Ex Parte Andrews et al

Patent Trial and Appeal Board

Feb 25, 2019

10936989 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/936,989 09/08/2004
32692 7590 02/27/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Jeffrey F. Andrews
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.
58158US004 3275
EXAMINER
PURDY, KYLE A
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY F. ANDREWS and DANLI WANG 1
Appeal2018-003164
Application 10/936,989
Technology Center 1600
Before JOHN G. NEW, and, RYAN H. FLAX, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify 3M Company as the real party-in-interest. App. Br. 2.
Appeal2018-003164
Application 10/936,989
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-16, 18, 20-25, 30, 31, 42, and 53-
57. Specifically, claims 1-16, 18, 22, and 55-57 stand rejected as
unpatentable under 35 U.S.C. § 103(a) as being obvious over Andrews et al.
(US 5,490,992, February 13, 1996) ("Andrews").
Claims 20 and 21 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Andrews and Andrews
(US 5,569,461, October 29, 1996) ("Andrews II").
Claims 23-25, 30, 31, 42, 53, and 54 stand rejected as unpatentable
under 35 U.S.C. § 103(a) as being obvious over the combination of
Andrews, Andrews II, and Tautvydas et al. (WO 01/43549 A2, June 21,
2001) ("Tautvydas").
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to a product and process to reduce
the microbial contamination on organic matter, such as processed meat,
fruits and vegetables, plant parts, and inanimate surfaces such as textiles and
stainless steel. Spec. Abstr.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. An antimicrobial composition, comprising:
2
Appeal2018-003164
Application 10/936,989
at least 70% by weight of at least one antimicrobial lipid
comprising a major amount of propylene glycol (C7---C14) fatty
acid ester present in an amount of at least 30% by weight of the
antimicrobial composition, wherein the propylene glycol (C7-
C14) fatty acid ester serves as both an antimicrobial active and
the vehicle for the antimicrobial composition; and
an enhancer;
wherein the propylene glycol (C7---Cl4) fatty acid ester
comprises monoester in an amount greater than 60%.
App. Br. 9.
ISSUES AND ANALYSES
We adopt the Examiner's findings, reasoning, and conclusion that the
claims are primafacie obvious over the cited prior art. We address the
arguments raised by Appellants below.
A. Claims 1-16, 18, 22, and 55-57
Issue 1
Appellants argue that the Examiner erred because there is no reason
why a person of ordinary skill in the art would have used the claimed
amount of antimicrobial lipid. App. Br. 3.
Analysis
The Examiner finds that Andrews teaches concentrated disinfectant
compositions, containing a fatty acid monoester, an acid or chelating agent,
and a food grade surfactant, that are effective against pathogenic and other
undesired bacteria. Final Act. 4 ( citing Andrews Abstr. ). The Examiner
3
Appeal2018-003164
Application 10/936,989
finds that Andrews teaches that the fatty acid monoester includes propylene
glycol monoesters of caprylic acid and capric acid, i.e., propylene glycol
monocaprylate and propylene glycol monocaprate that are commonly
employed as food preservatives and pharmaceutical agents. Id. ( citing
Andrews col. 1, 1. 372). The Examiner finds that Andrews teaches that the
concentrated composition may comprise about 50% by weight of the
propylene glycol fatty acid monoester, which can be diluted to a final
amount of between 0.001-5.0% by weight of the fatty acid monoester prior
to use. Id. (citing Andrew col. 4, 11. 35--40).
The Examiner finds that, although Andrews fails to teach the amount
of fatty acid monoester being 70% by weight, a person of ordinary skill in
the art would have reasonably expected that a change in concentration,
would result in a composition capable of being diluted with water to produce
a final disinfectant composition comprising between 0.001-5% by weight of
the fatty acid monoester. Final Act. 5. The Examiner notes that differences
in concentration or temperature will generally not support the patentability
of subject matter encompassed by the prior art, unless there is evidence
indicating such concentration or temperature is critical. Id. ( citing MPEP
§ 2144.05).
Appellants argue that the three components of the claimed
composition: (1) a fatty acid monoester; (2) an acid or chelating agent; and
(3) a surfactant, are combined in an aqueous or
2 We believe this to be an inadvertent typographical error; the proper citation
is Andrews col. 2, 11. 34--44.
