Ex Parte Whiteley et al

Patent Trial and Appeal Board

Nov 8, 2016

12092042 (P.T.A.B. Nov. 8, 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.
12/092,042 06/15/2010 Reginald Keith Whiteley 13124.00005 7959
67883 7590 11/08/2016
Pryor Cashman LLP
Patent Department
7 Times Square
NEW YORK, NY 10036-6569
EXAMINER
BREDEFELD, RACHAEL EVA
ART UNIT PAPER NUMBER
1611
MAIL DATE DELIVERY MODE
11/08/2016 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)
1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte REGINALD KEITH WHITELEY,
MARILYN EMILY KARAMAN, and
GREGORY STUART WHITELEY1
____________________

Appeal 2015-005665
Application 12/092,042
Technology Center 1600
____________________

Before DONALD E. ADAMS, TAWEN CHANG, and DAVID COTTA,
Administrative Patent Judges.

CHANG, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a non-
foaming sterilizing composition, which have been rejected as obvious. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
According to the Specification, “[f]oam generated during reprocessing
[of surgical instruments such as endoscopes] seriously impedes cleaning and

1 Appellants identify the real party in interest as Whiteley Corporation Pty
Ltd. (Appeal Br. 3.)
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Application 12/092,042

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biofilm removal” and, “[t]hus far, no detergent cleaning product or chemical
sterilant has been developed that is both effective as a chemical sterilant and
non-foaming under the high pressures exerted within the endoscope tubing
and channels during reprocessing.” (Spec. 2:5–11.) Further according to the
Specification, the claimed compositions, “with a novel foam control system,
. . . are substantially non-foaming under high pressure conditions, thus
allowing maximum benefit from the new, more reliable, generation of
automated endoscope reprocessing machines.” (Id. at 4:10–14.)
Claims 31–39, 41, and 42 are on appeal. Claim 31 is illustrative and
reproduced below:
31. A substantially non-foaming sterilizing composition
comprising:
(i) at least one aromatic dialdehyde;
(ii) at least one glycol or polyol or derivative thereof;
(iii) a first non-ionic surfactant; and
(iv) a second surfactant having a cloud point in the range
of about 30°C to 50°C and selected from the group consisting of
an ethoxylated propoxylated C8-C10 alcohol; a branched alcohol
ethylene oxide chlorine capped; and a polyoxyethylene
polyoxypropylene block copolymer;
wherein said composition when combined with water has
a pH in the range of about 7.40 to 8.0.
(Appeal Br. Appendix 1.)
The Examiner rejects claims 31–39 and 41–42 under 35 U.S.C.
§ 103(a) as being unpatentable over Julemont2 and Zhu.3 (Ans. 3.)

