Ex Parte Hishida

Patent Trial and Appeal BoardSep 17, 2012

11372103 (P.T.A.B. Sep. 17, 2012)

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. 11/372,103 03/10/2006 Iwao Hishida 060145 4326 23850 7590 09/17/2012 KRATZ, QUINTOS & HANSON, LLP 1420 K Street, N.W. 4th Floor WASHINGTON, DC 20005 EXAMINER SCHLIENTZ, NATHAN W ART UNIT PAPER NUMBER 1616 MAIL DATE DELIVERY MODE 09/17/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte IWAO HISHIDA __________ Appeal 2011-009389 Application 11/372,103 Technology Center 1600 __________ Before ERIC GRIMES, MELANIE L. McCOLLUM and STEPHEN WALSH, Administrative Patent Judges. McCOLLUM, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a granular composition. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Claims 13 and 18 are pending and on appeal (App. Br. 5). We will focus on claim 13, the only independent claim on appeal, which reads as follows: 13. A granular composition comprising a copper ion-producing composition and poorly water-soluble material, said copper ion-producing Appeal 2011-009389 Application 11/372,103 2 composition being obtained by mixing 0.3 to 10 weight parts surfactant with 100 weight parts metallic copper powder, treating the surface of the metallic copper powder with the surfactant, and mixing 10 to 500 weight parts acidic compound with 100 weight parts metallic copper powder, wherein the surface of a solid material comprising said poorly water- soluble material is coated with the copper ion-producing composition, wherein said granular composition further has the properties described in (a), (b), (c) and (d) below: (a) The metallic copper powder is a finely divided powder with an average particle size of not more than 40 microns and 0.1 to 5 weight % metallic copper powder is contained in the granular composition; (b) The surfactant is at least one selected from the group consisting of an anionic surfactant, cationic surfactant, amphoteric surfactant and nonionic surfactant, and those with an HLB of 10 to 20; (c) The acidic compound is at least one selected from the group consisting of ammonium sulfate, benzoic acid, salicylic acid, tartaric acid, 2-acrylamido-2-methylpropanesulfonic acid, sodium acid metaphosphate, ferric sulfate, and methanesulfonic acid; (d) A substrate of the poorly water-soluble material is at least one selected from the group consisting [of] ionomers, acrylonitrile-butadiene- styrene resins (ABS), ethylene-vinyl acetate copolymer resins (EVA), low- melting ethylene-tetrafluoroethylene copolymers (LMETPE), peroxyacyl nitrate (PAN), polyacetal resins (POM), polyamides (PA), polyethylenes (PE), polycarbonates, polyvinyl alcohols (PVA), polyvinyl butyral (PVB), PVF, elastomers, butadienes, polypropylenes (PP), polymethylpentenes (TPX), polyurethanes, maleic acid resins, epoxies, polyester resins, natural high molecular weight acetate plastics, polyterpenes, shellac, dammar gum, rosin, low molecular weight polyethylenes, polypropylene resins, coumarone plastics, petroleum resins, and DCPD resins, and the poorly water-soluble material is water-insoluble material with a softening point of not less than 70°C. Claims 13 and 18 stand rejected under 35 U.S.C. § 103(a) as obvious over Rei et al. (US 4,086,297, Apr. 25, 1978) in view of Gavin et al. (US 2002/0110575 A1, Aug. 15, 2002) and Beerse et al. (US 6,294,186 B1, Sep. 25, 2001) (Ans. 3). Appeal 2011-009389 Application 11/372,103 3 The Examiner relies on Rei for teaching “a solid composition comprising a homogeneous mixture of a solid thermoplastic resin and from 1 to 80 weight % of at least one microbiocide,” wherein “the thermoplastic resins include PVC, vinyl chloride-vinyl acetate copolymers, polyurethanes, polyamides, polyolefins, polystyrene, vinyl chloride-acrylonitrile copolymers, polyesters and the like . . . , and the microbiocide includes copper 8-hydroxyquinolate” (id. at 3-4). The Examiner relies on Gavin for teaching “composite biocidal particles wherein the biocide includes copper particles . . . and a surfactant” (id. at 4). The Examiner relies on Beerse for teaching that “benzoic acid analogs, such as benzoic acid and salicylic acid, have antiviral and antimicrobial activity” (id.). The Examiner concludes that it would have been obvious “to prepare the solid compositions of Rei et al. comprising thermoplastic resin and microbiocide, wherein the microbiocide comprises metallic copper powder, surfactant and benzoic acid or salicylic acid, as reasonably taught by Gavin et al. and Beerse et al.” (id.). Appellant argues that “there is no disclosure in any cited references that the surface of a solid material is coated with the copper ion-producing composition which contain[s] metallic copper powder with an average particle size of not more than 40 micron” (App. Br. 18). In particular, Appellant argues that Rei’s “homogeneously mixed pellets [are] clearly different from coated pellets” (id.). We agree with Appellant that the Examiner has not set forth a prima facie case that the applied references teach or suggest a composition “wherein the surface of a solid material comprising said poorly water- soluble material is coated with the copper ion-producing composition,” as Appeal 2011-009389 Application 11/372,103 4 recited in claim 13. The Examiner acknowledges that Rei teaches “a homogeneous mixture” (Ans. 3), and neither acknowledges that this is a difference from the claimed invention (id. at 4-5) nor explains why the claimed invention would nevertheless have been obvious (id. at 5). We therefore reverse the obviousness rejection of claim 13 and of claim 18, which depends from claim 13. REVERSED cdc