Pimentel, Julio et al.

Patent Trials and Appeals Board

Sep 12, 2019

14347626 - (D) (P.T.A.B. Sep. 12, 2019)

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.
14/347,626 03/26/2014 Julio Pimentel 60288-147660 4610
21888 7590 09/12/2019
THOMPSON COBURN LLP
ONE US BANK PLAZA
SUITE 3500
ST LOUIS, MO 63101
EXAMINER
HUI, SAN MING R
ART UNIT PAPER NUMBER
1621
NOTIFICATION DATE DELIVERY MODE
09/12/2019 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):
IPDOCKET@THOMPSONCOBURN.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JULIO PIMENTEL and KURT RICHARDSON
____________

Appeal 2019-003516
Application 14/347,626
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal1, 2 under 35 U.S.C. § 134(a) involving claims to an
antimicrobial formulation. The Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 Appellant identifies the Real Party in Interest as Anitox Corporation (see
App. Br. 3).
2 We have considered and herein refer to the Specification of Mar. 26, 2014
(“Spec.”); Final Office Action of Jan. 16, 2018 (“Final Act.”); Appeal Brief
of Oct. 23, 2018 (“App. Br.”); and the Examiner’s Answer of Jan. 11, 2019
(“Ans.”).
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Statement of the Case
Background
“Commercial mold inhibitors and bactericides are composed of single
organic or a mixture of organic acids and formaldehyde” (Spec. 7:10–11).
Organic acids, including propionic and acetic acid “have been major
additive[s] to reduce the incidence of food borne infections” (Spec. 7:11–
12). “Several US patents disclose the use of pelargonic acids as fungicides
and bactericides” (Spec. 8:10). “New antimicrobials have been found in
many plants. . . . These antimicrobials, which are components of the plant
essential oils, can be acidic, alcohol or aldehyde-based compounds” (Spec.
1:27–29). For example, trans-2-hexenal has shown biocidal activity in
various formulations (see Spec. 2:1–5:31). The Specification discloses
“[t]he prior art has not suggested or observed that the use of aldehydes in
combination with organic acids improved the antimicrobial activity of either
of the components by themselves” (Spec. 7:8–9).
“The present invention relates only to the use of some of the
aldehydes extracted from plants or chemically synthesized that
synergistically improve the antimicrobial capacity of these compounds by
the addition of organic acids especially nonanoic [pelargonic] acid” (Spec.
9:10–12).
The Claims
Claims 1, 7, 8, and 15 are on appeal. Independent claim 1 is
representative and reads as follows:
1. An antimicrobial composition for extending the shelf-life of
water, feed or feed ingredients, comprising:

water,

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5–15 wt. % of pelargonic acid,

10–20 wt. % of acetic acid,

40–50 wt. % of propionic acid, and

5–30 wt. % of a C1–C24 aldehyde selected from the group
consisting of trans-2-hexenal, citral, furfural,
cinnamaldehyde, undecylenic aldehyde, butyraldehyde, 2,4
decadienal, and decanal.

The Rejections
A. The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Schür3 (Final Act. 2–3).
B. The Examiner rejected claims 7, 8, and 15 under 35 U.S.C. § 103(a)
as being unpatentable over Schür and Koenraad4 (Final Act. 3–5).

A and B. Obviousness
Because both of the obviousness rejections share similar issues as to
the teachings of Schür, we discuss the rejections together.
The Examiner finds “Schür teaches an antimicrobial disinfection
composition comprising GRAS [Generally recognized as safe] flavor
alcohol, GRAS flavor acids including pel[a]rgonic acid, acetic acid, and C2–
C10 acid (prop[]ionic acid is a C3 acid), polyphenol compounds, [and]
aldehydes,” such as 2-hexenal and cinnamaldehyde (Final Act. 2). The
Examiner finds “Schür further teaches the GRAS acid content to be 0–70%”

