Reactive Surfaces Ltd., LLP

Patent Trials and Appeals Board

Jan 10, 2022

2022000432 (P.T.A.B. Jan. 10, 2022)

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. 16/266,096 02/03/2019 C. Steven McDaniel RACT-3002 4444 41468 7590 01/10/2022 IVC Patent Agency 7637 PARKVIEW CIRCLE AUSTIN, TX 78731 EXAMINER TSAY, MARSHA M ART UNIT PAPER NUMBER 1656 NOTIFICATION DATE DELIVERY MODE 01/10/2022 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): dsimmons1@sbcglobal.net uspto@dockettrak.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte C. STEVEN McDANIEL, LISA KEMP, and TYLER HODGES1 Appeal 2022-000432 Application 16/266,096 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 35 U.S.C. § 134(a) involving claims to a method of reducing microbial growth in a stored coating material such as paint, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant identifies the real party in interest as Reactive Surfaces, Ltd., LLP. Appeal Br. 1. “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42 (2013). Appeal 2022-000432 Application 16/266,096 2 STATEMENT OF THE CASE The Specification discloses “an antibiological composition for reducing microbial growth in an uncured polymeric material during storage prior to curing.” Spec. ¶ 10. “An example of use of such items comprises a coating such as paint comprising a preservative for in-can preservation from microbial infestation.” Id. ¶ 7. See also id. ¶ 286 (“A suitable assay protocol for evaluating a coating comprising an antifungal agent” uses a “base paint composition [that] may be any suitable . . . latex paint, without biocides, which is available from a number of commercial suppliers.”). “The composition may comprise a polymeric material such as a coating . . . that comprises an [sic] bio-based anti-microbial preservative such as an active enzyme or peptide that reduces microbial growth prior to curing of the polymeric material.” Id. ¶ 5. “In some embodiments, the antibiological peptidic biomolecule is . . . AMP-7 (SEQ ID no. 40).” Id. ¶ 12. Claims 20-24 and 26-34 are on appeal. Claim 20, reproduced below, is illustrative (emphasis added to disputed limitations): 20. A method for reducing microbial growth in an uncured polymeric coating material during storage in a container prior to curing, comprising: providing an uncured water-borne polymeric coating material, wherein the uncured water-borne polymeric coating material is biocide-free and wherein the uncured water-borne polymeric coating material exhibits a baseline level of microbial metabolic activity for at least one target microorganism therein that is known to impair shelf-life performance of the uncured water-borne polymeric coating material during storage thereof in a container prior to curing; Appeal 2022-000432 Application 16/266,096 3 admixing a specified amount of an antibiological agent with a specified amount of the uncured water- borne polymeric coating material to provide an antibiological-functionalized coating material, wherein the antibiological agent consists essentially of SEQ ID NO: 40 and wherein the antibiological agent is admixed within the uncured water-borne polymeric coating material at a concentration sufficient to enable the antibiological-functionalized coating material to provide a functionalized level of microbial metabolic activity for the at least one target microorganism within the antibiological- functionalized coating material that is at least 60% less than the baseline level of microbial metabolic activity for the at least one target microorganism within the uncured water-borne polymeric coating material; and storing at least a portion of the antibiological- functionalized coating material within a container such that the functionalized level of microbial metabolic activity of the antibiological- functionalized coating material promotes shelf-life performance of the antibiological-functionalized coating material by suppressing growth of the at least one target microorganism within the antibiological-functionalized coating material while stored within the container. OPINION Claims 20-24 and 26-34 stand rejected under 35 U.S.C. § 103(a) as obvious based on Kuhner,2 Edwards,3 and Hara.4 Final Action5 4. The 2 Kuhner et al. (US 6,858,581 B2; Feb. 22, 2005). 3 Edwards (US 5,885,782; Mar. 23, 1999). 4 Hara (US 5,646,014; July 8, 1997). 