King, Joseph A. et al.

Patent Trials and Appeals Board

Feb 20, 2020

12592700 - (D) (P.T.A.B. Feb. 20, 2020)

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.
12/592,700 12/01/2009 Joseph A. King 6456 9694
7590 02/20/2020
Carl L. Johnson
Jacobson and Johnson
Suite 285
One West Water Street
St. Paul, MN 55107
EXAMINER
BROWE, DAVID
ART UNIT PAPER NUMBER
1617
MAIL DATE DELIVERY MODE
02/20/2020 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 parte JOSEPH A. KING and JOHN HILL
____________

Appeal 2019-005409
Application 12/592,700
Technology Center 1600
____________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
ELIZABETH A. LAVIER, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant0F1 appeals from Examiner’s
decision to reject claims 1 and 2 (see Appeal Br. 2).1F2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Joseph A.
King and John Hill” (Appellant’s December 28, 2018 Appeal Brief (Appeal
Br.) 2).
2 Pending claims 7–20 stand withdrawn from consideration (see Appeal Br.
2).
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STATEMENT OF THE CASE
Appellant’s disclosure “relates generally to antimicrobial agents and,
more specifically to antimicrobial agents [containing] a source of biocidal
metal ions and a compound [containing] a hydantoin ring with the
antimicrobial agent in either an active or an inactive state” (Spec.2F3 2).
Appellant’s claim 1 is representative and reproduced below:
1. A liquid activated antimicrobial agent for use in killing
microorganisms consisting of:
a single type of microorganism killing material consisting
of a source of biocidal silver ions, said source of biocidal silver
ions in a dry state in either powder, pellet or granular form, said
source of biocidal silver ions providing a microorganisms
killing concentration of available biocidal-silver ions in a body
of water;
a compound containing a hydantoin ring and lacking
antimicrobial properties, said compound containing said
hydantoin ring in a dry state in either powder, pellet or granular
form, said compound containing said hydantoin ring providing
a concentration of between 5 and 25 ppm of 5, 5-
dimethylhydantoin (DMH) in a body of water, said compound
containing said hydantoin ring interacting with the source of
biocidal silver ions in the body of water to generate a higher
concentration of available biocidal silver ions in the body of
water compared to a concentration of available biocidal silver
ions generated by the source of biocidal silver ions alone in the
body of water with said increasing higher concentration of
available biocidal silver ions exceeding 46 ppb after three
week;
a carrier having an exterior surface and lacking
antimicrobial properties; and
a water penetrable matrix on the exterior surface of said
carrier wherein the microorganism killing material consisting of

3 Appellant’s December 1, 2009 Specification.
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the source of biocidal silver ions and the compound containing
the hydantoin ring are dispersed within said water penetrable
matrix in an un-complexed state.
(Appeal Br. 12–13.)3F4

Grounds of rejection before this Panel for review:
Claims 1–2 stand rejected under 35 U.S.C. § 112(b).
Claims 1–2 stand rejected under 35 U.S.C. § 103 as unpatentable over
the combination of King4F5 and Vange.5F6
Claims 1–2 stand rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over the claims of
Hill.6F7

Definiteness:
ISSUE
Does the preponderance of evidence support Examiner’s conclusion
that the phrase “a single type of microorganism killing material,” as set forth
in Appellant’s claims, is indefinite?
ANALYSIS
Examiner finds that Appellant’s claim 1 recites “the limitation ‘a
single type of microorganism killing material’” (Final Act.7F8 6). Examiner
further finds that Appellant’s “original specification and claims do not

4 The only other claim on Appeal, Appellant’s claim 2, depends from
Appellant’s claim 1.
5 King, US 6,217,892 B1, issued Apr. 17, 2001.
6 Vange et al., US 2003/0186955 A1, published Oct. 2, 2003.
7 Hill et al., US 8,846,108 B2, issued Sept. 30, 2014.
8 Examiner’s August 27, 2018 Final Office Action.
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define what is meant by ‘a single-type’ with respect to the antimicrobial
killing material” and “the phrase ‘single type’ appears nowhere at all in the
original specification and claims” (id.). Examiner does, however, find that
Appellant’s Specification discloses “the use of biocidal metals, and makes
reference to various types of transition metals, but also provides that ‘other
alternative bactericides whose solubility can be changed in the presence of a
compound containing a hydantoin ring can also be used in the present
invention’” (id. (citing Spec. 61–63)). Thus, Examiner concludes that
“multiple, unspecified types of microorganism killing materials are possible,
and one of ordinary skill in the art cannot definitively ascertain the metes
and bounds of ‘a single type’ of microorganism killing material” (id. at 6–7).
We are not persuaded.
Appellant’s claim 1 expressly defines the “single type of
microorganism killing material” as “consisting of a source of biocidal silver
ions, said source of biocidal silver ions in a dry state in either powder, pellet
or granular form, said source of biocidal silver ions providing a
microorganisms killing concentration of available biocidal-silver ions in a
body of water” (Appeal Br. 12). Because Appellant’s claim 1 defines the
phrase “a single type of microorganism killing material,” we disagree with
Examiner’s conclusion that the phrase is indefinite.
CONCLUSION
The preponderance of evidence fails to support Examiner’s conclusion
that the phrase “a single type of microorganism killing material,” as set forth
in Appellant’s claims, is indefinite. The rejection of claims 1–2 under 35
U.S.C. § 112(b) is reversed.

