Ex Parte Dörr et al

Patent Trials and Appeals Board

Jan 3, 2019

14513306 - (D) (P.T.A.B. Jan. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/513,306 10/14/2014
26285 7590 01/07/2019
K&L GA TES LLP-Pittsburgh
210 SIXTH AVENUE
PITTSBURGH, PA 15222-2613
FIRST NAMED INVENTOR
Sebastian Dorr
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.
160335PCTUSCON/BMS081095P 9261
EXAMINER
NIELSEN, THOR B
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
01/07/2019 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEBASTIAN DORR, HEIKE HECKROTH,
JAN SCHOENBERGER, ROBRECHT FROYMAN,
HANS-ROBERT HEHNEN, KRISTINE FRAATZ,
and HANS-OTTO WERLING 1
Appeal2017-010919
Application 14/513,306
Technology Center 1600
Before ULRIKE W. JENKS, RY AN H. FLAX, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a method for sealing a teat of an animal mammary gland.
Claims 16-29, 33, 34, and 36-39 are on appeal as rejected under 35 U.S.C.
§ 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as "Covestro Deutschland
AG." Br. 2.
Appeal2017-010919
Application 14/513,306
STATEMENT OF THE CASE
Claim 16 is representative and is reproduced below:
16. A method for sealing a teat of an animal mammary gland
comprising applying a coating of a polyurethane dispersion to the
teat of the animal mammary gland, wherein the polyurethane
dispersion is obtained by preparing
A) isocyanate-functional prepolymers having unreacted NCO
groups, the prepolymers prepared from
and
Al) organic polyisocyanates,
A2) polymeric polyols having number-average molecular
weights of 400 to 8000 g/mol, and OH functionalities of
1.5 to 6, and
A3) optionally hydroxy-functional compounds having
molecular weights of 62 to 399 g/mol, and also
A4) optionally isocyanate-reactive, anionic or potentially
anionic and/ or optionally nonionic hydrophilizing agents,
B) then reacting some or all of the unreacted NCO groups of said
prepolymers
B 1) optionally with amino-functional compounds having
molecular weights of 32 to 400 g/mol and
B2) with amino-functional, anionic or potentially anionic
hydrophilizing agents with chain extension, and
dispersing the prepolymers in water before, during or after
step B), and sealing the teat of the animal mammary gland
for up to 3 days.
Br. 18. Other than claim 39, Appellants argue the claims as a group. Br. 6-
16. Therefore, we address the claims similarly herein.
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Appeal2017-010919
Application 14/513,306
The following rejections are appealed:
Claims 16-29, 33, 34, 36, 37, and 39 stand rejected under 35 U.S.C.
§ I03(a) over Lu,2 Berge, 3 Desmophen C200 Technical Datasheet, 4 and
Hemling. 5 Answer 3.
Claim 38 stands rejected under 35 U.S.C. § I03(a) over Lu, Berge,
and Desmophen C200 Technical Datasheet. Id.
DISCUSSION
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Arguments made by Appellants in the Appeal Brief have been considered;
arguments not so-presented in the Brief are waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2015); see also Ex parte Borden, 93 USPQ2d 1473, 1474
(BP AI 2010) (informative) ("Any bases for asserting error, whether factual
or legal, that are not raised in the principal brief are waived.").
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "[W]hen a patent
claims a structure [ or method] already known in the prior art that is altered
by the mere substitution of one element [ or step] for another known in the
2 US 2007/0275101 Al (published Nov. 29, 2007) ("Lu").
3 US 2005/0215663 Al (published Sept. 29, 2005) ("Berge").
4 Desmophen® C 200 - Covestro -datasheet,
http:// coatings. specialchem. com/product/r-bayer-materialscience-
desmophen-c-200, Oct. 29, 2015 ("Desmophen C200 Technical Datasheet").
5 US 6,030,633 (issued Feb. 29, 2000) ("Hemling").
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Application 14/513,306
field, the combination must do more than yield a predictable result." Id.
(citing United States v. Adams, 383 U.S. 39, 50-51 (1966)). "In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
invalid under§ 103." Id. at 419. "[T]he question is whether there is
something in the prior art as a whole to suggest the desirability, and thus the
obviousness, of making the combination, not whether there is something in
the prior art as a whole to suggest that the combination is the most desirable
combination available." In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)
( citation omitted).
