Ex Parte Dörr et al

Patent Trial and Appeal BoardJan 3, 2019

14513306 (P.T.A.B. Jan. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/513,306 10/14/2014 26285 7590 01/07/2019 K&L GA TES LLP-Pittsburgh 210 SIXTH AVENUE PITTSBURGH, PA 15222-2613 FIRST NAMED INVENTOR Sebastian Dorr 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. 160335PCTUSCON/BMS081095P 9261 EXAMINER NIELSEN, THOR B ART UNIT PAPER NUMBER 1616 NOTIFICATION DATE DELIVERY MODE 01/07/2019 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): USpatentmail@klgates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SEBASTIAN DORR, HEIKE HECKROTH, JAN SCHOENBERGER, ROBRECHT FROYMAN, HANS-ROBERT HEHNEN, KRISTINE FRAATZ, and HANS-OTTO WERLING 1 Appeal2017-010919 Application 14/513,306 Technology Center 1600 Before ULRIKE W. JENKS, RY AN H. FLAX, and RACHEL H. TOWNSEND, Administrative Patent Judges. FLAX, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) involving claims directed to a method for sealing a teat of an animal mammary gland. Claims 16-29, 33, 34, and 36-39 are on appeal as rejected under 35 U.S.C. Â§ 103(a). We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 Appellants identify the Real Party in Interest as "Covestro Deutschland AG." Br. 2. Appeal2017-010919 Application 14/513,306 STATEMENT OF THE CASE Claim 16 is representative and is reproduced below: 16. A method for sealing a teat of an animal mammary gland comprising applying a coating of a polyurethane dispersion to the teat of the animal mammary gland, wherein the polyurethane dispersion is obtained by preparing A) isocyanate-functional prepolymers having unreacted NCO groups, the prepolymers prepared from and Al) organic polyisocyanates, A2) polymeric polyols having number-average molecular weights of 400 to 8000 g/mol, and OH functionalities of 1.5 to 6, and A3) optionally hydroxy-functional compounds having molecular weights of 62 to 399 g/mol, and also A4) optionally isocyanate-reactive, anionic or potentially anionic and/ or optionally nonionic hydrophilizing agents, B) then reacting some or all of the unreacted NCO groups of said prepolymers B 1) optionally with amino-functional compounds having molecular weights of 32 to 400 g/mol and B2) with amino-functional, anionic or potentially anionic hydrophilizing agents with chain extension, and dispersing the prepolymers in water before, during or after step B), and sealing the teat of the animal mammary gland for up to 3 days. Br. 18. Other than claim 39, Appellants argue the claims as a group. Br. 6- 16. Therefore, we address the claims similarly herein. 2 Appeal2017-010919 Application 14/513,306 The following rejections are appealed: Claims 16-29, 33, 34, 36, 37, and 39 stand rejected under 35 U.S.C. Â§ I03(a) over Lu,2 Berge, 3 Desmophen C200 Technical Datasheet, 4 and Hemling. 5 Answer 3. Claim 38 stands rejected under 35 U.S.C. Â§ I03(a) over Lu, Berge, and Desmophen C200 Technical Datasheet. Id. DISCUSSION "[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting aprimafacie case ofunpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Arguments made by Appellants in the Appeal Brief have been considered; arguments not so-presented in the Brief are waived. See 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2015); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BP AI 2010) (informative) ("Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived."). "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "[W]hen a patent claims a structure [ or method] already known in the prior art that is altered by the mere substitution of one element [ or step] for another known in the 2 US 2007/0275101 Al (published Nov. 29, 2007) ("Lu"). 3 US 2005/0215663 Al (published Sept. 29, 2005) ("Berge"). 4 DesmophenÂ® C 200 - Covestro -datasheet, http:// coatings. specialchem. com/product/r-bayer-materialscience- desmophen-c-200, Oct. 29, 2015 ("Desmophen C200 Technical Datasheet"). 5 US 6,030,633 (issued Feb. 29, 2000) ("Hemling"). 