Ex Parte SCHULZ et al

Patent Trials and Appeals Board

Mar 22, 2019

14740059 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/740,059 06/15/2015
20480 7590
STEVEN L. NICHOLS
Fabian Vancott
215 S. State Street
SUITE 1200
SALT LAKE CITY, UT 84111
03/26/2019
FIRST NAMED INVENTOR
ALEXANDER SCHULZ
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.
PT033219 5495
EXAMINER
DELCOTTO, GREGORYR
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
03/26/2019 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):
patents@fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER SCHULZ, MICHAEL DREJA,
PETER SCHMIEDEL, and MENGTAO PETE HE 1
Appeal2018-003990
Application 14/740,059
Technology Center 1700
Before ROMULO H. DELMENDO, DONNA M. PRAISS, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 The Appellants are the Applicants, Henkel AG & Co. KGaA and The Dial
Corporation, and the real party in interest is identified as Henkel AG & Co.
KGaA, "a German publicly traded company with a U.S. subsidiary, Henkel
North American Consumer Goods (formerly Dial Corporation)." See App.
Br. 2.
Appeal2018-003990
Application 14/7 40,059
BACKGROUND
The subject matter on appeal relates to surfactant compositions
comprising a flavolipid. E.g., Spec. ,r 1; Claim 1. Claim 1 is reproduced
below from page 28 (Claims Appendix) of the Appeal Brief2:
1. A surfactant composition, comprising:
a flavolipid according to formula (I), or salts thereof,
R( R1
I I N~NYR,
0
0
N~N.JlR,
I I .
()).
in which:
['1
R1 and R2, independently of one another, are selected from:
linear or branched C4---C20 alkyl radicals; linear or branched C4-
C20 alkenyl radicals; and linear or branched C4---C20
hydroxyalkyl radicals; and
R3, ~' Rs and R6, independently of one another, are selected
from hydrogen, hydroxyl, C1---C4 alkyl radicals, C1---C4 alkenyl
radicals, C1---C4 alkoxy radicals, and C1---C4 hydroxyalkyl
radicals; and
an additional surfactant;
wherein the surfactant composition 1s substantially free of
sugars.
2 Formula (I) in claim 1 of the Appeal Brief is blurry and difficult to read.
Formula (I) has been reproduced in this decision from page 3 of the
Specification.
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Application 14/7 40,059
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 1-20 under 35 U.S.C. § 112(a) for failure to comply with
the written description requirement;
2. Claims 1-15 under 35 U.S.C. § 112(b) for indefiniteness;
3. Claims 1-20 under 35 U.S.C. § 103 as unpatentable over Busch
(US 2011/0077187 Al, published Mar. 31, 2011) in view ofBodour (Adria
A. Bodour et al., Structure and Characterization of Flavolipids, a Novel
Class of Bioswfactants Produced by Flavobacterium sp. Strain MTN] 1, 70
APPLIED AND ENVIRONMENTAL MICROBIOLOGY 114 (2004));
4. Claims 1-5, 7, 8, 10, and 12-15 under 35 U.S.C. § 103 as
unpatentable over Gungabissoon (WO 2015/193203 Al, published
Dec. 23, 2015 and claiming priority to an application filed June 19, 2014) in
view of Bodour;
5. Claims 6, 9, 11, and 16-20 under 35 U.S.C. § 103 as unpatentable
over Gungabissoon in view of Bodour and Busch.
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. Accordingly, we affirm the rejections for reasons set forth below,
in the Final Action, and in the Examiner's Answer. See generally Final
Act. 2-11; Ans. 2-14.
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Application 14/7 40,059
Rejection 1
The Examiner determines that the Specification lacks written
description support for the term "substantially free of sugars" in claim 1 and
the term "free of polycyclic sugars" in claims 16 and 20. Ans. 2. All other
claims subject to Rejection 1 include one of those two terms through claim
dependency.
