Ex Parte Bartko

Board of Patent Appeals and Interferences

Jun 22, 2010

10893008 (B.P.A.I. Jun. 22, 2010)

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.
10/893,008 07/16/2004 Joseph P. Bartko FDN-2860 3014
7590 06/22/2010
INTERNATIONAL SPECIALTY PRODUCTS
Attn: William J. Davis, Esq.
Building NO. 8
1361 Alps Road
Wayne, NJ 07470
EXAMINER
CHUI, MEI PING
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
06/22/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOSEPH P. BARTKO
__________

Appeal 2010-001706
Application 10/893,008
Technology Center 1600
__________

Decided: June 22, 2010
__________

Before TONI R. SCHEINER, LORA M. GREEN, and STEPHEN WALSH,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
composition comprising a biocide. The Patent Examiner rejected the claims
as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
The invention concerns compositions comprising a matrix, i.e., a
plastic, a biocide and an antioxidant, wherein the antioxidant stabilizes the
biocide in the matrix. (Spec. 1-2). The Specification states that the “use of
an antioxidant to improve the thermal stability of plastics is well known in
the art. However, when a biocide is introduced into such plastics … thermal
degradation of the biocide occurs at the processing temperatures of the
plastic….” (Id. at 1). According to the Specification, the instant invention
provides a composition in which the biocide exhibits thermal stability at
matrix processing temperatures up to 250° C. (Id. at 1-2).
Claims 1-12, which are all the pending claims, are on appeal. Claim 1
is representative and reads as follows:
1. A composition comprising:
(a) a matrix,
(b) a biocide, and
(c) an antioxidant,
in which said biocide exhibits thermal stability at matrix processing
temperatures up to 250°C.

The Examiner rejected the claims as follows:
• claims 1, 3-5, 7-8, and 10-11 under 35 U.S.C. §103(a) as being
unpatentable over Jiang1 in view of Behrens;2 and
• claim 9 under 35 U.S.C. §103(a) as being unpatentable over Jiang
and Behrens in view of Antioxidant Center;3 and

1 Patent Application Publication No. WO 2004/022846 A2 by Xiao Jiang et
al., published Mar. 18, 2004.
2 US Patent No. 5,006,577 issued to Behrens et al., Apr. 9, 1991.
3 Antioxidant Center, “Organophosphorus Compounds,”
www.specialchem4adhesives.com.
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• claims 1-4, 6, 8, and 11-12 under 35 U.S.C. §103(a) as being
unpatentable over Rei4 in view of Behrens.
Claims 2-8 and 10-12 have not been argued separately and therefore
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

OBVIOUSNESS
The Issues
A. The Rejection over Jiang and Behrens
The Examiner’s position is that Jiang taught a wood fiber-plastic
composite comprising a polymer matrix and an anti-microbial compound,
i.e., iodopropynyl butyl carbamate, present in the amount from 0.001% to
3.0 % by weight. (Ans. 4). The Examiner found that Jiang taught that the
polymers used in its matrix may include polyolefin and polyvinyl chloride.
(Id.). According to the Examiner, Jiang did not teach that the polymeric
composition comprised an antioxidant. (Id. at 5). However, the Examiner
found that Behrens cured this deficiency. (Id.).
The Examiner’s position is that Behrens taught a composition for
stabilizing polymeric coating resins which provide improved durability,
weather-ability, and stability against oxidation by light, moisture and
oxygen. (Id.). The Examiner found that Behrens taught that its
compositions may include antioxidants, such as sterically hindered phenol or
derivatives, or a phosphorus compound, e.g., phosphate or phosphonite.
(Id.). Additionally, the Examiner found that Behrens disclosed that such
antioxidants can be present in an amount from 0.05-2% by weight. (Id.).