2 Julemont et al., US 6,380,152 B1, issued Apr. 30, 2002.
3 Zhu et al., Solvent or Matrix-Mediated “Molecular Switches,” the
Lipophilic Dialdehyde (OPA) and the Amphiphilic 1,3-Phthalandiol and
OPA Disinfection Mechanism, 9 CURRENT ORGANIC CHEMISTRY 1155–1166
(2005).
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The Examiner rejects claims 31–39 and 41–42 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1–4, 6, and 8–10 of U.S. Patent No. 4,748,279 in view of Julemont
and Zhu. (Id.)
The Examiner rejects claims 31–39 and 41–42 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1–7, 12, 16, and 23–28 of U.S. Patent No. 6,525,101 in view of
Julemont and Zhu. (Id.)
I.
Issue
The Examiner has rejected claims 31–39 and 41–42 under 35 U.S.C.
§ 103(a) as being unpatentable over Julemont and Zhu. The Examiner finds
among other things that Julemont teaches
antibacterial cleaning compositions comprising glutaraldehyde
as a disinfecting agent in amounts of 0.1 – 2 wt.%, dipropylene
or propylene glycols as cosurfactants, mixtures of surfactants
including Pluronics (polyoxyethylene polypropylene block
copolymers) and NEODOL ethoxylates formed from a C9-C11
alkanol condensed with 2.5-10 moles of ethylene oxide.
(Final Act. 5.) The Examiner finds that NEODOL meets the limitation of
the claimed first non-ionic surfactant and Pluronics meets the limitations
relating to the claimed second surfactant. (Id.)
Appellants argue among other things that “there is no teaching,
suggestion or motivation in Julemont to select the . . . combination of
surfactants . . . claimed in the present invention,” specifically a combination
comprising “a second surfactant having a cloud point in the range of about
30ºC to 50ºC and selected from the group consisting of an ethoxylated
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propoxylated C8-C10 alcohol; a branched alcohol ethylene oxide chlorine
capped; and a polyoxyethylene polyoxypropylene block copolymer.”
(Appeal Br. 17–18; Reply Br. 11–12.)
The issue with respect to this rejection is whether the evidence of
record supports the Examiner’s conclusion that the cited prior art suggests a
composition comprising the claimed combination of surfactants.
Analysis
Appellants contend that, in light of Julemont’s broad disclosure of a
large number of surfactants—with cloud points ranging from 2.1ºC to
89ºC—Julemont cannot be said to suggest the narrower claim limitation of
“‘a second surfactant having a cloud point in the range of about 30ºC to
50ºC and selected from the group consisting of an ethoxylated propoxylated
C8-C10 alcohol; a branched alcohol ethylene oxide chlorine capped; and a
polyoxyethylene polyoxypropylene block copolymer.’” (Appeal Br. 17–18;
Reply Br. 11–12.)
The Examiner responds that “the criteria for establishing a case of
prima facie obviousness is not whether the prior art exemplifies all the
claimed limitations but whether the prior art suggests the claimed
limitations.” (Ans. 7.) The Examiner contends that
Julemont suggests mixtures of surfactants including those with
the instant cloud range (i.e., Pluronic L62) and non-ionic
surfactants like NEODOL ethoxylates formed from a C9-C11
alkanol condensed with 2.5-10 moles of ethylene oxide. This is
sufficient in establishing obviousness. . . . [R]eading a list and
selecting a known compound to meet known requirements is no
more ingenious than selecting the last piece to put in the last
opening in a jig-saw puzzle. . . . Since all elements of the instant
claims are taught in the prior art, combining the components for
their intended use of disinfecting would have been obvious.
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(Id. at 8.)
We find that Appellants have the better argument. While Julemont
does disclose Pluronic L62 as a suitable water-soluble nonionic detergent for
use in its invention (Julemont 7:9–24), Pluronic L62 is one of many
nonionic surfactants disclosed. (See id. at 5:48–7:24.) The Examiner has
articulated no persuasive reason why a skilled artisan would choose Pluronic
L62 in particular for combination with the NEODOL ethoxylates. (Id. at
6:14–22.) In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (explaining that
“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness”); see
also Ecolochem Inc. v. Southern California Edison, 227 F.3d 1361, 1375
(Fed. Cir. 2000) (explaining that “particular findings must be made as to the
reason the skilled artisan, with no knowledge of the claimed invention,
would have selected these components for combination in the manner
claimed”).
Accordingly, we reverse the Examiner’s rejection of claims 31–39 and
41–42 as obvious over the combination of Julemont and Zhu.
II.
The Examiner has rejected claims 31–39 and 41–42 on the ground of
nonstatutory obviousness-type double patenting over claims 1–4, 6, and 8–
10 of U.S. Patent No. 4,748,279 and claims 1–7, 12, 16, and 23–28 of U.S.
Patent No. 6,525,101, in view of Julemont and Zhu. The Examiner finds
that the reference claims “are not drawn to two surfactants and more
specifically a second surfactant having a cloud point in the range of about
30ºC to 50ºC selected from the instant Markush group” but finds that
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Julemont renders incorporation of such a surfactant obvious for the same
reasons described above with respect to the § 103 rejection. (Final Act. 13–
14, 18–19.) Accordingly, we reverse the double patenting rejections for the
same reasons already discussed.
SUMMARY
For the reasons above, we reverse the Examiner’s decision rejecting
claims 31–39 and 41–42.

REVERSED