Ex Parte Levy et al

Board of Patent Appeals and Interferences

Nov 30, 2010

11529199 (B.P.A.I. Nov. 30, 2010)

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.
11/529,199 09/28/2006 Richard Levy A01781 7940
21898 7590 12/01/2010
ROHM AND HAAS COMPANY
PATENT DEPARTMENT
100 INDEPENDENCE MALL WEST
PHILADELPHIA, PA 19106-2399
EXAMINER
WANG, SHENGJUN
ART UNIT PAPER NUMBER
1627
MAIL DATE DELIVERY MODE
12/01/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RICHARD LEVY, MEGAN ANNE DIEHL,
DOLORES ANN SHAW, and EILEEN FLECK WARWICK
__________

Appeal 2010-008868
Application 11/529,199
Technology Center 1600
__________

Before LORA M. GREEN, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL1
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-16. We have jurisdiction under 35
U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Claims 1 and 2 are the independent claims on appeal, and may be
found in the claims appendix to the Appeal Brief. (App. Br. 16-19.) Claim
1 is drawn to a microbial composition comprising N-(n-butyl)-1,2-
benzisothiazolin-3-one (BBIT) and at least one of a list of microbicides,
having a defined ratio of BBIT to microbicide. Claim 2 is drawn to a
microbial composition comprising N-methyl-1,2-benzisothiazolin-3-one
(MBIT) and at least one of a list of microbicides, having a defined ratio of
MBIT to microbicide.
The following grounds of rejection are before us for review.
I. Claims 1-4, 8, 10, 11, and 15 stand rejected under 35 U.S.C. §
103(a) as being rendered obvious by the combination of Antoni-
Zimmermann,2 Yamaguchi,3 Kameta,4 and Wullem.5
II. Claims 6 and 13 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Antoni-Zimmermann,
Yamaguchi, Kameta, and Wullem, as further combined with
Brown.6
III. Claims 5 and 12 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Antoni-Zimmermann,

2 Antoni-Zimmermann, US 6,361,788 B1, issued Mar. 26, 2002.
3 Yamaguchi, JP 2001-302418 A, published Oct. 31, 2001.
4 Kameta, JP 10-298012 A, published Nov. 10, 1998.
5 Wullem, EP 1245153, published Oct. 2, 2002.
6 Brown, US 2005/0271595 A1, published Dec. 8, 2002.
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Yamaguchi, Kameta, and Wullem, as further combined with
Cupferman.7
IV. Claims 7, 9, 14, and 16 stand rejected under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of Antoni-
Zimmermann, Yamaguchi, Kameta, and Wullem, as further
combined with Siqueira.8
We affirm.
ISSUE
Have Appellants provided a showing of unexpected results, that when
weighed with the evidence of obviousness, is sufficient to demonstrate the
nonobviousness of the claimed subject matter?

FINDINGS OF FACT
FF1 According to the Specification, the “invention relates to a synergistic
combination of selected microbicides having greater activity than would be
observed for the individual microbicides.” (Spec. 1.)
FF2 The Specification further teaches that synergism is measured using an
industrially accepted method. (Id. at 14.)
FF3 The Examiner’s statement of the rejection over the combination of
Antoni-Zimmermann, Yamaguchi, Kameta, and Wullem may be found at
pages 3-5 of the Answer.

7 Cupferman et al., US 2002/0098211 A1, published Jul. 25, 2002.
8 Siqueira et al., Antibacterial Effects of Endodontic Irrigants on Black-
Pigmented Gram-Negative Anaerobes and Facultative Bacteria, 24 J. OF
ENDODONTICS 414-416 (1998).
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FF4 The Examiner cites Antoni-Zimmermann for teaching synergistic
biocidal compositions. (Ans. 3-4.)
FF5 Specifically, Antoni-Zimmermannn teaches a synergistic biocidal
composition comprising a 2-methylisothiazolin-3-one, a 1,2-
benzisothiazolin-3-one. (Antoni-Zimmermannn, col. 2, ll. 3-16.) Antoni-
Zimmermannn teaches that the composition can contain other active biocidal
substances. (Id. at col. 2, l. 66-col. 3. l. 4.)
FF6 The Examiner notes that Antoni-Zimmermann does not “teach
expressly the employment of 2-methyl, or 2-n-butyl substituted 1,2-
benzisothiazolin-3-one with the other biocides, or the particularly [sic] ratios
herein so . . . yield a synergistic effect.” (Ans. 4.)
FF7 The Examiner cites Yamaguchi for teaching that “2-lower alkyl
substituted 1,2-benzisothiazolin-3-ones are known to be similarly useful as
1,2-benzisothiazolin-3-one as biocides. (Id. (citing Yamaguchi, Abstract).)
FF8 The Examiner cites Kameta for teaching that
N-substituted benzisothiazolines (such as N-
butylbenzisothiazolin-3-one) yield synergistic antimicrobial
activity when combined with other known antimicrobial agents.
Any known antimicrobial agents would be useful for the
combination. Particularly mentioned including benzalkonium
chloride. The ratio of N-substituted benzisothiazoline to other
biocide may be in the range of 0.1 to 1000.