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Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. King discloses and claims:
A regenerative water treatment method for treating a water
supply having bacteria therein, the method comprising;
providing a carrier with a water-porous, gelatin matrix coating on
the carrier, said gelatin matrix adhesively securing a bacteria
killing material to the carrier, the bacteria killing material
comprising silver chloride; and
contacting a selected portion of the water supply having bacteria
therein with the silver chloride containing, water-porous,
gelatin matrix coated carrier to generate silver ions, thereby
killing bacteria in the contacted selected portion of water.
(King 4:33–44; see Final Act. 8 (Examiner finds that “King discloses a
‘liquid activated’ antimicrobial agent comprising a water-penetrable matrix
on the exterior surface of a carrier, wherein the water-penetrable matrix
comprises silver chloride”); King 1:13–16 (King discloses that “silver ions
are effective in killing bacteria”).)
FF 2. King discloses:
Silver chloride is a white powder that can be melted or cast like
a metal, and is derived from heating a silver nitrate solution and
adding hydrochloric acid or salt solution to . . . produce a silver
chloride solution which is then boiled or filtered in the dark or
under a ruby red light to produce the silver chloride powder. In
the present process the silver chloride while still in solution is

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combined with an adhesive to form an adhesive silver chloride
solution.
(King 2: 36–44; see also Final Act. 8 (Examiner finds that King discloses
silver chloride provides a “source of biocidal silver ions in powder form in
an ‘un-complexed state’”).)
FF 3. King discloses that although “the preferred carrier for the silver
chloride comprises zinc pellets the carrier need not be zinc as long as the
carrier is compatible with the bacteria adhering material on the carrier”
(King 2:66–3:2; see Final Act. 12 (Examiner finds that “King does not
necessarily require a zinc carrier”)).
FF 4. Examiner finds that “King does not explicitly disclose that the
antimicrobial agent further comprises 5,5-dimethylhydantoin in powder,
pellet or granular form” (Final Act. 9).
FF 5. Vange:
relates in its broadest aspect to a stabilised composition having
antibacterial, antiviral and/or antifungal activity which
composition is characterized in that it comprises complexes of
silver ions and a ligand selected from the group consisting of
5,5-disubstituted hydantoins in which the substituents do not
comprise conjugated unsaturated bonds and barbituric acid and
derivatives thereof which complexes have a solubility in water
higher than 15 mg Ag/1 have been found to stabilize the silver
ions against darkening by UV light.
(Vange ¶ 16; see id. ¶ 23 (Vange discloses that 5,5-dimethyl hydantoin is
“[e]specially preferred”).)
FF 6. Vange discloses:
[A]n object of . . . [its] invention [is] to provide [a] complex
structure rendering silver ions stable against loss of the
antiseptic activity and against darkening due to reduction of the
silver ions or the formation of darkly stained sparingly or
insoluble silver compounds. Furthermore, it is an object to
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provide a complex structure rendering silver ions available
sufficiently quickly and in a sufficiently high and lasting
concentration to ensure that an effective antiseptic activity is
obtained. Still further it is an object to provide a method for
preparing such complexes without losing the antiseptic activity
of the silver ions. Further it is the objective to incorporate such
into entities in combination with hydrophilic polymers, e.g. in
hydrocolloid particles or coatings enabling a sufficient release
(Vange ¶ 8; see Final Act. 9.)
FF 7. Vange discloses that “silver complexes comprising silver and a
ligand selected from the group consisting of 5,5-disubstituted hydantoins in
which the substituents do not comprise conjugated unsaturated bonds and
barbituric acid and derivatives thereof possess very good stability” (Vange
¶ 11; see Final Act. 9).
ANALYSIS
Based on the combination of King and Vange, Examiner concludes
that, at the time Appellant’s invention was made, it would have been prima
facie obvious to combine King and Vange to produce a liquid activated
antimicrobial agent for use in killing microorganisms (see Final Act. 9; see
FF 1–7). Examiner explains,
King discloses a “liquid activated” antimicrobial agent for
