Ex Parte AskinDownload PDFPatent Trial and Appeal BoardSep 19, 201711487183 (P.T.A.B. Sep. 19, 2017) Copy Citation 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. 11/487,183 07/13/2006 Daniel P. Askin 634.024 5527 23598 7590 09/21/2017 BOYLE FREDRICKSON S.C. 840 North Plankinton Avenue MILWAUKEE, WI 53203 EXAMINER BUCKLEY, AUDREA ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 09/21/2017 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): docketing @boylefred.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL P. ASKIN1 Appeal 2017-001667 Application 11/487,183 Technology Center 1600 Before ULRIKE W. JENKS, JOHN G. NEW, and TIMOTHY G. MAJORS, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants state the real party-in-interest is the inventor, Daniel P. Askin. App. Br. 3. Appeal 2017-001667 Application 11/487,183 SUMMARY Appellant files this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—5, 9, 10, 12—23, 25—27, 29, 32 and 35—37 as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Watson (US 6,502,699 Bl, January 7, 2003) (“Watson”), Blackburn et al. (WO 96/39842, June 7, 1996) (“Blackburn”), and Asano et al. (US 6,136,769, October 24, 2000) (“Asano”). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. NATURE OF THE CFAIMED INVENTION Appellant’s invention is directed to a method for improving the accuracy of testing blood for the levels of contaminants, such as lead, cadmium and mercury, in individuals. Abstract. REPRESENTATIVE CLAIM Claim 1 is representative of the claims on appeal, and recites: 1. A method for preparing a stick site for collection of a blood sample to determine an amount of a metal contaminant in the blood sample, the method comprising the steps of: a) applying a metal contaminant-removing cleanser to a blood sampling site to remove the metal contaminant to be measured in the blood from the surface of the skin, and from subsurface areas of the site, including the pores, sweat ducts, hair follicles and sebaceous glands at the site, the cleanser comprising at least one surfactant, an anti-static component and at least one metal contaminant-removing agent present in an amount of between 0.1 % w/w to about 25% w/w of the cleanser; 2 Appeal 2017-001667 Application 11/487,183 b) dissipating a static charge on the metal contaminant holding the metal contaminant on the skin surface and subsurface areas; c) removing the skin cleanser along with the metal contaminant from the site while drying the site using a fabric substrate, wherein the fabric substrate in conjunction with the cleanser binds the contaminant to the fabric; and d) collecting a blood sample from the site, wherein the metal contaminant is lead. App. Br. 13. ISSUES AND ANALYSES Except where otherwise indicated, we adopt the Examiner’s findings and conclusions that certain claims are obvious over the cited prior art. We address Appellant’s arguments below. Issue Appellant argues the Examiner erred in finding that the combined cited prior art teaches or suggests the limitation of claim 1 reciting a “cleanser comprising ... an anti-static component.” App. Br. 9—10. Analysis The Examiner acknowledges that neither Watson nor Blackburn teach or suggest an anti-static agent, as recited in claim 1, however, the Examiner finds Asano cures this deficiency. Final Act. 8. The Examiner finds Asano teaches liquid detergent formulations suitable for application to the skin, 3 Appeal 2017-001667 Application 11/487,183 particularly upon addition of skin emollients. Id. Specifically, the Examiner finds Asano’s formulations include alkoylated quaternary ammonium compounds. Id. (citing Asano col. 1,11. 15—17, col. 4,11. 23^40). The Examiner finds Appellant’s Specification discloses that surfactants that efficiently provide anti-static properties “include all of the quaternary surfactants.” Final Act. 8 (citing Spec. 35,11. 16—17). The Examiner concludes that it would have been prima facie obvious to a person of ordinary skill in the art at the time the invention was made to implement the quaternary surfactants taught in the liquid detergent formulations of Asano into the cleaning formulations of Blackburn and methods of Watson. Id. The Examiner concludes that a person of ordinary skill would have been motivated to do so in order to impart the known surfactant properties (of the alkoylated quaternary ammonium surfactant) embodied in the formulations of Asano. Id. (citing Asano col. 19,1. 