Ex Parte McGeechan et al

Patent Trial and Appeal Board

Feb 15, 2018

12727405 (P.T.A.B. Feb. 15, 2018)

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.
12/727,405 03/19/2010 Paula Louise McGeechan 2926643-002001 3210
84331 7590 02/20/2018
McBee Moore Woodward & Vanik IP, LLC
7900 Westpark Drive, Suite A100
McLean, VA 22102
EXAMINER
MCMILLIAN, KARA RENITA
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
02/20/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @ mm w vlaw .com
cgmoore @ mmwvlaw. com
dwoodward @ mmwvlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAULA LOUISE MCGEECHAN and WILLIAM WOODS1 2 3
Appeal 2016-004735
Application 12/727,405
Technology Center 1600
Before DEMETRA J. MILLS, RICHARD M. LEBOVITZ, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a sanitizer formulation and a method of sanitizing a food
contact surface with such a formulation. Claims 1—3, 6, 8—10, 12—16, 21,
22, 24, 25, and 27—29 are on appeal as rejected under 35 U.S.C. § 103(a).2,3
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as “Arch Chemicals Inc.”
Br. 4.
2 Appellants indicate “US Patent Application 13/351,538, a Continuation-in-
Part (CIP) of the instant Application, is also pending on Appeal [No. 2016-
004737].” Br. 4.
3 Oral argument in this appeal was heard on February 1, 2018; the transcript
is a part of the record on appeal.
Appeal 2016-004735
Application 12/727,405
STATEMENT OF THE CASE
The Specification states:
Quaternary ammonium compounds, such as alkyldi-
methylbenzyl ammonium chloride (ADBAC) and didecyldi-
methyl ammonium chloride (DDAC), are known to be effective
antimicrobials for use in household and Industrial & Institutional
(I&I) sanitizer formulations. Illustratively, U.S. Patent No.
5,000,867 discloses a sanitizing composition for use in the
cleaning-in-place of food industry equipment containing 0.01-
5% of quaternary ammonium antimicrobial agents and 0.01-25%
of guanidine anti-microbial agents, together with one or more
organic acids and one or more inorganic acids.
U.S. Patent No. 5,529,713 [Gauthier4] discloses a cleaning
and disinfecting composition for household use containing
ethoxylated fatty alcohol, co-surfactant, isopropyl alcohol,
polyhexamethylene biguanide hydrochloride [PHMB], didecyl
dimethylammonium chloride and benzalkonium chloride
[ADBAC]. The biocide is present in an amount of from 1 to
40%.
Spec. 1. The Specification further states, “alternative sanitizer formulations
are needed for household indirect food contact applications that are
effective, flexible and cost-effective. The present invention provides one
such alternative.” Id. at 1—2.
Claims 1, 8, and 13 are independent claims. Claim 1 is representative;
it is reproduced below:
1. A sanitizer formulation comprising:
(a) an antimicrobial active agent selected from the group
consisting of biguanides, monoguanides, and combinations
thereof;
(b) a dialkyldimethyl ammonium salt;
4 US 5,529,713 (issued June 25, 1996) (“Gauthier”).
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Application 12/727,405
(c) an alkoxylated alcohol; and
(d) water,
wherein the component (a) is present in an amount of from about
25 to about 110 ppm, the component (b) is present in an amount
of from about 20 to about 125 ppm and the component (c) is
present in an amount of from about 35 ppm to about 200 ppm,
and wherein the component (a) and the component (b) are present
in a range of weight ratios between about 1:5 to about 2.5:1.
Br. 30 (Claims App’x).
The following rejection is on appeal:
Claims 1—3, 6, 8—10, 12—16, 21, 22, 24, 25, and 27—29 stand rejected
under 35 U.S.C. § 103(a) over Gauthier, Colclough,5 and Halloran.6 Final
Action 9; Answer 2.
DISCUSSION
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the claims and prior art, and conclusions set out in the Final
Office Action and Examiner’s Answer. See Final Action 2—16; Answer 2—
17. Any findings of fact set forth herein are provided to highlight certain
evidence.
