Ex Parte Morelli et al

Patent Trial and Appeal Board

Mar 9, 2016

13209692 (P.T.A.B. Mar. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/209,692 08/15/2011
43896 7590 03/11/2016
ECOLAB USA INC.
MAIL STOP ESC-F7, 655 LONE OAK DRIVE
EAGAN, MN 55121
FIRST NAMED INVENTOR
Joseph P. Morelli
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2005USC1 1700
EXAMINER
FISHER, ABIGAIL L
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
03/11/2016 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):
connie.scheff@ecolab.com
angela.langason@ecolab.com
sarah.dannecker@ecolab.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH P. MORELLI,
KARLA LAPORTE, and JUNZHONG LI
Appeal2013-010180
Application 13/209,692
Technology Center 1600
Before JEFFREYN. FREDMAN, ULRIKE W. JENKS, and
RICHARD J. SMITH, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a two-
part disinfecting system. The Examiner rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as Ecolab Inc. (see
Br. 3).
Appeal2013-010180
Application 13/209,692
Statement of the Case
Background
"The use of disinfectant solutions both before and after milking has
found great success in preventing mastitis, particularly disinfectants based
on acidified chlorite" (Spec. 2, 11. 5-7).
The Claims
Claims 1-27 are on appeal. Independent claim 1 is representative and
reads as follows:
1. A two-part disinfecting system comprising a
first part and a second part adapted to be mixed to yield an
aqueous disinfecting composition, wherein the first part
comprises a chlorite and the second part comprises an acid,
and wherein the first part, the second part, or both the first
and second parts contain an olefin compound having the
formula:
(R1)CH=CH(R2)(X)
where Ri=[[H-,]] CH3-, CH3(CH2)n-,
CH3(CH2)nCH(OH}-, and M02C(CH2)n-;
n = 1-20·
'
R2=--( CH2)m-, ---CH(CH2)mC02M;
Ill= 2-20·
'
M = H, Na, K, Ca, Mg, ammonia, or an organic
cation; and
X = a hydrophilic group having at least four
heteroatoms selected from the group consisting of oxygen,
nitrogen, sulfur, chlorine, bromine, fluorine, iodine,
phosphorous and mixtures thereof,
wherein there are at least two saturated carbon atoms
between (R1)CH=CH and a heteroatom and a saturated
carbon is a carbon free of double and triple bonds and the
olefin compound is present in the first part, the second part,
or both the first part and second part so that, when the first
part and second part are combined, it is present within the
disinfecting composition at a concentration ranging from
about 0.005% to about 50% by weight.
2
Appeal2013-010180
Application 13/209,692
The Issues
A. The Examiner rejected claims 1-27 under 35 U.S.C. § 103(a) as
obvious over Richter,2 Kulprathipanja, 3 and McCutcheon's4 (Ans. 2-5).
B. The Examiner rejected claims 1-27 on the ground of nonstatutory
obviousness-type double patenting over claims 1-33 and 38--44 of US
6,916,493 (Ans. 5---6).
C. The Examiner rejected claims 1-27 on the ground of nonstatutory
obviousness-type double patenting over claims 1--43 and 48-54 of US
6,524,624 (Ans. 6-7).
D. The Examiner rejected claims 1-27 on the ground of nonstatutory
obviousness-type double patenting over claims 1-16 of US 8,021,694 (Ans.
7).
A. 35 U.S.C. § 103(a) over Richter, Kulprathipanja, and McCutcheon
The Examiner finds that Richter teaches an "acidic aqueous chlorite
teat dip" that "comprises a mixture of two parts. The first part comprises an
acid component and components used in the mastitis control including
surfactants ... The second part comprises a chlorous acid" (Ans. 2). The
Examiner finds that Richter teaches that "anionic surfactants that are suitable
include ... olefin sulfonates" (Ans. 3). The Examiner acknowledges that
Richter "does not exemplify the use of these surfactants" (Ans. 4).
The Examiner finds that McCutcheon's teaches "a listing of
commercially available emulsifiers and detergents" (Ans. 4).