3 Schür, US 7,638,114 B1, issued Dec. 29, 2009.
4 Koenraad et al., WO 01/32020 A2, published May 10, 2001.
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(Ans. 3). The Examiner finds “Schür teaches the amount of optional
ingredients as 25% or less” (Final Act. 3).
The Examiner acknowledges that “Schür does not expressly teach the
herein claimed amount of the herein claimed ingredients” (Final Act. 3).
However, the Examiner finds:
The total amount of the instant claimed acids is from 55–85%.
Therefore, the herein claimed amount of acids is overlapped with
that taught in the cited prior art. Since they are overlapped in
range, the skilled artisan would have been motivated to optimize
the amount of the acids as claimed, absent evidence to the
contrary.

(Ans. 3).
The Examiner further acknowledges that “Schür does not expressly
teach the antimicrobial composition to be used in feed and drinking water.
Schür does not expressly teach the weight ratio [of] the antimicrobial
composition to the feed” (Final Act. 4). The Examiner finds “Koenraad
teaches pelargonic acid [and] acetic acid can be used to adjust pH as well as
discloses pelargonic acid as antimicrobial for use in food, such as dairy
products and fruit juices” (id.). The Examiner finds “[t]aking the fact that
the carboxylic acids taught in Schür [are] well-known in use for food
product[s] according to Koenraad, employing the antimicrobial composition
of Schür in food would be reasonably expected to be effective as
antimicrobial and preservatives” (id. at 4–5).
The issues with respect to these rejections are:
(i) Does a preponderance of evidence of record support the
Examiner’s conclusion that the prior art renders the claims obvious?
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(ii) If so, has Appellant presented evidence of secondary
considerations, that when weighed with the evidence of obviousness, is
sufficient to support a conclusion of non-obviousness?

Findings of Fact (“FF”)
1. Schür teaches antimicrobial compositions that contain suitable
amounts of from 0.1 to 99% by weight generally recognized as safe in food
(“GRAS”) flavor alcohol (component a1) and “from 0 to 70% by weight,
preferably from 0.01 to 30% by weight,” of one or more GRAS flavor acids
(component b2), among other components (Schür 3:63–4:34).
2. Schür teaches GRAS acids may include pelargonic (nonanoic acid)
and “organic acids containing from 2 to 10 carbon atoms,” specifically
acetic acid (Schür 3:43; 4:16–22).
3. Schür teaches “[t]he antimicrobial composition may further contain
the following components (c) to (h), which are also flavoring agents
recognized . . . [as] GRAS” (Schür 4:45–49).
4. Schür teaches the composition may include aldehydes (component
(g)), such as, citral, n-decanal, 2-hexenal, and cinnamic aldehyde (Schür
5:11–21).
5. Schür teaches “[t]he proportion of components (c) to (h) in the
antimicrobial composition is preferably smaller or equal to 25% by weight”
(Schür 5:43–45).
6. Koenraad teaches “it is possible to use nonanoic acid in a mixture
with one or more antimicrobial agents which are known per se and are
compatible with nonanoic acid, a synergistic effect possibly being able to be
obtained” (Koenraad 9:2–4).
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7. Koenraad teaches “examples of antimicrobial agents that can be used
according to the invention in combination with nonanoic acid are . . .
propionic acid and salts thereof” (Koenraad 9:9–12).
8. Koenraad teaches “[t]he nonanoic acid can furthermore be used in
combination with agents for adjusting the acidity, including the acids
acceptable for foods, such as citric acid, acetic acid and the like” (Koenraad
9:15–17).

Principles of Law
“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'l Co. v. Teleflex Inc., 550 U.S. 398,416 (2007).

