Ex Parte Scholz et al

Patent Trials and Appeals BoardMar 26, 2019

13942122 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/942, 122 07/15/2013 32692 7590 03/28/2019 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Matthew T. Scholz 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. 58707US015 3875 EXAMINER WORSHAM, JESSICA N ART UNIT PAPER NUMBER 1615 NOTIFICATION DATE DELIVERY MODE 03/28/2019 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHEW T. SCHOLZ, DIANNE L. GIBBS, JOHN T. CAPECCHI, and JEFFREY F. ANDREWS 1 Appeal 2018-002636 Application 13/942, 122 Technology Center 1600 Before ERIC B. GRIMES, JEFFREY N. FRED MAN, and RYAN H. FLAX, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134 involving claims to an antimicrobial composition, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. STATEMENT OF THE CASE "The present invention provides antimicrobial compositions ... [that] are typically useful when applied topically." Spec. 3:16-18. 1 Appellants identify the Real Party in Interest as 3M Innovative Properties Company. Appeal Br. 2. Appeal 2018-002636 Application 13/942, 122 Claims 171-17 6, 178-183, and 189-194 are on appeal. Claim 171 is illustrative and reads as follows (emphasis added): 1 71. An antimicrobial composition comprising: an effective amount of an antimicrobial lipid component comprising a (C8-CI2)saturated fatty acid ester of a polyhydric alcohol, a (CI2-C22)unsaturated fatty acid ester of a polyhydric alcohol, a (C8-CI2)saturated fatty ether of a polyhydric alcohol, a (CI2-C22)unsaturated fatty ether of a polyhydric alcohol, an alkoxylated derivative thereof, or combinations thereof, wherein the alkoxylated derivative has less than 5 moles of alkoxide per mole of polyhydric alcohol; with the proviso that for polyhydric alcohols other than sucrose, the esters comprise monoesters and the ethers comprise monoethers, and for sucrose the esters comprise monoesters, diesters, or combinations thereof, and the ethers comprise monoethers, diethers, or combinations thereof; wherein for monoesters, monoethers, or alkoxylated derivatives thereof, there is no more than 15 wt-% of a diester, diether, triester, triether, or alkoxylated derivatives thereof present, based on the total weight of the antimicrobial lipid components present in the composition; an effective amount of an enhancer component comprising an alpha-hydroxy acid, a beta-hydroxy acid, a chelating agent, a (Cl-C4)alkyl carboxylic acid, a (C6-CI2)aryl carboxylic acid, a (C6-CI2)aralkyl carboxylic acid, a (C6- CI2)alkaryl carboxylic acid, a phenolic compound, a (CI- C 1 O)alkyl alcohol, an ether glycol, or combinations thereof; a surfactant; and a hydrophilic component other than water, wherein the hydrophilic component other than water forms the greatest portion of the composition by weight; and wherein the composition contains less than 10 wt-% water when ready to use. 2 Appeal 2018-002636 Application 13/942, 122 Claim 194, the only other independent claim, is directed to a similar composition, and also requires that "the composition contains less than 10 wt-% water when ready to use." The claims stand rejected as follows: Claims 171-176, 178-183, and 189-194 under 35 U.S.C. Â§ I03(a) as obvious based on Tautvydas2 and Andrews '520 3 (Final Action4 3) and Claims 171-176, 178-183, and 189-194 under 35 U.S.C. Â§ I03(a) as obvious based on Andrews '833 5 and Andrews '520 (Final Action 5). I The Examiner has rejected all of the claims on appeal as obvious based on Tautvydas and Andrews '520. The Examiner finds that Tautvydas discloses a "a method of reducing microbial levels on plants using an antimicrobial formulation comprising ... the same components in the same amounts as instantly claimed" (Final Action 3), except that "Tautvydas et al. do not teach less than 10% water or a hydrophobic component" (id. at 4). 6 The Examiner finds that Andrews '520 discloses "an antimicrobial ointment comprising an antimicrobial fatty acid monoester of a polyhydroxy alcohol, a chelating agent, and an ointment vehicle comprising petrolatum 2 US 2006/0276541 Al, published December 7, 2006. 3 WO 98/09520 Al, published March 12, 1998. 4 Office Action mailed March 7, 2017. 5 US 5,460,833, issued October 24, 1995. 6 A hydrophobic component is recited in Appellants' claim 182 ("The antimicrobial composition of claim 1 71, further comprising a hydrophobic component."). 3 Appeal 2018-002636 Application 13/942, 122 (hydrophobic component)." Id. The Examiner concludes that it would have been obvious to add a hydrophobic component to the antimicrobial composition of Tautvydas et al. because Andrews specifically teaches that antimicrobial lipids such as glycerol monolaurate are known to be effectively administered in combination with a chelating agent and both hydrophobic and hydrophilic components. One would have been motivated to add a hydrophobic component in order to provide advantages with respect to moisturizing and skin conditioning capabilities, as well as to modify the consistency (i.e., viscosity) of the composition for a variety of application choices. Id. at 4--5. Appellants argue that "Tautvydas' examples are diluted with water as a 1 part formulation to 15 parts water composition for use .... Therefore the ready to use formulations of Tautvydas have 93.8 wt% water. ... The compositions which are not diluted 1: 15 ... had 7 6 wt% water." Appeal Br. 6-7 (citing Tautvydas, Tables 2 and 9). Appellants argue that "[t]he Office Action provides no motivation for utilizing less than 10 wt% water. ... The only motivations for making modifications are directed to the inclusion of a hydrophobic