2 Richter et al., EP 906,724 Al published Apr. 7, 1999.
3 Kulprathipanja et al., US 5,068,418, issued Nov. 26, 1991.
4 McCutcheon's Volume 1: Emulsifiers & Detergents 243-259,
283-293 (1999)
3
Appeal2013-010180
Application 13/209,692
The Examiner finds it obvious to "look to the teachings of
McCutcheon's for anionic surfactants which can be used in the invention of
Richter et al. such as Bio-Terge As-40, Geropon T-77, Incrosul OTS,
Crodafos N-10, Crodafos N-3 which all are olefin sulfonates" (Ans. 4).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner's conclusion that Richter, Kulprathipanja, and
McCutcheon's render claim 1 obvious?
Findings of Fact
1. Richter teaches "a bovine teat dip composition that can be
mixed using two parts, a simple chlorite solution and an acid or acidulant
formulation, to form a stable, effective composition that can be used in
routine dairy procedures" (Richter i-f 1 ).
2. Richter teaches that "an acid component ... including rheology
modifiers and thickeners; emollients, humectants, conditioners and
medicaments; surfactants" (Richter i-f 22).
3. Richter teaches that "[a]lso useful in the present invention are
surface active substances which are categorized as anionics ... Other
anionic detergents are the olefin sulfonates, including long chain alkene
sulfonates, long chain hydroxyalkane sulfonates or mixtures" (Richter i-f 50).
4. The Specification teaches exemplary olefin detergents including
Geropon T-77, Crodafos N-3, Crodafos N-10, and Incrosul OTS (see Spec.
15, 17, Table 1) and Bioterge AS-40 (see Spec. 26, 1. 6).
5. McCutcheon's teaches a variety of commercially available
detergents including Bio-Terge AS-40 (see McCutcheon's 283, col. 4, 1. 10),
Crodafos N-10 (Id. at 284, col. 1, 1. 11), Crodafos N-3 (Id. at 284, col. 1, 1.
4
Appeal2013-010180
Application 13/209,692
13), Gerapon T-77 (Id. at 284, col. 4, 1. 48), lncrosul OTS (Id. at 284, col. 5,
1. 40).
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability." Id. at 417.
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 2-5; FF 1-5) and agree that the
claims are rendered obvious by Richter, Kulprathipanja, and McCutcheon's.
We address Appellants' arguments below.
Appellants contend that the "fact that a claimed species or subgenus is
encompassed by a prior art genus is not sufficient by itself to establish a
prima facie case of obviousness. In re Baird. .. Appellants submit that there
is nothing in the prior art that would teach or suggest the use of the presently
claimed olefin compounds." (Br. 14 ).
We are not persuaded. In Baird, the issue was selection of specific
substituents for a chemical formula from a generic formula, where the
species of interest were not disclosed in the prior art. In re Baird, 16 F .3d
380, 382 (Fed. Cir. 1994)" (App. Br. 15). The instant facts are more similar
to those in Wrigley, because the instant claim "recites a combination of
elements that were all known in the prior art, and all that was required to
obtain that combination was to substitute one well-known ... agent for
another." Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356,
5
Appeal2013-010180
Application 13/209,692
1364 (Fed. Cir. 2012). That is, Richter expressly teaches the desirability of
olefin surfactants (FF 3) and McCutcheon's evidences that olefin surfactants
identical to those identified in the Specification itself were commercially
available and known equivalents (FF 4--5).
Appellants contend "that the Office has not pointed to anything in the
cited references or the art generally that would suggest the specifically
claimed sub-genus of olefin compounds, viz. olefin compounds that are not
a-olefins and that have at least two saturated carbon atoms between
(R1)CH=CH and a heteroatom" (Br. 15).
We are not persuaded because McCutcheon's teaches specific olefin
compounds that satisfy these requirements (FF 5; cf Ans. 9) as evidenced by
Appellants' own Specification (FF 4). Moreover, Richter suggests olefin
surfactants (FF 3) and McCutcheon's teaches known and useful olefin
surfactants (FF 5). See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) ("That the '813 patent discloses a multitude of
effective combinations does not render any particular formulation less
obvious."); In re Corkill, 771F.2d1496, 1500 (Fed. Cir. 1985) (obviousness
rejection of claims affirmed in light of prior art teaching that "hydrated
zeolites will work" in detergent fonnulations, even though "the inventors
selected the zeolites of the claims from among 'thousands' of compounds").
