Ex Parte Cottrell et al

Board of Patent Appeals and Interferences

Sep 22, 2010

11978435 (B.P.A.I. Sep. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte STEPHANIE NUSSBAUM COTTRELL
and TIRTHANKAR GHOSH
______________

Appeal 2009-012543
Application 11/978,435
Technology Center 1700
_______________

Before ADRIENE LEPIANE HANLON, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL1
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 11-20 in the Office Action mailed
September 12, 2008, and refusing to allow these claims as amended in the

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Amendment filed October 9, 2008, in the Advisory Action mailed October
22, 2008. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2008).
We affirm the decision of the Primary Examiner.
Claim 11 illustrates Appellants’ invention of a composition useful for
treating fabric, and is representative of the claims on appeal:
11. A composition useful for treating fabric; said composition
comprising:
(a) a silver-containing copolymer comprising polymerized units of a
monomer X and a monomer Y; wherein the copolymer comprises 5 wt% to
15 wt% silver, based on total copolymer weight; and wherein monomer X is
N-vinylimidazole and monomer Y comprises at least one alkyl
(meth)acrylate; and
(b) an epoxy resin;
wherein a ratio of equivalents of epoxide:equivalents of X monomer units is
from 0.5:1 to 4:1.
Appellants request review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 11-20 over Cottrell
(US 7,335,613 B2) in view of McIntosh (US 4,996,052). Br. 9; Ans. 3.
Appellants argue the claims as a group; claims 11, 12, and 15-17 as a
group; claim 13 separately; claim 14 separately; claims 18 and 19 as a
group; and claim 20 separately. Br. 10-13. Thus, we decide this appeal
based on claims 11, 13, 14, 18, and 20. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Opinion
Appellants do not dispute the Examiner’s findings of fact and
conclusions of law in holding the claimed composition useful for treating
fabrics with an antimicrobial composition would have been prima facie
obvious over the combined teachings of Cottrell and McIntosh, including the
Examiner’s conclusion that “[o]ne of ordinary skill in the art would have
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been further motivated to optimize the ratio of epoxide to monomer X[,
which is N-vinylimidazole,] to the instantly claimed ratio [of 0.5:1 to 4:1]
for the benefit of enhanced antimicrobial effects on apparel, tents, and
medical gear, since both references teach providing antimicrobial properties
to similar fabrics for similar uses.” Ans. 4-5. In these respects, we agree
with the Examiner’s findings with respect to the teachings of Cottrell and
McIntosh. Ans. 4-5.
Appellants submit that the Examiner erred in holding that the data in
Specification Tables 1 and 2 does not demonstrate unexpected results. Br.
10. “The data in Tables 1 and 2 . . . demonstrate the unexpected result that
epoxy resin amounts in the [claimed ratio] range provide better
incorporation and/or retention of silver in the treated fabrics than higher or
lower ratios of epoxide:X monomer units . . . [which] could not have been
predicted from the disclosures of the references.” Br. 10. Appellants
contend that the limitations of claim 11 are consistent with the tested
compositions, and the results obtained based on the compositional ranges are
not suggested by the applied references. Br. 10. Appellants contend that the
results are commensurate with the scope of the claims, including the
narrower limitations of the dependent claims, because the combination of the
silver-containing vinylimidazole polymers and epoxy resins show “superior
incorporation and/or retention of silver in treated fabrics,” and there is no
expectation of different behavior where the data do not reach claimed limits.
Br. 10-11. Appellants contend that the Examiner has not shown the
criticality of the identity of the alkyl (meth)acrylate; and that the N-
vinylimidazole monomer is a critical component of the polymer and the
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amount of the epoxy resin present is represented by the ratio thereof to the
N-vinylimidazole monomer. Br. 11. Appellants contend that the two epoxy
resins used in the Examples are sufficiently representative of the claimed
“epoxy resin.” Br. 11-12. Appellants contend with respect to dependent
claims 13, 14, 18, and 20 that the limitations either exactly match the scope
of the data or the data is sufficiently representative of the claimed
compositions. Br. 12-13.
We find that the results reported in Specification Tables 1 and 2 are
based on compositions differing in the amounts of an epoxy equivalent “EQ,”
which is either a bisphenol A glycidyl ether, identified as “ER 3510-W-60,”
or an epoxysilane polymer, identified as “Z-6040,” based on the amount of
the N-vinylimidazole monomer “VI,” according to the ratio “EQ/VI” based
on the claimed “ratio of equivalents of epoxide:equivalents of X monomer
units is from 0.5:1 to 4:1.” The compositions also contain a specific amount
of the alkyl (methyl)acrylate monomer “BA,” which is n-butyl acrylate. Spec.
3:1, and 6-7; Br. 10.
In Table 1, the EQ/VI of the claimed ER 3510-W-60 compositions are
0.8, 1.6, and 3.2, and that of the ER 3510-W-60 composition having an the
EQ/VI outside the claimed ratio is 16.0. In Table 2, the EQ/VI of the claimed
ER 3510-W-60 compositions are 0.5 and 1.0, and that of the ER 3510-W-60
composition outside the claimed ratio is 0.25.
The data in Table 1 shows that for the ER 3510-W-60 compositions,
the % silver retained by the coated fabric in 2 wash cycles is 50, 47, and 51
for the claimed compositions, and 48 for the unclaimed composition. The
data in Table 2 for compositions containing the same epoxy resin, shows that
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in 2 wash cycles, the % silver retained is 29 for the unclaimed composition,
and 36 and 40 for the claimed compositions.
The data in Table 1 shows that for the ER 3510-W-60 compositions,
the % silver retained by the coated fabric in 10 wash cycles is 14, 17, and 16
for the claimed compositions, and 18 for the unclaimed composition. The