"[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill." KSR, 550 U.S. at 417. "[F]amiliar
items may have obvious uses beyond their primary purposes, and in many
cases a person of ordinary skill will be able to fit the teachings of multiple
patents together like pieces of a puzzle." Id. at 420.
Findings of Fact
We adopt the Examiner's findings of fact and rationale on
obviousness as set forth in the Final Action and Answer. Final Action 3-20
and Answer 2-19 (collectively citing Lu Abstract, ,r,r 8-10, 23, 25, 26, 28-
36, 53-56, 60, 65, 67-73, 85, 86, 125, 137, 153, 163, 176; Berge ,r,r 26, 36,
42--45,47,48,53-56,61,62,69, 71, 72, 75, 87,106,114,120,129,164,
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Application 14/513,306
174,211, 213-214, 277; Hemling Abstract, col. 3--4; also citing Desmophen
C200 Technical Data Sheet; and U.S. Patent 4,701,480 Abstract, col. 8).
Analysis
The Examiner determined that Lu, which incorporated the disclosure
of Berge, disclosed a polyurethane dispersion like that claimed and that such
a dispersion could be applied to, inter alia, animals ( e.g., hides, fur) to form
a microorganism-controlling film. See supra Findings of Fact. Furthermore,
the Examiner noted that Lu squarely placed its microorganism-controlling
film in the technical field of prophylactic treatment of mastitis in cows. 6 Id.;
see also Lu ,r 8. The Examiner also determined that Hemling, similar to Lu,
disclosed a polyurethane-based film forming protectant for treating and
protecting against mastitis in cows as a teat coating. See supra Findings of
Fact; see also Hemling Abstract. We discern no error in the Examiner's
determinations.
Appellants argue the obviousness rejections are in error because
Berge, which is directed to printing inks, is non-analogous art and is
incorrectly combined with Lu. Br. 7-10. This argument is not persuasive.
Lu expressly incorporates Berge' s disclosure into its own, even though Lu is
directed to microorganism controlling coatings/films and Berge is directed to
inks. See Lu ,r,r 86, 176. A clearer and more explicit invitation to combine
prior art references could hardly be desired. Lu makes clear that Berge' s
6 Mastitis is an "inflammation of the mammary gland or udder usually
caused by infection." Merriam-Webster, mastitis, https://www.merriam-
webster.com/dictionary/mastitis, Dec. 21, 2018.
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Application 14/513,306
teachings are at least "reasonably pertinent" to the problems faced by Lu,
which are like those addressed by the appealed claims.
Appellants argue Berge teaches including organic solvents and/or
other small molecule compounds in its formulations and that this is
inconsistent with the inventors' goals as discussed in the Specification at
page 1, lines 11-17. Br. 10. This argument is not persuasive. Regardless of
Appellants' goals, the claims do not exclude organic solvents or other small
molecule compounds.
Appellants argue the combination of prior art does not teach "applying
a coating of a polyurethane dispersion to the teat of [an] animal mammary
gland." Br. 11 (alteration in original) (emphasis omitted). Whether this step
is explicitly disclosed in the prior art or not, the prior art combination
certainly suggests doing so. Both Lu and Hemling discuss treating or
preventing mastitis in cows, which would require such an application, as
explicitly indicated by Hemling. See supra Findings of Fact; see also Lu ,r,r
8, 26, 60, 137; and Hemling Abstract ("film-forming skin protectant
compositions ... have particular utility as barrier teat dips, for protecting
cows against mastitis"). This claim element would have been obvious over
the cited prior art, as determined by the Examiner.
Appellants ague the Examiner has not satisfactorily explained how Lu
and Hemling should be combined. Br. 14. This argument is not persuasive.
