THE PROCTER & GAMBLE COMPANY

Patent Trials and Appeals Board

May 6, 2021

2020004965 (P.T.A.B. May. 6, 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.
14/197,339 03/05/2014 Scott Leroy Cron 12774M 5819
27752 7590 05/06/2021
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
BABSON, NICOLE PLOURDE
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
05/06/2021 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):
centraldocket.im@pg.com
mayer.jk@pg.com
pair_pg@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SCOTT LEROY CRON, PATRICK FIRMIN DELPLANCKE,
RANDALL THOMAS REILMAN, JEFFREY JOHN SCHEIBEL,
MELINDA PHYLLIS STEFFEY, PHILLIP KYLE VINSON,
and RYAN MICHAEL WEST1
____________

Appeal 2020-004965
Application 14/197,339
Technology Center 1600
____________

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

NEW, Administrative Patent Judge.

DECISION ON APPEAL

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies The Procter & Gamble Company as the
real party-in-interest. App. Br. 1.

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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–11, 14–18, 23, 25, and 26 as
unpatentable under 35 U.S.C. § 103 as being obvious over the combination
of Surutzidis et al. (US 5,318,728, June 7, 1994) (“Surutzidis”) and Y.-P.
Zhu et al., Surface Properties of N-Alkanoyl-N-methyl Glucamines and
Related Materials, 2 J. SURFACTANTS & DETERGENTS 357–62 (1999)
(“Zhu”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellant’s claimed invention is directed to mixtures of sugar amides
or sugar amines having improved thermal properties over the individual
components. Spec. Abstr.

REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A mixture comprising a first chemical and a second
chemical, wherein said first chemical has the chemical structure
of Formula I and second chemical has the chemical structure of
Formula II:

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wherein:

n1 is 2 to 4;

n2 is 1 to 3;

n1 is greater than n2

R1 and R3 are independently selected from hydrogen, C1-
C16 alkyl, C1-C3 hydroxy- or methoxy-alkyl and;

R2 and R4 are independently selected from hydrogen, C1-
C16 alkyl, C1-C3 hydroxy- or methoxy-alkyl, or a structure of
Formula III

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wherein: R5 is C7-C23 alkyl, mono-alkenyl, di-alkenyl, tri-
alkenyl, hydroxyl-alkyl, or hydroxyl-alkenyl;

and mixtures thereof;

wherein the weight ratio of the chemical structure of
Formula I to the chemical structure of Formula II is from 20:80
to 90:10.

App. Br. 9–10.

ISSUES AND ANALYSIS
We adopt the Examiner’s findings, reasoning, and conclusion that the
claims on appeal are prima facie obvious over the combined cited prior art.
We address below the arguments raised by Appellant.

Issue 1
Appellant argues that the Examiner erred because the combination of
references do not teach or suggest each and every claim limitation. App. Br.
3.

Analysis
In response to a restriction requirement made by the Examiner (filed
April 21, 2016, at 5), Appellant selected a mixture of N-Dodecanoyl-N-
Methylglucamine (C12-NMG) and N-Dodecanoyl-N-Methylxylamine (C12-
NMX) (filed February 1, 2017, at 9) as the elected species for prosecution.
The Examiner finds that Surutzidis teaches low-sudsing detergent
compositions comprising an N-alkyl polyhydroxy fatty acid amide surfactant
having the structure of Formula (I). Final Act. 3–4 (citing Surutzidis Abstr.,
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col. 5, ll. 11–67). The Examiner finds that the N-alkyl polyhydroxy fatty
acid amide surfactants having the structure of Formula (I) anticipate the
claimed chemical structures of Formulae (I) and (II). Final Act. 4. The
Examiner finds that Surutzidis further teaches that mixtures of structures
having different substituents may be used, and additional surfactant may be
included. Id. (citing Surutzidis, col. 5, ll. 59–62; col. 6, ll. 3–28).
The Examiner finds, however, that Surutzidis does not teach the
elected species of a mixture of C12-NMG and C12-NMX. Final Act. 4. To
cure these deficiencies, the Examiner relies on Zhu. Final Act. 5–6. The
Examiner finds that Zhu teaches surfactants, including the elected species,
that exhibit desirable foaming properties, efficient wetting properties, and
are attractive for the development of environmentally friendly surfactants
based on renewable resources. Final Act. 5 (citing Zhu, Abstr.; 361, Fig. 1,
Tables 2, 3).
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to select a mixture of C12-NMG (which
corresponds to C12-GA in Zhu) and C12-NMX (which corresponds to C12-
XA in Zhu) from Zhu for use in the detergent compositions of Surutzidis.
The Examiner reasons that, because both Zhu and Surutzidis are drawn to
compositions comprising structurally substantially similar surfactants, a
skilled artisan would have found it obvious to combine the teachings of
Surutzidis and Zhu by known methods with no change in their respective
functions and where the combination yielding nothing more than predictable
results. Final Act. 5–6.
The Examiner also concludes that, because Surutzidis teaches that
mixtures of structures having different substituents may be used and
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additional surfactant may be included, it would have been obvious to one of
ordinary skill in the art at the time of the instant invention to select any of
the surfactants including mixtures of C12-NMG and C12-NMX. Final Act.
6.
The Examiner also finds that Surutzidis does not expressly teach the
weight percentage ratio of the structures of instant Formula I to Formula II
of claims 1 and 18. Final Act. 6. However, the Examiner concludes that,
because Surutzidis teaches that mixtures of structures having different
substituents may be used and additional surfactants may be included, it
would have been within the skill of the ordinary artisan to optimize the
weight percentage ratio of the structures of instant Formula I to Formula II
to arrive at a weight percentage ratio ranging from 20:80 to 90:10 or 80:20
to 20:80. Id. (citing Surutzidis, col. 5, ll. 59–62, col. 6, ll. 3–28).
Appellant argues that Surutzidis fails to teach that R1 of an N-alkyl
polyhydroxy fatty acid amide surfactant having the structure of Formula (I)
can be a methyl (C1) constituent. App. Br. 4. Instead, Appellant asserts that
the Surutzidis teaches that R1 can be C2 to C8. Id. (citing Surutzidis, col. 2,
ll. 33–35). Appellant also argues that Surutzidis fails to teach mixing the
polyhydroxyhydrocarbyl moiety of Formula (I) and fails to specify any
compositions of the polyhydroxyhydrocarbyl moiety beyond those derived
from a parent sugar. Id. Consequently, argues Appellant, Surutzidis does
not teach the elected species of C12-NMG or C12-NMX. Id.
We are not persuaded by Appellant’s arguments. We acknowledge
Appellant’s argument that Surutzidis does not expressly teach or suggest R1
encompassing a methyl substituent. However, “[t]he test for obviousness is
not whether … the claimed invention must be expressly suggested in any
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one or all of the references. Rather, the test is what the combined teachings
of the references would have suggested to those of ordinary skill in the art.”
In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981) (emphasis added).
Furthermore, one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
Keller, 642 F.2d at 426; In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
Claim 1 recites, inter alia, that “R1 [… is] independently selected
from hydrogen, C1-C16 alkyl, C1-C3 hydroxy- or methoxy-alkyl.” In the
appeal presently before us, the Examiner relies on Surutzidis as teaching a
mixture comprising polyhydroxy fatty acid amide surfactants having the
general structure:

