Ex Parte Hourigan et al

Patent Trial and Appeal Board

Apr 19, 2017

14362898 (P.T.A.B. Apr. 19, 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.
14/362,898 06/04/2014 Regina Hourigan 9524-00-US-01-PC 2423
23909 7590 04/21/2017
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
PARAD, DENNIS J
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
04/21/2017 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):
Paten t_Mail @ colpal. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REGINA HOURIGAN, REHANA GAFUR, JAIRAJH MATTAI,
JAMES MASTERS, LAURENCE DU-THUMM, and SHIRA PILCH1
Appeal 2017-004979
Application 14/362,898
Technology Center 1600
Before ERIC B. GRIMES, JOHN G. NEW, and RICHARD J. SMITH,
Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to an
antibacterial composition. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Colgate-Palmolive
Company. (Br. 2.)
Appeal 2017-004979
Application 14/362,898
STATEMENT OF THE CASE
Claims on Appeal
Claims 1—10 and 13 are on appeal.2 (Claims Appendix, Br. 11—12.)
Claims 1 and 10 are illustrative and read as follows:
1. An antibacterial composition, wherein the antibacterial composition
consists of thymol and totarol, and wherein a weight ratio of thymol to
totarol is 5:1 to 1:5.
10. A composition, comprising:
a surfactant; and
the antibacterial composition of claim 1.
Examiner’s Rejection
Claims 1—10 and 13 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Mookerjee.3 (Ans. 2—6.)
FINDINGS OF FACT
We adopt the Examiner’s findings as our own, including with regard
to the scope and content of the prior art. The following findings are included
for emphasis and reference purposes.
FF 1. The Examiner finds that Mookerjee teaches an antimicrobial
composition comprising a synergistic combination of three or more agents as
active ingredients, wherein at least two of the three or more potentiating
agents are not the same type of compound, and wherein an exemplary
embodiment comprises terpenes/terpenoids as one type of compound and
2 Claims 11, 12, and 14 are withdrawn. (Final Act. 2, dated May 19, 2016.)
3 Mookerjee et al., US 2008/0194518 Al, pub. Aug. 14, 2008
(“Mookerjee”).
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phenols as another type of compound. (Ans. 2—3, citing Mookerjee Abstract
and claim 35.)
FF 2. The Examiner finds that Mookerjee teaches that a preferred
terpene/terpenoid is totarol and a preferred phenol is thymol. (Ans. 3, citing
Mookerjee 39, 44, 78, Table 1, and claims 8, 13, and 36.)
FF 3. Mookerjee teaches that “[t]he concentration of each ingredient shall
be in a range as is generally known by one of ordinary skill in the art. . . . the
antimicrobial compositions can contain as little as 0.39 ppm, or 0.000039
percent, of each active ingredient of the combination.” (Mookerjee 112—
113.)
FF 4. Mookerjee teaches that
in certain embodiments, the antimicrobial compositions can be
constituted at the point of use, or alternatively two or more
components of the compositions can be previously combined, in
appropriate ratios, so that the antimicrobial compositions can be
constituted at the point of use by adding the remaining
components and acceptable carriers or modifying agents in
appropriate ratios to achieve effective concentrations of
composition components.
(Mookerjee 1117.)
FF 5. The Examiner finds that Mookerjee teaches that the antimicrobial
composition further comprises a surfactant. (Ans. 3, citing Mookerjee
till.)
DISCUSSION
We adopt as our own the Examiner’s findings, analysis, and
conclusions as set forth in the Final Action (Final Act. 2—10), Advisory
Action dated July 26, 2016 (Adv. Act. 2—8), and Answer (Ans. 2—14). We
discern no error in the rejection of the claims as obvious.
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Issue
Whether a preponderance of evidence of record supports the
Examiner’s rejection under 35 U.S.C. § 103(a).
Analysis
Appellants contest the obviousness rejection by advancing several
arguments. We limit our consideration to claim 10 because the claims were
not separately argued.
We note at the outset that claim 10 uses the open ended transitional
phrase “comprising,” which permits ingredients or components, in addition
to the surfactant and antibacterial composition of claim 1, to be included in
the composition without falling outside the scope of the claim. (Ans. 7.)
See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). In
particular, the scope of claim 10 permits the inclusion of additional
antibacterial compound(s) or ingredient(s).
The Examiner concluded that, as to claim 10,
it would have been prima facie obvious to one of ordinary skill
in the art at the time the invention was made to modify the
composition of Mookerjee ... by specifically selecting the
combination of totarol and thymol as two of the active agents in
either of the two-component or three-component compositions
and optimizing the weight ratio/concentration of thymol and
totarol such that the ratio of thymol to totarol is 5:1 to 1:5.
(Final Act. 6.)
We address Appellants’ arguments below.
Argument No. 1
Appellants argue that Mookerjee “does not teach or suggest an
antibacterial composition, wherein the antibacterial composition (not an
intermediate of the antibacterial composition) consists of two potentiating
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agents, namely, thymol and totarol.” (Br. 3.) In particular, Appellants argue
that Mookerjee discloses “a synergistic combination of three or more
agents,” and that Mookerjee teaches that two of the three agents “may be
