Ex Parte Kilkenny et al

Board of Patent Appeals and Interferences

Oct 27, 2009

11001335 (B.P.A.I. Oct. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ANDREW KILKENNY, ELIAS A. SHAHEEN,
ROBERT L. BLUM, SHUMAN MITRA, MALCOLM
DE LEO, and SHONA L. NELSON
________________

Appeal 2009-003681
Application 11/001,335
Technology Center 1700
________________

Decided: October 27, 2009
________________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and MARK
NAGUMO, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 112-168 and 171-191, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2009-003681
Application 11/001,335

2
The Invention
The Appellants claim a method for cleaning a surface. Claims 112
and 135 are illustrative:
112. A method for cleaning a surface comprising:

a. providing an absorbent or adsorbent material, said
absorbent or adsorbent material including a material selected
from the group consisting of wood pulp, wood pulp derivative,
synthetic fibers, and mixtures thereof;

b. at least partially exposing said absorbent or adsorbent
material with an improved cleaning composition, said improved
cleaning composition including a cationic biocide and a
surfactant, said cationic biocide including a compound selected
from the group consisting of biguanide compound, quaternary
ammonium compound or mixtures thereof, said improved
cleaning composition including 0.01-10 weight percent
surfactant, said improved cleaning composition including about
0.1-10 weight percent solvent, and;

c. contacting said surface with said absorbent or adsorbent
material and said improved cleaning composition to cause over
50% of the cationic biocide to be released from said absorbent
or adsorbent material.

135. A method for cleaning a surface comprising:

a. providing an absorbent or adsorbent material, said
absorbent or adsorbent material including a material selected
from the group consisting of wood pulp, wood pulp derivative,
synthetic fibers, and mixtures thereof;

b. at least partially exposing said absorbent or adsorbent
material with an improved cleaning composition, said improved
cleaning composition including a cationic biocide, a surfactant,
and a surfactant enhancing polymer, said cationic biocide
including a compound selected from the group consisting of
biguanide compound, quaternary ammonium compound or
Appeal 2009-003681
Application 11/001,335

3
mixtures thereof, said surfactant including a compound selected
from the group consisting of ethoxylated alcohol, lauryl sulfate,
laurylether sulfate, cocamidopropylbetaine, alkyl polygly-
cosides, amine oxides, fluorosurfactant or combinations thereof,
said surfactant enhancing polymer including a compound
selected from the group consisting of polysaccharides,
polycarboxylates, polystyrenesulfonates, acrylate polymers,
polyethyleneimines, polyvinylpyrrolidones, polymethylvinyl
ether, polyvinyl alcohols, silicones, polyethylene glycols or
mixtures thereof.

The References
Cheung US 6,136,770 Oct. 24, 2000
Deleo US 6,340,663 Jan. 22, 2002
Zhou (WO ‘791) WO 98/44791 Oct. 15, 1998
The Rejections
The claims stand rejected as follows: claims 112-122, 124, 126, 128-
133, 135-139, 143, 147 and 149-154 under 35 U.S.C. § 102(b) or
35 U.S.C. § 103 over WO ‘791; claims 145, 155-166, 171 and 173-178
under 35 U.S.C. § 103 over WO ‘791; claims 182, 186 and 190
under 35 U.S.C. § 103 over WO ‘791 in view of Cheung; claims 123, 125,
127, 134, 140-142, 144, 146, 148, 167, 168, 172, 179, 180, 181, 184, 185,
188 and 189 under 35 U.S.C. § 103 over WO ‘791 in view of Deleo; and
claims 183, 187 and 191 under 35 U.S.C. § 103 over WO ‘791 in view of
Deleo and Cheung.
OPINION
We reverse the rejection under 35 U.S.C. § 102(b) and affirm the
rejections under 35 U.S.C. § 103 of all of the claims except claim 155.
Appeal 2009-003681
Application 11/001,335

