Ex Parte Perry

Patent Trial and Appeal Board

Dec 21, 2018

14247303 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/247,303 04/08/2014
43463 7590 12/26/2018
Johnson & Martin, P.A.
500 West Cypress Creek Road
Suite 430
Fort Lauderdale, FL 33309
FIRST NAMED INVENTOR
Stephen C. Perry
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
57997-0097 6969
EXAMINER
BASQUILL, SEAN M
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
12/26/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@johnsonmartinlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN C. PERRY
Appeal2017-011015
Application 14/24 7,303 1
Technology Center 1600
Before ERIC B. GRIMES, RY ANH. FLAX, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
microbiocidal solution, which have been rejected as anticipated and as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
"Almost all surfaces can become subject to the growth of undesired
microbes." (Spec. ,r 9.) "Sanitizers traditionally are used to disinfect and
destroy pathogens." (Id. ,r 4.) "[O]xidizers are often used in sanitization."
(Id.) "[O]zone has been used for cleaning laundered products." (Id. ,r 9.)
"Chlorine is often used in disinfectants." (Id.) "[C]ertain combinations of
1 Appellant identifies the real party in interest as himself. (Appeal Br. 4.)
Appeal2017-011015
Application 14/247,303
ozone and chlorine increase disinfectant properties when used in
combination, rather than when used separately, against a variety of bacteria
including Staphylococcus aureus, Pseudomonas aeruginosa, and Candida
albicans." (Id.) "Products resulting from electrolysis of saline solutions are
generally known for their properties as in vitro microbiocides for hard
surfaces." (Id. ,r 10.) "The present invention provides a microbiocidal
solution with a chlorine species producible via electrolysis and ozone to
sanitize and disinfect a surface or substance." (Id. ,r 12.)
Claims 1--4, 6, 7, and 9-122 are on appeal. Claim 1 is representative
and reads as follows:
1. A surface-sanitizing and surface-disinfecting microbiocidal
solution comprising:
an electrolyzed saline solution;
ozone in a concentration of about 20 to about 200 milligrams
per liter (mg/L); and
active chlorine species, producible via electrolysis, in a
concentration of about 300 to about 1,000 parts per million
(ppm).
(Br. 20.)
The following grounds of rejection by the Examiner are before us on
review:
Claims 1--4, 6, 7, 9, 10, and 12 under 35 U.S.C. § 102(a)(l) as
anticipated by Morrow. 3
2 Claims 13-24 are also pending but stand withdrawn from consideration.
(Final Action 2.)
3 Robert E. Morrow, US 5,622,848, issued Apr. 22, 1997.
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Application 14/247,303
Claims 1--4, 6, 7, and 9-11 under 35 U.S.C. § 103 as obvious over
Gil 4 and Len. 5
Claim 12 under 35 U.S.C. § 103 as obvious over Gil, Len, Kim, 6 and
Al-Haq. 7
DISCUSSION
Anticipation
The Examiner finds that the claim preamble is not a separate claim
limitation because it is merely a "descriptive name" of the limitations in the
body of the claim that completely sets forth the invention, and that it is
merely duplicative of the limitations in the body of the claim. (Final Action
3--4.) The Examiner finds that Morrow teaches a composition that includes
an electrolyzed saline solution, ozone between 50-100 mg/L 8 and active
chlorine species in a concentration of from about 5-300 ppm. (Id. at 4.)
4 Gil et al., Fresh-cut Product Sanitation and Wash Water Disinfection:
Problems and Solutions, 134 Int'l J. Food Micro Biol., 37--45, (2009)
5 Len et al., "Effects of Storage Conditions and pH on Chlorine Loss in
Electrolyzed Oxidizing (EO) Water," 50 (1) J. Agric. Food Chem., 209-212
(2002).