Only those arguments made by Appellants in the Appeal Brief (no
Reply Brief was submitted) have been considered in this Decision.
Arguments not so presented in the Brief are waived. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015); see also Ex parte Borden, 2010 WL 191083 at *2
(BPAI 2010) (informative) (“Any bases for asserting error, whether factual
or legal, that are not raised in the principal brief are waived.”).
5 US 6,303,557 B1 (issued Oct. 16, 2001) (“Colclough”).
6 US 6,147,038 (issued Nov. 14, 2000) (“Halloran”).
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Application 12/727,405
In analyzing patentability and determining obviousness “[t]he
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). “[W]hen the question is whether
a patent claiming the combination of elements of prior art is obvious,” the
answer depends on “whether the improvement is more than the predictable
use of prior art elements according to their established functions.” Id. at
417.
Selecting a narrow range from within a somewhat broader range
disclosed in a prior art reference is no less obvious than
identifying a range that simply overlaps a disclosed range. . . .
The normal desire of scientists or artisans to improve upon what
is already generally known provides the motivation to determine
where in a disclosed set of percentage ranges is the optimum
combination of percentages.
In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003). “[DJiscovery of
an optimum value of a result effective variable in a known process is
ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276
(CCPA 1980). In analyzing the criticality of a claimed range so as to
evidence non-obviousness,
“it is not inventive to discover the optimum or workable ranges
by routine experimentation.” In re Aller, 220 F.2d 454, 456
(CCPA 1955). Only if the “results of optimizing a variable” are
“unexpectedly good” can a patent be obtained for the claimed
critical range. In re Antonie, 559 F.2d 618, 620 (CCPA 1977).
In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997).
One way for a patent applicant to rebut a prima facie case of
obviousness is to make a showing of “unexpected results,” i.e.,
to show that the claimed invention exhibits some superior
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Application 12/727,405
property or advantage that a person of ordinary skill in the
relevant art would have found surprising or unexpected.
In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). “To be particularly probative,
evidence of unexpected results must establish that there is a difference
between the results obtained and those of the closest prior art, and that the
difference would not have been expected by one of ordinary skill in the art at
the time of the invention.” Bristol-Myers Squibb Co. v. leva Pharms. USA,
Inc., 752 F.3d 967, 977 (Fed. Cir. 2014).
Statements in a brief that “merely mention [a] claim . . . and lack any
type of separate, substantive argument concerning the claim” are not
sufficient to constitute separate argument regarding that claim under 37
C.F.R. § 41.37(c)(l)(vii). In re Kao, 639 F.3d 1057, 1065 (Fed. Cir. 2011).
“A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.” 37 C.F.R.
§ 41.37(c)(l)(iv); see also In re Dance, 160 F.3d 1339, 1340 n.2 (Fed. Cir.
1998) (“Although Dance mentions the content of the dependent claims, he
does not argue their merits separately from those of independent claim 33, or
attempt to distinguish them from the prior art. Nor were the dependent
claims argued separately before the Board. Therefore, all claims stand or
fall together with claim 33.”).
We find in view of the above-cited precedent and the Examiner’s
findings of fact, the Examiner established a prima facie case that the claims
would have been obvious. Appellants ultimately do not contest this. Hr’g
Tr. 3:13—4:8, 7:20-8:4, 8:19-20. We address Appellants’ arguments below.
To the extent Appellants argue the references individually, we do not
find such arguments persuasive because the rejection is over a combination
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of prior art. “Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. [The references] must be read, not in isolation,
but for what [they] fairly teach [] in combination with the prior art as a
whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants do not contest that Gauthier teaches the components of
claim 1, but argue Gauthier teaches amounts of biguanides, dialkyldimethyl
ammonium salt, and alkoxylated alcohol that differ from the respectively
claimed 25—110 ppm, 20-125 ppm, and 35—200 ppm, amounts. App. Br. 12.
