Ex Parte Pillai et al

Patent Trial and Appeal Board

Jul 27, 2016

13668560 (P.T.A.B. Jul. 27, 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.
13/668,560 11/05/2012 Ravikumar Pillai 1507-88 1716
28249 7590 07/27/2016
DILWORTH & BARRESE, LLP
Dilworth & Barrese, LLP
1000 WOODBURY ROAD
SUITE 405
WOODBURY, NY 11797
EXAMINER
SINGH, RANDEEP
ART UNIT PAPER NUMBER
1615
MAIL DATE DELIVERY MODE
07/27/2016 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 RAVIKUMAR PILLAI,
ANTJE KÖHLER, and GERHARD SCHMAUS
____________

Appeal 2015-002134
Application 13/668,560
Technology Center 1600
____________

Before DONALD E. ADAMS, ULRIKE W. JENKS, and
TIMOTHY G. MAJORS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134(a) involves claims 1–15 and 20–23
(App. Br. 2). Examiner entered rejections under 35 U.S.C. § 103(a) and
obviousness-type double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
Appellants disclose “antimicrobial active substances and in particular
certain mixtures, preparations and foodstuffs comprising 2-phenoxyethanol,
and at least two different alkanediols, selected from the group consisting of

1 Appellants identify the Real Party in Interest as “SYMRISE AG” (Br. 2).
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1,2-decanediol, 1,2-octanediol, 1,2-hexanediol and 1,2-pentanediol” (Spec.
2).
Claim 1 and 10 are representative and reproduced in the Claims
Appendix of Appellants’ Brief.
Claims 1–15 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Roeding2 and Schmaus ’841.3
Claims 20–23 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Merianos4 and Kobayashi.5
Claims 1–15 stand rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1–11,
13, 15–17, and 19–22 of Schmaus ’6816 in view of Schmaus ’841.7

Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?