Analysis
We adopt the Examiner’s findings of fact and conclusion of law (Final
Act. 2–5 and Ans. 3–4; FFs 1–8) and agree that Schür and the combination
of Schür and Koenraad render the claims obvious. We address Appellant’s
arguments below.
Prima facie obviousness
Appellant contends the Examiner’s “reliance on the principle of
overlapping or close ranges is improper and, as a result, [the Examiner] did
not articulate a well-reasoned case of prima facie obviousness” (App. Br. 8).
Particularly, Appellant contends the Examiner “is relying upon Schür’s
ranges of a GRAS flavor alcohol of 0.01–99 wt%, a GRAS flavor acid of
0.01–30 wt%, and an aldehyde of 25 wt% or less as the overlapping ranges
for establishing a prima facie case of obviousness” (id.).
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We find this argument unpersuasive. Schür teaches an antimicrobial
composition containing 0 to 70 wt.% GRAS flavor acid, with a preferred
range of 0 to 30 wt.% (FF 1). Schür teaches the GRAS flavor acid may
include a combination of pelargonic acid, and C2 to C10 organic acids (FF 2).
Therefore, Schür teaches an antimicrobial composition containing a range of
organic acids including pelargonic acid, acetic acid, and propionic acid that
overlap with the claimed ranges. Accordingly, we are not persuaded that the
Examiner erred in finding the claimed components in the prior art in ranges
that overlap those recited in the claims on appeal.
Appellant contends “a prima facie case of obviousness cannot be
fairly based on the principle of overlapping ranges and optimization of
result-effective variables” (App. Br. 9). Appellant argues “the typical desire
for scientists to optimize occurs within narrow disclosed ranges, not
expansive ranges such as disclosed by Schür” (id., citing Genetics Institute,
LLC v. Novartis Vaccines & Diagnostics, Inc., 655 F.3d 1291, 1306 (Fed.
Cir. 2011). Appellant argues “that the alleged overlapping ranges disclosed
by Schür (i.e., 0.01–99.9% and 0–70%) are so broad large [sic] that they
cannot, as a matter of law, support a case of prima facie obviousness for the
ranges set forth in claim 1, especially in view of the more specific and
relevant teachings of Schür” (App. Br. 9–10).
We do not find this argument persuasive. As a general rule: “[i]n
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.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
First, we find the facts of Genetics Institute to be distinguishable from
the claims at issue. In Genetics Institute, our reviewing court found that:
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[The] inventors did not simply “[s]elect[] a narrow range from
within a somewhat broader range,” as did the Peterson inventors
when selecting the range of “about 1–3%” rhenium from the
prior art range of “0–7%” rhenium. Peterson, 315 F.3d at 1329–
30. As noted, the ’112 patent contains 68,000 truncated variants
of a protein made up of 2,332 amino acids, and the allegedly
interfering inventions differ in terms of the size of the permitted
amino acid deletions, the location of those deletions, and the
degree of allowable amino acid substitutions. The facts here
present a case where the “disclosed range is so broad as to
encompass a very large number of possible distinct
compositions” thus “requir[ing] nonobvious invention,” not a
case, as in Peterson, where prior art “ranges that are not
especially broad invite routine experimentation to discover
optimum values.” Id. at 1330 n. 1.

