal Br. 9.
4 Winter, Odeur et constitution sur des homologues et analogues de la p-
hydroxyphenyl-1-butanone-3 (cetone de framboise), 44 Helvetica Chimica
Acta 2110–21 (1961) (partial translation) (“Winter”). Appellant cited
Winter as evidence that zingerone and ethyl gingerone do not necessarily
possess similar properties. Appeal Br. 9–10.
5 Declaration Under 37 CFR 1.132 by Maria Dalko, dated September 6,
2017 (“Dalko Declaration”).
6 Declaration Under 37 CFR 1.132 by Florence Menard-Szczebara, dated
April 14, 2014 (“Menard-Szczebara Declaration”).
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FF7. Khimii teaches that zingerone has a pungent flavor, whereas
homologs of zingerone (including ethyl gingerone, compound (I)) “were
entirely or almost entirely free of pungent flavor.” Khimii 761.
FF8. Winter teaches that zingerone (compound XVII) has a weak
raspberry flavor, whereas ethyl gingerone (compound XVIII) does not.
Winter 2112, 2115.
FF9. Winter teaches that all of its reported test compounds—
including zingerone and ethyl gingerone—“have pleasant aromatic odors,”
although the odor of zingerone is more intense than that of ethyl gingerone.
Winter 2115.
FF10. The Chevalier Declaration7 shows that zingerone and ethyl
gingerone are each soluble in 0.5% and 1% glycerin, but that only zingerone,
and not ethyl gingerone, is soluble in 3% glycerin. Chevalier Declaration
¶¶ 6–9.
Analysis
“[S]tructural similarity between claimed and prior art subject matter,
proved by combining references or otherwise, where the prior art gives
reason or motivation to make the claimed compositions, creates a prima
facie case of obviousness, and . . . the burden (and opportunity) then falls on
an applicant to rebut that prima facie case.” In re Dillon, 919 F.2d 688, 692
(Fed. Cir. 1990); see also MPEP § 2144.09 (II) (“Compounds which are . . .
homologs (compounds differing regularly by the successive addition of the
same chemical group, e.g., by -CH2- groups) are generally of sufficiently
close structural similarity that there is a presumed expectation that such

7 Declaration Under 37 CFR § 1.132 by Veronique Chevalier, dated March
3, 2017 (“Chevalier Declaration”).
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compounds possess similar properties.”). Under such circumstances, an
applicant’s rebuttal can consist of
a comparison of test data showing that the claimed
compositions possess unexpectedly improved properties or
properties that the prior art does not have, that the prior art is so
deficient that there is no motivation to make what might
otherwise appear to be obvious changes, or any other argument
or presentation of evidence that is pertinent.
In re Dillon, 919 F.2d at 692–93 (citations omitted).
Under the facts of this case, we conclude that the Examiner has
established a prima facie case of obviousness. The record reflects that
zingerone and ethyl gingerone were both known in the prior art. FF1, FF2.
The compounds differ by a single methylene (CH2) group, and thus are
adjacent homologs. FF3; In re Dillon, 919 F.2d at 703 n.6 (defining
adjacent homologs as compounds that differ by a single methylene group).
Maruyama discloses dermatological compositions comprising zingerone,
having the advantageous property of a heat sensation. FF4. Given the close
structural similarity between zingerone and ethyl gingerone, a person of
ordinary skill in the art would have been motivated to substitute zingerone
with ethyl gingerone in Maruyama’s compositions, with a reasonable
expectation that ethyl gingerone-containing compositions, like Maruyama’s
zingerone-containing compositions, would also provide a heat sensation.
In rebuttal, Appellant argues that the record reflects “powerful”
evidence of non-obviousness (Appeal Br. 18), including actual differences in
the properties of zingerone and ethyl gingerone that undercut an expectation
of similar properties, and unexpected antimicrobial activity. Appeal Br. 7,
9–11; Reply Br. 4. We address each argument in turn.
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Differences Between the Properties of Zingerone
and Ethyl Gingerone
Appellant asserts that zingerone and ethyl gingerone have differences
in taste and solubility in glycerin, and thus a person of ordinary skill in the
art would not expect the two compounds to have similar properties. Appeal
Br. 9–11. With regard to differences in taste, Khimii teaches that zingerone
has a pungent flavor, whereas ethyl gingerone lacks a pungent flavor. Id. at
9; FF7. Winter teaches that zingerone has a weak raspberry flavor, whereas
ethyl gingerone does not. Appeal Br. 9–10; FF8. Winter notes, however,
that all of the tested compounds “have pleasant aromatic odors,” although
the odors differ in intensity. Appeal Br. 10; FF9. With regard to solubility
in glycerin, Appellant asserts that zingerone “is soluble in glycerin in all of
the tested amounts,” whereas ethyl gingerone is soluble in glycerin “only
until 1% by weight, but not at 3% by weight.” Appeal Br. 11; see also
FF10; Dalko Decl. ¶¶ 19–20 (citing Heuser (EP 2,327,393) and Chevalier
Decl.).
