Patrick O. Tennican

Patent Trials and Appeals Board

Jul 8, 2020

13688078 - (D) (P.T.A.B. Jul. 8, 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.
13/688,078 11/28/2012 Patrick O. Tennican H014-0007US2 2393
29150 7590 07/08/2020
LEE & HAYES, P.C.
601 W. RIVERSIDE AVENUE
SUITE 1400
SPOKANE, WA 99201
EXAMINER
VU, JAKE MINH
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
07/08/2020 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):
lhpto@leehayes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte PATRICK O. TENNICAN1
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Appeal 2019-000029
Application 13/688,078
Technology Center 1600
________________

Before JOHN G. NEW, ELIZABETH A. LAVIER, and MICHAEL A.
VALEK, Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

1 We use the term “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.142. Appellant identifies Hyprotek, Inc. as the real party-in-
interest. App. Br. 3.
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Application 13/688,078

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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 14–16 and 18–21 as unpatentable
under 35 U.S.C. § 103 as being obvious over the combination of Tennican
(US 2007/0282280 A1, December 6, 2007) (“Tennican”) and Toreki et al.
(US 2011/0171280 A1, July 14, 2011) (“Torecki”)2.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

NATURE OF THE CLAIMED INVENTION
Appellant’s claimed invention is directed to antimicrobial
compositions that may be used in combination with IV port cleansing caps,
protective caps, or nasal decolonizer devices. Abstr.

REPRESENTATIVE CLAIM
Claim 14 is representative of the claims on appeal and recites:
14. A method of giving a visual indication of one or more
contaminants on a surface comprising:

determining the surface to be decontaminated; and

testing the surface for contamination, the testing
including:

2 Claims 14–16 and 18–21 were also provisionally rejected as unpatentable
under the nonstatutory doctrine of obviousness-type double patenting over
copending US Appl. Nos. 13/924,410, 13/934,135, 12/87 4,188, and
13/554,962. Final Act. 4. The Examiner has withdrawn this rejection.
Ans. 7.
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applying an antimicrobial agent to the surface, wherein the
antimicrobial agent comprises water, an alcohol, a peroxide or
peroxide-generating agent, a chelating agent, and a colorant; and

receiving the visual indication that that the antimicrobial
agent has come in contact with the one or more contaminants on
the surface, the visual indication resulting from the contact and
including at least an appearance of a color.

App. Br. 12.

ISSUES AND ANALYSES
We decline to adopt the Examiner’s findings, reasoning, and
conclusion that the claims on appeal are prima facie obvious over the
combined cited prior art. We address the arguments raised by Appellant
below.

Issue

Appellant argues that the Examiner erred in finding that the combined
references teach or suggest the limitation of claim 14 reciting: “receiving [a]
visual indication that that the antimicrobial agent has come in contact with
the one or more contaminants on the surface, the visual indication resulting
from the contact and including at least an appearance of a color.” App. Br.
8.

