Patrick O. Tennican

Patent Trials and Appeals BoardJul 8, 2020

2019000029 (P.T.A.B. Jul. 8, 2020)

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. 13/688,078 11/28/2012 Patrick O. Tennican H014-0007US2 2393 29150 7590 07/08/2020 LEE & HAYES, P.C. 601 W. RIVERSIDE AVENUE SUITE 1400 SPOKANE, WA 99201 EXAMINER VU, JAKE MINH ART UNIT PAPER NUMBER 1618 NOTIFICATION DATE DELIVERY MODE 07/08/2020 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): lhpto@leehayes.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte PATRICK O. TENNICAN1 ________________ Appeal 2019-000029 Application 13/688,078 Technology Center 1600 ________________ Before JOHN G. NEW, ELIZABETH A. LAVIER, and MICHAEL A. VALEK, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 We use the term “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.142. Appellant identifies Hyprotek, Inc. as the real party-in- interest. App. Br. 3. Appeal 2019-000029 Application 13/688,078 2 SUMMARY Appellant files this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 14–16 and 18–21 as unpatentable under 35 U.S.C. § 103 as being obvious over the combination of Tennican (US 2007/0282280 A1, December 6, 2007) (“Tennican”) and Toreki et al. (US 2011/0171280 A1, July 14, 2011) (“Torecki”)2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. NATURE OF THE CLAIMED INVENTION Appellant’s claimed invention is directed to antimicrobial compositions that may be used in combination with IV port cleansing caps, protective caps, or nasal decolonizer devices. Abstr. REPRESENTATIVE CLAIM Claim 14 is representative of the claims on appeal and recites: 14. A method of giving a visual indication of one or more contaminants on a surface comprising: determining the surface to be decontaminated; and testing the surface for contamination, the testing including: 2 Claims 14–16 and 18–21 were also provisionally rejected as unpatentable under the nonstatutory doctrine of obviousness-type double patenting over copending US Appl. Nos. 13/924,410, 13/934,135, 12/87 4,188, and 13/554,962. Final Act. 4. The Examiner has withdrawn this rejection. Ans. 7. Appeal 2019-000029 Application 13/688,078 3 applying an antimicrobial agent to the surface, wherein the antimicrobial agent comprises water, an alcohol, a peroxide or peroxide-generating agent, a chelating agent, and a colorant; and receiving the visual indication that that the antimicrobial agent has come in contact with the one or more contaminants on the surface, the visual indication resulting from the contact and including at least an appearance of a color. App. Br. 12. ISSUES AND ANALYSES We decline to adopt the Examiner’s findings, reasoning, and conclusion that the claims on appeal are prima facie obvious over the combined cited prior art. We address the arguments raised by Appellant below. Issue Appellant argues that the Examiner erred in finding that the combined references teach or suggest the limitation of claim 14 reciting: “receiving [a] visual indication that that the antimicrobial agent has come in contact with the one or more contaminants on the surface, the visual indication resulting from the contact and including at least an appearance of a color.” App. Br. 8. Analysis The Examiner finds that Tennican teaches a method of cleaning an intravenous line port of microorganisms introduced from contaminated equipment. Non-Final Act. 5 (citing Tennican ¶¶ 3–4). The Examiner finds Appeal 2019-000029 Application 13/688,078 4 that Tennican teaches applying an antibacterial agent to external surfaces of the intravascular port, and that the agent comprises about 30% ethanol, hydrogen peroxide (H2O2) and ethylenediaminetetraacetic acid (“EDTA”), which correspond to the water, an alcohol, a peroxide or peroxide-generating agent, and chelating agent recited in claim 14. Id. (citing Tennican ¶¶ 43, 50, 54) The Examiner reasons that a person of ordinary skill in the art would naturally look at the surface where they are applying and cleaning, and be able to observe any bubbling on the surface that would necessarily occur as the aqueous antimicrobial agent comprising H2O2 would interact with any methicillin-resistant Staphylococcus aureus (“MRSA”) contamination. Non- Final Act. 5–6. The Examiner therefore finds that Tennican inherently teaches receiving an indication that the antimicrobial agent has come in contact with a contaminant on a surface. Id. at 6. The Examiner acknowledges that Tennican does not teach using a colorant in the antimicrobial agent. Non-Final Act. 6. However, the Examiner finds that Toreki teaches that adding colorants and dyes to antimicrobial formations, including peroxide solutions, was known in the prior art. Non-Final Act. 6 (citing Toreki Abstr., ¶ 37). The Examiner concludes that it would have been obvious to a person of ordinary skill in the art to incorporate a colorant into Tennican’s antimicrobial peroxide solution. Non-Final Act. 6. The Examiner finds that a skilled artisan would have been motivated to make such a modification because it would permit the user to see the antimicrobial solution, analogizing the situation to that of the visible blue color of glass window cleaners such as Windex. Id. The Examiner further concludes that a