BASF SE

Patent Trials and Appeals Board

Jan 20, 2022

2021001940 (P.T.A.B. Jan. 20, 2022)

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. 15/302,796 10/07/2016 Thomas Ehlis 074008-1753-US-547643 2036 123223 7590 01/20/2022 Faegre Drinker Biddle & Reath LLP (WM) Attn: Intellectual Property Group One Logan Square, Suite 2000 Philadelphia, PA 19103-6996 EXAMINER BABSON, NICOLE PLOURDE ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 01/20/2022 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): DBRIPDocket@faegredrinker.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS EHLIS and JULIE GRUMELARD ____________ Appeal 2021-001940 Application 15/302,796 Technology Center 1600 ____________ Before DONALD E. ADAMS, ERIC B. GRIMES, and JOHN E. SCHNEIDER, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s decision to reject claims 23-25, 27, and 45-49 (see Final Act.2 2).3 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 “BASF SE” (Appellant’s August 28, 2020, Appeal Brief (Appeal Br.) 2). 2 Examiner’s March 25, 2020, Final Office Action. 3 Appellant’s pending claims 28-39 stand withdrawn from consideration (see Final Act. 2). Appeal 2021-001940 Application 15/302,796 2 STATEMENT OF THE CASE Appellant’s disclosure “relates to the use of specific UV filter combinations comprising Phenylene Bis-Diphenyltriazine for cosmetic preparations” (Spec.4 1). Claims 23, 25, and 46-48 are reproduced below: 23. A cosmetic or pharmaceutical composition comprising a UV filter combination of (a) an aqueous dispersion of 5,6,5',6'-tetraphenyl-3,3'-(1,4- Phenylene)bis(1,2,4-Triazine) corresponding to the formula in particulate form; and (b) UV filters selected from the group consisting of (b1) Bis-Ethylhexyloxyphenol Methoxyphenyl Triazine; (b2) Butyl Methoxydibenzoylmethane; (b3) Diethylhexyl Butamido Triazone; (b4) Ethylhexyl Triazone; (b5) Diethylamino Hydroxy Benzoyl Hexyl Benzoate; (b6) Ethylhexyl Methoxycinnamate; (b7) Ethylhexyl Salicylate; (b8) Homosalate; (b9) Octocrylene; (b10) Methylene Bis-Benzotriazolyl Tetramethylbutylphenol; (b11) Phenylbenzimidazole Sulfonic Acid; 4 Ehlis et al., WO 2015/155158 A1, published Oct. 15, 2015. Appeal 2021-001940 Application 15/302,796 3 (b12) Titanium Dioxide; (b13) Tris-Biphenyl Triazine; (b14) (2-{4-[2-(4-Diethylamino-2-hydroxy-benzoyl)-benzoyl]- piperazine-l-carbonyl}phenyl)-(4-diethylamino-2-hydroxy- phenyl)-methanone; (b15) BBDAPT; Benzoic acid, 4,4'-[[6-[[3-[1,3,3,3-tetramethyl- l-[(trimethylsilyl)oxy]-1 disiloxanyl]propyl]amino]-1,3,5- triazine-2,4-diyl] diimino] bis-, dibutyl ester; (b16) benzylidene malonates; (b17) merocyanine derivatives; (b18) Bis(butylbenzoate) diaminotriazine aminopropylsiloxane; (b19) Bis-Ethylhexyloxyphenol Methoxyphenyl Triazine encapsulated in a polymer matrix; (b20) 2-(2H-Benzotriazol-2-yl)-6-[(2-ethylhexyloxy)methyl]-4- methylphenol; and (b21) 2-Propenoic acid, 3-(4-methoxyphenyl)-, 2-methylphenyl ester, wherein said composition contains at least two of the UV filters (b1) - (b21); and wherein said composition also contains a pharmaceutically or cosmetically acceptable excipient and wherein the compound of formula (1) is present in the micronized state. (Appeal Br. 20-22.) 25. The cosmetic or pharmaceutical composition according to claim 23, wherein the aqueous dispersion according to component (a) contains a dispersing agent which is PPG-1- PEG-9 Lauryl Glycol Ether. (Id. at 22.) 46. The cosmetic or pharmaceutical composition according to claim 23, wherein (b) is (b1), (b4) and b(5). (Id. at 31.) Appeal 2021-001940 Application 15/302,796 4 47. A cosmetic or pharmaceutical composition comprising a UV filter combination of (a) an aqueous dispersion of 5,6,5',6'-tetraphenyl-3,3'-(1,4- Phenylene)bis(1,2,4-Triazine) corresponding to the formula in particulate form; and (b) UV filters selected from the group consisting of (b1) Bis-Ethylhexyloxyphenol Methoxyphenyl Triazine; (b2) Butyl Methoxydibenzoylmethane; (b4) Ethylhexyl Triazone; (b6) Ethylhexyl Methoxycinnamate; (b7) Ethylhexyl Salicylate; (b8) Homosalate; (b9) Octocrylene; (b10) Methylene Bis-Benzotriazolyl Tetramethylbutylphenol; (b11) Phenylbenzimidazole