Ex Parte Yin

Patent Trial and Appeal Board

Jul 12, 2018

12243028 (P.T.A.B. Jul. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/243,028 10/01/2008 Bei Yin
109 7590 07/16/2018
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
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.
67804 9571
EXAMINER
SCHLIENTZ, NATHAN W
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
07/16/2018 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BEI YIN 1
Appeal2017-006530
Application 12/243,028
Technology Center 1600
Before JEFFREY N. FRED MAN, MICHAEL J. FITZPATRICK, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision under 35 U.S.C. § 134(a) involving claims directed
to a method for controlling microorganisms in an aqueous or water
containing system for oil and/or gas production. The Examiner's final
rejection of claims 15, 17, and 20 under 35 U.S.C. § 103(a) is appealed. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm. 2
1 The Real Party in Interest is identified as "THE DOW CHEMICAL
COMP ANY." Appeal Br. 4.
2 Herein we have considered and refer to the Specification of Oct. 1, 2008
("Spec."), the Final Office Action of Oct. 16, 2014 ("Final Action"), the
Appeal Brief of Oct. 14, 2015 ("Br."), and the Examiner's Answer of Dec.
15, 2016 ("Answer"). No Reply Brief was filed.
Appeal2017-006530
Application 12/243,028
STATEMENT OF THE CASE
Independent claim 15 is representative and is reproduced below:
15. A method for controlling microorganisms in an aqueous
or water containing system for oil and/ or gas production, the
method comprising treating the system with a composition
compnsmg:
glutaraldehyde; and
an oxazolidine biocidal compound,
wherein the oxazolidine biocidal compound is 4,4-
dimethyloxazolidine and the weight ratio of glutaraldehyde to
4,4-dimethyloxazolidine is between about 6: 1 and· 1:9,
or the oxazolidine biocidal compound is 7-
ethylbicyclooxazolidine and the weight ratio of glutaraldehyde
to 7-ethylbicyclooxazolidine is between about 20: 1 and 1 :20,
wherein the aqueous or water containing system contains
sulfides; and
wherein the microorganisms being controlled are sulfate
reducing bacteria.
Br. 10 (Claims App'x) (added paragraph formatting for clarity).
The following rejection is on appeal:
Claims 15, 17, and 20 stand rejected under 35 U.S.C. § I03(a) over
Anker3 and Bryan. 4 Final Action 3.
DISCUSSION
Only those arguments made by Appellant in the Appeal Brief (no
Reply Brief was submitted) have been considered; arguments not so
presented in the Brief are waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015);
3 WO 2006/100042 A2 (pub. Sept. 28, 2006) (per its English equivalent US
2009/0088483 Al (pub. Apr. 2, 2009), which is cited herein) ("Anker").
4 EP O 385 801 Al (pub. May 9, 1990) ("Bryan").
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Application 12/243,028
see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) ("Any bases for asserting error, whether factual or legal, that
are not raised in the principal brief are waived.").
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prim a f acie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"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 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "[T]he analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ." Id. at
418. "What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under§ 103." Id. at 419.
The Examiner determined the rejected claims would have been
obvious over the Anker-Bryan prior art combination. Final Action 3-9 and
Answer 2-5 (collectively citing Anker ,r,r 14--22, 29, 32, 33, 34, 54, claims
10, 17-21; citing Bryan 2-3). We discern no error in the Examiner's
determinations and we adopt the Examiner's findings of fact as set forth in
the Final Office Action and Answer. See Final Action 3-9; Answer 2-5.
We address Appellant's arguments below.
Appellant argues the Specification at Tables 5-7 provides evidence of
unexpected results of synergy in the claimed invention compared to the prior
art. Br. 7. Appellant argues these Tables show results that were unexpected
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Application 12/243,028
and "significantly better than would be anticipated," but Appellant does not
provide evidence to support these contentions. See id.
This argument is not persuasive. There is an almost total overlap
between the prior art disclosed ratio range of glutaraldehyde to 4,4-
dimethloxazolidine and the claimed range (but for a claimed ratio of 6: 1 ).
See Anker ,r,r 17-21, 29, 32.
A prima facie case of obviousness typically exists when the
ranges of a claimed composition overlap the ranges disclosed in
the prior art. . . . 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. In fact, when . . . the claimed ranges are
completely encompassed by the prior art, the conclusion is even
more compelling than in cases of mere overlap. 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). Thus, the claimed
ratios of components used in the claimed method would have been prima
facie obvious over Anker and Bryan.
Although Appellant argues unexpected results are disclosed in the
Specification and provide evidence of non-obviousness, there is no evidence
in the Specification that the non-overlapping ratio portion claimed, i.e., 6: 1
glutaraldehyde-to-4,4-dimethyloxazolidine, provides any advantages over or
different results relative to the overlapping ratios. Spec. 8-12 (Examples 1-
3 and Tables 1, 2, 5, 7). Further, "[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 that the difference
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Application 12/243,028
would not have been expected by one of ordinary skill in the art at the time
of the invention." Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., 752
F.3d 967, 977 (Fed. Cir. 2014). "[B]y definition, any superior property must
be unexpected to be considered as evidence of non-obviousness. . . . Thus,
in order to properly evaluate whether a superior property was unexpected,
the [fact-finder] should have considered what properties were expected."
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007). And, even
were it persuasively established, "[ s ]ynergism, in and of itself, is not
conclusive of unobviousness in that synergism might be expected." In re
Kollman, 595 F.2d 48, 55 n.6 (CCPA 1979).
Here, there is no persuasive evidence as to what the skilled artisan
would have expected upon combining glutaraldehyde and 4,4-
dimethyloxazolidine, as suggested in the prior art, in the ratios disclosed in
the prior art, for controlling microorganisms in oil field water. Based on
Anker, we conclude that a skilled artisan would have expected such a
composition would provide a stable and effective biocide. There is also no
persuasive evidence comparing the claimed invention to the closest prior art.
Synergy alone, whether or not it is indeed found in the claimed invention, is
not conclusive of non-obviousness.
Appellant also argues that the claimed compounds are not synergistic
for all microorganisms, but are particularly effective against Pseudomonas
aeruginosa. Br. 7-8. Appellant argues "there would be no motivation to
combine Anker with any [other] reference to arrive at the claimed
synergistic range." Id. at 8.
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Application 12/243,028
This argument is not persuasive. We first note that treating
Pseudomonas aeruginosa, specifically, is not a claim element; neither is
treating this microorganism to the exclusion of others. In any event, this
microorganism is disclosed in the prior art as being controllable using a
biocide containing glutaraldehyde, similar to that claimed. See Bryan 2. As
disclosed by Bryan, the glutaraldehyde taught by Anker to be included in a
biocide composition with, e.g., 4,4-dimethyloxazolidine, is useful for
treating oil field produced water, which provides reason to combine the
references and use Anker's compositions for such a purpose. In any event,
Anker discloses the claimed synergistic range on its own, as discussed
above.
For the reasons above we affirm the obviousness rejection.
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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