8). Appellant argues Asano teaches the incorporation of alkoxylated quaternary ammonium (“AQA”) surfactants into detergent compositions to improve the performance of those detergent compositions. App. Br. 10. Appellant points to Asano’s statement that: “unexpectedly, it has now been found that products containing AQA and high levels of anionic or mixed anionic/nonionic surfactants (optionally including branched surfactants) deliver superior cleaning performance versus products containing either technology alone.” Id. (quoting Asano cols. 9-10,11. 65—2). According to Appellant, although the large majority of the compositions disclosed in Asano are detergent compositions, Asano teaches: [Vjarious other cleaning compositions which comprise an anionic surfactant, an optional nonionic surfactant and specialized surfactants such as betaines; sultaines, amine oxides, 4 Appeal 2017-001667 Application 11/487,183 and the like, can also be formulated using an effective amount of the AQA surfactants in the manner of this invention. Such compositions include, but are not limited to, hand dishwashing products (especially liquids or gels), hard surface cleaners, shampoos, personal cleansing bars, and the like. Id. (quoting Asano col. 12,11. 28—36). Appellant points out that, in Asano, examples XIV and XV (a shampoo and personal cleansing bar) teach compositions for application directly to the skin of an individual. App. Br. 10. Appellant asserts that these are the only examples that disclose an AQA surfactant, one or more anionic surfactants and other ingredients specifically relevant to the function of Appellant’s claimed composition. Id. However, Appellant argues, the AQA surfactant disclosed in these compositions for application to the skin, as well as in all of the detergent compositions disclosed in Asano, is exclusively disclosed as an alternative for prior art cationic surfactants and used only in conjunction with certain anionic surfactants, without any disclosure or suggestion of the use of the AQA surfactant either by itself or as an anti-static agent. Id. at 10-11. Appellant therefore argues that a person of ordinary skill would have found no teaching or suggestion to modify the cleanser compositions taught by Watson and/or Blackburn with the AQA surfactant of Asano, other than to use the AQA surfactant from Asano as an alternative to cationic surfactants taught by Watson and/or Blackburn. App. Br. 11. Furthermore, Appellant argues, because neither Watson nor Blackburn teach cationic surfactants, there necessarily cannot be any motivation or suggestion to add the AQA surfactant of Asano to the cleansing compositions taught by Watson and Blackburn. Id. 5 Appeal 2017-001667 Application 11/487,183 The Examiner responds that the motivation to modify the references may suggest what the inventor has done, but for a different purpose or to solve a different problem. Ans. 2—3. Specifically, the Examiner reasons that it would have been prima facie obvious to one of ordinary skill in the art to add the quaternary surfactant of Asano, which additionally functions as an anti-static agent, to the cleaning formulations and methods taught by Blackburn and Watson. Id. at 3. The Examiner finds that a skilled artisan would have been motivated to combine the teachings of Asano, Watson, and Blackburn so as to impart the known surfactant properties of AQA surfactants, as taught by Asano, and that doing so would have achieved the anti-static properties recited in the claims, because a product and its properties are inseparable. Id. The Examiner finds that the fact that Appellant may recognize another advantage or property which would flow naturally from following the teachings of the prior art is insufficient to justify patentability when the differences would otherwise have been obvious. Id. The Examiner finds that Asano provides sufficient motivation and a reasonable expectation of success for adding an alkoxylated quaternary ammonium surfactant to the topically-applied compositions of Watson and Blackburn. Id. The Examiner also points to In re Lintner, in which the claimed invention was a laundry composition consisting essentially of a dispersant cationic fabric softener, sugar, sequestering phosphate, and brightener in specified proportions. App. Br. 3 (citing 458 F.2d 1013, 1014 (C.C.P.A. 1972)). In Lintner, the Examiner relates, the claims were rejected over the combination of references which taught all the claim limitations except for the presence of sugar, and an additional reference, which taught the addition 6 Appeal 2017-001667 Application 11/487,183 of sugar as a filler or weighting agent in compositions containing cationic fabric softeners. Id. (citing 458 F.2d at 1015). The Examiner states that the Appellant in Lintner argued that, in the claimed invention, the sugar was responsible for the compatibility of the cationic softener with the other detergent