Ex Parte Perrier et al

Patent Trial and Appeal BoardJul 21, 2014

11174414 (P.T.A.B. Jul. 21, 2014)

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. 11/174,414 07/01/2005 Eric Perrier 17587-00008-US 1146 81283 7590 07/23/2014 Novak Druce Connolly Bove & Quigg LLP P.O. Box 2207 Wilmington, DE 19899-2207 EXAMINER BLAND, LAYLA D ART UNIT PAPER NUMBER 1673 MAIL DATE DELIVERY MODE 07/23/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte ERIC PERRIER, NABIL ABDUL-MALAK, and JULIE SAGET __________ Appeal 2012-003888 Application 11/174,414 Technology Center 1600 __________ Before TONI R. SCHEINER, DONALD E. ADAMS, and JEFFREY N. FREDMAN, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to a cross- linked polymer. The Examiner rejected the claims as obvious and on the ground of nonstatutory obviousness-type double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as BASF Beauty Care Solutions France SAS (see App. Br. 1). Appeal 2012-003888 Application 11/174,414 2 Statement of the Case Background “Cosmetic formulations very often contain substances which enable characteristic tensing effects to be induced . . . these tensing effects enable on the one hand an immediate but temporary reduction to be brought about of the wrinkles and small wrinkles of the skin” (Spec. 1). The Specification teaches that “plant proteins have in particular be[en] widely used for this activity . . . However, the use of proteins in cosmetics becomes problematic since they can induce more or less strong immune reactions” (Spec. 1-2). The Specification teaches “that cross-linked polymers of at least one type of carbohydrate or carbohydrate derivative enabled a tensing and/or toning effect to be obtained of a cutaneous tissue, such as the skin of a human being” (Spec. 3). The Claims Claims 7, 8, and 11 are on appeal. Claim 7 is representative and reads as follows: 7. A cross-linked polymer, other than spheres and capsules, prepared by cross-linking the primary alcohol functional groups of xanthan with sebacic acid dichloride in a homogenous aqueous phase. The issues A. The Examiner rejected claims 7, 8, and 11 under 35 U.S.C. § 103(a) as obvious over Roos2 (Ans. 5-6). 2 Roos et al., US 5,840,338, issued Nov. 24, 1998. Appeal 2012-003888 Application 11/174,414 3 B. The Examiner rejected claims 7, 8, and 11 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-7 of US Patent No. 5,562,9243 (Ans. 6-7). A. 35 U.S.C. § 103(a) over Roos The Examiner finds that: Roos teaches crosslinked polysaccharide polymer gels wherein the polymeric starting material can be xanthan [column 41, lines 5-17] and the crosslinker can be sebacic acid [column 41, lines 52-65] or its acyl chloride derivative [column 6, lines 44-49 and column 42, lines 28-48]. The molecular weight of the polymers is preferably about 75,000 to about 150,000 [column 47, lines 58-59]. The polymers can be included in pharmaceutical compositions such as ointments, creams, or lotions [column 35, lines 23-43] (Ans. 5). The Examiner finds that “Roos does not exemplify xanthan crosslinked with sebacic acid dichloride” (Ans. 5). The Examiner finds it obvious “to prepare xanthan crosslinked with sebacic acid dichloride, and to incorporate the crosslinked product into aqueous compositions. Roos teaches a finite number of polysaccharides which are suitable, and sebacic acid dichloride is a preferred crosslinker” (Ans. 5). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that Roos renders claim 7 obvious? 3 Perrier et al., US 5,562,924, issued Oct. 8, 1996. Appeal 2012-003888 Application 11/174,414 4 Findings of Fact 1. Roos teaches that The materials of the present invention are three-dimensional, permanently crosslinked polymer networks. As defined herein, a “polymer network” is that three-dimensional structure resulting from the crosslinking of polymers. Preferred polymers are chemically-crosslinked. “Chemically crosslinked” means that a multifunctional chemical reagent is added during synthesis which reacts with, and interconnects via covalent bonding, two or more polymer chains. (Roos, col. 37, ll. 16-24). 2. Roos teaches “[p]olymeric starting materials most suitable for the present networks are crosslinkable materials polymerized via peptide bonds, phosphate ester bonds and ether bonds. . . . Exemplary microbial polymers include xanthan” (Roos, col. 41, ll. 6-15). 