Ex Parte Dreher et al

Patent Trials and Appeals BoardMar 28, 2019

13640059 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/640,059 11/02/2012 4743 7590 04/01/2019 MARSHALL, GERSTEIN & BORUN LLP 233 SOUTH WACKER DRIVE 6300 WILLIS TOWER CHICAGO, IL 60606-6357 FIRST NAMED INVENTOR Jing Dreher UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 32471/70689 7157 EXAMINER BROWE, DAVID ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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): mgbdocket@marshallip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JING DREHER, ROLAND ETTL, and HOLGER KREUSCH 1 Appeal2018-003728 Application 13/640,059 Technology Center 1600 Before ERIC B. GRIMES, FRANCISCO C. PRATS, and ELIZABETH A. LA VIER, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134 involving claims to a capsule with a core/shell structure, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse and enter a new ground of rejection. STATEMENT OF THE CASE "The encapsulation of active ingredients is undertaken for various reasons .... In the case of encapsulation of organic UV filters for the area of sun protection of the human skin it is ensured through the encapsulation that 1 Appellants identify the Real Party in Interest as BASF SE. Appeal Br. 3. Appeal2018-003728 Application 13/640,059 the contact between human skin and the organic UV filter is reduced or even prevented." Spec. 1: 11-19. Claims 1, 4--7, and 12 are on appeal. Claim 1 is illustrative and reads as follows: 1. A capsule with a core/shell structure, comprising a core which comprises at least one sparingly water- soluble or water-insoluble organic active ingredient selected from an organic UV filter, and a shell which directly surrounds the core, where the shell comprises nanoparticles of a metal oxide or semimetal oxide and these nanoparticles are joined together by at least one further metal oxide or semimetal oxide, where the further metal oxide or semimetal oxide joining the nanoparticles has been formed by hydrolysis and subsequent polycondensation of a water-insoluble or sparingly water-soluble sol-gel precursor, where the capsule comprises no organic surfactants. DISCUSSION The Examiner has rejected all of the claims on appeal under 35 U.S.C. Â§ 103(a) as obvious based on Behan2 and Avnir. 3 Final Action 3. 4 The Examiner finds that Behan discloses capsules comprising a core comprising a liquid UV filter and a shell comprising silica nanoparticles, "wherein the capsules do not necessarily require any organic surfactants." Id. at 3--4. The Examiner finds that Avnir discloses core/shell capsules comprising a UV filter and having "a transparent shell comprising a sol-gel silica matrix 2 US 5,500,223, issued Mar. 19, 1996. 3 US 6,159,453, issued Dec. 12, 2000. 4 Office Action mailed March 2, 2017. 2 Appeal2018-003728 Application 13/640,059 formed by hydrolysis and subsequent polycondensation of metal or semimetal alkoxides." Id. at 4. The Examiner concludes that it would have been obvious "to combine the respective teachings of Behan et al. and A vnir et al., outlined supra, to devise Applicant's presently claimed capsule" because combining "the Behan et al. capsules with the sol-gel process of Avnir et al." would reasonably be expected to yield capsules with the beneficial properties disclosed by A vnir. Id. at 5. Appellants argue that [w]hile the sunscreen-doped sol-gel materials of [Avnir] may be produced by hydrolysis and condensation-polymerization of metal and semi-metal alkoxide monomers, there is no apparent reason or incentive for a person skilled in the art, based on the combined disclosures of the two cited references, to utilize the metal and semimetal alkoxide materials of [ A vnir] together with the aqueous dispersion of silica of [Behan] to form a shell-like structure of silica particles around a hydrophobic material, specifically an organic UV filter. Appeal Br. 14. We reverse the rejection under 35 U.S.C. Â§ 103(a). The Examiner reasons that a person of ordinary skill in the art would have considered it obvious to combine the teachings of Behan and A vnir in order to gain the beneficial effects disclosed by Avnir but, as Appellants point out (Appeal Br. 14 ), A vnir' s product is a homogeneous capsule, not a shell of one material surrounding a core of a different material. See Avnir 4:30-33 ("The preparation of sunscreen-doped sol-gel matrices is simple; direct physical entrapment in the course of the sol-gel polymerization is possible and no reaction with the sunscreen molecule itself is needed."). 