Sulfonic Acid; (b14) (2-{4-[2-(4-Diethylamino-2-hydroxy-benzoyl)-benzoyl]- piperazine-l-carbonyl}phenyl)-(4-diethylamino-2-hydroxy- phenyl)-methanone; (b15) BBDAPT; Benzoic acid, 4,4'-[[6-[[3-[1,3,3,3-tetramethyl- l-[(trimethylsilyl)oxy]-1 disiloxanyl]propyl]amino]-1,3,5- triazine-2,4-diyl]diimino]bis-, dibutyl ester; (b16) benzylidene malonates; (b17) merocyanine derivatives; (b18) Bis(butylbenzoate) diaminotriazine aminopropylsiloxane; Appeal 2021-001940 Application 15/302,796 5 (b19) Bis-Ethylhexyloxyphenol Methoxyphenyl Triazine encapsulated in a polymer matrix; (b20) 2-(2H-Benzotriazol-2-yl)-6-[(2-ethylhexyloxy)methyl]-4- methylphenol; and (b21) 2-Propenoic acid, 3-(4-methoxyphenyl)-, 2-methylphenyl ester, wherein said composition contains at least two of the UV filters (b1), (b2), (b4), (b6)-(b11), (b14) - (b17); and wherein said composition also contains a pharmaceutically or cosmetically acceptable excipient and wherein the compound of formula (1) is present in the micronized state. (Id. 31-33.) 48. A cosmetic or pharmaceutical composition comprising a UV filter combination of (a) an aqueous dispersion of 5,6,5',6'-tetraphenyl-3,3'-(1,4- Phenylene)bis(1,2,4-Triazine) corresponding to the formula in particulate form; and (b) UV filters (b1) Bis-Ethylhexyloxyphenol Methoxyphenyl Triazine; and (b4) Ethylhexyl Triazone; and wherein said composition also contains a pharmaceutically or cosmetically acceptable excipient and wherein the compound of formula (1) is present in the micronized state. (Id. at 33-34.) Appeal 2021-001940 Application 15/302,796 6 Grounds of rejection before this Panel for review: I. Claims 23, 24, 27, and 46-49 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Dromigny,5 PubChem,6 and Luther.7 II. Claims 25 and 45 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Dromigny, PubChem, Luther, and Beck.8 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) We adopt Examiner’s findings concerning the scope and content of the prior art, and provide the following for emphasis. FF 1. Dromigny discloses a cosmetic or pharmaceutical composition containing a combination of filters comprising: one or more UVA filter, one or more UVB and broad spectrum filters, at least one screen such as methylene bis-benzotriazolyl tetramethylbutylphenol (MBBT), tris-biphenyl 5 Perier et al., FR2986154 A1, published Aug. 2, 2013. Examiner relied on the Google Patents translation of this document, available at https://patents.google.com/patent/FR2986154A1/en, last accessed Sept. 20, 2017. Examiner and Appellant refer to this document as “Dromigny.” Therefore, for consistency, we refer to this document as “Dromigny.” 6 PubChem: Open Chemistry Database, Ethylhexyl Triazone, 1-17, available at https://pubchem.ncbi.nlm.nih.gov/compound/Octyl͟͟͟-triazone#section=Top, last accessed Feb. 15, 2018. 7 Luther et al., US 6,521,217 B1, published Feb. 18, 2003. 8 Beck et al., US 2013/0324616 A1, published Dec. 5, 2013. Appeal 2021-001940 Application 15/302,796 7 triazine, or TiO2, and a pharmaceutically or cosmetically acceptable excipient (Dromigny Abstr.; see Final Act. 3-4). FF 2. Dromigny discloses the UVA filters 5,6,5',6'-tetraphenyl-3,3'-(1,4- Phenylene)bis(1,2,4-Triazine), and diethylamino hydroxyl benzoyl hexyl benzoate (Dromigny 2; Final Act. 3-4). FF 3. Dromigny discloses the UVB filters octyl triazone, MBBT, and bis- ethylhexyloxyphenol methoxyphenyl triazine (BEMT) (Dromigny 2; see also PubChem (PubChem discloses that octyl triazone is ethylhexyl triazone); Final Act. 3-4). FF 4. Dromigny discloses “[p]referably, the list of UVB filters is composed of organic filters: diethylhexyl butamido triazone and Octyl triazone, organic screen: triazine tris-biphenyl of the TiO2 mineral screen. Advantageously, the broad spectrum filter is the MBBT” (Dromigny 3; see generally Final Act. 3-4). FF 5. Dromigny discloses a composition comprising 5,6,5',6'-tetraphenyl- 3,3'-(1,4-Phenylene)bis(1,2,4-Triazine), BEMT, and tris-biphenyl triazine (Dromigny Claim 5; see Final Act. 3-4). FF 6. Examiner finds that the combination of Dromigny and PubChem does not disclose a “particulate [or] micronized form” of 5,6,5',6'- tetraphenyl-3,3'-(1,4-Phenylene)bis(1,2,4-Triazine) and relies on Luther to make up for this deficiency (Final Act. 4). FF 7. Luther discloses a sun screen formulation, comprising (a) a micronized organic UV absorber, and (b) a cosmetically acceptable carrier, wherein the micronised organic UV absorber is present in the oil phase of the formulation. The sunscreen composition of the invention provides excellent protection of the human skin against the Appeal 2021-001940 Application 15/302,796 8 damaging effects of sunlight, while permitting safe tanning of the skin. (Luther Abstr.; see Final Act. 4.) FF 8. Luther discloses: Micronised, insoluble organic UV absorbers so obtained, when used in sunscreen formulations, provide excellent UV protection and have at least as high an SPF rating as corresponding sunscreen formulations containing a known inorganic UV absorber. Unlike the latter UV absorbers, micronised, insoluble organic UV absorbers show no tendency, under the influence of light, to generate radicals which could damage or sensitise human skin . . . [and that] micronised, insoluble organic UV absorbers which are present in the oil phase of the sun screen formulation surprisingly show a significant improvement in sun protection. (Luther 1:43-56; see Final Act. 4.) FF 9. Luther discloses that a “[s]uitable organic UV absorber may be, e.g., a triazine” (Luther 2:62; see Final Act. 4). FF 10. Examiner finds that the combination of Dromigny, PubChem, and Luther fails to disclose a composition that “comprises a dispersing agent/grinding aid selected from PPG-1-PEG[-9] Lauryl Glycol Ether” and relies on Beck to make up for this deficiency (Final Act. 6-7). FF 11. Beck discloses the “[u]se of UV-filters to stabilize resveratrol in topical cosmetic compositions and to improve the efficacy of topical cosmetic skin whitening compositions containing resveratrol as skin whitening agent” (Beck Abstr.; see Final Act. 6). FF 12. Beck discloses: Resveratrol is reported to be an extremely potent anti-oxidant, a modulator of genetic expression via signal transduction, an inhibitor of inflammatory mediators, to have phytohormonal benefits, and to reduce the synthesis of melanine [sic]. Such Appeal 2021-001940 Application 15/302,796 9 combination of biological functions and its cosmetic effects make resveratrol a unique active ingredient for personal care products. (Beck ¶ 8; see Final Act. 6.) FF 13. Beck discloses a Topical cosmetic composition . . . [that] contains one or more polyols as solvents capable of solubilizing resveratrol. Among the polyols, which are linear and/or branched chain alkyl polyhydroxyl compounds, propylene glycol, sorbitol, butylene glycol, and glycerin are preferred examples. Especially preferred are polymeric polyols such as poly-propylene glycol, polyethylene glycol, and derivatives thereof. Examples of polymeric polyols include: PEG-18, PPG-18, dimethicone, PEG-40 hydrogenated castor oil, PEG-20 stearate, PEG-20 methyl glucose sesquistearate, PEG-120 methyl glucose dioleate, ceteareth-12, coceth-7, PPG-1-PEG-9 lauryl glycol ether, PEG-30 glyceryl stearate, PEG-7 glyceryl cocoate and ethoxyglycol. (Beck ¶ 18 (emphasis added); see Final Act. 6.) FF 14. Beck discloses that its composition may also contain sunscreens (Beck ¶ 21; see Final Act. 6). ANALYSIS Rejection I: As discussed above, Dromigny discloses a cosmetic or pharmaceutical composition that contains a combination of filters comprising (a) a pharmaceutically or cosmetically acceptable excipient; (b) one or more UVA filters, (c) one or more UVB filters and broad spectrum filters, and (d) at least one screen such as methylene bis-benzotriazolyl tetramethylbutyl- phenol (MBBT), tris-biphenyl triazine, or TiO2 (FF 1). Dromigny discloses that suitable UVA filters for its composition include 5,6,5',6'-tetraphenyl- 3,3'-(1,4-Phenylene)bis(1,2,4-Triazine) and diethylamino hydroxyl benzoyl Appeal 2021-001940 Application 15/302,796 10 hexyl benzoate, which are Appellant’s compound having Formula 1 and Appellant’s compound (b5), respectively (FF 2). Dromigny discloses that