where R1 is C2-C8, R2 is a C5-C31 hydrocarbyl moiety, and Z is a
polyhydroxyhydrocarbyl moiety having a linear hydrocarbyl chain with at
least 2 (in the case of glyceraldehyde) or at least 3 hydroxyls (in the case of
other reducing sugars) directly connected to the chain wherein an ordinary
skilled artisan would routinely optimize the weight percentage ratio between
the polyhydroxy fatty acid amide surfactants in the mixture. Final Act. 4
(citing Surutzidis, col. 5, ll. 12–29, 59–62; col. 6, ll. 3–28).
Surutzidis thus teaches a mixture comprising polyhydroxy fatty acid
amide surfactants. Final Act. 4 (citing Surutzidis, col. 5, ll. 12–29, 59–62;
col. 6, ll. 3–28). The structural difference between Appellant’s elected
species and the surfactants taught by Surutzidis is located at the R1 moiety
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where Surutzidis teaches that R1 can be C2-C8 (see general structure depicted
above) instead of C1 at the claimed R1 moiety in the elected species.
Although the rejection on appeal is based solely on the elected
species, it is important to note that the R1 moiety of the polyhydroxy fatty
acid amide surfactants taught by Surutzidis is encompassed by the claimed
R1 and R3 chemical substituents. Specifically, the claimed R1 and R3
chemical substituents “are independently selected from hydrogen, C1-C16
alkyl, C1-C3 hydroxy- or methoxy-alkyl . . . . (See claim 1) (emphasis
added). Therefore, when examining the full scope of the claimed invention,
the number of carbons at the R1 chemical substituent of the polyhydroxy
fatty acid amide surfactants taught by Surutzidis lies within the number of
carbons at the claimed R1 and R3 chemical substituents.
The Examiner has not rejected the elected species of the claims as
anticipated by Surutzidis, but rather as obvious over the combination of
Surutzidis and Zhu. It is this obviousness rejection that we address here.
The Examiner relies upon Zhu as teaching the elected C1 species (i.e.,
12-NMG and C12-NMX), which exhibit the benefits of desirable foaming
properties, efficient wetting properties, and constitute environmentally
friendly materials. Final Act. 5 (citing Zhu, Abstr., 361, Fig. 1, Tables 2, 3).
Zhu teaches polyhydroxy fatty acid amide surfactants including the elected
species where the elected species exhibit the benefits of desirable foaming
properties, efficient wetting properties, and constitute environmentally
friendly materials. Given that Appellant does not provide evidence
demonstrating the criticality of the claimed R1 and R3 chemical substituents
being C1, as opposed to C2–C8, as taught by Surutzidis, an ordinarily skilled
artisan would have been motivated with a reasonable expectation of success
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to utilize a mixture comprising 12-NMG and C12-NMX as the polyhydroxy
fatty acid amide surfactants in Surutzidis in light of beneficial properties of
these surfactants taught by Zhu. We therefore conclude that it would have
been obvious to a person of ordinary skill in the art to combine the
references in order to arrive at the elected species of the claimed
composition.

