Ex Parte Donnelly et al

Patent Trial and Appeal Board

Dec 21, 2018

14646793 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/646,793 05/22/2015
156155 7590 12/26/2018
Dow DuPont
c/o E.I. du Pont de Nemours and Company
P.O. Box 2915
974 Centre Road, Chestnut Run Plaza 721-2342
Wilmington, DE 19805
FIRST NAMED INVENTOR
Kenneth M. Donnelly
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.
73990-US-PCT 2569
EXAMINER
PHAN, DOANTHI-THUC
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH M. DONNELLY,
PIERRE MARIE ALAIN LENOIR, and
LUKAS THOMAS JOHANNES VILLIGER1
Appeal2017-011223
Application 14/646,793
Technology Center 1600
Before FRANCISCO C. PRATS, JOHN G. NEW, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal2 under 35 U.S.C. § 134 of the Examiner's rejection
of claims to an antimicrobial composition which have been finally rejected
as obvious. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify the Real Parties in Interest as Dow Global
Technologies Limited and ROHM AND HAAS COMPANY. Br. 4.
2 We have considered and herein refer to the Specification of May 22, 2015
("Spec."); Final Office Action of Sept. 22, 2016 ("Final Act."); Appeal Brief
of Feb. 28, 2017 ("Br."); and Examiner's Answer of June 2, 2017 ("Ans.").
Appeal2017-011223
Application 14/646,793
STATEMENT OF THE CASE
"Use of combinations of at least two antimicrobial compounds
can broaden potential markets, reduce use concentrations and costs,
and reduce waste." Spec. ,r 2. The Specification discloses
"combinations of antimicrobial compounds and their uses in dry film
protection applications, the combinations having unexpectedly greater
activity than would be expected for the use of both of the individual
antimicrobial compounds." Spec. ,r 1.
Claims 1 and 4 are on appeal. 3 Claim 1 is the sole independent claim
and reads as follows:
1. A synergistic antimicrobial composition that is effective
for inhibiting the growth of algae comprising lenacil and
3-iodine-2-propenyl-butylcarbamate wherein the weight
ratio of the 3-iodine-2-propenyl-butylcarbamate to lenacil
is from 1: 5 to 5: 1.
Claims 1 and 4 have been rejected under 35 U.S.C. § I03(a) as
unpatentable over Uhr4 in view of Fischer. 5
3 Claims 3 and 6 are pending in the Application, but have been withdrawn as
directed to non-elected species. Final Act. 1-2.
4 Uhr, US 2009/0036555 Al, published Feb. 5, 2009 ("Uhr").
5 Fischer, US 3,870,502, issued Mar. 11, 1975 ("Fischer").
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Application 14/646,793
DISCUSSION
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner's conclusion that the subject matter of
claims 1 and 4 would have been obvious over Uhr combined with Fischer.
The Examiner finds that Uhr teaches a microbicidal composition
comprising and iodine containing biocide such as 3-iodine-2-propenyl-
butylcarbamate (IPBC) in combination with another active compound such
as lenacil. Final Act. 5. The Examiner finds that Fischer discloses the
preparation of an herbicide comprising a uracil compound such as lenacil
and a carbamate such as IPBC in ratios ranging from 1 :5 to 5: 1. Id. at 5-6.
The Examiner concludes:
an ordinary artisan would seek to select an uracil compound
such as lenacil to be used in combination with an carbamate
such as IPBC because it is taught in the prior arts that uracil
compounds and carbamate compounds are selectively known to
be used together to provide a more efficacy activity against
microbes and pests.
Id. at 5. The Examiner also concludes:
[ o ]ne of ordinary skill in the art would have reasonable
expectation of success of optimizing the weight ratio of IPBC
to lenacil in the microbiocidal composition of Uhr because it
would have been customary for an artisan of ordinary skill to
determine the optimal weight ratio of IPBC to lenacil to achieve
the desired antimicrobial effect. Thus, absent some
demonstration of unexpected results from the claimed
parameters, the optimization of weight ratio of IPBC to lenacil
would have been obvious at the time of applicant's invention.
Id. at 6.
Appellants contend that the references do not teach or suggest the
claimed synergistic combination or that the combination would exhibit a
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Application 14/646,793
synergistic effect against algae. Br. 7. Appellants contend that while one
skilled in the art might infer that the combination of compounds might be
effective, nothing in the references suggest that the combination would have
a synergistic effect against algae. Id. Appellants argue that"[ o ]ne would
not know or have reason to expect from the teachings of the cited art
whether there may be an additive, antagonistic, or synergistic effect of the
combined combination against an algal species." Id. at 8 ( emphasis
omitted).
Findings of Fact
We adopt the Examiner's findings as our own, including with regard
to the scope and content of, and motivation to modify or combine, the prior
art. Final Act. 5---6. The following findings are included for emphasis and
reference purposes.
FF 1. Uhr disclose a composition comprising iodine containing
biocides such as IPBC. Uhr ,r,r 1 and 43.
FF2. Uhr teaches
The efficacy and the activity spectrum of the mixtures of
the invention and of the compositions preparable therefrom can
be increased by adding, if appropriate, further antimicrobial
compounds, fungicides, bactericides, herbicides, insecticides or
other active compounds, so as to widen the spectrum of activity
