Pimentel, Julio et al.

Patent Trials and Appeals BoardDec 5, 2019

14347626 - (R) (P.T.A.B. Dec. 5, 2019)

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. 14/347,626 03/26/2014 Julio Pimentel 60288-147660 4610 21888 7590 12/05/2019 THOMPSON COBURN LLP ONE US BANK PLAZA SUITE 3500 ST LOUIS, MO 63101 EXAMINER HUI, SAN MING R ART UNIT PAPER NUMBER 1627 NOTIFICATION DATE DELIVERY MODE 12/05/2019 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): IPDOCKET@THOMPSONCOBURN.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JULIO PIMENTEL and KURT RICHARDSON ____________ Appeal 2019-003516 Application 14/347,626 Technology Center 1600 ____________ Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON REHEARING REQUEST Appellant requested rehearing (reconsideration) of the Decision mailed September 12, 2019 (“Dec.”). That decision affirmed the Examiner’s obviousness rejections. We deny the requested relief. DISCUSSION A “request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52 (2017). An applicant dissatisfied with the outcome of a Board decision is entitled to appeal the decision, see 35 U.S.C. §§ 141 and 145, but is not entitled to have the same issue decided multiple times on the same record. Appeal 2019-003516 Application 14/347,626 2 Appellant contends that: I. The Board misapprehended the total concentration range of acid constituents set forth in claim 1. II. The Board overlooked the requirements for establishing prima facie obviousness based on overlapping ranges. (Request for Rehearing filed November 12, 2019 (“Req. Reh’g”) 2). We have considered Appellant’s arguments and do not find them persuasive for the reasons given in our Decision and for the reasons given in the Examiner’s Answer. We address Appellant’s points in turn. I. Total concentration range of acid constituents Appellant contends the Board determined the total concentration of the acid constituents set forth in claim 1 to be 45–85 wt.% rather than 55–85 wt.% (Req. Reh’g 2). Appellant contends the Board miscalculated the degree of overlap based on this finding (id). We agree with Appellant that the incorrect range of 45–85 wt.% was inadvertently listed in the Decision on page 8 (Dec. 8). However, the Board adopted the Examiner’s findings of fact, including the correct total concentration range of acid constituents of 55–85 wt.% (id. at 4, 6, citing Ans. 3). Therefore, the Board did not misapprehend the claimed range nor the degree of overlap with the prior art range. II. Requirements for Prima Facie Obviousness of Overlapping Ranges Appellant argues that the Board overlooked “an exception to the presumption of obviousness when there is overlap between” a prior art range and a claimed range “if the reference’s disclosed range is so broad as to encompass a very large number of possible distinct compositions, this might Appeal 2019-003516 Application 14/347,626 3 present a situation analogous to the obviousness of a species when the prior art broadly discloses a genus” (Req. Reh’g 3, citing MPEP § 2143.05). Appellant argues that “the Examiner/Board should have considered evidence to determine whether a skilled artisan would have been motivated to select or arrive at the range being claimed (like evaluating a species/genus situation)” (id. at 5). We are not persuaded by Appellant’s argument. Consistent with our Decision, the Examiner established that the prior art teaches the claimed constituents of the formulation are known antimicrobial agents that may be combined in the claimed ranges (Dec. 7, 11). “The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . These cases have consistently held that in such a situation, the applicant must show that the particular range is critical.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (emphasis added). As discussed in the Decision, Appellant has not submitted persuasive evidence showing criticality of the claimed range (Dec. 12–13). Appellant also argues that the totality of Schür’s teachings “provide evidence that a skilled artisan would have been led away from the range recited in claim 1” (Req. Reh’g 7; see also In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Particularly, Appellant argues that Schür’s preferred embodiments and examples require a composition containing Generally recognized as safe (“GRAS”) flavor alcohol as the main component, being at least 75 wt.% of the composition, and that all other components, including GRAS acids and aldehydes, are limited to at most 25 wt.% of the composition (id. at 8). Appellant contends that “[t]his is indisputabl[e] Appeal 2019-003516 Application 14/347,626 4 evidence of Schür’s teachings discouraging or leading a skilled artisan from arriving at a composition having a combined acid concentration that is greater than . . . 30 wt.%” (id. at 9). We are not persuaded by Appellant’s argument. As stated by our reviewing court, “[t]he degree of teaching away will . . . depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.” Gurley, 27 F.3d at 553. In Gurley, the court found an express teaching in the prior art that the claimed epoxy resin was inferior to polyester-imide resins for use in circuit boards. Id. However, the prior art taught that epoxy was usable and had been used for the same purpose. Id. Therefore, the court found that “[e]ven reading [the prior art’s] . . . description as discouraging use of epoxy for this purpose, [applicant] . . . asserted no discovery beyond what was known to the art.” Id. Similar to Gurley, Appellant has not identified any teaching in Schür that states that a combined amount of GRAS acids of greater than 30 wt.%, including up to 70 wt.%, would not provide an antimicrobial composition in combination with a GRAS aldehyde. Rather, Appellant has arguably established that Schür’s preferred compositions incorporate GRAS flavor alcohols as the main component and do not necessarily include GRAS acids. Even if we accept Appellant’s argument that Schür teaches combined GRAS acids greater than 30% are not preferred, this still does not satisfy the requirement for teaching away. “A statement that a particular combination is not a preferred embodiment does not teach away absent clear discouragement of that combination.” Syntex (U.S.A.) LLC v. Apotex, Inc., Appeal 2019-003516 Application 14/347,626 5 407 F.3d 1371, 1380 (Fed. Cir. 2005). Appellant has not identified any “clear discouragement” by Schür of an antimicrobial composition containing GRAS acids greater than 30% and a GRAS aldehyde. In the absence of any clear discouragement, that the known composition was not the preferred composition does not distinguish the prior art, especially in light of Schür’s express teaching of “from 0 to 70% by weight” of one or more GRAS flavor acids (Dec. 5, FF 1, Schür 3:63–4:34) that fully encompasses the claimed 55 to 85% range. CONCLUSION We have reviewed the original opinion in light of Appellant’s request, but we find no point of law or fact which we overlooked or misapprehended in arriving at our decision. Therefore, Appellant’s request is denied with respect to making any modification to the decision affirming the Examiner’s rejection. Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Denied Granted 1 § 103 Schür 1 7, 8, 15 § 103 Schür, Koenraad 7, 8, 15 Overall Outcome 1, 7, 8, 15 Appeal 2019-003516 Application 14/347,626 6 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 § 103 Schür 1 7, 8, 15 § 103 Schür, Koenraad 7, 8, 15 Overall Outcome 1, 7, 8, 15 DENIED