Ex Parte Levitt et al

Board of Patent Appeals and Interferences

May 31, 2012

11923410 (B.P.A.I. May. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BOARD OF PATENT APPEALS AND INTERFERENCES
____________________

Ex parte MARK D. LEVITT, MINYU LI
and LAUREN K. CARLSON
____________________

Appeal 2011-006758
Application 11/923,410
Technology Center 1700
____________________

Before: FRED E. McKELVEY, RICHARD E. SCHAFER and
RICHARD TORCZON, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

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Statement of the case
Ecolab Inc. (“Ecolab”), the real party in interest (Brief, page 4), seeks 1
review under 35 U.S.C. § 134(a) of a final rejection dated 21 July 2010. 2
In support of prior art rejections, the Examiner relies on the following 3
evidence: 4
Evans et al.
“Evans”
U.S. Patent 3,908,043 23 Sep. 1975
Ainslie U.S. Patent 5,385,604 31 Jan. 1995
Kresse U.S. Patent 5,887,311 30 Mar. 1999
Merz et al.
“Merz”
U.S. Patent 6,892,739 B2 17 May 2005

Li
U.S. Patent Application
Publication
2005/0154108 A1

14 Jul. 2005

Meyer et al.
“Meyer”
Efficacy of
Glucoprotamin®
containing disinfectants
against different species
of atypical Mycobacteria,
42 J. Hospital Infection
151-154

1999
5
Ecolab does not contest the prior art status of the evidence relied upon by the 6
Examiner. 7

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In addition to the evidence relied upon by the Examiner, we also cite the 1
following: 2
Rogmann et al.
“Rogmann 1”
U.S. Patent Application
Publication
2004/0054067 A1

18 Mar. 2004
Rogmann et al.
“Rogmann 2” U.S. Patent 7,118,785 B2 10 Oct. 2006
3
Rogmann 1 is prior art under § 102(b). 4
Rogmann 2 is cited to show ownership of Rogmann 1. 5
We have jurisdiction under 35 U.S.C. § 134(a). 6
Claims on appeal 7
The claims on appeal are Claims 1-25. Appeal Brief, pages 34-37. 8
Rejections 9
The Examiner has maintained the following rejections: 10
(1) Rejection 1: Claims 23-25 under § 103 over Ainslie. Answer, 11
page 3. 12
(2) Rejection 2: Claims 1-2, 7-15 and 17-18 under § 103 over Ainslie 13
and Evans. Answer, page 5. 14
(3) Rejection 3: Claim 3 under § 103 over Ainslie, Evans and Meyer. 15
Answer, page 11. 16
(4) Rejection 4: Claims 4-6 under § 103 over Ainslie, Evan, Meyer 17
and Merz. Answer, page 12. 18
(5) Rejection 5: Claim 16 under § 103 over Ainslie, Evans and 19
Kresse. Answer, page 13. 20

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(6) Rejection 6: Claims 19-22 under § 103 over Ainslie and Li. 1
Answer, page 14. 2
Rejection 1—Claims 23-25 3
Claims 23-25 are argued as a group. Brief, pages 24-25. 4
Pursuant to 37 CFR 41.37(c)(1)(vii), we select Claim 23 upon which to 5
decide the appeal. 6
Claim 23 reads (limitation in issue in italics): 7
A method of treating floors comprising: 8
a) applying to a floor an antimicrobial-resistant floor finish 9
composition comprising a zinc-free, acrylic floor finish; 10
b) applying a quaternary ammonium compound antimicrobial 11
composition to a mop head, wherein the quaternary ammonium 12
compound is present in an amount greater than necessary to disinfect 13
Pseudomonas aeruginosa according to the AOAC Use Dilution test 14
method; and 15
c) transferring the quaternary ammonium compound composition 16
from the mop head to the floor on a repeated daily basis, wherein at 17
least enough quaternary ammonium compound needed to disinfect 18
Pseudomonas aeruginosa according to the AOAC Use Dilution test 19
method is transferred to the floor without substantially degrading the 20
floor finish. 21
Claims 23-25 are rejected under § 103 over Ainslie. Answer, page 3. 22

