Ex Parte Littau et al

Patent Trial and Appeal Board

Nov 26, 2013

11075287 (P.T.A.B. Nov. 26, 2013)

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.
11/075,287 03/08/2005 Cheryl A. Littau 1984US01 2250
7590 11/27/2013
Merchant & Gould, P.C.
P.O. Box 2903
Minneapolis, MN 55402-0903
EXAMINER
SCHLIENTZ, NATHAN W
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
11/27/2013 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 parte1 CHERYL A. LITTAU and MAI T. LE
____________

Appeal 2012-004169
Application 11/075,287
Technology Center 1600
____________

Before TONI R. SCHEINER, LORA M. GREEN and
SUSAN L. C. MITCHELL, Administrative Patent Judges.

MITCHELL, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-3, 5-6, 9, 14, 16-29, and 31-33. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify the Real Party in Interest as Ecolab Inc. (App. Br. 2.)
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STATEMENT OF THE CASE
The Specification is directed to an antimicrobial skin care
composition. Claims 1-3, 5-6, 9, 14, 16-29, and 31-33 are on appeal, and are
set forth in a Claims Appendix to the Appeal Brief (App. Br. 19-21).
Independent claim 1 is illustrative and read as follows:
1. An antimicrobial composition consisting of:
a) a lower chain alcohol;
b) a biguanide preservative;
c) at least two terpenoids;
d) a skin conditioner;
e) a cellulosic thickener in an amount sufficient to
provide a viscosity from about 2000-10,000 cps using a
Brookfield RVT viscometer, using spindle #3 @ 10 rpm
@ 25○C;
f) an emulsifier that is an alkylene oxide ether of a fatty
alcohol; and
g) optionally, an additional ingredient selected from the
group consisting of skin feel improvers, antioxidants,
fragrances, dyes, and mixtures thereof
wherein the composition is free of triclosan.
The Examiner has rejected the claims as follows:
I. claims 1-3, 5-6, 9, 14, 16-29, and 31-33 are rejected under
35 U.S.C. § 103(a) as unpatentable over Sine2 in view of
Johnson3 and Grayson;4 and
II. claims 1-3, 5-6, 9, 14, 16-29, and 31-33 are rejected under
35 U.S.C. § 103(a) as unpatentable over Jampani5 in view of
Johnson and Grayson.

2 Mark Richard Sine et al., US 6,183,766 B1, issued Feb. 6, 2001.
3 Eric A. Johnson et al., US 6,319,958 B1, issued Nov. 20, 2001.
4 Michael L. Grayson et al., US 2004/0191274 A1, published Sept. 30, 2004.
5 Hanuman B. Jampani et al., US 6,022,551, issued Feb. 8, 2000.
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I. Obviousness over Sine in view of Johnson and Grayson
The Examiner finds that Sine teaches the limitations of the claims at
issue except that Sine does not disclose an example with a terpenoid or a
biguanide preservative. (Ans. 6.) The Examiner finds that Johnson and
Grayson provide these teachings. Therefore, the Examiner concludes that
it would have been prima facie obvious for one skilled in the art
at the time of the invention to use at least two sesquiterpenoid
compounds in the formulations of Sine et al. in order to
increase the uptake of exogenous antimicrobial compounds, as
reasonably taught by Johnson et al. Also, it would have been
prima facie obvious for one skilled in the art at the time of the
invention to use a biguanide as the preservative/antimicrobial in
the formulation of Sine et al. because biguanides are well-
known antimicrobials used in alcohol-based compositions, as
reasonably taught by Grayson et al. One of ordinary skill in the
art would have a reasonable expectation of success because
Johnson et al. teach that sesquiterpenoid-mediated uptake of
antibiotics is nonspecific and can therefore encompass a
number of molecules (col. 9, ll. 61-64); and Grayson et al. teach
chlorhexidine digluconate is a preferred antimicrobial for use in
conjunction with alcohol-based disinfectant compositions.
(Id. at 7.)
Appellants’ main argument concerning the lack of a prima facie
obviousness case concerns the closed claim transitional phrase “consisting
of” that Appellants employ in every claim at issue. Specifically, Appellants
argue that the combination of references teaches innumerable permutations
and combinations, and there is nothing in the references to suggest or
motivate a person of skill in the art “to formulate the specific compositions
claimed in Appellant’s ‘consisting of’ claims and make sure that the claimed
raw materials are selected and the remaining raw materials are excluded.”
(App. Br. 10.) Sine’s disclosure of high viscosity of the lipophilic skin
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moisturizing agent is another indication, Appellants assert, that the
combination of references does not reach the claims that are directed to a
lower viscosity. (Id.)
Appellants also assert that Sine presents a teaching away because it
lists triclosan and zinc pyrithione as “‘preferred antimicrobial agents.’”
Appellants assert that triclosan is specifically excluded from the claims and
that the Specification teaches that zinc pyrithione does not work. (Id. at 11
(citing Spec., Table 5 and ¶ [0071] (comparing Formula C against the zinc
pyrithione Market Product II)).)
Finally, Appellants assert that there is no motivation to combine the
references even though they are within the same field of endeavor. “More
specifically, there is nothing in Sine that suggests a biguanide would
promote moisturizing. And there is nothing in Grayson that would lead a
person to select the thickeners and emulsifiers of Sine to achieve the
unexpected stability of the claimed invention.” (App. Br. 11.)6
The issue presented is: Does the preponderance of evidence of record
support the Examiner’s conclusion of obviousness?

