Ex Parte Zhang et al

Patent Trial and Appeal BoardMar 6, 2017

13161772 (P.T.A.B. Mar. 6, 2017)

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. 13/161,772 06/16/2011 Jun Zhang 038184.0033-US02 6132 26853 7590 03/06/2017 COVINGTON & BURLING, LLP Attn: Patent Docketing One CityCenter 850 Tenth Street, NW Washington, DC 20001-4956 EXAMINER SCHLIENTZ, NATHAN W ART UNIT PAPER NUMBER 1616 MAIL DATE DELIVERY MODE 03/06/2017 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 JUN ZHANG and ROBERT M. LEACH1 Appeal 2015-000820 Application 13/161,772 Technology Center 1600 Before ERIC B. GRIMES, ULRIKE W. JENKS, and RACHEL H. TOWNSEND, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35U.S.C. § 134 involving claims to a method of preserving a wood product, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Claims 21—33 are on appeal. Claim 21 is the only independent claim and reads as follows (emphasis added): 1 Appellants identify the Real Party in Interest as Osmose, Inc. (Appeal Br. 6.) Appeal 2015-000820 Application 13/161,772 21. A method for preserving a wood product comprising the step of contacting the wood product with an organic liquid wood preservative composition consisting essentially of: (a) a carrier consisting essentially of one or more liquid organic components; (b) solid particles of copper and/or one or more copper compounds dispersed in said one or more organic liquid components; wherein the solid particles have a solubility in the carrier of less than or equal to 0.5 gram per 100 grams of carrier at 25 °C, and greater than 80 weight percent of the solid particles have a diameter in the range of 0.001 to 25 microns; and wherein at least 50 weight percent of the solid particles have diameters less than 10 microns; and wherein less than 20 weight percent of the solid particles have diameters less than 0.001 micron; and (c) an organic biocide. DISCUSSION The Examiner has rejected claims 21—33 under 35 U.S.C. § 103(a) as obvious based on Williams2 and Hodge.3 (Final Act.4 3.) The Examiner finds that Williams teaches “preservative compositions comprising a biocidal metal compound and a fungicidal compound containing a triazole group,” where the compositions can be used to treat wood and the most preferred metal is copper. {Id. at 3 4.) The Examiner also finds that the composition “may contain water as solvent, or an organic solvent or a mixture of solvents (col. 4, In. 33—41); and the formulations can be prepared employing only organic solvents.” {Id. at 4.) The Examiner finds that Williams discloses preparing a composition by dissolving a metal salt in an organic solvent and then adding the triazole compound {id.) but does not 2 Williams et al., US 5,527,384, issued June 18, 1996. 3 Hodge et al., US 2005/0255251 Al, published Nov. 17, 2005. 4 Office Action mailed April 10, 2013. 2 Appeal 2015-000820 Application 13/161,772 disclose “a solid particle of copper and/or one or more copper compounds dispersed in the organic liquid component” {id. at 5). The Examiner finds that Hodge discloses a wood preservative composition comprising an inorganic component and an organic biocide, where at least one of those components is a micronized particle and preferred inorganic compounds include copper salts. {Id. at 6.) More specifically, the Examiner finds that Hodge discloses a “biocidal slurry [that] comprises 1) water, 2) injectable particles having a solid phase of sparingly soluble inorganic biocidal salts,. . . and 3) dispersants.” {Id. at 6—7.) The Examiner finds that Hodge discloses that “particulate biocides have an advantage over dispersed or soluble biocides in that the material leaches more slowly from wood than would comparable amounts of soluble biocides.” {Id. at 7—8.) The Examiner concludes that it would have been obvious to prepare preservative compositions for injection into wood comprising biocidally active metal and an organic biocide in an organic solvent, as reasonably taught by Williams et al., wherein the biocidally active metal is a sparingly soluble or insoluble copper salt present as micronized particles of size 0.005 to 25 pm, as reasonably suggested by Hodge et al. Such would have been obvious because Hodge et al. teach that particulate biocides have an advantage over dispersed or soluble biocides in that the material leaches more slowly from wood than would comparable amounts of soluble biocides. {Id. at 8.) Appellants argue that the cited references do not disclose solid particles of copper or copper compounds in an organic carrier (as opposed to an organic solvent) because “Williams relates to dissolving biocidal metals in a solvent,” including “copper salts of a carboxylic acid dissolved in an 3 Appeal 2015-000820 Application 13/161,772 organic solvent,” while “Hodge is directed to aqueous slurries.” (Appeal Br. 14—15.) Appellants also argue that “Williams relates to dissolving soluble metal biocides in solvents for synergistic combinations with a triazole compound. Hodge, on the other hand, discloses aqueous slurries containing metal biocide particles. One of ordinary skill would have had no motivation to combine these disparate teachings.” (Id. at 15.) Thus, Appellants argue, “[i]t is improper hindsight, using Appellant’s own disclosure and claims as a road map, to take the position that Williams suggests formulating solid copper particles dispersed in an organic carrier, merely because Hodge states that aqueous slurry compositions containing solid copper particles showed reduced leach rates.” (Id. at 18.) We agree with Appellants that the Examiner has not shown that the claimed composition, comprising solid copper or copper compound particles in an organic carrier, would have been obvious based on Williams and Hodge. Williams discloses “preservative compositions comprising a biocidal metal compound and a fungicidal compound containing a triazole group.” (Williams 1:60—62.) “The most preferred metal is copper.” (Id. at 2:53—55.) “The composition in accordance with the invention may contain water as solvent, or an organic solvent or a mixture of solvents.” (Id. at 4:33-35.) Williams states that “formulations can be prepared employing only organic solvents. To prepare such formulations, a biocidal metal salt of a carboxylic acid (e.g. decanoic or octanoic acid) is prepared and dissolved in a suitable organic solvent to form a concentrate.” (Id. at 5:5—9, emphasis added.) Williams discloses four working examples that “contain organic solvents.” (Id. at 7:23.) 4 Appeal 2015-000820 Application 13/161,772 Hodge discloses a “wood-injectable biocidal slurry” that contains “water as a carrier” and “sub-micron biocidal particles” that can contain copper or sparingly soluble copper salts. (Hodge Tflf 30, 31, 33—35, 38.) Hodge discloses that “[p]articulate biocides have an advantage over dispersed or soluble biocides in that the material leaches more slowly from wood than would comparable amounts of soluble biocides.” {Id. 1266.) The Examiner has not pointed to any embodiments in Hodge that comprise an organic carrier. Hodge, in fact, states that its “wood preservatives are beneficially substantially free of organic solvents.” {Id. 174.) Thus, as Appellants point out, Williams describes embodiments that include metal salts dissolved in an organic solvent, and Hodge is limited to slurries that include an aqueous phase for its metal-containing biocidal particles. The Examiner reasons that it would have been obvious to use metal-containing particles in Williams’ composition because Hodge discloses that they leach more slowly from wood, but has provided no reason why a skilled artisan would have considered it obvious to combine the solid particles from Hodge’s aqueous slurry with the organic solvent/carrier disclosed by Williams. “[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.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Because the Examiner has not shown that a skilled artisan would have had a reason to combine a copper-containing particulate biocide with an organic carrier, we reverse the rejection on appeal. REVERSED 5