Michael J. Unhoch et al.

Patent Trials and Appeals Board

Aug 16, 2019

13860685 - (D) (P.T.A.B. Aug. 16, 2019)

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.
13/860,685 04/11/2013 Michael J. UNHOCH WATE-039/02US
35211/1562
9321
21710 7590 08/16/2019
BROWN RUDNICK LLP
ONE FINANCIAL CENTER
BOSTON, MA 02111
EXAMINER
WORSHAM, JESSICA N
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
08/16/2019 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):
ip@brownrudnick.com
usactions@brownrudnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL J. UNHOCH and PATRICIA BROWN
____________

Appeal 2019-002861
Application 13/860,685
Technology Center 1600
____________

Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and
MICHAEL A. VALEK, Administrative Patent Judges.

VALEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants submit this appeal1 under 35 U.S.C. § 134 involving
claims to a composition for treating recirculating or stagnant water, which
have been rejected as anticipated and obvious. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The Specification states that polyhexamethylene biguanide (PHMB)
“is a known fast-acting and broad spectrum antimicrobial compound . . .

1 Appellants identify the real party in interest as Arch Chemicals, Inc. App.
Br. 1. Herein we refer to the Final Office Action mailed June 22, 2016
(“Final Act.”), Appeal Brief filed November 30, 2016 (“App. Br.”), and
Examiner’s Answer mailed June 12, 2018 (“Ans.”).
Appeal 2019-002861
Application 13/860,685

2
[f]or pool and spa applications.” Spec. 1, ll. 16–30. The Specification
further explains that the “most effective algae preventative treatment is
copper sulfate and/or chelated copper products,” but “PHMB reacts with
copper to form an insoluble colored precipitate.” Id. at 2, ll. 2–4. Thus,
according to the Specification, there is a need for a “composition of long-
lasting algae preventative and PHMB that does not form precipitates.” Id. at
2, ll. 6–7. Appellants purport to address this need by having, in their words,
“unexpectedly discovered that PHMB and zinc salts do not form insoluble
precipitates and have been shown to be compatible in a formulation . . .
without any impact on the zinc ions ability to prevent algae growth and the
PHMB’s ability to control bacteria.” Id. at 2, ll. 15–18.
Claims 1, 6, and 11–26 are on appeal and can be found in the Claims
Appendix of the Appeal Brief. Claim 1 is representative of the claims on
appeal. Claim 1 reads as follows:
1. A liquid composition for treating recirculating or stagnant
water, comprising:
polyhexamethylene biguanide (PHMB) in an amount
from 1 to 40 percent based on the total weight of the liquid
composition; and
one or more water-soluble zinc salts providing a source
of zinc ions for the recirculating or stagnant water in an amount
up to 10 percent based on the total weight of the liquid
composition;
wherein the zinc ions have algaestatic activity and do not
precipitate with the PHMB in the liquid composition thereby
avoiding inhibition of the algaestatic activity of the zinc ions.
App. Br. 11.
Appeal 2019-002861
Application 13/860,685

3
Appellants seek review of the following obviousness rejections:
I. Claims 1, 11–13, 16–18, 20–22, 25, and 26 under 35 U.S.C. § 102 as
anticipated by, or in the alternative under 35 U.S.C. § 103 as
unpatentable over, Unhoch ’353.2
II. Claims 1, 6, and 11–26 under 35 U.S.C. § 103 as unpatentable over
over Unhoch ’353 and Mullins.3
III. Claims 1, 11–13, 16–18, 20–22, 25, and 26 under 35 U.S.C. § 103 as
unpatentable over Unhoch ’453, 4 Unhoch ’353, and Unhoch ’208.5
IV. Claims 6, 14, 15, 19, 23, and 24 under 35 U.S.C. § 103 as
unpatentable over Unhoch ’453, Unhoch ’353, Unhoch ’208, and
Mullins.
Appellants do not argue any claim separately from independent claim
1. Accordingly, claims 6 and 11–26 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
Findings of Fact
FF1. Unhoch ’353 teaches “[m]ixtures of water treatment chemicals” that
include a sanitizer and an algicide. Unhoch ’353 col. 4, ll. 6–30. According
to Unhoch ’353, the sanitizer is preferably “(poly(hexamethylene biguanide)
hydrochloride),” i.e., PHMB. Id. at col. 3, ll. 31–33, 44–46. Unhoch ’353
further teaches that “zinc salts such as zinc chloride and zinc oxide” may be