6 Appellants’ specific reference to claims 9, 16-20, and 21-23 presents no
additional arguments concerning the patentability of the claims. (See App.
Br. 12-13.) Appellants do state that Sine teaches that anionic surfactants can
be used whereas claim 24 requires that the composition be free of anionic
ingredients (App. Br. 13), and none of the references describe the
composition as foaming as required by claims 31-33. (App. Br. 14.) Neither
of these arguments is persuasive. Sine not only teaches anionic surfactants,
but also the use of nonionic, cationic, zwitterionic or amphoteric surfactants
(FF 2.) Grayson teaches a formulation that is a foam. (FF 6.)
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Findings of Fact
FF 1. Sine teaches compositions for sanitizing and moisturizing skin
surfaces (Sine, Abstract), comprising:
a.) an effective amount of sanitizing agent to kill or
reduce the growth of microorganisms, the sanitizing agent
comprising from about 40% to about 99% by weight of the
composition of alcohol antiseptic;
b.) from about 0.1% to about 20% of a lipophilic skin
moisturizing agent;
c.) an effective amount of a degreasing agent selected
from the group consisting of:
i.) silicones selected from the group consisting of
nonvolatile silicones having a viscosity of at least about
15,000 centipoise, silicone elastomer, silicone
elastomer/volatile silicone blends, silicone
elastomer/nonvolatile silicone blends,
nonvolatile/volatile silicone blends and mixtures thereof;
ii.) wax materials soluble in the alcohol antiseptic
and having a melting point greater than about 20○C.;
iii.) powders;
iv.) fluorochemicals; and
v.) mixtures thereof;
d.) optionally, from about 0 to about 10% of thickener;
e.) optionally, from 0 to about 15% of humectant;
f.) optionally, from 0 to about 1% of perfume; and
g.) from about 0 to about 60% water.
(Sine, col. 1, l. 58 – col. 2, l. 16.)
FF 2. Sine also teaches that ethanol is the preferred alcohol antiseptic
and is most preferably about 55% to about 80% of the composition (Sine,
col. 2, ll. 50-57); Sine teaches that a thickener is preferably present and may
be a cellulose ether or a cationic cellulose, most preferably from about 0.1 to
about 0.5% (id. at col. 10, ll. 41-52; col. 11, ll. 24-25 and 31-35); Sine
teaches that a humectant, which serves to retain water on the skin surface
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such as glycerin, is preferably present at about 1 to about 6% (id. at col. 11,
ll. 36-46; col. 12, l. 4); Sine teaches emulsifying surfactants, such as steareth
and diethyleneglycol monostearate, at about 0.25 to about 2.5% (id. at col.
14, ll. 8-46); Sine teaches perfumes at about 0.01 to about 0.1% (id. at col.
13, ll. 43-59); Sine teaches the preferred use of nonionic, anionic, cationic,
zwitterionic, or amphoteric surfactants that may be present from about 0.1%
to about 5% by weight of the composition (id. at col. 13, ll. 60-65); and Sine
teaches skin-conditioning agents, such as emollients, humectants, and
occlusive agents (id. at col. 16, ll. 22-24).
FF 3. Sine also teaches that the composition may optionally contain
an antimicrobial agent such as farnesol and nerolidol preferably at 0.1% to
about 0.5% (Sine, col. 12, ll. 5-36).
FF 4. Johnson teaches topical administration to a skin surface of an
antimicrobial composition (Johnson, col. 3, ll. 56-64), comprising an amount
of at least one sesquiterpenoid sufficient to increase permeability of
microorganisms, such as bacteria and fungi, combined with an antibiotic (id.
at col. 3, ll. 8-11; claim 1). Johnson teaches that the sesquiterpenoids
preferably include farnesol, nerolidol, bisabolol and apritone (id., col. 3, ll.
27-28).
FF 5. Johnson teaches that sesquiterpenoid compounds by themselves
may have some antimicrobial activity. (Johnson, col. 8, ll. 65-67.)
FF 6. Grayson teaches a topical, alcohol-based composition which
may be used as an antiseptic disinfectant, wherein the composition
comprises “at least one C1 to C4 alcohol; at least one anti-microbial; and at
least one emollient” (Grayson ¶¶ [0001], [0005]-[0008].) Ethanol is one of
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the preferred alcohols taught by Grayson (id. at ¶ [0009). Grayson also
teaches that the topical composition may be formulated into a foam (id. at
¶ [0050]).
FF 7. Grayson teaches that the anti-microbial is “any agent that can
treat any infection caused by a microorganism and includes viral and
bacterial infections.” (Grayson ¶ [0031].) Grayson also teaches that the
anti-microbial is preferably chlorhexidine gluconate. (Id. at ¶ [0011].)
FF 8. The Specification teaches preservatives that include biguanides,
such as chlorhexidine gluconate (Spec. 6, ll. 9-12 and 7, ll. 4-5). The
Specification also teaches that terpenoids may increase the effectiveness of
the preservative (id. at 7, ll. 6-7) by “promoting the uptake of antimicrobial
compounds and preservatives by cells of bacteria and fungi, thereby
increasing the efficacy of the antimicrobial compound or preservative” (id.
at 13, ll. 2-5), and that preferred terpenoids include farnesol, nerolidol,
bisabolol, or apritone (id. at 13, ll. 9-10).
FF 9. The Specification teaches a “skin conditioner such as an
emollient, humectant, occlusive agent, or other moisturizer to provide
moisturizing, skin softening, skin barrier maintenance, anti-irritation, or
other skin health benefits” (Spec. 14, ll. 11-13).
B. Analysis
Appellants do not disagree with the Examiner’s statements concerning
which components of the antimicrobial composition are taught by the cited
references. For instance, Appellants do not dispute that Sine teaches the
limitations of claim 1 except for a biguanide preservative and at least two
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terpenoids. (See App. Br. 9-10.)7 The thrust of Appellants’ argument is that
there is no motivation to pick and choose among the teachings of the
references to arrive at the limitations of the closed claims. We disagree.
The Examiner correctly found that Sine and Grayson “teach skin
sanitizing compositions comprising the same basic components as instantly
claimed: alcohols, anti-microbials, skin conditioning agents such as
humectants and emollients, thickeners, emulsifiers, fragrances, dyes, etc.”
(Ans. 11; FF 1-3, 6-7), and that Grayson teaches that biguanides, such as
chlorhexidine gluconate, are well known antimicrobials used in topical,
alcohol-based compositions (Ans. 11-12; FF 6-7). Therefore, we agree with
the Examiner’s conclusion that it would have been prima facie obvious to
use a biguanide as the preservative/antimicrobial in the formulation of Sine
“because biguanides are well-known antimicrobials used in alcohol-based
compositions” as taught by Grayson. (See Ans. 7.)
By the same token, the Examiner correctly found that Sine teaches
farnesol and nerolidol as suitable antimicrobial agents (see Ans. 12; FF 3)
and that Johnson clearly teaches “the advantages of adding [at least one of]
the sesquiterpenoids farnesol, nerolidol, bisabolol and apritone to antibiotics
for enhancing their uptake and thus increasing their efficacy.” (See Ans. 13,
FF 3-4.) Johnson also teaches that sesquiterpenoid compounds by