4
Rejection under 35 U.S.C. § 102(b)
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that WO ‘791 discloses a composition comprising 1) 0.01-
10 wt% surfactant in combination with about 0.1-10 wt% solvent
(claim 112), or 2) a composition comprising a surfactant selected from
ethoxylated alcohol, lauryl sulfate, laurylether sulfate,
cocamidopropylbetaine, alkyl polyglycosides, amine oxides, fluorosurfactant
or combinations thereof, in combination with a surfactant enhancing
polymer including a compound selected from polysaccharides,
polycarboxylates, polystyrenesulfonates, acrylate polymers,
polyethyleneimines, polyvinylpyrrolidones, polymethylvinyl ether,
polyvinyl alcohols, silicones, polyethylene glycols or mixtures thereof
(claim 135)?
Findings of Fact
WO ‘791 discloses an antibacterial composition comprising a
quaternary ammonium compound, an anionic polymer, a dispersing agent
(which can be a nonionic polymer), a surfactant, a water-miscible solvent or
mixtures thereof, and the balance, water (abstract; p. 2, ll. 11-20; p. 3, ll. 22-
26). The preferred anionic polymers include polystyrene sulfonate and a
copolymer derived from one or more anionic monomers which can be
acrylate and one or more nonionic monomers which can be vinyl alcohol,
vinyl ethers, aryl acrylate or vinyl pyrrolidone which correspond to the
Appellants’ surfactant enhancing polymer, but also include many polymers
that are not recited in claim 135 (p. 5, ll. 14-25). The surfactant is about
0.05-10 wt%, preferably about 0.5-6 wt%, of the composition and includes
Appeal 2009-003681
Application 11/001,335

5
an amine oxide or an ethoxylated alcohol as well as many other surfactants
that are not recited in claim 135 (p. 8, l. 3 – p. 9, l. 4). The water-miscible
solvent preferably is a C1-4 alkanol (which can be ethanol), a C1-6 diol, a C3-24
alkylene glycol ether (which can be ethylene glycol monobutyl ether), or
mixtures thereof (p. 10, l. 16 – p. 11, l. 5). Typically the solvent is about 1-
80 wt%, preferably about 5-50 wt%, of the composition (p. 11, ll. 5-7). The
composition can include a builder which can be sodium chloride (p. 11, ll.
17-18). “[T]he cleaning composition can be incorporated into a sponge or
other suitable reusable article for applying the composition” (p. 4, ll. 24-26).
Analysis
The Examiner has the initial burden of establishing a prima facie case
of anticipation by pointing out where all of the claim limitations appear in a
single reference. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re
King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). For the Appellants’ claimed
invention to be anticipated, the reference must lead one of ordinary skill in
the art to a composition which falls within the scope of the claim “without
any need for picking, choosing, and combining various disclosures not
directly related to each other by the teachings of the cited reference.” In re
Arkley, 455 F.2d 586, 587 (CCPA 1972).
The Appellants argue that WO ‘791 does not disclose the combination
of amounts of surfactant and solvent required by claim 112, or the
combination of the specific surfactant and surfactant enhancing polymer
required by claim 135 (Br. 7, 9).
The Examiner argues that “the broad teachings of ‘791 anticipate the
material limitations of the instant claims” (Ans. 5).
Appeal 2009-003681
Application 11/001,335