6 Kim et al., Roles of Oxidation-reduction Potential in Electrolyzed
Oxidizing and Chemically Modified Water for the Inactivation of Food-
Related Pathogens, 63 (1) J. Food Prot., 19-24 (2000))
7 Al-Haq et al., Disinfection Effects of Electrolyzed Oxidizing Water on
Suppressing Fruit Rot of Pear Caused by Botryosphaeria berengeriana, 35
Food Res. Int'l, 657---664 (2002).
8 We note that the Examiner inadvertently indicated the units for ozone as
mg/ml. However, the cited passage the Examiner relies on clearly indicates
the units of measure for the ozone amount in the composition is mg/L. (Gil
6:42.)
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Application 14/247,303
The Examiner further finds that the compositions are "formed from 0.25-1 %
saline." (Id. at 5.)
We agree with the Examiner's factual findings and conclusion that
claim 1 is anticipated. We agree that the claim preamble here, simply
"defines a context in which the invention may operate" and does not
otherwise structurally distinguish the composition (Ans. 8-9). See Rowe v.
Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (preamble does not limit an
invention "where a patentee defines a structurally complete invention in the
claim body and uses the preamble only to state a purpose or intended use for
the invention."). The body of claim 1 recites a structurally complete
invention and deletion of the preamble language does not affect that
structure. Thus, Appellant's argument that Morrow does not teach its
composition is used for sanitizing and disinfecting surfaces (Br. 13), is not
persuasive. Appellant's additional argument that Morrow is not enabling
"because one of ordinary skill would not be able to create Appellant's
invention without undue experimentation because Morrow does not contain
any teaching or suggestion that its microbiocidal solution can be used to
disinfect and sanitize surfaces" (id.), is, likewise, not persuasive for the very
same reason.
Moreover, even if the preamble were to be given some weight, as the
Examiner noted (Ans. 9), Morrow discloses that "[t]he products resulting
from the electrolysis of saline solutions [have] long been known[,] as has the
fact that such solutions are in vitro microbicides for hard surfaces."
(Morrow 5: 59---61.) Thus, we do not agree that it would have taken undue
experimentation to use the disclosed composition of Morrow for surface
disinfection.
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Application 14/247,303
For the reasons discussed, we are not persuaded the Examiner erred in
rejecting claim 1 as being anticipated by Morrow.
Claims 2--4, 6, 7, 9, 10, and 12 have not been argued separately and
therefore fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
Obviousness
The Examiner finds that Gil teaches a composition of electrolyzed
oxidizing water containing free chlorine, hypochlorous acid, and
hypochlorite ion that are effective disinfectant solutions when containing
anywhere from 25-200 ppm. 9 (Final Action 6.) The Examiner notes that
Gil also teaches that it was known in the art that ozone containing aqueous
compositions are effective disinfectants even when ozone is present in 3 and
5 ppm. (Id.)
The Examiner relies on Len for its teaching that electrolyzed
oxidizing water (EOW) is produced through electrolysis of saline solutions.
(Id.) The Examiner further notes that Thanos teaches that electrolysis of
water inherently produces ozone. (Id.)
The Examiner notes that the claimed invention is the combination of
ozone and chloride ions whereas Gil teaches the use of these components
separately are effective to disinfect surfaces and are effective in lower
amounts. (Id. 6-7.) The Examiner explains that since Gil teaches that
compositions with these ingredients in lower amounts are active
disinfectants, one of ordinary skill in the art would have found it obvious to
9 The Examiner notes that 1 ppm is equivalent to 1 mg/Land that 25-200
mg/L, which is the unit of measure for the chloride ions as disclosed in Gil,
is the same thing as 25-200 ppm. (Final Action 6.)
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Application 14/247,303
combine the ingredients together with a reasonable expectation that the
composition would have disinfectant properties when combined together just
as they do when used separately. (Id. at 7-8.) Moreover, the Examiner
finds that it would have been obvious to arrive at amounts within the
claimed range using routine experimentation for optimum disinfection. (Id.)
The Examiner notes, in fact, that Gil teaches that it was known in the art that
microbial reduction increases as disinfectant product concentration
increases. (Ans. 9-10.)
