Ex Parte Koenig et al

Patent Trial and Appeal Board

Nov 28, 2016

13269922 (P.T.A.B. Nov. 28, 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.
64795892US01 1098
EXAMINER
CABRAL, ROBERT S
ART UNIT PAPER NUMBER
1618
MAIL DATE DELIVERY MODE
13/269,922 10/10/2011
23556 7590 11/29/2016
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI54956
David William Koenig
11/29/2016 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 VONGSA1
Appeal 2014-009902
Application 13/269,922
Technology Center 1600
Before FRANCISCO C. PRATS, ULRIKE W. JENKS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to a hydrogen
peroxide-containing composition that has durable antimicrobial activity.
Examiner rejected the claims for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants state that the “real party in interest is Kimberly-Clark
Worldwide, Inc., the assignee of record.” Br. 1.
Appeal 2014-009902
Application 13/269,922
STATEMENT OF THE CASE
The following rejections are before us for review:
(1) Claims 1—13, under 35 U.S.C. § 103(a), for obviousness over
Scholz,2 Hofmann,3 and Kinder4 (Final Action 2; Non-Final Action 2—6);5
and
(2) Claim 14, under 35 U.S.C. § 103(a), for obviousness over Scholz,
Hofmann, Kimler, and Snyder6 (Final Action 3—7).
Claim 1, the sole independent claim on appeal, is representative and
reads as follows (Br. 10):
1. A composition having durable antimicrobial activity
comprising:
a carbonate/bicarbonate salt of a quaternary ammonium cation;
an organic acid;
a surfactant selected from cationic surfactants, non-ionic
surfactants, zwitterionic surfactants, and combinations thereof;
hydrogen peroxide; and
a polymer selected from cationic amine polymer-
epichlorohydrin adduct, cationic amine polymer-epichlorohydrin
resin, poly(methacrylamidopropyltrimethylammonium) chloride,
poly(bis(2-chloroethyl)ether-alt-l,3-bis(dimethylamino)propyl)urea,
poly(diallyldimethylammonium) chloride, poly(t-butyl acrylate co­
ethyl acrylate co-methacrylic acid), polyethylene oxide,
polyquatemium-16, polyquatemium-22, polyquatemium-67, and
combinations thereof,
wherein the composition is liquid at room temperature,
2 Matthew T. Scholz et al., US 2009/0226541 A1 (published Sept. 10, 2009).
3 Gerald R.A. Hofmann et al., US 2010/0240799 Al (published Sept. 23,
2010).
4 Joseph Kimler and Michael Chiang, US 2009/0004287 Al (published Jan.
1,2009).
5 Final Action entered November 19, 2013; Non-Final Action entered March
19, 2013.
6 Marcia Snyder et al., US 2007/0184013 Al (published Aug. 9, 2007).
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Application 13/269,922
wherein the composition comprises from 67% by weight to
98% by weight of a polar carrier solvent.
OBVIOUSNESS
The Examiner’s Position
The Examiner cited Scholz as describing a liquid antimicrobial
composition containing the organic acid, surfactant, hydrogen peroxide,
polymer, and polar solvent required by Appellants’ claim 1, as well as a
quaternary ammonium salt. Non-Final Action 3^4.
The Examiner found, however, that Scholz differs from claim 1 in that
Scholz “does not expressly teach a carbonate/bicarbonate salt of a
quaternary ammonium cation.” Id. at 4. To address that deficiency, the
Examiner cited Hofmann as disclosing, in antimicrobial compositions, the
use of certain carbonate/bicarbonate salts of quaternary ammonium
compounds as “suitable fast-acting antimicrobial agents.” Id. at 5 (quoting
Hofmann 143).
The Examiner also found that, “[wjhile teaching and/or suggesting
generally a combination of antimicrobial agents including quaternary
ammonium salts and hydrogen peroxide, neither Scholtz [sic] nor Hoffman
discloses a specific combination of antimicrobial agents comprising a
carbonate/bicarbonate salt of a quaternary ammonium cation and hydrogen
peroxide.” Id.
The Examiner cited Kimler as evidence of the suitability of combining
a carbonate/bicarbonate salt of a quaternary ammonium cation and hydrogen
peroxide, and of the stability of that combination of ingredients in an
antimicrobial composition. Id. at 5—6.
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Based on the references’ teachings, the Examiner concluded that an
ordinary artisan would have considered it obvious to “combine the teachings
of Scholtz [sic] and Hofmann because both references teach antibacterial
compositions having a broad spectrum of antimicrobial activity comprising
quaternary ammonium compounds and polymers that are useful to prevent
infections by application of the antibacterial compositions to surfaces.”
Non-Final Action 6 (citing In re Kerkhoven, 626 F.2d 846, 850 (CCPA
1980) (“It is prima facie obvious to combine two compositions each of
which is taught by the prior art to be useful for the same purpose, in order to
form a third composition to be used for the very same purpose. . . . [T]he
idea of combining them flows logically from their having been individually
taught in the prior art.”)).