6
The Examiner does not explain how one of ordinary skill in the art
would have obtained the Appellants’ combination of amounts of surfactant
and solvent required by claim 112, or combination of specific surfactant and
surfactant enhancing polymer required by claim 135, without picking and
choosing combinations of disclosures not directly related to each other by
the applied reference. Hence, the Examiner has not established a prima facie
case of anticipation of the Appellants’ claimed invention by WO ‘791.
Conclusion of Law
The Appellants have shown reversible error in the Examiner’s
determination that WO ‘791 discloses a composition comprising 1) 0.01-
10 wt% surfactant in combination with about 0.1-10 wt% solvent
(claim 112), or 2) a composition comprising a surfactant selected from
ethoxylated alcohol, lauryl sulfate, laurylether sulfate,
cocamidopropylbetaine, alkyl polyglycosides, amine oxides, fluorosurfactant
or combinations thereof, in combination with a surfactant enhancing
polymer including a compound selected from polysaccharides,
polycarboxylates, polystyrenesulfonates, acrylate polymers,
polyethyleneimines, polyvinylpyrrolidones, polymethylvinyl ether,
polyvinyl alcohols, silicones, polyethylene glycols or mixtures thereof
(claim 135).
Rejections under 35 U.S.C. § 103 of claims 112-122,
124, 126, 128-133, 135-139, 143, 145, 147,
149-166, 171 and 173-178 over WO ‘791,
and claims 123, 125, 127, 134, 140-142,
144, 146, 148, 167, 168, 172, 179, 180,
181, 184, 185, 188 and 189 over
WO ‘791 in view of Deleo

Appeal 2009-003681
Application 11/001,335

7
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, 1) contacting a surface with an
absorbent or adsorbent material and a cleaning composition to cause over
50% of the cationic biocide in the cleaning composition to be released from
the absorbent or adsorbent material (claim 112), 2) a composition
comprising a surfactant selected from ethoxylated alcohol, lauryl sulfate,
laurylether sulfate, cocamidopropylbetaine, alkyl polyglycosides, amine
oxides, fluorosurfactant or combinations thereof, in combination with a
surfactant enhancing polymer including a compound selected from
polysaccharides, polycarboxylates, polystyrenesulfonates, acrylate polymers,
polyethyleneimines, polyvinylpyrrolidones, polymethylvinyl ether,
polyvinyl alcohols, silicones, polyethylene glycols or mixtures thereof
(claims 135, 165, 166), 3) a composition containing first and second solvents
in a weight ratio of 10-1:1, the first solvent boiling below about 150°C and
second solvent boiling at about 150°C or higher (claims 145, 156, 161, 162),
4) a composition containing a copolymer of vinylpyrrolidone and
dimethylaminoethylmethacrylate quaternized with diethylsulfate
(claim 155), or 5) a composition containing a biocide release agent
(claims 171, 177, 178)?
Analysis
Deleo discloses a “cleaning wipe which comprises a wipe combined
with a liquid solution comprising surfactant and a hydrophilic polymer”
(col. 1, ll. 5-7). The wipe is an absorbent or adsorbent material, preferably
wood pulp, synthetic fibers or a mixture thereof (col. 3, ll. 27-30). The
Appeal 2009-003681
Application 11/001,335

8
preferred surfactants are alkyl polyglycosides, present in the composition at
about 0.001-6 wt%, and can be used with a cosurfactant which can be a
quaternary ammonium salt present in an amount less than the primary
surfactant (col. 4, ll. 45-49; col. 5, ll. 48-50; col. 5, l. 51 – col. 6, l. 17). The
hydrophilic polymer can be Gafquat® HS-100 (col. 8, ll. 5-8) which, as
indicated by the Appellants’ Specification (Spec. 54:7-8), is the copolymer
of vinylpyrrolidone and dimethylaminoethylmethacrylate quaternized with
diethylsulfate required by the Appellants’ claim 155, and is about 0.001-5%,
preferably about 0.001-1%, of the composition (col. 8, ll. 32-34). The
composition can include a solvent, preferably in an amount of about 1-5%
(col. 9, l. 66 – col. 10, l. 2).
The Appellants argue, with respect to claim 112, that WO ‘791 would
not have led one of ordinary skill in the art to select components and their
amounts so as to arrive at a cleaning composition that could be loaded on an
absorbent or adsorbent material and then release over 50% of the cationic
biocide in the composition (Br. 8; Reply Br. 3).
The compositions of WO ‘791 and the Appellants both contain 1) a
quaternary ammonium compound, 2) a surfactant which can be the same
surfactant (WO ‘791, pp. 8-11; Appellants’ claim 135), the amount of the
WO ‘791 surfactant (about 0.05-10 wt%, preferably about 0.5-6 wt%; p. 8,
ll. 3-5) being within the Appellants’ range (0.01-10 wt%; claim 112), and
3) a solvent which can be the same solvent (WO ‘791, p. 10, l. 16 – p. 11,
l. 5; Appellants’ claim 161), the amount of the WO ‘791 solvent (about 1-
80 wt% , preferably about 5-50 wt%; p. 11, ll. 5-7), overlapping the
Appellants’ range (about 0.1-10 wt%, claim 112). Use of amounts within
the overlapping ranges would have been prima facie obvious to one of
Appeal 2009-003681
Application 11/001,335

