Ex Parte Andrews et alDownload PDFPatent Trial and Appeal BoardApr 26, 201311504150 (P.T.A.B. Apr. 26, 2013) Copy Citation 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 __________ Appeal 2011-003087 Application 11/504,150 Technology Center 1600 __________ 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). Appeal 2011-003087 Application 11/504,150 2 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 Appeal 2011-003087 Application 11/504,150 3 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. Appeal 2011-003087 Application 11/504,150 4 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 Appeal 2011-003087 Application 11/504,150 5 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 Appeal 2011-003087 Application 11/504,150 1 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 Appeal 2011-003087 Application 11/504,150 2 “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 Appeal 2011-003087 Application 11/504,150 3 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 Appeal 2011-003087 Application 11/504,150 4 (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. Copy with citationCopy as parenthetical citation