Ex Parte Franciskovich et al

Patent Trial and Appeal Board

Feb 24, 2017

12718078 (P.T.A.B. Feb. 24, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/718,078 03/05/2010 Phillip P. Franciskovich STRSP0118US 4126
23908 7590 02/28/2017
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
EXAMINER
CHOI, FRANK I
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
02/28/2017 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):
ipdocket @ rennerotto. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILLIP P. FRANCISKOVICH, DONALD G. ROSENHAMER,
KATHLEEN A. FIX, and DANA HALL
Appeal 2016-000813
Application 12/718,07s1
Technology Center 1600
Before ULRIKE W. JENKS, ELIZABETH A. LaVIER, and
DAVID COTTA, Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving “a composition
suitable for sterilizing articles such as medical, dental, pharmaceutical,
veterinary or mortuary instruments, devices, and the like.” Specification 1.
The Examiner rejected the claims on appeal as obvious under 35 U.S.C.
§ 103(a).
We affirm.
1 According to Appellants, the real party in interest is American Sterilizer
Company. App. Br. 1.
Appeal 2016-000813
Application 12/718,078
STATEMENT OF THE CASE
Claims 1—4 and 6—19 are on appeal. Claim 1, the only independent
claim, is illustrative and reads as follows:
1. A composition, consisting essentially of:
(A) an anti-microbial agent consisting essentially
of peracetic acid, acetic acid and hydrogen peroxide and,
optionally, sulfuric acid; and
(B) a reagent mixture consisting essentially of a
buffer, an anticorrosive agent and a chelator other than
hydroxyethylidenediphosphonic acid and other than a salt
of hydroxyethylidenediphosphonic acid;
wherein the composition does not contain
molybdate, and
wherein the weight ratio of (A) to (B) is from 0.45
to about 1.3.
App. Br. 18.
The Examiner rejected claims 1—4 and 6—19 under 35 U.S.C. § 103(a)
as unpatentable over Huth.2
ANALYSIS
Appellants argue claims 1—4 and 16—19 together as a group. We
designate claim 1 as representative for the group.
The Examiner found that Huth disclosed a composition including all
of the elements of claim 1 and that the only difference between claim 1 and
Huth was that Huth did not “expressly disclose the use of chelators other
than hydroxyl-ethylidene diphosphonic acid or salts thereof.” Ans. 3—4.
The Examiner found, however, that Huth disclosed that “chelators other than
hydroxy-ethylidene diphosphonic acid can be used to stabilize hydrogen
peroxide.” Id. at 4.
2 Huth et al., US Patent No. 6,448,062, issued Sept. 10, 2002 (“Huth”).
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Appeal 2016-000813
Application 12/718,078
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 2—11; Final Act. 2—12) and agree
that the claims are obvious over Huth. We address Appellants’ arguments
below.
Appellants argue that Huth teaches that the composition relied upon
by the Examiner was intended to be combined with a cleaning composition
that includes an enzyme. Appellants explain:
While Huth discloses a composition at col. 29, lines 10-20 that
does not include an enzyme, this composition is disclosed as the
disinfecting portion of the disclosed combined cleaning/
disinfecting composition, and would not be capable of the
Huth-claimed simultaneous cleaning and disinfection.
App. Br. 10. Appellants then argue that the present claims are
distinguishable over Huth because the claims are limited by the transitional
phrase “consisting essentially of’ and the addition of an enzyme would
materially change the basic and novel characteristics of their claimed
invention. Id. at 11—14. We are not persuaded.
Huth discloses the following composition, described as an “[a]queous
solution of disinfecting agent.”
l-'uncii.ORd Component Haw Material (..'on centra don. % w-'v
.Disc nfectmg agent hydrogen peroxide 60 SO
Disinfect Lag agent peracetic acid 0.08-0.20
CheMiag agent NtuEDTA 0.G5DL 35
H?0, Stabilizer Dequest 20.15) Oil 0-1.0
stabilizer boric acid OJKlS-dj.60
Anticorrosive t ,2,3-b en:zo triazek 0.10-1,0
Diluent. water q.s. to volume
Huth col. 29,11. 8—20. While it is true that Huth contemplates that this
composition will ultimately be used together with a cleaning composition,
the disinfecting composition is separately disclosed. Id. Claim 1 is directed
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Appeal 2016-000813
Application 12/718,078
to a simple composition with no limitation as to how it is used and/or what it
is used for. There is thus nothing in claim 1 that would require Huth’s
disinfecting composition to be combined with Huth’s cleaning composition
in order to have applicability to claim 1. Accordingly, we find that the
presence of an enzyme in Huth’s cleaning composition does not distinguish
Huth’s disinfecting composition from the claimed composition.3
Appellants also argue that claim 1 is not obvious over Huth’s because
Huth’s disinfecting composition includes Dequest 2010®, the active
ingredient of which (hydroxyethylidenediphosphonic acid) is expressly
excluded from the claims. App. Br. 16. We are not persuaded.
The Dequest 2010® component of Huth’s disinfecting composition is
identified as a hydrogen peroxide stabilizer. Huth col. 29,11. 8—20. While
Huth does teach a need for a hydrogen peroxide stabilizer and exemplify a
composition including Dequest 2010® as such a stabilizer {id.), Huth
expressly states: “destabilization can be prevented with sequestrants such as
hydroxy-ethylidene diphosphonic acid (Dequest 2010™, Monsanto Co.), or
with the use of conventional chelating agents.” Id. at col. 22,11. 21—25
(emphasis added). In view of this statement, a person of ordinary skill in the
art would have recognized Dequest 2010® as interchangeable with
conventional chelating agents and it would have been obvious to substitute a
“conventional chelating agent” for Dequest 2010® in Huth’s disinfecting
composition. SeeKSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(“[W]hen a patent claims a structure already known in the prior art that is
3 Having found that Huth’s disinfecting composition does not include an
enzyme, we need not address Appellants’ argument that the transitional
phrase “consisting essentially of’ precludes the presence of an enzyme.
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Appeal 2016-000813
Application 12/718,078
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.”).
Accordingly, we affirm the Examiner’s decision to reject claims 1—4
and 6—19 under 35 U.S.C. § 103(a) as unpatentable over Huth.
SUMMARY
For these reasons and those set forth in the Examiner’s Answer, and
the Final Office Action, the Examiner’s rejection of claims 1—4 and 6—19 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
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