Ex Parte Yin

Patent Trial and Appeal Board

Dec 18, 2018

15016684 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/016,684 02/05/2016
156155 7590 12/20/2018
Dow DuPont
c/o E.I. du Pont de Nemours and Company
P.O. Box 2915
974 Centre Road, Chestnut Run Plaza 721-2342
Wilmington, DE 19805
FIRST NAMED INVENTOR
Bei Yin
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.
76844-US-NP 5938
EXAMINER
BASQUILL, SEAN M
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
12/20/2018 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):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BEI YIN
Appeal2017-011659
Application 15/016,684 1
Technology Center 1600
Before RICHARD M. LEBOVITZ, TIMOTHY G. MAJORS,
and DAVID COTTA, Administrative Patent Judges.
COTT A, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
synergistic microbiocidal composition. The Examiner rejected the claims on
appeal under 35 U.S.C. 103(a) as obvious.
We AFFIRM.
1 According to Appellants, the real party in interest is Dow Global
Technologies, Ltd. App. Br. 4.
Appeal2017-011659
Application 15/016,684
STATEMENT OF THE CASE
Claims 1--4 are on appeal. Claims 1 and 3 are illustrative and
read as follows:
1. A synergistic microbiocidal composition comprising:
(a) a nonionic surfactant with structure:
H( OCH2CH2)x(OCHCH3CH2)z(OCH2CH2)yOH
wherein x + y = 22-28 and z = 27-33; and
(b) glutaraldehyde;
wherein a weight ratio of the glutaraldehyde to nonionic
surfactant is from 8: 1 to 1 : 1.
3. A synergistic microbicidal composition comprising:
(a) a nonionic surfactant with structure:
H( OCH2CH2)x(OCHCH3CH2)z(OCH2CH2)yOH;
wherein x + y = 6-8 and z = 40-50; and
(b) glutaraldehyde;
wherein a weight ratio of the glutaraldehyde to nonionic surfactant is
from 17: 1 to 1: 1.
App. Br. 9.
The claims stand rejected as follows.
Claims 1 and 2 were rejected under 35 U.S.C. § I03(a) as obvious
over Kolari. 2
Claims 1--4 were rejected under 35 U.S.C. § I03(a) obvious over the
combination of Kolari and Exner. 3
OBVIOUSNESS OVER KOLAR!
Appellant argues claims 1 and 2 together. We designate claim 1 as
representative.
2 Kolari et al., WO 2014/154946 Al, published Oct. 2, 2014 ("Kolari").
3 Exner et al., US Patent Publication No. 2014/0147390 Al, published May
29, 2014 ("Exner").
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Appeal2017-011659
Application 15/016,684
The Examiner found that Kolari disclosed all of the elements of claim
1 with the exception of the claimed ratio of the glutaraldehyde to nonionic
surfactant. Final Act. 4--5. With respect to the ratio, the Examiner stated:
"[g]iven the relative concentrations of each of the biocide and block
copolymer, which includes a 1: 1 ratio, of biocide to surfactant, the examiner
considers the claimed ratios of biocide : surfactant an obvious permutation
of the Kolari disclosure." Id.
We agree with the Examiner that claim 1 would have been obvious
over Kolari. We address Appellant's arguments below.
Appellants argue that Kolari "does not disclose glutaraldehyde
specifically in combination with the instantly claimed PO block copolymer
that is capped with EO nor [ does it] disclose[] that this specific combination
is synergistic over the range of 8: 1 to 1: 1." App. Br. 7. We are not
persuaded.
Kolari discloses "a biocide in a micelle, wherein the micelle
comprises a block copolymer having a biocide-solubilizing part and a water-
soluble part, and a quaternary ammonium stabilizing compound." Kolari
Abstract. The biocides in Kolari' s biocide/micelle composition "may be
generally divided into two categorical groups: oxidizing and non-oxidizing"
which are present in an amount between about 5-50% (w/w). Id. at 7.
Kolari discloses that "preferred non-oxidizing biocides include
glutaraldehyde ... " Id. at 8. Kolari also discloses that the block copolymer
may comprise Pluronic L64 4 and that the block copolymer concentrations
fall within the range of about 15-50% (w/w). Id. at 9, 19.
4 In response to a requirement for information, Appellant confirmed that "the
nonionic block copolymer surfactants PLURONIC L64 (also TERGITOL
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Appeal2017-011659
Application 15/016,684
Given that Kolari discloses glutaraldehyde as a preferred biocide and
teaches block copolymers comprising Pluronic L64, we agree with the
Examiner that Kolari reasonably suggests a composition including both
glutaraldehyde and Pluronic L64. Final Act 4--5; Ans. 6. Moreover,
numerous combinations of biocide and block copolymer within the ranges
disclosed by Kolari ( 5-50% for the biocide and 15-50% for the block
copolymer) result in a ratio to biocide to block copolymer that falls within
the "8:1 to 1:1" range of ratios recited in claim 1. Accordingly, we agree
with the Examiner that it "would have been prima facie obvious to have
selected various combinations of glutaraldehyde and PLURONIC L64 in a
1: 1 ratio in an aqueous medium from within a prior art disclosure, to arrive
at compositions 'yielding no more than one would expect from such an
arrangement.'" Final Act. 5-6.
Appellants argue that "synergy is an unpredictable phenomena" and
that an ordinary artisan would not have been able to predict synergy over the
claimed range. We are not persuaded by this argument because as the
Examiner explained, Kolari expressly discloses that "a tenfold increase in
biocidal efficacy is to be expected by the combination of biocides, among
which the instantly claimed glutaraldehyde is recited as a particularly
preferred, if not tested or exemplified embodiment, and PLURONIC
nonionic block copolymer surfactants, specifically including the instantly
claimed PLURONIC L64 nonionic block copolymer surfactants." Ans. 6-7;
see, Kolari 3, 9-10, and 18. Appellants did not distinguish the claimed
"synergy" from the expected increase in activity when a biocide is combined
L64) and PLURONIC L81 (also TERGITOL L81) ... correspond to the
nonionic block copolymers set forth by instant claims 1 and 3." Final Act. 2.
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Appeal2017-011659
Application 15/016,684
with a block copolymer as described by Kolari. Accordingly, we affirm the
Examiner's rejection of claim 1. Because it was not argued separately,
claim 2 falls with claim 1.
OBVIOUSNESS OVER KOLAR! AND EXNER
The Examiner rejected claims 1--4 as obvious over the combination of
Kolari and Exner, applying Kolari as discussed above in connection with
claims 1-2. Final Act. 7-8. Appellant do not provide additional arguments
with respect to this rejection, requesting only that we apply the arguments
made in connection with claims 1 and 2 to the rejection of claims 3 and 4.
App. Br. 8. Accordingly, we affirm the Examiner rejection of claims 1--4 as
obvious over Kolari and Exner for the reasons already discussed in
connection with the Examiner's rejection of claims 1-2 as obvious over
Kolari.
SUMMARY
In summary, for the reasons discussed herein, and those set forth in
the Examiner's Answer and Final Action, we affirm the Examiner's
rejection of claims 1 and 2 under 35 U.S.C. § 103(a) as obvious over Kolari
and the Examiner's rejection of claims 1--4 as obvious over the combination
of Kolari and Exner.
AFFIRMED
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