L'OREAL

Patent Trials and Appeals Board

May 24, 2021

2020005265 (P.T.A.B. May. 24, 2021)

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.
14/851,352 09/11/2015 Herve Richard 085507-536323 9405
30678 7590 05/24/2021
POLSINELLI PC
(DC OFFICE)
1000 Louisiana Street
Suite 6400
HOUSTON, TX 77002
EXAMINER
BABSON, NICOLE PLOURDE
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
05/24/2021 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 HERVE RICHARD and BENOIT MULLER
____________

Appeal 2020-005265
Application 14/851,352
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
JOHN G. NEW, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims directed to
compositions comprising at least one 2-methylsuccinic acid diester
compounds and at least one lipophilic organic ultraviolet (UV) screening
agent wherein the at least one 2-methylsuccinic acid diester compounds are
present in an amount effective to dissolve the UV screening agent in a liquid
fatty phase and/or improve the solubility of the UV screening agent in the

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies L’Oreal as the Real Party in Interest (Appeal
Br. 2).
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fatty phase. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Background
“Many cosmetic or dermatological products are in various galenical
forms comprising a liquid fatty phase, such as dispersions, oily solutions”
(Spec. 1:24–25). Specific “cosmetic or dermatological agents such as
lipophilic organic screening agents are difficult to dissolve in the oily phase
of these formulations and have a tendency on storage to form crystals or to
precipitate especially in emulsions” (Spec. 1:27–30). “Such phenomena are
undesirable from the point of view of the stability of the formulation and/or
as regards the consumer’s comfort” (Spec. 1:30–36). To solve this
undesirable phenomena, at least one 2-methylsuccinic acid diester
compound of formula (I) (See structure of formula (I) below in claim 1) is
combined in a cosmetically acceptable medium with a lipophilic active agent
and at least one liquid fatty phase in order to dissolve the lipophilic active
agent in the liquid fatty phase and/or to improve the solubility of the
lipophilic active agent in the liquid fatty phase (Spec. 1:12–17; 3:11–16).

Claims
Claims 1–6, 11–13, and 21–30 are on appeal, and can be found in the
Claims Appendix of the Appeal Brief (Appeal Br. 30–35). Claim 1 is
representative of the claims on appeal, and reads as follows:
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1. A composition comprising, in a cosmetically acceptable
medium, at least one liquid fatty phase, characterized in that it
contains at least one 2–methylsuccinic acid diester compound
of formula (I) and/or an optical isomer and/or solvate thereof of
formula (I) below:

in which:
R1 and R2, which may be identical or different, denote a
linear or branched C1-C20 alkyl radical or a C5-C6 cycloalkyl
radical optionally substituted with C1-C3 alkyl radicals, R1 and
R2 not simultaneously denoting a methyl radical, and at least
one lipophilic active agent wherein the at least one lipophilic
active agent is at least one lipophilic organic UV screening
agent, wherein said at least one 2-methylsuccinic acid diester
compound of formula (I) and/or an optical isomer and/or
solvate thereof of formula (I) is present in an amount effective
to dissolve the active agent in the liquid phase and/or to
improve the solubility of the active agent in the fatty phase.
Claim 2 is directed to specific claimed structures that are pertinent to
the rejections on appeal, and reads in relevant part as follows:
2. The composition according to Claim 1, in which the
compound of formula (I) is chosen from compounds (a) to (ab)
below:

[hereinafter claimed compound (w)]. . . .
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[hereinafter claimed compound (z)]. . . .

The Rejections
A. The Examiner rejected claims 1–6, 11–13, and 25–27 under 35 U.S.C.
§ 103(a) as being unpatentable over Kaplan2 (Final Act. 3–4).
B. The Examiner rejected claims 1–6, 11–13, 21–24, and 30 under 35
U.S.C. § 103(a) as being unpatentable over Baba3 (Final Act. 4–6).
C. The Examiner rejected claims 1–6, 11–13, and 21–30 under 35 U.S.C.
§ 103(a) as being unpatentable over Luther4 (Final Act. 6–7).

Principle of Law
To establish obviousness, the Examiner must identify some reason
that would have led a person of ordinary skill in the art to modify a known
compound. Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d
1350, 1357 (Fed. Cir. 2007). Generally, an obviousness inquiry concerning
such “known compounds” focuses on the identity of a “lead compound.”
Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1359 (Fed. Cir.
2008).