3 Appeal2017-010919 Application 14/513,306 field, the combination must do more than yield a predictable result." Id. (citing United States v. Adams, 383 U.S. 39, 50-51 (1966)). "In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid underÂ§ 103." Id. at 419. "[T]he question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination, not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available." In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) ( citation omitted). "[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." KSR, 550 U.S. at 417. "[F]amiliar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420. Findings of Fact We adopt the Examiner's findings of fact and rationale on obviousness as set forth in the Final Action and Answer. Final Action 3-20 and Answer 2-19 (collectively citing Lu Abstract, ,r,r 8-10, 23, 25, 26, 28- 36, 53-56, 60, 65, 67-73, 85, 86, 125, 137, 153, 163, 176; Berge ,r,r 26, 36, 42--45,47,48,53-56,61,62,69, 71, 72, 75, 87,106,114,120,129,164, 4 Appeal2017-010919 Application 14/513,306 174,211, 213-214, 277; Hemling Abstract, col. 3--4; also citing Desmophen C200 Technical Data Sheet; and U.S. Patent 4,701,480 Abstract, col. 8). Analysis The Examiner determined that Lu, which incorporated the disclosure of Berge, disclosed a polyurethane dispersion like that claimed and that such a dispersion could be applied to, inter alia, animals ( e.g., hides, fur) to form a microorganism-controlling film. See supra Findings of Fact. Furthermore, the Examiner noted that Lu squarely placed its microorganism-controlling film in the technical field of prophylactic treatment of mastitis in cows. 6 Id.; see also Lu ,r 8. The Examiner also determined that Hemling, similar to Lu, disclosed a polyurethane-based film forming protectant for treating and protecting against mastitis in cows as a teat coating. See supra Findings of Fact; see also Hemling Abstract. We discern no error in the Examiner's determinations. Appellants argue the obviousness rejections are in error because Berge, which is directed to printing inks, is non-analogous art and is incorrectly combined with Lu. Br. 7-10. This argument is not persuasive. Lu expressly incorporates Berge' s disclosure into its own, even though Lu is directed to microorganism controlling coatings/films and Berge is directed to inks. See Lu ,r,r 86, 176. A clearer and more explicit invitation to combine prior art references could hardly be desired. Lu makes clear that Berge' s 6 Mastitis is an "inflammation of the mammary gland or udder usually caused by infection." Merriam-Webster, mastitis, https://www.merriam- webster.com/dictionary/mastitis, Dec. 21, 2018. 5 Appeal2017-010919 Application 14/513,306 teachings are at least "reasonably pertinent" to the problems faced by Lu, which are like those addressed by the appealed claims. Appellants argue Berge teaches including organic solvents and/or other small molecule compounds in its formulations and that this is inconsistent with the inventors' goals as discussed in the Specification at page 1, lines 11-17. Br. 10. This argument is not persuasive. Regardless of Appellants' goals, the claims do not exclude organic solvents or other small molecule compounds. Appellants argue the combination of prior art does not teach "applying a coating of a polyurethane dispersion to the teat of [an] animal mammary gland." Br. 11 (alteration in original) (emphasis omitted). Whether this step is explicitly disclosed in the prior art or not, the prior art combination certainly suggests doing so. Both Lu and Hemling discuss treating or preventing mastitis in cows, which would require such an application, as explicitly indicated by Hemling. See supra Findings of Fact; see also Lu ,r,r 8, 26, 60, 137; and Hemling Abstract ("film-forming skin protectant compositions ... have particular utility as barrier teat dips, for protecting cows against mastitis"). This claim element would have been obvious over the cited prior art, as determined by the Examiner. Appellants ague the Examiner has not satisfactorily explained how Lu and Hemling should be combined. Br. 14. This argument is not persuasive. Even a cursory review of the disclosures of Lu and Hemling make it apparent how they would be combined. Lu is directed to a coating that forms a microorganism-controlling film to protect against microbial contamination (see, e.g., Lu ,r 36), including against Gram positive and 6 Appeal2017-010919 Application 14/513,306 negative bacteria (Lu ,r 92), which it teaches can be used on a spectrum of surfaces including animals' hides or fur (Lu ,r 60) and is long-lasting and easily removable (Lu ,r,r 9, 71, 73), and further teaches that antimicrobial compositions have been used as a coating on cow teats to prophylactically treat mastitis, a disease known to be caused by bacteria entering the teat. 7 Lu further teaches that its coating can be applied by any means, including dipping and spraying (Lu ,r 120). Hemling is directed to treating and preventing cow mastitis by coating teats with a film-forming composition, (see, e.g., Hemling 3:64-66 ("The teats were then wiped dry and dipped with the test teat protectant composition of Table 1.") and 3 :24--27 ("However, if desired, the compositions hereof can be applied by other means [besides dipping], such as by wiping or spraying so as to create elastic films which are vapor permeable, water-,wind-, dirt-, insect-proof and present a barrier to bacteria.")), which includes polyurethane, the same foundational components as the Lu composition. Hemling notes the film-forming compositions have good adherence for several days. See e.g., Hemling Tables 2 and 4. Given the foregoing, it could not be more apparent how the two references would be combined: Lu's composition, which is a long- lasting antimicrobial and can be applied to animal hide by dipping or spraying, would have been applied as set forth in Hemling. Appellants argue the Examiner has not sufficiently shown a market need for using Lu's dispersions to seal teats of animals for 3 days, per Hemling's disclosure. Br. 14. This argument is not persuasive. Evidence of a market need is applicable to an obvious-to-try rationale, which was set 7 See, e.g., Hemling 1:20-35, 3:28-30. 7 Appeal2017-010919 Application 14/513,306 forth by the Examiner, but perhaps not required to evidence obviousness here as the claims would have been obvious in any event. However, the disclosures of Lu and Hemling themselves evidence a market need for their methods and formulations and for treating and preventing mastitis in cows. Lu identifies that prophylactic treatment of mastitis in cows by coating cow teats with an antimicrobial was a known need and proceeds to then disclose its polyurethane antimicrobial film that has coating capability on many varied surfaces. Lu ,r 8. Hemling identifies mastitis in cattle as "[a] significant problem for dairy farmers." Hemling 1:20-21. It is apparent that there was a market need for a mastitis prophylactic and/or treatment and it would have been obvious to try Lu's formulation using Hemling's methods. Appellants argue the prior art, Hemling in particular, does not teach 3- day sealing of teats. Br. 15. This argument is not persuasive. First, 3-day sealing is not a claim limitation. In claim 16, the recited clause including "sealing the teat of the animal mammary gland for up to 3 days," which is a part of step "B," is preceded by the word "optionally," which renders the entirety of the step not a requirement, but optional, and, hence, not a limitation. Even were this element a requirement of the claims, Hemling discloses that its film, once applied, remains substantially intact for at least 3 days (96% intact). Hemling col. 4 (Table 2). Similarly, Lu extols that an advantage of its film-forming coating is that it is "longer lasting" and is only to be removed "at a time determined appropriate by the user," which could be "seconds, hours, days, weeks, months, even years after application of the film." Lu ,r,r 69, 73, 127. 8 Appeal2017-010919 Application 14/513,306 Regarding claim 39, which depends from claim 16, Appellants argue Lu, Berge, and Hemling fail to teach "the use of monofunctional mixed polyalkylene oxide polyethers which have 40 to 100 mol% of ethylene oxide units and Oto 60 mol% of propylene oxide units." Br. 15-16. This argument is not persuasive. First, no propylene oxide is required by this claim because it can have O mol% thereof. Second, Berge discloses that hydrophilic components may be produced as described in the preceding patents by alkoxylating a monofunctional starter, such as methanol or n- butanol, using ethylene oxide and optionally another alkylene oxide, such as propylene oxide or in the case of oxazolines, methyloxazoline. Berge ,r 7 5. Thus, like the claim, Berge teaches that components other than ethylene oxide in this application are optional. Thus, the claimed 40-100 mol% thereof would have been obvious. The fact that Berge may disclose that less is preferred does not make its teaching of more non-obvious. A prior art reference is not limited to is preferred embodiments or examples. For the reasons discussed above, Appellants have not demonstrated that the Examiner erred in presenting a prima facie case for the obviousness of all appealed claims. SUMMARY The obviousness rejections are each affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 9