Ex Parte Askin

Patent Trial and Appeal Board

Sep 19, 2017

11487183 (P.T.A.B. Sep. 19, 2017)

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;
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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,
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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,
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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.
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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
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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
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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.
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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).
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