7 Appellants do take issue with the high viscosities disclosed in Sine for the
lipophilic skin moisturizing agent as compared to the viscosity of 2,000 to
10,000 centipoise range for the claimed antimicrobial composition set forth
in claim 1 (App. Br. 10). The composition of Sine, however, contains only
up to 20% lipophilic skin moisturizing agent and at least 40%, but preferably
55 to 80% alcohol, which would greatly reduce the viscosity of Sine’s
composition (See FF 1-2).
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themselves may have some antimicrobial activity. (FF 5.) Therefore, we
agree that it would have been prima facie obvious to use at least two
sesquiterpenoid compounds in Sine’s formulations “in order to increase the
uptake of exogenous antimicrobial compounds” as taught by Johnson. (See
Ans. 7.)
The fact that Sine lists triclosan and zinc pyrithione among many
possible antimicrobials, which in the case of triclosan is specifically
excluded from the claims, and in the case of zinc pyrithione, Appellants
argue, will not work,8 does not present a “teaching away” so that no
motivation exists to combine Sine with Grayson and Johnson. While Sine
lists these as preferred antimicrobial agents (Sine, col. 12, ll. 45-53), Sine
does not discourage use of the claimed terpenoids. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004) (stating “prior art’s mere disclosure of
more than one alternative does not constitute a teaching away from any of
these alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed”). In fact, Sine states that
farnesol and nerolidol are “useful as antimicrobial agents” (Sine, col. 12, ll.
17-36). The preponderance of the evidence supports the Examiner’s
conclusion that claims 1-3, 5-6, 9, 14, 16-29, and 31-33 are obvious over
Sine in view of Johnson and Grayson.

