Ex Parte Jayaraman et al

Patent Trial and Appeal Board

Dec 18, 2017

14362503 (P.T.A.B. Dec. 18, 2017)

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.
14/362,503 06/03/2014 Sujatha Jayaraman G2131USw 6130
201 7590 12/20/2017
UNILEVER PATENT GROUP
800 SYLVAN AVENUE
ENGLEWOOD CLIFFS, NJ 07632-3100
EXAMINER
THOMAS, TIMOTHY P
ART UNIT PAPER NUMBER
1628
NOTIFICATION DATE DELIVERY MODE
12/20/2017 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):
patentgroupus @ unilever. com
pair_unilever@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUJATHA JAYARAMAN, SHANTHI APPAVOO,
SUJITKUMAR SURESH HIBARE, VIDULA IYER, and
MAYA TREES A SAJI.1
Appeal 2017-003826
Application 14/362,503
Technology Center 1600
Before JOHN G. NEW, TAWEN CHANG, and JOHN E. SCHNEIDER,
Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims 1-3 to
antimicrobial compositions, constituting all the claims pending in this
application, which have been rejected as obvious. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Conopco, Inc. Br. 3.
Appeal 2017-003836
Application 14/362,503
STATEMENT OF THE CASE
“Sanitizing and disinfecting compositions comprising chlorine and
nascent oxygen based bleaching agents are known.” Spec. 1. One
disadvantage of these disinfectant compositions is that they require a long
contact time to be effective. Id. Certain essential oils, including thymol and
terpineol interact synergistically and provide anti-microbial activity within a
short time. Spec. 2. While these oils are effective, they are relatively
expensive and can exhibit an unpleasant odor. Id. The Specification
describes a composition containing relatively low amounts of the oils while
retaining a high degree of antimicrobial activity.
Claims 1-3 are on appeal.2 Claim 1 is the sole independent claim and
reads as follows:
1. An antimicrobial composition comprising
(a) 0.01 to 2% of total essential oil active, including
thymol and terpineol, present at 0.02% to less than 0.2% of the
composition thymol and 0.05% to less than 0.5% of the
composition terpineol; and
(b) 0.1 % to 20% of a hydrotrope selected from the group
consisting of sodium benzoate, sodium toluene sulphonate,
sodium cumene sulphonate, sodium xylene sulphonate, sodium
salicylate, sodium acetate, and mixtures thereof.
Br. 14 (Claims App.).
2 Claims 4-9 are pending in the application but have been withdrawn from
consideration as being directed to a nonelected invention. Final Act. 2.
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The claims stand rejected as follows:
Claims 1 and 2 have been rejected under 35 U.S.C. § 103(a) as
unpatentable over Chakrabortty3 in view of Natsch.4
Claims 1-3 have been rejected under 35 U.S.C. § 103(a) as
unpatentable over Chakrabortty in view of Natsch and in further view of
Darwish5 and Narayanan.6
CHAKRABORTTY COMBINED WITH NATSCH
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that claims 1 and 2 are
obvious over Chakrabortty combined with Natsch.
The Examiner finds that Chakrabortty teaches an antimicrobial
composition comprising 0.05% to 0.3% thymol and 0.05% to 1.0%
terpineol, which overlaps with the ranges recited in the claims. Final Act. 5-
7. The Examiner finds that Chakrabortty discloses that the use of a
surfactant enhances that effectiveness of the antimicrobial agents. Final Act.
12-13. The Examiner finds that Natsch teaches the use of hydro tropes in
3 Chakrabortty et al., US 2011/0223114 Al, published Sept. 15, 2011
(“Chakrabortty”).
4 Natsch, WO 2006/052458 Al, published May 26, 2006 (“Natsch”).
5 Darwish et al., Effects of Hydrotropic Agents on the Solubility,
Precipitation, and Protein binding of Etoposide, 78 J. Pharm. Sci. 577
(1989) (“Darwish”).
6 Narayanan et al., WO 2012/0185519 Al, published Feb. 9, 2012
(“Narayanan”).