components. Id. at 3^4 (citing id.). However, the Examiner finds, the court sustained the rejection, stating: “The fact that appellant uses sugar for a different purpose does not alter the conclusion that its use in a prior art composition would be [sic] prima facie obvious from the purpose disclosed in the references.” Id. (quoting Linter, 458 F.2d at 1016). Appellant replies that there is no disclosure or suggestion in the prior art that the issue or problem addressed by Appellant’s claims with respect to the cause of the falsely elevated test results was subsurface skin contamination at the blood sampling site. Reply Br. 7. Appellant argues that Watson and Blackburn are exclusively directed to the cleaning and disinfection of the surface of the skin whereas Asano teaches alkoxylated quaternary surfactants as anti-static agents for use in surface cleaning of fabrics in detergent compositions. Id. Consequently, Appellant asserts, there is no motivation for a person of ordinary skill to combine the references. Id. We are not persuaded by Appellant’s arguments. Appellant’s claims are directed to “applying a metal contaminant-removing cleanser to a blood sampling site to remove the metal contaminant to be measured in the blood from the surface of the skin” with a composition comprising “at least one surfactant, an anti-static component and at least one metal contaminant- removing agent.” Claim 1. The Examiner finds, and Appellant does not 7 Appeal 2017-001667 Application 11/487,183 dispute, that Watson and Blackburn teach all of the limitations of claim 1 except the anti-static agent. See App Br. 9. Asano teaches: Unexpectedly, it has now been found that products containing AQA and high levels of anionic or mixed anionic/nonionic surfactants (optionally including branched surfactants) deliver superior cleaning performance vs. products containing either technology alone. These benefits are driven by: (1) AQA action on the soil surface to prevent lime soap formation and lift off any calcium soaps present (these soaps, if allowed to form and left at the soil-wash liquor interface, would largely prevent surfactant access); (2) AQA lowering of the surface tension between the wash liquor and the greasy/oily soil, thereby driving more effective soil penetration by surfactant (hence boosting cleaning); and (3) Possible ion pair formation between the cationic and anionic surfactant to form a very hydrophobic surfactant “pair” molecule which penetrates deep into the greasy soil. Asano, cols. 9-10,11. 65—12. Asano also teaches AQA-containing topically- applied shampoos and personal cleansing gels. See Asano Examples XIV, XV, col. 58,11. 19-52. Watson and Blackburn teach skin cleaning and disinfecting agents, including those containing, preferably nonionic surfactants. See, e.g., Watson Abstr.; Blackburn Abstr., 7; claim 2. Because Asano expressly teaches that the combination of AQA and nonionic surfactant provides “superior cleaning performance,” including topically-applied skin cleansing compositions, we agree with the Examiner that a person of ordinary skill in the art would be motivated to combine the teachings of Asano, Watson and Blackburn. 8 Appeal 2017-001667 Application 11/487,183 Appellant also does not dispute the fact that AQAs are also well- known in the art as anti-static agents.2 Chemical compositions and their properties are inherently indistinguishable. See In re Best, 562 F.2d 1252, 1255 (C.C.P.A. 1977). We agree with the Examiner that the predecessor of our reviewing court’s holding in Lintner is relevant here. That is, if a claimed composition is obvious over the prior art, then the fact that a component of that composition was taught as being used for a different purpose in the prior art does not alter the conclusion that its use would be prima facie obvious in the claimed composition, regardless of its claimed use. Linter, 458 F.2d at 1016. Therefore, in the appeal before us, the fact that it would have been obvious to employ AQAs in a cleaning composition and method because of its superior cleaning properties, does not render its claimed use as an anti-static agent nonobvious. We consequently affirm the Examiner’s rejection of the claims. DECISION The Examiner’s rejection of claims 1—5, 9, 10, 12—23, 25—27, 29, 32 and 35—37 as unpatentable under 35 U.S.C. § 103(a) 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)(1). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 2 See, e.g., Phillip Jeffrey Wakelyn, Quaternary Ammonium Salts as Antistatic Agents on Polyacrylonitrile Fibers, M.S. Thesis, A. French Textile School, Georgia Institute of Technology (1967). 9 Copy with citationCopy as parenthetical citation