Ex Parte Cueman et al

Patent Trial and Appeal Board

Apr 12, 2016

12133523 (P.T.A.B. Apr. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/133,523 06/05/2008
22474 7590 04/14/2016
Clements Bernard PLLC
4500 Cameron Valley Parkway
Suite 350
Charlotte, NC 28211
FIRST NAMED INVENTOR
Glenn F. Cueman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4866 9821
EXAMINER
WEBB, WALTERE
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
04/14/2016 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):
patlaw@worldpatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLENN F. CUEMAN, BARNWELL S. RAMSEY, and
KENNETH R. VEST 1
Appeal2014-003187
Application 12/133,523
Technology Center 1600
Before ULRIKE W. JENKS, ROBERT A. POLLOCK, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
POLLOCK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 16, 18, 22, and 24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants' invention relates to "[a]n aqueous hydrogen peroxide
solution for use in disinfectants, soaps, shower gels, and mouth rinses."
Spec., Abstract. The sole independent claim before us recites (formatting
and italics added):
1 Appellants identify the Real Party in Interest as Innovasource, LLC. App.
Br. 2.
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Application 12/133,523
16. An antimicrobial disinfectant hydrogen peroxide
aqueous solution consisting essentially of
i) an aqueous hydrogen peroxide solution having an actual
range from 1 to 6 wt. %,
ii) phosphoric acid solution in an actual range from 0.01
to 0.05 wt. %, and
iii) at least one cationic or non-ionic surfactant, wherein
the total surfactant is in a range from 0.1 to 3 wt. %,
with the balance being water to make 100 wt. %.
Claims 16, 22, and 24 stand rejected under 35 U.S.C. § 103(a) as
obvious over Aoyagi. 2
Claims 16, 22, and 24 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Aoyagi and Huss. 3
Claims 16 and 22 stand rejected under 35 U.S.C. § 103(a) as obvious
over Kandathil. 4
Claims 18 and 24 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Kandathil and Asano. 5
ANALYSIS
We have reviewed Appellants' contentions that the Examiner erred in
rejecting claims 16, 18, 22, and 24 as unpatentable over the cited art. App.
Br. 3-11; Reply Br. 2-3. We adopt the findings and analysis as set forth in
2 Aoyagi and Takanashi, EP0432776 A2, published June 19, 1991
("Aoyagi").
3 Huss et al., US 6,211,237 Bl, issued April 3, 2001 ("Huss").
4 Kandathil, US 4,238,192, issued Dec. 9, 1980.
5 Asano et al., US 6,136,769, issued Oct. 24, 2000 ("Asano").
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Application 12/133,523
the Examiner's Answer and Final Rejection dated February 1, 2003. For
emphasis, we highlight and address the following:
FF 1. Aoyagi teaches an aqueous "acidic hydrogen peroxide
bleaching agent having a remarkably improved storage stability at
high temperature and a high bleaching power" comprising
(a) 0.5 to 10% by weight of hydrogen peroxide.
(b) 0.1 to 20% by weight of an anionic surfactant.
( c) 0 .1 to 20% by weight of a nonionic surfactant,
(d) 0.05 to 5% by weight of a polyacrylic acid ... and/or a
maleic polymer ... and
( e) 0.0001 to 1 % by weight of a polyphosphoric acid ... an
amino phosphonic acid ... [or] a diphosphonic acid.
Aoyagi, Abstract, 2:39-51; 4:7-9; Table I.
FF2. Huss discloses aqueous disinfecting agents comprising
performic acid, hydrogen peroxide and peracetic acid. Huss, Abstract.
In preferred embodiments, the agents comprise hydrogen peroxide
and an "equilibrium peracetic acid expediently [containing] a mineral
acid catalyst stemming from its production," such as phosphoric acid,
pyrophosphoric acid and polyphosphoric acid. Id. at 3: 15-24.
FF3. Kandathil discloses aqueous hydrogen peroxide bleach
compositions comprising 2-12% by weight hydrogen peroxide, 0-
20% by weight phosphoric acid, and a 0.0001-1 % by weight of a
nitrogen-containing compound and "contain[ing] sufficient acid to
have a pH within the range of from 1.8-5.5." Kandathil, Abstract.
The compositions optionally contain up to 7% by weight of nonionic,
anionic, cationic, and amphoteric surfactants. Id. at 4:58-5: 1.
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Application 12/133,523
FF4. Pertinent to dependent claims 18 and 24, Asano teaches
detergents suitable for use in bleaching compositions including
cationic and anionic surfactants (e.g., ethoxylated quaternary
ammonium compounds and sodium dodecyl sulfate, respectively).
Asano, Abstract, 3:1-5, 20-31, 4:23-30, 5:9-11, 14:36-38; Final Rej.
5.