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Ecolab mentions an attempt by the Examiner “to combine the prior art 1
references . . .” Brief, page 25:1. However, the Examiner has relied on only one 2
reference to reject Claims 23-25, viz., Ainslie. 3
The Examiner found that Ainslie “is silent as to the inclusion [or non-4
inclusion] of zinc in the [Ainslie] composition.” Answer, page 4. Ecolab responds 5
by arguing that “Ainslie does not teach or suggest a composition free of zinc.” 6
Brief, page 25:8-9. 7
Ecolab is in a very poor position to argue that Ainslie fails to teach a zinc-8
free acrylic resin. Ainslie describes the use of acrylic polymers explicitly stating 9
that “[o]ne preferred acrylic polymer . . . is sold by Rohm & Haas under the 10
tradename Rhoplex® NTS 2923.” Col. 2:13-15. In its Specification, page 18:9-14 11
Ecolab states (italics added): 12
Representative commercially available [acrylic] film formers 13
include DURAPLUSTM 3 zinc crosslinked acrylic dispersion, 14
DURAPLUS 2 zinc crosslinked acrylic dispersion, RHOPLEX B-924 15
zinc crosslinked acrylic dispersion, RHOPLEX NT-2624 acrylic 16
dispersion, DURAGREEN acrylic dispersion, RHOPLEX NTS-2923 17
acrylic dispersion, RHOPLEX 3949 acrylic dispersion, RHOPLEXTM 18
1421 zinc crosslinked acrylic dispersion, RHOPLEX 3830 zinc 19
crosslinked acrylic dispersion . . . . 20
Based on a straightforward reading of Ecolab’s Specification, one skilled in 21
art would understand that there are zinc-containing acrylics and non-zinc 22
containing acrylics. The Specification does not identify RHOPLEX® NTS- 2923 23
as being a zinc-containing acrylic. Accordingly, on this record and in view of 24

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Ecolab’s representations in the Specification, one skilled in the art would 1
understand that one of Ainslie’s preferred acrylics, i.e., RHOPLEX® NTS- 2923, 2
is zinc-free and therefore Ainslie teaches the use of a non-zinc acrylic. 3
Ecolab advances no other reason for contesting the Examiner’s rejection of 4
Claims 23-25. We therefore affirm Rejection 1. 5
Rejection 2-- Claims 1-2, 7-15 and 17-18 6
The Examiner rejected Claims 1-2, 7-15 and 17-18 under § 103 over Ainslie 7
and Evans. Answer, page 5. 8
Claim 1, which we reproduced from the Claims Appendix (Brief, page 34) 9
reads: 10
A method of treating floors comprising: 11
a) applying an antimicrobial-resistant polyurethane floor finish 12
composition crosslinkable with polyol-isocyanate to a floor; 13
b) applying a quaternary ammonium compound antimicrobial 14
composition to a mop head, wherein the quaternary ammonium 15
compound is present in an amount greater than necessary to disinfect 16
Pseudomonas aeruginosa according to the AOAC Use Dilution test 17
method; and 18
c) transferring the quaternary ammonium compound composition 19
from the mop head to the floor on a repeated daily basis, wherein at 20
least enough quaternary ammonium compounded needed to disinfect 21
Pseudomonas aeruginosa according to the AOAC Use Dilution test 22
method is transferred to the floor without substantially degrading the 23
floor finish. 24

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The Examiner found that Ainslie does not describe the use of a polyurethane 1
floor finish. Answer, page 6:7-8 (“Ainslie . . . does not teach applying a floor 2
finish comprising a polyol-isocyanate crosslinkable polyurethane floor finish 3
composition to a floor.”). 4
The Examiner turned to Evans to establish that polyurethane floor finishes 5
are known in the art. Id. 6
Ecolab presents several arguments contesting the Examiner’s rejection. 7
A first argument is that Ainslie and Evans “fail to teach a multi-layered 8
composition wherein every layer is uniform.” Brief, page 26:9-10. Ecolab is in a 9
poor position to make the argument. There is no “every layer is uniform” 10
limitation in Claims 1-2, 7-15 and 17-18. 11
A second argument is that Ainslie and Evans teach a necessity of 12
different layers having different compositions for functional purposes. Brief, 13
page 26:13-14. Ecolab again is in a poor position to make the argument. The 14
Specification reveals that Ecolab’s GLOSSTECK GT-100TM polyurethane finish 15
product is typically applied in one or more coats. Specification, page 5:1-2 and 16
page 16:13. Accordingly, application of single or multiple layer polyurethane 17
finishing compositions to floors is known in the art. Ecolab calls our attention to 18
Claim 7 and Claim 9 which require a single floor finish. However, the 19
Specification reveals that it is typical to apply inter alia “one” coat. 20
A third argument is that Evans describes the use of an epoxy and 21
polyurethane coating and that a floor coating with an epoxy cannot be stripped. On 22
the other hand the Ainslie floor coating can be stripped. Ecolab reasons therefore 23
that one skilled in the art would not combine Evans with Ainslie. What Ecolab 24