The Examiner reasoned that motivation for combining the references
and a reasonable expectation of success would have been found in
Hofmann’s teaching that ammonium quaternary compounds “are fast-acting
antimicrobial agents and that its composition ‘is optimized to provide the
desired biocidal rates without significant build-up.’” Non-Final Action 6
(quoting Hofmann | 8).
The Examiner reasoned further that an ordinary artisan would have
found motivation and a reasonable expectation of success
to incorporate decyloctyldimethylammonium
carbonate/bicarbonate with hydrogen peroxide as taught by
Hoffman in view of Kimler et al.’s express teaching that such a
combination of antimicrobials “make a highly effective
disinfectant which is chemically stable and noncorrosive to
metals.” Para. [0006]. Here, too, such properties would be
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Application 13/269,922
desirable in an antimicrobial compositions intended for
application to metal catheters.
Id.
Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
Appellants’ arguments do not persuade us that a preponderance of the
evidence fails to support the Examiner’s conclusion of obviousness as to
representative claim 1.
Appellants contend initially that Scholz does not suggest the
combination of ingredients recited in claim 1, because Scholz teaches that its
compositions desirably have a high viscosity, of at least 500 centipoise,
whereas including water within the range of 67% to 98% recited in claim 1
would yield a composition with a viscosity below that desired by Scholz.
Br. 2—3 (citing Scholz || 28—20, 315, and 316).
We are not persuaded. Claim 1 does not limit the carrier solvent to
water, but instead encompasses 67% to 98% of any “polar carrier solvent.”
Br. 10. As the Examiner points out (Non-Final Action 4; Final Action 3^4;
Ans. 2), Scholz discloses that, in a preferred embodiment, C1-C4 alcohols
may be present in its composition at concentrations up to 90%. See Scholz
1240 (“In a preferred embodiment the (Cl—C4)alcohols are present in a total
amount of no greater than 90 wt-% . . . .”).
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Appellants do not dispute that Scholz’s preferred alcohols are polar
carrier solvents encompassed by claim 1. Moreover, we note that the
Examiner cited Scholz’s Examples 56—58 (Non-Final Action 3^4 (citing
Scholz 1445)), each of which contains over 90% water by weight (Scholz |
446 (Table 14)). Thus, irrespective of whether Scholz teaches that its
compositions desirably have a high viscosity (which can be provided by a
thickener system that claim 1 does not exclude), it nevertheless teaches
water could be included in the composition within the range of polar carrier
solvent required by claim 1. We are, therefore, not persuaded that Scholz
fails to suggest concentrations of a polar carrier encompassed by claim 1.
We acknowledge, but are not persuaded by, Appellants’ arguments
that hydrogen peroxide would not have been expected to be stable in the
presence of a carbonate/bicarbonate salt of a quaternary ammonium cation.
See Br. 3—5. In particular, we acknowledge Appellants’ assertion that they
“discovered that the carbonate/bicarbonate salt (anion) of the quaternary
ammonium cation is neutralized by the addition of the organic acid to the
‘quaternary ammonium cation’ prior to the addition of the hydrogen
peroxide to the ‘quaternary ammonium cation’.” Id. at 3.
As the Examiner points out, however, Kimler discloses that “biocidal
quaternary ammonium carbonates and bicarbonates, more specifically,
benzylalkyl- or dialkyldimethylammonium salts containing either carbonate,
bicarbonate, or a combination thereof, as the anion, used in combination
with hydrogen peroxide make a highly effective disinfectant which is
chemically stable and non-corrosive to metals.'1'’ Kimler 17 (emphasis
added). Thus, contrary to Appellants’ contentions, rather than suggesting
that those ingredients would be unstable when combined, the references
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Application 13/269,922
cited by the Examiner not only suggest combining them, but also suggest
including the resulting combination in antimicrobial compositions, as the
Examiner posited.
It might be true, as Appellants argue (Br. 4 (citing Hofmann 143)),
that the chelated peroxide compounds or the pyrophosphate matrix-
stabilized peroxides mentioned in Hofmann would not have stabilized
peroxide in the presence of carbonate/bicarbonate ions. It might also be
true, as Appellants argue (Br. 4—5 (citing Hofmann 143)) that Hofmann
included hydrogen peroxide and n,n-dialkyl-n,n-dimethyl ammonium
bicarbonate/carbonate in a longer list of potentially reactive components.
Appellants do not explain persuasively, however, how or why those
disclosures undercut Kimler’s express teaching, noted above, of the
desirability of combining hydrogen peroxide with the specific
carbonate/bicarbonate quaternary ammonium cations disclosed in that
reference, or Kimler’s teaching that the resulting product was chemically
stable.