“[T]he appealed claims must be considered in light of all the evidence,
and the resulting decision, that the claimed invention would or would not
have been obvious, is to be made in such light.” In re May, 547 F.2d 1082,
1089 (CCPA 1978); see also In re Papesch, 315 F.2d 381, 391 (CCPA
1963) (“An assumed similarity based on a comparison of formulae must give
way to evidence that the assumption is erroneous.”). Actual differences in
the properties of the compounds must be considered, but “a single variance
in the properties of new chemical compounds will [not] necessarily tip the
balance in favor of patentability where otherwise closely related chemical
compounds are involved.” In re De Montmollin, 344 F.2d 976, 978 (CCPA
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1965) (where claimed compound and structurally-similar prior art compound
shared ability to dye wool, the additional ability of the claimed compound to
dye cotton was insufficient to render the subject matter unobvious); see also
In re Crounse, 363 F.2d 881, 884 (CCPA 1966) (where claimed compound
and prior art isomer both acted as dyestuffs, court held that difference in dye
shade was insufficient to rebut prima facie case based on structural
similarity). Similarities in the properties of the compounds must also be
considered, because “[t]he similarity of properties of a reference compound
as compared with a claimed compound gives rise to an even stronger
inference of obviousness than that of structural similarity alone . . . .” In re
Mehta, 347 F.2d 859, 864 (CCPA 1965).
With such standards of law in mind, we analyze the similarities and
differences of record between zingerone and ethyl gingerone. As discussed
above, the compounds share pleasant aromatic odors, antimicrobial activity,
and solubility in 0.5% and 1% glycerin. FF9, FF5, FF6, FF10. The
compounds diverge with respect to a pungent and raspberry flavor, and with
respect to solubility in at least 3% glycerin. FF7, FF10.
The Examiner acknowledged the differences in flavor and solubility,
but found the compounds to demonstrate an expected, gradual variance in
properties between members of a homologous series:
With respect to homologous compounds, which is what the
rejection is relied up [sic], the compounds are not expected to
have identical properties, members of a homologous series are
expected to gradually vary in properties. Furthermore,
Applicants are showing slight differences in taste profile
(different taste, same odor), solubility in glycerin (both soluble
up to 1%, but only one soluble up to 3%), however, there is no
evidence that shows how these differences relate to the claimed
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properties of preservation or how they would affect the
composition of the prior art and render them unsuitable for use.
Final Act. 14. We adopt the Examiner’s findings. See, e.g., In re Norris,
179 F.2d 970, 972 (CCPA 1950) (noting that “chemists understand that
members of a homologous series of chemical compounds possess the same
principal characteristics which vary gradually from member to member”); In
re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986) (affirming obviousness
despite fact that one isomer “helped some patients” while the other did not,
noting that “a difference in structure, although slight, would have been
expected to produce some difference in activity”).
Appellant has not provided persuasive evidence calling into question
the Examiner’s finding that the flavor and solubility differences between the
two compounds are mere gradual variations. Appellant also has not
provided persuasive evidence that ethyl gingerone’s additional methylene
group actually alters the heat sensation property taught in Maruyama.
Further, the additional methylene group did not destroy the shared pleasant
aromatic odors, antimicrobial properties, or solubility in 0.5% and 1%
glycerin. FF9, FF5, FF6, FF10. Accordingly, in view of the similarities and
differences of record, we determine that Appellant has not rebutted that it
would have been obvious to substitute zingerone with ethyl gingerone in
Maruyama’s compositions, with a reasonable expectation that the claimed
composition (comprising ethyl gingerone) would have similar properties as
the zingerone-containing compositions taught in Maruyama.
Unexpected Results
Appellant asserts that ethyl gingerone “unexpectedly has a high
activity against a wide variety of microbial strains.” Appeal Br. 7. As
support, Appellant cites experimental results reported in the Specification,
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the Dalko Declaration, and the Menard-Szczebara Declaration. Appeal Br.