combined to form an intermediate material, and the intermediate material
must then be combined with the remaining component(s) to make the
antimicrobial composition.” {Id. at 4.)
We are not persuaded. Mookerjee teaches all of the limitations of
claim 10 (FF 1—5) and the scope of claim 10 is not limited to two
antibacterial agents. Moreover, two or more components, such as thymol
and totarol, may be “previously combined” and then “constituted at the point
of use by adding the remaining components and acceptable carriers.” (FF 4;
Mookerjee 1117.) We also note that Mookerjee teaches combinations of
two agents that exhibit antimicrobial efficacy, although stating that “none of
the observed synergy among the three agents can be explained by any two-
way combination of the agents.” (Mookerjee 1152.)
Argument No. 2
Appellants argue that one of ordinary skill in the art would have no
motivation to modify Mookerjee to consist of only two potentiating agents.
(Br. 5—6.) We are not persuaded. As discussed above, Mookerjee teaches
the combination of two potentiating agents. (Mookerjee 117 and 152.)
Moreover, claim 10 does not exclude additional potentiating agent(s).
Argument No. 3
Appellants argue that the Examiner erred in the assertion that totarol
or thymol, or the combination thereof, would have any antimicrobial utility.
(Br. 6—7.) In particular, Appellants contend that “the Examiner has provided
no rationale or objective basis to support the assertion that Mookerjee
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teaches or fairly suggests that either totarol or thymol are antimicrobial.”
(Id. at 7.)
We are not persuaded. We agree with the Examiner that “the term
‘antimicrobial’ in the preamble of the claims does not limit the claims
because it does not add any structural limitation and merely states the
purpose or intended use for the composition.” (Ans. 12.) Furthermore, the
Examiner points out that “[t]he ability to use very low concentrations of
individual agents in combination to achieve high-level antimicrobial efficacy
or antibiotic synergy is a primary advantage of [the Mookerjee] invention.”
(Id., quoting Mookerjee 1 52 (emphasis added).) Accordingly, we discern
no error in the Examiner’s finding that a person of ordinary skill in the art
would have understood Mookerjee as suggesting the combination of totarol
and thymol. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is
presumed on the part of one of ordinary skill in the art).
Argument No. 4
Appellants argue that Mookerjee teaches away from an antimicrobial
composition consisting of two potentiating agents, namely thymol and
totarol, and that using those two potentiating agents alone would render the
composition unsatisfactory for its intended purpose. (Br. 8—9.)
We are not persuaded. Appellants’ arguments are based on the
contention that a two component combination would not provide the
synergistic combination of a three component system. (Id.) However, as
explained supra, the scope of claim 10 is not limited to a composition with
only two antimicrobial components. In addition, using thymol and totarol
would not render the composition unsatisfactory for its intended purpose
because the overall intended purpose of the composition is as an
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antimicrobial, and Mookerjee discloses that two (or three) component
systems provide antimicrobial efficacy. See In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012).
Argument No. 5
Appellants argue that the Examiner failed to give adequate
consideration to the evidence of unexpected results from the combination of
thymol and totarol. (Br. 9; see Spec. 2-4.) In particular, Appellants contend
that Mookerjee teaches “that synergy was observed only when three
potentiating agents were combined and no synergy was observed when only
two potentiating agents were combined.” (Br. 9, citing Mookerjee 1152.)
We are not persuaded. It is well settled that “[t] he evidence presented
to rebut a prima facie case of obviousness must be commensurate in scope
with the claims to which it pertains.” In re Dill, 604 F.2d 1356, 1361
(CCPA 1979) (although affidavit of co-inventor demonstrated “markedly
superior results,” it did not establish unexpected results because the evidence
was not commensurate in scope with the claims). Here, the Examiner
explains that, while Appellants showed synergism across the claimed range
for a single species (E. coli), “[a]s to S. aureus, synergism was only found
when the ratio of thymol and totarol are at a ratio of 1.56:1 and vice
versa. . . . Therefore, antimicrobial synergism may not be achieved across
the entire claimed range for all microbial species and, thus, [Appellants’]
assertion of synergism is not commensurate in scope over the entire claimed
range.” (Ans. 14.) In addition, as discussed above, claim 10 does not
exclude additional antimicrobial agents. Accordingly, when weighed with
the evidence of obviousness, we are not persuaded that Appellants’ evidence
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of unexpected results is sufficient to support a conclusion of
nonobviousness.
Conclusion of Law
A preponderance of evidence of record supports the Examiner’s
rejection of claim 10 under 35 U.S.C. § 103(a). Claims 1—9 and 13 were not
argued separately and fall with claim 10.
SUMMARY
We affirm the rejection of all claims on appeal.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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