Ex Parte Alteheld et al

Patent Trial and Appeal Board

Feb 18, 2016

12530535 (P.T.A.B. Feb. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/530,535 0910912009
123223 7590 02/22/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Armin Alteheld
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
074014-0292-US (286540) 1856
EXAMINER
ZEMEL, IRINA SOPJIA
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
02/22/2016 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARMIN AL TEHELD, KLAUS HAHN, CHRISTOF MOCK,
BERNHARD VATH, JENS-UWE SCHIERHOLZ
Appeal2014-004641
Application 12/530,535
Technology Center 1700
Before BEYERL YA. FRANKLIN, ELIZABETH M. ROESEL, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
ROESEL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 10-13, 15, 16, and 18-25 under 35 U.S.C. § 103(a)
as unpatentable over Woerner et al. (US 4,666,948, issued May 19, 1987,
"Woerner") or Mahnke et al. (US 4,540,717, issued Sept. 10, 1985,
"Mahnke") in view of Ong et al. (US 2006/0166024 Al, published July 27,
2006, "Ong '024") or Ong et al. (US 2008/0017307 Al, published Jan. 24,
2008, "Ong '307"). We have jurisdiction under 35 U.S.C. § 6(b).
1 Appellants identify BASF SE as the real party in interest. App. Br. 2.
Appeal2014-004641
Application 12/530,535
We AFFIRM.
STATEMENT OF THE CASE
The subject matter on appeal relates to a process for producing a foam
comprising at least one antimicrobial active and a foam thus produced.
Spec. 1: 8-9. The foam is based on a melamine-formaldehyde condensation
product. App. Br. 13, 14 (claims 10, 19). The foam can be used for thermal
and acoustical insulation, as packaging material, as cleaning sponges, in the
hygiene sector, and as a filter material, for example in air-conditioning
systems. Spec. 1:10-12.
Claims 10 and 19 are the only independent claims, are representative
of the subject matter on appeal, and are reproduced below from Appellants'
Claims Appendix:
10. A process for producing a foam based on a
melamine-formaldehyde condensation product comprising at
least one antimicrobial active, comprising the steps of:
(1) preparing a solution or dispersion comprising at least
one precondensate of the foam to be produced and at least one
antimicrobial active,
(2) foaming the precondensate by heating the solution or
dispersion of step (1) to obtain a foam comprising at least one
antimicrobial active, and
(3) heat treating the foam obtained in step (2) at a
temperature in the range from 120 to 300°C, wherein the at
least one antimicrobial active is selected from the group
consisting of silver salt, copper salt, zinc salt and organic
biocide and wherein the organic biocide is chloroisocyanurate,
quartemary ammonium compound, hydantoin,
chloromethylisothiazolinone, parabene, triclosan, 2-bromo-2-
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Appeal2014-004641
Application I2/530,535
nitropropane- I ,3-diol, phenoxyethanol, hexahydrotriazine or
mixtures thereof
and wherein the at least one antimicrobial active is
present in the solution or dispersion in an amount ranging from
O.OOI % to I% by weight, based on the precondensate.
I 9. A foam based on a melamine-formaldehyde
condensation product comprising at least one antimicrobial
active uniformly distributed therein, wherein the at least one
antimicrobial active is selected from the group consisting of
silver salt, copper salt, zinc salt and organic biocide and
wherein the organic biocide is chloroisocyanurate, quartemary
ammonium compound, hydantoin,
chloromethylisothiazolinone, parabene, triclosan, 2-bromo-2-
nitropropane-I,3-diol, phenoxyethanol, hexahydrotriazine or
mixtures thereof.
App. Br. I3-I4.
ANALYSIS
Appellants' arguments are directed to independent claims I 0 and I 9
only. The dependent claims are not separately argued. App. Br. 5-I l.2 As
a consequence, the dependent claims stand or fall with their parent
independent claims, and we confine our discussion to independent claims I 0
and I9.
The Examiner finds that both Mahnke and W oemer disclose a process
for producing a foam based on a melamine-formaldehyde condensation
product comprising steps (1 ), (2), and (3) of claim I 0, except that neither
reference discloses the addition of an antimicrobial agent. 2011-07-I2 Non-
Final Rejection, 4. The Examiner finds that the addition of an antimicrobial
2 Although dependent claim I 8 is argued under a separate heading,
Appellants rely on the same argument as presented for independent claim
IO. App.Br. II.
