Ex Parte Cunningham et al

Patent Trial and Appeal Board

Aug 16, 2016

12982058 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/982,058 12/30/2010
23556 7590 08/17/2016
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI 54956
FIRST NAMED INVENTOR
Corey T. Cunningham
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.
64648282US01 7700
EXAMINER
CABRAL, ROBERTS
ART UNIT PAPER NUMBER
1618
MAILDATE DELIVERY MODE
08/17/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COREY T. CUNNINGHAM, REBECCA ANN VONGSA,
STACY A. MUNDSCHAU, DAVID W. KOENIG,
and DOUGLAS R. HOFFMANN1
Appeal2014-009228
Application 12/982,058
Technology Center 1600
Before ERIC B. GRIMES, FRANCISCO C. PRATS and DAVID COTTA,
Administrative Patent Judges.
COTT A, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
composition having durable antimicrobial activity. The Examiner rejected
the claims on appeal as obvious under 35 U.S.C. § 103(a).
We affirm.
STATEMENT OF THE CASE
Claims 1-16 are on appeal, of which claims 1, 12, and 13 are
independent claims. Claim 1 is illustrative and reads as follows:
1 Appellants identify the Real Party in Interest as Kimberly-Clark
Worldwide, Inc. App. Br. 1.
Appeal2014-009228
Application 12/982,058
1. A composition having durable antimicrobial activity
compnsmg:
a carbonate/bicarbonate salt of a quaternary
ammonium cation;
an organic acid;
hydrogen peroxide; and
a polymer selected from cationic amine polymer-
epichlorohydrin adduct, cationic amine polymer-
epichlorohydrin resin, poly(methacrylamidopropyl
trimethylammonium) chloride, poly(bis(2-chloroethyl)
ether-alt- I, 3-bis( dimethylamino )propyl)urea,
poly( diallyldimethylammonium) chloride, poly(t-butyl
acrylate co-ethyl acrylate co-methacrylic acid),
polyethylene oxide, polyquatemium-16, polyquatemium-
22, polyquatemium-67 and mixtures thereof,
wherein the composition is liquid at room
temperature,
wherein the composition comprises from 67% by
weight to 98% by weight of a polar carrier solvent.
The claims stand rejected as follows:
Claims 1-13 under 35 U.S.C. §103(a) as unpatentable over Scholz2 in
view of Hofmann3 and Kimler. 4
Claims 14--16 under 35 U.S.C. §103(a) as unpatentable over Scholz in
view of Hofmann, Kimler, and Snyder. 5
2 Scholz et al., U.S. Patent Publication No. 2009/0226541 Al, published on
Sep. 10, 2009; hereinafter "Scholz".
3 Hofmann et al., U.S. Patent Publication No. 2010/0240799 Al, published
on Sep. 23, 2010; hereinafter "Hofmann".
4 Kimler et al., U.S. Patent Publication No. 2009/0004287 Al, published on
Jan. 1, 2009; hereinafter "Kimler".
5 Snyder et al., U.S. Patent Publication No. 2007/0184013 Al, published on
Aug. 9, 2007; hereinafter "Snyder".
2
Appeal2014-009228
Application 12/982,058
REJECTION OF CLAIMS 1-13 AS OBVIOUS OVER SCHOLZ IN VIEW
OF HOFMANN AND KIMLER
Appellants argue claims 1-13 together as a group. We designate
claim 1 as representative for claims 1-13. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner found that Scholz taught all of the elements of claims
1-13 with the exception that "[a]lthough Scholz also teaches that its
compositions may include small molecule quaternary ammonium
compounds ... Scholz does not expressly teach a carbonate/bicarbonate salt
of a quaternary ammonium cation." Final Rejection 3--4.
