Ex Parte Ming et al

Patent Trial and Appeal BoardSep 20, 2012

11389824 (P.T.A.B. Sep. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte XINTIAN MING and STEPHEN J. ROTHENBURGER ____________ Appeal 2011-009457 Application 11/389,824 Technology Center 1600 ____________ Before TONI R. SCHEINER, DONALD E. ADAMS, and FRANCISCO C. PRATS, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims 1, 2, 4-6, 8-13, 15- 17, and 19-24 (App. Br. 2; Ans. 2). We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE CASE The claims are directed to an antimicrobial composition (claims 1, 2, 4-6, 8-11, and 21) and a medical device (claims 12, 13, 15-17, 19, 20, and 22-24). Claims 1 and 12 are representative and are reproduced in the Claims Appendix of Appellants’ Brief. Appeal 2011-009457 Application 11/389,824 2 Claims 1, 2, 4-6, 8-13, 15-17, and 19-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Beltran 1 and Kamal. 2 Claims 1, 2, 6, 10-13, and 17 stand provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 4-6 and 10-12 of copending Application No. 11/133,007. We affirm the rejection of claims 1, 2, 4-6, 8-11, and 21 under 35 U.S.C. § 103(a). We reverse the rejection of claims 12, 13, 15-17, 19, 20, and 22-24 under 35 U.S.C. § 103(a). Appellants do not contest the provisional obviousness-type double patenting rejection (App. Br. 2). Therefore, we summarily affirm, and will not further discuss, this rejection. See MANUAL OF PATENT EXAMINING PROCEDURE § 1205.02 (“If a ground of rejection stated by the examiner is not addressed in the appellant's brief, that ground of rejection will be summarily sustained by the Board.”). ISSUE Does the preponderance of evidence on this record support a conclusion of obviousness? 1 Beltran et al., US 7,196,117 B2, issued March 27, 2007. 2 Gagan D. Kamal et al., Reduced Intravascular Catheter Infection by Antibiotic Bonding: A Prospective, Randomized, Controlled Trial, 265(18) JAMA 2364-2368 (1991). Appeal 2011-009457 Application 11/389,824 3 FACTUAL FINDINGS (FF) FF 1. Beltran suggests an antimicrobial composition comprising a cationic surfactant that falls within the scope of Appellants’ claimed cationic surfactant and “common antimicrobials” (Beltran, col. 1, ll. 8-11 and col. 2, ll. 3-35 and 52-56; Ans. 3-4). FF 2. Examiner finds that Beltran fails to suggest a composition comprising the specific antibiotics set forth in Appellants’ claims (Ans. 4). FF 3. While Examiner does not expressly state that Beltran fails to suggest a medical device, Examiner implies that Beltran fails to suggest this component of Appellants’ claimed invention (see id.). FF 4. Kamal suggests “[c]atheters pretreated with the cationic surfactant tridodecylmethylammonium chloride (TDMAC) enable subsequent bonding of anionic antibiotics (cephalosporins[, such as cefazolin] and penicillins)” (Kamal 2364: col. 2, ll. 23-27; Ans. 4). FF 5. “[E]xaminer acknowledges that … Appellants have shown synergistic combinations, for [the cationic surfactant] lauric arginate ethyl ester with the specific antibiotics cefazolin, polymixin B, and levofloxazin, at specific concentrations” (Ans. 8; see also Spec. 10: Table 1). FF 6. Examiner finds that Appellants’ “claims are directed to the composition comprised of [a cationic surfactant that includes] lauric arginate ethyl ester and a much broader variety of antibiotics, at any concentration range” (id.). ANALYSIS Based on the combination of Beltran and Kamal Examiner concludes that, at the time Appellants’ invention was made, it would have been prima Appeal 2011-009457 Application 11/389,824 4 facie obvious to use cefazolin as suggested by Kamal with Beltran’s cationic surfactant (see generally Ans. 4-5). Appellants provide separate arguments for the following groups of claims: (I) 1, 2, 4-6, 8-11, and 21 and (II) 12, 13, 15-17, 19, 20, and 22-24. Claims 1 and 12 are representative. 37 C.F.R. § 41.37(c)(1)(vii). Claim 1: Appellants contend that Beltran’s suggestion of topical cosmetic preparations, wherein specific antimicrobial agents are identified, is non- analogous to Kamal’s suggestion of a catheter coated with TDMAC wherein cefazolin is bonded to the TDMAC (App. Br. 9-10). According to Appellants, a person of ordinary skill in this “art would not have been motivated to modify [or have had a reasonable expectation of success in modifying] reference teachings as to topical, cosmetic preparations … with materials disclosed for intravascular uses” (id. at 10). We are not persuaded. Beltran suggests a composition comprising (1) a cationic surfactant within the scope of Appellants’ claimed invention and (2) a common antimicrobial (FF 1). As Appellants recognize, Beltran exemplifies several common antimicrobials but fails to expressly identify an antimicrobial that falls within the scope of Appellants’ claimed invention (App. Br. 9; FF 2). Kamal, however, suggests a combination of a cationic surfactant and cephalosporins, such as cefazolin, or penicillins (FF 4). There is no evidence on this record to suggest that cephalosporins or penicillins are not “common antimicrobials” as that term is used in Beltran (see FF 1). Accordingly, we find no error in Examiner’s conclusion that it would have been prima facie obvious to one of ordinary skill in this art to utilize Appeal 2011-009457 Application 11/389,824 5 Kamal’s antimicrobial, e.g., cephalosporins or penicillins in Beltrans’ composition comprising a cationic surfactant. For the reasons set forth by Examiner, we are not persuaded by Appellants’ unexpected results, which are not commensurate in scope with claim 1 (see FF 5-6). Claim 12: Appellants contend that Kamal suggests “bonding cefazolin to polyethylene tubing through a cationic surfactant TDMAC” (App. Br. 13). We agree (FF 4). Appellants contend that TDMAC has an “entirely different … chemical structure” than Beltran’s cationic surfactant and, therefore, there was no expectation that Beltran’s cationic surfactant would be capable of performing the function of Kamal’s cationic surfactant to bond cephalosporins or penicillins to a catheter (App. Br. 13-15). Examiner recognizes Appellants’ contention, but asserts only that Beltran’s cationic surfactant would have been expected “to enhance the activity of structurally different antimicrobial agents” (Ans. 7-8). Examiner’s assertion fails to rebut Appellants’ contention that there was no expectation in the art that Beltran’s structurally distinct cationic surfactant would be capable of bonding cephalosporins or penicillins to a catheter as is required by Kamal’s cationic surfactant (see App. Br. 13-15). In sum, Examiner failed to establish an evidentiary basis on this record to rebut Appellants’ contention. Therefore, we are compelled to reverse the rejection of claims 12, 13, 15-17, 19, 20, and 22-24, which are directed to a medical device. Appeal 2011-009457 Application 11/389,824 6 CONCLUSION OF LAW The preponderance of evidence on this record supports a conclusion of obviousness with regard to Appellants’ composition claims. The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over the combination of Beltran and Kamal is affirmed. Claims 2, 4-6, 8-11, and 21 are not separately argued and fall together with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). The preponderance of evidence on this record fails to support a conclusion of obviousness with regard to Appellants’ medical device claims. The rejection of claims 12, 13, 15-17, 19, 20, and 22-24 under 35 U.S.C. § 103(a) as unpatentable over the combination of Beltran and Kamal is reversed. 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-IN-PART cdc