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Application 14/646,793
or to obtain particular effects. These mixtures may have an even
wider activity spectrum.
Uhr i155.
FF3. Uhr also teaches "[i]n many cases, synergistic effects are
obtained, i.e. the activity of the mixture is greater than the activity of the
individual components." Uhr ,r 56.
FF4. Uhr teaches that one of the herbicides and algaecides that can
be combined with the iodine containing compound is lenacil. Uhr ,r 58.
FF5. Fischer discloses a herbicide comprising a thiol carbamate with
a biscarbamate, uracil, or pyridazone. Fischer col. 1, 11. 3-5.
FF6. Fischer teaches that the ratio of thiol carbamate to the second
component may range from 1 :5 to 5: 1. Fischer col. 2, 11. 3-5.
FF7. Fischer teaches that the disclosed composition has a better
herbicidal action than their individual components. Fischer col. 2, 11. 64---67.
Principles of Law
[T]he examiner bears the initial burden, on review of the prior
art or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant.
After evidence or argument is submitted by the applicant in
response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"[T]he patentability of apparatus or composition claims depends on
the claimed structure, not on the use or purpose of that structure." Catalina
Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002).
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Application 14/646,793
While an invention may produce synergistic results, more is required
to show nonobviousness, as synergism is not per se unexpected. See In re
Diamond, 360 F.2d 214,218 (CCPA 1966). "What section 103 requires is
'unexpected synergism' ... " (id. at 216 n.7) (internal citation omitted); "we
attribute no magic status to synergism per se since it may be expected or
unexpected" (id. at 218).
Analysis
We find the Examiner has established that the subject matter of the
claims would have been obvious to one of ordinary skill in the art at the time
the invention was made over Uhr combined with Fischer. Appellants have
not produced evidence showing, or persuasively argued, that the Examiner's
determinations on obviousness are incorrect. Only those arguments made by
Appellants in the Brief have been considered in this Decision. Arguments
not presented in the Brief are waived. See 37 C.F.R. § 4I.37(c)(l)(iv)
(2015). We have identified claim 1 as representative; therefore, claim 4 falls
with claim 1. We address Appellants' arguments below.
Appellants argue that the references do not teach or suggest that the
claimed composition would result in unexpected synergistic effects against
algae. Br. 7. Appellants argue that while the references may suggest
herbicidal efficiency, nothing suggest that the effect would apply
synergistically to algae. Id. at 8.
We have considered Appellants' arguments and are not persuaded.
The claims are directed to a composition of matter and not a method of using
the composition. See Br. 9 (Claims App.). The limitation of "effective for
inhibiting the growth of algae" is a statement of intended use and does not
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impart a structural limitation. Thus, the effectiveness against algae does not
distinguish the invention over the prior art.
Even if the limitation regarding effectiveness against algae were a
structural limitation, Appellants' argument does not convince us that the
Examiner erred. Uhr teaches that lenacil is effective against algae and it can
be combined with IPBC resulting in a composition with enhanced
effectiveness. FF2--4. We agree with the Examiner that" it would have
been reasonably obvious and expected that a combination of a carbamate
such as IPBC and an uracil such as lenacil would also be effective for
inhibiting the growth of algae because lenacil was also categorized in Uhr as
'herbicides and algicides"'. Ans. 8.
With respect to the asserted synergism, both Uhr and Fischer teach
that the combination of compounds like IPBC and lenacil would be expected
to produce a synergistic effect. FF2, 3, and 7. Other than the conclusory
statements in the Brief that the synergistic effect shown in ,r 45 of the
Specification was unexpected, Appellants have not produced any persuasive
evidence, comparative or otherwise, to show that the synergistic effect was
actually surprising to a skilled artisan in view Uhr and Fischer.
Appellants argue that there is nothing in the record to show that the
synergistic effect would occur over the entire range claimed by Appellants.
Br. 8. Again we find this argument unpersuasive. Fischer teaches the
claimed ratios and both Fischer and Uhr teach that combining an iodine
containing compound such as IPBC with another active compound such as
lenacil results in enhanced effectiveness. FF2-7. We agree with the
Examiner that one skilled in the art reading Uhr and Fischer would have
expected the synergistic effect to appear across the entire range of
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compositions disclosed. Ans. 9. Appellants have offered no persuasive
evidence to rebut this conclusion.
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner's conclusion that the subject matter of claim 1 would have been
obvious over Uhr combined with Fischer.
Claim 4 has not been argued separately and, therefore, falls with claim
1. 37 C.F.R. § 4I.37(c)(l)(iv).
SUMMARY
We affirm the rejection under 35 U.S.C. § I03(a).
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).
AFFIRMED
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