The Examiner found that Hofmann disclosed this element, but noted
that neither Scholz nor Hofmann disclosed "a specific combination of
antimicrobial agents comprising a carbonate/bicarbonate salt of a quaternary
ammonium cation and hydrogen peroxide." Id. at 5. The Examiner found
that Kimler addressed this issue by teaching, "[i]t has been found that
biocidal quaternary ammonium carbonates and bicarbonates, more
specifically, benzylalkyl- or dialkyldimethylammonium salts containing
either carbonate, bicarbonate, or a combination thereof, as the anion, used in
combination with hydrogen peroxide make a highly effective disinfectant
which is chemically stable and noncorrosive to metals." Id.
In view of these disclosures the Examiner concluded that the claimed
antimicrobial composition would have been obvious, reasoning as follows:
It would have been prima facie obvious to one of ordinary skill
in the art to combine the teachings of Scholz and Hofmann
because both references teach antibacterial compositions having
a broad spectrum of antimicrobial activity comprising
quaternary ammonium compounds and polymers that are useful
to prevent infections by application of the antibacterial
3
Appeal2014-009228
Application 12/982,058
compositions to surfaces .... Motivation to combine the
references and a reasonable expectation of success in
combination can be found in Hofmann's teaching that using
ammonium quaternary [sic] compounds are fast-acting
antimicrobial agents and that its composition "is optimized to
provide the desired biocidal rates without significant build-up."
Para. [0008]. Indeed, such proprieties [sic] would be desirable
in antimicrobial composition that had to be reapplied to any
surface, much less the interior or exterior surfaces of an
opening of the human body. Further, a skilled artisan would
find motivation and a reasonable expectation of success to
incorporate decy 1 octy ldimethy !ammonium carbonate/
bicarbonate with hydrogen peroxide as taught by Hofmann in
view of Kimler et al.' s express teaching that such a combination
of antimicrobials "make a highly effective disinfectant which is
chemically stable and noncorrosive to metals." Para. [0006].
Here, too, such properties would be desirable in an
antimicrobial compositions intended for application to metal
catheters.
Id. at 5---6.
Appellants do not challenge the Examiner's characterization of Scholz
as disclosing all of the elements of the claims on appeal other than the
carbonate/bicarbonate salt of a quaternary ammonium compound with one
exception. Appellants contend that Scholz "does not expressly teach a
composition having a weight percent of water (or other polar carrier solvent)
as high as Appellants now claim." App. Br. 3.
The Examiner contends that the "polar carrier solvent" limitation is
met by Scholz's disclosure that "[o]ne or more alcohols may be used in the
composition." Ans. 2; Final Rejection 3-4. We find, as the Examiner did,
that alcohol is a "polar carrier solvent." We note that Appellants have not
presented any argument or directed us to any evidence that alcohol does not
meet the definition of a "polar carrier solvent." See Spec. 11 ("exemplary
4
Appeal2014-009228
Application 12/982,058
compositions of the invention" in Table 1 include Examples 2--4, which
comprise ethanol as solvent).
Scholz discloses that alcohol may be present "in a total amount of no
greater than 90 wt-%, more preferably no greater than 70 wt-%, even more
preferably no greater than 60 wt-%, and even more preferably no greater
than 50 wt-%, based on the total weight of the ready to use composition."
Scholz i-f 240. The range of alcohol present in Scholz overlaps with that
recited in the claims ( 67%----98% ), creating a prima facie case of obviousness
and shifting the burden to the Appellants to demonstrate non-obviousness.
In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003) ("[T]he existence of
overlapping or encompassing ranges shifts the burden to the applicant to
show that his invention would not have been obvious."). Here, Appellants
point to no evidence to rebut the prima facie case of obviousness created by
the disclosure of encompassing ranges. Accordingly we find that the
limitation requiring "from 67% by weight to 98% by weight of a polar
carrier solvent" is rendered obvious by Scholz's disclosure that its
composition may include alcohol.
Appellants also challenge the Examiner's finding that it would have
been obvious to include the carbonate/bicarbonate salt of Hofmann in the
composition of Scholz. Appellants contend that it would have been
"counterintuitive, to combine the quaternary ammonium carbonate and
bicarbonate salts allegedly disclosed in Hofmann with the hydrogen
peroxide embodiments of Scholz [because] [h ]ydrogen peroxide would not
be expected to be stable in the presence of carbonate/bicarbonate salts."
