Ex Parte Beilfuss et al

Patent Trial and Appeal Board

Jun 18, 2013

10663257 (P.T.A.B. Jun. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte WOFGANG BEILFUSS, RALF GRADTKE,
INGO KRULL, and KLAUS WEBER
__________

Appeal 2012-012089
Application 10/663,257
Technology Center 1600
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
LORA M. GREEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal1 under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 18, 21, 23, 30, 31, 36-40, 42-44, 48, 57, 58,
and 60-63.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The Real Party in Interest is AIR LIQUIDE SANTÉ (App. Br. 1).
2 Claims 22, 24, and 25 are also pending, but stand withdrawn from
consideration (App. Br. 1; see also Ans. 3).
Appeal 2012-012089
Application 10/663,257

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STATEMENT OF THE CASE
Claim 18 is representative of the claims on appeal, and reads as
follows:
18. A preservative with reduced formaldehyde emissions which
comprises:
a) about 90% to about 99% weight of N,N'- methylenebis(5-
methyloxazolidine); and
b) about 1% to about 10% weight of urea,
wherein the preservative
(i) comprises no iodopropynyl compound, and
(ii)comprises no derivative of 1H-benzimidazol-2-carbamic acid.

The following grounds of rejection are before us for review:
I. Claims 18, 21, 30, 31, 36-40, 42-44, 48, 57, 58, and 60-63 stand
rejected under 35 U.S.C. § 103(a) as being rendered obvious by the
combination of Beilfuss3 and Ecanow4 (Ans. 5).
II. Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Beilfuss and Ecanow as
evidenced by Grotan BK5 (Ans. 7).

ANALYSIS
The Examiner rejects claims 18, 21, 30, 31, 36-40, 42-44, 48, 57, 58,
and 60-63 as being rendered obvious by the combination of Beilfuss and
Ecanow (Ans. 5).

3 Beilfuss et al., US 2001/0021711 A1, Sept. 13, 2001.
4 Ecanow, US 4,452,780, Jun. 5, 1984.
5 Grotan BK, Chemindustry, CAS Number 63310-09-8, 1 page,(last accessed
8/26/2010 at http://www.chemindustry.com/chemicals/0475446.html).
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The Examiner relies on Beilfuss as teaching “a stable microbicidal
composition comprising a) at least one bactericidal N-formal, b) at least one
fungicide and c) at least one stabilizer” (id.). The Examiner finds that
Beilfuss teaches all of the elements of the claimed preservative, but is silent
as to the use of urea as the fungicide (id. at 5-6).
The Examiner relies on Ecanow for teaching that urea is a known
fungicide (id. at 6). The Examiner concludes that as the composition of both
Beilfull and Ecanow may be used in products intended for use on skin, it
would have been obvious to use urea as taught by Ecanow as the fungicide
of Beilfuss (id. at 6-7).
Appellants argue that the preservative composition of Beilfuss is
anhydrous, or has low water content (App. Br. 9 (citing Beilfuss, ¶24)).
Appellants further assert that Beilfuss also teaches that the selection of a
fungicide is important, as there may be incompatibilities with the N-formyl
compound (id. (citing Beilfuss, ¶ 5 and 24)).
Appellants argue in contrast, Ecanow teaches urea as part of a
coacervated composition, which is mainly water (id.). Appellants assert
further that Ecanow teaches a fungicidal composition that has 10-40% w/v
urea and the remainder water (id. at 11). Thus, Appellants assert, if one
were to add the coacervated composition of Ecanow to the anhydrous or low
water composition of Beilfuss, in order to obtain the 10% w/v urea as taught
by Ecanow one would not be able to obtain the about 90 to 99% N-formyl as
claimed because of the presence of water in the coacervated composition of
Ecanow (id. at 11-12).
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Application 10/663,257

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The Examiner responds that Ecanow does not require a high water
content (Ans. 10). Specifically, the Examiner finds that “Ecanow teaches
that the composition can be in powdered forms, i.e., anhydrous/low water
content forms (col. 3, lines 40-41)” (id.).
We agree with Appellants that the preponderance of the evidence of
record that the combination of Beilfuss and Ecanow does not render the
preservative composition of claims 18, 21, 30, 31, 36-40, 42-44, 48, 57, 58,
and 60-63 obvious.
Beilfuss is drawn to “compositions for use in industrial products
which protect these products against bacterial and fungal attack over
relatively long service lives” (Beilfuss, p. 1, ¶ 1). Beilfuss teaches that N-
formals are known bacteriacides, but that a fungicide is also needed to obtain
broadband microbicidal action (id. at 1, ¶ 5). According to Beilfuss,
“incompatibilities are frequently found between N-formals and fungicides,
which are evident from the decrease in active ingredient content, resulting in
inadequate effectiveness” (id.). The fungicide preferred by Beilfuss is a
isothiazolone (id. at 2, ¶20). Beilfuss teaches that the compositions are
preferably anhydrous, but at least have low water content (id. at 2, ¶ 24).
Ecanow is drawn to a process of making coacervated iodine or urea to
produce antiseptics or germicides (Ecanow, col. 1, l. 66-col. 2, l. 3). Ecanow
uses a surfactant to solubilize the iodine or urea, which is then “embodied in
a micellar, polar, water medium” (id. at col. 2, ll. 9-13). Ecanow teaches
further that the composition may be dried to a gel, which maintains its
structure as well as its antiseptic, bacteriacidal, germicidal, fungicidal, and
viricidal properties (id. at col. 2, ll. 46-55). Ecanow contrasts that with
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drying iodophore preparations that dry to a powder, wherein the free iodine,
salts, and surfactants are liberated, with a reduction in germicidal
effectiveness (id. at col. 2, ll. 55-59).
Ecanow teaches that powdered forms of the composition may be
produced using microencapsulation procedures (id. at col. 3, ll. 40-41).
When urea is used, without iodine or an iodophore, it is used 10 to 40%
weight to volume (id. at col. 5, ll. 10-13).
Thus, contrary to the finding of the Examiner (Ans. 10), Ecanow does
not teach a substantially dry form of urea, but teaches microencapsulation of
the coacervated composition. The coacervated composition is primarily
water, only having 10 to 40% weight to volume of urea. Thus, as Beilfuss
teaches anhydrous or low water content compositions, the Examiner has not
provided evidence or scientific reasoning as to why the ordinary artisan
would have looked to a fungicidal composition that is primarily water,
especially in view of the teaching of Beilfuss that incompatibilities are
frequently found between N-formals and fungicides. We thus reverse the
rejection.
As to the rejection of claim 23, the Examiner does not rely on Groton
BK to remedy the above deficiencies as to the combination of Beilfuss and
Ecanow. We thus reverse the rejection of claim 23 as well.

REVERSED

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