Ex Parte Koenig et alDownload PDFPatent Trial and Appeal BoardMar 1, 201613269931 (P.T.A.B. Mar. 1, 2016) Copy Citation 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. 13/269,931 10/10/2011 DAVID WILLIAM KOENIG 64795892US02 7484 23556 7590 03/01/2016 KIMBERLY-CLARK WORLDWIDE, INC. Patent Docketing 2300 Winchester Rd. NEENAH, WI 54956 EXAMINER ALAWADI, SARAH ART UNIT PAPER NUMBER 1619 MAIL DATE DELIVERY MODE 03/01/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte DAVID WILLIAM KOENIG, JEREMY DAVID PAULSEN, COREY THOMAS CUNNINGHAM, and REBECCA ANN VONGSA __________ Appeal 2013-006672 Application 13/269,931 Technology Center 1600 __________ Before JEFFREY N. FREDMAN, JACQUELINE T. HARLOW, and RICHARD J. SMITH, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to a composition having durable antimicrobial activity. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Parties in Interest as Kimberly-Clark Worldwide, Inc. (see App. Br. 1). Appeal 2013-006672 Application 13/269,931 2 Statement of the Case Background “The public health impact of the undesired spread of microorganisms is significant . . . . Therefore, it is desirable to be able to prevent or inhibit microbial presence/growth on targeted surfaces” (Spec. 2, ll. 5–9). The Claims Claims 1–16 and 22–24 are on appeal. Independent claim 1 is representative and reads as follows: 1. A composition having durable antimicrobial activity comprising: a carbonate/bicarbonate salt of a quaternary ammonium cation; an organic acid; hydrogen peroxide; a surfactant selected from cationic surfactants, non- ionic surfactants, zwitterionic surfactants, and combinations thereof; and a cationic polymer that includes a (3- acrylamidopropyl) trimethylammonium chloride monomer combined with another monomer selected from a polar, water-soluble monomer, a hydrophobic, silicone-containing monomer, and combinations thereof. The Issues2 A. The Examiner rejected claims 1, 2, 4, 5, 7–12, 14, and 16 under 35 U.S.C. § 103(a) as obvious over Runge,3 Walker,4 and Romano5 (Final Act. 5–9). 2 The double patenting rejections were mooted by terminal disclaimers (see Reply Br. 1) that were approved (see Terminal Disclaimer Review Decision, Apr. 29, 2013). Appeal 2013-006672 Application 13/269,931 3 B. The Examiner rejected claims 3, 15, 22, and 24 under 35 U.S.C. § 103(a) as obvious over Runge, Walker, Romano, and Salamone6 (Final Act. 9–11). C. The Examiner rejected claims 13 and 23 under 35 U.S.C. § 103(a) as obvious over Runge, Walker, Romano, Salamone, and Martin7 (Final Act. 11–13). D. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as obvious over Runge, Walker, Romano, and Mohammadi8 (Final Act. 13–14). A. 35 U.S.C. § 103(a) over Runge, Walker, and Romano The Examiner finds that Runge teaches each of the components required by the claims other than “the incorporation of dioctyldimethylammonium carbonate” (Final Act. 6). The Examiner finds that Walker suggests “C8 to C20 alkyl quaternary ammonium carbonate and bicarbonate compositions” that “are useful as biocides” (Final Act. 7). The Examiner finds that Romano teaches that “quaternary ammonium cations (salts) include ranges of 0.4 up to 25% by weight” (Final Act. 8). The Examiner finds that because “both the quaternary ammonium carbonate compounds and hydrogen peroxide were known in the art to be useful antimicrobial agents, it would have been well within the purview of 3 Runge et al., US 2006/0003649 A1, published Jan. 5, 2006. 4 Walker, L., US 5,438,034, issued Aug. 1, 1995. 5 Romano et al., WO 98/54279 A1, published Dec. 3, 1998. 6 Salamone et al., US 2007/0129474 A1, published June 7, 2007. 7 Martin et al., US 2009/0155327 A1, published June 18, 2009. 8 Mohammadi et al., US 2008/175919 A1, published July 24, 2008. Appeal 2013-006672 Application 13/269,931 4 one of ordinary skill in the art to include a combination of antimicrobials” (Ans. 7). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that Runge, Walker, and Romano render claim 1 obvious? Findings of Fact 1. The Specification teaches that: The durable antimicrobial composition are stable; the stability of the compositions is reflected by the compositions maintaining their efficacy during shelf-life studies. For example, the compositions remain effective (meaning, they have the same level of durability to effect a log 2 reduction in organisms after twenty-five insults of 106 organisms) after storage for three months at 40°C (Spec. 4, ll. 28–32). 2. Runge teaches that the “wet wipe of the present invention acts as a vehicle to deliver these anti-microbial or pharmaceutical or treatment agents to the skin or mucosa” (Runge ¶ 92). 3. Runge teaches that “[s]uitable antiseptic agents for use in the wetting composition of the present invention include, for example, quaternary ammonium compounds . . . . Additional suitable antiseptic agents for use in the wetting composition of the present invention include . . . hydrogen peroxide” (Runge ¶ 98). 4. Runge teaches that “[s]uitable natural broad spectrum anti- microbial agents include . . . folic acid” (Runge ¶ 102) and that “[s]uitable odor control additives for use in the wetting composition and wet wipes of the present invention may include . . . citric acid” (Runge ¶ 115). Appeal 2013-006672 Application 13/269,931 5 5. Runge teaches that “[e]xamples of anionic or acidic monomers that may be copolymerized into the backbone of the polymers and polymer formulations may include . . . (3-acrylamidopropyl) trimethyl ammonium chloride” (Runge ¶ 34). 6. Walker teaches that “Di C8–C12 alkyl quaternary carbonate compositions, including those prepared by the method of the present invention, are particularly useful in wood preservative systems, as surfactants and as biocides” (Walker, col. 1, ll. 24–28). 