Ex Parte Davison et al

Patent Trials and Appeals Board

Jan 30, 2019

14790794 - (D) (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/790,794 07/02/2015
104982 7590 02/01/2019
Waller Lansden Dortch & Davis, LLP
511 Union Street
Suite 2700
Nashville, TN 37219
FIRST NAMED INVENTOR
Stephen Davison
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.
035216.54797 8703
EXAMINER
KASSA, TIGABU
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
02/01/2019 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):
patentdocket@wallerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN DAVISON and CORY S. HAMMOCK
Appeal2018-000789
Application 14/790,794
Technology Center 1600
Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.
KATZ, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review, under 35 U.S.C. § 134(a), of the
Examiner's decision to reject claims 1-7 and 11-18. (See Appeal Brief,
filed May 8, 2017 ("App. Br.") 4---6.) We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse and enter a new ground of rejection.
1 Appellants report that the real party-in-interest is Clean Control
Corporation. (App. Br. 2.)
Appeal2018-000789
Application 14/790,794
Appellants' invention is directed to reducing the perceptible odor of
the insect repellent Picaridin [2-(2-hydroxyethyl)-1-piperidine carboxylic
acid 1-methylpropyl ester] by co-applying the compound with the odor-
reducer zinc ricinoleate. (See Abstract.) Appellants report that zinc
ricinoleate reduces the odor of Picaridin without reducing its effectiveness as
an insect repellent. (See Specification ("Spec.") ,r 11.)
Appellants' claim 1 recites:
A method for reducing the perceptible odor of a Picaridin
insect repellent composition, comprising:
applying the Picaridin insect repellent composition to an
area of a substrate; and
applying zinc ricinoleate to the area of the substrate.
(App. Br. 18, Claims App'x.)
Like independent claim 1, Appellants' independent claim 11 recites
reducing the perceptible odor of a Picaridin insect repellent composition by
applying Picaridin and zinc ricinoleate to a substrate, but further includes a
concentration range of zinc ricinolate and an amount range of both
compounds. (App. Br. 18-19, Claims App'x.)
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Appeal2018-000789
Application 14/790,794
The Examiner rejected claims 1-7 and 11-18 under 35 U.S.C. § 103
over Sweeney,2 Conte, 3 and Lawshe. 4 (See Ans. 2.)
Findings of Fact
1. Sweeney teaches Picaridin-based insect repellents (20% cream
and 20% spray) provide a high degree of repellency against tick species.
(See Sweeney 1, 5.)
2. Sweeney teaches "[f]or the spray product each subject received
0.97 µl/cm2 of product" and "[fJor the cream product, the volumetric dose
rate was 1.94 µl/cm2." (Sweeney 2.)
3. Conte teaches a water-based insect repellent spray containing
Picaridin as the active ingredient. (See Conte 176-177.)
4. Conte teaches the initial iterations of the Picaridin containing
spray were not satisfactory due to the "too strong scent of Picaridin," and
"[t]he scent was not pleasant since the Picaridin odor was still dominant."
(See Conte, Table 6, 179-180.)
5. Conte teaches solving Picaridin's scent problem by increasing
the amount of linalool (fragrance) in combination with Picaridin. (See Conte
180-181 ("Only the 4% linalool prototype showed a satisfactory scent after
the evaporation of the solvent mixture.").)
2 Memorandum from Kevin J. Sweeney, Senior Entomologist, Insecticides
Branch EPA, to Marion Johnson, Chief, Insecticides Branch EPA (May 24,
2010).
3 Conte et al., Design of Formulated Products: Experimental Component, 58
AICHE J. 173-189 (2012).
4 Lawshe et al., WO 2007/053790 Al, published May 10, 2007.
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Appeal2018-000789
Application 14/790,794
6. Lawshe teaches applying zinc ricinoleate and a cationic softener
on a non-woven substrate to provide a fabric softener dryer sheet that softens
fabrics, is stable, and effectively controls malodor. (See Lawshe 2:18-23.)
7. Lawshe teaches "[ z ]inc ricinoleate controls malodors
selectively through a chemical binding of low molecular weight organic
compounds containing the osmogene functional groups. On the other hand,
zinc ricinoleate generally has no effect on carbonylic groups, such as
aldehydes and ketones, which comprise typical perfume and fragrance
components." (Lawshe 4:8-12.)
8. Lawshe teaches
zinc ricinoleate may stably complex with malodor molecules .
