Ex Parte Andrews et al

Patent Trial and Appeal Board

Apr 26, 2013

11504150 (P.T.A.B. Apr. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JEFFREY F. ANDREWS, MATTHEW T. SCHOLZ,
JOSEPH A. TUCKER, and KAVEH POURNOOR
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Appeal 2011-003087
Application 11/504,150
Technology Center 1600
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Before DONALD E. ADAMS, DEMETRA J. MILLS, and
LORA M. GREEN, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge MILLS.

Opinion Dissenting filed by Administrative Patent Judge ADAMS.

MILLS, Administrative Patent Judge

DECISION ON REHEARING

This is an appeal under 35 U.S.C. § 134. Appellants‟ request
rehearing of our decision dated January 31, 2013. We have jurisdiction
under 35 U.S.C. § 6(b).
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STATEMENT OF CASE
The following claim is representative.
5. A method of making an absorbent antimicrobial article, said method
comprising:
treating said article with an antimicrobial composition, wherein said
composition comprises:
0.01 wt. % to 5.0 wt. % of a C8 to C12 fatty acid monoester of
glycerol and/or a propylene glycol, wherein said fatty acid
monoester comprises greater than about 85 wt. %
monoglyceride; and 0.5 wt. % to 5.0 wt. % of an enhancer
selected from the group consisting of a chelating agent and an
organic acid, wherein said organic acid is selected from the
group consisting of lactic acid, tartaric acid, adipic acid,
succinic acid, citric acid, ascorbic acid, malic acid, mandelic
acid, acetic acid, sorbic acid, benzoic acid, salicylic acid, and
combinations thereof; and
drying said treated article to form a dry or essentially dry coating
comprising at least 50 wt. % solids based on the total weight of the dry
coating,
wherein said antimicrobial article is effective for killing at least 99.9%
of microorganisms when challenged in the dry or essentially dry state.

Appellants request rehearing of the obviousness rejections (see, e.g.,
Req. Reh‟g 9).

PRINCIPLES OF LAW

37 C.F.R. § 41.52 states that

(a)(1) …
The request for rehearing must state with particularity the
points believed to have been misapprehended or overlooked by
the Board. Arguments not raised in the briefs before the Board
and evidence not previously relied upon in the brief and any
reply brief(s) are not permitted in the request for rehearing
except as permitted by paragraphs (a)(2) and (a)(3) of this
section. When a request for rehearing is made, the Board shall
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render a decision on the request for rehearing. The decision on
the request for rehearing is deemed to incorporate the earlier
opinion reflecting its decision for appeal, except for those
portions specifically withdrawn on rehearing, and is final for
the purpose of judicial review, except when noted otherwise in
the decision on rehearing.

(2) Upon a showing of good cause, Appellants may present a new
argument based upon a recent relevant decision of either the Board or a
Federal Court.

Discussion
Appellants arguing the following basis for rehearing:
1. The Majority failed to establish an evidentiary basis to support a
conclusion that, if combinable, the combination of Brown Skrobot,
Lefren, and Yamaguchi (with or without Donovan or Kraskin) suggest
compositions that are applied to an article, as required by Appellants'
claimed invention, in a manner that would inherently make an absorbent
antimicrobial article that is: (1) effective for killing at least 99.9% of
microorganisms when challenged or (2) self-disinfecting as is required by
Appellant's claimed invention.
2. The Majority failed to consider whether or not Brown-Skrobot, Lefren,
and Yamaguchi (with or without Donovan or Kraskin) are properly
combinable despite evidence that the references teach away from the
combination and/or renders Brown-Skrobot and/or Lefren inoperable for
its intended purpose.