7–8; Reply Br. 3. The Specification shows the efficacy of ethyl gingerone
against several strains of microorganism. Spec. 9. The Dalko Declaration
states that ethyl gingerone
exhibits a broad antimicrobial spectrum, which, as pointed out
in the specification, is at least as broad, or even broader, than
that of the already existing compounds, and which does not
have the drawbacks of the prior art, in particular which has
specific physicochemical properties making it possible to
protect cosmetic formulas against microbial contamination
while at the same time being well tolerated.
Dalko Decl. ¶ 5. The Menard-Szczebara Declaration compares the
antimicrobial efficacy of ethyl gingerone against two prior art compounds,
neither of which is zingerone. Menard-Szczebara Decl. ¶¶ 4–5, 9.
We are not persuaded that Appellant has demonstrated unexpected
results. Scott teaches that zingerone is an antimicrobial. See Scott 17 (claim
13 recites an oral care composition comprising zingerone as an
antimicrobial). Accordingly, given the close structural similarity between
the two compounds, a person of ordinary skill in the art would have
expected ethyl gingerone similarly to have antimicrobial properties. See In
re Gershon, 372 F.2d 535, 538 (CCPA 1967) (“Expected beneficial results
are evidence of obviousness of a claimed invention, just as unexpected
results are evidence of unobviousness thereof.”). Thus, the fact that ethyl
gingerone has antimicrobial activity would not have been unexpected.
Moreover, unexpected results “must be shown to be unexpected
compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991). Neither the Dalko Declaration nor the
Specification compare the antimicrobial activity of ethyl gingerone to that of
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zingerone (or any other compound). Dalko Decl. ¶ 5; Spec. 8–9. The
Menard-Szczebara Declaration does provide comparative data, but not in
comparison to zingerone, which is the closest prior art of record. See
Menard-Szczebara Decl. ¶¶ 4–5, 9–10. Although Appellant may show
improved results over prior art that is even closer to the claimed subject
matter than the prior art cited by the Examiner, see Ex parte Humber, 217
USPQ 265 (BPAI 1981); MPEP § 716.02(e), on this record, Appellant has
not established that ethyl gingerone is closer to the tested compounds than it
is to zingerone.8 Accordingly, on this record, we determine that Appellant
has not carried its burden of showing unexpected results.
Remaining Arguments
Appellant additionally argues that in the claimed compositions, ethyl
gingerone acts as a preserving agent, whereas Maruyama does not disclose
that any component of the disclosed compositions acts as a preserving agent.
Appeal Br. 6. We are not persuaded by this argument. Appellant’s claims
are not limited to compositions where the ethyl gingerone is used as a
preserving agent. The prior art renders obvious the structural limitations
recited by the appealed claims, and thus the claimed composition and those
of the prior art are expected to have the same properties, absent evidence to
the contrary. Final Act. 17; cf. In re Dillon, 919 F.2d at 693 (“[T]he
statement that a prima facie obviousness rejection is not supported if no
reference shows or suggests the newly-discovered properties and results of a

8 Indeed, whereas ethyl gingerone and zingerone differ by only a single CH2
group, ethyl gingerone and the tested compounds differ by more than a
single CH2 group. See Menard-Szczebara Decl. ¶ 5 (providing structures of
tested compounds). Accordingly, the tested compounds do not appear to be
closer prior art than zingerone.
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claimed structure is not the law.”). Indeed, the record shows that both
zingerone and ethyl gingerone have antimicrobial activity. FF5; FF6.
Moreover, to render an invention obvious, the prior art need not
address the same problem addressed by a patent applicant. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“In determining whether the
subject matter of a patent claim is obvious, neither the particular motivation
nor the avowed purpose of the patentee controls. What matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.”). Here, Maruyama discloses that its zingerone-
containing compositions provide a heat sensation. Maruyama 1. The
reasonable expectation of obtaining a compound that provides a similar heat
sensation by substituting zingerone with the ethyl gingerone homolog is
sufficient motivation to render the claims obvious, regardless of whether a
skilled artisan would have been motivated to make the substitution based on
an expectation that ethyl gingerone would act as a preserving agent.
Appellant additionally argues that Maruyama is non-analogous art,
because skilled artisans concerned with preserving agents would not have
looked to Maruyama, which is not concerned with preserving agents.
Appeal Br. 8, 11–12; Dalko Decl. ¶ 12. We are not persuaded. Both the
appealed claims and Maruyama are directed to compositions for topical
application to the skin and hair. Ans. 12. Accordingly, Maruyama is
analogous art because it is within the inventor’s field of endeavor. See In re
Dillon, 919 F.2d at 694 (explaining that analogous art includes art in the
same field as the inventor’s endeavor). Moreover, as discussed above, the
prior art need not address the same problem addressed by a patent applicant.