4 US Patent No. 4,086,297 issued to Rei et al., Apr. 25, 1978.
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The Examiner also found that Behrens disclosed that its compositions
comprise a biocide, such as Fungitrol 11, i.e., N-(trichloromethylthio)
phthalimide. (Id.).
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to combine the
teachings of Jiang and Behrens to arrive at the claimed invention. (Id.).
Specifically, the Examiner concluded that a skilled artisan would have been
motivated to incorporate an antioxidant into Jiang’s polymer resin
composition with a reasonable expectation of success because Behrens
disclosed a composition stabilized against oxidation with an antioxidant.
(Id. at 5-6).
Appellant contends that the Examiner failed to provide a sufficient
basis for combining the references and that the combination failed to
disclose each limitation of the pending claims. (App. Br. 9-10).
Specifically, Appellant asserts that Behrens did not provide a “teaching or
suggestion with respect to the use of antioxidants to stabilize biocides in
matrix compositions processed at elevated temperatures,” as recited in the
claims. (Id.). According to Appellant, the Examiner’s combination requires
hindsight. (Id.). Appellant also asserts that the cited references failed to
disclose or suggest the limitation that the biocide exhibits thermal stability at
matrix processing temperatures up to 250°C. (Id. at 11).
The issue with respect to this rejection is whether it would have been
obvious to a person of ordinary skill in the art at the time the invention was
made to combine the known elements of the prior art for their known
functions to arrive at the claimed invention.
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B. The Rejection over Jiang, Behrens and Antioxidant Center
The Examiner relied upon Jiang and Behrens as discussed, supra.
(Ans. 8). The Examiner relied upon Antioxidant Center as expressly
disclosing that organophosphorus antioxidants are extremely effective
stabilizers during processing and as teaching that the antioxidant is normally
used in combination with a primary antioxidant. (Id.).
Appellant contends that Antioxidant Center does not remedy the
alleged shortcomings of Jiang and Behrens and, therefore, challenge the
rejection of claim 9 for the same reasons set forth for the rejection of claims
1, 3-5, 7-8, and 10-11 over Jiang and Behrens. (App. Br. 12).
The issue with respect to this rejection is whether it would have been
obvious to a person of ordinary skill in the art at the time the invention was
made to combine the known elements of the prior art for their known
functions to arrive at the claimed invention.
C. The Rejection over Rei and Behrens
The Examiner’s position is that Rei disclosed a composition
comprising a thermoplastic resin and microbiocides, including N-
(trichlormethylthio)phthalimide, i.e., Fungitrol 11, and another known as N-
trichloromethylthio-tetrahydrophthalimide, both of which are recited in
instant claim 6. (Ans. 9-10). The Examiner also found that Rei taught that
polyvinyl chloride, polyurethanes and polyolefins would be suitable
thermoplastic resins in its composition. (Id. at 10). Additionally, the
Examiner found that Rei taught that it was desirable for the microbiocide(s)
used in the composition to not degrade the resin or to become degraded
when incorporated into the resin. (Id.). According to the Examiner, Rei
taught that the microbiocides of its composition reduce the processing
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temperatures needed to form homogeneous compositions. (Id.). The
Examiner also found that Rei disclosed that a heat stabilizer can be included
as a resin additive in the composition of the invention. ((Id.). However, the
Examiner found that Rei did not specifically teach using other halogenated
pthalimide types of biocide compounds, such as captofol or fluorfolpet, as
recited in instant claim 12. (Id.). Additionally the Examiner found that Rei
did not teach that its compositions comprised an antioxidant. (Id.).
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to combine Rei
and Behrens to arrive at the claimed invention. (Id. at 11). Specifically, the
Examiner reasoned that a skilled artisan would have been motivated to
substitute another halogenated phthalimide biocide, e.g., captofol or
fluorfolpet, for Rei’s N-(trichlormethylthio)phthalimide because these
biocides were all known functionally equivalent fungicides, and they
therefore could be used interchangeably. (Id.). Additionally, the Examiner
found that a skilled artisan would have been motivated to incorporate an
antioxidant into Rei’s polymeric resin composition with a reasonable
expectation of success because, as discussed supra, Behrens disclosed a
composition stabilized against oxidation that comprised an antioxidant.
(Id.).
Appellant contends that the combination of Rei and Behrens “fails to
render the claims of the present application obvious for the same reasons as
set forth above with respect to the combination of Jiang et al. and Behrens et
al.” (App. Br. 12). According to Appellant, “Neither reference discloses a
composition wherein the biocide is thermally stable at temperatures up to
250°C, and there is insufficient motivation for combining these references
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since Behrens et al. is specifically limited to light stability of a resin cured
under ambient conditions rather than at elevated temperatures.” (Id. at 13).
The issue with respect to this rejection is whether it would have been
obvious to a person of ordinary skill in the art at the time the invention was
made to combine the known elements of the prior art for their known
functions to arrive at the claimed invention.