Nor do Appellants advance evidence sufficient to undermine Kimler’s
direct teaching that combining hydrogen peroxide with benzylalkyl- or
dialkyldimethylammonium salts containing either carbonate, bicarbonate, or
a combination thereof, produces a highly effective and chemically stable
disinfectant. To that end, Appellants advance a comparison between Table
A (asserted to show the stability of Kimler’s compositions) and Table B
(asserted to show the stability of compositions encompassed by Appellants’
claims). See Br. 5—6. Based on the data in the tables, Appellants contend:
The extrapolated Kimler data of Table A demonstrates that a
Q:HP [ratio of quaternary ammonium compound to hydrogen
peroxide] of 1.5 corresponds to a loss of 24.35% after a one
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Application 13/269,922
month exposure to an environmental temperature of 40 [°]C. In
stark contrast, the Table B demonstrates that a Q:HP of 1.5
corresponds to a maximum loss of only 2.89%, about eight
times less than the decomposition shown by Kimler. Likewise,
limited data shows that after a one month exposure to room
temperature conditions, Kimler shows at least a 7.17% loss,
whereas the present invention shows a 0% loss.
Id. at 6.
Appellants argue that, based on the data shown in Tables A and B, the
mixture of the claimed composition “is far more ‘chemically stable’ than
Kimler’s. As such, Kimler would not lead one skilled in the art to
incorporate decyloctyldimethylammonium carbonate/bicarbonate with
hydrogen peroxide because there is no reason to expect that such a
combination would be durable enough to kill bacteria for several months.”
Br. 6.
We are not persuaded. We first note that representative claim 1 does
not require the claimed compositions to have any particular degree of
stability. Thus, that Kimler’s compositions might have exhibited a small
loss of hydrogen peroxide activity after one month at room temperature does
not demonstrate that compositions having the stability disclosed by Kimler
are excluded by claim 1.
Appellants, moreover, do not direct us to any persuasive evidence
suggesting that an ordinary artisan would have considered compositions with
the stability disclosed in Kimler to be unsuitable for use as antibacterial
compositions, or that the stability disclosed in Kimler would be considered
unacceptable for antibacterial formulations. Appellants do not, therefore,
persuade us that Kimler failed to provide an adequate reason for combining
decyloctyldimethylammonium carbonate/bicarbonate with hydrogen
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Application 13/269,922
peroxide to produce the highly effective disinfectant taught by Kimler,
having the chemical stability also taught in that reference.
Appellants contend that “[i]n light of the cited art, the present
invention yields unpredictable results.” Br. 6.
Although we acknowledge that certain embodiments encompassed by
Appellants’ claim 1 appear to exhibit a superior retention of hydrogen
peroxide over time as compared to Kimler’s compositions, “any superior
property must be unexpected to be considered as evidence of non­
obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir.
2007). In the present case, we note that the assertion of unpredictability by
Appellants’ counsel, quoted above, is the only assertion on the current
record that the improvement over Kimler based on the comparison of Tables
A and B is unexpected. It is well settled, however, that argument by counsel
is not an adequate substitute for evidence regarding a showing of unexpected
results. See In re Geisler, 116 F.3d 1465, 1470—71 (Fed. Cir. 1997).
In sum, for the reasons discussed, Appellants do not persuade us that
the Examiner erred in concluding that the composition recited in
representative claim 1 would have been prima facie obvious to an ordinary
artisan. For the reasons discussed above, Appellants do not persuade us that
they have advanced secondary evidence of nonobviousness sufficient to
outweigh the evidence of prima facie obviousness. Accordingly, we affirm
the Examiner’s rejection of claim 1 over Scholz, Hofmann, and Kimler.
Because they were not argued separately, claims 2—13 fall with claim 1. 37
C.F.R. §41.37(c)(l)(iv).
In rejecting claim 14, which depends from claim 1, over Scholz,
Hofmann, Kimler, and Snyder, the Examiner relied on Scholz, Hofmann,
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Application 13/269,922
and Kimler for the disclosures discussed above, and cited Snyder as
evidence that it would have been obvious to use polyquatemium-16 or
polyquatemium-22 as the polyquatemium polymer in the antibacterial
composition suggested by Scholz and Hofmann. Final Action 3—7.
Appellants contend that, “even if one arguendo combined the
references cited by the Examiner, there is simply no disclosure that such a
combination would be effective in light of the Kimler reference.” Br. 8.
For the reasons discussed above, Appellants do not persuade us that
the Kimler reference fails to demonstrate that combining
decyloctyldimethylammonium carbonate/bicarbonate with hydrogen
peroxide would produce the highly effective disinfectant taught by Kimler,
having the chemical stability also taught in that reference. Accordingly,
because Appellants’ arguments do not demonstrate, nor do we discern, error
in the Examiner’s rejection of claim 14 over Scholz, Hofmann, Kimler, and
Snyder, we affirm the Examiner’s obviousness rejection of that claim over
those references.
SUMMARY
For the reasons discussed, we affirm the Examiner’s rejection of
claims 1—13, under 35 U.S.C. § 103(a), for obviousness over Scholz,
Hofmann, and Kimler.
For the reasons discussed, we also affirm the Examiner’s rejection of
claim 14, under 35 U.S.C. § 103(a), for obviousness over Scholz, Hofmann,
Kimler, and Snyder.
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TIME PERIOD
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
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