(Ans. 4 (citing Kameta, Abstract, ¶¶8-25.)
FF9 The Examiner further notes that Kameta teaches that a “N-alkyl
substituted 1,2-benzisothiazoline-3-one raise[s] greatly the activity of a non-
NBIT system compound which has microcidal activity.” (Ans. 7 (see
Kameta, ¶¶18 and 19).)
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FF10 The Examiner cites Wullem for teaching synergistic biocide
compositions comprising two or more isothiazoline-3-ones and a
tetramethyol acetylendiura. (Ans. 12 (citing Wullem, Abstract.)
FF11 The Examiner notes that “the cited references teach or fairly suggest
that [a] benzisothiazoline derivative, when combined with different
antimicrobial agents will yield a synergistic effect.” (Ans. 7.)
FF12 The Declaration of Eileen Warwick states that “both the existence of
synergy between a particular pair of biocides and the ratios of the two
biocides for which synergy might be observed are not predictable.”
(Warwick Declaration, ¶4.)
FF13 For example, citing the data presented in the Specification, the
Declarant notes that the “combination of BBIT/phenoxyethanol is
synergistic against E. Coli, while MBIT/phenoxyethanol is not.” (Id.)
FF14 In response to the Declaration, the Examiner finds that “the alleged
unexpected benefit would have been reasonably expected by one of ordinary
skill in the art,” that is, according to the Examiner, “the alleged synergistic
effect is not unexpected.” (Ans. 7.)
FF15 The Examiner further notes that in order to establish unexpected
results, the Declaration must compare the claimed subject matter against the
closest prior art. (Id. at 8.)

ANALYSIS
Appellants note that a “finding of obviousness may be rebutted by
demonstrating unexpected results relative to the prior art disclosure,”
asserting that “[e]vidence of an unexpected synergistic interaction
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commensurate in scope with the claims would overcome any finding of
obviousness.” (App. Br. 12.) Appellants argue that they have provided such
evidence in the form of the Warwick declaration, wherein the “declarant has
attested to the fact that one skilled in the art would not have been able to
predict the existence of synergy for a particular pair of biocides or the range
of biocide ratios that would be synergistic.” (Id.)
Appellants are not arguing that the Examiner has not set forth a prima
facie case of obviousness, but are arguing that they have presented evidence,
that when weighed with the evidence of obviousness, is sufficient to
demonstrate the nonobviousness of the claimed subject matter.
The burden of demonstrating unexpected results rests on the party
asserting them. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). “It is well
settled that unexpected results must be established by factual evidence. Mere
argument or conclusory statements in the [S]pecification does not suffice.”
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). “[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art.” In re Baxter-Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Moreover, “it is not enough to
show that results are obtained which differ from those obtained in the prior
art: that difference must be shown to be an unexpected difference.” In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972). “Mere improvement in
properties does not always suffice to show unexpected results.” In re Soni,
54 F.3d 746, 751 (Fed. Cir. 1995).
We conclude that Appellants have not provided a showing of
unexpected results, that when weighed with the evidence of obviousness, is
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sufficient to demonstrate the nonobviousness of the claimed subject matter.
First, the Warwick Declaration is not evidence of unexpected results as it
does not provide evidence or point to where in the Specification data is
presented that shows that the results obtained using the claimed composition
are unexpectedly better than those obtained with the compositions of the
closest prior art. Second, we agree with the Examiner that synergy is alone
is not sufficient to support a showing of unexpected results. As
demonstrated by the art relied upon by the Examiner, the ordinary artisan
would reasonably expect to obtain a synergistic biocidal composition
containing either BBIT or MBIT and at least one other microbicide (FF 9).
It is this understanding of the prior art, and not the expectation of the
Examiner, which we weigh along with the Warwick Declaration. See In re
Kollman, 595 F.2d 48, 55 n.6 (CCPA 1979) (“[s]ynergism, in and of itself, is
not conclusive of unobviousness in that synergism might be expected.”).
Moreover, while it may not be absolutely predictable which compositions
may provide synergistic results, the prior art, as well as Appellants’
Specification (see, e.g., FF14) demonstrate that the ordinary artisan would
have known how to test for those compositions that provide a synergistic
effect.
As to the remaining rejections, Appellants repeat their arguments as
addressed above. (Ans. 14.)

CONCLUSION OF LAW
We conclude that Appellants have not provided a showing of
unexpected results, that when weighed with the evidence of obviousness, is
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sufficient to demonstrate the nonobviousness of the claimed subject matter.
We thus affirm all of the rejections on appeal.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED

alw

ROHM AND HAAS COMPANY
PATENT DEPARTMENT
100 INDEPENDENCE MALL WEST
PHILADELPHIA, PA 19106-2399