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Application 12/530,535
agent to the melamine-formaldehyde foam of Mahnke or W oemer would
have been obvious to one or ordinary skill in the art in order to confer
antimicrobial properties to the foam. Id. As support for this finding, the
Examiner cites Ong '024 and Ong '307 to show that antimicrobial agents
confer antimicrobial properties to a melamine-formaldehyde resin. Id.;
2013-05-31 Non-Final Rejection 2.
Appellants argue that no combination of W oemer or Mahnke with
Ong '024 or Ong '307 would have taught one of ordinary skill in the art
adding at least one antimicrobial active to a solution or dispersion of
precondensate prior to foaming and curing, as recited in claim 10. App. Br.
5-8. Citing a Rule 132 declaration,3 Appellants argue that the process of
claim 10 provides unexpected results over the cited art. Id. at 8-10.
Regarding claim 19, Appellants argue that the cited art does not disclose that
at least one antimicrobial active is uniformly distributed throughout the
foam. Id. at 11.
Upon consideration of the evidence presented in this Appeal and each
of Appellants' arguments, we are not persuaded that Appellants identify
reversible error, and we find that a preponderance of evidence supports the
Examiner's conclusion that the subject matter of Appellants' claims is
unpatentable over the applied prior art. We sustain the rejection of claims
10-13, 15, 16, and 18-25 based on the Examiner's findings of fact,
conclusions of law, and rebuttals to Appellants' arguments, as expressed in
the Answer. We add the following for emphasis.
3 Declaration under 37 C.F.R. § 1.132 of Dr. Tobias Steinke, filed
November 13, 2012 ("Steinke Declaration").
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Application 12/530,535
Regarding the addition of at least one antimicrobial active to a
solution or dispersion of precondensate prior to foaming and curing as
recited in claim 10, we determine that a preponderance of the evidence
supports that this feature is suggested by the combined teachings of the cited
art. The Examiner cites Mahnke' s teaching that conventional additives are
added to a solution of melamine/formaldehyde precondensate before the
solution is foamed and cured. Mahnke 5:26-30, 7:18-21, 8:45-52; 2013-05-
31 Non-Final Rejection 3; Answer 3--4. The Examiner cites the Ong
references4 to show that antimicrobial agents are known additives for
melamine/formaldehyde resins and that such antimicrobial agents are added
to the resin prior to curing. Ong '024 Abstract, i-fi-f 16-17, 25, 40; 2013-05-
31 Non-Final Rejection 2--4; Answer 4---6. The cited evidence is sufficient to
support the Examiner's conclusion that it would have been obvious to one of
ordinary skill in the art to add an antimicrobial agent, such as one taught by
Ong ;024, to the melamine/formaldehyde foam taught by Woerner or
Mahnke, and further that it would have been obvious to add the
antimicrobial agent to a solution of precondensate before the solution is
foamed and cured, applying Mahnke' s teaching as to how conventional
additives are incorporated into a melamine/formaldehyde foam. 2013-05-31
Non-Final Rejection 3--4; Answer 4---6.
4 We note that the publication date of Ong '307 does not predate the
March 12, 2007 foreign priority date claimed by Appellants. We determine
that the relevant disclosures of Ong '307 are merely cumulative of the cited
disclosures of Ong '024, and the Examiner's decision is adequately
supported without relying upon Ong '307.
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Application 12/530,535
Appellants do not direct us to evidence sufficient to persuade us that
one of ordinary skill in the art would have incorporated antimicrobial agent
in a manner different from Mahnke' s teaching regarding incorporation of
conventional additives. Appellants argue that antimicrobial additives differ
from Mahnke's disclosed additives with respect to particle size, App. Br. 7-
8, but that argument is not supported by evidence sufficient to persuade us
that any such differences exist or would have led one of ordinary skill in the
art to deviate from Mahnke' s teaching regarding how conventional additives
are incorporated into a melamine/formaldehyde foam. See In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir, 1997) (attorney argument is not the kind of
factual evidence that is required to rebut a prima facie case of obviousness).
To support unexpected results, Appellants present evidence of
experiments showing that a foam prepared by adding an antimicrobial agent
to a precondensate before foaming and curing results in less leaching of
antimicrobial agent from the foam compared to a foam impregnated with
antimicrobial agent after the foam has been cured. App. Br. 8-10; Steinke
Declaration i-fi-1 9-16.