9
ordinary skill in the art. See In re Harris, 409 F.3d 1339, 1341 (Fed. Cir.
2005) (“Where the ‘claimed ranges are completely encompassed by the prior
art, the conclusion [that the claims are prima facie obvious] is even more
compelling than in cases of mere overlap.’” (quoting In re Peterson, 315
F.3d 1325, 1330 (Fed. Cir. 2003)). The compositions of WO ‘791 and the
Appellants within the overlapping ranges which are the same would have the
same properties, including the ability to cause over 50% of the quaternary
ammonium cationic biocide to be released from the absorbent or adsorbent
material. Cf. In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the
standpoint of patent law, a compound and all of its properties are
inseparable; they are one and the same thing”). Thus, the WO ‘791
compositions arrived at by one of ordinary skill in the art through no more
than ordinary creativity would have included compositions having the
cationic biocide release property recited in the Appellants’ claim 112. See
KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an
obviousness determination one “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ”).
The Appellants argue, regarding claims 145, 156, 161, 162, that “[t]he
concept of using two or more solvents in certain amounts based on the
boiling point of such solvents is clearly absent from the teachings of
WO ‘791” (Reply Br. 4; Br. 16-18).
The Examiner finds that WO ‘791’s ethanol boils below 150°C and
WO ‘791’s ethylene glycol monobutyl ether boils above 150°C (Ans. 11).
Because this finding is reasonable and the Appellants have not challenged it,
we accept it as fact. See In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA
1964). WO ‘791 discloses that mixtures of the solvents can be used in the
Appeal 2009-003681
Application 11/001,335

10
composition (p. 10, ll. 16-19). For those reasons and because WO ‘791 does
not limit the relative amounts of the solvents, we conclude that WO ‘791
would have led one of ordinary skill in the art, through no more than
ordinary creativity, to a combination of solvents containing, in any desired
ratio including 10-1:1, a solvent boiling below about 150°C and a solvent
boiling at or above 150°C. See KSR, 550 U.S. at 418.
The Appellants argue, with respect to claims 135, 165, 166, that
WO ‘791 would not have led one of ordinary skill in the art to a composition
comprising a surfactant selected from ethoxylated alcohol, lauryl sulfate,
laurylether sulfate, cocamidopropylbetaine, alkyl polyglycosides, amine
oxides, fluorosurfactant or combinations thereof, in combination with a
surfactant enhancing polymer including a compound selected from
polysaccharides, polycarboxylates, polystyrenesulfonates, acrylate polymers,
polyethyleneimines, polyvinylpyrrolidones, polymethylvinyl ether,
polyvinyl alcohols, silicones, polyethylene glycols or mixtures thereof
(Reply Br. 3-4).
WO ‘791 discloses that the composition can contain a surfactant and
an anionic polymer (p. 2, ll. 11-20). WO ‘791’s disclosures that the
surfactant can be ethoxylated alcohols or amine oxides, and the anionic
polymer (which corresponds to the Appellants’ surfactant enhancing
polymer) can be polystyrene sulfonate or a copolymer derived from one or
more anionic monomers which can be acrylate, and one or more nonionic
monomers which can be vinyl alcohol, vinyl ethers, aryl acrylate or vinyl
pyrrolidone (p. 5, ll. 14-25; p. 8, l. 2 – p. 9, l. 6) would have led one of
ordinary skill in the art, through no more than ordinary creativity, to select
those surfactants and anionic polymers as the surfactant and anionic polymer
Appeal 2009-003681
Application 11/001,335