2 Kaplan et al., US 4,940,574, issued Jul. 10, 1990.
3 Baba et al., US 5,849,272, issued Dec. 15, 1998.
4 Luther et al., WO 97/03642 A1, published Feb. 6, 1997.
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A. Obviousness over Kaplan
The Examiner finds that Kaplan teaches compositions comprising a
volatile oil, an emollient and a lipophilic organic UV screening agent where
a preferred emollient is decyl succinate. The Examiner acknowledges that
Kaplan does not exemplify a claimed compound of formula (I). (Final Act.
3) (citing Kaplan, abstr., 4:53–55). However, the Examiner reasons that
since decyl succinate is an adjacent homolog of claimed compound (z), an
ordinary skilled artisan would expect the two compounds to have similar
solubilizing and solvent properties. (Id.)
Does the preponderance of the evidence of record support the
Examiner’s conclusion that Kaplan renders obvious the composition as
recited in claim 1?
Findings of Fact
FF1. Kaplan teaches non-aqueous sunscreen oils having a high SPF
value and containing a volatile oil, an emollient containing esters of straight
and branched chain C10-C16 alcohols and C4-C20 mono- or dicarboxylic
acids, and an effective amount of sunscreening agents of at least two UV-B
type sunscreens and at least one UV-A type sunscreen (i.e., lipophilic active
agents). (See Kaplan, abstr.; Final Act. 3).
FF2. The Examiner finds that a preferred emollient is decyl succinate
(Final Act. 3 (citing Kaplan 4:53–55)).
FF3. The Examiner acknowledges that decyl succinate taught by
Kaplan is distinguishable from claimed compound (z) because it lacks a
methyl group on the alkylene bridge. (Final Act. 3). The Examiner finds
that decyl succinate is structurally similar as an adjacent homolog to claimed
compound (z). (Id.)
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FF4. Kaplan teaches UV-screening agents comprise para-
aminobenzoates, cinnamic derivatives, alkyl esters of para-
methoxycinnamate, esters of salicylic acid, and benzophenone derivatives,
among others. (See Kaplan 5:7–34, Examples 1 and 2 (Part A)); Final Act.
4).
FF5. Kaplan does not require 4-tert-butyl-
4′methoxydibenzoylmethane as a sunscreen agent (See Kaplan, 5:7–34;
Examples; Final Act. 4).
Analysis
The Examiner arrives at the selection of decyl succinate in Kaplan as
the base compound for making modifications based on the structural
similarity to the claimed compound (z), recognizing that decyl succinate is
an adjacent homolog of the claimed compound (z) (Ans. 3 (citing In re
Wilder, 563 F.2d 457, (CCPA 1977)(MPEP 2144.09.11))5; FF3) . The
Examiner explains that since the decyl succinate and claimed compound (z)
are structurally similar, an ordinary skilled artisan would expect the two
compounds to have similar properties. (Id.) “Obviousness may be based
solely upon structural similarity (an established structural relationship
between a prior art compound and the claimed compound, as with
homologs).” (Ans. 4).
Appellant contends that Kaplan does not teach or suggest the 2-
methylsuccinic acid diester derivatives as instantly claimed. (Appeal Br.
11). Appellant asserts that decyl succinate in Kaplan is not for dissolving an

5 Examiner also relies on In re Deuel, 51 F.3d 1552, 1559 (Fed. Cir. 1995)
and In re Gyurik, 596 F.2d 1012, 1018 (CCPA 1979).
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active agent in a liquid fatty phase and/or for improving the solubility of an
active agent in a fatty phase. (Id.) Rather, decyl succinate is described as an
emollient. (Id.) Therefore, Appellant argues that an ordinary skilled artisan
faced with improving the solubility of active agents in a compositions fatty
phase would not turn to Kaplan’s emollients to solve such problem. (Id.)
Appellant also contends that decyl succinate is one possible
compound out of an extremely large and diverse listing of possibilities. (Id.)
Appellant points out that Kaplan utilizes Lipovol MOS-70, which is a
mixture of tridecyl trimellitate and tridecyl stearate or a mixture of tridecyl
trimellitate, tridecyl stearate, neopentyl glycol dicarprylate and neopentyl
dicaprate, as the emollient in the examples. (Id. at 13). Therefore, since
Lipovol MOS-70 is exemplified by Kaplan, an ordinary skilled artisan
would not be led to select decyl succinate as the lead compound and then
choose to modify it. (Id. at 14). Moreover, no prior art has been cited that
would have led or motivated an ordinary skilled artisan to modify the decyl
succinate to arrive at claimed compound (z). (Id). Thus, Appellant argues
that the Office has not established a prima facie case of obviousness. (Id).
Given the present facts, we find that Appellant has the better position.
Whether a lead compound and a claimed compound have a sufficiently close
relationship frequently turns on their “structural similarities and
differences.” Daiichi Sankyo Co., Ltd. v. Matrix Labs., Ltd., 619 F.3d 1346,
1352 (Fed. Cir. 2010). We agree with the Examiner that decyl succinate is
structurally close to claimed compound (z). Structural similarity alone may
be sufficient to establish a motivation to make modifications in some
instances. However,
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[a] prima facie case of obviousness in the chemical arts is often
based on a known compound, called a ‘lead compound,’ which
serves as a starting point for a person of ordinary skill
developing the claimed invention. Such a lead compound then
provides a basis to show “structural similarities” between the
prior art and the claimed lead compound.