2 Roeding et al., US 2007/0263252 A1, published Nov. 15, 2007.
3 Schmaus et al., WO 2008/119841 A2, published Oct. 9, 2008.
4 Merianos et al., WO 2005/102276 A1, published Nov. 3, 2005.
5 Kobayashi Aki, JP 11-322591, published Nov. 24, 1999 (English language
translation of record).
6 Schmaus et al., US 7,582,681 B2, issued Sept. 1, 2009.
7 Notwithstanding Examiner’s inclusion of canceled claims 16–19 in the
statement of the rejection, Appellants canceled claims 16–19. (see Final Rej.
11; cf. Br. 15 n. 2; see also Ans. 2 (“Every ground of rejection[] set forth in
the [Final Rejection] from which the [A]ppeal is taken is being maintained
by the [E]xaminer”); cf. Ans. 2 (“Appellant traverses the rejection made of
claims 1-15 under Obviousness-Type Double Patenting”)). Therefore, we
did not include claims 16–19 in our deliberations.
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FACTUAL FINDINGS (FF)
FF 1. Roeding discloses the “enhanced/synergistic antimicrobial activity of
mixtures and cosmetic compositions comprising at least one alkane diol and
at least one compound selected from the group of tropolone-compounds [],
chelating agents [] and sesquiterpenes” (Roeding ¶ 31; see generally Ans. 4;
Final Rej. 5).
FF 2. Roeding discloses that the antimicrobial mixtures and cosmetic
compositions are “effective in combating Aspergillus niger” (Ans. 4; Final
Rej. 5; Roeding ¶ 35).
FF 3. Roeding prefers mixtures and cosmetic compositions “containing
two or more alkane diols” (see Roeding ¶ 32; see generally Ans. 4; Final
Rej. 5).
FF 4. Roeding prefers “binary or ternary mixtures” of “1, 2-hexane diol,
1,2-octane diol, [and] 1, 2-decane diol” (Roeding ¶ 34; see generally Ans. 4;
Final Rej. 5).
FF 5. Roeding discloses that “[i]f the mixtures according to [Roeding’s]
invention are employed as active substances for the preservation of organic
material then” one or more “preservatives may advantageously be employed
in addition . . . such as,” inter alia, “2-phenoxyethanol” (Roeding ¶ 69; see
Ans. 4; Final Rej. 5).
FF 6. Schmaus ’841 “relates to the field of antimicrobial actives, and in
particular relates to certain (synergistic) antimicrobial compositions
(mixtures) comprising or consisting of (a) at least one benzyl alcohol
derivative as specified in more detail below and (b) [wherein the] preferred
[reagents] are 1,2-alkanediols having 3 to 14 carbon atoms” (Schmaus ’841
1: 1–7; see Final Rej. 3–4; Ans. 3–4).
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FF 7. Schmaus ’841 prefers, inter alia, a mixture of 1,2-decanediol with
1,2-hexanediol and/or 1,2-pentanediol and/or 1,2-octanediol as the (b)
component of Schmaus ’841’s synergistic antimicrobials composition
(Schmaus ’841 12: 17 – 13: 10; Final Rej. 3–4; Ans. 3–4).
FF 8. Schmaus ’841 “[p]articularly prefer[s] [] compositions . . .
comprising at least 50 wt.-% of further components besides (a) and (b),”
such as “2-phenoxyethanol” (Schmaus ’841 7: 22–25 and 31; Final Rej. 3–4;
Ans. 4).
FF 9. Schmaus ’841’s “invention further relates to the use of a composition
. . . in the treatment of Aspergillus niger” (Schmaus ’841 1: 10–12; Ans. 4).
FF 10. Merianos discloses
an antimicrobial composition . . . consisting essentially of, by
wt.
(a) 40-60% of a 1,2-diol selected from the group
consisting of 1,2-pentanediol, 1,2,-hexanediol and 1,2-
octanediol;
(b) 40-60% of phenoxyethanol; and
(c) 0-10% of a co-biocide selected from the group
consisting of sorbic acid, benzoic acid, dibromodicyanobutane,
iodopropynyl butyl carbamate and 1,2-benzisothiazolin-3-one.
(Merianos 3; Final Rej. 7; Ans. 6.)
FF 11. Examiner finds that “[b]ecause the ingredients in [Merianos’] group
(c) can be absent (0% by weight), the antimicrobial compositions can consist
essentially of phenoxyethanol and a 1,[]2-alkanediol (Final Rej. 7–8).
FF 12. Examiner finds that Merianos fails to disclose a composition
comprising 1,2-decanediol (see Final Rej. 8; Ans. 6).
FF 13. Kobayashi discloses “an antiseptic bactericide” for application to a
human body that comprises at least one 1,2-alkanediol that is “1,2–
butanediol, 1,2–pentanediol, 1,2–hexandiol, 1,2–heptane diol, 1,2–
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octanediol, 1,2–nonanediol, and 1,2–[d]eccan diol” (Kobayashi ¶¶ 11–13;
see id. ¶ 13 (“[a]lthough 1 type in these 1,2–alkanediol may be used
independently, of course, it is also possible to mix and use 2 or more
type[s]”); see Final Rej. 8; Ans. 6–7).
ANALYSIS
The rejection over the combination of Roeding and Schmaus ’841:
The mixture of Appellants’ claim 1 comprises: (a) 2-phenoxyethanol,
(b1) 1,2-decanediol, and (b2) 1,2-hexanediol and/or 1,2-pentanediol and/or
1,2-octanediol.
Based on the combination of Roeding and Schmaus ’841, Examiner
concludes that, at the time Appellant’s invention was made, it would have
been prima facie obvious to formulate synergistic mixtures that comprise (a)
2-phenoxyethanol, (b1) 1,2-decanediol, (b2) 1,2-hexanediol and/or 1,2-
pentanediol and/or 1,2-octanediol (see Ans. 5; FF 1–9).
We recognize, but are not persuaded by, Appellants’ contention that
“Roeding and Schmaus [’841] describe enhanced/synergistic relationships,
but the relationship is not between 2-phenoxyethanol and 1,2-alkanediols—
the relationship is between different combinations of compounds not
required by [Appellants’] claim[] [1]” (Br. 9). Appellants’ claim 1, through
the use of the transitional phrase “comprising”, is open to include additional
ingredients, including those identified in Roeding and Schmaus ’841 alone
or in combination (see Appellants’ claim 1; see also Br. 13 (“Applicants
agree that the instant claims include the open-ended term ‘comprising’ and
therefore do not exclude addition[al], un-recited elements”); cf. FF 1–9).
For the reasons set forth above, we are not persuaded by Appellants’
contentions and corresponding evidence relating to unexpected results,
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which are not commensurate in scope with Appellants’ claim 1 (see Br. 10–
12). We recognize Appellants’ contention that “applicant’s [sic] discovered
[synergy] between the instantly claimed compounds” (Br. 13). While this
may be true, for the reasons discussed above, Appellants’ claimed invention
is not limited in scope to what Appellants’ contend they have discovered.
To the contrary, Appellants’ claimed invention is open to include the
synergistic compositions suggested by Roeding and Schmaus ’841 alone or
in combination. In this regard, we note that objective evidence of
nonobviousness must be commensurate in scope with the claims which the
evidence is offered to support. In re Greenfield, 571 F.2d 1185, 1189
(CCPA 1978); In re Lindner, 457 F.2d 506, 508 (1972); In re Tiffin, 448
F.2d 791, 792 (1971). On this record, the evidence relied upon by Examiner
supports a conclusion of obviousness as it relates to the scope of Appellants’
claimed invention.