person Appeal 2019-000029 Application 13/688,078 5 of ordinary skill in the art would have had a reasonable expectation of success in combining the references, because Toreki teaches that colorants and dyes had been previously used with peroxide solutions. Id. Additionally, the Examiner finds that although the references do not expressly teach the limitations of claim 14 reciting “resulting from the contact and including at least an appearance of a color,” it is not evident that the claim limitations recite any manipulative difference in the steps of the claimed method when compared to the teachings of the prior art. Final Act. 5 (citing, e.g., In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (holding that: “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable”)). The Examiner asserts that it is reasonable to conclude that the same surface, treated with the same aqueous antimicrobial agent with a colorant via the same method of application in the same amounts, as taught by the prior art references and claimed by Appellant would have the same results. Id. The Examiner finds that the fact that Appellant may have discovered yet another beneficial effect from the method taught by the combined prior art does not render the claims patent eligible. Id. Appellant argues that Toreki, upon which the Examiner relies, teaches colored antimicrobial solutions, but that the color is a dye in the textile that is already visible regardless of whether the textile comes in contact with a contaminant. App. Br. 8. Appellant takes issue with the Examiner’s finding that asserts that the colorant feature in claim 14 would be no different than spraying Windex on a surface and noticing that the Windex is blue. Id. (citing Final Act. 4–5). Appellant contends that the Examiner has failed to establish a prima facie case of obviousness the claimed “appearance of a Appeal 2019-000029 Application 13/688,078 6 color” because the Windex solution is already dyed blue in the bottle before application. Id. According to Appellant, whether or not there is a contaminant on a surface on which Windex is sprayed, the solution will be colored blue regardless, and the color is therefore not a “result” of the Windex, or the dye in Toreki, “com[ing] into contact with ... contaminants” causing the Windex or antimicrobial agent of Toreki to “appear” colored. Id. at 8–9. We are not persuaded by the Examiner’s reasoning. Toreki teaches that: “It is an aspect of this invention that additives, such as UV inhibitors, processing aids, softeners, antistatic agents, colorants, dyes, indicators, drugs, oils, lubricants, microspheres, temporary visual indicators …, and the like may be incorporated into the antimicrobial treatment formulation.” Toreki ¶ 37 (emphasis added); see also ¶ 95, claim 32. Although the disclosure of “colorants,” “indicators,” and “temporary visual indicators” as additives in these passages may appear, in hindsight, to indirectly infer a “colorant” that provides a “visual indication that that the antimicrobial agent has come in contact with the one or more contaminants on the surface,” we can find no teaching or suggestion in either of the references that would have either taught or directly suggested, to a skilled artisan, an indicator that provides at least a colorimetric response to contact of the composition with a contaminant. Nor, for the same reason, are we persuaded by the Examiner’s conclusion that the limitation reciting a “colorant” that provides a “visual indication that that the antimicrobial agent has come in contact with the one or more contaminants on the surface” is somehow inherent in the teachings of Toreki. Again, Toreki provides no teaching that the additive “colorants,” Appeal 2019-000029 Application 13/688,078 7 “indicators” or “temporary visual indicators” disclosed therein are colorimetric indicators of the presence of contaminants. In the absence of any such teaching, we cannot reasonably conclude that the additives taught by Toreki necessarily include that requirement. See Par Pharm., Inc. v. Twi Pharms., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014) (holding that, to establish inherency, “the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art”). Absent any teaching or suggestion that the claimed “colorant” that provides a “visual indication that that the antimicrobial agent has come in contact with the one or more contaminants on the surface” is contemplated by the teachings and suggestions of either Tennican or Toreki, we reverse the Examiner’s rejection of claim 14. Because we find this argument to be dispositive of the rejection of claim 14, we do not reach Appellant’s additional arguments. Furthermore, because Appellant argues that the remaining claims on appeal stand or fall with claim 14 (see App. Br. 10) and the Examiner’s rejection of those claims is premised on the same reasoning that we have determined to be unpersuasive; we likewise reverse the Examiner’s rejection of those claims. CONCLUSION The Examiner’s rejection of claims 14–16 and 18–21 under 35 U.S.C. § 103 is reversed. REVERSED Appeal 2019-000029 Application 13/688,078 8 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 14–16, 18– 21 103 Tennican, Toreki 14–16, 18–21