Analysis
The Examiner finds that Tennican teaches a method of cleaning an
intravenous line port of microorganisms introduced from contaminated
equipment. Non-Final Act. 5 (citing Tennican ¶¶ 3–4). The Examiner finds
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that Tennican teaches applying an antibacterial agent to external surfaces of
the intravascular port, and that the agent comprises about 30% ethanol,
hydrogen peroxide (H2O2) and ethylenediaminetetraacetic acid (“EDTA”),
which correspond to the water, an alcohol, a peroxide or peroxide-generating
agent, and chelating agent recited in claim 14. Id. (citing Tennican ¶¶ 43,
50, 54)
The Examiner reasons that a person of ordinary skill in the art would
naturally look at the surface where they are applying and cleaning, and be
able to observe any bubbling on the surface that would necessarily occur as
the aqueous antimicrobial agent comprising H2O2 would interact with any
methicillin-resistant Staphylococcus aureus (“MRSA”) contamination. Non-
Final Act. 5–6. The Examiner therefore finds that Tennican inherently
teaches receiving an indication that the antimicrobial agent has come in
contact with a contaminant on a surface. Id. at 6.
The Examiner acknowledges that Tennican does not teach using a
colorant in the antimicrobial agent. Non-Final Act. 6. However, the
Examiner finds that Toreki teaches that adding colorants and dyes to
antimicrobial formations, including peroxide solutions, was known in the
prior art. Non-Final Act. 6 (citing Toreki Abstr., ¶ 37).
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to incorporate a colorant into Tennican’s
antimicrobial peroxide solution. Non-Final Act. 6. The Examiner finds that
a skilled artisan would have been motivated to make such a modification
because it would permit the user to see the antimicrobial solution,
analogizing the situation to that of the visible blue color of glass window
cleaners such as Windex. Id. The Examiner further concludes that a person
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of ordinary skill in the art would have had a reasonable expectation of
success in combining the references, because Toreki teaches that colorants
and dyes had been previously used with peroxide solutions. Id.
Additionally, the Examiner finds that although the references do not
expressly teach the limitations of claim 14 reciting “resulting from the
contact and including at least an appearance of a color,” it is not evident that
the claim limitations recite any manipulative difference in the steps of the
claimed method when compared to the teachings of the prior art. Final Act.
5 (citing, e.g., In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)
(holding that: “It is a general rule that merely discovering and claiming a
new benefit of an old process cannot render the process again patentable”)).
The Examiner asserts that it is reasonable to conclude that the same surface,
treated with the same aqueous antimicrobial agent with a colorant via the
same method of application in the same amounts, as taught by the prior art
references and claimed by Appellant would have the same results. Id. The
Examiner finds that the fact that Appellant may have discovered yet another
beneficial effect from the method taught by the combined prior art does not
render the claims patent eligible. Id.
Appellant argues that Toreki, upon which the Examiner relies, teaches
colored antimicrobial solutions, but that the color is a dye in the textile that
is already visible regardless of whether the textile comes in contact with a
contaminant. App. Br. 8. Appellant takes issue with the Examiner’s finding
that asserts that the colorant feature in claim 14 would be no different than
spraying Windex on a surface and noticing that the Windex is blue. Id.
(citing Final Act. 4–5). Appellant contends that the Examiner has failed to
establish a prima facie case of obviousness the claimed “appearance of a
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color” because the Windex solution is already dyed blue in the bottle before
application. Id. According to Appellant, whether or not there is a
contaminant on a surface on which Windex is sprayed, the solution will be
colored blue regardless, and the color is therefore not a “result” of the
Windex, or the dye in Toreki, “com[ing] into contact with ... contaminants”
causing the Windex or antimicrobial agent of Toreki to “appear” colored.
Id. at 8–9.
We are not persuaded by the Examiner’s reasoning. Toreki teaches
that: “It is an aspect of this invention that additives, such as UV inhibitors,
processing aids, softeners, antistatic agents, colorants, dyes, indicators,
drugs, oils, lubricants, microspheres, temporary visual indicators …, and the
like may be incorporated into the antimicrobial treatment formulation.”
Toreki ¶ 37 (emphasis added); see also ¶ 95, claim 32. Although the
disclosure of “colorants,” “indicators,” and “temporary visual indicators” as
additives in these passages may appear, in hindsight, to indirectly infer a
“colorant” that provides a “visual indication that that the antimicrobial agent
has come in contact with the one or more contaminants on the surface,” we
can find no teaching or suggestion in either of the references that would have
either taught or directly suggested, to a skilled artisan, an indicator that
provides at least a colorimetric response to contact of the composition with a
contaminant.
Nor, for the same reason, are we persuaded by the Examiner’s
conclusion that the limitation reciting a “colorant” that provides a “visual
indication that that the antimicrobial agent has come in contact with the one
or more contaminants on the surface” is somehow inherent in the teachings
of Toreki. Again, Toreki provides no teaching that the additive “colorants,”
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“indicators” or “temporary visual indicators” disclosed therein are
colorimetric indicators of the presence of contaminants. In the absence of
any such teaching, we cannot reasonably conclude that the additives taught
by Toreki necessarily include that requirement. See Par Pharm., Inc. v. Twi
Pharms., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014) (holding that, to
establish inherency, “the limitation at issue necessarily must be present, or
the natural result of the combination of elements explicitly disclosed by the
prior art”).
Absent any teaching or suggestion that the claimed “colorant” that
provides a “visual indication that that the antimicrobial agent has come in
contact with the one or more contaminants on the surface” is contemplated
by the teachings and suggestions of either Tennican or Toreki, we reverse
the Examiner’s rejection of claim 14.
Because we find this argument to be dispositive of the rejection of
claim 14, we do not reach Appellant’s additional arguments. Furthermore,
because Appellant argues that the remaining claims on appeal stand or fall
with claim 14 (see App. Br. 10) and the Examiner’s rejection of those claims
is premised on the same reasoning that we have determined to be
unpersuasive; we likewise reverse the Examiner’s rejection of those claims.

CONCLUSION
The Examiner’s rejection of claims 14–16 and 18–21 under 35 U.S.C.
§ 103 is reversed.

REVERSED

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Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
14–16, 18–
21
103 Tennican,
Toreki

14–16,
18–21