3. Roos teaches that “[s]pecific crosslinkers will depend upon the polymer but preferred crosslinkers for polysaccharides, especially modified food starches and cellulose ethers, are multifunctional carboxylic acids, such as . . . sebacic acid (decanedioic acid: HOOC(CH2)COOH)” (Roos, col. 41, ll. 53-60). 4. Roos teaches that the “preferred methods use a crosslinker that is an acyl chloride derivative of a multifunctional carboxylic acid selected from the group consisting of . . . sebacic acid” (Roos, col. 6, ll. 45-48). 5. Roos teaches that “[p]referred molecular weights range from about 75,000 to about 150,000” (Roos, col. 47, ll. 58-59). Appeal 2012-003888 Application 11/174,414 5 6. Roos teaches that polymer “networks and biologically active solutes and protectants that are loaded within the network may be used in pharmaceutically-effective amounts” (Roos, col. 35, ll. 23-25). Principles of Law “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. Analysis Roos teaches three dimensional polymer networks formed by adding a chemical crosslinker to polymer chains (FF 1). Roos teaches that one exemplary polymer is xanthan (FF 2) and that a suitable crosslinker is sebacic acid (FF 3). Roos teaches that “preferred methods use a crosslinker that is an acyl chloride derivative of a multifunctional carboxylic acid selected from the group consisting of . . . sebacic acid” (Roos, col. 6, ll. 45- 48; FF 4). Applying the KSR standard of obviousness to the findings of fact, we conclude that the person of ordinary skill would have reasonably selected xanthan polymer as the polymer and the chloride of sebacic acid as the crosslinker for forming Roos’ polymer networks since this combination is merely a “predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417. Appellants contend that “Roos neither teaches nor suggests that xanthan, or any of the disclosed polymer classes or specific polymer Appeal 2012-003888 Application 11/174,414 6 examples, is preferred over any of the others.” (App. Br. 3). Appellants contend that to arrive at the presently claimed cross-linked polymers from the disclosure of Roos, the skilled artisan would, at a minimum, have to (A) first select natural product polymers derived from a living organism, (B) next select natural product polymers of microbial origin, (C) next select xanthan as the polymeric starting material, and (D) then select sebacoyl chloride as the crosslinking agent. (App. Br. 3). Appellants contend that “Roos provides no teaching or suggestion that would motivate the ordinarily skilled artisan to select the particular combination of xanthan and sebacic acid toward the polymer of Appellants’ claimed invention” (Reply Br. 2). We agree that Roos discloses a number of polymers and crosslinkers, but Roos makes plain that the ordinary artisan would have known to combine any one of the disclosed polymers with any one of the disclosed crosslinkers for synthesis of the polymer network compositions (FF 1-6). See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the ‘813 patent discloses a multitude of effective combinations does not render any particular formulation less obvious.”); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of prior art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites of the claims from among ‘thousands’ of compounds”). Conclusion of Law The evidence of record supports the Examiner’s conclusion that Roos renders claim 7 obvious Appeal 2012-003888 Application 11/174,414 7 B. Double Patenting We summarily affirm the obviousness-type double patenting rejection since no arguments were presented. See Manual of Patent Examining Procedure § 1205.02 (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, that ground of rejection will be summarily sustained by the Board.”); See also In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (in which the Board affirmed an uncontested rejection of claims under 35 U.S.C. 112, second paragraph, and on appeal the Federal Circuit affirmed the Board's decision and found that the appellant had waived his right to contest the indefiniteness rejection by not presenting arguments as to error in the rejection on appeal to the Board). SUMMARY In summary, we affirm the rejection of claim 7 under 35 U.S.C. § 103(a) as obvious over Roos. Pursuant to 37 C.F.R. § 41.37(c)(1), we also affirm the rejection of claims 8 and 11 as these claims were not argued separately. We affirm the rejection of claims 7, 8, and 11 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-7 of US Patent No. 5,562,924. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED tc