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antibacterial compositions to aid in solubilizing the antibacterial ingredients
such as thymol. Final Act. 8. The Examiner concludes that
It would have been obvious to one of ordinary skill in the
art at the time of the invention to add one of the Natsch
hydrotropes, sodium toluene sulphonate, sodium cumene
sulphonate, sodium toluene sulphonate, or sodium xylene
sulphonate, to solubilize, in an amount such as 4%, to amounts
slightly less than 0.2% thymol and slightly less than 0.5%
terpineol taught by Chakrabortty, giving the methods of instant
claims 1-2 and 10. The motivation would have been to fully
solubilize both the thymol and terpineol present in the
Chakrabortty formulations, which would employ the
antibacterial properties of the full amount of the compounds
present.
Final Act. 10.
Appellants contend that Chakrabortty does not disclose the use of a
hydrotrope, let alone the specific hydrotropes recited in the claims. Br. 9.
Appellants argue that hydrotropes are not the same as surfactants and one
skilled in the art would not expect the hydrotropes of Natsch to have the
same effect as the surfactants of Chakrabortty. Br. 9-11. Appellants
contend that the Examiner has engaged in improper use of hindsight in
making the rejection. Br. 10. Appellants argue that Natsch does not teach
the specific combination of antimicrobial agents nor does it suggest using
the agents at the low levels recited in the claims. Br. 10-11. Appellants also
argue that the Specification provides evidence of unexpected results which
overcomes the Examiner’s finding of obviousness. Br. 8-9.
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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. The following findings are included for emphasis and reference
purposes.
FF1. Chakrabortty discloses an antimicrobial composition with
“relatively quick antimicrobial action.” Chakrabortty Abstract.
FF2. The composition of Chakrabortty comprises 0.01 to 5% by
weight thymol, 0.01 to 5% terpineol, and a carrier. Chakrabortty 14.
FF3. Chakrabortty teaches that the composition preferably contains 1
to 80% by weight surfactant. Chakrabortty 29.
FF4. Chakrabortty also teaches that,
[t]o the further surprise of the inventors, while the surfactant
alone does not provide the fast antimicrobial kill at the
concentration present in wash off processes, it provides for
further improvement in extent of reduction in microbial counts
on the surface in short period of time when surfaces are washed
with a composition comprising terpineol, thymol and
additionally surfactant. Thus, while on the one hand surfactant is
generally known to be responsible for washing off dirt and also
antimicrobial actives used in the composition, in the present
invention, it provides a highly useful additional benefit in that it
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enhances the reduction of microbial count in a composition
comprising a combination of thymol and terpineol alone.
Chakrabortty Tf 38.
FF5. Natsch discloses bactericidal compositions comprising perfume
ingredients active against gram negative bacteria. Natsch Abstract.
FF6. The bactericidal compositions of Natsch comprise 0.2% of one
or more perfume ingredients which exhibit bactericidal activity; 4 to 20% of
a hydro trope; and 0.1 to 9% of one or more surfactants. Natsch 4.
FF7. Thymol is one of the perfume ingredients listed in Natsch as
having bactericidal activity. Id.
FF8. The hydrotropes useful in the practice of the invention descried
in Natsch include toluene-sulfonate, xylene-sulfonate, cumene-sulfonate,
diisobutyl-sulfosuccinate; or the sodium, ammonium or potassium salts of a
hydrotrope selected from the group consisting of toluene-sulfonate, xylene-
sulfonate, cumene-sulfonate, diisobutyl-sulfosuccinate; and
dipropyleneglycol-n-butyl-ether; or a combination of one or more of these
hydrotropes. Natsch 5.
FF9. Natsch teaches that
Suitable hydrotropes have the ability to solubilise antibacterial
perfume ingredients according to the present invention in
compositions with low surfactant levels, where antibacterial
perfume ingredients are not sufficiently solubilised. When the
antibacterial perfume ingredients are added at a concentration of
0.5-1% to a formulation lacking a hydrotrope but otherwise
according to the invention, the formulations will form a turbid
solution which becomes clear upon admixture of useful
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hydrotrope in a concentration of 4-12% as determined by visual
inspection.
Natsch 10.
FF10. Natsch teaches that the bactericidal compositions disclosed
therein exhibit high rapid bactericidal activity. Natsch 17.
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).
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
“In cases involving overlapping ranges, we and our predecessor court
have consistently held that even a slight overlap in range establishes a prima
facie case of obviousness .... We have also held that a prima facie case of
obviousness exists when the claimed range and the prior art range do not
overlap but are close enough such that one skilled in the art would have
expected them to have the same properties.” In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003).