Rejections Based on Aoyagi
Appellants contend that the Examiner errs in rejecting claims 16, 22,
and 24 in view of Aoyagi, and/or the combination of Aoyagi and Huss,
because the improved storage stability and high bleaching power of
Aoyagi' s composition depends on components excluded by the "consisting
essentially" language of independent claim 16. See App. Br. 3---6. In
particular, Appellants contend that omitting (1) the polyacrylic and/or maleic
polymer or (2) the specific phosphorus compound (e.g., polyphosphoric
acid), "destroys Aoyagi et al as a bleaching agent." Id. at 5. Accordingly,
Appellants posit, "if Aoyagi et al are no longer a bleaching agent can it be a
disinfecting composition?" Id.
We do not find Appellants' argument persuasive. 6
6 Responding to the Examiner's statement that "arguments of counsel cannot
take the place of evidence in the record," Appellants assert that "all
comments herein are from the inventors - not counsel." App. Br. 10-11
(quoting Ans. 7). Appellants do not, however, direct us to, nor do we
discern, where the referenced arguments are supported in any declaration,
reference, or passage from the instant Specification. Accordingly, we agree
with the Examiner that Appellants' unsupported statements are mere
attorney argument.
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Application 12/133,523
The transitional phrase "consisting essentially of" limits the scope of
the appealed claims to the specified components "and those that do
not materially affect the basic and novel characteristic(s)" of the claimed
invention. See In re Herz, 537 F.2d 549, 551-52 (CCPA 1976).
With respect to the alleged criticality of Aoyagi's polymers and
polyphosphonic acid, we are also not convinced by Appellants' argument
that Aoyagi Table I, Examples 4 and 5 shows that "[ w ]hen either the
polymer or the polyphosphonic component is missing ... the bleaching rate
is drastically reduced" see App. Br. 5---6; Reply Br. 2. At best, Aoyagi Table
I shows that hydrogen peroxide with either polyacrylic acid (comparative
example 4) or sodium hexametaphosphate (comparative example 5) had
about 60% of the bleaching rate of a hydrogen peroxide solution having both
polyacrylic acid and sodium tripolyphosphate (comparative example 1 ).
Appellants present no evidence for the allegation that bleaching rate (or
disinfectant efficacy) would be "destroyed" for a hydrogen peroxide solution
comprising neither polyacrylic acid nor sodium tripolyphosphate. See App.
Br. 5. To the contrary, we accept the Examiner's implicit finding that
hydrogen peroxide inherently functions as a disinfectant. See Ans. 4 (citing
Spec. i-f 8); see also Huss, 1 :30-32 ("It is known that hydrogen peroxide is a
moderately effective, mild disinfecting agent with bacteriostatic
properties."). In particular, we are unpersuaded on the present record by
Appellants' argument that the bleaching and antimicrobial properties of
hydrogen peroxide act through different mechanisms such that "[b ]leach
efficacy in no way implies disinfectant efficacy." App. Br. 9-10.
To the extent that Appellants are correct in asserting that "[h ]ydrogen
peroxide does not inherently act as a disinfectant [and n]ot all bleaching
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compositions are disinfectants" (see Reply Br. 2), we are not persuaded that
one of ordinary skill in the art would understand that any of Aoyagi' s (or
Kandathil's) hydrogen peroxide formulations lack disinfectant activity. To
the contrary, Appellants cite a passage from "P&G website- Science in the
Box" indicating that "antimicrobial efficacy is high in acidic pH conditions."
See App. Br. 9-10. That Aoyagi and Kandathil both teach acidic hydrogen
peroxide compositions is thus supportive of disinfectant activity. See
Aoyagi, Abstract (directed to "[a] liquid bleaching composition is acidic
with a PH value of 1. 5 to 5"); Kandathil, Abstract (directed to "[a] stabilized
liquid hydrogen peroxide bleach composition ... hav[ing] a pH within the
range of from 1.8-5.5").
We are also unpersuaded by Appellants' arguments regarding shelf
stability and the potential for polymer and polyphosphonic acid derivatives
to leave chemical residue that "interferes with disinfectant." App. Br. 6.
With respect to "shelf stability," Appellants have neither established the
shelf stability of hydrogen peroxide compositions with or without the
additives taught Aoyagi, nor explained why the claims should be read to
require any particular degree of shelf stability. To the contrary, none of the
appealed claims refer to stability and we find no reason to import such
limitations from the specification. SuperGuide Corp. v. DirecTV Enters.,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
With respect to Appellants' discussion of interfering chemical
residues, Appellants present no evidence that Aoyagi's polymers and
polyphosphonic acid derivatives would leave "residues" that interfere with
disinfection. See Ans. 4. Attorney argument is not evidence. In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974). And mere lawyer's arguments and
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conclusory statements unsupported by factual evidence are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Appellants further contend that the Examiner errs with respect to Huss
because "Aoyagi et al. does not mention an acid catalyst and the
polyphosphoric acid has a completely different purpose ... than as an acid
catalyst." App. Br. 7. 7 We do not find this argument persuasive. The
Examiner reasonably finds that one of ordinary skill in the art would have
found it obvious to use phosphoric acid in place of the phosphorous based
acids taught by Aoyagi. Final Rej. 4. The Examiner's reliance on Huss is,
therefore, redundant as it was applied merely to show that "[p ]olyphosphoric
acid and phosphoric acid have equivalency insofar the prior art shows they
can be exchanged for one another." See Ans. 5.