Appellants do not contest that Colclough teaches the biguanide and
quaternary ammonium salt components of the claimed formulation in ranges
spanning the claimed amounts, i.e., 5—300 ppm PHMB, 5—300 ppm
didecyldimethyl-ammonium salt, and also, for that matter, 5—3000 ppm of a
solvent, including alcohol or glycols; however, Appellants conclude that
Colclough provides no suggestion of the particularly claimed combination in
the particularly claimed amounts. Id. at 14. Appellants argue in their brief
that there is no suggestion as to how or why to optimize the amounts of the
components in the prior art because only result effective variables may be
obvious to optimize. Id. at 13. However, Appellants, reasonably, conceded
these arguments at the oral argument. Hr’g Tr. 3:13—4:8, 7:20-8:4, 8:19-20.
Appellants do not contest that Halloran teaches Tergitol®, i.e.,
trimethylnonyl polyethylene glycol esters, which is a type of alkoxylated
alcohol or fatty alcohol (as such is described by Gauthier), but argue
Halloran teaches using this component in hair conditioning compositions as
a surfactant and does not cure the deficiencies of the other references, as
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noted above. App. Br. 13. Appellants’point that Halloran is directed to hair
products is acknowledged; however, we conclude the reference is evidence
that the specifically claimed alkoxylated alcohol was available as a well-
known, commercially available product. It would have been obvious to use
such a product in combination with the cleaning products disclosed in the
other cited references for the reasons set forth by the Examiner.
Based on Appellants’ agreement at oral argument that the Examiner
has established a prima facie case for obviousness, it is clear that the above-
identified arguments are no longer a part of Appellants’ case on appeal.
Appellants established at the Hearing that non-obviousness rests upon their
proof of unexpected results. Appellants argue the prior art fails to teach the
“unexpected results found by appellants] for the claimed combination in the
claimed inventive amount.” Id. at 13, 14—18. Appellants point to the
Specification’s indication that it was surprising that smaller amounts of the
claimed components in combination achieved a disinfecting composition,
contrasted with either component alone. Id. at 15 (citing Spec. 3).
Appellants point to Table 3 in their Specification as evidence that
formulations that have DDAC and PHMB combined as claimed achieved
disinfectant results while formulations having these two components
uncombined did not; calling this result unexpected. Id. 15—16 (citing Spec.
16).
We do not find Appellants’ evidence and arguments directed to
unexpected results persuasive. As noted above, “[t]o be particularly
probative, evidence of unexpected results must establish that there is a
difference between the results obtained and those of the closest prior art, and
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Application 12/727,405
that the difference would not have been expected by one of ordinary skill in
the art at the time of the invention.” Bristol-Myers, 752 F.3d at 977. Here,
while it may have surprised the inventors that combining lower amounts of
PHMB and DDAC worked better as disinfectants than larger amounts of
either component alone, no comparison is made to formulations disclosed by
the closest prior art, i.e., either of Gauthier or Colclough, which also
combine PHMB and DDAC over a range of concentrations that likewise
provide effective disinfectant formulations. Nor did Appellants explain why
the comparisons they made constituted the “closest prior art” for the purpose
of establishing unexpected results.
Because a prima facie case for obviousness has been established and
the evidence for non-obviousness is not persuasive, we affirm the
obviousness rejection.
As to the other claims, Appellants list each other claim on appeal
under a separate heading, as required, but merely conclude that each is
“independently patentable” without a substantive argument for patentability
over the cited art. App. Br. 18—28 (emphasis omitted). For each such claim
and heading, Appellants merely state “[f]or at least the reasons set forth
above [regarding claim 1], Appellants respectfully disagree with the
Examiner’s rejection,” and then quote language from the listed claim that
“[t]he Examiner has failed to provide any evidence that the compositions or
methods described in Gauthier-Foumier in view of Colclough and Halloran”
teaches or suggests. Id. Such assertions do not constitute arguments on the
merits. See 37 C.F.R. § 41.37(c)(l)(iv); In re Kao, 639 F.3d at 1065; In re
Dance, 160 F.3d at 1340, n.2. Therefore, as they were effectively argued as
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a group, all claims fall with claim 1, which we have identified as
representative.
SUMMARY
The obviousness rejection is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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