Ex Parte Hodge et al

Board of Patent Appeals and Interferences

Jun 16, 2009

10850067 (B.P.A.I. Jun. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID JOHN HODGE, DAVID ALAN PEARS,
JOHN JEFFREY GERRARD and PAULA LOUISE MCGEECHAN
____________

Appeal 2009-002431
Application 10/850,067
Technology Center 1700
____________

Decided:1 June 16, 2009
____________

Before CHARLES F. WARREN, TERRY J. OWENS, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1 and 4-19. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
Claim 1 is representative of the subject matter on appeal and is set
forth below:
1. A composition comprising:
(i) an anti-microbial agent comprising a water-soluble
polymeric biguanide salt, alone or in combination with at
least one other microbiologically active component
selected from the group consisting of quaternary
ammonium compounds, monoquaternary heterocyclic
amine salts, urea derivatives, amino compounds,
imidazole derivatives, nitrile compounds, tin compounds
or complexes, isothiazolin-3-ones, thiazole derivatives,
nitro compounds, iodine compounds, aldehyde release
agents, thiones, triazine derivatives, oxazolidine and
derivatives thereof, furan and derivatives thereof,
carboxylic acids and the salts and esters thereof, phenol
and derivatives thereof, sulphone derivatives, imides,
thioamides, 2-mercapto-pyridine-N-oxide, azole
fungicides, strobilurins, amides, carbamates, pyridine
derivatives, compounds with active halogen groups, and
organometallic compounds; and

(ii) a non-ionic co-polymer of Formula (1)

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Application 10/850,067

Formula (1)
wherein:
[A] is of Formula (9),

[B] is of Formula (10),

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Application 10/850,067

and [X] is of Formula (11),

Formula (11)

wherein [A] and [B] may occur in any order;
T is an optionally substituted substituent selected from the group
consisting of CN, OH, F, Cl, Br, -OR6 , -C(O)R6, -C(O)OR6, -C(O)NR7R8
and aryl, optionally substituted by –OC(O)R6, F, Cl, Br, C1-6-alkyl, -CH2Cl
or –C(O)OR6, wherein R6 is a C1-10- alkyl optionally substituted by a ketone,
ether, epoxide, silane or ketoester group and wherein R7 and R8 are each
independently H, C1-8-alkyl or C3-8-cycloalkyl optionally substituted by –
OH, ketone or alkyl ether groups;
L is an optionally substituted linking group represented by a
formula selected from the group consisting of

R1, R2 and R3 are each independently H, optionally substituted C1-20-alkyl
or optionally substituted C3-20-cycloalkyl;
R4 and R5 are each independently H or C1-4alkyl;
q is 15 to 1000;
p is 3 to 50; and
the molar ratio of [A] to [B] (m:n), is 1:10 to 10:1;
provided that R1, R2, R3, T and L do not contain an ionisable
group and provided that at least on of R4 and R5 is H.

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Appeal 2009-002431
Application 10/850,067

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Uchiyama 2003/0224030 Dec. 4, 2003
Wong WO 97/04756 Feb. 13, 1997

SUMMARY OF THE DECISION
We affirm.
THE REJECTIONS
Claims 1 and 4-19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Uchiyama in view of Wong.

ISSUE
Have Appellants shown that the Examiner erred in rejecting the
claims because there is lack of requisite motivation to combine the
references Uchiyama and Wong?

PRINCIPLES OF LAW
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known
to the design community or present in the marketplace; and
the background knowledge possessed by a person having
ordinary skill in the art, all in order to determine whether
there was an apparent reason to combine the known elements
in the fashion claimed by the patent at issue.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). “To facilitate
review, this analysis should be made explicit.” Id. “[T]he analysis need not
seek out precise teachings directed to the specific subject matter of the
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Application 10/850,067
challenged claim, for a court can take account the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id.
The Examiner must determine what is “analogous prior art” for the
purpose of analyzing the obviousness of the subject matter at issue. “Under
the correct analysis, any need or problem known in the field [of endeavor at
the time of the invention] and addressed by the patent [or application at
issue] can provide a reason for combining the elements in the manner
claimed.” KSR, 550 U.S. at 420. “A reference is reasonably pertinent if,
even though it may be in a different field from that of the inventor's
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor's attention in
considering his problem.” In re Clay, 966 F.2d at 658-59.