3 Appeal2018-003728 Application 13/640,059 "[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Because the Examiner has not persuasively shown that a skilled artisan would have expected to achieve the benefits disclosed by A vnir if Behan's capsules were modified according to A vnir' s teachings, we reverse the rejection under 35 U.S.C. Â§ 103(a). NEW GROUND OF REJECTION Under the provisions of 3 7 C.F .R. Â§ 41. 50(b ), we enter the following new ground of rejection: Claims 1, 4--7, and 12 are rejected under 35 U.S.C. Â§ 102(b) as anticipated by Behan, as evidenced by Prospector. 5 Claim 1, the only independent claim, is reproduced above. The claimed capsules comprise a core of a sparingly water-soluble or water-insoluble organic UV filter. Appellants' Specification states that one such UV filter is Ethylhexyl Methoxycinnamate. Spec. 5:8-12. The composition described in Behan's Example 3 is an emulsion comprising "parsol MCX (ex Givaudan) a sunscreen active." Behan 4:50-54. The INCI name of Parsol MCX is Ethylhexyl Methoxycinnamate. See Prospector, page 1 ("P ARSOLÂ® MCX ... INCI Name: Ethylhexyl Methoxycinnamate"). Thus, Behan's exemplary capsules comprise a core comprising a sparingly water-soluble or water- insoluble organic UV filter. The Parsol MCX of Behan's Example 3 was mixed with a dispersion of" 15 g Ludox HS-40 and 5 g Ludox SM, particle size 7 nm in 60 g de- 5 www.ulprospector.com/en/na/Persona1Care/Detail/473/106671/PARSOL- MCX, last accessed March 25, 2019. 4 Appeal2018-003728 Application 13/640,059 ionised water" to form an aqueous emulsion of Ludox-encapsulated Parsol MCX. Behan 4:50-54. See also id. at 4:55-56 ("[T]he weight ratio of silica to encapsulated material was 1 :2.66."). "Ludox" refers to an aqueous dispersion of silica gel nanoparticles. Spec. 7: 10-11 ("N anoparticles of silica (silica gel) are available for example from Grace under the name LUDOX in the form of aqueous dispersions."). Appellants' Specification states that, as "[ s Jui table metal oxides or semimetal oxides for the nanoparticles," "[p ]articular preference is given to silicon dioxide (Si02), in particular in the form of a silica gel." Id. at 6:31-35. Thus, the core of Behan's exemplary capsules is surrounded by a layer of nanoparticles of a metal oxide or semimetal oxide. Claim 1 also recites that the nanoparticles of the shell "are joined together by at least one further metal oxide or semimetal oxide, where the further metal oxide or semimetal oxide joining the nanoparticles has been formed by hydrolysis and subsequent polycondensation of a water-insoluble or sparingly water-soluble sol-gel precursor." Appellants' Specification states that, as "[t]he further metal oxide or semimetal oxide ... which has been formed by hydrolysis and subsequent polycondensation of a water-insoluble or sparingly water-soluble sol-gel precursor and joins the nanoparticles with one another," "[p]articular preference is given to silicon dioxide (Si02), in particular in the form of a silica gel." Id. at 7:19-25. Appellants' Specification also states that "[p ]articular preference is given to a capsule according to the invention, where the metal oxide or semimetal oxide of the nanoparticles and the metal oxide or semimetal oxide formed by hydrolysis of the water-insoluble or 5 Appeal2018-003728 Application 13/640,059 sparingly water-soluble sol-gel precursor are in each case silicon dioxide, in particular a silica gel." Id. at 7 :27-30 ( emphasis added). Thus, Behan's layer of two kinds of Ludox-silica gel-surrounding the core of Parsol MCX meets the limitations of claim 1 for both the nanoparticles of metal oxide or semimetal oxide and the "further metal oxide or semimetal oxide" that joins the nanoparticles