Findings of Fact
1. Jiang disclosed “a polymer-cellulosic fiber composition comprising a
polymer, a cellulosic fiber, and a quaternary ammonium alkyl salt wherein
the latter imparts antimicrobial properties to the composition and functions
as a lubricant during the formation of the composition.” (Jiang, Abstract).
2. Jiang disclosed that the polymer in the composition is, for example,
high density polyethylene (HDPE). (Id. p. 2, ll. 5-6).
3. Jiang disclosed that the cellulosic fiber is from a wood source. (Id. p.
6, ll. 8-9).
4. Jiang disclosed that examples of known antimicrobial compounds
which may be used in Jiang’s composition include iodine compounds such
as iodopropynyl butyl carbamate. (Id. p. 7, l. 9, p. 9, l. 5).
5. Jiang disclosed that from 0.001% to 3.0 wt. % of the antimicrobial
compound, based on weight of wood of other biocides, may be added to the
composition of Jiang’s invention. (Id. p. 10, ll. 8-9).
6. Jiang did not expressly teach that its composition comprised an
antioxidant.
7. Behrens disclosed that “N-hydroxy-substituted hindered amine light
stabilizers impart outstanding stabilization properties to ambient cured
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coatings based on a variety of resins, the stabilized coatings exhibiting
improved durability, weather-ability, and the like.” (Behrens, Abstract).
8. Behrens explained that the resins used in its invention were capable of
being fully cured under ambient conditions and stabilized against light,
moisture and oxygen. (Id. at col. 12, ll. 28-30, 30-32).
9. Behrens disclosed that the enamels or coatings of its invention may
contain antioxidants, e.g., sterically hindered phenol derivative type. (Id. at
col. 14, ll. 31-33).
10. Behrens disclosed that its composition may also include phosphorus
compounds, such as phosphites, phosphines or phosphonites in an amount
from 0.05-2% by weight. (Id. col. 14, ll. 33-35, 41-44).
11. Behrens disclosed an example of its invention that comprised
Fungitrol 11 as the biocide. (Id. at col. 15, ll. 66-68).
12. Antioxidant Center is an article that described organophosphorus
compounds, e.g., aryl phosphate, as secondary antioxidants which are
“extremely efficient stabilizers during processing and are normally used in
combination with a primary antioxidant,” e.g., a hindered phenol.
(Antioxidant Center).
13. Rei disclosed polymeric compositions comprising a thermoplastic
resin and at least one microbiocide. (Rei, Abstract).
14. Rei disclosed that “it would be desirable to provide such composition
wherein the microbiocide does not degrade the resin and is not itself
degraded when incorporated in the resin so that the composition can be
incorporated subsequently into a resin wherein the microbiocide is present at
effective concentrations.” (Id. col. 2, ll. 26-32).
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15. Rei disclosed that suitable microbiocides included N-
(trichloromethylthio) phthalimide, i.e., Fungitrol 11. (Id. col. 2, ll. 47-51;
col. 5, l. 43).
16. Rei disclosed that the “microbiocides also function as processing aids
for the resin in that they reduce the processing temperatures needed to form
homogeneous compositions.” (Id. col. 2, ll. 59-62).
17. Rei disclosed that suitable thermoplastic resins included polyvinyl
chloride, polyurethanes, polyolefins, polyesters and the like. (Id. col. 5, ll.
26-32).
18. Rei disclosed that in forming the microbiocide-containing
composition of its invention, the usual resin additives optionally could be
included. (Id. at col. 6, ll. 40-42).
19. Rei disclosed that usual resin additives included heat stabilizer. (Id. at
col. 7, ll. 1-2).
20. Appellant’s Specification states: “[t]he use of an antioxidant to
improve the thermal stability of plastics is well known in the art.” (Spec. 1).

Principles of Law
A reason to combine teachings need not be expressly stated in any
prior art reference. In re Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006). There
need only be an articulated reasoning with rational underpinnings to support
a reason to combine teachings. Id. at 988.
“A combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
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“The discovery of a new property or use of a previously known
composition, even when that property and use are unobvious from prior art,
can not impart patentability to claims to the known composition.” In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).