2 Michael J. Unhoch., US 7,094,353 B2, issued Aug. 22, 2006 (“Unhoch
’353”).
3 Richard M. Mullins et al., US 2008/0258104 A1, published Oct. 23, 2008
(“Mullins”).
4 Michael J. Unhoch et al., US 2008/0142453 A1, published June 19, 2008
(“Unhoch ’453”).
5 Michael J. Unhoch et al., US 2008/0274208 A1, published Nov. 6, 2008
(“Unhoch ’208”).
Appeal 2019-002861
Application 13/860,685

4
used as an algicide in such mixtures. Id. at col. 3, ll. 55–65. In a preferred
embodiment, Unhoch ’353 describes a “maintenance dose of sanitizer . . . in
the form of a 20 wt. % aqueous solution” and algicide “in the form of a 10
wt. % aqueous solution.” Id. at col. 6, ll. 21–25.
FF2. Mullins teaches the use of zinc salts as algicides in water treatment
compositions. Mullins ¶ 17, Abst. According to Mullins, “zinc salts, and in
particular zinc sulfate, offer advantages over current algae preventatives in
that they do not stain plaster surfaces with a greenish blue color or turn
blonde hair green.” Id. ¶ 17. Mullins provides a list of “[e]xamples of
particularly preferred water soluble zinc salts” that includes “zinc sulfate
monohydrate (ZnSO4.H2O), zinc sulfate hepahydrate (ZnSO4.7H2O), zinc
carbonate (ZnCO3), zinc nitrate (Zn(NO3)2), zinc borate, zinc hydroxide, zinc
phosphate, as well as combinations of these.” Id. ¶ 25. Mullins teaches that
amount of zinc salt is “most preferably from about 1.0 to about 13 wt %, all
based on the total weight of the composition.” Id.
Analysis
I. Anticipation
The issue for this rejection is: Does the preponderance of evidence of
record support Examiner’s finding that Unhoch ’353 anticipates claims 1,
11–13, 16–18, 20–22, 25, and 26?
Examiner finds that Unhoch ’353 discloses water treatment
compositions comprising a mixture of a sanitizer and an algicide with each
group “defined by a limited number of compounds” that includes PHMB as
a sanitizer and zinc salt as an algicide. See Ans. 3; Final Act. 3. Examiner
further determines that Unhoch ’353 discloses specific examples of the
combination of PHMB with another algicide (dimethyl benzyl ammonium
Appeal 2019-002861
Application 13/860,685

5
chloride). Id. “Thus,” according to Examiner, “Unhoch [’353] is
specifically directed to the combination of polyhexamethylene biguanide
and an algaecide, wherein the algaecide can be a zinc salt (i.e., the
composition as arranged in the claim), as opposed to picking and choosing
from an extensive list.” Ans. 4. Finally, Examiner determines that Unhoch
’353 discloses weight percentages that overlap with the claimed ranges and
therefore Unhoch ’353 describes compositions that are “identical or
substantially identically in structure or composition” to Appellants’ claims.
Id. at 5. Accordingly, Examiner finds that Unhoch ’353 inherently discloses
the “algaestatic activity” and “do not precipitate” properties in the wherein
clause of claim 1 (collectively “the ‘do not precipitate’ limitation”). See
Ans. 4–5.
Appellants argue that Unhoch ’353 does not anticipate because there
is no “specific example where PHMB and a zinc salt are combined.” App.
Br. 3. According to Appellants, Examiner erred by “picking and choosing
claim elements” from disparate lists in Unhoch ’353 and that the reference
does not disclose those elements “arranged in the same way as in the claim.”
See id. at 4–5. Appellants contend the combination of PHMB and a zinc salt
is a “mere possibility” in Unhoch ’353 and therefore that reference does not
anticipate claim 1. See id. at 5–7.
Based on the record before us, we determine that the preponderance of
the evidence supports Examiner’s anticipation rejection of claims 1, 11–13,
16–18, 20–22, 25, and 26. We agree with, and adopt, Examiner’s findings
and reasoning in support of that rejection. We are not persuaded by
Appellants’ arguments, which we address below.
Appeal 2019-002861
Application 13/860,685

6
We are unpersuaded by Appellants’ argument that the anticipation
rejection is premised on picking and choosing of unrelated elements in
Unhoch ’353. See App. Br. 3–7. As Examiner found, Unhoch ’353
discloses “mixtures” of a sanitizer and algicide in the claimed amounts and
describes PHMB as a sanitizer and zinc salt as an algicide for use in such
mixtures. FF1. Thus, Unhoch ’353 describes PHMB and zinc salt,
“arranged or combined in the same way as recited in the claim,” i.e., in a
mixture and within the claimed weight percentage ranges. See Therasense,
Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010)
(quoting Net MoneyIN, Inc. v. VeriSign, Inc., 545 F. 3d 1359, 1371 (Fed.
Cir. 2008)). In this regard, Unhoch ’353 is different from the prior art in
those cases on which Appellants rely in their brief. See App. Br. 4–5. For
example, in Net MoneyIN the prior art reference taught “two separate
protocols,” neither of which alone disclosed all of the claimed requirements.
545 F.3d at 1371. Our reviewing court explained there was no anticipation
because it was not enough that the “distinct teachings” in these separate
protocols might “somehow [be] combine[d] to achieve the claimed
invention.” Id. (citing In re Arkley, 455 F.2d 586, 587 (CCPA 1972).6 In
contrast, Unhoch ’353 does not disclose PHMB and zinc salt as separate,
distinct teachings. Rather, the passages listing sanitizers and algicides are
directly releated by Unhoch ’353’s teaching of “mixtures” of pool chemicals
and the examples showing the use of PHMB in combination with an