Issue 2
Appellant argues that the Examiner erred in allegedly relying upon
impermissible hindsight in reaching the conclusion that the claims were
obvious over the combined cited prior art. App. Br. 3.

Analysis
Appellant contends that, in combining Surutzidis with Zhu, the
Examiner employed hindsight analysis, using the Appellant’s Specification
as a template to show that the materials existed. App. Br. 4.
We disagree.
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made and
does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.

In re McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971). Appellant points
to no evidence of record to demonstrate that the Examiner improperly relied
upon knowledge that was derived solely from Appellant’s Specification and
not from either the teachings and suggestions of the prior art or the
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knowledge of a skilled artisan. We are consequently not persuaded by
Appellant’s argument.

Issue 3
Appellant argues that the Examiner erred because the evidence of
unexpected results overcomes the Examiner’s conclusion that the claims are
prima facie obvious. App. Br. 3.

Analysis
Appellant points to Examples 29–33 and 38–39 of the Specification,
which demonstrate the allegedly improved physical properties, especially
improved thermal properties, of the claimed invention. App. Br. 5.
Appellant contends that the results unexpectedly demonstrate a non-linear
relationship for various properties of a mixture of Formula I and Formula II
at a weight percentage ratio ranging from 20:80 to 90:10. Id. Specifically,
Appellant argues that a person of ordinary skill would expect the Krafft
point2 of the claimed mixture to demonstrate a linear behavior as a function
of the percentage of C12-N-Methyl-Xylosamide in C12-N-Methyl
Glucosamide, as disclosed by Appellant’s Specification. Id. (citing the
instant Specification, Table 7). However, Appellant asserts, by plotting the
Krafft point data from Table 7 in the Specification, when the two elected

2 The Krafft point is the minimum temperature at which a surfactant can
form micelles, i.e., the surfactant solubility equals to its critical micelle
concentration (“CMC”). See Science Direct, Krafft Point, available at:
https://www.sciencedirect.com/topics/chemistry/krafft-point (last visited
April 19, 2021).
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species are mixed, a linear relationship in the thermal properties is not
obtained. Id. at 5–6; Spec. Table 7. According to Appellant, the references
cited by the Examiner fail to teach or suggest a non-linear relationship when
Formula I is mixed with Formula II at weight percentage ratios ranging from
20:80 to 90:10. App. Br. 5. Appellant therefore asserts that the mixing of
Formulae I and II produces an unexpected surprising result not previously
recognized nor appreciated by the prior art. Id. at 6–7.
We are not persuaded by Appellant’s arguments. As an initial matter,
Appellant adduces no evidence of record to show why a person of ordinary
skill in the art would, a priori, expect the Krafft point of varying mixtures of
claimed Formula I and II to exhibit linear behavior across the claimed
concentration ratio ranges. Absent any such supporting evidence, we accord
Appellant’s contention as no more than attorney argument, to which we
accord little probative weight. See, e.g., In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997) (holding that attorney arguments and conclusory statements
that are unsupported by factual evidence are entitled to little probative
value).
Furthermore, we acknowledge Appellant’s argument that the
combined cited prior art references do not identify or discuss the thermal
properties of a mixture of the surfactants. However, “[t]o be particularly
probative, evidence of unexpected results must establish that there is a
difference between the results obtained and those of the closest prior art, and
that the difference would not have been expected by one of ordinary skill in
the art at the time of the invention.” Bristol-Myers Squibb Co. v. Teva
Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014).
Furthermore,
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Where, as here, the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed
product.… Whether the rejection is based on “inherency” under
35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C.
§ 103, jointly or alternatively, the burden of proof is the same,
and its fairness is evidenced by the PTO’s inability to
manufacture products or to obtain and compare prior art
products.

In re Best, 562 F.2d 1252, 1255 (C.C.P.A. 1977) (see also In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (holding that “[m]ere
recognition of latent properties in the prior art does not render nonobvious
an otherwise known invention”).
We have explained supra why we have concluded that the combined
teachings of Surutzidis and Zhu teach all of the limitations of the claimed
mixture. The burden of persuasion therefore shifts to Appellant to
demonstrate that the mixture taught by the prior art does not necessarily
possess these properties. See Best, 562 F.2d at 1255. Appellant has adduced
no evidence to demonstrate that the thermal properties of the mixtures taught
by Surutzidis or Zhu do not possess the same qualities argued by Appellant,
nor has Appellant demonstrated that the properties that Appellant has argued
are “unexpected” are anything other than undescribed latent properties of the
mixtures taught by the prior art. Consequently, Appellant has not met the
requisite burden, and we are not persuaded that Appellant’s claimed mixture
possesses unexpected properties.
Accordingly, we affirm the Examiner’s rejection of these claims.

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CONCLUSION
The rejection of claims 1–11, 14–18, 23, 25, and 26 as unpatentable
under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED

Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–11, 14–18,
23, 25, 26
103(a) Surutzidis, Zhu 1–11, 14–
18, 23, 25,
26