For a showing of "unexpected results" to be probative evidence of
non-obviousness, the applicant must establish "(1) that there actually is a
difference between the results obtained through the claimed invention and
those of the prior art, ... and (2) that the difference actually obtained would
not have been expected by one skilled in the art at the time of invention." In
re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (citation omitted). "[A]n
applicant relying on comparative tests to rebut a prima facie case of
obviousness must compare his claimed invention to the closest prior art." In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also In re Baxter
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Application 12/530,535
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("when unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art"). Furthermore, "[i]n
order to establish unexpected results for a claimed invention, objective
evidence of nonobviousness must be commensurate in scope with the claims
which the evidence is offered to support." In re Clemens, 622 F.2d 1029,
1035 (CCPA 1980).
Like the Examiner, we are not persuaded that Appellants' comparative
tests show a difference between the process of claim 10 and processes taught
by the cited art. Ans. 7. Appellants assert that their comparative example
Ib--a foam impregnated with an antimicrobial agent-is "similar to the Ong
references." App. Br. 9. As noted by the Examiner, however, none of the
cited references teaches incorporating an antimicrobial additive by
impregnating a foam with an aqueous solution of the antimicrobial, as in
Appellants; comparative example lb. Ans. 7-8. Ong teaches mixing a
liquid dispersion of an antimicrobial with a liquid melamine formaldehyde
resin prior to injecting the resin into a mold and curing the resin. Ong '024
i-fi-125, 40. Mahnke teaches incorporating an additive in a solution of
melamine/formaldehyde precondensate before the solution is foamed and
cured. Mahnke 5:26-30, 7:18-21, 8:45-52. Accordingly, Appellants'
comparative tests fail to show a difference between the claimed process and
the processes taught by the cited art.
Like the Examiner, we are not persuaded that the results shown by
Appellants' comparative tests would have been unexpected by one of
ordinary skill in the art. The Examiner finds "there is nothing unexpected"
in Appellants' results showing that leaching is decreased by mixing an
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Application 12/530,535
additive with a precondensate before foaming and curing, as compared with
applying the additive in the form of an aqueous solution to the surface of a
finished cured product. 2013-05-31 Non-Final Rejection 4--5. According to
the Examiner, it is not unexpected that applying the additive in the form of
an aqueous solution and then applying the very same solvent (water) would
result in more leaching than embedding the additive in the polymer by
incorporating it into a precondensate. Id. at 5; Ans. 8.
Appellants do not directly respond to the Examiner's findings.
Instead, Appellants assert that the results of the claimed process are
unexpected because "[ o ]ne of ordinary skill in the art would expect that a
small molecule, such as phenoxyethanol, would be more readily washed out
of the foam than would the large filler materials of Mahnke." App. Br. 10.
Appellants' assertion is not persuasive for at least two reasons: First, the
evidence is not sufficient to show that the antimicrobial molecules recited in
claim 10 are smaller than the conventional additives disclosed in Mahnke.
Second, as Appellants themselves concede, their experiments make no
comparison to Mahnke' s method of incorporating conventional additives
into a melamine/formaldehyde foam. See Reply Br. 4 ("If Appellants had
directly compared Mahnke, as suggested by the Examiner, Appellants would
need to add conventional fillers to a precondensate solution or dispersion.")
Furthermore, as noted by the Examiner, Appellants' arguments and
evidence are not commensurate in scope with the claimed subject matter
because they are based on a comparison using a single antimicrobial agent-
phenoxyethanol-whereas claim 10 recites a group encompassing many
other antimicrobial agents. See App. Br. 13 (claim 10).
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Application 12/530,535
Regarding the uniform distribution of antimicrobial active in the foam
as recited in claim 19, we determine that a preponderance of the evidence
supports that this feature is suggested by combined teachings of the cited art.
The Examiner cites Mahnke's teaching that additives are "mixed
homogeneously" with a solution or dispersion of melamine resin. Mahnke
7:18-21; 2013-05-31 Non-Final Rejection 3. Based on this teaching, the
Examiner finds that one of ordinary skill in the art would have expected that
additives, such as the antimicrobial agents disclosed by Ong, would be
homogeneously distributed in the final product, Ans. 3--4, and that Mahnke' s
teaching inherently results in a uniform distribution of additives in the final
product, id. at 10. Appellants do not address Mahnke's teaching regarding
homogeneous mixing of additives or the Examiner's findings based on that
teaching. See App. Br. 11. On this record, Appellants' argument is not
sufficient to identify error in the Examiner's findings regarding claim 19,
which we determine are supported by a preponderance of the evidence.
Based on the foregoing, the weight of the evidence supports the
Examiner's conclusion of obviousness. Therefore, the§ 103(a) rejection is
sustained.
CONCLUSION OF LAW AND DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1).
AFFIRMED
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