Unigene Laboratories Inc. v. Apotex Inc., 655 F.3d 1352, 1361 (Fed. Cir.
2011) (citing Eisai Co. Ltd. v. Dr. Reddy's Labs., 533 F.3d 1353, 1357 (Fed.
Cir. 2008)). “A lead compound needs to be “a natural choice for further
development efforts.” Altana Pharma AG v. Teva Pharms. USA, Inc., 566
F.3d 999, 1008 (Fed. Cir. 2009). Although Kaplan teaches several preferred
emollients including decyl succinate, Kaplan specifically utilizes Lipovol
MOS-70 in Examples 1-2. The Examiner does not articulate why one of
skill in the art would have selected decyl succinate based on Kaplan’s
teaching that it is one in a group of emollients. As such, we agree with
Appellant that an ordinary skilled artisan would not be led to select decyl
succinate as the lead compound. Rather, based on the teachings of Kapalan
an ordinary skilled artisan would select Lipovol MOS-70 as the lead
compound. Lipovol MOS-70 is not structurally similar to a claimed
compound of formula (I). The Examiner provides no other persuasive
reason to modify Lipovol MOS-70 to arrive at a claimed compound of
formula (I) or to select decyl succinate instead of Lipovol MOS-70.
For the reasons discussed above, we agree with Appellant’s position
that the Examiner has not persuasively shown that there would have been a
reason to choose decyl succinate as the starting point for making
modifications to arrive at the presently claimed structure of formula (I).
Because we find that a prima facie case of obviousness has not be made, an
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examination of Appellant’s alleged unexpected results discussed in the
Marat and Brossat Declarations is unnecessary. We find that the
preponderance of the evidence does not support the Examiner’s position and,
therefore, we reverse the rejection of claim 1 on appeal.
The rejection claims 2–6, 11–13, and 25–27 relies upon the
underlying obviousness rejection of claim 1 based on Kaplan. Having
reversed the rejection of claim 1, we necessarily reverse these obviousness
rejections as well.

B. Obviousness over Baba
The Examiner finds that Baba teaches compositions comprising 4-tert-
butyl-4′-methoxydibenzoylmethane as a lipophilic organic UV-screening
agent and a diester compound of Formula (I) where the most preferred
diester compound is dioctyl succinate. (Final Act. 4–5 (citing Baba, abstr.,
1:13–17, 3:9–23, Examples, Claim 1)). Examiner recognizes that Baba does
not exemplify a claimed compound of formula (I). (Final Act. 5). However,
the Examiner reasons that since dioctyl succinate is an adjacent homolog of
claimed compound (w) capable of dissolving 4-tert-butyl-4′-
methoxydibenzoylmethane, an ordinary skilled artisan would expect the two
compounds to have similar solubilizing and solvent properties. (Id.).
Does the preponderance of the evidence of record support the
Examiner’s conclusion that Baba renders obvious the composition as recited
in claim 1?

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Findings of Fact
FF6. Baba teaches compositions comprising 4-tert-butyl-4′-
methoxydibenzoylmethane as a lipophilic organic UV-screening agent and a
diester according to Formula (I). (See Baba, abstr., 1:13–17; Final Act. 4).
FF7. Baba teaches that the diester according to Formula (I) is capable
of dissolving the 4-tert-butyl-4′-methoxydibenzoylmethane. (See Baba,
abstr.; 1:13–17; Final Act. 4).
FF8. The Examiner finds that the most preferred diester is dioctyl
succinate (Final Act. 4 (citing Baba 3:9–23, Examples, Claim 1)).
FF9. The Examiner finds that dioctyl succinate taught by Baba is
distinguishable from claimed compound (w) in that dioctyl succinate lacks a
methyl group on the alkylene bridge. (Final Act. 5). The Examiner finds
that dioctyl succinate is structurally similar as an adjacent homolog to
claimed compound (w). (Id.)
FF10. Baba teaches a composition which contains 4-tert-butyl-4′-
methoxydibenzoylmethane, which is a hardly soluble UV-A absorber, can be
stably compounded even in a high concentration in it and which is free from
oily and sticky feel, yields a refreshing feel of use, exhibits a high safety,
and has an excellent protecting effect against UV rays. (See Baba, 1:65 to
2:14; Final Act. 5–6).
FF11. In Experiment 1, Baba teaches that 4-tert-butyl-4′-
methoxydibenzoylmethane is dissolved in dioctyl succinate before being
mixed with the aqueous phase to form an emulsion. (See Baba 8:42 to 9:46;
Ans. 7).
FF12. Baba teaches mixing dioctyl succinate in an oil phase with the
UV–screening agents without the presence of solvents and describes the
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mixture as smooth and stable. (See Baba 8:42 to 10:61 (Experiment 1
(Sample No. 1-2), Experiment 2 (Sample No. 2-6, 2-7, 2-8))
Analysis
The Examiner finds that Baba teaches a UV sunscreen and diester
compound of formula (I) capable of dissolving the 4-tert-butyl-4′-
methoxydibenzoylmethane sunscreen. (Final Act. 4; FF6–FF7). The
Examiner arrives at the selection of dioctyl succinate in Baba as the base
compound for making modifications based on the structural similarity to the
claimed compound (w), recognizing that dioctyl succinate is an adjacent
homolog of the claimed compound (z) (Ans. 3; see id. at 6 (citing In re
Wilder, 563 F.2d at 452 and (MPEP 2144.09.11)6; FF9). The Examiner
explains that since the dioctyl succinate and claimed compound (w) are
structurally similar where Baba demonstrates that 4-tert-butyl-4′-
methoxydibenzoylmethane dissolves in dioctyl succinate before being mixed
with the aqueous phase to form an emulsion, an ordinary skilled artisan
would expect the two compounds to have similar properties. (Ans. 6–7).
“Obviousness may be based solely upon structural similarity (an established
structural relationship between a prior art compound and the claimed
compound, as with homologs.” (Ans. 6).
Appellant contends that Baba does not teach, disclose, or suggest the
2-methylsuccinic acid diester derivatives as instantly claimed. (Appeal Br.
16). Further, Appellant asserts that Baba fails to teach or suggest a need to
modify dioctyl succinate in order to arrive at the present invention. (Id.)