App. Br. 4. We are not persuaded because Kimler teaches that the very
5
Appeal2014-009228
Application 12/982,058
combination that Appellants argue is "counterintuitive" is, in fact, "highly
effective ... chemically stable and non-corrosive." Kimler i-f 6.
Appellants note the Examiner's statement during prosecution that
"Hofmann et al. appears to have recognized the instability of hydrogen
peroxide and thus suggests using it in stabilized form" and argue that
"[n]either Scholz not Hofmann offers any teaching or suggestion as to how
or why it would be possible to provide stabilized hydrogen peroxide in the
presence of a carbonate/bicarbonate salt." App. Br. 4. Appellants then
proceed to argue that the disclosure of Hofmann with respect to stabilized
hydrogen peroxide is deficient in various respects. As noted above,
however, Kimler teaches that the combination of hydrogen peroxide and
carbonate/bicarbonate salts is "chemically stable." Kimler i-f 6.
Appellants contend that "Kimler's mixture is clearly not as 'stable' as
that of the present invention," and compare extrapolated data from Kimler
with data from the Specification to support their argument. App. Br. 6. The
claims, however, do not require that that the composition have any particular
degree of stability. To the extent Appellants' Specification might describe a
composition that is, in fact, more stable than that of Kimler, that difference
is not reflected in the claims.
It appears that Appellants may also allege that unexpected results
require a finding of non-obviousness. See, App. Br. 7 ("[T]here is no reason
to expect that such a combination would be durable enough to kill bacteria
for several months. In light of the cited art, the present invention yields
unpredictable results."). The present record does not support a finding of
unexpected results at least because the data presented is not commensurate
6
Appeal2014-009228
Application 12/982,058
with the scope of the claims (which encompass more than just a 3 :2 ratio of
hydrogen peroxide to quaternary ammonium carbonate/bicarbonate) and
because Appellants have not provided a comparison to the closest prior art
(Scholz). See, In re Baxter Travenol Labs, 952 F.2d 388, 392 (Fed. Cir.
1991) ("unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior
art"); In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011)
("Evidence of secondary considerations must be reasonably commensurate
with the scope of the claims.")
In sum, for the reasons discussed, Appellants' arguments do not
persuade us that a preponderance of the evidence fails to support the
obviousness of claim 1. Because they were not argued separately, claims 2-
13 fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
REJECTION OF CLAIMS 14--16 AS OBVIOUS OVER SCHOLZ IN
VIEW OF HOFMANN, KIMLER AND SNYDER
Appellants argue claims 14--16 together as a group. We designate
claim 14 as representative of claims 14--16. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 14 depends from claim 1 and recites the same Markush Group
of polymers, minus polyethylene oxide and polyquatemium-16. The
Examiner assumed that neither Scholz nor Hofmann taught the specific
polymers recited, Final Rejection 6, but found that Snyder disclosed
"polyquatemium-16 and -22 as examples of cationic oligomers or
polymers." Id. at 7. The Examiner then concluded that it would have been
obvious to modify the combined teachings of Scholz and Hofmann to
7
Appeal2014-009228
Application 12/982,058
include the polymers of Snyder "either as the simple substitution of
polyquatemium polymers to obtain predictable results or the selection of
polyquatemium-16 and -22 being obvious to try from a finite selection of
polyquatemium polymers with a reasonable expectation [of] success." Id.
Appellants argue that claim 14 is non-obvious for the same reasons
that claims 1-13 are non-obvious. App. Br. 8-9. For the reasons discussed
with respect to claims 1-13, Appellants' arguments do not persuade us that a
preponderance of the evidence fails to support the obviousness of claim 14.
Because they were not argued separately, claims 15-16 fall with claim 14.
37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
For these reasons and those set forth in the Examiner's Answer and
Final Rejection, the Examiner's final decision to reject claims 1-16 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).
AFFIRMED
8