8 Contrary to Appellants assertion, the Specification does not support the
conclusion that zinc pyrithione will not work. It appears that the market
product containing it merely shows more moderate moisturization in the
superficial and deeper layers of the skin. (Spec. 28, Table 5 (Market Product
II) and 28, ll. 11-15.)

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II. Obviousness over Jampani in view of Johnson and Grayson
Like Sine, the Examiner finds that Jampani teaches the limitations of
the claims at issue except that Jampani does not explicitly disclose using a
terpenoid or biguanide as the preservative. (Ans. 8-9.) Again, the Examiner
relies on Johnson and Grayson to provide this teaching. Therefore, the
Examiner concluded that it would have been prima facie obvious to use at
least two sesquiterpenoid compounds in Jampani’s compositions to increase
the uptake of exogenous antimicrobial compounds, as taught by Johnson,
and to use a biguanide as the preservative/antimicrobial because biguanides
are well-known antimicrobials used in alcohol-based compositions as taught
by Grayson (id. at 10).
Appellants assert that almost all of the compositions described in
Jampani require triclosan, which is specifically excluded from the claims at
issue. (App. Br. 14-15.) Appellants conclude that the Examiner has failed
to consider Jampani as a whole for all that it teaches including a teaching
away from triclosan-free formulations. (Id. at 15-16.)
We agree with the Examiner that Jampani does not require triclosan, it
“is merely an optional component in the antimicrobial compositions of
Jampani” (Ans. 14). In fact, one highly preferred embodiment does not
contain triclosan. (Jampani, col. 2, ll. 57-64.) As the Examiner points out,
Formulations 5 and 8 from Example 1 (Jampani, col. 7, ll. 18-24 and ll. 34-
46), and Formulation B from Example 2 (Jampani, col. 10, ll. 38-45) and
Examples 4 and 7 (Jampani, col. 12, l. 50 – col. 13, l. 25 and col. 14, l. 10 –
col. 15, l. 20, respectively) also describe compositions that do not contain
triclosan. These triclosan-free compositions are taught by Johnson to be
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effective (see Jampani, col. 9, l. 1 – col. 10, l. 22 (describing results of
testing in Tables 1-3); col. 11, ll. 1-25 (showing Formulation B to be
effective), and at least one was shown to have excellent antimicrobial
activity (see Jampani, col. 15 ll. 16-20 (stating formulation of Example 7
“demonstrates excellent antimicrobial activity, 99% reduction against all of
the listed organisms”). The preponderance of the evidence supports the
Examiner’s conclusion that claims 1-3, 5-6, 9, 14, 16-29, and 31-33 would
have been obvious over Jampani in view of Johnson and Grayson.9
SUMMARY
We affirm the rejection of claims 1-3, 5-6, 9, 14, 16-29, and 31-33
under 35 U.S.C. § 103(a) as unpatentable over Sine in view of Johnson and
Grayson.
We affirm the rejection of claims 1-3, 5-6, 9, 14, 16-29, and 31-33
under 35 U.S.C. § 103(a) as unpatentable over Jampani in view of Johnson
and Grayson.

9 Appellants’ specific reference to claims 9, 16-20, and 21-23 presents no
additional arguments concerning the patentability of the claims. (See App.
Br. 16-17.) Appellants do state that Jampani teaches that anionic surfactants
can be included whereas claim 24 requires that the composition be free of
anionic ingredients (Id. at 17), and none of the references describe the
composition as foaming as required by claims 31-33. (Id.) Neither of these
arguments is persuasive. Jampani not only teaches anionic surfactants, but
also the use of cationic or nonionic surfactants (Jampani, col. 5, ll. 38-42).
As stated earlier, Grayson teaches a formulation that is a foam. (FF 6.)
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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