Ex Parte Ashmore et al

Board of Patent Appeals and Interferences

Jan 17, 2012

11983695 (B.P.A.I. Jan. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN WILLIAM ASHMORE
and KIRAN PAREEK
____________

Appeal 2011-001657
Application 11/983,695
Technology Center 1600
____________

Before DONALD E. ADAMS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 3 and 5. We have
jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 3 is representative and is reproduced below:
3. A synergistic antimicrobial composition comprising:
(a) 4,5-dichloro-2-n-octyl-4-isothiazolin-3-one; and
(b) micronized copper;
wherein a ratio of 4,5-dichloro-2-n-octyl-4-isothiazolin-3-one to
micronized copper is from 1:48 to 1:125,000.

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Claims 3 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Shiraishi,
1
Leach,
2
and McDaniel.
3

We reverse.
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Shiraishi suggests “wood preservative compositions comprising an
isothiazolone compound [(e.g., 4,5-dichloro-2-n-octyl-4-isothiazolin-3-one
(DCOIT))] and a copper complex” (Ans. 4).
FF 2. Shiraishi fails to suggest “the use of micronized copper or the ratio
of the DCOIT and the micronized copper” required by Appellants’ claimed
invention (id.).
FF 3. The Examiner finds that while Shiraishi fails to suggest particular
weight ratios of copper and DCOIT, Shiraishi suggests the weight
percentage of both a copper compound preparation and a DCOIT
preparation (Ans. 6).
FF 4. Leach suggests “the use of micronized copper in a wood preservative
composition” (Ans. 4).
FF 5. McDaniel suggests “[a]ntifungal and antibacterial peptides,
polypeptides and proteins as antifungal additives for paint and other
coatings” that may include isothiazolones and copper carbonate coatings
(McDaniel, Abstract; see also Ans. 5).

1
Shiraishi et al., EP 0 864 406 A2, published September 16, 1998.
2
Leach et al., US 2004/0258767 A1, published December 23, 2004.
3
McDaniel, US 2005/0058689 A1, published March 17, 2005.
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FF 6. McDaniel suggests that some combinations of an antifungal peptidic
agent with another fungicide and/or fungistatic may provide advantages such
as a synergistic antifungal or preservative effect (McDaniel 22: ¶ [0141]; see
also Ans. 5).
FF 7. Ashmore declares that “[t]hose skilled in the art of biocide
formulation and testing . . . would have been aware that biocide synergy is
not predictable” (Ashmore Declaration
4
2: ¶ [4]).
ANALYSIS
Based on the combination of Shiraishi, Leach, and McDaniel, the
Examiner concludes that at the time of Appellants’ claimed invention, it
would have been prima facie obvious to one of ordinary skill in this art to
utilize Leach’s micronized copper in Shiraishi’s composition “because both
references are drawn to wood preservative compositions” and micronized
copper would “increase[ ] the efficacy of the composition as a preservative
for materials such as wood” (Ans. 6; see FF 1 and 4). According to the
Examiner, since Shiraishi suggests weight percentages for compositions
comprising DCOIT and non-micronized copper, “[i]t would have been prima
facie obvious to one having ordinary skill in the art at the time of the
invention to vary the instantly claimed weight ranges” (Ans. 6-7 (emphasis
added); see FF 2-3). We are not persuaded.
Contrary to the Examiner’s conclusion, the question is not whether a
person of ordinary skill in the art could vary Appellants’ claimed weight
range. Instead, the question is whether a person of ordinary skill in this art,
following the guidance set forth in the Examiner’s combination of
references, would have reasonably expected to arrive at the ratio of

4
Executed September 15, 2009.
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DCOIT:micronized copper set forth in Appellants’ claimed invention. In
this regard, the Examiner offers no explanation as to why a person of
ordinary skill in this art would have (1) utilized the same amount of
micronized copper as is suggested by Shiraishi’s preparation of non-
micronized copper or (2) reasonably expected that routine optimization of
Shiraishi’s suggested weight percentages would have resulted in a
composition comprising DCOIT and micronized copper in the ratios
required by Appellants’ claimed invention (see FF 2-3; Cf. Ans. 6-7).
We are also not persuaded by the Examiner’s conclusion that synergy
would be expected in the composition suggested by Shiraishi and Leach
because McDaniel “discloses that a combination of synergistic antifungals
may provide advantages such as a broader range of activity against various
organisms or a longer duration of effect” (Ans. 6). The Examiner’s
conclusion states a result of a synergistic combination of ingredients.
Contrary to the Examiner’s conclusion, the evidence on this record
suggests that some combinations of an antifungal peptidic agent with
another fungicide and/or fungistatic may provide advantages such as a
synergistic antifungal or preservative effect (FF 6; see generally App. Br.
10). The Examiner fails to establish that DCOIT and/or micronized copper
are peptidic agents. Further, we note that McDaniel suggests that some, not
all, combinations may exhibit a synergistic effect. As Ashmore makes clear
“[t]hose skilled in the art of biocide formulation and testing . . . would have
been aware that biocide synergy is not predictable” (FF 7; see generally
App. Br. 10-11). Therefore, even if the Examiner’s rejection contemplated
combining DCOIT and micronized copper with a peptidic agent, the
Examiner fails to establish an evidentiary basis to support a conclusion that a
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person of ordinary skill in this art, at the time of Appellants’ claimed
invention, would have reasonably expected the resulting composition to
exhibit synergistic properties. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”).
In sum, the Examiner failed to establish the evidentiary basis
necessary to support a prima facie case of obviousness. Accordingly, we do
not reach Appellants’ unexpected results relating to synergism. In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (“In rejecting claims under 35
U.S.C. § 103, the examiner bears the initial burden of presenting a prima
facie case of obviousness. Only if that burden is met, does the burden of
coming forward with evidence or argument shift to the applicant.”).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness. The rejection of claims 3 and 5 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Shiraishi, Leach, and
McDaniel is reversed.
REVERSED

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