5 Office Action mailed Feb. 17, 2021. Appeal 2022-000432 Application 16/266,096 4 Examiner finds that Kuhner discloses antimicrobial peptides that “can be manufactured into an industrially acceptable carrier including a household product, paint, or a personal care composition.” Id. “It is disclosed that the antimicrobial peptides are able to treat aqueous and non-aqueous environments, to inhibit or terminate the growth of at least one microbe.” Id. at 5. The Examiner finds that Hara “also disclose[s] an antibacterial agent comprising a peptide, where it is disclosed the antibacterial agent is incorporated into polymer compositions and are added as preservatives for . . . paints.” Id. at 6. The Examiner finds that “Edwards discloses synergistic antimicrobial compositions comprising at least the peptide of SEQ ID NO: 40.” Id. at 5. The Examiner concludes that the prior art would have made obvious a method “comprising providing an uncured water-borne polymeric coating material, admixing [with it] a specific amount of an antibiological agent consisting essentially of SEQ ID NO: 40 . . . , [and] storing the uncured polymeric coating material admixed with the antibiological agent.” Id. at 6. The Examiner finds that the cited references would have suggested the claimed method because Kuhner “disclose[s] providing an uncured aqueous polymer coating composition, [and] admixing antimicrobial peptides into the polymer coating composition,” and “[t]he antimicrobial peptide consisting of SEQ ID NO: 40 was known at the time of the invention and functionally equivalent to the antimicrobial peptides of Kuhner.” Id. With regard to claim 20’s limitation of “a concentration sufficient . . . to provide a functionalized level of microbial metabolic activity . . . that is at least 60% less than the baseline level,” the Examiner finds that Kuhner discloses that its “antimicrobial peptides are typically present in an amount of Appeal 2022-000432 Application 16/266,096 5 about 0.000001 to about 99%, including 0.01 to about 25%.” Final Action 4. The Examiner concludes that a skilled artisan would have had “a reasonable expectation of success because it was known in the prior art that antimicrobial peptides can be mixed into polymer coating compositions to inhibit antimicrobial growth and preserve the polymer coating compositions.” Id. at 7. The Examiner also finds that the concentrations disclosed by Kuhner “encompass the amounts recited in . . . instant claims” 21, 29, and 32. Id. We agree with the Examiner that the method of claim 20 would have been obvious to a person of ordinary skill in the art based on the cited references. Kuhner discloses “chemically-modified peptides having antimicrobial activity and methods of making them and using them to combat microorganisms.” Kuhner 1:10-12. Kuhner discloses that “[a]t least one of [its] peptides . . . may be combined with at least one carrier to form an antimicrobial composition,” and such carriers include “a pharmaceutically acceptable carrier, an industrially acceptable carrier, a household product, paint, joint cement, or a personal care composition.” Id. at 6:10-12, 6:47-50 (emphasis added). Kuhner also discloses that its antimicrobial peptides can be incorporated into various types of polymers. Id. at 6:40-45. Kuhner states that, in its antimicrobial compositions . . . , the peptides are typically present in an amount of about 0.000001 to about 99%. In other embodiments, the peptides are present in an amount of about 0.001 to about 50%. In other embodiment[s], the peptides are present in an amount of about 0.01 to about 25%. Id. at 6:51-56. Kuhner states that its compositions are “effective against bacteria . . . , fungi, parasites, viruses, and algae.” Id. at 8:60-67. Appeal 2022-000432 Application 16/266,096 6 Like Kuhner, Hara “provide[s] a novel peptide and an antibacterial agent comprising the peptide as an active ingredient.” Hara 1:28-30. Hara teaches that its peptide, known as moricin, can be used as “a preservative for construction materials and/or paints.” Id. at 5:16-17. Edwards states that its “methods and compositions . . . provide an array of different antibiotic compounds which are shown to have particular effectiveness in treating fungal diseases of plants and animals.” Edwards 5:46-49. Edwards’ peptide having the amino acid sequence of its SEQ ID NO:40 is the same as the “antibiological agent consist[ing] essentially of SEQ ID NO:40” recited in claim 20. See Spec. 85 (citing Edwards). Edwards states that [t]he antibiotic compositions consisting essentially of one of the peptides of Seq. ID Nos. 25-47 . . . have been demonstrated to inhibit the growth of fungal cells from fungi selected from the group of pathogenic fungi consisting of Fusarium, Rhizoctonia, Ceratocystis, Pythium, Mycosphaerella