7. Romano teaches “the use, in a composition, of a peroxygen bleach and an antimicrobial essential oil or an active thereof or mixture thereof, for long lasting disinfection on a surface” (Romano 3, ll. 22–24). 8. Romano teaches that “the compositions according to the present invention comprise up to 50% by weight of the total composition of a surfactant, or mixtures thereof, preferably from 0.3 % to 30 % . . . . Particularly suitable anionic surfactants for use herein include . . . quaternary ammonium cations” (Romano 8, ll. 10–20). Principles of Law “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the [S]pecification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. Appeal 2013-006672 Application 13/269,931 6 Analysis We begin with claim interpretation because before a claim is properly interpreted, its scope cannot be compared to the prior art. In this case, the dispute centers over the term “durable” in claim 1. While the Specification discusses “durable” compositions as “stable” (FF 1), in the absence of a definition of the term “durable,” it “is improper to ‘confin[e] the claims to th[e] embodiments’ found in the specification.” In re Trans Texas Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007). While Appellants have basis to incorporate specific limitations regarding the term “durable” in the Specification, they did not choose to do so in claim 1, instead relying upon a term of degree without any specific required value for “durable.” Datamize teaches that the “scope of claim language cannot depend solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005). Here, the term “durable” would be subject to such subjectivity, and we therefore interpret it broadly to encompass any degree of durability. Appellants contend that “[h]ydrogen peroxide would not be expected to be stable in the presence of carbonate/bicarbonate salts. Appellants are unaware of any prior art composition that contains stabilized hydrogen peroxide in combination with a carbonate/bicarbonate salt” (App. Br. 5). The Examiner responds that “Appellants have provided no factual evidence to show that the combination would not work” (Ans. 5). We find that the Examiner has the better position. The Examiner has established a prima facie case of obviousness, demonstrating the presence of Appeal 2013-006672 Application 13/269,931 7 each claimed element in the prior art compositions of Runge, Walker, and Romano (FF 8) and provided a legally sound basis for combining the biocide of Walker with the antimicrobials of Runge (see Ans. 7). In rebuttal, Appellants have provided no evidence, whether in documentary or declaration form, that the combination of Runge and Walker would have been expected to be unstable. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“[A]ttorney argument [is] not the kind of factual evidence that is required to rebut a prima facie case of obviousness”). Moreover, because Appellants’ claims do not provide any specific degree of stability that is required to be “durable,” even if we agreed that there was a concern regarding the stability of a combination of a bicarbonate surfactant and hydrogen peroxide, the claims do not provide a principled limitation that serves to distinguish between a very stable composition and a less stable composition. Instead, claim 1 encompasses compositions with any degree of stability. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (“[D]uring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed. . . . An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.) Appellants make “reference to the unexpected result made possible by this formulation technique as a reason why one of skill in the art would not expect to successfully provide stabilized hydrogen peroxide in the presence of a carbonate/bicarbonate salt” (App. Br. 6). Appeal 2013-006672 Application 13/269,931 8 We find this argument unpersuasive because Appellants do not identify any factual basis demonstrating the asserted unexpected result. See In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (“It is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements . . . [do] not suffice.”) In addition, the compositions were not compared with the closest prior art of Runge. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”). Conclusion of Law The evidence of record supports the Examiner’s conclusion that Runge, Walker, and Romano render claim 1 obvious. B.-D. 35 U.S.C. § 103(a) Appellants do not argue separately the claims in these obviousness rejections. Having affirmed the obviousness rejection over Runge, Walker, and Romano for the reasons given above, we also find that the further obvious combinations with B. Salamone, C. Salamone and Martin, and D. Mohammadi render the remaining claims obvious for the reasons given by the Examiner (see Final Act. 9–14). Appeal 2013-006672 Application 13/269,931 9 SUMMARY In summary, we affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as obvious over Runge, Walker, and Romano. Claims 2, 4, 5, 7–12, 14, and 16 fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). We affirm the rejection of claims 3, 15, 22, and 24 under 35 U.S.C. § 103(a) as obvious over Runge, Walker, Romano, and Salamone. We affirm the rejection of claims 13 and 23 under 35 U.S.C. § 103(a) as obvious over Runge, Walker, Romano, Salamone, and Martin. We affirm the rejection of claim 6 under 35 U.S.C. § 103(a) as obvious over Runge, Walker, Romano, and Mohammadi. 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 Copy with citationCopy as parenthetical citation