suitable UVB filters for its composition include BEMT and ethylhexyl triazone (i.e., octyl triazone), which are Appellant’s compounds (b1) and (b4), respectively (FF 3). Thus, we find that, before the effective filing date of Appellant’s claimed invention, it would have been prima facie obvious to those of ordinary skill in this art to prepare a composition comprising: (a) a pharmaceutically or cosmetically acceptable excipient; (b) one or more UVA absorbers, such as 5,6,5',6'-tetraphenyl-3,3'-(1,4-Phenylene)bis(1,2,4- Triazine) and Appellant’s compound (b5) selected from Dromigny’s list of UVA absorbers, and (c) one or more UVB absorbers, such as Appellant’s compounds (b1) and (b4) selected from Dromigny’s list of UVB absorbers (FF 1-5). See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“Disclos[ure of] a multitude of effective combinations does not render any particular formulation less obvious.”); see also Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 335 (1945) (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put into the last opening in a jig-saw puzzle. It is not invention.”). Further, although the combination of Dromigny and PubChem fails to disclose a “particulate [or] micronized form” of 5,6,5',6'-tetraphenyl-3,3'- (1,4-Phenylene)bis(1,2,4-Triazine), Luther discloses that sun screen formulations comprising, micronised insoluble organic UV absorbers, such as triazines, “provide excellent UV protection and have at least as high an Appeal 2021-001940 Application 15/302,796 11 SPF rating as corresponding sunscreen formulations containing a known inorganic UV absorber” and [u]nlike the latter UV absorbers, micronised, insoluble organic UV absorbers show no tendency, under the influence of light, to generate radicals which could damage or sensitise human skin . . . [and that] micronised, insoluble organic UV absorbers which are present in the oil phase of the sun screen formulation surprisingly show a significant improvement in sun protection. (FF 8-9.) Thus, we find that, before the effective filing date of Appellant’s claimed invention, it would have been prima facie obvious to those of ordinary skill in this art to micronize the triazine UVA absorber in Dromigny’s composition, i.e., 5,6,5',6'-tetraphenyl-3,3'-(1,4-Phenylene) bis(1,2,4-Triazine), for the expected benefits disclosed by Luther (see FF 7- 9). For the foregoing reasons, we find no error in Examiner’s conclusion that, before the effective filing date of Appellant’s claimed invention, the combination of Dromigny, PubChem, and Luther, makes obvious Appellant’s claimed invention (Final Act. 5). Claim 23: Appellant’s claim 23 is reproduced above. As discussed above, the combination of Dromigny, PubChem, and Luther makes obvious a composition comprising micronized 5,6,5',6'- tetraphenyl-3,3'-(1,4-Phenylene)bis(1,2,4-Triazine); Appellant’s compounds (b1), (b4), and (b5); and a pharmaceutically or cosmetically acceptable excipient (see FF 1-9). Luther discloses the benefits of micronizing a triazine UV filter, such 5,6,5',6'-tetraphenyl-3,3'-(1,4-Phenylene)bis(1,2,4-Triazine). Therefore, we Appeal 2021-001940 Application 15/302,796 12 are not persuaded by Appellant’s contention that Appellant “[s]urprisingly . . . found that 5,6,5',6'-tetraphenyl-3,3'-(1,4-Phenylene) bis(1,2,4-Triazine) . . . in micronized form has very good properties in sunscreen compositions in combination with other inorganic and/or organic UV filters” (Appeal Br. 9 (citing Spec. 1:19-21); cf. FF 7-9). Luther discloses that a “[s]uitable organic UV absorber may be, e.g., a triazine” (FF 9). We recognize that Luther generically discloses micronized triazines and does not exemplify and/or prefer the specific triazine required by Appellant’s claimed invention. We find, however, that a reference disclosure is not limited only to its preferred embodiments, but is available for all that it discloses and suggests to one of ordinary skill in the art. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976); see also In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971) (Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments.). Therefore, we are not persuaded by Appellant’s contentions regarding Luther’s failure to specifically disclose 5,6,5',6'-tetraphenyl-3,3'- (1,4-Phenylene)bis(1,2,4-Triazine) (see Appeal Br. 11-14; see also id. at 15 (Appellant contends that “Luther is only addressing a specific type of triazine and not all triazines”)). For the same reasons, we are not persuaded by Appellant’s contention that those of ordinary skill in this art would not have appreciated that Luther’s disclosed benefits of micronized triazine UV absorber, would apply equally to the specific triazine UV absorber required by Appellant’s claimed invention (see Appeal Br. 14). We recognize Grumelard’s comparison of a composition comprising a micronized PBDT, a triazine within the scope of Appellant’s claimed invention, to a composition comprising non-micronized PBDT and Appeal 2021-001940 Application 15/302,796 13 conclusion that “micronized PBDT was unexpected[ly] superior than using non-[micronized] PBDT” (see Grumelard Decl.9 ¶¶ 8-17; see also Appeal Br. 14 (Appellant contends that Grumelard’s Declaration supports a conclusion that Appellant “was able to show unexpected results with the micronized PBDT compared to non-micronized PBDT sunscreens,” because “the non-micronized PBDT shows a lower performance than their [micronized] counterpart”); Reply Br. 5-6 (Appellant contends that “Luther would not show that the results are not unexpected and the [A]ppellant again believes that the [Grumelard] Declaration shows unexpected results”)). Because Luther discloses that sunscreens comprising micronized triazine are superior to sunscreens comprising non-micronized triazine, we are not persuaded by Appellant’s contention or Grumelard’s conclusion that the claimed invention exhibits an unexpected result (see Ans.10 7-8). In addition, we agree with Examiner’s finding that Appellant’s declaratory evidence is not commensurate in scope with the subject matter of Appellant’s claim 23 (see id.). In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (In order to be persuasive of non-obviousness, “[e]vidence of secondary considerations must be reasonably commensurate with the scope of the claims.”). Claim 46: Appellant’s claim 46 is reproduced above. For the reasons discussed above, we find no error in Examiner’s conclusion that the combination of Dromigny, PubChem, and Luther makes 9 Declaration of Julie Grumelard, signed March 6, 2019. 10 Examiner’s November 23, 2020, Answer. Appeal 2021-001940 Application 15/302,796 14 obvious a composition within the scope of Appellant’s claim 46, which comprises, inter alia, Appellant’s compounds (b1), (b4), and (b5) (see FF 1- 9; see Reply Br. 4-5 (Appellant “recognizes that the Examiner is correct that the UVA filter and the three UVB filters are disclosed in Dromigny,” but contends that the combination of Dromigny, PubChem, and Luther fails to make obvious the micronization of the specific triazine required by Appellant’s claimed invention)). For the foregoing reasons, we are not persuaded by Appellant’s contention that the combination of prior art relied upon by Examiner does not make obvious the subject matter of Appellant’s claim 46 or that the subject matter of Appellant’s claim 46 exhibits unexpected results (see Appeal Br. 17; see also Reply Br. 5 (Appellant contends that the selection of compounds (b1), (b4), and (b5) would require improper picking and choosing from Dromigny’s list of compounds)). Claim 47: Appellant’s claim 47 is reproduced above. For the reasons discussed above, we find no error in Examiner’s conclusion that the combination of Dromigny, PubChem, and Luther makes obvious a composition within the scope of Appellant’s claim 47, which comprises, inter alia, Appellant’s compounds (b1) and (b4) (see FF 1-9). For the foregoing reasons, we are not persuaded by Appellant’s contention that the combination of prior art relied upon by Examiner does not make obvious the subject matter of Appellant’s claim 47 or that the subject matter of Appellant’s claim 47 exhibits unexpected results (see Appeal Br. 17-18). Appeal 2021-001940 Application 15/302,796 15 Claim 48: Appellant’s