Rejections based on Kandathil
Appellants contend that the Examiner errs in rejecting claims 16, 18,
22, and 24 in view ofKandathil, or Kandathil in combination with Asano,
based on arguments similar to those discussed above. In particular,
Appellants argue that the addition of Kandathil's nitrogen-containing
compound would materially affect the disinfecting composition of the
7 Although Appellants' counsel asserts that "[t]he function of the
polyphosphonic component of Aoyagi [] is as a chelating agent" (App. Br.
5), we note that the Specification teaches preferred embodiments comprising
the chelating agent ("sequestrant") EDT A, also known as ethylenediamine
tetraacetic acid. See, e.g., Spec. i-f 43; Aoyagi 37:12-29. Appellants do not
explain why the addition of an alleged chelating agent, polyphosphonic acid,
would materially affect the basic and novel characteristics of the claimed
invention.
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present invention because it "would reduce the stability of hydrogen
peroxide." See App. Br. 8.
We do not find Appellants' arguments persuasive for three
independent reasons. First, as noted above, we do not read the claims on
appeal as encompassing a stability limitation. Second, as noted by the
Examiner, Appellants present no data showing that a nitrogen-containing
compound would materially affect disinfection. Ans. 5---6. And third,
Appellants own Specification teaches the use of numerous nitrogen-
containing compounds such that we do not find credible Appellants'
argument that nitrogen-containing compounds would materially affect the
disinfecting composition of the present invention. See, e.g., Spec. i-f 13
(amino tri(methylene phosphonic acid, ethylene diamine tetra(methylene
phosphonic acid)), i-f 18 ( alkyltrimethylammonium salts, polyethoxylated
tallow amine), i-f 19 ( dodecyl dimethylamine oxide), i-fi-128, 29
(polyaminopropyl biguanide, lauramine oxide), i-f 30 (lauramide
diethanolamide ), i-f 31 ( cocamidopropyl betaine, lauramine oxide), i-f 43
(preferred embodiment containing cocamidopropyl betain, polyaminopropyl
biguanide, lauric diethanolamide, and lauramine oxide); original claims 2, 4,
6, 8, and 11.
Appellants also assert that "[i]n order to legally sell a product as a
disinfectant in the U.S., it must be registered as such with the EPA as a
pesticide." App. Br. 9. "A disinfectant is an antimicrobial pesticide, subject
to a different set of data requirements (40 CPR 158.65)," and "must be shelf
stable for at least a year according to the EPA regulations." Id. at 9--10.
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We do not find Appellants' arguments persuasive. 8 As noted above,
we do not read the claims on appeal as encompassing a stability limitation.
Moreover, as noted by the Examiner, EPA regulations "have no bearing on
patentability." Ans. 7; see also In re Brana, 51F.3d1560, 1568 (Fed. Cir.
1995) (With respect to assessing utility under § 101, "FDA approval []is not
a prerequisite for finding a compound useful within the meaning of the
patent laws.") (citation omitted); Scott v. Finney, 34 F.3d 1058, 1063 (Fed.
Cir. 1994). (Considerations made by the FDA for approving clinical trials
are different from those made by the PTO in determining whether a claim is
enabled).
SUMMARY
We affirm the rejection of claims 16, 22, and 24 under 35 U.S.C.
§ 103(a) as obvious over Aoyagi.
We affirm the rejection of claims 16, 22, and 24 under 35 U.S.C.
§ 103(a) as obvious over the combination of Aoyagi and Huss.
We affirm the rejection of claims 16 and 22 under 35 U.S.C. § 103(a)
as obvious over Kandathil.
8 As an initial matter, Appellants have not established that the claimed
invention is a pesticide, nor that the cited regulation applies to hydrogen
peroxide-based disinfectants. See 40 C.F.R. § 158.65 (directed to
"biochemical pesticides" such as insect pheromones and insect growth
hormones; "microbial pesticides" including naturally-occurring and
genetically modified bacteria, fungi, viruses, and protozoans; "[ n Jovel
microbial pesticides (i.e., genetically modified or non-indigenous microbial
pesticides)"; and "[p ]est control organisms such as insect predators,
nematodes, and macroscopic parasites").
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We aj]zrm the rejection of claims 18 and 24 under 35 U.S.C. § 103(a)
as obvious over the combination of Kandathil and Asano.
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
10