Ex Parte Ghosh et al

Patent Trial and Appeal Board

Feb 26, 2019

14129589 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/129,589 12/27/2013
156155 7590 02/28/2019
Dow DuPont
c/o E.I. du Pont de Nemours and Company
P.O. Box 2915
974 Centre Road, Chestnut Run Plaza 721-2342
Wilmington, DE 19805
FIRST NAMED INVENTOR
Tirthankar Ghosh
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.
71390-US-PCT 4315
EXAMINER
ALAWADI, SARAH
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIRTHANKAR GHOSH and KIRAN PAREEK
Appeal2017-010118
Application 14/129,589
Technology Center 1600
Before ULRIKE W. JENKS, JOHN G. NEW, and JOHN E. SCHNEIDER,
Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134(a) involving claims to a
synergistic microbicide composition. Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Claims 1, 7, and 8 are on appeal. Claim 1 is representative and is
reproduced below:
1. A synergistic microbicidal composition; said composition
consisting essentially of: (a) silver ion which is present as a
complex with a copolymer comprising 35 to 55 wt%
polymerized units of a monomer X and 45 to 65 wt%
polymerized units of a monomer Y; wherein monomer X is
1 The Appeal Brief ("Br."), lists Rohm and Haas Company, the assignee of
record, as the real party in interest. Br. 4.
Appeal2017-010118
Application 14/129,589
N-vinylimidazole and monomer Y comprises at least one C2-Cs
alkyl (meth)acrylate and at least one additional monomer
selected from the group consisting of acrylic acid, methacrylic
acid, itaconic acid, maleic acid and fumaric acid,; and (b)
diiodomethyl-p-tolylsulfone; wherein the copolymer comprises
6.5 wt% to 8.5 wt% silver, based on total weight of copolymer
and silver and wherein a weight ratio of silver to diiodomethyl-
p-tolylsulfone is from 1: 1/0.008 to 1/0.1, 1/0.13 to 1/8 or 1/120
to 1/280.
(Br. IO (Claims Appendix)).
The Examiner rejected claims 1, 7, and 8 under 35 U.S.C. § I03(a) as
unpatentable over Baum2 and Chia. 3
Upon consideration of the evidence on this record and Appellant's
contention that "[t]he phrase 'consisting essentially of" excludes 2-
methylisothiazolin-3-one (MIT) from the claims (see Br.7), we find that the
preponderance of evidence on this record supports Examiner's conclusions
that the subject matter of Appellant's claims 1, 7, and 8 are unpatentable
over the combination of Baum and Chia. Accordingly, we sustain the
Examiner's rejection of each of these claims for the reasons set forth in the
Answer (Ans. 2-7), and Final Office Action mailed July 29, 2016 (Final
Act. 2-9), both of which we incorporate herein by reference.
Briefly, Examiner relies on the teachings of Baum and Chia to arrive
at the claimed invention. (See Final Act. 5). Examiner finds that "Baum
teaches [a] biocide composition [] comprising the active biocidal compounds
2- methylisothiazolin-3-one (MIT), diiodomethyl p-tolylsulphone [(DITS)]
and silver." (Final Act. 3 (citing Baum ,r 60)). Examiner acknowledges that
Baum does not teach complexed silver but relies on Chia for teaching this
2 Baum et al., US 2010/0189811 Al, published July 29, 2010 ("Baum").
3 Chia et al., EP 1 941 797 Al, published July 9, 2008 ("Chia").
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Appeal2017-010118
Application 14/129,589
this component. (Id. at 4). Examiner concludes that "[i]t would have been
prima facie obvious at the time of the invention to substitute the silver salts
of Baum for silver ion which is complexed to a copolymer" as taught in
Chia. (Id. at 5).
Examiner identifies that the basic novel characteristic of the claimed
composition is "the synergistic biocidal activity [ and this] would not be
changed because ... the MIT of Baum provides antimicrobial activity [ and]
therefore it is concluded that the MIT would not materially affect the basic
and novel properties of the claimed composition," (Ans. 3). Specifically, we
agree with Examiner that:
Appellants have not provided any evidence that MIT would not
behave the same way, and furthermore the guidance of the prior
art establishes that MIT and DITS together provide biocidal
synergy while silver complexed to monomer X and Y [ combined
with MIT] also provide biocidal synergy, thus leading a person
of ordinary skill in the art to the conclusion that the combination
[of MIT, DITS, and complexed silver] would also behave
synergistically. If this is not the case, Appellants have not offered
up any evidence that MIT would indeed materially affect the
basic and novel characteristics of the claimed invention and
would not result in the synergy as disclosed in Baum.
(Id. at 6).
We agree with Examiner and find that Appellants have not met their
burden of showing that the Examiner erred in rejecting claims, or otherwise
rebutted the Examiner's response in the Answer's "Response to Arguments"
(Ans. 2-7), concerning the combination of Baum and Chia.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a).
AFFIRMED
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