Ex Parte KOENIG et al

Patent Trials and Appeals Board

Mar 1, 2016

13269931 - (D) (P.T.A.B. Mar. 1, 2016)

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.
13/269,931 10/10/2011 DAVID WILLIAM KOENIG 64795892US02 7484
23556 7590 03/01/2016
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
ALAWADI, SARAH
ART UNIT PAPER NUMBER
1619
MAIL DATE DELIVERY MODE
03/01/2016 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 DAVID WILLIAM KOENIG, JEREMY DAVID PAULSEN,
COREY THOMAS CUNNINGHAM, and REBECCA ANN VONGSA
__________

Appeal 2013-006672
Application 13/269,931
Technology Center 1600
__________

Before JEFFREY N. FREDMAN, JACQUELINE T. HARLOW, and
RICHARD J. SMITH, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a
composition having durable antimicrobial activity. The Examiner rejected
the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

1 Appellants identify the Real Parties in Interest as Kimberly-Clark
Worldwide, Inc. (see App. Br. 1).
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Application 13/269,931

2
Statement of the Case
Background
“The public health impact of the undesired spread of microorganisms
is significant . . . . Therefore, it is desirable to be able to prevent or inhibit
microbial presence/growth on targeted surfaces” (Spec. 2, ll. 5–9).
The Claims
Claims 1–16 and 22–24 are on appeal. Independent claim 1 is
representative and reads as follows:
1. A composition having durable antimicrobial activity
comprising:
a carbonate/bicarbonate salt of a quaternary
ammonium cation;
an organic acid;
hydrogen peroxide;
a surfactant selected from cationic surfactants, non-
ionic surfactants, zwitterionic surfactants, and combinations
thereof; and
a cationic polymer that includes a (3-
acrylamidopropyl) trimethylammonium chloride monomer
combined with another monomer selected from a polar,
water-soluble monomer, a hydrophobic, silicone-containing
monomer, and combinations thereof.

The Issues2
A. The Examiner rejected claims 1, 2, 4, 5, 7–12, 14, and 16 under
35 U.S.C. § 103(a) as obvious over Runge,3 Walker,4 and Romano5 (Final
Act. 5–9).

2 The double patenting rejections were mooted by terminal
disclaimers (see Reply Br. 1) that were approved (see Terminal
Disclaimer Review Decision, Apr. 29, 2013).
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B. The Examiner rejected claims 3, 15, 22, and 24 under 35 U.S.C.
§ 103(a) as obvious over Runge, Walker, Romano, and Salamone6 (Final
Act. 9–11).
C. The Examiner rejected claims 13 and 23 under 35 U.S.C. § 103(a) as
obvious over Runge, Walker, Romano, Salamone, and Martin7 (Final Act.
11–13).
D. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as obvious
over Runge, Walker, Romano, and Mohammadi8 (Final Act. 13–14).

A. 35 U.S.C. § 103(a) over Runge, Walker, and Romano
The Examiner finds that Runge teaches each of the components
required by the claims other than “the incorporation of
dioctyldimethylammonium carbonate” (Final Act. 6). The Examiner finds
that Walker suggests “C8 to C20 alkyl quaternary ammonium carbonate and
bicarbonate compositions” that “are useful as biocides” (Final Act. 7). The
Examiner finds that Romano teaches that “quaternary ammonium cations
(salts) include ranges of 0.4 up to 25% by weight” (Final Act. 8).
The Examiner finds that because “both the quaternary ammonium
carbonate compounds and hydrogen peroxide were known in the art to be
useful antimicrobial agents, it would have been well within the purview of

3 Runge et al., US 2006/0003649 A1, published Jan. 5, 2006.
4 Walker, L., US 5,438,034, issued Aug. 1, 1995.
5 Romano et al., WO 98/54279 A1, published Dec. 3, 1998.
6 Salamone et al., US 2007/0129474 A1, published June 7, 2007.
7 Martin et al., US 2009/0155327 A1, published June 18, 2009.
8 Mohammadi et al., US 2008/175919 A1, published July 24, 2008.
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one of ordinary skill in the art to include a combination of antimicrobials”
(Ans. 7).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Runge, Walker, and Romano
render claim 1 obvious?
Findings of Fact
1. The Specification teaches that:
The durable antimicrobial composition are stable; the
stability of the compositions is reflected by the compositions
maintaining their efficacy during shelf-life studies. For
example, the compositions remain effective (meaning, they
have the same level of durability to effect a log 2 reduction
in organisms after twenty-five insults of 106 organisms) after
storage for three months at 40°C