. . . the zinc acts as a catalyst to bind the malodor molecules,
complexing it with the fatty acid side chains of the zinc
ricinoleate molecule. In this way, the zinc ricinoleate
neutralizes the malodors-that is, it reduces the level of
undesirable malodors available for human perception.
(Lawshe 4:13-19.)
9. Lawshe teaches
The activation of zinc ricinoleate is typically achieved by
solubilizing the compound prior to deposition onto the non-
woven substrate .... [O]nce combined with a liquid cationic
surfactant, the reaction sites on the zinc atoms are available to
form bonds with nitrogen and sulfur atoms thereby bonding
with the malodor.
(Lawshe 4:30-5:5.)
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Appeal2018-000789
Application 14/790,794
Analysis
The Examiner determines that it would have been obvious for one of
ordinary skill in the art to incorporate zinc ricinoleate in the Picaridin of
Sweeney5 because Lawshe teaches applying zinc ricinoleate onto a substrate
to reduce malodors. (See Final Act. 7, citing Lawshe Abstract.) The
Examiner finds that one of ordinary skill in the art would have been
motivated to add zinc ricinoleate as an odor reducing agent by following
Conte's methodology for the design and verification of chemical-based
products. (Id.) According to the Examiner, Conte shows that "one of
ordinary skill in the art will recognize that [Sweeney's] picaridin has an
unpleasant odor and based on that knowledge would look to reduce or
remove that bad odor utilizing for instance the knowledge provided by
Lawshe et al. [that] zinc ricinoleate can remove or reduce malodor." (Ans.
7.) As such, the Examiner finds "[ a ]n ordinary skilled artisan would have
had a reasonable chance of success" in combining the teachings of Sweeney,
Lawshe, and Conte, because Sweeney and Conte teach Picaridin while zinc
ricinoleate is used for odor control. (See id.)
Appellants argue "that one of ordinary skill in the art would not have
expected zinc ricinoleate to successfully reduce the odor of Picaridin, a
relatively large molecule, or at least, would not have expected zinc
ricinoleate to do so without destroying the insect repellent properties of
Picaridin." (App. Br. 10.) Appellants base this argument on the teaching of
Lawshe that zinc ricinoleate works on low molecular weight organic
5 The Examiner refers to Sweeney as Carroll in the Final Rejection. (See
Examiner's Answer mailed September 6, 2017 ("Ans.") 2).
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Appeal2018-000789
Application 14/790,794
compounds by binding to and forming a stable complex with the malodor
molecule. (App. Br. 8, citing Lawshe 4.) Appellants further cite to
Flexicare6 and Kuhn 7 for supporting their argument that "even if zinc
ricinoleate did reduce the odor of Picaridin, it would do so by trapping or
inactivating the molecule and thereby destroying its insect repellent
characteristics." (App. Br. 9.)
The Examiner responds that Lawshe teaches zinc ricinoleate controls
malodors selectively through a chemical binding of low molecular weight
organic compounds containing osmogene functional groups. (Ans. 4.) As to
the combination of the art, the Examiner finds that the teachings are "drawn
to the malodor causing molecules within a given compound ... not [] to the
release or activity of the total compound." (Ans. 5.)
We agree with Appellants that the Examiner has not shown a reason
to combine the references in the cited prior art with a reasonable expectation
of success in the combination. See In re Vaeck, 947 F.2d 488, 493 (Fed. Cir.
1991) ("[b ]oth the suggestion and the reasonable expectation of success
must be founded in the prior art, not in the applicant's disclosure").
Conte teaches the problem of the unpleasant scent of Picaridin in
spray formulations. (FF 4.) Conte solves this problem by increasing the
amount of linalool fragrance. (FF 5.) Appellants argue that even though one
of ordinary skill in the art reading Conte might have thought to include a
6 Innovative Chemical Tech., Inc., Technical Data Sheet Flexicareâ„¢ ZR-P.
7 Kuhn et al., Mechanism of the Odor-Absorption Effect of Zinc Ricinoleate.
A Molecular Dynamics Computer Simulation, 3 J. Surfactants and
Detergents 335-343 (2000).
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Appeal2018-000789
Application 14/790,794
fragrance to mask Picaridin's odor, there would not have been a reason to try
something entirely different, like zinc ricinoleate. (App. Br. 12.)