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concedes in its Specification is that both acrylic and polyurethane compositions are 1
known floor finishing compositions. As noted earlier, the Examiner cited Evans to 2
show that polyurethane compositions are known floor finishing. However, citation 3
of Evans was hardly necessary given the background of the invention which 4
reveals that typically used in hospitals are polyol-isocyanate crosslinking polymers 5
(polyurethanes) and acrylic polymers. Specification, page 5:14-18. 6
We have difficulty determining how the subject matter differs in any 7
significant respect from what Ecolab describes as prior art practices in the 8
background set out in its Specification. The use of polyurethane floor finishes is 9
old. Use of quaternary ammonium disinfectants is old. Specification, page 1:15 to 10
page 2:7. Mopping floors 1 to 3 times a day is known. Specification, page 2:7-14. 11
Ecolab alleges that there is a need for a floor finish that is resistant to 12
degradation to antimicrobial compositions and in particular quaternary ammonium 13
compound-based compositions. Specification, page 5:18-20. Indeed, Claim 1 14
mentions “without substantially degrading the floor finish.” According to the 15
Specification, GLOSSTEK GT 100TM is the most resistant. Specification, 16
page 52:8 (after Table 7). But, use of GLOSSTEK GT 100TM polyurethane as a 17
floor finish is known. Specification, page 16:12-13. Ecolab’s “most resistant” 18
property appears to be based on measurements of ΔL values. Id. No ΔL values 19
appear in any of the claims. It is therefore difficult to determine how the claimed 20
method distinguishes in “degradation” from the prior art methods described in the 21
Specification. 22
Rejection 2 is affirmed. 23

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Rejection 3—Claim 3 1
The Examiner rejected Claim 3 under § 103 over Ainslie, Evans and Meyer. 2
Answer, page 11. 3
Ecolab advances no additional reasons for reversal of Rejection 3 that were 4
not advanced for Rejection 2. See Brief, page 29. 5
Rejection 3 is affirmed. 6
Rejection 4—Claims 4-6 7
The Examiner rejected Claims 4-6 under § 103 over Ainslie, Evan, Meyer 8
and Merz. Answer, page 12. 9
Claims 4-6 further limit Claims 1-3 and call for a method of making a floor 10
finish that is resistant to alcohol-based compositions. 11
To address the “resistant to alcohol-based compositions”, the Examiner turns 12
to Merz. Merz is owned by Ecolab GmbH, an entity which we presume is 13
somehow connected to Ecolab. 14
According to Merz, the use of quaternary ammonium compounds (col. 2:16) 15
“can lead to problems” (col. 2:20). The Merz solution to overcoming the problems 16
is replacing the quaternary ammonium compounds with surfactants having an –OH 17
group, i.e., surfactant compounds which can be characterized chemically as an 18
alcohol. Col. 2:46-67. According to Merz, “excellent disinfecting results can be 19
obtained by the use of the described surfactants” (col. 3:17-19). The Merz 20
disinfectant can be used on floors (col. 7:11) and in hospitals (col. 7:37). 21
The Examiner reasoned that it would have been obvious to use the Merz 22
alcohol in place of the Ainslie quaternary ammonium compound. Answer, 23
page 13. Given Ecolab GmbH’s assertions in Merz that the alcohol-based 24

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disinfectant is an improvement over quaternary ammonium compositions, Ecolab 1
is in a very poor position to argue that it would not have been obvious to replace 2
the quaternary ammonium compositions applied to polyurethane floor finishes with 3
the alcohol disinfectant of Merz. 4
Ecolab argues that an “alcohol” is a solvent and that quaternary ammonium 5
compounds are surfactants. Brief, page 30. The argument is curious indeed given 6
that Merz (owned by Ecolab GmbH) states that its alcohols are surfactants. 7
Col. 2:46-47. That other alcohols may be solvents is a side show. The fact is that 8
Merz describes alcohols which are surfactants and it is Merz upon which the 9
Examiner relies. 10
The alcohols are said to behave differently from quaternary ammonium 11
compositions. Brief, page 30. Even if true, Ecolab through its Merz patent tells us 12
that the Merz alcohols have advantages over the quaternary ammonium 13
compositions. 14
Lastly, Ecolab maintains that there is no evidence that the floor finishes 15
made via the process of Claims 1-3 would be alcohol resistant. Apart from a broad 16
assertions of results, Ecolab points to no credible evidence in its Brief which shows 17
that acrylic and/or polyurethane floor finishes were regarded by those skilled in the 18
art as not being resistant to alcohols. Ecolab, through its Merz patent, reveals that 19
the Merz “alcohols” can be used on floors and in hospitals. There is no reason to 20
believe that conventional acrylic and polyurethane floor finishes on “floors” in 21
“hospitals” would not be resistant to the Merz alcohol. 22
Rejection 4 is affirmed. 23

