Ex Parte Pan et al

Patent Trial and Appeal Board

Apr 9, 2013

12410219 (P.T.A.B. Apr. 9, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/410,219 03/24/2009 Robert Ya-Lin Pan 13130/80 2804
757 7590 04/09/2013
BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
OGDEN JR, NECHOLUS
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
04/09/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ROBERT YA-LIN PAN, ROSA LAURA MOESE,
and ABEL SAUD
________________

Appeal 2011-013503
Application 12/410,219
Technology Center 1700
________________

Before CHUNG K. PAK, TERRY J. OWENS, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-35, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim antimicrobial compositions, products and
methods. Claim 1 is illustrative:
1. An antimicrobial composition capable of inactivating
viruses comprising:
a. from about 0.2% to about 70% of an organic acid,
which is pyroglutamic acid or gluconic acid;
b. from about 0.1 % to about 40% of an anionic
surfactant mixture having a characteristic selected from the
group consisting of:
i. a linear alkyl chain having a chain length of from
about C4 to about C12 and a total hydrophilic head group size
of at least about 4 Angstroms;
ii. an unsaturated alkyl chain having a chain length
of from about C4 to about C12;
iii. a branched alkyl chain having a chain length of
from about C4 to about C12; and
iv. combinations thereof; and
c. a calcium ion scavenger, which is citric acid, malic
acid, succinic acid, or polyacrylic acid;
wherein said composition is characterized by a pH of
from about 2.0 to about 4.5; and
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wherein said viruses include one of at least rotavirus,
coronavirus, respiratory syncytial virus, and combinations
thereof.
The References
Beerse US 6,190,675 B1 Feb. 20, 2001
Wei US 2002/0098159 A1 Jul. 25, 2002
The Rejections
Claims 1-35 stand rejected under 35 U.S.C. § 102(b) or, in the
alternative, under 35 U.S.C. § 103 over Beerse and over Wei.
OPINION
We reverse the rejections under 35 U.S.C. § 102(b) and affirm the
rejections under 35 U.S.C. § 103.
Rejections under 35 U.S.C. § 102(b)
Beerse discloses an antimicrobial composition comprising about 0.1
to about 12 wt%, most preferably about 2.5 to about 5 wt%, of an organic
acid which can be gluconic acid, citric acid, malic acid, succinic acid,
polyacrylic acid or a mixture thereof (col. 4, ll. 27-29; col. 14, ll. 2-12;
col. 15, ll. 9-14, 26-36), and about 1 to about 80 wt%, more preferably about
5 to about 25 wt%, of an anionic surfactant (col. 8, ll. 16-21). “Anionic
surfactants or mixtures of surfactants with a chain length primarily in the
range of from about 8 to about 24 carbon atoms, preferably primarily from
about 10 to about 18 carbon atoms and most preferably primarily from about
12 to about 16 carbon atoms are preferred from the standpoint of high
biological activity” (col. 12, ll. 1-6). The carbon chain can be a branched or
unbranched, saturated or unsaturated alkyl group (col. 8, ll. 53-58). Beerse’s
examples include anionic surfactants having a primary chain length of 12
carbon atoms (tables in columns 30-33). “From the standpoint of biological
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activity, it is preferred that the head group of the anionic surfactant be less
than about 15 Angstroms, preferably less than about 10 Angstroms, and
more preferably less than about 7 Angstroms” (col. 12, ll. 9-12). The
composition’s pH is about 3.0 to about 6.0, more preferably about 3.5 to
about 4.5 (col. 15, ll. 4-7). The composition is effective against transient
Gram positive bacteria (col. 1, ll. 13-15; col. 3, ll. 26-30).
Wei discloses an antimicrobial composition comprising about 0.1 to
about 20 wt%, most preferably about 1 to about 5 wt%, of an organic acid
which can be gluconic acid, citric acid, malic acid, succinic acid, polyacrylic
acid or a mixture thereof (¶¶ 0027, 0031, 0041-42), and about 0.05 to about
20 wt%, optimally about 0.1 to about 2 wt%, of a surfactant which
preferably is an anionic surfactant and can be a mixture of anionic
surfactants (¶¶ 0045-46). The anionic surfactant can have a branched or
unbranched, saturated or unsaturated alkyl group having a chain length of
about 8 to about 24 carbon atoms (¶¶ 0047, 0051). Wei exemplifies an
anionic surfactant having a 12-carbon chain length (ammonium lauryl
sulfate; table in ¶ 0436). The composition’s pH is about 2.0 to about 6.0,
more preferably about 2.5 to about 4.5 (¶ 0040). The composition is
effective against bacteria and viruses (¶¶ 0012, 0023).
For the Appellants’ claimed invention to be anticipated, the reference
must lead one of ordinary skill in the art to a composition which falls within
the scope of the claim “without any need for picking, choosing, and
combining various disclosures not directly related to each other by the
teachings of the cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA
1972).
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The Examiner does not provide an explanation as to how the
Appellants’ claimed composition, product or method can be arrived at
without picking, choosing and combining disclosures not directly related to
each other by Beerse or Wei (Ans. 3-6). Accordingly, we reverse the
rejections under 35 U.S.C. § 102(b).
Rejections under 35 U.S.C. § 103
The Appellants argue the claims as a group (Br. 12-18, 22-24). We
therefore limit our discussion to one claim, i.e., claim 1. Claims 2-35 stand
or fall with that claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Rejection over Beerse
The Appellants argue that Beerse’s disclosure that “most preferably
primarily from about 12 to about 16 carbon atoms are preferred from the
standpoint of high biological activity . . . . [f]rom a standpoint of mildness, it
is preferable to minimize C12” (col. 12, ll. 4-8) is a teaching away from a