The Appellants argue that those terms have written description
support because the Specification discloses that "[ f]lavolipids according to
formula (I) may also be produced synthetically," and, according to the
Appellants, "[t]he disclosed synthetic pathway does not use sugars." App.
Br. 11. Citing Examples 1-15 of the Specification, the Appellants also
argue that "the disclosed formulations do not include polycyclic sugars." Id.
The Appellants' arguments fail to identify reversible error in the
Examiner's rejection. "[T]he test for [compliance with§ 112, ,r 1] is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date." See Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The mere absence of a positive
recitation is not sufficient basis for exclusion. See Santarus, Inc. v. Par
Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012).
The Appellants have not identified any discussion in the Specification
of sugars, and it appears that the word "sugar" is not present in the
Specification. The Specification discloses both natural and synthetic
methods of synthesizing the disclosed flavolipids. See Spec. ,r,r 24--25.
Neither description says anything about the presence or absence of sugars.
Even assuming the synthetic method does not "use sugars," App. Br. 11, and
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Application 14/7 40,059
even assuming the Appellants accurately characterize the working examples
as lacking sugars, id., as explained above, the mere absence of a positive
recitation is not sufficient basis for exclusion. See Santarus, 694 F.3d at
13 51. "Negative claim limitations," such as those at issue here, "are
adequately supported when the specification describes a reason to exclude
the relevant limitation." Id. Because the Appellants do not identify any
descriptive support indicating possession of a sub-generic composition that
excludes sugars ( and do not even identify any indication in the Specification
that the presence or absence of sugar has any significance at all), we are not
persuaded of reversible error in the Examiner's rejection. See In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's
practice to require an applicant to identify the alleged error in the examiner's
rejections .... ").
Rejection 2
The Examiner determines that the term "substantially free of sugars"
in claim 1 "is a relative term which renders the claim indefinite." Ans. 3.
The Examiner states: "[T]he instant specification provides no definition or
guidance with respect to the term 'substantially free of sugars' and in the
absence of such definition or guidance, one of ordinary skill in the art would
not be able to determine the metes and bounds of the claimed invention." Id.
The Examiner asks: "[D]oes 'substantially free' mean less than 20%, 10%,
5%, 1 %, 0.5%, etc., by weight of sugars? Clarification is required." Id.
The Appellants do not meaningfully dispute the Examiner's
determination that the Specification provides no guidance with respect to the
term "substantially free of sugars"; nor do the Appellants identify any aspect
of the Specification that might inform a person of ordinary skill in the art of
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the scope of that term. See App. Br. 13-14. Instead, the Appellants appear
to argue, essentially, that the term "substantially free" is per se definite
because, e.g., (1) "[t]ens of thousands of issued chemical patents use the
term 'substantially free' in the claims without providing numerical support
in their specification," (2) "the M.P .E.P. recognizes this as a standard
practice," and (3) certain examples in the case law (including cases cited by
the MPEP) determined, in the context of those specific cases, that the term
"substantially" was not indefinite. Id.
Those arguments are not persuasive. The Appellants fail to identify
any aspect of the claim or the written description that might guide a person
of ordinary skill in the art as to the scope of the term "substantially free."
The Appellants do not address the Examiner's question as to what weight
percent is required to meet the claim limitation. The mere fact that the term
"substantially free" may be definite in other, unrelated patents is not
particularly probative of whether it is definite in the claim at issue here, in
view of the accompanying disclosure. Even assuming that a person of
ordinary skill in the art is capable of determining an acceptable amount of
"contaminants" for a particular application, see App. Br. 14, claim 1 is not
limited to any particular application that might be relevant to the scope of
the disputed term. On this record, we are not persuaded of reversible error
in the rejection. See Jung, 637 F.3d at 1365.
Rejection 3
The Appellants generally argue the claims as a group but present
separate arguments for claim 20. We select claim 1 as representative of the
grouped claims, and claims 2-19 will stand or fall with claim 1. We address
claims 1 and 20 below.
