Hayes Soloway, P.C.

Case Results

Ex parte KARL BOOTEN, BART LEVECKE, and CHRISTIAN VICTOR STEVENS

January 2010

STATEMENT OF THE CASE
(Reprinted from the Opinion of the Board)
This is an appeal under 35 U.S.C.§ 134 from an Examiner's decision rejecting claims 20-24, 26-31, and 33-40 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Ehrhardt. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Claim 20, reproduced below, is illustrative of the subject matter on appeal.
20. A dispersion of a multiphase system that comprises a continuous aqueous phase, wherein the aqueous phase contains one or more electrolytes at a total concentration ranging from the lower limit of 0.1 to 1 mole per liter aqueous phase, depending on the nature of the electrolyte(s) and the temperature of the dispersion, up to the limit of the solubility of the electrolyte(s) in water at 25ºC, said dispersion comprising a surfactant that is a hydrophobically modified saccharide which is a substituted polymeric saccharide of general formula (I) [A]n(-M)s (I) wherein [A]n represents a fructan, with [A] representing a fructosyl unit or a terminal glucosyl unit and n representing the degree of polymerization (DP) being the number of fructosyl and glucosyl units in said fructan molecule, (-M) represents a hydrophobic moiety that substitutes a hydrogen atom of a hydroxyl group of said fructosyl or glucosyl units, which is selected from the group consisting of an alkylcarbamoyl radical of formula R-NH-CO- and an alkylcarbonyl radical of formula R-CO-, wherein R represents a linear or branched, saturated or unsaturated alkyl group with from 4 to 32 carbon atoms, s and s′, which can have the same value or not, represent the number of said hydrophobic moieties that substitute the fructosyl or glucosyl unit, expressed as the average degree of substitution (av. DS) which ranges from 0.01 to 0.5, and the total concentration of substituted polymeric saccharide of formula (I) ranges from 0.10 to 20%, calculated as a percentage (%) w/v in relation to the amount of dispersed phase(s) in case of emulsions, or as a percentage (%) w/w in relation to the amount of dispersed phase(s) in case of suspensions, or as a percentage (%) w/v in relation to the amount of aqueous phase in case of foams.
App. Br., Claims Appendix (emphasis added).
B. ISSUE
The Examiner found that Ehrhardt Example 28 describes a composition comprising inulin stearate in a concentration within the range recited in claim 20. Ans. 4-5; App. Br. 11-12.
The Appellants dispute this finding but do not dispute any other findings by the Examiner. Thus, the sole issue on appeal is:
Have the Appellants identified reversible error in the Examiner's finding that the concentration of inulin stearate in Ehrhardt Example 28 is within the range recited in claim 20?
C. FINDINGS OF FACT
The invention disclosed in Ehrhardt is directed to inulin esters having particularly advantageous physical properties, including surface activity, that
make them suitable for use in a wide variety of applications. Ehrhardt 2:24- 27, 3:49-54. Ehrhardt Example 28 describes a hair rinse according to the disclosed invention which is prepared as follows:
6 g (6% by weight) of inulin stearate (DS 0.04) are mixed with 6 g of lauryl trimethylammonium chloride (6% by weight), 4 g of stearyl alcohol (4% by weight), 4 g of glycerin (4% by weight), 1 g of citric acid (1% by weight) and 0.5 of perfume oil (0.5% by weight) and made up to 100 g with 78.5 g of water (78.5% by weight).
Ehrhardt 13:10-16.
The Appellants do not dispute that inulin stearate is a substituted polymeric saccharide of general formula (I) defined in claim 20.
D. ANALYSIS
The Examiner found that Ehrhardt Example 28 “discloses a composition that contains 6 grams of inulin stearate (DS 0.04) in a composition made up to 100 grams of water, which clearly demonstrates 6% of inulin stearate in an aqueous system, per the requirements of the instant invention.” Ans. 4.
The Appellants contend that the Examiner erroneously calculated the percentage of inulin stearate based on the total weight of the components in
the example (i.e., 100 grams) rather than as a percentage of the dispersed phase(s) as required by claim 20. App. Br. 12. In the case of Ehrhardt Example 28, the Appellants contend that the dispersed phase comprises 6.0% inulin stearate, 4.0% stearyl alcohol, and 0.5% perfume oil. When the concentration of inulin stearate is calculated as a percentage of this dispersed phase, the Appellants argue that the concentration of inulin stearate is outside
the range recited in claim 20. App. Br. 11-12.
The Appellants' position is supported by a preponderance of the evidence of record before us. We find that the hair rinse described in Example 28 is either an emulsion or a suspension. See Ehrhardt 13:10-16. According to claim 20, in the case of emulsions and suspensions, the total concentration of the substituted polymer ic saccharide is calculated as a percentage of the dispersed phase(s). App. Br. Claims Appendix.
Calculating the concentration of inulin stearate in Example 28 in this manner, we find that the concentration is outside the claimed range, i.e., ((6.0/(6.0+4.0+0.5)) x 100) = 57%. The Examiner has failed to explain why the concentration of the substituted polymeric saccharide recited in claim 20 would have been obvious to one of ordinary skill in the art in view of the teachings of Ehrhardt. Thus, we cannot sustain the rejection of claims 20-24, 26-31, 33-37, and 40 under § 102(b) or 103(a).
As for claims 38 and 39, the Appellants do not direct us to any reversible error in the rejection of these claims, which do not recite a concentration of the substituted polymeric saccharide.
E. DECISION
The rejection of claims 20-24, 26-31, 33-37, and 40 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Ehrhardt is reversed.
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Nick Soloway

Nick Soloway, an AV Peer Review Rated* attorney, is one of 200 practicing patent attorneys in the United States to be included in Woodward/White's Best Lawyers in America.
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