4
Appeal2018-003164
Application 10/936,989
nonaqueous vehicle, which is present in a large quantity, such as 53%, 54%,
61 %, 68%, 73%, 83%, 84%, or 74.5%. App. Br. 4 (citing Andrews col. 5,
lines 17--40, col. 13-14 Table 5, formulae 1-16). According to Appellants,
Andrews teaches that the fatty acid monoester used to provide a
concentrated composition is between about 1.0% and 50.0% by weight, and
preferably between about 1.0% and 20.0%. Id. (citing Andrews col. 4, 11.
34--41).
Appellants point out that claim 1 requires: "at least 70% by weight of
at least one antimicrobial lipid comprising a major amount of propylene
glycol (C7---Cl4) fatty acid ester." Appellants assert that this is different
from Andrews, which teaches concentrations between about 1.0% and
50.0%, and preferably between about 1.0% and 20.0% for a concentrate, or
between about 0.001-5.0%, preferably about 0.005-1.0%, for the diluted
compositions that are applied to food. Id. ( citing Andrews col. 4, 11. 34--41 ).
Appellants argue that the Examiner's reliance upon Section 2144.05
of the MPEP is misplaced because it is inapplicable to the present facts.
App. Br. 4. According to Appellants, Andrews preferentially teaches
concentrations significantly lower than 50%, i.e., less than or equal to 20%,
which is significantly less than the "at least 70%," as recited by claim 1. Id.
at 5. Appellants argue further that a lipid concentration of 70% appears to
be impossible in the teachings of Andrews, because Andrews requires a
vehicle. Id. ( citing Andrews col. 4, 11. 34--41 ). Appellants assert that,
although the text of Andrews does not specify the weight percentage of the
vehicle, the formulations disclosed in Andrews each have more than 50% of
the vehicle. Id. Appellants also point to column 5, lines 40-59 of Andrews,
which, Appellants argue, explains that the prior art requires large quantities
5
Appeal2018-003164
Application 10/936,989
of vehicle, such as a mixture of water and propylene glycol, for solubility
purposes in preparing the composition. Id. Appellants contend that this is
different from claim 1, in which "[t]he propylene glycol (C7---Cl4) fatty acid
ester serves as both an antimicrobial active and the vehicle." Id.
Appellants therefore argue that, given Andrews' teachings with
respect to the vehicle, it would be impossible to use the amounts of vehicle
taught by Andrews, i.e., 50% or more, and still contain 70% or more of the
fatty acid ester as recited in claim 1. App. Br. 5. Appellants dispute the
Examiner's reasoning, arguing that there cannot be an instance of finding an
optimal range within the ranges encompassed by the prior art, because the
amounts of antimicrobial lipid in the claims is not encompassed by the prior
art. Id.
Appellants argue further that increasing the amount of antimicrobial
lipid in the prior art would require decreasing a required component of
Andrews (i.e., the separate vehicle) to levels considerably lower than those
contemplated in the prior art. App. Br. 5. Appellants contend that, because
the vehicle of Andrews is a mandatory component that appears to be
required for the preparation of the prior art composition, the artisan of
ordinary skill would have no reason to make the modification as proposed
by the Examiner. Id.
Appellants also dispute the Examiner's finding that: "if the
concentrate of [Andrews] were modified to comprise up to 70% fatty acid
ester the result would yield a composition [having similar properties and
suitable for use as in Andrews]." App. Br. 5 (quoting Final Act. 5).
Appellants argue that the Examiner adduces no evidence of record to support
6
Appeal2018-003164
Application 10/936,989
such a finding and that the Examiner's reasoning cannot therefore
reasonably be used as the basis for rejecting the claims. Id. at 6.
The Examiner responds that the only significant difference between
Appellants' claimed invention and that of Andrews is the concentration of
monoester. Ans. 10. The Examiner points out that Appellants have not
demonstrated: (1) an unexpected result has been achieved by providing
monoester in the claimed concentrations; and/or (2) that Andrews'
composition could not possibly be modified to comprise monoester in the
concentrations as claimed. Id.