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Appellant further argues that based on Maruyama’s specificity in
naming zingerone compared to the other components of the composition
(i.e., the fatty acid ester and terpenoid components, which are disclosed as
genera), a skilled artisan would not have “deviate[d] from using zingerone
and reasonably expect[ed] similar heat sensation results.” Appeal Br. 7;
Dalko Decl. ¶¶ 9–11. We are not persuaded. The Examiner based the
rejection on the close structural similarities between zingerone and ethyl
gingerone—a relationship that would have led skilled artisans to expect
similar properties. See, e.g., Final Act. 4; In re Dillon, 919 F.2d at 692
(“[S]tructural similarity between claimed and prior art subject matter . . . ,
where the prior art gives reason or motivation to make the claimed
compositions, creates a prima facie case of obviousness.”). The fact that
Maruyama purportedly focuses on zingerone, while disclosing numerous
options for the other two components of the composition, does not undercut
the expectation of similar properties based on close structural similarities
between zingerone and ethyl gingerone. We also note that Maruyama
discloses other sense-of-heat components beyond zingerone, and thus is not
as narrowly focused on zingerone as Appellant suggests. See Maruyama
¶ 42.
Any remaining points of Appellant not specifically addressed above
have been addressed by the Examiner in the Answer, and we adopt the
Examiner’s responses as our own.
For the above reasons, we affirm the Examiner’s obviousness
rejection over Maruyama and SciFinder.

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Obviousness Rejection Over Scott, Warren, and SciFinder
The Examiner found that Scott teaches personal care compositions
comprising an antimicrobial blend of essential oils, which can comprise
zingerone as an additional antimicrobial active. Final Act. 10. The
Examiner additionally found that given the structural similarity between
zingerone and ethyl gingerone, “one of skill in the art would expect such
compounds to possess similar properties,” thus it would have been obvious
“to make and use the claimed compound in place of zingerone in the
composition of Scott with a reasonable expectation of success, absent factual
evidence to the contrary.” Final Act. 11.
The Examiner further found that Warren discloses a personal care
composition that can comprise 0.001–5% of an antimicrobial agent, and that
a person of skill in the art would have recognized that ethyl gingerone could
be used in Scott’s compositions in the same amounts. Final Act. 12–13.
We adopt the Examiner’s findings of fact, and agree that the claimed
compositions would have been obvious in view of the prior art combination
for the reasons articulated by the Examiner.
Appellant repeats that zingerone and the claimed compounds “possess
different properties and therefore conventional wisdom in the art would not
lead a person of ordinary skill in the art to replace zingerone with the
compound employed according to the present invention.” Appeal Br. 15.
For all of the same reasons discussed above, we are not persuaded by this
argument.
Appellant additionally argues that Scott discloses a litany of
antimicrobial agents, and “there is no incentive or motivation to lead persons
of ordinary skill in the art to forego all of the potential optional antimicrobial
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agents mentioned [in Scott] and instead employ the claimed compound
which is not disclosed or suggested in the art as being an antimicrobial
agent.” Appeal Br. 14. Appellant further argues that Warren, like Scott,
also discloses numerous and diverse possible antimicrobial agents, but fails
to suggest the claimed compound, or even zingerone. Appeal Br. 15.
We are not persuaded by these arguments. We agree with the
Examiner that Scott lists zingerone “among a finite number of alternatives as
being a suitable antimicrobial agent for use, thus it [is] clearly within the
scope of Scott to formulate embodiments wherein the additional
antimicrobial agent . . . is specifically zingerone.” Ans. 13; see also In re
Mercier, 515 F.2d 1161, 1165 (CCPA 1975) (“[A]ll of the relevant teachings
of the cited references must be considered in determining what they fairly
teach to one having ordinary skill in the art.”). Indeed, Scott’s claim 13
specifically teaches an embodiment comprising zingerone as an
antimicrobial. Scott 17.
Appellant also argues a lack of motivation to select zingerone as the
lead compound, then “discard zingerone and instead use the compound
according to the present invention.” Appeal Br. 14. We are not persuaded.
As the Examiner stated, “[w]hile Scott fails to teach the claimed compound,
as described [in] the above rejection, the claimed compound and zingerone
are homologs and are expected to have similar properties, therefore, absent
evidence to the contrary, its prima facie obvious to make and use the
claimed compound in the composition of Scott, instead of zingerone, with a
reasonable expectation of success.” Ans. 13.
