Ex Parte Arzu et al

Patent Trial and Appeal Board

Oct 16, 2018

12967663 (P.T.A.B. Oct. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/967,663 12/14/2010
156155 7590 10/18/2018
Dow DuPont
c/o E.I. du Pont de Nemours and Company
P.O. Box 2915
974 Centre Road, Chestnut Run Plaza 721-2342
Wilmington, DE 19805
FIRST NAMED INVENTOR
Antonio Arzu
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.
69493 1992
EXAMINER
CHANG, KYUNG SOOK
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
10/18/2018 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):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ANTONIO ARZU, UTE H. BERTHEAS, PAUL FOLEY,
STEPHANIE L. HUGHES, PHILIP A. KEENE, and PIERRE M. LENOIR
Appeal2017-010298
Application 12/967,663 1
Technology Center 1600
Before FRANCISCO C. PRATS, MICHAEL J. FITZPATRICK, and
ELIZABETH A. LA VIER, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner's rejections of claims 1 and 6. We have jurisdiction under 35
U.S.C. § 6(b). For the reasons set forth below, we AFFIRM.
BACKGROUND
The Specification relates to biocide-containing formulations that are
liquid at low temperatures. See Spec. 1 :7-12.
Claim 1 is illustrative, and recites:
1 Appellants state the real parties in interest are Dow Global Technologies
Limited and Dow Italia Divisione Commerciale SR L. Appeal Br. 4.
Appeal2017-010298
Application 12/967 ,663
1. A disinfectant composition comprising
(a) 15% to 40% biocide, by weight based on the weight of said
composition,
(b) 15% to 40% water, by weight based on the weight of said
composition, and
( c) 20% to 70% solvent, by weight based on the weight of said
composition,
wherein said solvent comprises dipropylene glycol monomethyl
ether and propylene glycol methyl ether and
wherein said biocide comprises glutaraldehyde; and
wherein the composition is a liquid at -50 C.
Br. 9 (Claims Appendix).
REJECTION MAINTAINED ON APPEAL
Claims 1 and 6 stand rejected under 35 U.S.C. § I03(a) as obvious
over Coke,2 Sunivo, 3 and Disch. 4 Ans. 2.
DISCUSSION
In rejecting claim 1, the Examiner relies on Coke as teaching the
components of the claimed composition (i.e., glutaraldehyde, dipropylene
glycol monomethyl ether (DPM), propylene glycol methyl ether (PM), and
water), and ranges overlapping the claimed ranges for the solvents and
water. See Final Action 4--6 (citing Coke ,r,r 70, 104, 105, 119). Finding
that Coke does not teach a concentration for glutaraldehyde, the Examiner
2 Coke et al., US 2007/0254824 Al, published Nov. 1, 2007.
3 Shanghai Sunivo Supply Chain Management Co., Material Safety Data
Sheet (MSDS): Benzalkonium chloride, (2010), http://www.sunivo.com
(hererinafter "Sunivo").
4 Disch et al., US 5,223,166, issued June 29, 1993.
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Application 12/967 ,663
turns to Disch, as teaching an aqueous disinfectant of about 10 to about 40%
of at least one aldehyde, such as glutaraldehyde. Id. at 6 (citing Disch
claims 6-10). The Examiner finds that one of ordinary skill in the art would
have been motivated to tum to Disch to adjust or optimize the amount of
glutaraldehyde "because the amount of biocide can be varied depending on
the intended purpose," such as medical applications (as in Disch) or stain
removal (as in Coke), as well as the type of formulation. Id. at 8.
The Examiner acknowledges that Coke's recitation of solvents does
not expressly teach a combination of DPM and PM as in claim 1. Id. at 6.
However, the Examiner reasons that it would have been obvious to select a
mixture of DPM and PM from Coke's disclosure at paragraph 104 of various
individual solvents "and mixtures thereof' because the ordinarily skilled
artisan would have understood from Coke's disclosure that "all the indicated
prior art monomer glycol ether solvents would be equivalent with each
other," and optimization within the claimed ranges would have been obvious
without undue experimentation. Id. at 7.
The Examiner also acknowledges that the combined teachings of
Coke and Disch do not teach that the composition is liquid at -50 C. Id. at 6.
However, the Examiner finds that this is an inherent property, a result
necessarily flowing from the combination of elements. Id. at 8.
Appellants present three arguments, none of which persuades us of
any reversible error by the Examiner.
First, Appellants argue that one of ordinary skill in the art would not
have looked to Disch in trying to formulate a disinfectant liquid at low
temperature, because Disch's formulations "are taught to be heated." Br. 7.
This is not persuasive, because Coke teaches glutaraldehyde as well; the
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Application 12/967 ,663
Examiner relies on Disch only for the amount of glutaraldehyde. See Ans. 3.
We thus agree with the Examiner that the "heating step of Disch has nothing
to do with the low temperature stability of the instantly claimed
disinfectant." Id.
Second, Appellants argue "[ a ]lso, the cited art does not alone or in
combination disclose the exact active solvent mixture as presently claimed."
Br. 7. Appellants provide no further analysis as to why they believe the
Examiner's prima facie case is lacking. This conclusory argument is not
persuasive. Cf In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
( explaining that the Board has "reasonably interpreted Rule 41.3 7 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art"). 5
Finally, Appellants argue that the Specification "shows the
unexpected improvement of this particularly claimed composition relative to
other compositions of the art." Br. 7. For support, Appellants refer us to
"the worked examples" (id.), but point us to none in particular. This does
not amount to a persuasive argument, as Appellants bear the burden in
5 To the extent one might possibly interpret this single-sentence argument as
implying that the Examiner's rejection requires too much picking and
choosing of individual components from Coke's disclosure to arrive at the
claimed composition, we remain unpersuaded on the record before us. See
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(species claim held obvious where it recited one of 1200 possible
combinations of embodiments disclosed by reference and where reference
suggested no preference for claimed embodiment); see also id. at 808
( explaining that a reference that "discloses a multitude of effective
combinations does not render any particular formulation less obvious").
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Application 12/967 ,663
establishing objective indicia of nonobviousness. See In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). Furthermore, the assertion of unexpected
results appears to be unsupported attorney argument, as we discern no such
characterizations in the Specification, and Appellants offer no declaration or
other evidentiary support. See In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) ("Attorney's argument in a brief cannot take the place of evidence.").
Having considered each of Appellants' arguments, we are not
persuaded that the Examiner erred in rejecting claim 1, for the reasons
discussed above and those already of record. Appellants do not separately
argue claim 6. It falls with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
CONCLUSION
The rejection of claims 1 and 6 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)(l)(iv).
AFFIRMED
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