Appellants‟ arguments fail to persuade us to alter our original
decision.
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Appellants have pointed to no real issue “misapprehended or overlooked by
the Board” and merely reargue issues already argued in the Brief addressed
in the original Decision. In particular, the Decision addressed the issue as
to proper combinability of the references at pages 13-14, noting the
analogous nature of the cited references and their addressing of the same
problem, treating toxic shock. Furthermore, the Examiner explicitly laid out
the motivation to combine the cited references at pages 14-15 of the Answer.
As to the “teaching away” and the “inoperable for intended purpose”
arguments, the Decision recited at pages 14-15 that:
The Examiner has thus provided evidence that the
claimed method steps of making an absorbent antimicrobial
particle, the composition applied in the claimed method, as well
as the final structure resulting from the claimed method, are
suggested by the combination of references relied upon
by the Examiner. Moreover, appellants have not come forward
with evidence to show that the combined compositions as
taught by the combination of Brown-Skrobot and Lefren as
applied in the claimed method, would not result in an absorbent
antimicrobial article that is incapable of killing at least 99.9%
of microorganisms when challenged in the dry state.

Thus, the burden of proof was properly shifted to Appellants under the
relevant cited case law in the Decision to show that the combined
compositions as taught by the combination of Brown-Skrobot and Lefren as
applied in the claimed method, would not result in an absorbent
antimicrobial article that is capable of killing at least 99.9% of
microorganisms when challenged in the dry state. Appellants pointed to no
such evidence that was made of record.
Specifically, the claims on appeal are drawn to a “method of making”
an absorbent antimicrobial article, which comprises the steps of treating the
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article with the composition set forth in the claim, and then drying the
article. Appellants‟ arguments focus on whether there is an evidentiary basis
that 99.9% of microorganisms would be killed when challenged (see, e.g.,
Req. Reh‟g 4-8), and not whether the references as combined by the
Examiner suggest the method of making the absorbent article as claimed.
“Mere recognition of latent properties in the prior art does not render
nonobvious an otherwise known invention.” In re Baxter-Travenol Labs.,
952 F.2d 388, 392 (Fed. Cir. 1991).

CONCLUSION OF LAW
The Request for Rehearing is denied.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REHEARING DENIED

