Ex Parte Kite et al

Board of Patent Appeals and Interferences

Jun 23, 2009

10313844 (B.P.A.I. Jun. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER KITE
and
DAVID HATTON
____________

Appeal 2009-000407
Application 10/313,844
Technology Center 1700
____________

Decided:1 June 23, 2009
____________

Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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).

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Application 10/313,844

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This is in response to a Request, filed May 20, 2009, for rehearing of
our decision, decided March 30, 2009, wherein we sustained the § 103
rejections on appeal. Particularly, we sustained a § 103 rejection of claims
7-12, 14, and 21-24 over Root in view of Raad, and a § 103 rejection of
claims 13, and 15-17 over Root in view of Raad and Sodemann.
Appellants argue that the Board made a legal error in the analysis of
the transitional term “consisting essentially of” (Request 2). Specifically,
Appellants contend that Board improperly applied a legal standard for
“consisting essentially of” as excluding additional unspecified ingredients
which would destroy the basic and novel characteristics of the claimed
invention, rather than the proper legal standard of excluding those
ingredients that materially affect the basic and novel characteristics of the
claimed invention (Request 2). Appellants contend that the Board’s
statement that the inclusion of an antimicrobial agent would enhance the
bactericidal or destructive effect indicates that the antimicrobial agent would
materially affect the basic and novel characteristics of the claimed invention
and, thus, the claim excludes the addition of antimicrobial agents (Request
3). Appellants contend that the facts presented in this appeal are similar to
those in In re Garnero, 412 F.2d 276, 279 (CCPA 1969), where the court
found that the transitional phrase “consisting essentially of” excluded the
addition of a binder material because such would materially affect the basic
and novel characteristics of the claimed invention (i.e., perlite particles
bound together without any additional material) (Request 4).
Contrary to Appellants’ arguments, we did not apply an improper
legal standard in analyzing the scope of the “consisting essentially of”
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transitional language. Rather, the context of the portion of the Decision
cited by Appellants concerns whether Appellants have met their burden of
showing that the addition of an antimicrobial agent would materially affect
the claimed invention. We properly determined that Appellants had not
satisfied their burden of showing that the addition of antimicrobial agents
would materially affect the basic and novel characteristics of the claimed
invention, such as destroying the bactericidal or destructive effect of the
composition used in the claimed method.
Appellants’ contention that the Board admits that adding an
antimicrobial agent would materially affect (i.e., enhance) the bactericidal or
destructive effect of the solution is not well taken. The addition of an
antimicrobial agent does not change the fact that the claimed EDTA
disinfectant solution, alone, inherently possesses the bactericidal or
destructive effect characteristics. In fact, Appellants’ Substitute
Specification states that “[w]hen used as a disinfectant solution, the
disinfectant salts of EDTA may also be combined with other chemicals as
dictated by the infected system” (Spec. 4). In other words, Appellants’
Specification recognizes that the EDTA solution alone possesses the
bactericidal or destructive effect (i.e., disinfectant properties) and does not
exclude the addition of other chemicals useful in a disinfectant composition
(e.g., antimicrobial agents).
Appellants’ arguments regarding Garnero are not persuasive because
the facts of Garnero differ from those presented in this appeal. Specifically,
the basic and novel characteristic of the claimed invention in Garnero was
that the perlite particles were held together without any additional material.
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The court determined that the Board’s reliance on art that required an
additional binder would be excluded by the claim’s “consisting essentially
of” transitional language because it would materially affect Garnero’s basic
and novel characteristic.
In contrast to Garnero, we found that the basic and novel
characteristic of Appellants’ claimed invention is the bactericidal or
destructive effect against bacteria and yeasts, which Appellants do not
contest. The addition of an antimicrobial agent to the claimed method of
using a disinfectant solution would not materially affect the bactericidal or
destructive effect of the claimed EDTA solution. In other words, the EDTA