655 F.3d at 1306. As applied to the present claims, the prior art does not
disclose a multitude of protein variants made up of a multitude of amino
acids. Rather, the prior art discloses an antimicrobial composition with a
range of known components that reasonably invites experimentation to
discover optimum values of those components.
Second, applying Peterson, we find that the ranges of the prior art are
not unduly broad, particularly as compared to the claimed ranges. See In re
Harris, 409 F.3d 1339, 1342–43 (Fed. Cir. 2005) (“Harris points to Peterson
to advance his position that Yoshinari’s ranges are too broad to teach any
specific alloy to the skilled artisan. . . . A review of Peterson informs the
court that this case does not present such a problem”). The claimed range of
45 to 85 wt.% organic acids (pelargonic, acetic, and propionic acid) overlaps
the prior art range of 0 to 70 wt.% GRAS flavor acids, including pelargonic,
acetic, and propionic acid. See Harris, 409 F.3d at 1341 (“Even without
complete overlap of the claimed range and the prior art range, a minor
difference shows a prima facie case of obviousness”) (emphasis added).
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Additionally, there is substantial overlap of the claimed range of aldehyde of
5 to 30 wt.% with the prior art range of aldehyde, i.e., 0 to 25 wt.% (FF 5).
Moreover, Peterson’s claimed ranges were narrower than those presently
claimed. See 409 F.3d at 1343. Because the claims at issue recite broader
ranges than the claims in Peterson and the claimed ranges substantially
overlap with the ranges disclosed in the prior art, we are not persuaded that
the Examiner erred. Nor has Appellant demonstrated any criticality in the
non-overlapping portions of the range.
Appellant contends “[c]laim 1 contains no limitation regarding a
GRAS flavor alcohol but the presence of a GRAS flavor alcohol in the Schür
composition must be addressed because it is required to be present in a large
amount (i.e., at least 75%) to achieve the desired antimicrobial effect” (App.
Br. 10). Appellant contends:
Despite this broad range and Schür’s teachings that the GRAS
alcohol content is at least 75 wt% of the composition and
preferably at least 90 wt%, a determination of obviousness
requires a POSITA to, for some unexplained reason, disregard
Schür’s teachings and select a very low amount of GRAS flavor
alcohol in order to maximize other possible constituents such a
GRAS flavor acid in order to allegedly render obvious the
composition of claim 1.

