Ex Parte Leukel et al

Patent Trial and Appeal Board

Dec 17, 2014

12157278 (P.T.A.B. Dec. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE
THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOERG LEUKEL,1
Thi Thoa Rieffel, Ted Deisenroth, I-Chyang Lin, and
Joseph Fay
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Appeal 2013-001953
Application 12/157,278
Technology Center 1700
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Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Joerg Leukel, Thi Thoa Rieffel, Ted Deisenroth, I-Chyang Lin, and
Joseph Fay (“Leukel”) timely appeal under 35 U.S.C. § 134(a) from the non-
final rejection2 of claims 20, 28, and 29, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6. We reverse.

1 The real party in interest is listed as BASF SE. (Appeal Brief,
filed 23 July 2012 (“Br.”), 2.)
2 Office action mailed 6 January 2012.
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Application 12/157,278

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OPINION
A. Introduction3
The subject matter on appeal relates to polypropylene compositions
comprising a silver antimicrobial agent and an ethoxylated alcohol
wettability additive, and to melt-compounding processes of making such
compositions. The compositions are said to provide “outstanding permanent
antimicrobial activity.” (Spec. 1, ll. 5–7.)
Claim 20 is representative and reads:
A process for providing durable antimicrobial activity
towards polypropylene compositions, which process
comprises
incorporating into a polypropylene substrate via melt
compounding,
a silver antimicrobial and
a wettability additive,
where the silver antimicrobial is elemental silver or
silver supported on a zeolite and which is present
from about 0.05 to about 1 weight percent silver,
based on the weight of the polypropylene and
where the wettability additive is selected from
ethoxylated alcohols
CH3CH2(CH2CH2)aCH2CH2(OCH2CH2)bOH
where a is 6 to 25 and b is 1 to 10 and

3 Application 12/157,278, Antimicrobial polyolefin and polyester
compositions, filed 9 June 2008, claiming the benefit of a provisional
application filed 11 June 2007. Plural requests for continued examination
have been filed in this application. We refer to the “278 Specification,”
which we cite as “Spec.”
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which wettability additive is present from about 1% to
about 7% by weight, based on the weight of the
polypropylene.
(Claims App., Br. 8; some indentation and paragraphing added.)
The Examiner maintains the following ground of rejection:4
Claims 20, 28, and 29 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Gupta5 and Yazaki.6
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Due to our disposition of this appeal, we need address only sole
independent claim 20.
Leukel does not argue that the Examiner erred in holding the claimed
process prima facie obvious in view of the teachings of Gupta regarding
melt-processing polyolefin films with ethoxylated alcohols to obtain
permanent antifogging properties, and the teachings of Yazaki regarding
melt-compounding zeolites containing silver with polyolefins. Rather,
Leukel urges the Examiner erred in failing to give adequate weight to the
unexpected results described in the Specification, Examples 1 and 3, and

4 Examiner’s Answer mailed 22 August 2012 (“Ans.”).
5 Anunay Gupta et al., Polyolefin film compositions with permanent antifog
properties, U.S. Patent Application Publication 2001/0047046 A1 (2001).
6 Takao Yazaki et al., Method for producing an antibacterial molded article
of polyolefin resin composition comprising a zeolite containing silver . . . ,
U.S. Patent No. 5,094,847 (1992).
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further supported by the Declaration7 submitted by Dr. Ted Deisenroth, one
of the co-inventors. (Br. 5–7.)
The Examiner responds that the evidence relates to the properties of
the product, not to the claimed process, which does not recite any treatment
(i.e., washing), of the compositions following the recited melt-compounding,
nor any properties of the product, such as against which bacteria the product
is effective. (Ans. 3, last para.) Moreover, the Examiner finds, the range of
compositions tested is not commensurate in scope with the ranges recited in
the claims, notwithstanding that proper side-by-side comparisons are
presented in Example 1 and Example 3. (Id. at 4–6.)
“An examination for unexpected results is a factual, evidentiary
inquiry . . . .” In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997).
Dr. Deisenroth’s statements that the antibacterial results were “totally
surprising and unexpected” (Decl. 2, ll. 6, 17, 28; 3, l. 4) add little to the
disclosure in the Specification. However, in Example 1, the less than 1 log
reduction (i.e., reduction by a factor of less than 10) with 100 ppm
[100 × 10-6 = 10-4 = 0.01 w%] nanosilver and 1.8% ethoxylated alcohol
(sample 6) compared to the greater than 5 log reduction (i.e., reduction by a
factor of more than 105 [100,000] with 500 ppm [0.05 w%] or 1000 ppm
[0.1 w%] nanosilver and 1.8 w% ethoxylated alcohol (samples 7 and 8,
respectively) indicates a striking increase in antimicrobial effectiveness at
the lower end of the range recited for silver. Similarly, the retention of
antimicrobial effectiveness with successive cycles of washing is a property

7 Declaration filed 28 November 2011; copy provided in the Evidence
Appendix to the Brief.
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that, on its face, is reasonably correlated with the intimate blend achieved by
the required melt-processing recited in the claims. Moreover, Example 3
demonstrates a synergistic effect—which the Examiner does not deny—in
which polypropylene with 1% zeolite-supported silver shows strong growth
of E. coli after 24 hours, but polypropylene with 1% zeolite-supported silver
and ethoxylated alcohol shows greater than 4 log reduction [i.e., reduction
by a factor of more than 10,000].
As noted supra, Leukel does not dispute the prima facie case of
obviousness. But, the Examiner has not directed our attention to any
teachings in Gupta or in Yazaki that would have taught or suggested the
possibility of such dramatic changes in properties arising from combining
certain amounts of antimicrobial silver and a particular wetting agent. Nor
has the Examiner offered any technology-based explanation why a person
having ordinary skill in the art would have insisted on a more extensive
proffer of unexpected results to be persuaded that results would be
extrapolated reasonably to the range recited in the claims.
We conclude that Leukel has come forward with unexpected results
sufficient to rebut the prima facie case of obviousness in this case.
C. Order
We reverse the rejection of claims 20, 28, and 29.
REVERSED

cdc