Ex Parte Hibbard

Patent Trial and Appeal Board

Jul 22, 2014

11609750 (P.T.A.B. Jul. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte LOU D. HIBBARD

Appeal 2012-004661
Application 11/609,750
Technology Center 1600
__________

Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

PAULRAJ, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a
disinfecting tablet. The Examiner rejected the claims on obviousness
grounds. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 Appellant identifies the Real Party in Interest as 3M Company
and its affiliate 3M Innovative Properties Company (see App. Br.
2).
Appeal 2012-004661
Application 11/609,750

2
STATEMENT OF THE CASE
Background
“The present invention relates to a disinfecting tablet. In particular,
the present invention relates to a disinfecting tablet that disintegrates quickly
but has low friability. The disinfecting tablet can be used to disinfect a
liquid solution or can be used in combination with a cleaning tool to also
clean the fixture holding the liquid solution.” (Spec. 3, ll. 9-12.)
The Claims
Claims 1-4, 6, and 8-11 are on appeal. Independent claim 1 is
representative, and reads as follows:
1. A disinfecting tablet comprising:
at least 50 wt % of a halogen releasing disinfecting agent;
and
at least one swellable disintegrating agent comprising
microcrystalline cellulose and assisting with rapid disintegration of
the tablet,
wherein the tablet has a disintegrating time of less than 20
seconds according to the Disintegration Test and a weight loss of
less than 5% according to the Friability Test.

The Issue

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
unpatentable over McLellan2 in view of Oury3 and Desai.4 Appellant does
not separately argue the claims, so we choose claim 1 to be representative.

2 McLellan, WO 2005/052111 A1, published June 9, 2005.
3 Oury et al., US 2004/024677 A1, published Dec. 9, 2004.
4 Desai et al., US 5,801,220, issued Sept. 1, 1998.
Appeal 2012-004661
Application 11/609,750

3
FINDINGS OF FACT
FF1. McLellan teaches solid block compositions (tablets)
useful for cleaning toilets (McLellan, Abstract, p. 2 ll.
27-29).
FF2. McLellan teaches that “[t]he most preferred chlorine
bleach material is sodium dichloroisocyanurate; the
dihydrate of this material is particularly preferred”
(McLellan 20, ll. 16-17). “The bleach constituent may be
present in any effective amount and may comprise up to
about 90%wt. of the solid block composition and the
resultant treatment block formed therefrom” (id. at 20 ll.
18-19).
FF3. McLellan teaches that “[t]he inventive solid block
composition may include a binder constituent,” which
“may function in part controlling the rate of dissolution
of the tablet” (McLellan 24, ll. 17-18). Sodium
carboxymethyl cellulose is disclosed as an example of a
binder constituent (id. at 25 l. 2). “When present, the
total binder content may comprise up to 75%wt. of the
solid block composition, but preferably is from 0.5 to
70% by weight, preferably from 1 to 65% by weight,
more preferably from 5 to 60% by weight” (id. at 25 ll.
19-21).
FF4. Oury discloses a “multilayer orodispersible tablet,” i.e., a
tablet intended to be disintegrated or dissolved in the
mouth, which can include as an active substance a basic
Appeal 2012-004661
Application 11/609,750

4
compound for modifying the surrounding micro-pH that
is chosen from a group comprising sodium
dichloroisocyanurate (Oury ¶¶ 1-2, 71). “The amount of
agent for modifying the surrounding micro-pH is
between 0.5% and 20%, preferably between 5% and 15%
and more preferably between 5% and 10% by weight
relative to the weight of the uncoated particles” (id. ¶ 73).
FF5. Oury discloses that the mixture of excipients present in
each of the layers of the tablet “necessarily comprises at
least one soluble agent, at least one disintegrant and/or at
least one swelling agent” (Oury ¶¶ 90-91).
FF6. Oury discloses that “[t]he swelling agent is selected from
the group comprising microcrystalline cellulose,” and “is
used in a proportion of between 1% and 15% by weight
calculated relative to the weight of each layer of the
tablet” (Oury ¶¶ 102-103).
FF7. Oury discloses that
The hardness of the multilayer tablet is adapted so as
to obtain a friability, measured according to the method
of the European Pharmacopoeia, of less than 2% and
preferably less than 1%, and so as to allow a
disintegration time of the tablet in the mouth under the
action of saliva of less than or equal to 60 seconds and
preferably less than or equal to 40 seconds.