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Rejection 5—Claim 16 1
The Examiner rejected Claim 16 under § 103 over Ainslie, Evans and 2
Kresse. Answer, page 13. 3
Claim 16 calls for the use of a mop made of microfiber. 4
Ecolab advances no additional reasons for reversal of Rejection 5 that were 5
not advanced for Rejection 1. See Brief, page 31. 6
Rejection 5 is affirmed. 7
Rejection 6—Claims 19-22 8
The Examiner rejected Claims 19-22 under § 103 over Ainslie, and Li. 9
Answer, page 14. 10
Claim 19 reads: 11
A method of treating floors comprising: 12
a) applying an antimicrobial-resistant floor finish composition 13
comprising a floor finish crosslinked with aziridine to a floor; 14
b) applying a quaternary ammonium compound antimicrobial 15
composition to a mop head, wherein the quaternary ammonium 16
compound is present in an amount greater than necessary to disinfect 17
Pseudomonas aeruginosa according to the AOAC Use Dilution test 18
method; and 19
c) transferring the quaternary ammonium compound composition 20
from the mop head to the floor on a repeated daily basis, wherein at 21
least enough quaternary ammonium compound needed to disinfect 22
Pseudomonas aeruginosa according to the AOAC Use Dilution test 23

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method is transferred to the floor without substantially degrading the 1
floor finish. 2
The essential difference between Claim 19 and Claim 1 is that Claim 1 calls 3
for the use of a floor finish cross linked with aziridine. 4
Claim 20 further limits Claim 19 calling for a floor finish selected from the 5
group consisting of (1) an acrylic floor finish, (2) an acrylic floor finish cross-6
linked with zinc, and (3) mixtures thereof. 7
The Examiner relies on Li for its description of the use of aziridine-8
crosslinkable dispersions (¶ 0018) as film formers. The assignment records of the 9
PTO show that Li is owned by Ecolabs. Reel 014728, Frame 0143. Li establishes 10
that as of its filing date (12 April 2004), aziridine-crosslinkable film forming 11
dispersions were known. Beyond the description in ¶ 0018, Li does not further 12
discuss aziridine-crosslinkable film forming dispersions. However, aziridine-13
crosslinkable film forming dispersions are more readily understood in the context 14
of the invention before us based on U.S. Patent Application Publication 15
2004/0054067 A1 (Rogmann 1). The published application ultimately issued as 16
U.S. Patent 7,118,785 B2 (Rogmann 2), which appears to owned by Ecolab. 17
Rogmann 1 describes floor finishes made inter alia from aziridine-18
crosslinked polymers. ¶ 0032. The polymers include polyurethanes and 19
polyacrylates. ¶ 0021. The floor finishes are designed to overcome certain 20
problems, and “above all” problems in hospitals. ¶ 0002. The floor finishes can be 21
further treated with antimicrobial components, including quaternary ammonium 22
compounds and alcohols. ¶ 0025. A preferred antimicrobial component is 23
Glucoprotamin®. ¶ 0030. 24

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Step a) of Claim 19 is manifestly described by Rogmann 1. Application of 1
quaternary ammonium compounds is also described by Rogmann 1. Use of a mop 2
is manifestly an obvious method of applying the quaternary ammonium 3
compounds. Specification, page 2:11-12. 4
All the steps recited in Claim 19 are known and are being used for their 5
intended purpose. 6
The additional subject matter of Claim 20 is described in ¶ 0021—7
polyacrylates. 8
The additional subject matter of Claim 21 is described in Rogmann 1, 9
¶¶ 0025 and 0030. 10
Rejection 6 is affirmed. 11
Other arguments 12
We have considered Ecolab’s remaining arguments and find none that 13
warrant reversal of the Examiner’s rejections, particularly when considered in light 14
of the reasons advanced in this opinion. Cf. Hartman v. Nicholson, 483 F.3d 15
1311, 1315 (Fed. Cir. 2007). 16
Decision 17
Upon consideration of the appeal, and for the reasons given herein, it is 18
ORDERED that the decision on the Examiner rejecting the claims 19
over the prior art is affirmed. 20
FURTHER ORDERED that since we have added additional rationale, 21
pointed to parts of the prior art not relied upon by the Examiner and have cited new 22
prior art, our affirmance is designated as a new rejection. 37 CFR § 41.50(b). 23
FURTHER ORDERED that our decision is not a final agency action. 24

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FURTHER ORDERED that within two (2) months from the date of 1
our decision, appellant may further prosecute the application on appeal by 2
exercising on of the two following options: 3
Option 1: Request that prosecution be reopened by submitting 4
an amendment or evidence or both. 37 CFR § 41.50(b)(1). 5
Option 2: Request rehearing on the record presently before the 6
Board. 37 CFR § 41.50(b)(2). 7
FURTHER ORDERED that no time period for taking any subsequent 8
action in connection with this appeal may be extended under 37 CFR 9
§ 1.136(a)(1)(iv). 10
AFFIRMED 11
New Rejection 37 CFR § 41.50(b) 12