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The Examiner's rejection of claim 1 is repeated at pages 3---6 of the
Answer. Of particular relevance to the issues raised by the Appellants, the
Examiner finds that Busch teaches cleaning compositions comprising a
variety of ingredients including, e.g., "surfactants such as anionic, nonionic,
zwitterionic, amphoteric, etc.," and that "other surfactants include ...
biosurfactants." Ans. 3--4. The Examiner acknowledges that Busch does
not specifically teach that the biosurfactant is a flavolipid. Id. at 4.
The Examiner finds that Bodour teaches "biosurfactants which are a
group of natural products of interest for biotechnological and industrial
applications," and that "Bodour teaches the use of flavolipids as
biosurfactants, wherein the flavolipids have the same formula as recited by
the instant claims." Id. The Examiner finds that Bodour teaches a variety of
properties of its flavolipids that would be desirable in cleaning compositions
such as those of Busch. Id. at 4--5 ("ability to solubilize and facilitate
biodegradation, emulsification index"), 11 ("chelating ability of the
flavolipid for metals and the strong surface activity and emulsifying abilities
of flavolipids"). The Examiner determines that it would have been obvious
to use Bodour's flavolipid biosurfactant as the biosurfactant of cleaning
compositions taught or suggested by Busch because Bodour teaches "that
the use of flavolipids are suitable as biosurfactants in a wide variety of
industrial applications which would encompass cleaning compositions." Id.
at 5.
As to the "substantially free of sugars" limitation of claim 1, the
Examiner finds that "the amount of sugars which accompany the flavolipids
as taught by Bodour et al would fall within the scope of' the term. Id.
Alternatively, and also with respect to the term "free of polycyclic sugars"
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limitation in claims 16 and 20, the Examiner finds that a person of ordinary
skill in the art "would be motivated to separate and filter out the
disaccharides from [compounds] which accompany the flavolipids as taught
by Bodour et al before the use of the flavolipids ... to avoid any impurities
which could cause contamination or detract from the overall performance of
the composition." Id.
In view of those and other findings less material to the issues raised in
this case, the Examiner concludes that the subject matter of claims 1-20
would have been obvious to a person of ordinary skill in the art. Id. at 3---6.
The Appellants argue that "[t]he references do not provide any
evidence of the effectiveness of the combination of a flavolipid with
detergent components." App. Br. 16. The Appellants also identify language
in Bodour indicating that different types of flavolipids exist and have
different physicochemical properties. Id. The Appellants also argue that
Bodour's flavolipids require a sugar stabilizer. Id. at 17. In view of those
arguments, the Appellants assert that a person of ordinary skill in the art
would not have had a reasonable expectation of success in achieving the
claimed subject matter in view of the prior art. Id. at 16-18.
Those arguments are not persuasive. The Appellants do not dispute
the Examiner's finding that Busch teaches or suggests cleaning compositions
that may include multiple surfactants, and that Busch discloses the use of a
biosurfactant as a surfactant. Nor do the Appellants dispute that the
flavolipids of Bodour are biosurfactants and were known to be
biosurfactants at the time of the invention. The title of Bodour expressly
defines the disclosed flavolipids as biosurfactants. See Bodour, Title. Thus,
the Examiner's proposed combination is simply the use of a known
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biosurfactant (i.e., Bodour's flavolipid) in an application that teaches or
suggests the use of a biosurfactant (Busch's cleaning compositions).
Alternatively, it is the substitution of Bodour' s known flavolipid
biosurfactant for the biosurfactant of Busch. The use of known elements
according to their established functions, or the substitution of one known
element for another, typically does not result in nonobvious subject matter.
See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007) ("The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results."); see also id. at
416 ("[W]hen a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.").
Even assuming that the Appellants are correct that the structure of
flavolipids varies, and that certain flavolipids have different
physicochemical properties than other flavolipids, see App. Br. 16, that is
unpersuasive of reversible error because obviousness does not require
certainty of success; it requires only a reasonable expectation of success.
PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1198 (Fed. Cir. 2014)
("The reasonable expectation of success requirement for obviousness does
not necessitate an absolute certainty for success."). Busch expressly
identifies biosurfactants as suitable for use in its cleaning compositions.
E.g., Busch ,r 378. Bodour discloses that its flavolipid biosurfactants "will
be of interest for potential use in a wide variety of industrial and
biotechnology applications." Bodour at 119. The Examiner identifies
various properties of Bodour's flavolipid biosurfactants that the Examiner
indicates would be desirable in cleaning compositions. See Ans. 4--5
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("ability to solubilize and facilitate biodegradation, emulsification index"),
11 ("chelating ability of the flavolipid for metals and the strong surface
activity and emulsifying abilities of flavolipids"). The Appellants do not
persuasively dispute the Examiner's findings concerning those properties.
The Examiner's determination that a person of ordinary skill in the art
reasonably would have expected Bodour's flavolipid biosurfactant to work
in Busch's cleaning compositions is supported by the record.
As to the alleged sugar stabilizer in Bodour, see App. Br. 17-18, the
Appellants' argument that a person of ordinary skill in the art would not
have expected Bodour's flavolipids to function without sugars in Busch's
compositions is not supported by evidence. See In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the
place of evidence."). As the Examiner explains, "nothing in Bodour et al
indicates that it is essential to maintain these sugars in admixture with the
flavolipids or that the resultant flavolipids, when used in industrial and/or
biotechnological applications, are used in conjunction with the sugars."
Ans. 12. The Appellants do not identify any portion of Bodour to the
contrary. Thus, even assuming the Appellants are correct that sugars
provide a necessary stabilizing function in certain applications or when used
with certain compounds, see App. Br. 17, there is no evidence of record that
they provide such a function-much less a required function-with
Bodour's flavolipids as combined with Busch.
As to whether the amount of sugars in Bodour's flavolipid would fall
within the scope of the term "substantially free of sugars" as recited by
claim 1, see App. Br. 18, as set forth above, the Examiner finds, inter alia,
that a person of ordinary skill in the art "would [have been] motivated to
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separate and filter out the disaccharides from [compounds] which
accompany the flavolipids as taught by Bodour et al before the use of the
flavolipids ... to avoid any impurities which could cause contamination or
detract from the overall performance of the composition." Id. As explained
above, the Appellants provide no persuasive evidence that stabilizing sugars
would have been required for Bodour's flavolipids to function, and the
Appellants do not persuasively dispute the Examiner's stated motivation to
filter the sugars from the composition. We discern no persuasive reason to
reject the Examiner's finding that a composition from which sugars have
been filtered (i.e., free of sugars) would fall within the scope of the term
"substantially free of sugars."
On this record, we are not persuaded of error in the Examiner's
determination that a person of ordinary skill in the art would have had a
reasonable expectation of success in combining Busch and Bodour to
achieve the subject matter of claim 1. See Jung, 637 F.3d at 1365.
As to claim 20, which additionally requires "an anionic surfactant,"
the Appellants separately argue that "[t]he tendency of anionic surfactants to
react with and precipitate quartemary amines is well known," providing
"additional reasons" that "a person of ordinary skill in the art would not have
a reasonable expectation of success" in combining the prior art as proposed
by the Examiner. See App. Br. 21. That argument is unpersuasive because
the Appellants provide no evidence that a person of ordinary skill in the art
would have expected any precipitation to occur if the proposed combination
were made, much less precipitation in amounts that would have discouraged
a person of ordinary skill from making the combination. See Pearson, 494
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F.2d at 1405. We are not persuaded of reversible error in the Examiner's
rejection of claim 20. See Jung, 637 F.3d at 1365.
Rejections 4 and 5
The Appellants present no separate arguments as to Rejections 4 and 5
and instead rely on the arguments discussed above. Accordingly, we affirm
Rejections 4 and 5 for reasons set forth above.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1-20.
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
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