We are not persuaded by the Appellants' reasoning. An initial step of
our obviousness analysis requires us to construe Appellants' claims on
appeal. Claim 1 recites, in relevant part: "An antimicrobial composition,
comprising: at least 70% by weight of at least one antimicrobial lipid
comprising a major amount of propylene glycol (C7-Cl 4) fatty acid ester
present in an amount of at least 3 0% by weight of the antimicrobial
composition." (Emphasis added). We construe this limitation, based on its
plain language and in view of the Specification, to mean that claim 1
requires that the overall antimicrobial composition contains at least 70% by
weight of an antimicrobial lipid and that this lipid portion of the composition
necessarily includes propylene glycol (C7---C14) fatty acid ester as a "major
amount," but this propylene glycol (C7---C14) fatty acid ester (that is part of
the antimicrobial lipid portion of the antimicrobial composition) must also
comprise at least 30% of the total antimicrobial composition. See Spec. 12-
17 ( discussing the vehicle and antimicrobial lipid), 31 ( discussing amounts
of propylene glycol in antimicrobial composition and in final concentrated
and diluted solutions). We note that the antimicrobial lipid is defined in the
7
Appeal2018-003164
Application 10/936,989
Specification as "includ[ing] one or more fatty acid esters of a polyhydric
alcohol, fatty ethers of a polyhydric alcohol, or alkoxylated derivatives
thereof (of either or both of the ester and ether), and combinations thereof'
(Spec. at 13) and, thus may include other components, e.g., a vehicle.
Andrews teaches that in the three component disinfectant
composition:
The amounts of fatty acid monoesters in the present
invention which are used to provide a concentrated composition
are between about 1.0-50.0 wt. % and preferably about 1.0-20.0
wt. %. When used as a disinfectant, the concentrate is typically
diluted with water to provide a fatty acid monoester
concentration of between about 0.001-5.0 wt.% and preferably
about 0.005-1.0 wt. %.
Andrews col. 4, 11. 35--40. Andrews further teaches that: "Fatty acid
monoesters which may be used in the present composition include known
glycerol monoesters of lauric, caprylic and capric acid and/or propylene
glycol monoesters of lauric, caprylic or capric acid." Id. at 11. 14--17.
Andrews also teaches that: "The amounts of acid or chelating agent in
the present invention which are used to provide a concentrated composition
are between about 1.0-20.0 wt.% and preferably about 1.0-10.0 wt.%" and
that "[s]uitable anionic surfactants as well as nonionic surfactants ... are used
in amounts which provide a concentrated composition of between about 1.0-
30.0 wt. % and preferably about 4.0-12.0 wt. %." Andrews col. 4, 11. 55-58;
col. 5, 11. 8-11.
Andrews describes one method of preparation of a concentrated
disinfectant as follows:
The composition of the present invention may be prepared by
combining the above described components using processes and
8
Appeal2018-003164
Application 10/936,989
procedures well known to those of ordinary skill in the art .... A
second solution is prepared by adding glycerol monolaurate,
propylene glycol monocaprylate and propylene glycol
monocaprate [i.e., fatty acid monoesters] to propylene glycol [a
lipid carrier/ diluent].
Andrews col. 5, 11. 40-49. Andrews teaches that, in a preferred embodiment:
"the concentration of propylene glycol in the concentrated composition is 15
wt. %. The addition of propylene glycol to the fatty acid ester thus provides
an antimicrobial lipid comprising ... propylene glycol (C7---C14) fatty acid
ester."
Summarizing, the compositions of Andrews comprise 1-20% acid or
chelating agents and 1-30% surfactant. Andrews also teaches that the
concentration of fatty acid monoester in the concentrated composition is
between 1.0 wt.% and 50 wt.%, preferably between 1.0 wt.% and 20 wt.
% and that propylene glycol is an additive to the fatty acid ester. We thus
find that Andrew teaches: "An antimicrobial composition, comprising: at
least 70% by weight of at least one antimicrobial lipid comprising a major
amount of propylene glycol (C7---C14) fatty acid ester present in an amount
of at least 30% by weight of the [total] antimicrobial composition" in which
at most 30% of the antimicrobial composition comprises the acid or
chelating agent and surfactant and in which at least 70% of which consists of
an antimicrobial lipid comprising a major amount of propylene glycol (C7-
C14) fatty acid ester present in an amount of at least 30% by weight of the
[total] antimicrobial composition [i.e., 30-50%]." We note that the use of
the claim term "comprising" in the limitation permits the addition, as taught
by Andrews (see, e.g., col. 3, 11. 4--6) of other components, e.g., propylene
glycol, of the antimicrobial lipid in addition to the requisite 30 wt. % of
9
Appeal2018-003164
Application 10/936,989
propylene glycol (C7-----C14) fatty acid monoester. See Crystal
Semiconductor Corp. v. TriTech Microelectronics Int'!, Inc., 246 F.3d 1336,
1348 (Fed. Cir. 2001) (holding that use of the transition "comprising" in the
language of a claim creates a presumption that the claim does not exclude
additional, unrecited elements).