6 Appellants also rely on the Therasense case. But the Federal Circuit in that
case affirmed that the claims were obvious over the reference at issue and
therefore did not reach the merits of the “alternative legal theory of
anticipation.” Therasense, 593 F.3d at 1336.
Appeal 2019-002861
Application 13/860,685

7
algicide. See FF1; Purdue Pharma L.P. v. Epic Pharma, LLC, 811 F.3d
1345, 1358–59 (Fed. Cir. 2016) (affirming anticipation judgment even
though the claim elements were disclosed in “distinct section[s] of the
reference” because the reference made clear those disclosures were “directly
related” to each other).
Nor is this a case where “the prior art reference merely discloses a
genus and the claim at issue recites a species of that genus.” See Wm.
Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361 (Fed.
Cir. 2012). Unhoch ’353 discloses PHMB and zinc salt amongst a handful
of other options for a sanitizer and algicide respectively. PHMB is the only
example of a non-oxidizing biocide sanitizer disclosed in Unhoch ’353 and
the only sanitizer described as “preferabl[e].” Unhoch ’353 col. 3, ll. 31–47.
“[Z]inc salts” are taught as one of seven discrete categories of algicides. Id.
at col. 3, ll. 55–66.” Accordingly, the record supports a determination that
the “number of categories and components” was not so large that the
combination of PHMB and zinc salt “would not be immediately apparent to
one of ordinary skill in the art.” See Wm. Wrigley Jr., 683 F.3d at 1361.
We are likewise unpersuaded by Appellants’ argument that Examiner
has failed to demonstrate that the “do not precipitate” limitation is inherently
disclosed in Unhoch ’353. Unhoch ’353 discloses a composition comprising
a mixture of 20% wt. PHMB and 10% wt. zinc salt. See FF1. That structure
is substantially the same as that recited Appellants’ claim 1. “Where, as
here, the claimed and prior art products are identical or substantially
identical . . . the PTO can [as Examiner did here] require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.” In re Best, 562 F.2d 1252, 1255
Appeal 2019-002861
Application 13/860,685

8
(CCPA 1977); see also Final Act. 4. Appellants have not provided any
evidence to demonstrate that the mixture disclosed in Unhoch ’353 does not
exhibit the properties recited in the “do not precipitate” limitation.
Accordingly, Examiner’s inherency determination is adequately supported
by the record.
For these reasons, we affirm Examiner’s rejection of claims 1, 11–13,
16–18, 20–22, 25, and 26 as anticipated by Unhoch ’353.
II.–IV. Obviousness
The issue for this rejection is: Does the preponderance of evidence of
record support Examiner’s finding that claims 1, 6, and 11–26 are obvious
over the cited prior art?
Appellants present the same arguments for all of Examiner’s
obviousness rejections and do not address the claims separately.
Accordingly, claims 6 and 11–26 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv). We focus our analysis on the obviousness rejection of
claims 1, 11–13, 16–18, 20–22, 25, and 26 over Unhoch ’353, and all of the
remaining claims as obvious over the combination of Unhoch ’353 and
Mullins.
Examiner’s obviousness rejections are largely premised on the same
findings supporting the anticipation rejection. See Final Act. 3–6. We agree
with and affirm for the reasons stated above (see supra § I). In addition, we
agree with Examiner’s finding that Mullins teaches water treatment
compositions comprising the particular zinc salts recited in claims 6, 14, 15,
19, 23, and 25. Id.; FF2. Examiner determines a skilled artisan would be
motivated to use these particular zinc salts in Unhoch ’353’s composition
because Mullins teaches those salts are particularly preferred, “provide the
Appeal 2019-002861
Application 13/860,685