6 Examiner also relies on In re Deuel, 51 F.3d at 1559 and In re Gyurik, 596
F.2d at 1018.
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Thus, Appellant argues that an ordinary skilled artisan would not be
motivated to modify dioctyl succinate because the cited art fails to recognize
a need to modify the dioctyl succinate. (Id.)
Appellant also contends that Baba teaches numerous compounds that
are diesters of Formula (I). (Appeal Br. 16) As such, Appellant asserts that
in light of the numerous number of compounds taught by Baba, there is a
lack of need or motivation for an ordinary skilled artisan to modify any of
the diesters including the dioctyl succinate. (Id.) Rather, Appellant
contends that it would be counterintuitive to modify the diesters since Baba
performed diligent studies demonstrating that a specific diester improves
solubility of 4-tert-butyl-4′-methoxydibenzoylmethane. (Id. at 17).
Appellant further argues that Baba was well aware of the use of branched
chains as wells as straight chains, where appropriate, and fails to suggest the
specific branching required by the present invention. (Id.)
Additionally, Appellant contends that the Marat7 and Brossat8
Declarations demonstrate the poor solubilization properties of dioctyl
succinate and the surprising and unexpected results achieved by compounds
of the present invention. (Appeal Br. 21). Specifically, Appellant asserts
that the Marat Declaration demonstrates that claimed compounds (s) and
(w), which only differ in chain length from each other, results in improved
solubility of four lipophilic organic UV screening agents when comparing to
didecyl succinate. (Id.) As such, Appellant argues that the unexpected

7 Declaration under 37 C.F.R. 1.132 by Xavier Marat submitted December
17, 2015.
8 Declaration under 37 C.F.R. 1.132 by Maude Brossat signed April 23,
2015.
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results between claimed compounds (s) and (w) compared to didecyl
succinate are due to the additional methyl group thereby amounting to a
difference in kind. (Id.)
Appellant further contends that the Brossat Declaration compares
solubilization properties of compounds of the present invention, e.g.,
claimed compound (w) and claimed compound (b), with prior compounds,
e.g., dioctyl succinate and diethyl succinate, where the only structural
difference between the present compounds and prior compounds is the
presence of the methyl group on the bridge. (Appeal Br. 21) Appellant
asserts that the Brossat Declaration explicitly confirms that the experimental
data in the Table demonstrate that the unexpected results of improving
solubility of an active agent in a fatty phase obtained can reasonably be
extended to the scope of the compositions as recited in present claim 1 when
compared to prior compounds including dioctyl succinate. (Id. at 22 and
24).
We are not persuaded. We agree with the Examiner’s factual findings
and conclusion, as set out in the Final Action and Answer which we adopt
and incorporate herein by reference. Furthermore,
[T]he cases establish that if an examiner considers that he has
found prior art close enough to the claimed invention to give
one skilled in the relevant chemical art the motivation to make
close relatives (homologs, analogs, isomers, etc.) of the prior art
compound(s), then there arises what has been called a
presumption of obviousness or a prima facie case of
obviousness.
In re Dillon, 919 F.2d 688, 696 (1990) (citing In re Henze, 181 F.2d 196
(CCPA 1950); In re Hass, 141 F.2d 122, 127, 130 (CCPA 1944)). Baba
teaches compositions comprising 4-tert-butyl-4′-methoxydibenzoylmethane
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as a lipophilic active agent and a diester according to Formula (I) where the
most preferred diester is dioctyl succinate. (FF6, FF8, FF12). The only
difference between claimed compound (w) and dioctyl succinate taught by
Baba is a methyl group on the alkylene bridge. (FF9). We, therefore, agree
with the Examiner that dioctyl succinate is structurally similar as an adjacent
homolog of claimed compound (w) where an ordinary skilled artisan would
expect the two compounds to have similar solubilizing and solvent
properties. (Final Act. 5; FF9). Baba further demonstrates in Experiment 19
that 4-tert-butyl-4′-methoxydibenzoylmethane is dissolved in dioctyl
succinate before being mixed with the aqueous phase to form an emulsion.
(FF11). Such teaching in Baba further supports a prima facie case of
obviousness because Baba expressly demonstrates that dioctyl succinate
functions in a similar manner as claimed compound (w).
Moreover, as stated supra, whether a lead compound and a claimed
compound have a sufficiently close relationship frequently turns on their
“structural similarities and differences.” Daiichi Sankyo Co., 619 F.3d at
1352. Structural similarity alone may be sufficient to establish a motivation
to make modifications in some instances. Furthermore as stated supra,
[a] prima facie case of obviousness in the chemical arts is often
based on a known compound, called a ‘lead compound,’ which
serves as a starting point for a person of ordinary skill
developing the claimed invention. Such a lead compound then
provides a basis to show “structural similarities” between the
prior art and the claimed lead compound.