Even a cursory review of the disclosures of Lu and Hemling make it
apparent how they would be combined. Lu is directed to a coating that
forms a microorganism-controlling film to protect against microbial
contamination (see, e.g., Lu ,r 36), including against Gram positive and
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Application 14/513,306
negative bacteria (Lu ,r 92), which it teaches can be used on a spectrum of
surfaces including animals' hides or fur (Lu ,r 60) and is long-lasting and
easily removable (Lu ,r,r 9, 71, 73), and further teaches that antimicrobial
compositions have been used as a coating on cow teats to prophylactically
treat mastitis, a disease known to be caused by bacteria entering the teat. 7
Lu further teaches that its coating can be applied by any means, including
dipping and spraying (Lu ,r 120). Hemling is directed to treating and
preventing cow mastitis by coating teats with a film-forming composition,
(see, e.g., Hemling 3:64-66 ("The teats were then wiped dry and dipped with
the test teat protectant composition of Table 1.") and 3 :24--27 ("However, if
desired, the compositions hereof can be applied by other means [besides
dipping], such as by wiping or spraying so as to create elastic films which
are vapor permeable, water-,wind-, dirt-, insect-proof and present a barrier to
bacteria.")), which includes polyurethane, the same foundational
components as the Lu composition. Hemling notes the film-forming
compositions have good adherence for several days. See e.g., Hemling
Tables 2 and 4. Given the foregoing, it could not be more apparent how the
two references would be combined: Lu's composition, which is a long-
lasting antimicrobial and can be applied to animal hide by dipping or
spraying, would have been applied as set forth in Hemling.
Appellants argue the Examiner has not sufficiently shown a market
need for using Lu's dispersions to seal teats of animals for 3 days, per
Hemling's disclosure. Br. 14. This argument is not persuasive. Evidence of
a market need is applicable to an obvious-to-try rationale, which was set
7 See, e.g., Hemling 1:20-35, 3:28-30.
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Application 14/513,306
forth by the Examiner, but perhaps not required to evidence obviousness
here as the claims would have been obvious in any event. However, the
disclosures of Lu and Hemling themselves evidence a market need for their
methods and formulations and for treating and preventing mastitis in cows.
Lu identifies that prophylactic treatment of mastitis in cows by coating cow
teats with an antimicrobial was a known need and proceeds to then disclose
its polyurethane antimicrobial film that has coating capability on many
varied surfaces. Lu ,r 8. Hemling identifies mastitis in cattle as "[a]
significant problem for dairy farmers." Hemling 1:20-21. It is apparent that
there was a market need for a mastitis prophylactic and/or treatment and it
would have been obvious to try Lu's formulation using Hemling's methods.
Appellants argue the prior art, Hemling in particular, does not teach 3-
day sealing of teats. Br. 15. This argument is not persuasive. First, 3-day
sealing is not a claim limitation. In claim 16, the recited clause including
"sealing the teat of the animal mammary gland for up to 3 days," which is a
part of step "B," is preceded by the word "optionally," which renders the
entirety of the step not a requirement, but optional, and, hence, not a
limitation. Even were this element a requirement of the claims, Hemling
discloses that its film, once applied, remains substantially intact for at least 3
days (96% intact). Hemling col. 4 (Table 2). Similarly, Lu extols that an
advantage of its film-forming coating is that it is "longer lasting" and is only
to be removed "at a time determined appropriate by the user," which could
be "seconds, hours, days, weeks, months, even years after application of the
film." Lu ,r,r 69, 73, 127.
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Application 14/513,306
Regarding claim 39, which depends from claim 16, Appellants argue
Lu, Berge, and Hemling fail to teach "the use of monofunctional mixed
polyalkylene oxide polyethers which have 40 to 100 mol% of ethylene oxide
units and Oto 60 mol% of propylene oxide units." Br. 15-16. This
argument is not persuasive. First, no propylene oxide is required by this
claim because it can have O mol% thereof. Second, Berge discloses that
hydrophilic components may be produced as described in the
preceding patents by alkoxylating a monofunctional starter, such
as methanol or n- butanol, using ethylene oxide and optionally
another alkylene oxide, such as propylene oxide or in the case of
oxazolines, methyloxazoline.
Berge ,r 7 5. Thus, like the claim, Berge teaches that components other than
ethylene oxide in this application are optional. Thus, the claimed 40-100
mol% thereof would have been obvious. The fact that Berge may disclose
that less is preferred does not make its teaching of more non-obvious. A
prior art reference is not limited to is preferred embodiments or examples.
For the reasons discussed above, Appellants have not demonstrated
that the Examiner erred in presenting a prima facie case for the obviousness
of all appealed claims.
SUMMARY
The obviousness rejections are each 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)(l)(iv).
AFFIRMED
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