With respect to Appellants' argument that it is the diluted form of the
composition of Andrews that is intended for use as an antibacterial agent and
that Andrews teaches that, in their diluted form, these compositions would
have considerably lower concentrations of fatty acid monoesters than those
recited in the claims, we are not persuaded that that argument is of any
particular relevance to our obviousness analysis. Appellants' claims on
appeal are directed to a composition and not to a method of using the claim
as an antibacterial or disinfecting agent. Andrews teaches a concentrated
composition that encompasses the limitations recited in the claims.
Issue 2
Appellants argue the Examiner erred because omission of a separate
vehicle in the present claims is an indicium of nonobviousness. App. Br. 6.
Analysis
Appellants argue that Andrews teaches a vehicle that is separate from
the fatty acid ester, and that; based on the Examples taught by Andrews, it
appears that the vehicle is present in a fairly large amount, i.e., greater than
50%. App. Br. 6.
Appellants also repeat their argument, discussed supra, that the
vehicle appears to be necessary to mix the components of Andrews into a
10
Appeal2018-003164
Application 10/936,989
single formulation. App. Br. 6. In contrast, Appellants contend, in the
present claims, the propylene glycol (C7---C14) fatty acid ester serves as both
an antimicrobial active and the vehicle. Id. ( citing Spec. 16). According to
Appellants, despite the absence of the separate vehicle, the Specification
discloses that antimicrobial compositions having the requisite ingredients
can be prepared. Id. Therefore, Appellants conclude, the claims eliminate
the need for a separate vehicle while retaining its function, which Appellants
assert, is an indicator of non-obviousness.
We are not persuaded by Appellants' reasoning. As we have
explained supra, claim 1 recites, in relevant part: "An antimicrobial
composition, comprising: at least 70% by weight of at least one
antimicrobial lipid comprising a major amount of propylene glycol (C7---C
14) fatty acid ester present in an amount of at least 30% by weight of the
antimicrobial composition." We construe this claim to mean that 70% of the
antimicrobial composition consists of an antimicrobial lipid and that at least
30% of the overall composition is the propylene fatty acid ester. The use of
the transition term "comprising" indicates that the remaining 40% of the
"antimicrobial lipid" can consist of additional elements including,
potentially, a carrier as taught by Andrews. See Crystal Semiconductor, 246
F.3d at 1348. We find that the claims, therefore, do not exclude additional
components in the "antimicrobial lipid."
Andrews expressly teaches that its components can be used in "a
variety of vehicles such as ... propylene glycol .... " Andrews I col. 3, LL.
3--4. Similarly, Andrews II, cited by the Examiner for the second
obviousness rejection, states, "[p ]ropylene glycol, as mentioned above, is
one suitable solvent which may be used to replace some or all of the water
11
Appeal2018-003164
Application 10/936,989
which is preferably used as the principle vehicle in the formulations."
Andrews II col. 4, 11. 2-5. Thus, it is apparent that using propylene glycol as
the primary antimicrobial component and as a vehicle in a composition like
that claimed would have been obvious. Therefore, Appellants arguments
that the cited prior art does not disclose using the amounts of propylene
glycol as an antimicrobial or its use as a vehicle are simply incorrect.
For the reasons discussed above, we consequently affirm the
Examiner's rejection of the claims.
B. Claims 20 and 21
Issue
Appellants argue that the Examiner erred because the prior art
provides no reason to use the phenol of claims 20 and 21 in the compositions
of Andrews. App. Br. 7.
Analysis
Appellants incorporate their arguments, discussed supra, and further
argue that the teachings of Andrews II do not cure the alleged deficiencies of
Andrews. App. Br. 7.
Appellants further contend that the Examiner's rejection is based on
the premise that Andrews teaches the use of lactic acid and similar acids as
chelating agents, whereas Andrews II teaches that such chelating agents can
be used as synergists. App. Br. 7 (citing Andrews col. 4, 11. 41-54; Andrews
II col. 3, 11. 43-56). According to Appellants, Andrews II additionally
teaches that phenolic compounds, such as butylated hydroxyanisole, can also
be used as synergists. Id. (citing Andrews II col. 3, 11. 43-56). From this,
12
Appeal2018-003164
Application 10/936,989
Appellants contend that the Examiner concludes that hydroxyanisole and
lactic are functional equivalents in this field, and that it would be obvious to
substitute hydroxyanisole for lactic acid in Andrews. Id. (citing Final Act.
7).