App. Br. 10–11. Appellant argues further that Schür’s claims and examples
require the presence of particular components, e.g., propylene glycol, benzyl
alcohol, tannic acid, and optionally aldehydes (see App. Br. 11–12).
We find Appellant’s argument unpersuasive. We begin with
Appellant’s contention as to scope of claim 1. Claim 1 recites the open-
ended transitional phrase “comprising,” and thereby permits the inclusion of
other materials, e.g., GRAS flavor alcohols. See In re Baxter, 656 F.2d 679,
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686 (CCPA 1981). Because, the claims allow for additional components, we
next consider Appellant’s argument as to the amount of these additional
components.
Appellant focuses on Schür’s preferred and claimed embodiments.
“But in a section 103 inquiry, the fact that a specific embodiment is taught to
be preferred is not controlling, since all disclosures of the prior art, including
unpreferred embodiments, must be considered.” Merck & Co. Inc. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (internal citations
omitted). Moreover, the “use of patents as references is not limited to what
the patentees describe as their own inventions or to the problems with which
they are concerned. They are part of the literature of the art, relevant for all
they contain.” In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983). Schür
teaches antimicrobial compositions containing several components,
including 0 to 70 wt.% GRAS flavor acids and 0 to 25 wt.% aldehydes (FFs
1, 5). Appellant has not identified any teaching in Schür that would
discourage one of ordinary skill in the art from making that combination or
criticizes or discredits the combination. See In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994) (“A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant”). Therefore, we
agree with the Examiner that Schür would have provided the ordinary artisan
reason to form compositions containing organic acids and aldehydes as
claimed.
Appellant contends “[t]here is no evidence that a POSITA would have
selected the particular acids . . . or one of the recited C1–C24 aldehydes . . .
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Schür provided no teachings that would lead a POSITA to select the
constituents of claim 1 from the lists of possible GRAS acids and aldehydes”
(App. Br. 12). Appellant contends that the Examiner “failed to articulate
any guidance from Schür that would lead to the selections of acids and
aldehydes of claim 1” (App. Br. 13). Appellant argues that in view of the
lack of guidance there is no reasonable articulation of obviousness (id.).
We not find Appellant’s argument persuasive. The disclosure of “a
multitude of effective combinations does not render any particular
formulation less obvious. This is especially true because the claimed
composition is used for the identical purpose taught by the prior art.”
Merck, 874 F.2d at 807. “[P]icking and choosing may be entirely proper in
the making of a 103, obviousness rejection.” In re Arkley, 455 F.2d 586,
587 (CCPA 1972). As admitted by Appellant’s Specification and taught by
Schür and Koenraad, the claimed components were previously known for
their antimicrobial activity in food compositions. Therefore, it would have
been prima facie obvious to pick and choose from those known components
to form an antimicrobial formulation according to Schür.
Before addressing Appellant’s evidence of unexpected results, we
consider the rejection of claims 7, 8, and 15 as obvious over Schür in view
of Koenraad. Appellant does not raise any argument against the Examiner’s
rejection other than “claim 7 is nonobvious over Schür in view of Koenraad
for the same reasons set forth above regarding claim 1” (App. Br. 17).
Accordingly, for the reasons set forth above, we are not persuaded that the
Examiner erred in determining that claims 1, 7, 8, and 15 would have been
prima facie obvious over the prior art.
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Secondary considerations
Appellant contends “[t]he composition of claim 1 is nonobvious
because the combination of recited constituents and ranges yield an
unexpectedly good antimicrobial composition for treating water, feed, and
feed ingredients” (App. Br. 14 (emphasis omitted)). Appellant lists several
examples which allegedly “demonstrate a synergy between hexenal and
other claimed aldehydes in the presence of pelargonic acid, acetic acid and
propionic acid” (App. Br. 16). Appellant contends “[a]t the very least, it has
been found that the combination of hexenal and each of the aldehydes can
provide antimicrobial activity that is better than that would be expected
based on the antimicrobial activity of each of the components in isolation”
(id.).
We do not find Appellant’s evidence persuasive. Unexpected results
must be “commensurate in scope with the degree of protection sought by the
claimed subject matter.” In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
Appellant’s independent claims recite a Markush group for the aldehyde
component of the composition (see Claims 1 and 7). “[W]ithout expressly
indicating the selection of multiple members of a Markush grouping, a
patentee does not claim anything other than the plain reading of the closed
claim language.” Abbott Labs. v. Baxter Pharm. Prod., Inc., 334 F.3d 1274,
1281 (Fed. Cir. 2003). Appellant’s claims do not have qualifying language
such as “and mixtures thereof” or “at least one member of the group.” See
id. Because the claims do not clearly embrace more than one member of the
Markush group, only one aldehyde falls within the claim scope. Id. The
Examiner applied this interpretation to the claims (Ans. 4), and Appellant
did not offer a contrary interpretation. Thus, the claims as reasonably
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interpreted do not encompass the use of combinations of multiple aldehydes
that are present in the test compositions asserted to show unexpected results.
See 37 C.F.R. § 41.37(c)(iv) (“[A]ny arguments or authorities not included
in the appeal brief will be refused consideration by the Board for purposes of
the present appeal”).
Even if Appellant’s pending claims encompass combinations of
aldehydes, arguendo, the unexpected results would not be commensurate
with the scope of the claims at issue. “Commensurate in scope” means that
the evidence provides a reasonable basis for concluding that the untested
embodiments encompassed by the claims would behave in the same manner
as the tested embodiment(s). See In re Lindner, 457 F.2d 506, 508, 173
USPQ 356, 358 (CCPA 1972) (“Here, only one mixture of ingredients was
tested. . . . The claims, however, are much broader in scope, . . . and we
have to agree with the Patent Office that there is no ‘adequate basis for
reasonably concluding that the great number and variety of compositions
included by the claims would behave in the same manner as the [single]
tested composition.’”) (bracketed material in original). The results in the
Specification are limited to a few combinations of aldehydes in specific
amounts and concentrations, several of which have no antimicrobial activity.
The results do not provide a reasonable basis for concluding that any
combination of the claimed aldehydes within the claimed range would
behave in the same manner as the tested embodiments.
Conclusion of Law
A preponderance of the evidence of record supports the Examiner’s
conclusion that the prior art renders the claims obvious. Appellant has not
presented evidence of secondary considerations, that when weighed with the
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evidence of obviousness, is sufficient to support a conclusion of non-
obviousness.

CONCLUSION
In summary:
Claim(s)
Rejected
Basis Affirmed Reversed
1 § 103 Schür 1
7, 8, 15 § 103 Schür,
Koenraad
7, 8, 15
Overall Outcome 1, 7, 8, 15

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