Appellants contend that "sodium N-methyl oleoyl taurate reduced the
rate of sodium chlorite consumption more than the alpha olefin sulfonate
tested. See Example 4. Thus, not all anionic surfactants performed the same
when used in the presently claimed compositions" (Br. 16).
We find this argument unpersuasive. The Examiner "has indicated
that sodium N-methyl oleoyl taurate is allowable (as this species was
6
Appeal2013-010180
Application 13/209,692
expressly allowed in US Patent No. 8021694)" (Ans. 9). Appellants do not,
however, identify a claim limited to this particular surfactant. Thus, for a
specific olefin surfactant for which unexpected results were demonstrated to
the satisfaction of the Examiner, the rejection was withdrawn by the
Examiner. However, for the broader genus of olefin surfactants, for which
no unexpected results were presented, the Examiner reasonably maintained
the obviousness rejection over known and commercially available
equivalents (FF 4--5). See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir.
2005) (Unexpected results must also be "commensurate in scope with the
degree of protection sought by the claimed subject matter.")
Appellants contend that the "Federal Circuit in Syntex
(U.S.A.) LLC v. Apotex, Inc. stated that 'the bare question of whether it
would have been obvious to substitute one surfactant for another misplaces
the proper focus on the obviousness of the invention as a whole, and likely
invites hindsight conclusion, forbidden by our precedent'" (Br. 17).
Appellants further contend that the "Office has arrived at an impermissible
hindsight conclusion in arguing that one skilled in the art would arrive at the
claimed olefins when nothing in any of the cited references suggests
selecting Appellants' specifically claimed olefins" (Br. 17).
We are not persuaded. In Syntex, the issue was whether unexpected
results were demonstrated for a specific species of surfactant, octoxynol 40,
to the Examiner, and the Federal Circuit found that the "prosecution history
shows some weakness in the conclusion that the patentee established
unexpected results for the claimed surfactant." Syntex (U.S.A.) LLC v.
Apotex, Inc. 407 F.3d 1371, 1383 (Fed. Cir. 2005).
7
Appeal2013-010180
Application 13/209,692
Syntex is entirely different than the present fact pattern, where the
claims are drawn to an entire genus of surfactants, not a species as in Syntex
and where Appellants have provided no evidence of unexpected results for
the olefin surfactants in claim 1. While we are fully aware that hindsight
bias may plague determinations of obviousness, Graham v. John Deere Co.,
383 U.S. 1, 36 (1966), we are also mindful that the Supreme Court has
clearly stated that the "combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." KSR, 550 U.S. at 416.
Conclusion of Law
The evidence of record supports the Examiner's conclusion that
Richter, Kulprathipanja, and McCutcheon's render claim 1 obvious.
B-D. Double Patenting
We summarily affirm the obviousness-type double patenting
rejections that were not argued by Appellants (see App. Br. 18). See Manual
of Patent Examining Procedure§ 1205.02 ("If a ground of rejection stated
by the examiner is not addressed in the appellant's brief, that ground of
rejection will be summarily sustained by the Board.")
SUMMARY
In summary, we affirm the rejection of claim 1under35 U.S.C.
§ 103(a) as obvious over Richter, Kulprathipanja, and McCutcheon's.
Claims 2-27 fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
We affirm the rejection of claims 1-27 on the ground of nonstatutory
obviousness-type double patenting over claims 1-33 and 38--44 of US
6,916,493.
8
Appeal2013-010180
Application 13/209,692
We atlirm the rejection of claims 1-27 on the ground of nonstatutory
obviousness-type double patenting over claims 1--43 and 48-54 of US
6,524,624 (Ans. 6-7).
We affirm the rejection of claims 1-27 on the ground of nonstatutory
obviousness-type double patenting over claims 1-16 of US 8,021,694.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
9