and Candida species. Edwards 8:16-22. Based on the above disclosures, it would have been obvious to a person of ordinary skill in the art to use Edwards’ antifungal peptide having the amino acid sequence of SEQ ID NO:40 in Kuhner’s antimicrobial compositions comprising a carrier such as paint (including latex paint), and to use Edwards’ peptide in an amount within the range suggested by Kuhner. Kuhner provides a reason to do so, because it discloses that its compositions are intended to be effective against fungi, among other types of microbes. It would also have been obvious to store the resulting paint-and-peptide composition, because Hara teaches that an antimicrobial peptide is effective as a preservative in paint. Appeal 2022-000432 Application 16/266,096 7 Appellant argues that the Examiner has not properly accounted for claim 20’s limitation that the uncured water-borne polymeric coating material is biocide-free before the peptide of SEQ ID NO: 40 is added. Appeal Br. 14-18.6 Appellant argues that the Specification makes clear that claim 20’s limitation that the uncured water-borne polymeric coating material is biocide-free requires the “coating material to be free of not only an antimicrobial peptide preservative (i.e., a biobased biocide), but to also be free of other forms of biocides.” Id. at 17. Appellant argues that the “Examiner contends that the uncured water-borne polymeric coating material is biocide free because ‘the antimicrobial peptide has not yet been added. . .’.” Id. at 18 (citing Advisory Action (March 10, 2021)). But, Appellant argues, the “Examiner provides no articulated basis of reasoning as to why one of ordinary skill in the art would understand the uncured water-borne polymeric coating material to be biocide-free solely because antimicrobial peptide has yet to be added thereto.” Id. As the Examiner points out, however, Kuhner “does not mention or indicate that there is biocide present in any of the various polymer materials disclosed, prior to incorporation of antimicrobial peptides. Therefore, there is no reason to believe that the starting polymeric material to which the antimicrobial peptide is mixed into would not be ‘biocide-free.’” Ans. 11. In response, Appellant argues that Kuhner incorporates by reference U.S. Patent 5,939,086, which discloses contaminant-reducing compositions that can contain coatings and/or biocides and can be formulated with superabsorbent polymers (including acrylate polymers) into water- or oil- 6 Appellant also refers to this limitation as “Omitted Limitation 1” or “OL1.” See Appeal Br. 12, Reply Br. 1. Appeal 2022-000432 Application 16/266,096 8 based formulations. Reply Br. 3-4. Appellant argues that such a carrier, “which may be made from polyacrylate and which may include biocide, is a ‘starting polymeric material to which the antimicrobial peptide of Kuhner is mixed into.’” Id. at 5 (quoting Ans. 11). Appellant also argues that the “relied-upon disclosure of Kuhner et al. is: ‘The . . . peptide compositions of the present invention . . . may comprise at least one active ingredient, of which the peptide of the present invention is an active ingredient acting alone, additively, or synergistically against the target microbe,’” and that a plain reading of this disclosure indicates that Kuhner’s composition “may include one or more active ingredients other than [Kuhner’s] peptide . . . (e.g., a biocide; See Kuhner et al. at 2:5-14).” Reply Br. 6. In our view, a preponderance of the evidence of record supports the Examiner’s position that it would have been obvious, based on the cited references, to mix Edwards’ antifungal peptide (SEQ ID NO: 40) with the paint composition disclosed by Kuhner, wherein the composition is biocide- free before the antifungal peptide is added. As the Examiner noted, Kuhner does not disclose that a biocide is present before an antimicrobial peptide is added, and Kuhner expressly states that its antimicrobial peptide can be “an active ingredient acting alone.” Kuhner 12:29. For its part, Edwards states that “antibiotic compositions consisting essentially of one of the peptides of Seq. ID Nos. 25-47 . . . have been demonstrated to inhibit the growth of fungal cells from . . . pathogenic fungi.” Edwards 8:16-20. Based on this description, a skilled artisan would have expected that Edwards’ peptide having the amino acid sequence of SEQ ID NO: 40 would have antifungal activity by itself and would not need Appeal 2022-000432 Application 16/266,096 9 to be combined with another biocide