claim 48 is reproduced above. For the reasons discussed above, we find no error in Examiner’s conclusion that the combination of Dromigny, PubChem, and Luther makes obvious a composition within the scope of Appellant’s claim 48, which comprises, inter alia, Appellant’s compounds (b1) and (b4) (see FF 1-9). We recognize and agree with Appellant’s contention that “claim 48 . . . is commensurate in scope with Example 25B,” of Appellant’s Specification and the Grumelard Declaration (Appeal Br. 18). Nonetheless, for the reasons discussed above, we are not persuaded by Appellant’s contention that the combination of prior art relied upon by Examiner does not make obvious the subject matter of Appellant’s claim 48 or that the subject matter of Appellant’s claim 48 exhibits unexpected results (see Appeal Br. 18). Rejection II: The composition of Appellant’s claim 25, is reproduced above, depends from and further limits Appellant’s claim 23 to contain a dispersing agent which is PPG-1-PEG-9 Lauryl Glycol Ether. For the reasons discussed above, we find that the combination of Dromigny, PubChem, and Luther makes obvious the subject matter of Appellant’s claim 23 (see FF 1-9). As Examiner explains, the combination of Dromigny, PubChem, and Luther does not suggest a composition comprising PPG-1-PEG-9 Lauryl Glycol Ether (see FF 10). Beck, however, discloses a composition comprising sunscreens and resveratrol (see FF 11- 13). As Beck explains, the “combination of biological functions Appeal 2021-001940 Application 15/302,796 16 and . . . cosmetic effects make[s] resveratrol a unique active ingredient for personal care products” (see FF 11). Thus, before the effective filing date of Appellant’s claimed invention, it would have been prima facie obvious to those of ordinary skill in this art to include resveratrol in the composition made obvious by the combination of Dromigny, PubChem, and Luther to benefit from resveratrol’s biological function and cosmetic effects. Beck further discloses that its composition comprising sunscreens and resveratrol includes a polyol solvent, such as PPG-1-PEG-9 Lauryl Glycol Ether, which is capable of solubilizing resveratrol (FF 13). For the foregoing reasons, we find no error in Examiner’s conclusion that the combination of Dromigny, PubChem, Luther, and Beck would have made obvious the subject matter of Appellant’s claim 25 before the effective filing date of Appellant’s claimed invention (see Final Act. 6-7). Appellant’s claim 25 does not exclude resveratrol, therefore, we are not persuaded by Appellant’s contention that “Beck requires the use of resveratrol,” which “is not related to [A]ppellant’s claimed invention” (Appeal Br. 17). In addition, as discussed above, “[d]isclos[ure of] a multitude of effective combinations does not render any particular formulation less obvious.” Merck, 874 F.2d at 807; see also Sinclair, 325 U.S. at 335 (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put into the last opening in a jig-saw puzzle. It is not invention.”). Therefore, we are not persuaded by Appellant’s contention that the selection of PPG-1-PEG-9 Lauryl Glycol Ether from a list of “17 solvents disclosed” by Beck would not have been prima facie obvious to those of ordinary skill in this art (Appeal Br. 17). Appeal 2021-001940 Application 15/302,796 17 CONCLUSION The preponderance of evidence relied upon by Examiner supports a conclusion of obviousness. Rejection I: The rejection of claims 23, 46, 47, and 48 under 35 U.S.C. § 103 as unpatentable over the combination of Dromigny, PubChem, and Luther is affirmed. Claims 24, 27, and 49 are not separately argued and fall with claim 23. Rejection II: The rejection of claim 25 under 35 U.S.C. § 103 as unpatentable over the combination of Dromigny, PubChem, Luther, and Beck is affirmed. Claim 45 is not separately argued and falls with claim 25. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 23, 24, 27, 46-49 103 Dromigny, PubChem, Luther 23, 24, 27, 46-49 25, 45 103 Dromigny, PubChem, Luther, Beck 25, 45 Overall Outcome 23-25, 27, 45-49 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) (2019). AFFIRMED