Appellants dispute the Examiner's findings, contending the
Examiner's reasoning is flawed because Andrews calls for a chelating agent
and not a synergist, and Andrews II clearly distinguishes between the
synergists which are chelating agents (i.e., the acids such as lactic acid,
tartaric acid, citric acid, etc.), and those which are not (food grade phenols
such as butylated hydroxy anisole ). App. Br. 7. Therefore, Appellants
argue, food grade phenols of Andrews II, not being chelators, are not
functional equivalents of lactic acid and other chelators taught by Andrews
and, consequently, there would have been no reason for a person of ordinary
skill in the art to substitute one for the other. Id.
The Examiner responds that Andrews II provides a topical
antimicrobial composition similar to Andrews, comprising a monoester, a
synergist selected from acidic chelating agents and food grade phenols,
propylene glycol, surfactant and vehicles. Id. The Examiner finds that the
overlap between Andrews and Andrews II is such that any person of
ordinary skill would have envisioned using a phenol compound such as
butylated hydroxytoluene with a reasonable expectation for success in the
formulation of Andrews. Id.
We are not persuaded by Appellants' arguments. Claim 20 depends
from claim 1 and additionally recites: "wherein the enhancer is a phenolic
compound." Claim 21 further provides a list of acceptable phenolic
enhancers consisting of: "consisting ofbutylated hydroxyanisole, butylated
13
Appeal2018-003164
Application 10/936,989
hydroxytoluene, tertiary butyl hydroquinone, and benzoic acid derivatives
such as methyl, ethyl, propyl, and butyl parabens."
Appellants' Specification defines the claim term "enhancer," in
relevant part, as:
"Enhancer" means a component that enhances the effectiveness
of the antimicrobial lipid such that when either the composition
without the antimicrobial lipid or the composition without the
enhancer component are used separately, they do not provide the
same level of antimicrobial activity as the composition as a
whole... . An enhancer may be a synergist that when combined
with the remainder of the composition causes the composition as
a whole to display an activity greater than the sum of the activity
of the composition without the enhancer component and the
composition without the antimicrobial lipid.
Spec. 8 ( emphasis added). Based upon this disclosure of Appellants'
Specification, the claim term "enhancer" encompasses synergists that
disproportionately enhance the antimicrobial activity of the composition.
Both Andrews and Andrews II are directed to fatty acid monoester-
based antimicrobial compositions. Andrews II teaches:
A synergist is the third required component of the formulations
of the invention. Suitable synergists include acidic chelating
agents such as lactic acid, tartaric acid, adipic acid, succinic acid,
citric acid, ascorbic acid, malic acid, acetic acid, sorbic acid,
sodium acid pyrophosphate, acidic sodium hexametaphosphate,
and ethylenediaminetetraacetic acid and its salts as well as food
grade phenols such as butylated hydroxyanisole and butylated
hydroxytoluene. Preferred synergists are lactic acid and
butylated hydroxyanisole.
Andrews II col. 3, 11. 43-52. Andrews also teaches the use of acidic
chelating agents, preferably including:
14
Appeal2018-003164
Application 10/936,989
[L ]actic acid, tartaric acid, adipic acid, succinic acid, citric acid,
ascorbic acid, malic acid, mandelic acid, acetic acid, sorbic acid,
sodium acid pyrophosphate, acidic sodium hexametaphosphate
(such as SPORIX acidic sodium hexametaphosphate ), and
ethylenediaminetetraacetic acid and salts thereof. These
materials are typically components which have been used with
glyceryl fatty acid esters to provide useful topical antimicrobial
pharmaceutical compositions and preservative compositions.
Andrews col. 4, 11. 44--52 (citations omitted). Because Andrews II teaches
that both the named acidic chelating agents and phenolic compounds are
synergists ( and therefore "enhancers") and Andrews teaches the use of the
same acidic chelating agents, we agree with the Examiner that a person of
ordinary skill in the art would have found it obvious to substitute the phenols
of Andrews II in place of the acidic chelating agents of Andrews with a
reasonable expectation of success that either would work as synergists in the
composition. We consequently affirm the Examiner's rejection of the
claims.
C. Claims 23-25, 30, 31, 42, 53, and 54
Appellants argue that Tautvydas fails to cure the alleged deficiencies
of Andrews and Andrews II as argued by Appellants supra. We have
explained why we do not find Appellants' arguments persuasive and,
consequently, we affirm the Examiner's rejection of the claims.
DECISION
The Examiner's rejection of claims 1-16, 18, 20-25, 30, 31, 42, and
53-57 under 35 U.S.C. § 103(a) is affirmed.
15
Appeal2018-003164
Application 10/936,989
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
16