9 In Experiment 2, Baba only mixes 4-tert-butyl-4′-
methoxydibenzoylmethane as a lipophilic active agent with dioctyl succinate
a diester. (FF12).
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Unigene, 655 F.3d at 1361 (citing Eisai, 533 F.3d at 1357). “A lead
compound needs to be “a natural choice for further development efforts.”
Altana Pharma, 566 F.3d at 1008. Here, although Baba teaches several
diester compounds of Formula (I), Baba specifically utilizes dioctyl
succinate in Experiments 1–3. As such, we agree with the Examiner that an
ordinary skilled artisan would have had a reason to select dioctyl succinate
as the lead compound. Therefore, we agree with the Examiner that an
ordinary skilled artisan would expect claimed compound (w) to exhibit
similar solubilizing and solvent properties to those demonstrated by Baba for
dioctyl succinate.
Regarding Appellant’s argument for unexpected results, we are not
persuaded. We note that the dioctyl succinate compound of Baba is not
examined in the Marat Declaration. As such, our focus will be on the data
provided in the Brossat Declaration. We acknowledge that the only
structural difference between claimed compound (w) and dioctyl succinate
and between claimed compound (b) and diethyl succinate is the presence of
a methyl group on the alkylene bridge. However, we find that the data
provided in the Table in paragraph 6 of the Brossat Declaration does not
demonstrate that the claimed compounds exhibit unexpected results.
Moreover, the data does not demonstrate that the methyl group in the
alkylene bridge of the claimed compounds is critical for the claimed
compounds to exhibit the alleged unexpected results of improved solubility
of an active agent in a fatty phase. Rather, when comparing claimed
compound (w) to dioctyl succinate, the data is so close that an ordinary
skilled artisan would expect the two compounds to have the same properties.
A prima facie case of obviousness exists where the claimed ranges and prior
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art ranges do not overlap but are close enough that one skilled in the art
would have expected them to have the same properties. Titanium Metal
Corp. of America v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985). For
example, the solubilization test demonstrates that > 20% of filter 1 is
dissolved in claimed compound (w) compared to that of < 20% in dioctyl
succinate. (Brossat Dec., paragraph 6). Appellant has not directed us to any
evidence that establishes statistical significance between the tested
compositions, other than the Declarant’s conclusory statement that the
results in the Table show surprising and unexpected results for improving
solubility of an active agent in a fatty phase and can be extended to the scope
of the compositions as claimed, to support that the solubilization value for
claimed compound (w) exhibits improved solubility when compared to
dioctyl succinate. This is especially true given that Baba expressly
demonstrates that a lipophilic organic UV screening agent dissolves in
dioctyl succinate in Experiments 1 and 2. (See FF12).
Further, the data depicted in the Table in paragraph 6 of the Brossat
Declaration, appears to indicate that the alleged unexpected results of
improved solubility is dependent upon which lipophilic organic UV
screening agent is tested. For example, the solubilization test demonstrates
that > 40% of filters 4 and 5 are dissolved in claimed compound (b) and
diethyl succinate. (Brossat Dec. ¶ 6). Such data contradicts Appellant’s
arguments that the data demonstrates the criticality of the methyl group and
that the data can be extended to the scope of the compositions as recited in
the claimed invention. We, therefore, are not persuaded that the claimed
compositions exhibit unexpected results when compared to the compositions
taught by Baba.
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For the reasons discussed above, we agree with the Examiner’s
conclusion. Appellant has not persuasively shown that the methyl group on
the alkylene bridge is critical in establishing unexpected results of improving
solubility of a lipophilic organic UV screening agent. Thus, we conclude
that the preponderance of the evidence does support the Examiner’s position
and therefore affirm the rejection on appeal.
Appellant presents separate arguments with respect to claims 5 and
11–13. (See Appeal Br. 17–18). Appellant contends that the oil phase of the
composition of Sample 1–2 in Table 1 is mixed with the aqueous phase that
includes organic solvents, i.e., propylene glycol and ethanol. (Appeal Br.
18.) Appellant further notes that it is the mixture (i.e., lotion) that is referred
to by Baba as smooth and stable and not merely the oil phase. (Id.)
The Examiner finds that Baba’s Sample 1–2 teaches the use of dioctyl
succinate in a phase with the UV–screening agents without the presence of
solvents and describes the mixture in these sample as smooth and stable.
(Final Act. 6) (citing Baba, Sample 1–2 in Table 1). The Examiner, then,
reasons that Sample 1–2 reads on the limitation “the sole solvent for the at
least one lipophilic active agent” as recited in claims 5 and 11–13.
We are not persuaded by Appellant’s contention. We acknowledge
that Sample 1–2 in Table 1 of Baba contains an oil phase comprising dioctyl
succinate as the sole solvent and a water phase comprising propylene glycol
and ethanol as solvents that are mixed together to form a lotion, which is
smooth and stable resulting in no deposition of crystal of 4-tert-butyl-4′-
methoxydibenzoylmethane. (Baba 9:61–66 (Table 1)). However, Baba also
examined in Experiment 2 the amount of diester needed to stabilize 4-tert-
butyl-4′-methoxydibenzoylmethane. (Baba 10:11–20). Specifically, Table 3
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demonstrates that the amount of dioctyl succinate needed to achieve no
crystallization of 4-tert-butyl-4′-methoxydibenzoylmethane over time is at
least one third the amount of 4-tert-butyl-4′-methoxydibenzoylmethane.
(Baba 10: 48–54 (Samples 2–6 to 2–8); FF12). Thus, Samples 2–6 to 2–8
contain dioctyl succinate as the sole solvent for the lipophilic active agent
that demonstrate a stable composition over time. (Baba 10:48–54).
Therefore, when reading Baba as a whole, Baba teaches all limitations as
recited in claims 5 and 11–13.
For the reasons discussed above, we find that the preponderance of the
evidence of record supports the Examiner’s conclusion that the claims 1, 5,
and 11–13 are obvious over Baba. Claims 1–4, 6, 21–24, and 30 were not
separately argued and fall with claim 1. Accordingly, we affirm the
rejection on appeal.