9
added benefit of prevention of plaster stains,” and avoid “changing hair
color” of swimmers. See Final Act. 6.
Appellants do not dispute Examiner’s finding that it would be obvious
to combine Mullins and Unhoch ’353. Instead, Appellants repeat their
argument that Examiner has not met the burden to demonstrate that the “do
not precipitate” limitation is inherent in the prior art teachings, adding that
“the standard for inherency is even more stringent in the context of
obviousness.” App. Br. 7–8. In addition, Appellants rely on the March 26,
2015 declaration of one of the inventors, Michael Unhoch, (“the Unhoch
Declaration”). They urge that the Unhoch Declaration “provides evidence of
non-obviousness” by “attesting to the surprising criticality of zinc salts not
reacting with PHMB as compared to other metal salts, such as iron and
copper salts.” Id. at 9–10.
As with the anticipation rejection, we are not persuaded by
Appellants’ arguments concerning Examiner’s obviousness rejections. We
agree with Examiner’s factual findings and conclusions, and incorporate
them by reference here. We provide the following additional comments to
Appellants’ arguments.
We are not persuaded by Appellants’ argument that Examiner has
failed to make a prima facie showing of inherency. It is well-settled that
“structural similarity . . . proved by combining references or otherwise,
where the prior art gives reason or motivation to make the claimed
compositions, creates a prima facie case of obviousness and that the burden
(and opportunity) then falls on an applicant to rebut that prima facie case.”
In re Dillon, 919 F.2d 688, 692–93 (Fed. Cir. 1990) (en banc). As explained
above, Unhoch ’353 discloses a composition with the structure recited in
Appeal 2019-002861
Application 13/860,685

10
claim 1. The use of the particular zinc salts taught in Mullins as the zinc salt
in the PHMB mixture taught in Unhoch ’353, makes the structural similarity
between the prior art composition and Appellants’ claims even more
pronounced. That similarity is sufficient to support a prima facie case of
obviousness here. See id.
We further determine that the evidence in the Unhoch Declaration is
insufficient to overcome the prima facie showing of obviousness. As an
initial matter, the only data cited in the Unhoch Declaration are “stability
studies” for a formulation comprising 20% wt PHMB with 5% wt zinc
sulfate and a formulation 20% wt PHMB with 2.5% wt zinc sulfate. Unhoch
Decl. ¶ 10 (citing US 2013/0217575 A1 ¶¶ 27–28). There is no comparison
of these formulations to the prior art formulations (e.g., ones comprising the
combination of PHMB and a copper or iron salt) that Appellants contend the
claimed invention provides unexpected benefit over. See Galderma Labs.,
L.P. v. Tolmar, Inc., 737 F.3d 731, 739 (Fed. Cir. 2013) (“Unexpected
results that are probative of nonobviousness are those that are different in
kind and not merely in degree from the results of the prior art.”) (internal
quotations omitted). In addition, the studies Mr. Unhoch relies upon are not
commensurate with the broader scope of claim 1, which is directed to “zinc
salts” generally and encompasses formulations with higher concentrations of
both zinc salt and PHMB. For these reasons, we agree with Examiner that
Appellants’ objective indicia evidence is relatively weak. See Ans. 7. When
considered in context of the record as a whole, Appellants’ evidence does
not overcome Examiner’s strong prima facie showing. See Bayer
Healthcare Pharm., Inc. v. Watson Pharm., Inc., 713 F.3d 1369, 1377 (Fed.
Cir. 2013) (finding that secondary indicia evidence did not “overcome[] the
Appeal 2019-002861
Application 13/860,685

11
plain disclosures and express motivation to combine those disclosures in the
prior art”).
For all these reasons, Appellants’ arguments fail to persuade us that
Examiner erred in rejecting Appellants’ claims 1, 11–13, 16–18, 20–22, 25,
and 26 as obvious over Unhoch ’353 and claims 1, 6, and 11–26 as obvious
over Unhoch ’353 and Mullins. Because Examiner’s other two obviousness
rejections include at least the same references for the rejection of the same
claims, we affirm those rejections for the same reasons.

SUMMARY
We affirm the rejection of claims 1, 11–13, 16–18, 20–22, 25, and 26
under 35 U.S.C. § 102 as anticipated by, or in the alternative under 35
U.S.C. § 103 as unpatentable over, Unhoch ’353.
We affirm the rejection of claims 1, 6, and 11–26 under 35 U.S.C.
§ 103 as unpatentable over Unhoch ’353 and Mullins.
We affirm the rejection of claims 1, 11–13, 16–18, 20–22, 25, and 26
under 35 U.S.C. § 103 as unpatentable over Unhoch ’453, Unhoch ’353, and
Unhoch ’208.
We affirm the rejection of claims 6, 14, 15, 19, 23, and 24 under 35
U.S.C. § 103 as unpatentable over Unhoch ’453, Unhoch ’353, Unhoch
’208, and Mullins.

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).

Appeal 2019-002861
Application 13/860,685

12
AFFIRMED