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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 (CCPA 1971).
“[I]t is well settled that unexpected results must be established by
factual evidence. ‘Mere argument or conclusory statements in the
specification does not suffice.’” In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)).
“The evidence presented to rebut a prima facie case of obviousness
must be commensurate in scope with the claims to which it pertains.” In re
Dill, 604 F.2d 1356, 1361 (CCPA 1979).
Analysis
The Examiner has established that the claims would have been
obvious to one of ordinary skill in the art at the time the invention was made
over Chakrabortty combined with Natsch. 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 Briefs have been considered in this Decision. Arguments
not presented in the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv)
(2015). We have identified claim 1 as representative; therefore, all claims
fall with claim 1. We address Appellants’ arguments below.
Appellants contend that Chakrabortty does not teach or suggest the
use of hydrotropes, especially those recited in the claims. Br. 9-10. We are
unpersuaded. The Examiner does not look to Chakrabortty to teach the use
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of hydrotropes but instead looks to Natsch for that teaching. Final Act. 8-9.
It is the combination of the references that renders the instant claims
obvious. Attacking the teachings of the individual will not effectively
overcome a prima facie case of obviousness.
Appellants’ arguments with respect to Natsch are also not persuasive.
Appellants contend that Natsch does not teach the use to thymol and
terpineol at low levels and that the use of hydrotropes would have a
synergistic effect. Br. 11. The use of thymol and terpineol at low levels is
taught by Chakrabortty. FF2. Similarly, Chakrabortty teaches that the use
of a surfactant, which solubilizes the thymol and terpineol, also improves the
antimicrobial activities of the composition. FF4. Again, it is the
combination of the references which renders the claims obvious.
Appellants contend that the Examiner has engaged in improper
hindsight in adding a hydro trope to the composition of Chakrabortty. We
are not persuaded. The suggestion to combine the references stems from the
references themselves, not from Appellants’ disclosure. As the Examiner
points out, Natsch teaches that the addition of a hydrotrope improves the
solubility of the perfume bactericidal agents. FF9, Ans. 6-7. One skilled in
the art would have been motivated to use a hydrotrope to ensure that the
antimicrobial agents of Chakrabortty were fully solubilized. Final Act. 10.
Appellants next argue that there is sufficient evidence of unexpected
results to overcome a prima facie case of obviousness. Br. 8. We have
considered Appellants’ argument and the evidence of record and find them
unpersuasive.
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To begin, there is no evidence that the improved antimicrobial activity
reported by Appellants is unexpected. Chakrabortty teaches that the addition
of a surfactant enhances the antimicrobial effect to thymol combined with
terpineol. FF 4. While hydrotropes are not the same as surfactants, they
produce a similar effect, namely solubilizing the antimicrobial agents. Ans.
6-7. Thus one skilled in the art would expect hydrotropes to enhance the
performance of the antimicrobial agents in the same manner as surfactants.
Appellants have not introduced any evidence that the results reported
by Appellants are unexpected. The only statement that the results are
unexpected are in Appellants’ argument found in the Appeal Brief. Br. 8.
This unsupported argument is insufficient to overcome the Examiner’s
finding of obviousness.
Even if the results were deemed unexpected, they are not
commensurate with the scope of the claims. The formulations reported in
Table 1 of the Specification only report results for compositions containing
0.025% thymol, 0.0625% terpineol, and 2% hydrotrope. Spec. 13, Table 1.
Claim 1 recites amounts of thymol of from 0.02 to 0.2%, terpineol of from
0.05% to 0.5% and hydrotrope of from 0.1 to 20%. Br. 14 (Claims App.).
Thus the evidence of alleged unexpected results in the record is not
commensurate with the scope of the claims.
CONCLUSION
We conclude that a preponderance of the evidence supports the
Examiner’s conclusion that claim 1 would have been obvious over
Chakrabortty combined with Natsch.
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CHAKRABORTTY COMBINED WITH NATSCH, DARWISH, AND
NARAYANAN
Appellants have offered no arguments with respect to this rejection.
Therefore we summarily affirm the rejection.
SUMMARY
We affirm the rejections under 35 U.S.C. § 103(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)(l)(iv).
AFFIRMED
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