C. Obviousness over Luther
The Examiner recognizes that Luther teaches cosmetic compositions
comprising triazine UV absorbers of formula (I) as a lipophilic organic UV-
screening agent and a solvent where the solvent is a C1-C8 alkyl ester of a
(hydroxy)polycarboxylic acid including dioctyl succinate. (Final Act. 6)
(citing Luther, abstr., 1–11 (structures), Example 10). The Examiner
acknowledges that Luther does not exemplify a claimed compound of
formula (I). (Final Act. 6). However, the Examiner reasons that since
dioctyl succinate is an adjacent homolog of claimed compound (w) capable
of dissolving a triazine derivative, an ordinary skilled artisan would expect
the two compounds to have similar solubilizing and solvent properties. (Id.
at 7).
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Does the preponderance of the evidence of record support the
Examiner’s conclusion that Luther renders obvious the composition as
recited in claim 1?
Findings of Fact
FF13. Luther teaches compositions comprising triazine UV absorbers
of formula (I) as a lipophilic organic UV-screening agent and solvent. (See
Luther, abstr., 1–11 (structures), Example 10; Final Act. 6).
FF14. Luther teaches that the solvent is a C1–C8 alkyl ester of a
(hydroxyl)polycarboxylic acid including dioctyl succinate. (See Luther, 11,
Example 10; Final Act. 6).
FF15. The Examiner finds that utilizing dioctyl succinate as the
solvent resulted in a stable emulsion. (Final Act. 6 (citing Luther, Examples
4 and 10)).
FF16. The Examiner acknowledges that dioctyl succinate taught by
Luther is distinguishable from claimed compound (w) because it lacks a
methyl group on the alkylene bridge. (Final Act. 6–7). The Examiner finds
that dioctyl succinate is structurally similar as an adjacent homolog to
claimed compound (w). (Id.)
FF17. Luther teaches a composition in which a triazine derivative is
formulated with dioctyl succinate in solution, which remains stable for at
least 3 months with no crystallization of the compound of formula (I), even
when the solutions are seeded with crystals of the compounds of formula (I).
(See Luther, 11; Final Act. 7).
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Analysis
The Examiner arrives at the selection of dioctyl succinate in Luther as
the base compound for making modifications based on the structural
similarity to the claimed compound (w), recognizing that dioctyl succinate is
an adjacent homolog of the claimed compound (z) (Ans. 7–8 (citing In re
Wilder, 563 F.2d 457 and (MPEP 2144.09.11)10, FF16). The Examiner
explains that since the dioctyl succinate and claimed compound (w) are
structurally similar where Luther demonstrates that a triazine derivative
compound of formula (I) remains stable in solution or emulsion in dioctyl
succinate, an ordinary skilled artisan would expect the two compounds to
have similar properties. (Ans. 8). “Obviousness may be based solely upon
structural similarity (an established structural relationship between a prior art
compound and the claimed compound, as with homologs.” (Id.).
Appellant contends that Luther does not teach, disclose, or suggest the
2-methylsuccinic acid diester derivatives as instantly claimed. (Appeal Br.
18). Further, Appellant asserts that Luther fails to teach or suggest a need to
modify dioctyl succinate in order to arrive at the present invention. (Id.)
Thus, Appellant argues that an ordinary skilled artisan would not be
motivated to modify dioctyl succinate because the cited art fails to recognize
a need to modify the dioctyl succinate. (Id.)
Appellant also contends that Luther teaches numerous compounds that
are suitable diesters where dioctyl succinate is not a preferred solvent.
(Appeal Br. 19–20). Appellant points out that Luther prefers esters of citric
acid such as triethyl citrate, acetyl triethyl citrate, acetyl tri-n-butyl citrate,