Analysis
A. The Rejection over Jiang and Behrens
We do not agree with Appellant that the Examiner’s combination of
references lacked sufficient basis because Behrens did not provide a
“teaching or suggestion with respect to the use of antioxidants to stabilize
biocides in matrix compositions processed at elevated temperatures.” (See
App. Br. 9-10). To begin, claim 1 recites a composition comprising a
matrix, a biocide and an antioxidant and then recites that the “biocide
exhibits thermal stability at matrix processing temperatures up to 250°C.”
(Claim 1). Thus, the claim does not recite that the antioxidant stabilizes the
biocide. Further, a reason to combine teachings need not be expressly stated
in any prior art reference. In re Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006).
There need only be an articulated reasoning with rational underpinnings to
support a reason to combine teachings. Kahn, 441 F.3d at 988. Here, the
Examiner explained that the combination of Jiang and Behrens was
suggested by the references along with the knowledge of one with ordinary
skill in the art who reviewed the references.
Specifically, the Examiner found that Jiang disclosed the instantly
claimed invention, except for the addition of an antioxidant. The Examiner
found that Behrens disclosed a stabilized resin composition comprising an
antioxidant, such as a sterically hindered phenol. While Behrens did not
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expressly state that the antioxidant improved the stability of the composition,
an ordinarily skilled artisan at the time of the invention would have
understood this function. Indeed, Appellant’s Specification acknowledged
that “[t]he use of an antioxidant to improve the thermal stability of plastics is
well known in the art.” (FF-20).
From these facts, it is apparent that the Examiner rationally
determined that it would have been obvious for a person skilled in the art at
the time of the invention who reviewed Jiang and Behrens to provide Jiang’s
biocide composition with an antioxidant to provide optimally stabilization,
as suggested by Behrens and the ordinary skill in the art.
The Examiner relied upon the ordinary level skill in the art at the time
of the invention to combine the antioxidant of Behrens with the biocide
composition of Jiang. As discussed above, this combination would have
been obvious to one of ordinary skill in the art based upon the general
knowledge in the art that antioxidants improve thermal stability of plastics
along with Behrens teaching the use of an antioxidant in a resin composition
stabilized against oxidation. Such a conclusion is not the result of
inappropriate hindsight. Rather, the simple combination of these known
elements in a known manner amounted to a predictable variation that could
have been implemented by a person of ordinary skill. KSR, 550 U.S. at 416.
Nor are we persuaded by Appellant’s argument (App. Br. 11) that
claim 1 is not obvious because the references do not expressly disclose or
suggest the limitation that the “biocide exhibits thermal stability at matrix
processing temperatures up to 250°C.” (Claim 1). As discussed, claim 1 is
drawn to a composition. The disputed limitation recites a physical property
of the claimed composition, and specifically of the biocide component in the
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composition. We have found that this claimed composition would have
been obvious to a skilled artisan over the combined prior art. Thus, the
recitation of the biocide thermal stability is merely an identified property of
an obvious composition, which is not patentable. See Spada, 911 F.2d at
708.
Accordingly, we affirm the obviousness rejections of claims 1, 3-5,
7-8, and 10-11 over Jiang and Behrens.
B. The Rejection over Jiang, Behrens and Antioxidant Center
We find Appellant’s argument unpersuasive for the same reasons
discussed supra. As the Examiner found, Antioxidant Center specifically
taught that organophosphorus antioxidants “are extremely effective
stabilizers during processing,” which teaching would have suggested to a
skilled artisan the addition of such an antioxidant, in combination with a
primary antioxidant, to provide optimal stability to Jiang’s composition.
Accordingly, we affirm the obviousness rejection of claim 9 over
Jiang, Behrens and Antioxidant Center.
C. The Rejection over Rei and Behrens
To the extent that Appellant argues that “the combination of Rei et al.
and Behrens et al. fails to render the claims of the present application
obvious for the same reasons set forth above with respect to the combination
of Jiang et al. and Behrens et al.” (App. Br. 12) we remain unpersuaded for
the reasons just discussed. As the Examiner explained, Rei expressly
suggested adding a heat stabilizer, a usual resin additive, to its composition.
(FF-18, 19). It was known in the art at the time of the invention that
antioxidants improved the thermal stability of plastics. (FF-20). Therefore,
it would have been obvious to a person of ordinary skill in the art at the time
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the invention was made to combine Behrens’ antioxidant with Rei’s
composition, yielding the invention Appellant now claims.
Accordingly, we affirm the obviousness rejection of claims 1-4, 6, 8,
and 11-12 over Rei and Behrens.

CONCLUSION OF LAW
It would have been obvious to a person of ordinary skill in the art at
the time the invention was made to combine the known elements of the prior
art for their known functions to arrive at the claimed invention.

SUMMARY
We affirm the rejection of claims 1, 3-5, 7-8, and 10-11 under
35 U.S.C. §103(a) as being unpatentable over Jiang in view of Behrens; and
we affirm the rejection of claim 9 under 35 U.S.C. §103(a) as being
unpatentable over Jiang and Behrens in view of Antioxidant Center; and
we affirm the rejection of claims 1-4, 6, 8, and 11-12 under 35 U.S.C.
§103(a) as being unpatentable over Rei in view of Behrens.

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

AFFIRMED

lp

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INTERNATIONAL SPECIALTY PRODUCTS
ATTN: WILLIAM J. DAVIS, ESQ.
BUILDING NO. 8
1361 ALPS ROAD
WAYNE NJ 07470