component." Id. at 7. We agree with Appellants that the Examiner has not persuasively shown that the claimed composition----containing less than 10 wt% water when ready to use-would have been obvious to a skilled artisan based on Tautvydas and Andrews '520. The Examiner acknowledges that Tautvydas "do[es] not teach less than 10% water." Final Action 4. As Appellants point out, Tautvydas uses compositions that are diluted 1: 15 with water in most of its working examples. See Tautvydas ,r,r 51, 55, 60. Tautvydas used undiluted formulation concentrate to test antimicrobial activity against 4 Appeal 2018-002636 Application 13/942, 122 B. subtilis spores; however, the undiluted concentrates contained 76% water. See id. ,r 70; Tables 2, 9. The Examiner concludes that it would have been obvious to modify Tautvydas' composition to include a hydrophobic component, and reasons that "[t]he presence of the hydrophobic component to form an ointment would preclude the use of water for dilution/administration purposes." Final Action 5. The Examiner does not, however, adequately explain why "advantages with respect to moisturizing and skin conditioning capabilities" or modified viscosity, Final Action 5, would be desirable in Tautvydas' composition, which is used "for reducing levels of microbes on plants and plant parts (e.g. seeds, vegetables, and fruits)." Tautvydas ,r 13. For the reasons discussed above, we agree with Appellants that the Examiner has not shown that the claimed compositions would have been prima facie obvious based on Tautvydas and Andrews '520. II The Examiner has rejected all of the claims on appeal as obvious based on Andrews '833 and Andrews '520. The Examiner finds that Andrews '833 teaches "a disinfectant composition comprising a fatty acid monoester, an acid or chelating agent (i.e., enhancer), and a surfactant. ... The three components may be used in a variety of vehicles such as water or propylene glycol and polyethylene glycol." Final Action 5. "Table 5 comprises compositions with 73% propylene glycol and no water." Id. at 6. The Examiner relies on Andrews '520 for the teachings that are discussed above in reference to the firstÂ§ 103(a) rejection. 5 Appeal 2018-002636 Application 13/942, 122 The Examiner concludes that it would have been obvious "to add a hydrophobic component to the antimicrobial composition of Andrews ['833] because Andrews '520 specifically teaches that antimicrobial lipids such as glycerol monolaurate are known to be effectively administered in combination with a chelating agent and both hydrophobic and hydrophilic components." Id. at 7. Appellants argue that "[t]he compositions of Andrews '833 are directed to disinfectants for poultry. Andrews '833 states that the compositions are typically diluted with water. ... Andrews '833 also states generally that typical dilution ratios are between about 16: 1 to about 12 8: 1." Appeal Br. 8. Appellants also argue that, although "[t]he Office Action cites to Table 5 of Andrews '833 as disclosing compositions that include 73% propylene glycol ... [t]his is incorrect. The composition that was used to treat the poultry was a 32: 1 dilution ... of the composition that included 73.0 wt% propylene glycol." Id. at 8-9. Finally, Appellants argue that "[t]he Office Action provides no motivation for utilizing less than 10 wt% water . . . . The only motivations for making modifications are directed to the inclusion of a hydrophobic component." Id. at 9. We agree with Appellants the Examiner has not persuasively shown that a composition containing less than 10% water when ready to use, as claimed, would have been obvious to a skilled artisan based on Andrews '833 and Andrews '520. The Examiner accurately finds that Table 5 of Andrews '833 "comprises compositions [i.e., Formulas 2 and 3] with 73% propylene glycol and no water." Final Action 6. 6 Appeal 2018-002636 Application 13/942, 122 However, as Appellants point out, Andrews '833 states that "[w]hen used as a poultry disinfectant composition, the concentrated composition is diluted with water. Typical dilution ratios are between about 16: 1 to about 128: 1." Andrews '833 at 5:54--57. Consistent with this disclosure, Table 5 of Andrews '833 describes testing using a specific "Composition" and "(Dilution)." Id. at 13: 1-15. Specifically, Formula 2 and Formula 3 are both shown as used at 32: 1 dilutions which, when read in light of Andrews '833 as a whole, is reasonably interpreted to mean 32 parts water to 1 part of the concentrated Formula 2 or Formula 3 composition. We therefore agree with Appellants that Andrews '833 does not disclose compositions meeting the "less than 10 wt-% water" limitation of the claims on appeal. The Examiner concludes that it would have been obvious to modify the composition of Andrews '833 to include a hydrophobic component, and reasons that "[t]he presence of the hydrophobic component to form an ointment would preclude the use of water for dilution/administration purposes." Final Action 7. The Examiner does not, however, adequately explain why "advantages with respect to moisturizing and skin conditioning capabilities" or modified viscosity, Final Action 7, would be desirable in the composition of Andrews '833, which is used "to reduce the microbial contamination of processed meat," particularly chicken carcasses. Andrews '833, 1 :6-8. For the reasons discussed above, we agree with Appellants that the Examiner has not shown that the claimed compositions would have been prima facie obvious based on Andrews '833 and Andrews '520. 7 Appeal 2018-002636 Application 13/942, 122 SUMMARY We reverse both of the rejections on appeal. REVERSED 8