11
used in combination. See KSR, 550 U.S. at 418. The fact that many
surfactants and anionic polymers are disclosed would not have made any of
them less obvious to one of ordinary skill in the art. See Merck & Co., Inc.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Lemin, 332
F.2d 839, 841 (CCPA 1964). The Appellants’ apparent observation of a
property of WO ‘791’s anionic polymer, i.e., that it has a surfactant
enhancing effect, does not render the Appellants’ composition unobvious.
See Papesch, 315 F.2d at 391 (“From the standpoint of patent law, a
compound and all of its properties are inseparable; they are one and the same
thing”).
The Appellants argue, regarding claims 171, 177 and 178, that
WO ‘791 does not disclose a biocide release agent (Br. 19).
WO ‘791 discloses that the composition can contain sodium chloride
as a builder (p. 11, ll. 17-18). Sodium chloride is one of the Appellants’
biocide release agents (Spec. 53:8-10), and both WO ‘791 (p. 6, ll. 11-14)
and the Appellants (claim 174) use a quaternary ammonium compound as a
biocide. Hence, WO ‘791 appears to disclose a biocide release agent. See
Papesch, 315 F.2d at 391 (“From the standpoint of patent law, a compound
and all of its properties are inseparable; they are one and the same thing”).
The Appellants argue that Deleo does not remedy the deficiencies in
WO ‘791 as to claims 123, 125, 127, 134, 140-142, 144, 146, 148, 167, 168,
172, 179, 180, 181, 184, 185, 188 and 189 (Br. 21-23).
As discussed above, those deficiencies do not exist.
The Appellants argue that WO ‘791 does not disclose the particular
composition in claim 155 that includes a copolymer of vinylpyrrolidone and
dimethylaminoethylmethacrylate quaternized with diethylsulfate (Br. 18).
Appeal 2009-003681
Application 11/001,335

12
The Examiner argues that “the broad teachings of ‘791 suggest a
cleaning composition containing a biocide release agent, a specific solvent
mixture, a builder, and the other requisite components of the composition in
the specific amounts as recited by the instant claims” (Ans. 6).
The Examiner, however, does not point out where WO ‘791 discloses
a copolymer of vinylpyrrolidone and dimethylaminoethylmethacrylate
quaternized with diethylsulfate, or explain how WO ‘791 would have
rendered such a copolymer prima facie obvious to one of ordinary skill in
the art. Hence, the Examiner has not established a prima facie case of
obviousness of the method claimed in the Appellants’ claim 155.
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, 1) contacting a surface with an
absorbent or adsorbent material and a cleaning composition to cause over
50% of the cationic biocide in the cleaning composition to be released from
the absorbent or adsorbent material (claim 112), 2) a composition
comprising a surfactant selected from ethoxylated alcohol, lauryl sulfate,
laurylether sulfate, cocamidopropylbetaine, alkyl polyglycosides, amine
oxides, fluorosurfactant or combinations thereof, in combination with a
surfactant enhancing polymer including a compound selected from
polysaccharides, polycarboxylates, polystyrenesulfonates, acrylate polymers,
polyethyleneimines, polyvinylpyrrolidones, polymethylvinyl ether,
polyvinyl alcohols, silicones, polyethylene glycols or mixtures thereof
(claims 135, 165, 166), 3) a composition containing first and second solvents
in a weight ratio of 10-1:1, the first solvent boiling below about 150°C and
Appeal 2009-003681
Application 11/001,335