(Spec. 4, ll. 28–32).
2. Runge teaches that the “wet wipe of the present invention acts
as a vehicle to deliver these anti-microbial or pharmaceutical or treatment
agents to the skin or mucosa” (Runge ¶ 92).
3. Runge teaches that “[s]uitable antiseptic agents for use in the
wetting composition of the present invention include, for example,
quaternary ammonium compounds . . . . Additional suitable antiseptic agents
for use in the wetting composition of the present invention include . . .
hydrogen peroxide” (Runge ¶ 98).
4. Runge teaches that “[s]uitable natural broad spectrum anti-
microbial agents include . . . folic acid” (Runge ¶ 102) and that “[s]uitable
odor control additives for use in the wetting composition and wet wipes of
the present invention may include . . . citric acid” (Runge ¶ 115).
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5. Runge teaches that “[e]xamples of anionic or acidic monomers
that may be copolymerized into the backbone of the polymers and polymer
formulations may include . . . (3-acrylamidopropyl) trimethyl ammonium
chloride” (Runge ¶ 34).
6. Walker teaches that “Di C8–C12 alkyl quaternary carbonate
compositions, including those prepared by the method of the present
invention, are particularly useful in wood preservative systems, as
surfactants and as biocides” (Walker, col. 1, ll. 24–28).
7. Romano teaches “the use, in a composition, of a peroxygen
bleach and an antimicrobial essential oil or an active thereof or mixture
thereof, for long lasting disinfection on a surface” (Romano 3, ll. 22–24).
8. Romano teaches that “the compositions according to the present
invention comprise up to 50% by weight of the total composition of a
surfactant, or mixtures thereof, preferably from 0.3 % to 30 % . . . .
Particularly suitable anionic surfactants for use herein include . . . quaternary
ammonium cations” (Romano 8, ll. 10–20).
Principles of Law
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the [S]pecification.” In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000).
“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’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
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Analysis
We begin with claim interpretation because before a claim is properly
interpreted, its scope cannot be compared to the prior art. In this case, the
dispute centers over the term “durable” in claim 1.
While the Specification discusses “durable” compositions as “stable”
(FF 1), in the absence of a definition of the term “durable,” it “is improper to
‘confin[e] the claims to th[e] embodiments’ found in the specification.” In
re Trans Texas Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007).
While Appellants have basis to incorporate specific limitations regarding the
term “durable” in the Specification, they did not choose to do so in claim 1,
instead relying upon a term of degree without any specific required value for
“durable.” Datamize teaches that the “scope of claim language cannot
depend solely on the unrestrained, subjective opinion of a particular
individual purportedly practicing the invention.” Datamize, LLC v.
Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005). Here, the
term “durable” would be subject to such subjectivity, and we therefore
interpret it broadly to encompass any degree of durability.
Appellants contend that “[h]ydrogen peroxide would not be expected
to be stable in the presence of carbonate/bicarbonate salts. Appellants are
unaware of any prior art composition that contains stabilized hydrogen
peroxide in combination with a carbonate/bicarbonate salt” (App. Br. 5).
The Examiner responds that “Appellants have provided no factual
evidence to show that the combination would not work” (Ans. 5).
We find that the Examiner has the better position. The Examiner has
established a prima facie case of obviousness, demonstrating the presence of
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each claimed element in the prior art compositions of Runge, Walker, and
Romano (FF 8) and provided a legally sound basis for combining the biocide
of Walker with the antimicrobials of Runge (see Ans. 7).
In rebuttal, Appellants have provided no evidence, whether in
documentary or declaration form, that the combination of Runge and Walker
would have been expected to be unstable. See In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997) (“[A]ttorney argument [is] not the kind of factual
evidence that is required to rebut a prima facie case of obviousness”).
Moreover, because Appellants’ claims do not provide any specific degree of
stability that is required to be “durable,” even if we agreed that there was a
concern regarding the stability of a combination of a bicarbonate surfactant
and hydrogen peroxide, the claims do not provide a principled limitation that
serves to distinguish between a very stable composition and a less stable
composition. Instead, claim 1 encompasses compositions with any degree of
stability. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (“[D]uring
patent prosecution when claims can be amended, ambiguities should be
recognized, scope and breadth of language explored, and clarification
imposed. . . . An essential purpose of patent examination is to fashion
claims that are precise, clear, correct, and unambiguous. Only in this way
can uncertainties of claim scope be removed, as much as possible, during the
administrative process.)
Appellants make “reference to the unexpected result made possible by
this formulation technique as a reason why one of skill in the art would not
expect to successfully provide stabilized hydrogen peroxide in the presence
of a carbonate/bicarbonate salt” (App. Br. 6).
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We find this argument unpersuasive because Appellants do not
identify any factual basis demonstrating the asserted unexpected result. See
In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (“It is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements . . . [do] not suffice.”) In addition, the
compositions were not compared with the closest prior art of Runge. See In
re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.”).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Runge, Walker, and Romano render claim 1 obvious.

B.-D. 35 U.S.C. § 103(a)
Appellants do not argue separately the claims in these obviousness
rejections. Having affirmed the obviousness rejection over Runge, Walker,
and Romano for the reasons given above, we also find that the further
obvious combinations with B. Salamone, C. Salamone and Martin, and D.
Mohammadi render the remaining claims obvious for the reasons given by
the Examiner (see Final Act. 9–14).
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SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C. §
103(a) as obvious over Runge, Walker, and Romano. Claims 2, 4, 5, 7–12,
14, and 16 fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
We affirm the rejection of claims 3, 15, 22, and 24 under 35 U.S.C.
§ 103(a) as obvious over Runge, Walker, Romano, and Salamone.
We affirm the rejection of claims 13 and 23 under 35 U.S.C. § 103(a)
as obvious over Runge, Walker, Romano, Salamone, and Martin.
We affirm the rejection of claim 6 under 35 U.S.C. § 103(a) as
obvious over Runge, Walker, Romano, and Mohammadi.

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