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Any remaining arguments of Appellant have been addressed by the
Examiner in the Answer, and we adopt the Examiner’s responses as our
own.
For the above reasons, we affirm the Examiner’s obviousness
rejection over Scott, Warren, and SciFinder.

Nonstatutory Double Patenting
Claims 11 and 16 were rejected on the ground of non-statutory
obviousness-type double patenting over claims 1 and 5–10 of US Patent
9,161,893 B2. Final Act. 7.
Claims 11, 16, and 18 were provisionally rejected on the ground of
non-statutory obviousness-type double patenting over claims 1, 4–6, 13, and
15 of copending Application 14/007853. Final Act. 8. Copending
Application 14/007853 issued as US Patent 10,117,816 B2 on November 6,
2019. Thus, this rejection is no longer provisional.
At the oral hearing in this appeal, Appellant’s counsel suggested that
these double patenting rejections are moot, based on Appellant’s recent
filing of a terminal disclaimer, which has been accepted by the Office. Hr’g
Tr. 2:7–21. We are not persuaded by this argument. We lack jurisdiction to
determine whether Appellant’s terminal disclaimer is sufficient to moot the
Examiner’s double patenting rejections, because on this record, there is no
adverse decision of the Examiner directed to that question. See 35 U.S.C.
§ 6(b) (“The Patent Trial and Appeal Board shall — (1) on written appeal of
an applicant, review adverse decisions of examiners upon applications for
patents pursuant to section 134(a).”).
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Appellant additionally argues that the rejection over US 9,161,893 B2
is untenable because the claims of the reference patent are directed to
methods of use, whereas the appealed claims are directed to compositions.
Appeal Br. 20. Appellant states that earlier in the prosecution, the Examiner
issued a restriction requirement between methods of use and compositions.
Id.
To the extent Appellant is suggesting that the safe harbor of 35 U.S.C.
§ 121 applies to preclude use of US 9,161,893 B2 as a double patenting
reference against the present application, we are not persuaded. The safe
harbor applies to certain divisional applications filed as a result of a
restriction requirement. See 35 U.S.C. § 121 (“A patent issuing on an
application with respect to which a requirement for restriction under this
section has been made, . . . shall not be used as a reference . . . against a
divisional application . . . if the divisional application is filed before the
issuance of the patent on the other application.”). The present application is
not related to US 9,161,893 B2 as a divisional application. Thus, the safe
harbor protection of 35 U.S.C. § 121 does not apply.
As to the rejection over US Application 14/007,853 (now US Patent
10,117,816 B2), Appellant argues that the rejection is not tenable under
MPEP § 804.I.B.1 because the present application has a filing date prior to
that of the reference application. Appeal Br. 20.
We are not persuaded by this argument. The cited section of the
MPEP applies to provisional double patenting rejections. See MPEP
§ 804.I.B.1.b. (9th ed. Rev. 08.2017 Jan. 2018) (“If a provisional
nonstatutory double patenting rejection is the only rejection remaining in an
application having the earliest effective U.S. filing date . . . compared to the
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reference application(s), the examiner should withdraw the rejection in the
application having the earliest effective U.S. filing date . . . .”) (emphasis
added). As noted above, US Application 14/007853 issued as US Patent
10,117,816 B2 on November 6, 2019. Thus, this rejection is no longer
provisional, and the cited MPEP section does not apply.
FOR THE ABOVE REASONS, WE AFFIRM THE NONSTATUTORY
DOUBLE PATENTING REJECTIONS. CONCLUSION
We affirm the rejection of claims 11, 15, 16, 18, 19, and 27–29 under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Maruyama, as
evidenced by SciFinder.
We affirm the rejection of claims 11, 15, 16, 18, 19, and 27–29 under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Scott and Warren, as
evidenced by SciFinder.
We affirm the nonstatutory double patenting rejections.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
11, 15, 16,
18, 19, 27–
29
103 Maruyama, SciFinder 11, 15, 16,
18, 19, 27–
29

11, 15, 16,
18, 19, 27–
29
103 Scott, Warren,
SciFinder
11, 15, 16,
18, 19, 27–
29

11, 16 Nonstatutory Double
Patenting
11, 16
11, 16, 18 Nonstatutory Double
Patenting
11, 16, 18
Appeal 2019-000950
Application 13/499,503

20
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
Overall
Outcome:
  11, 15, 16,
18, 19, 27–
29

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