Finally, the Examiner explains that in light of the teachings of Len of
preparing EOW from saline solution, one of ordinary skill in the art would
have found it obvious to have generate the ozonated water of Gil with such a
saline solution because that would also thereby result in the presence of the
chlorinated species. (Final Action at 8-9.)
We agree with the Examiner's factual findings and conclusion that
claim 1 would have been obvious from the teachings of Gil and Len. Gil
table 1 clearly teaches that it was known to use ozonated water and chloride
ions from sodium chloride as disinfectants. (Gil 39--40.) Moreover, Gil
clearly teaches that it was known in the art that microbial reduction increases
as concentration of disinfectant product increases. (Id. at 43 ("In general,
microbial reduction increases as both initial chlorine concentration and
water-to-product ratio increases.").) We further note that Gil states that "the
newest development in sanitizing technology" is simultaneously using two
or more oxidants. (Id. at 38.)
We note that Appellant does not dispute the Examiner's factual
findings regarding the disclosure of Gil and Len with respect to the known
use of chloride ions and ozone for disinfecting surfaces. We agree with the
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Examiner that it would have been obvious to combine ozonated water and
chloride ions in a single solution with a reasonable expectation of success in
achieving a disinfecting composition given Gil's teaching that each has been
used individually for the same purpose and in light of Gil's teaching that
using two or more oxidants simultaneously was being pursued in the
sanitizing technology. 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 which is 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.").
We further note that Appellant does not respond to the Examiner's
position in the answer that Gil teaches that it was known that as disinfectant
concentration increases it is more effective. Appellant contends simply that
the Examiner's rejection should be reversed for the reasons discussed in the
non-precedential decision of our reviewing court, In re Patel, 566 F. App'x
1005 (Fed. Cir. 2014), regarding the fact that Gil does not teach ranges of
ozone and chlorine species that overlap with the claimed range. (Br. 16-17.)
We agree with the Examiner, however, that the facts of Patel and those of
the instant case are different. (Ans. 9-10.) As the Examiner explained, in
Patel, there was evidence that increasing the amount of a particular
ingredient that the Examiner contended would have been obvious to
increase, would have had a detrimental results. In re Patel, 566 F. App'x at
1010. This was an important fact to the Court in determining the Examiner
had failed to make out a prima facie case. Id. The Court noted, however, "a
rejection based on ranges approaching each other might well be appropriate
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where there is a teaching in the prior art that the end points of the prior art
range are approximate, or can be flexibly applied." Id. While Appellant is
correct that the ranges do not overlap, it is undisputed by Appellant that the
prior art indicates that increasing the amount of disinfectant concentration
will result in improved disinfection. Thus, we agree with the Examiner that,
despite the fact that Gil does not teach overlapping ranges, there is sufficient
information that would have made it obvious to one of ordinary skill in the
art to increase the concentration of ozone and chloride ions to be within the
claimed range as a matter of routine optimization with a reasonable
expectation of success.
Thus, for the reasons discussed, we are not persuaded the Examiner
erred in rejecting claim 1 as being obvious over Gil and Len.
Claims 2--4, 6, 7, 9-11 have not been argued separately and therefore
fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
We further note that Appellant does not provide separate argument
regarding the Examiner's obviousness rejection of claim 12 over Gil, Len,
Kim, and Al-Haq. Accordingly, we affirm the Examiner's rejection of the
obviousness of claim 12 for the reasons just stated.
SUMMARY
We affirm the rejection of claims 1--4, 6, 7, 9, 10, and 12 under 35
U.S.C. § 102(a)(l) as anticipated by Morrow.
We affirm the rejection of claims 1--4, 6, 7, and 9-11 under 35 U.S.C.
§ 103 as obvious over Gil and Len.
We affirm the rejection of claim 12 under 35 U.S.C. § 103 as obvious
over Gil, Len, Kim, and Al-Haq.
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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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