data in Table 2 for the same epoxy resin shows that in 10 wash cycles, the
% silver retained is 11 for the unclaimed composition, and 15 and 17 for the
claimed compositions.
The data in Table 2 for the ER 3510-W-60 compositions further
shows that in 4 wash cycles, the % silver retained is 21 for the unclaimed
composition, and 27 and 30 for the claimed compositions.
In the tests involving the Z-6040 compositions in Table 1, the EQ/VI
of the tested compositions are 0.8, 1.0, and 2.0, all falling within the claimed
equivalents of epoxide:equivalents of N-vinylimidazole units from 0.5:1 to
4:1. The data in Table 1 shows that the % silver retained by the coated
fabric in 2 wash cycles are 55, 50, and 56, and in 10 wash cycles are 13, 19,
and 20.
On this record, we cannot agree with Appellants that the Examiner
erred in holding that the evidence in Specification Tables 1 and 2 does not
establish unobvious results. Even if the evidence in Specification Tables
1 and 2 is considered as Appellants contend, Appellants have not carried
their burden of establishing, with evidence or argument, the practical
significance of the results to one of ordinary skill in this art, and why this
person would have found the results unexpected in light of the combined
teaching of Cottrell and McIntosh as applied to claims 11, 13, 14, 18, and
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20. See above pp. 2-3. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1371 (Fed. Cir. 2007) (“[B]y definition, any superior property must be
unexpected to be considered as evidence of non-obviousness.” (citations
omitted.)); In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Merck
& Co., Inc., 800 F.2d 1091, 1099 (Fed. Cir. 1986); In re Longi, 759 F.2d
887, 897 (Fed. Cir. 1985); In re Freeman, 474 F.2d 1318, 1324 (CCPA
1973); In re Lindner, 457 F.2d 506, 508 (CCPA 1972); In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972); In re D’Ancicco, 439 F.2d 1244, 1248
(CCPA 1971).
We agree with the Examiner’s findings that consideration of the data
for each of the wash cycles for each of the ER 3510-W-60 and Z-6040
compositions in Specification Tables 1 and 2 as a whole essentially shows
equivalent results, regardless of the EQ/VI of the composition. Ans. 5-6.
We note, as does the Examiner, that the data in Table 2 for 2 wash cycles
appears somewhat lower for the ER 3510-W-60 compositions than for the
ER 3510-W-60 compositions in Table 1 with EQ/VI of 0.8 and 1.6. Ans. 6.
However, as the Examiner finds, the data in Table 2 for 10 wash cycles is in
line with the data in Table 1 for the ER 3510-W-60 compositions for 10
wash cycles, as is the data for 4 wash cycles in Table 2. Ans. 6.
Appellants have not explained how such results establish that the
tested claimed compositions, which are characterized as “better” and
“superior,” exhibit “unexpected” results over the ER 3510-W-60
compositions that have an EQ/VI of 16 in Table 1 and of 0.25 in Table 2 and
fall outside the claimed “ratio of equivalents of epoxide:equivalents of X
monomer units . . . from 0.5:1 to 4:1.” In this respect, the combined
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teachings of Cottrell and McIntosh establish that an epoxy resin can be used
in a composition to bind the antimicrobial composition containing, among
other things, silver to fabric. Cottrell, e.g., cols. 9-11; McIntosh, e.g., col. 8
and Example XI. Appellants have not shown that the evidence establishes
that the claimed “ratio of equivalents of epoxide:equivalents of X monomer
units . . . from 0.5:1 to 4:1” is unexpectedly critical to the incorporation
and/or retention of silver on fabrics coated with the claimed compositions
over the combined teachings of Cottrell and McIntosh. Unsupported
assertions alone are insufficient to establish unexpected results. See, e.g.,
Geisler, 116 F.3d at 1470-71; Lindner, 457 F.2d at 508 (“This court has said
. . . that mere lawyers’ arguments unsupported by factual evidence are
insufficient to establish unexpected results.”).
On this record, we further agree with the Examiner’s finding that the
claim terms “alkyl (meth)acrylate” and “epoxy resin” encompass structurally
different compounds from the C4 butyl acrylate and the particular epoxy
resins bisphenol A glycidyl ether and epoxysilane polymer used in the
compositions tested in Specification Tables 1 and 2. Spec., e.g.,
¶¶ 0006, 0012, and 0019. In view of the differences in properties with
different length carbon chains and different epoxy resins as is well known in
the chemical arts for such compounds, we agree with the Examiner’s finding
that compositions containing alkyl (meth )acrylates having longer carbon
chain alkyl groups and epoxy resins having different moieties than contained
by the tested compositions would reasonably be expected to behave
differently. Ans. 6; Br. 11-12. See, e.g., Lindner, 457 F.2d at 508 (“The
claims, however, are much broader in scope, covering mixtures of numerous
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compounds, and . . . 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.”).
With respect to dependent claims 13, 14, 18, and 20, we cannot agree
with Appellants’ contentions that the limitations encompassed by these
claims require the evidence to be viewed in a different light. Indeed, the
evidence in Specification Tables 1 and 2 does not establish unexpected
results with respect to the compositions encompassed by these claims.
Furthermore, claim 13 does not specify the particular “epoxy resin” and
claim 18 does not specify the “alkyl (meth)acrylate,” and thus the evidence
in Specification Tables 1 and 2 is not commensurate in scope with these
claims.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Cottrell and McIntosh with Appellants’
countervailing evidence of and argument for nonobviousness and conclude,
by a preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 11-20 would have been obvious
as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision 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)(1)(v).

AFFIRMED

Appeal 2009-012543
Application 11/978,435
9
kmm

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