lp

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ADAMS, Administrative Patent Judge, dissenting.
As the Majority recognizes
“In rejecting claims under 35 U.S.C. § 103, the examiner bears
the initial burden of presenting a prima facie case of
obviousness. Only if that burden is met, does the burden of
coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993)
(citations omitted).
(Decision 10 (emphasis added).)
Appellants‟ claimed invention requires: (1) an absorbent article be
treated with an antimicrobial composition and (2) the resulting article be (a)
effective for killing at least 99.9% of microorganisms when challenged in
the dry or essentially dry state or (b) self-disinfecting (see e.g., Claims 1 and
54). Appellants‟ claimed invention defines the antimicrobial composition as
comprising, inter alia: (1) 0.01 wt. % to 5.0 wt. % of a C8 to C12 fatty acid
monoester of glycerol and/or a propylene glycol, wherein the fatty acid
monoester comprises greater than about 85 wt. % monoglyceride and (2) 0.5
wt. % to 5.0 wt. % of an enhancer, e.g. an organic acid, such as citric acid.
While Brown –Skrobot suggests an absorbent article coated with, e.g.,
0.1% or 2.38% glycerol monolaurate there is no dispute on this record that
Brown-Skrobot fails to suggest an absorbent article coated with a
composition comprising (1) an organic acid or (2) a fatty acid ester
comprising greater than 85% of monoglyceride as required by Appellants‟
claimed invention (Decision 8-9). Further, rather than suggesting an
absorbent article that is (a) effective for killing at least 99.9% of
microorganisms when challenged in the dry or essentially dry state or (b)
self-disinfecting; Brown-Skrobot suggests that the coated absorbent article is
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“effective to inhibit bacterial toxins effect when the article is brought into
contact with the bacteria” (Decision 7).
Lefren is relied upon by Examiner and Majority to suggest an
absorbent article coated with some amount of an organic acid, such as citric
acid, to inhibit the growth of pathogenic bacteria (Decision 9).
While the Majority makes no finding relative to Yamaguchi,
Examiner relies on Yamaguchi to suggest that some concentration of
“glycerides having high content of monoglycerides up to 98.4% … [are]
useful as [an] antimicrobial agent” (Ans. 13).
In sum:
(1) no single prior art reference relied upon by Examiner or the
Majority teaches or suggests the composition required by Appellants‟
claimed method (Cf. In re Woodruff, 919 F.2d 1575, 1577-78 (Fed. Cir.
1990) (“The sole reference relied upon by the Board in rejecting the
appealed claims is … McGill”) (emphasis added); see Req. Reh‟g 3;
Decision 14).
(2) Examiner and the Majority fail to identify a suggestion in Lefren
of an article coated with 0.5 wt. % to 5.0 wt. % of an enhancer, e.g. an
organic acid, such as citric acid, as is required by Appellants‟ claimed
invention (see generally Req. Reh‟g 3).
(3) Majority fails to address the requirement in Appellants‟ claimed
invention that requires the fatty acid monoester to comprise greater than
about 85 wt. % monoglyceride. In addition, rather than establish that the
fatty acid monoester of glycerol suggested by Brown-Skrobot comprises
greater than about 85 wt. % monoglyceride, Examiner simply concludes that
a person of ordinary skill in this art would “select the fatty acid monoester
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that ha[s] greater than 85% monoglycerides as taught by Yamaguchi” (Ans.
15). Thus, it remains unclear on this record whether the fatty acid monoester
of glycerol Examiner finds would have been obvious to select from
Yamaguchi would be the same C8-C12 fatty acid monoester of glycerol
suggested by Brown-Skrobot to inhibit the effect of bacterial toxins (see
Ans. 13; Cf. Decision 7-9; see generally Req. Reh‟g 3).
For the foregoing reasons, Examiner and the Majority failed to
establish that the prior art relied upon suggests “the use of the same
composition[]” as is required by Appellants‟ claimed invention (Cf. Decision
14 (emphasis added)). To be clear, for the forgoing reasons, the prior art
relied upon by Examiner and the Majority fails to make obvious the
composition required by Appellants‟ claimed invention. Stated differently,
the composition required by Appellants‟ claims remains unknown on this
record. Inherency cannot be based on what is not known. In re Rijckaert, 9
F.3d 1531, 1534 (Fed. Cir. 1993) (“That which may be inherent is not
necessarily known. Obviousness cannot be predicated on what is
unknown”) (internal quote and citation omitted). Cf. Decision 14 (“„[m]ere
recognition of latent properties in the prior art does not render nonobvious
an otherwise known invention‟ In re Baxter-Travenol Labs., 952 F.2d 388,
392 (Fed. Cir. 1991)” (emphasis added, alteration original)). Therefore, I
agree with Appellants‟ contention that, on this record, the Majority‟s
reliance on inherency is misplaced (see e.g., Req. Reh‟g. 3 and 6).
As a result, Examiner and the Majority failed to establish that a person
of ordinary skill in this art would have reasonably concluded that the
combination of Brown-Skrobot, Lefren, and Yamaguchi would have
reasonably suggested an absorbent article coated with a composition that is
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(a) effective for killing at least 99.9% of microorganisms when challenged in
the dry or essentially dry state or (b) self-disinfecting as required by
Appellants‟ claimed invention (see Req. Reh‟g 4-6; Cf. Decision 7 (Brown-
Skrobot suggest that the coated absorbent article is “effective to inhibit
bacterial toxins effect when the article is brought into contact with the
bacteria”); Decision 9 (Lefren suggests an absorbent article coated with
some amount of an organic acid, such as citric acid, to inhibit the growth of
pathogenic bacteria ).
To be complete, the Majority failed to establish that Donovan or
Kraskin make up for the foregoing deficiency in the combination of Brown-
Skrobot, Lefren, and Yamaguchi.
In sum, I agree with Appellants‟ contention that Examiner and
The Majority failed to establish an evidentiary basis to support
a conclusion that, if combinable, the combination of Brown
Skrobot, Lefren, and Yamaguchi (with or without Donovan or
Kraskin) suggest compositions that are applied to an article, as
required by Appellants' claimed invention, in a manner that
would inherently make an absorbent antimicrobial article that
is: (1) effective for killing at least 99.9% of microorganisms
when challenged or (2) self-disinfecting as is required by
Appellant's claimed invention.

(Req. Reh‟g 3.) It is Examiner‟s burden to present a prima facie case of
obviousness (Decision 10). For the foregoing reasons, it is my opinion that
Examiner and the Majority failed to carry that burden.
Therefore, I would grant Appellants‟ request for reconsideration and
reverse the obviousness rejections on this record.