FINDINGS OF FACT
Uchiyama teaches the use of anti-microbial agents of the kind recited
in Appellants’ claim 1. See Uchiyama paragraphs [0037] and [0124] –
[0128]. Uchiyama (paragraphs [0127]-[0128]) teaches incorporation of
water-soluble salts of biguanide compounds in the composition disclosed.
Uchiyama teaches a particulate-controlling polymer which is a graft
copolymer of 1) an acrylate and 2) a methoxy PEG methacrylate or a
dimethylaminoethyl methacrylate. Uchiyama, para. [0026].
Wong teaches a methoxypolyethyleneglycol-methacrylate-
methoxymethacrylate copolymer wherein the molar ratio of
methoxypolyethyleneglycol-methacrylate moieties to methoxymethacrylate
moieties is from about 1:1 to about 3:1. Wong, p. 5, ll. 14-20. Wong
teaches that methoxypolyethyleneglycol-methacrylate-methoxymethacrylate
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copolymers are useful as surface modifiers which provides stability to the
composition such that particulate control is achieved (i.e., an effective
average particle size can be maintained). Wong, page 5, ll. 28 through page
6, l. 8, page 7, ll. 24-36 through page 8, l. 2. Wong teaches a water
solubility of less than 10 mg/ml. Wong, p. 6. l. 17.
ANALYSIS
Appellants’ claim 1 is directed to a composition comprising
component (i) and (ii), as recited, supra.
With respect to component (i), the Examiner correctly finds that
Uchiyama teaches the use of anti-microbial agents of the kind recited in
Appellants’ claim 1. See Uchiyama paragraphs [0037] and [0124] – [0128].
Appellants argue that Uchiyama teaches that the use of antimicrobials is
optional and that the specific selection of a biguanide is from a long list of
optional additives described in Uchiyama. App. Br. 13. We are not
convinced by Appellants arguments in this regard. We agree with the
Examiner’s finding that Uchiyama (paragraphs [0127]-[0128]) teaches
incorporation of water-soluble salts of biguanide compounds in the
composition disclosed which are encompassed by the "water-soluble
polymeric biguanide salt" as claimed. Ans. 9-10.
With respect to component (ii), the Examiner finds that Uchiyama
teaches the claimed component (ii), except for the “m:n” molar ratio. Ans.
6. The Examiner relies upon Wong for teaching a formula of a copolymer
which meets the claimed non-ionic copolymer as recited by Appellants,
including having an “m:n” molar ratio of from about 1:1 to about 3:1.
Wong, p. 5, ll. 19-20. Ans. 6-7. The Examiner concludes it would have
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been obvious to include the copolymer of Wong in the composition of
Uchiyama. Ans. 11.
Appellants argue that one of ordinary skill in the art of fabric
treatment (Uchiyama) would not look to Wong, which teaches nanoparticles
containing an x-ray contrast agent or a drug substance, for insight on how to
modify or improve polymers contained in a fabric treatment composition of
Uchiyama. App. Br. 13; see also Reply Br. 2. Appellants argue that
Uchiyama and Wong relate to disparate fields of technology. Appellants
argue that Uchiyama relates to surface treatment compositions that may be
used to treat surfaces such as fabrics, household surfaces, to prevent
particulates, such as allergens, from becoming airborne. Appellants do not
argue that the applied references are in a field different from that of
Appellants’ endeavor. Rather, Appellants argue that Uchiyama is in a field
different from that of Wong such that requisite motivation is lacking.
However, the analysis is the same.
Appellants also argue that the copolymer disclosed in Uchiyama and
the copolymer disclosed in Wong has different utilities and the problem
solved by each is different. The former is used to prevent allergens from
becoming airborne whereas the later is used to increase the bioavailability of
drugs. Reply Br. 2.
We are not convinced by the above-mentioned arguments for the
following reasons.
In the instant case, Uchiyama is directed to an aqueous composition
comprising a particulate-controlling polymer. The particulate-controlling
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polymer can be polyacrylic acid polymers and homologs thereof.
Uchiyama, paragraphs [0019] and [0026]. Wong teaches a similar utility in
that a copolymer, in particular, a methoxypolyethyleneglycol-methacrylate-
methoxymethacrylate, is useful as a surface modifier which provides
stability to the composition such that particulate control is achieved (i.e., an
effective average particle size can be maintained). Wong, page 5, ll. 28
through page 6, l. 8, page 7, ll. 24-36 through page 8, l. 2. Hence, Wong
also pertains to particulate control by maintaining an effective average
particle size, and is “believed to be useful in other applications such as the
formulation of particulate cosmetic compositions and the preparation of
particulate dispersions for use in image and magnetic recording elements.”
Wong, page 6, ll. 6-8). As such, Wong constitutes analogous art because “it
is one which, because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his problem”. In
re Clay, 966 F.2d at 659. Hence, requisite motivation exists in the
Examiner’s rejection. KSR, 550 U.S. at 401 and 420.
Appellants also argue that the copolymer contained in the Uchiyama
composition is different from the copolymer contained in Wong’s
composition because Uchiyama’s copolymer includes a monomer of
acrylate, whereas Wong includes a monomer of methoxy methacrylate.
Reply Br. 2. Appellants also argue that the substance of Wong must be
poorly soluble. We are not convinced by this argument as Appellants have
not explained how such would have dissuaded one of ordinary skill in the art
from applying the teachings of Wong (“m:n” ratio) in light of the similarity
in compound and utility between the copolymer of Wong and that of
Uchiyama. See also Ans. 7, first full paragraph. Also, the Examiner
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correctly points out that Wong teaches a water solubility of less than 10
mg/ml. Wong, p. 6, l. 17. Ans. 10.
In view of the above, we affirm the rejection of claims 1 and 4-19
under 35 U.S.C. § 103(a) as being unpatentable over Uchiyama in view of
Wong.
CONCLUSIONS OF LAW
Appellants have not shown that the Examiner reversibly erred in
rejecting the claims because Appellants have not convincingly shown that
there is a lack of requisite motivation to combine Uchiyama and Wong.

DECISION
The rejection of claims 1 and 4-19 under 35 U.S.C. § 103(a) as being
unpatentable over Uchiyama in view of Wong 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)(iv).

AFFIRMED

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