We are persuaded by Appellants' argument because the Examiner has
not shown that a person of ordinary skill in the art would have sought to
reduce the odor of Picaridin rather than mask the odor with additional
fragrance. Rather than substitute one element for another known in the field,
the Examiner substitutes one element, a fragrance, for a different functional
compound, an odor reducer. Cf KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). Furthermore, Lawshe teaches using zinc ricinoleate on a very
different type of product ( dryer sheets) from the Picaridin solutions taught in
Sweeney and Conte.
The Examiner argues that "Conte is merely included in the rejection
to show[] why one of ordinary skill in the art will recognize that Sweeney's
picaridin has an unpleasant odor .... " (Ans. 7.) However, Conte must be
considered as a whole. It is impermissible to pick and choose from any one
reference only so much of it that supports a given position, to the exclusion
of other parts necessary to the full appreciation of what the reference
suggests. In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986). Because
Conte teaches both the problem of Picaridin's scent and the solution of
increasing the amount of fragrance to overpower the scent and Lawshe
relates to a different mechanism for reducing odors, used in a very different
product, we find that the prior art cited by the Examiner does not provide a
reason to combine Picaridin with an odor reducing compound.
Accordingly, we agree with Appellants that the Examiner erred in
rejecting claims 1 and 11.
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Appeal2018-000789
Application 14/790,794
New Ground of Rejection
We here enter a new ground of rejection. We reject independent
claims 1 and 11 under 35 U.S.C. § 103 as obvious over Sweeney, Conte,
Lawshe, and Parekh. 8
As we explained above, Sweeney and Conte teach Picaridin is a
known insect repellent with an unpleasant smell that a person of ordinary
skill in the art would have addressed when preparing Picaridin formulations.
Findings of Fact
10. Parekh teaches a process for reducing a malodor emanating
from a solid or liquid malodorous source including an insect repellent
composition by providing a counteracting quantity and concentration of a
zinc ricinoleate-containing composition. (Parekh claims 1, 9, and 13, ,r 3 7.)
11. Parekh teaches that the zinc ricinoleate compositions may
include compatible functional compositions including insect repellents and
fragrance components. (Parekh ,r,r 41, 64, 76.)
Analysis
Parekh teaches that zinc ricinoleate reduces malodors emanating from
an insect repellent and that zinc ricinoleate is compatible with insect
repellents and fragrances. (FF 11-12.) Therefore, given the problem of the
Picaridin of Sweeney having an unpleasant scent as taught in Conte, one of
ordinary skill in the art would have had reason to look to Parekh for the
solution of using zinc ricinoleate to reduce the perceptible odor of insect
repellents, while maintaining their function. Given the success in Parekh
8 Parekh et al., US 2005/0106192 Al, published May 19, 2005.
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Appeal2018-000789
Application 14/790,794
with insect repellants in general, the ordinarily skilled artisan would have
had a reasonable expectation of success with Picaridin.
Having established prima facie obviousness over the prior art, we
examine Appellants' assertion that the claimed method produced unexpected
results and acclaim within the industry. (App. Br. 14--15.) Appellants
contend that the data presented in Table 1 of the Specification "showed that
the combination of Picaridin and zinc ricinoleate was surprisingly more
effective than Picaridin alone." (App. Br. 15, citing Spec. ,r 25) However,
in the absence of any data regarding the insect repelling effects of zinc
ricinoleate alone, there is no indication that the reported increase is not
merely the additive effect of the obvious combination set forth above. As to
the reference cited by Appellants for industry acclaim, the document appears
to merely indicate that a patent was granted to Appellants and nothing more.
Therefore, we find neither of Appellants' submissions to be persuasive
evidence of nonobviousness.
We conclude that the combination of Sweeney, Conte, Lawshe, and
Parekh teaches all of the elements and limitations of the independent claims
and renders the claimed methods obvious. We consequently reject
independent claims 1 and 11 under 35 U.S.C. § 103 as being obvious over
Sweeney, Conte, Lawshe, and Parekh.
We have entered new grounds for only the independent claims and
leave it to the Examiner to evaluate the patentability of the other claims,
particularly those individually argued by Appellants, in view this
combination with other newly found or previously cited references.
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Appeal2018-000789
Application 14/790,794
Conclusion
Upon consideration of the record and the reasons given, the rejection
of claims 1-7 and 11-18 is not sustained.
Therefore, we reverse the decision of the Examiner.
We have also entered a new ground of rejection for independent
claims 1 and 11 pursuant to 37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b)
provides that "[a] new ground of rejection ... shall not be considered final
for judicial review."
37 C.F.R. § 4I.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
REVERSED
37 C.F.R. § 4I.50(b)
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