chain length of about 4 to about 12 (Br. 19).
That disclosure by Beerse would have led one of ordinary skill in the
art who desired high biological activity to use, through no more than
ordinary creativity, anionic surfactants having chain lengths of about 12 to
about 16 carbon atoms. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (In making an obviousness determination one “can take account of
the inferences and creative steps that a person of ordinary skill in the art
would employ”). That range overlaps the Appellants’ range of about 4 to
about 12 carbon atoms and, therefore, would have rendered chain lengths
within the Appellants’ range prima facie obvious to one of ordinary skill in
the art. See In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997); In re
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Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Malagari, 499 F.2d 1297,
1303 (CCPA 1974).
The Appellants argue that not all antibacterials are effective against
viruses and that Beerse says nothing about effectiveness of Beerse’s
antimicrobial composition against viruses (Br. 19-24).
Beerse’s antimicrobial compositions which fall within the scope of the
Appellants’ claim 1 have the properties of the Appellants’ corresponding
compositions. See In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From
the standpoint of patent law, a compound and all of its properties are
inseparable; they are one and the same thing”). The Appellants’ discovery
of another property of Beerse’s compositions which fall within the
Appellants’ claim 1, i.e., antiviral effectiveness, is not sufficient to render
patentable claims encompassing those compositions. Compare In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990) (“The discovery of a new property or use
of a previously known composition, even when that property and use are
unobvious from the prior art, can not impart patentability to claims to the
known composition”).
The Appellants argue, in reliance upon the Second Declaration of
Dr. Michael Lynch under 37 C.F.R. § 1.132 (filed April 8, 2008), that the
Appellants’ claimed composition has unexpected effectiveness (Br. 24;
Reply Br. 5).
For the following reasons the totality of the evidence, including that
Declaration, does not support a conclusion of nonobviousness of the
Appellants’ claimed composition.
First, as acknowledged by the Appellants (Reply Br. 5), the evidence
in the Declaration does not provide a comparison of the claimed invention
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with any prior art, let alone the closest prior art. See In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984). Hence, the evidence provides no basis for Lynch’s
statements in the Declaration that the results are unexpected, statistically
significant and scientifically meaningful (Decl. 4). The Appellants’
comparison to Beerse’s and Wei’s examples (Reply Br. 5-6) is mere attorney
argument. Such argument of counsel cannot take the place of evidence. See
Blauwe, 736 F.2d at 705; In re Payne, 606 F.2d 303, 315 (CCPA 1979); In
re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974).
Second, the evidence is not commensurate in scope with the claims.
The claims clearly encompass a far greater range of compositions than those
relied upon in the Declaration (Decl. 3). See In re Grasselli, 713 F.2d 731,
743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
The mere fact that, as argued by the Appellants (Reply Br. 4-5), the
relied-upon test results are within the scope of the claims does not make
them commensurate in scope with the claims. We find in the evidence of
record no reasonable basis for concluding that the great number of materials
encompassed by the Appellants’ claims would behave as a class in the same
manner as the particular materials tested. See In re Lindner, 457 F.2d 506,
508 (CCPA 1972); In re Susi, 440 F.2d 442, 445-46 (CCPA 1971).
Thus, the Appellants have not shown reversible error in the rejection
under 35 U.S.C. § 103 over Beerse.
Rejection over Wei
The Appellants argue that “the broad disclosure regarding suitable
surfactants found in Wei does not teach or suggest the use of the short chain
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anionic surfactants as claimed. Appellants submit that Wei teaches the use
of higher chain surfactants than those of the present invention; and thus,
there is no disclosure, teaching, or suggestion of the claimed range of C4 to
C12 chain lengths” (Br. 15).
Wei’s anionic surfactant chain length range of about 8 to 24 carbon
atoms (¶ 0047) overlaps the Appellants’ range of about 4 to about 12 carbon
atoms and, therefore, would have rendered the use of anionic surfactants
having chain lengths within the overlap prima facie obvious to one of
ordinary skill in the art. See Geisler, 116 F.3d at 1469-70; Boesch, 617 F.2d
at 276; Malagari, 499 F.2d at 1303. Wei’s exemplification of an anionic
surfactant having a carbon atom chain length of 12 (ammonium lauryl
sulfate; table in ¶ 0436) further would have fairly suggested, to one of
ordinary skill in the art, the use of an anionic surfactant having a carbon
atom chain length within the Appellants’ range.
The Appellants’ reliance upon the Lynch Declaration (Br. 16-18) is
not persuasive for the reasons given above regarding the rejection over
Beerse.
The Appellants, therefore, have not shown reversible error in the
rejection under 35 U.S.C. § 103 over Wei.
DECISION/ORDER
The rejections of claims 1-35 under 35 U.S.C. § 102(b) over Beerse
and over Wei are reversed. The rejections of claims 1-35 under
35 U.S.C. § 103 over Beerse and over Wei are affirmed.
It is ordered that the Examiner’s decision 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).
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AFFIRMED

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