together. Finally, Behan discloses "treatment after emulsification compris[ing] a gelling step." Behan 3:10-11. "[G]elling can be obtained by acidifying the emulsion to a pH value of approximately 8.0 to 5.0, preferably 6.5 to 5.5 by the addition of an acid or by changing the charge state of the silica shell by adding a surfactant or a salt." Id. at 3:19-23 (emphasis added). Behan states that "the gelling step forms or stabilises a shell-like structure of silica particles around individual droplets of the hydrophobic material in the emulsion." Id. at 2:16-18. Behan describes treating the emulsion of its Example 3 by adjusting the pH to 6.0 using 0.5M HCl and allowing the emulsion to stand for 48 hours. Id. at 5:25-27. Thus, Behan describes a composition comprising capsules having a core of Parsol MCX and a gelled layer, or shell, of Ludox (silica gel) directly surrounding the core. The capsules comprise no organic surfactants because they were gelled using hydrochloric acid rather than a surfactant. The capsules described in Behan's Examples 3 and 6 therefore anticipate Appellants' claim 1. Regarding claim 4, the metal oxide or semimetal oxide of the nanoparticles and the metal oxide or semimetal oxide formed by hydrolysis of the water-insoluble or sparingly water-soluble sol-gel precursor of Behan's capsules are in each case silicon dioxide. Cf Spec. 6:31-35 ("silicon dioxide 6 Appeal2018-003728 Application 13/640,059 (Si02), in particular in the form of a silica gel"); id. at 7: 10-11 ("Nanoparticles of silica (silica gel) are available ... under the name LUDOX."). Regarding claim 5, Behan states that the size of the particles produced in its Example 3 "was in the ratio [sic, range] 5-10 Âµm," Behan 4:55, and therefore necessarily within the range recited in claim 5. Regarding claim 6, Behan states that the Ludox nanoparticles of its capsules had a "particle size 7 nm." Id. at 4:51. Regarding claim 7, Behan's exemplary capsules would reasonably be expected to have a shell that is transparent because the shell is made of silica gel (Ludox), and Appellants' Specification states that silica gel is particularly preferred as both of the components of the shell of the claimed capsules (Spec. 7:27-30), and also states that "[t]he shell of the capsules according to the invention is preferably transparent." Id. at 8:21. It is reasonable to expect that the particularly preferred material for the shell (silica gel) would have the preferred property of being transparent, in the absence of evidence to the contrary. Regarding claim 12, the Parsol MCX preparation making up the core of Behan's capsules is a "colorless liquid." Prospector 1. In summary, the capsules described in Behan's Example 3 and Example 6 meet all of the limitations of claims 1, 4--7, and 12, which are therefore rejected under 35 U.S.C. Â§ 102(b) as anticipated. 7 Appeal2018-003728 Application 13/640,059 SUMMARY We reverse the rejection of claims 1, 4--7, and 12 under 35 U.S.C. Â§ 103(a) based on Behan and Avnir. We enter a new ground of rejection of claims 1, 4--7, and 12 under 35 U.S.C. Â§ 102(b) as anticipated by Behan. TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 4I.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard underÂ§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. 8 Appeal2018-003728 Application 13/640,059 Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining ProcedureÂ§ 1214.01. REVERSED; 37 C.F.R. Â§ 4I.50(b) 9 Application/Control No. Applicant(s)/Patent Under Patent Appeal No. Notice of References Cited 13/640,059 2018-003728 Examiner Art Unit 1617 Page 1 of 1 U.S. PATENT DOCUMENTS * Document Number Date Country Code-Number-Kind Code MM-YYYY Name Classification A US- B US- C US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document Number Date Country Code-Number-Kind Code MM-YYYY Country Name Classification N 0 p Q R s T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) u New Evidence (Prospector) V w X *A copy of this reference is not being furnished with this Office action. (See MPEP Â§ 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. 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