solution used in the claimed method would still possess its bactericidal or
destructive effect even with the addition of an antimicrobial agent. Our
determination is supported by Appellants’ Specification which indicates that
depending on the infected system additional chemicals useful in making a
disinfectant may be included with the EDTA solution.
Appellants argue that the Board’s finding that Raad teaches that
“EDTA may be used alone or with a [sic] antimicrobial agents”
misrepresents the teachings of Raad (Request 5). Appellants contend that
Raad requires the combination of a chelator (e.g., EDTA) with an active
antimicrobial agent (Request 5).
Appellants’ arguments, however, fail to address our factual finding
that Raad discloses that “EDTA has a distinct inhibitory effect, acting either
alone or in concert with antimicrobial agents, upon several well known
species of bacteria or fungi” (Decision 10, FF 10 and 14). In our factual
findings, we cite directly to Raad’s disclosure (column 13, lines 63-66) that
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Raad’s chelators, such as EDTA, may be used alone or in combination with
antimicrobial agents. Appellants have not persuaded us that we erred in our
factual findings.
Appellants further argue that the Board erred in its assertion of a
reasonable expectation of success (Request 6-7). Appellants contend that
their argument was that there is no reasonable expectation that substituting
tetrasodium EDTA for disodium EDTA would have successfully provided a
bactericidal effect (Request 6). Appellants contend that there is no
suggestion in Root or Raad to combine the references in such a way to
produce the claimed methods (i.e., bactericidal effect) (Request 7).
Appellants’ “reasonable expectation” and reasons to combine
arguments seem to require that the reason for combining the references must
be same as Appellants’ reason (i.e., providing a bactericidal effect).
However, the Supreme Court has held that “any need or problem known in
the field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007).
We determine on page 14 of the Decision that Root and Raad would
have suggested substituting tetrasodium EDTA for disodium EDTA to
inhibit bacterial growth. We further determine that Root’s and Raad’s
disclosures provide a reasonable expectation that the combination would
have successfully inhibited bacterial growth. Appellants do not contest these
determinations (Request 6). Accordingly, that the teachings of Root and
Raad would have been combined for a different reason than Appellants’
reason is of no moment to the obviousness analysis. Moreover, on page 15
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of the Decision, we determine that once the combination of Root’s and
Raad’s teachings are made, the claimed bactericidal effect would have been
inherent to the composition used in the claimed method.
Appellants’ contend that the Board legally erred in the assertion of
inherency of the bactericidal effect (Request 7). Specifically, Appellants
contend that the Board impermissibly mixed obviousness and inherency
(Request 8). All of Appellants’ arguments regarding this purported legal
error center on the Federal Circuit’s decision In re Dillon, 892 F.2d 1554,
(Fed. Cir. 1989) (Request 8-9).
Appellants’ arguments made with regard to Dillon are not persuasive
because the decision relied on by Appellants, Dillon, 892 F.2d 1554, was
vacated with its accompanying opinion being withdrawn. In re Dillon,
919 F.2d 688, 690 n. 1 (Fed. Cir. 1990) reheard en banc. Accordingly,
Appellants’ arguments are premised on a Federal Circuit decision that is no
longer applicable law.
Further regarding Appellants’ allegation that we mixed obviousness
and inherency, the Decision is clear that the obviousness of combining
Root’s and Raad’s teachings is premised on their recognition that EDTA
such as tetrasodium EDTA inhibits bacterial growth. Once the combination
is made, the resulting composition used in a method to disinfect conduits
such as catheters appears to be identical to Appellants’ composition used in
the claimed method to disinfect conduits including catheters. Accordingly,
as stated in the Decision, Appellants have the burden of showing that the
composition resulting from the combined teachings of Root and Raad used
to disinfect conduits does not inherently possess the claimed bactericidal
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effect. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). We have not
improperly mixed inherency and obviousness as alleged by Appellants.
For the above stated reasons, we adhere to our determination
that claims 7-12, 14, and 21-24 are unpatentable under § 103 over
Root in view of Raad, and that claims 13, and 15-17 would have been
obvious under § 103 over Root in view of Raad and Sodemann.
The Request for Rehearing is denied.
DENIED

cam

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