The rejection over the combination of Merianos and Kobayashi:
The cosmetic or pharmaceutical preparation or foodstuff, of
Appellants’ claim 20, comprises an antimicrobially effective mixture,
wherein the antimicrobially effective mixture consists of:
(a) 2-phenoxyethanol, (b1) 1,2-decanediol, and (b2) 1,2-hexanediol and/or
1,2-pentanediol and/or 1,2-octanediol. Appellants’ claims 21–23 depend
directly or indirectly from Appellants’ claim 20.
Based on the combination of Merianos and Kobayashi, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious “to include a mixture of 1,2-alkanediols in place of
the 1,2-diol taught in Merianos . . . [because] it would have been well within
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the ordinary level of skill in the art to select 1,2-decanediol and 1,2-
hexanediol and/or 1,2-pentanediol as the 1,2-alkanediols in the antimicrobial
compositions based on the teachings of [Kobayashi]” (Final Rej. 8). We are
not persuaded.
As Appellants explain, “Merianos does not describe compositions of
‘2-phenoxyethanol and at least two different alknediols’” or “even mention
1,2-decanediol” (Br. 14; see FF 10–12). Appellants recognize, “Kobayashi
mentions 1,2-decanediol” (Br. 14; FF 13). Kobayashi, however, provides no
reason to specifically select 1,2-decanediol for inclusion in Kobayashi’s
composition that comprises at least one 1,2-alkanediol selected from a list of
a number of different 1,2-alkanediols (see generally Br. 14; see FF 13).
Nevertheless, assuming Examiner is correct in that a person of ordinary skill
in this art would have selected at least 1,2-decanediol from Kobayashi for
inclusion in Merianos’ composition that consists essentially of: (a) a 1,2-
diol selected from the group consisting of 1,2-pentanediol, 1,2-hexanediol
and 1,2-octanediol and phenoxyethanol; Examiner failed to explain why a
person of ordinary skill in this art would have reasonably expected such a
composition to exhibit the synergistic effect resulting from the combination
of phenoxyethanol, 1,2-decanediol, and one or more of 1,2-hexanediol, 1,2-
pentanediol, and 1,2-octanediol as disclosed by Appellants (see Br. 14–15;
Spec. 15–21).
Examiner recognizes Appellants’ contentions that the combination of
Merianos and Kobayashi fails to suggest a composition that exhibits
synergism or “the criticality of including 1,2-decanediol” in a composition
that comprises phenoxyethanol and one or more of 1,2-hexanediol, 1,2-
pentanediol, and 1,2-octanediol (Ans. 5). Examiner, however, fails to
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provide persuasive argument or evidence to rebut Appellants’ contentions
(see Ans. 6–7).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness with respect to the rejection of claim 1. The
rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Roeding and Schmaus ’841 is affirmed. Claims 2–15 are not
separately argued and fall with claim 1.
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness with respect to Appellants’ claims 20–
23. The rejection of claims 20–23 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Merianos and Kobayashi is reversed.

Obviousness-type Double Patenting:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness-type double patenting?
FACTUAL FINDINGS (FF)
FF 14. Schmaus ’681 claims an antimicrobial composition comprising 1,2-
pentanediol, 1,2-hexanediol, and 1,2-decanediol (Schmaus ’681 32: claim
4(e); see Final Rej. 11; Ans. 7–9).
FF 15. Schmaus ’841 “relates to the field of antimicrobial actives, and in
particular relates to certain (synergistic) antimicrobial compositions
(mixtures) comprising or consisting of (a) at least one benzyl alcohol
derivative as specified in more detail below and (b) [wherein the] preferred
[reagents] are 1,2-alkanediols,” such as, inter alia, a mixture of 1,2-
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decanediol with 1,2-hexanediol and/or 1,2-pentanediol and/or 1,2-octanediol
(Schmaus ’841 1: 1–7; id. at 12: 17 – 13: 10; see Final Rej. 11; see also
Final Rej. 3–4; Ans. 7–9).
FF 16. Schmaus ’841 “[p]articularly prefer[s] [] compositions . . .
comprising at least 50 wt.-% of further components besides (a) and (b),”
such as “2-phenoxyethanol” (Schmaus ’841 7: 22–25 and 31; see Final Rej.
11; see also Final Rej. 3–4; Ans. 7–9).
ANALYSIS
Based on the combination of Schmaus ’681 and Schmaus ’841,
Examiner concludes that, at the time Appellants’ invention was made, it
would have been prima facie obvious to “include 2-phenoxyethanol as a
preservative in antimicrobial compositions comprising at least two 1,2-
alkanediols” (Ans. 8).
We recognize, but are not persuaded by, Appellants’ contention that
the combination of Schmaus ’681 and Schmaus ’841 suggests a composition
comprising “benzyl alcohol derivatives (not required by [Appellants’ claim
1]) with additional antimicrobial active compounds” (Br. 15; see generally
id. at 15–16). For the reasons set forth above, we find that Appellants’
claimed invention is open to include the synergistic compositions suggested
by Schmaus ’841. In this regard, Schmaus ’681 directs one of ordinary skill
in this art to specifically select an antimicrobial composition comprising 1,2-
pentanediol, 1,2-hexanediol, and 1,2-decanediol that falls within the scope of
Schmaus ’841. Thus, as discussed above, Appellants’ evidence of
nonobviousness is not commensurate with the scope of Appellants’ claim 1.
Thus, on this record, the evidence relied upon by Examiner supports a
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conclusion of obviousness-type double patenting as it relates to the scope of
Appellants’ claim 1.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness-type double patenting. The rejection of claim 1
under the judicially created doctrine of obviousness-type double patenting as
being unpatentable over claims 1–11, 13, 15–17, and 19–22 of Schmaus
’681 in view of Schmaus ’841 is affirmed. Claims 2–19 are not separately
argued and fall with claim 1.
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