water treatment comprising a water-penetrable matrix on the
exterior surface of a carrier, wherein the water-penetrable
matrix comprises silver chloride or other source of biocidal
silver ions in powder form in an “un-complexed state”, wherein
in the presence of water, silver ions are generated to thereby kill
bacteria. Since Vange . . . disclose[s] that 5,5-
dimethylhydantoin in powder form is an excellent chelating
agent for silver ions, and in a hydrophilic/aqueous environment
forms a complex with and stabilizes silver ions while retaining
the silver ion's antibacterial activity, one of ordinary skill in the
art would be motivated to further include 5,5-
dimethylhydantoin in e.g. dry powder form in the water-
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penetrable matrix of the King antimicrobial agent, with the
reasonable expectation that the resulting antimicrobial agent
“precursor”, in which both the “un-complexed” source of
biocidal silver ions and the 5,5-dimethylhydantoin are in dry,
powder form, when placed in contact with water, will be
“water-activated” to successfully generate silver ions that will
then form a stable complex with 5,5-dimethylhydantoin to
effectively kill bacteria while maintaining an effective biocidal
silver ion level in the water for a prolonged period.
(Final Act. 9–10.) Examiner, therefore, reasons that because the
combination of King and Vange suggests Appellant’s “claimed product, it
follows that the prior art product will exhibit the same functional properties
as presently disclosed in the claims, if in fact the product is placed in a body
of water” (id. at 10). Thus, absent evidence to the contrary, we are not
persuaded by Appellant’s unsupported contention that the product suggested
by the combination of King and Vange would not have been reasonably
expected to generate “a higher concentration of available biocidal silver ions
in the body of water that exceeds 46 ppb after three weeks” (see Appeal Br.
7–8).
Appellant failed to establish an evidentiary basis on this record to
support a conclusion that those of ordinary skill in this art would have
reasonably considered King’s carrier or the “gelatin matrix coating on
[King’s] . . . carrier” to exhibit antimicrobial properties (see generally FF 1).
Therefore, we are not persuaded by Appellant’s contention that the
combination of King and Vange fails to teach or suggest “a carrier having an
exterior surface and lacking antimicrobial properties as called for in
Appellant’s claims 1-2” (Appeal Br. 8; see also id. at 9).
King discloses a liquid activated antimicrobial agent comprising a
carrier with a water-porous, gelatin matrix coating on the carrier, wherein
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the gelatin matrix adhesively secures a bacteria killing material comprising
silver chloride to the carrier (FF 1). King further discloses that “silver ions
are effective in killing bacteria” (id.). Therefore, we are not persuaded by
Appellant’s contention that the combination of King and Vange fails to teach
or suggest “a microorganism killing material ‘consisting of’ a source of
biocidal silver ions” (Appeal Br. 7; see also id. at 9–10).
King’s disclosure is not limited to “the use of ‘a first bacteria killing
material such as zinc with a second bacteria killing material such as silver’”
(see, e.g., Appeal Br. 8 (emphasis omitted); cf. FF 1 and 3). Therefore, we
are not persuaded by Appellant’s contention to the contrary (see Appeal Br.
8; see also id. at 8–9).
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of King and Vange is
affirmed. Claim 2 was not separately argued and falls with claim 1.

Obviousness-type Double Patenting:
ISSUE
Should the obviousness-type double patenting rejection on this record
be summarily affirmed by the Board?
ANALYSIS
“If a ground of rejection stated by the examiner is not addressed in
appellant’s brief, that ground of rejection will be summarily sustained by the
Board.” Manual of Patent Examining Procedure § 1205.02 (Rev. 8, July
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2010). Appellant does not address the obviousness-type double patenting
rejection, therefore it is summarily affirmed.
CONCLUSION OF LAW
The rejection of claims 1–2 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over the claims of
Hill is summarily affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2 112(b) Indefiniteness 1, 2
1, 2 103 King, Vange 1, 2
1, 2 Obviousness-type
Double Patenting,
Hill
1, 2
Overall
Outcome
1, 2

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).

AFFIRMED