in order to be effective in Kuhner’s paint composition. Appellant has pointed to statements indicating that the prior art antimicrobial peptides can be combined with other biocides, but not to a disclosure that they must be mixed with a composition that already contains a biocide. In summary, both Kuhner and Edwards disclose antimicrobial peptides that are effective by themselves, and thus would have made it obvious to mix Edwards’ SEQ ID NO: 40 antifungal peptide with a biocide- free base paint composition, as required by Appellant’s claims. Appellant also argues that the Examiner has not shown that the cited references would have suggested mixing the recited peptide at “a concentration sufficient . . . to provide a functionalized level of microbial metabolic activity . . . that is at least 60% less than the baseline level of microbial metabolic activity.” Appeal Br. 18-19. Appellant argues that the “Examiner is silent as to how and why one of ordinary skill in the art would specifically and predictably arrive at the as-recited ‘at least 60%’ reduction in the baseline microbial metabolic activity.” Id. at 19-20. Appellant relies on “the same reasoning presented above in reference to the microbial metabolic activity reduction limitation” regarding claims 24, 28, and 34, which recite at least an 80% reduction in microbial metabolic activity. Id. at 24-25. This argument is unpersuasive. We agree with the Examiner that incorporating known antimicrobial peptides, including SEQ ID NO: 40 of Edwards, at concentrations sufficient to inhibit antimicrobial growth in an uncured water-borne polymeric coating material will reasonably enable the uncured water- borne polymeric coating material to have the microbial metabolic activity reduction limitation or the “at least 60%” Appeal 2022-000432 Application 16/266,096 10 reduction in baseline microbial metabolic activity recited in independent claim 20. Ans. 13 (emphasis added). In other words, Edwards discloses that its of SEQ ID NO: 40 “inhibit[s] the growth of fungal cells” (Edwards 8:16-19), which necessarily means that it reduces microbial metabolic activity. And Kuhner discloses that antimicrobial peptides can be used, with carriers, in a wide range of concentrations. Kuhner 6:51-65. Thus, it would have been obvious to a skilled artisan to use Edwards’ antifungal peptide in Kuhner’s composition at a concentration sufficient to result in the desired inhibition of fungal metabolic activity, including a reduction of more than 60%, or more than 80%, compared to the baseline level. Appellant separately argues claims 21, 29, and 32. Appeal Br. 20-22. However, the only argument presented with respect to these claims specifically is that “the prior art does not disclose or suggest a polymeric coating material that is biocide-free.” Id. at 21. This argument is unpersuasive for the same reasons discussed above with regard to claim 20. With regard to claims 23, 30, and 33, which “recite that ‘the uncured water-borne polymeric coating material is an acrylic latex coating material,’” Appellant argues that “Kuhner is silent as to a water-borne acrylic latex coating material - i.e., uncured, biocide-free or otherwise” and “Edwards provides no disclosure or suggestion that [its] carriers are or can be a water-borne acrylic latex coating material or suitably similar material.” Appeal Br. 22-23. Appellant argues that the “Examiner is silent as to how or why one of ordinary skill in the art would have found it ‘obvious to arrive at the claimed uncured water-borne acrylic latex coating’ based on the disclosures of Kuhner, Edwards and Hara.” Id. at 23. Appeal 2022-000432 Application 16/266,096 11 We agree with the Examiner, however, that the disputed limitation would have been obvious based on the cited references. “A water-borne acrylic latex coating material is essentially an acrylic water-based paint composition.” Ans. 20. Relevant to this limitation, Kuhner discloses that antimicrobial peptides “may be incorporated into a polymer, such as, for example, . . . a polyacrylate” (Kuhner 6:40-43); that suitable carriers include paint (id. at 6:46-49); and that its antimicrobial peptides are suitable for aqueous environments (id. at 7:16-21). Considered as a whole, therefore, Kuhner would have reasonably suggested mixing an antimicrobial peptide with an acrylic latex water-based paint composition. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 20-24, 26-34 103(a) Kuhner, Edwards, Hara 20-24, 26-34 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2013). AFFIRMED