Ex Parte Lange et al

Patent Trial and Appeal Board

Aug 18, 2014

12792142 (P.T.A.B. Aug. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte STEVEN J. LANGE and JUNZHONG LI
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Appeal 2013-003341
Application 12/792,142
Technology Center 1700
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Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
KAREN M. HASTINGS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1, 3, 5, 6, 8–11, 16–19, and 23
as unpatentable over Gutzmann et al. (US 6,183,807 B1, patented Feb. 6,
2001) in view of Dahms et al. (US 5,911,981, patented June 15, 1999) and
Wang (US 4,404,040, patented Sept. 13, 1983) as evidenced by Wallace (US
2,833,813, patented May 6, 1958). We have jurisdiction under 35 U.S.C.
§ 6.

We AFFIRM.
Appeal 2013-003341
Application 12/792,142

2
Appellants claim a composition comprising surfactant
peroxycarboxylic acid comprising octyliminodiproprionate
peroxycarboxylic acid and carboxylic acid surfactant comprising
octyliminodiproprionate, "wherein the composition is substantially free of a
short chain carboxylic acid and a short chain peroxycarboxylic acid" (claim
1). Appellants also claim a method of reducing population of
microorganism on an object comprising contacting the object with such a
composition (claim 23).

A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A composition comprising:
about 0.0005 to about 15 wt-% surfactant peroxycarboxylic acid
comprising octyliminodiproprionate peroxycarboxylic acid;
about 0.0005 to about 40 wt-% carboxylic acid surfactant comprising
octyliminodiproprionate; and
about 0.001 to about 80 wt-% of an inorganic acidulant, wherein the
composition is substantially free of a short chain carboxylic acid and a short
chain peroxycarboxylic acid.

Appellants do not separately argue the rejected claims (see Br. 12–
15). Therefore, the claims will stand or fall with representative claim 1.

We sustain the above rejection based on the findings of fact,
conclusions of law, and rebuttals to arguments expressed by the Examiner in
the Final Office Action and in the Answer. The following comments are
added for emphasis.

Appeal 2013-003341
Application 12/792,142

3
Gutzmann discloses an antimicrobial composition comprising
carboxylic acids and peroxycarboxylic acids wherein the acids may be short
chain (i.e., C2-C4) acids as well as longer chain acids (see, e.g., Abst., col. 7,
ll. 12–30). The Examiner concludes that it would have been obvious to
modify the Gutzmann composition so as to be substantially free of short
chain acids and thereby limited to longer chain (i.e., C6-C14) acids in view
of Wang (FOA 3–4, Ans. 6–7).

Appellants do not dispute that Wang teaches an antimicrobial
composition containing fatty acids which are C6-C14 fatty acids but argue
that Wang fails to teach excluding short chain acids (Br. 12). Appellants
clarify this argument by contending that "[s]imply because a reference is
silent as to the inclusion of an ingredient does not mean the reference has
taught excluding the ingredient" (id.).

We perceive no convincing merit in Appellants' argument. As
correctly indicated by the Examiner (Ans. 10–11), the undisputed fact that
the fatty acids of Wang's composition are C6-C14 fatty acids, not C2-C4
fatty acids, would have suggested modifying the Gutzmann composition so
as to be substantially free of short chain C2-C4 acids in accordance with the
Examiner's above obviousness conclusion. That is, the combined teachings
of Gutzmann and Wang evince that it would have been obvious to limit the
peroxycarboxylic and carboxylic acids of Gutzmann's composition to longer
chain acids based on a reasonable expectation that such longer chain acids
would be successful antimicrobial agents. Furthermore, this conclusion is
reinforced by Gutzmann's teaching that large chain peroxycarboxylic acids
Appeal 2013-003341
Application 12/792,142

4
(e.g., peroxyoctanoic acid) provide good antimicrobial action (col. 7, ll. 12–
22) and that including small chain (i.e., C2-C4) peroxycarboxylic acids with
large chain (i.e., C8-C12) peroxycarboxylic acids is merely a preference
(i.e., not a requirement) (id. at ll. 25–27).
Finally, we emphasize that the Examiner's proposed modification of
Gutzmann would yield a composition which is substantially free of both
short chain carboxylic acid and short chain peroxycarboxylic acid for the
reason fully explained by the Examiner (FOA para. bridging 3–4, Ans. para.
bridging 6–7). In the record of this appeal, Appellants do not address and
therefore do not reveal error in the Examiner's reasoning.

The decision of the Examiner is affirmed.
TIME PERIOD FOR RESPONSE
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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