13
second solvent boiling at about 150°C or higher (claims 145, 156, 161, 162),
or 4) a composition containing a biocide release agent (claims 171, 177,
178).
The Appellants have shown reversible error in the Examiner’s
determination that WO ‘791 would have rendered prima facie obvious, to
one of ordinary skill in the art, a composition containing a copolymer of
vinylpyrrolidone and dimethylaminoethylmethacrylate quaternized with
diethylsulfate (claim 155).
Rejections under 35 U.S.C. § 103 of claims 182, 186 and 190
over WO ‘791 in view of Cheung, and claims 183, 187
and 191 over WO ‘791 in view of Deleo and Cheung
Issue
Have the Appellants shown reversible error in the Examiner’s
determination it would have been prima facie obvious, to one of ordinary
skill in the art, to include a fluorosurfactant in WO ‘791’s cleaning
composition?
Findings of Fact
Cheung discloses a cleaning and disinfecting composition comprising
at least one cationic surfactant compound having germicidal properties
(which can be a quaternary ammonium compound), a fluorosurfactant, and
optionally one or more carboxylate surfactants or nonionic, cationic or
amphoteric surfactants (col. 1, ll. 44-60; col. 3, ll. 47-51; col. 8, ll. 5-9).
Analysis
The Appellants argue that “Cheung is absent any teachings that a
cleaning composition should include more than one surfactant and that at
least one of the two surfactants must be a fluorosurfactant” (Br. 20).
Appeal 2009-003681
Application 11/001,335

14
Both WO ‘791 (p. 8, ll. 2-3) and Cheung (col. 1, ll. 50-58) disclose
that mixtures of different types of surfactants can be used, and Chung
discloses that in the same type of composition as WO ‘791’s composition
(i.e., a cleaning and disinfecting composition containing a quaternary
ammonium compound cationic biocide), a fluorosurfactant is useful in
combination with types of surfactants used by WO ‘791, i.e., nonionic and
amphoteric surfactants (WO ‘791, p. 8, ll. 2-3; Cheung, col. 1, ll. 50-58;
col. 3, ll. 46-50; col. 4, ll. 27-28; col. 8, ll. 5-9). Cheung indicates that the
fluorosurfactant contributes to good cleaning and disinfection of hard
surfaces (col. 3, ll. 6-9). Hence, Cheung would have led one of ordinary
skill in the art, through no more than ordinary creativity, to include a
fluorosurfactant in WO ‘791’s composition to contribute to good cleaning
and disinfecting. See KSR, 550 U.S. at 418.
The Appellants argue that Deleo does not remedy the deficiencies in
WO ‘791 and Cheung as to the use of a fluorosurfactant (Br. 23-24).
As pointed out above, those deficiencies do not exist.
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, including a fluorosurfactant in
WO ‘791’s composition.
DECISION/ORDER
The rejections of claims 112-122, 124, 126, 128-133, 135-139, 143,
147 and 149-154 under 35 U.S.C. § 103 over WO ‘791, claims 145, 156-
166, 171 and 173-178 under 35 U.S.C. § 103 over WO ‘791, claims 182,
186 and 190 under 35 U.S.C. § 103 over WO ‘791 in view of Cheung,
Appeal 2009-003681
Application 11/001,335

15
claims 123, 125, 127, 134, 140-142, 144, 146, 148, 167, 168, 172, 179, 180,
181, 184, 185, 188 and 189 under 35 U.S.C. § 103 over WO ‘791 in view of
Deleo, and claims 183, 187 and 191 under 35 U.S.C. § 103 over WO ‘791 in
view of Deleo and Cheung are affirmed. The rejections of claims 112-122,
124, 126, 128-133, 135-139, 143, 147 and 149-154 under 35 U.S.C. § 102(b)
over WO ‘791, and claim 155 under 35 U.S.C. § 103 over WO ‘791 are
reversed.
It is ordered that the Examiner’s decision is affirmed-in-part.
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-IN-PART

kmm

FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115