10 Examiner also relies on In re Deuel, 51 F.3d at 1559 and In re Gyurik, 596
F.2d at 1018.
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acetyl tri-n-hexyl citrate, n-butyryl tri-n-hexyl citrate, and especially tri-
butyl citrate as the solvent. (Id. at 20). Therefore, since an ester of citric
acid is the preferred solvent by Luther, an ordinary skilled artisan would not
be led to select dioctyl succinate as the lead compound and then choose to
modify it. (Id.) Thus, Appellant argues that the Office has not established a
prima facie case of obviousness. (Id.)
Additionally, as discussed supra in section B, Appellant contends that
the Marat and Brossat Declarations demonstrate the poor solubilization
properties of dioctyl succinate and the surprising and unexpected results
achieved by compounds of the present invention. (Appeal Br. 21).
Specifically, Appellant asserts that the Marat Declaration demonstrates that
claimed compounds (s) and (w), which only differ in chain length from each
other, results in improved solubility of four lipophilic organic UV screening
agents when comparing to didecyl succinate. (Id.) As such, Appellant
argues that the unexpected results between claimed compounds (s) and (w)
compared to didecyl succinate are due to the additional methyl group
thereby amounting to a difference in kind. (Id.)
Appellant further contends that the Brossat Declaration compares
solubilization properties of compounds of the present invention, e.g.,
claimed compound (w) and claimed compound (b), with prior compounds,
e.g., dioctyl succinate and diethyl succinate, where the only structural
difference between the present compounds and prior compounds is the
presence of the methyl group on the bridge. (Appeal Br. 21) Appellant
asserts that the Brossat Declaration explicitly confirms that the experimental
data in the Table demonstrate that the unexpected results of improving
solubility of an active agent in a fatty phase obtained can reasonably be
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extended to the scope of the compositions as recited in present claim 1 when
compared to prior compounds including dioctyl succinate. (Id. at 22 and
24).
We are not persuaded. We agree with the Examiner’s factual findings
and conclusion, as set out in the Final Action and Answer which we adopt
and incorporate herein by reference. Furthermore,
[T]he cases establish that if an examiner considers that he has
found prior art close enough to the claimed invention to give
one skilled in the relevant chemical art the motivation to make
close relatives (homologs, analogs, isomers, etc.) of the prior art
compound(s), then there arises what has been called a
presumption of obviousness or a prima facie case of
obviousness.
In re Dillon, 919 F.2d at 696 (citing In re Henze, 181 F.2d 196; In re Hass,
141 F.2d at 127, 130). Luther teaches compositions comprising triazine UV
absorbers of formula (I) as a lipophilic organic UV-screening agent and a
solvent where the solvent encompasses dioctyl succinate. (FF13–FF14).
The only difference between claimed compound (w) and dioctyl succinate
taught by Luther is a methyl group on the alkylene bridge. (FF16). We,
therefore, agree with the Examiner that dioctyl succinate is structurally
similar as an adjacent homolog of claimed compound (w) where an ordinary
skilled artisan would expect the two compounds to have similar solubilizing
and solvent properties. (Final Act. 6–7; FF16). Luther further demonstrates
in Example 10 that a triazine compound remains in solution with dioctyl
succinate and remains stable for at least 3 months with no crystallization of
the compound of formula (I). (FF17). Such teaching in Luther further
supports a prima facie case of obviousness because Luther expressly
demonstrates that dioctyl succinate functions in a similar manner as claimed
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compound (w). In fact, Appellant acknowledges that the teachings of Luther
relate to sunscreen compositions where triazine UV absorbers of formula (I)
are dissolved in specific types of cosmetic oil solvents including an alkyl
ester of a (hydroxy)polycarboxylic acid . . . . (Appeal Br. 19) (emphasis
added).
Moreover, as stated supra, whether a lead compound and a claimed
compound have a sufficiently close relationship frequently turns on their
“structural similarities and differences.” Daiichi Sankyo Co., 619 F.3d at
1352. Structural similarity alone may be sufficient to establish a motivation
to make modifications in some instances. Furthermore as stated supra,
[a] prima facie case of obviousness in the chemical arts is often
based on a known compound, called a ‘lead compound,’ which
serves as a starting point for a person of ordinary skill
developing the claimed invention. Such a lead compound then
provides a basis to show “structural similarities” between the
prior art and the claimed lead compound.