(Oury ¶ 168.)
FF8. Desai teaches a “rapid disintegrating and dispersing
composition for thickening liquid waste,” wherein
“[a]dditional ingredients preferably used in making a
Appeal 2012-004661
Application 11/609,750

5
tableted form of the composition include microcrystalline
cellulose per se” (Desai, Abstract).
ANALYSIS
Appellant’s primary argument on appeal is that the Examiner has not
provided any rationale for combining the McLellan and Oury references. In
particular, Appellant asserts that
McLellan is related to cleaning compositions for
tablets used in toilets (abstract), and Oury et al. is related to
orodispersible tablets intended to be disintegrated or
dissolved in a person’s mouth. Certainly, it can be said that
formulations for tablets designed to be in contact with cold
rushing water found in a toilet are very different from those
designed to dissolved in the mouth on contact with saliva,
forming a particle suspension that is easy to swallow

(App. Br. 4).
We agree with Appellant that the Examiner has not provided a
sufficient basis to combine the teachings of the references. In particular, the
Examiner has not identified a reason why one of ordinary skill in the art
seeking to formulate a toilet disinfecting tablet would have been motivated
to looking to Oury’s teaching that microcrystalline cellulose may be used as
a swelling agent in an orodispersible tablet. The Examiner asserts that “[t]he
motivation for using microcrystalline cellulose as a swelling agent flows
from its having been used in the prior art, and from its being recognized in
the prior art as useful for the same purpose” (Ans. 7). However, the use of
microcrystalline cellulose as a swelling agent is only taught in Oury for
orodispersible tablets.
Although the Examiner takes the position that McLellan and Oury are
in the same field of endeavor because “both references address[] the same
Appeal 2012-004661
Application 11/609,750

6
issue in preparing fast disintegrating tablets,” no explanation has been
provided as to why a swelling agent would even be desirable for a toilet
disinfecting tablet (Ans. 10-11). While Oury teaches the use of sodium
dichloroisocyanurate as an agent for modifying the surrounding micro-PH, it
is disclosed only in an amount between 0.5% and 20% (FF4), which does
not overlap with the claimed amount of “at least 50 wt % of a halogen
releasing disinfecting agent” (Cl. 1). Moreover, Oury teaches that the
disintegrant and swelling agent are different components for use in the
orodispersible tablet, and there is no suggestion identified in the prior art as
to why microcrystalline cellulose would be also useful to disintegrate the
tablet taught by McLellan (see FF1-7). That rationale is not supplied by
Desai, which is directed to a disintegrating composition used for thickening
bodily fluids (FF8).
Given the different considerations that one of ordinary skill in the art
would take into account when disintegrating a tablet in toilet water
compared to saliva or other bodily fluids (i.e., different temperatures, pH,
etc.), we disagree with the Examiner’s conclusion that the Oury and Desai
references are necessarily in the same field of endeavor or otherwise directed
to the same purpose as the claimed invention. See In re Klein, 647 F.3d
1343, 1351 (Fed. Cir. 2011) (“If [a reference] is directed to a different
purpose, the inventor would accordingly have had less motivation or
occasion to consider it.”) (citing In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992)). Accordingly, we are constrained to reverse the Examiner’s
rejection.

Appeal 2012-004661
Application 11/609,750

7
SUMMARY
We reverse the rejection of claims 1-4, 6, and 8-11 under 35 U.S.C.
§ 103(a) as unpatentable over McLellan in view of Oury and Desai.

REVERSED

cdc