Unigene, 655 F.3d at 1361 (citing Eisai, 533 F.3d at 1357). “A lead
compound needs to be “a natural choice for further development efforts.”
Altana Pharma, 566 F.3d at 1008. Here, Luther teaches several diester
solvents where esters of citric acid are preferred, Luther, however,
specifically replaced tributyl citrate with dioctyl succinate in Example 10.
As such, we agree with the Examiner that an ordinary skilled artisan would
be led to select dioctyl succinate as a lead compound. Therefore, we agree
with the Examiner that an ordinary skilled artisan would expect claimed
compound (w) to exhibit similar solubilizing and solvent properties to those
demonstrated by Luther for dioctyl succinate.
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Regarding Appellant’s argument for unexpected results, as discussed
supra in section B, we are not persuaded. We note that the dioctyl succinate
compound of Luther is not examined in the Marat Declaration. As such, our
focus will be on the data provided in the Brossat Declaration. We
acknowledge that the only structural difference between claimed compound
(w) and dioctyl succinate and between claimed compound (b) and diethyl
succinate is the presence of a methyl group on the alkylene bridge.
However, we find that the data provided in the Table in paragraph 6 of the
Brossat Declaration does not demonstrate that the claimed compounds
exhibit unexpected results. Moreover, the data does not demonstrate that the
methyl group in the alkylene bridge of the claimed compounds is critical for
the claimed compounds to exhibit the alleged unexpected results of
improved solubility of an active agent in a fatty phase. Rather, when
comparing claimed compound (w) to dioctyl succinate, the data is close
enough that an ordinary skilled artisan would expect the two compounds to
have the same properties. A prima facie case of obviousness exists where
the claimed ranges and prior art ranges do not overlap but are close enough
that one skilled in the art would have expected them to have the same
properties. Titanium Metal Corp., 778 F.2d at 783. For example, the
solubilization test demonstrates that > 20% of filter 1 is dissolved in claimed
compound (w) compared to that of < 20% in dioctyl succinate. (Brossat
Dec., paragraph 6). Appellant has not provided any evidence that
establishes statistical significance between the tested compositions, other
than the Declarant’s conclusory statement that the results in the Table show
surprising and unexpected results for improving solubility of an active agent
in a fatty phase and can be extended to the scope of the compositions as
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claimed, to support that the solubilization value for claimed compound (w)
exhibits improved solubility when compared to dioctyl succinate. This is
especially true given that Luther expressly demonstrates that a lipophilic
organic UV screening agent remains stable in dioctyl succinate in a
homogenous nanoemulsion in Example 10.
Further, the data depicted in the Table in paragraph 6 of the Brossat
Declaration, appears to indicate that the alleged unexpected results of
improved solubility is dependent upon the lipophilic organic UV screening
agent is tested. For example, the solubilization test demonstrates that > 40%
of filters 4 and 5 are dissolved in claimed compound (b) and diethyl
succinate. (Brossat Dec., paragraph 6). Such data contradicts Appellant’s
arguments that the data demonstrates the criticality of the methyl group and
that the data can be extended to the scope of the compositions as recited in
the claimed invention. We, therefore, are not persuaded that the claimed
compositions exhibit unexpected results when compared to the compositions
taught by Luther.
For the reasons discussed above, we agree with the Examiner’s
position. Appellant has not persuasively shown that an ordinary skilled
artisan would select dioctyl succinate as a lead compound, and have not
persuasively shown the methyl group on the alkylene bridge is critical in
establishing unexpected results of improving solubility of a lipophilic
organic UV screening agent. Thus, we conclude that the preponderance of
the evidence does support the Examiner’s position and therefore affirm the
rejection of claim 1 on appeal. Claims 2–6, 11–13, and 21–30 were not
separately argued and fall with claim 1.

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 11–13,
25–27
103(a) Kaplan 1–6, 11–13,
25–27
1–6, 11–13,
21–24, 30
103(a) Baba 1–6, 11–13,
21–24, 30

1–6, 11–13,
21–30
103(a) Luther 1–6, 11–13,
21–30

Overall
Outcome
1–6, 11–13,
21–30

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