Ex Parte Bartko

Board of Patent Appeals and Interferences

Jun 29, 2010

10893009 (B.P.A.I. Jun. 29, 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.
10/893,009 07/16/2004 Joseph P. Bartko FDN-2863 3013
7590 06/30/2010
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
06/30/2010 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 2010-001730
Application 10/893,009
Technology Center 1600
__________

Decided: June 30, 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 a
concentrate comprising a biocide and a stabilizer. The Patent Examiner
rejected the claims on the grounds of non-statutory obviousness-type double
patenting and obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Application 10/893,009

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STATEMENT OF THE CASE
The invention concerns a concentrate comprising a biocide and a
stabilizer additive in an amount sufficient to protect the biocide against
thermal degradation when processed in a matrix at temperatures of up to
250° C. (Claim 1). The Specification states that a “preferred thermal
stabilizer additive for IPBC [iodopropynyl butyl carbamate, a biocide] in this
invention is calcium stearate, wherein IPBC can be present in an amount, by
wt., of up to 15%, and the stabilizer additive in an amount up to 3%,
preferably up to 10% IPBC and up to 1% stabilizer additive.” (Spec. 2).
Claims 1-4 and 17-20 are on appeal. Claims 1, 2 and 4 are
representative and read as follows:
1. A concentrate comprising a biocide and a stabilizer additive wherein
said stabilizer additive is present in an amount sufficient to protect the
biocide against thermal degradation when processed in a matrix at
temperatures of up to 250°C.

2. A concentrate according to claim 1 wherein said biocide contains an
iodopropynyl group and is selected from iodopropynyl butyl carbamate
(IPBC), 3-iodopropynyl carbamate (IPC) and 3-iodopropynyl-N-phenyl
carbamate (IPPC) and said biocide is present in amounts, by wt. of up to
15% and said stabilizer additive is present in an amount of up to 3%.

4. A concentrate according to claim 1 wherein said stabilizer additive is
calcium stearate.

The Examiner rejected the claims as follows:
• claims 1-4 and 17-20 as provisionally rejected on the ground of
non-statutory obviousness-type double patenting as being unpatentable over
claims 1-4 and 7-10 of co-pending Application No. 11/100,655 (‘655); and
• claims 1-4 and 17-20 under 35 U.S.C. §103(a) as being
unpatentable over Williams in view of Cannelongo.
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Application 10/893,009

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DOUBLE PATENTING
The Issue
The Examiner’s position is that the conflicting claims of co-pending
Application ‘655 are directed to a composition comprising a biocide and a
processing additive, wherein the biocide can be IPBC and the processing
additive is calcium stearate. (Ans. 4.) Specifically, the Examiner found that
the only difference between the conflicting claims and the instant claims is
that the instant claims recite a “stabilizer” additive while the conflicting
claims recite a “processing” additive. (Id.) However, the Examiner also
found that instant claim 4 limits the stabilizer additive to calcium stearate
and conflicting claim 4 recites that its processing additive comprises calcium
stearate. (Id.) According to the Examiner, a person of ordinary skill in the
art at the time the invention was made “would have readily recognized that
the conflicting claims . . . and claims 1-4 and 17-20 in the instant application
are obvious variants and are not patentably distinct to each other.” (Id. at
4-5).
Appellant contends that there are clear differences between the instant
claims and the allegedly conflicting claims. (App. Br. 9). Specifically,
Appellant asserts that claim 1 “recites that the stabilizer additive is present in
an amount sufficient to protect the biocide against thermal degradation when
processed in a matrix at temperatures of up to 250°C.” (Id.). Further,
Appellant asserts that instant “claims 2, 3, and 17-20 specifically recite
amounts for the biocide and stabilizer additive that are neither disclosed nor
suggested in the claims of the ‘655 application.” (Id.).
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The issue with respect to this rejection is whether instant claims 1-4
and 17-20 are patentably distinct from ‘655 claims 1-4 and 7-10.

Findings of Fact
1. Instant claim 1 recites “[a] concentrate comprising a biocide and a
stabilizer additive wherein said stabilizer additive is present in an amount
sufficient to protect the biocide against thermal degradation when processed
in a matrix at temperatures of up to 250°C.” (Claim 1).
2. Instant claim 4 recites that “said stabilizer additive is calcium
stearate.” (Claim 4).
3. Instant claim 2 recites that “said biocide is present in amounts, by wt.
of up to 15% and said stabilizer is present in an amount of up to 3%.”
(Claim 2).
4. The ‘655 application claim 1 recites “[a] composition comprising a
biocide and a processing additive therewith in the form of a free-flowing
powder for facile incorporation into an industrial matrix product which is a
polymer, plastic or polymer-wood composite. (‘655 Application, Claim 1).
5. The ‘655 application claim 4 recites that “said processing additive is a
combination of calcium stearate and/or zinc stearate and said polymer,
plastic or polymer-wood composite.” (Id. at Claim 4).
6. The ‘655 application claim 8 recites that “said processing additive
comprises calcium stearate and/or zinc stearate in an amount, by weight, of
0.1% up to about 15%.” (Id. at Claim 8).

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Application 10/893,009

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Principles of Law
An obviousness-type double patenting analysis entails two steps: (1)
construction of the claims of the patent and the claim in the application to
identify any differences, and (2) determination of whether the differences in
subject matter between the claims render the claims patentably distinct. See
Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 968 (Fed Cir. 2001).
“In cases involving overlapping ranges, we and our predecessor court
have consistently held that even a slight overlap in range establishes a prima
facie case of obviousness. We have also held that a prima facie case of
obviousness exists when the claimed range and the prior art range do not
overlap but are close enough such that one skilled in the art would have
expected them to have the same properties.” In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003) (emphasis and citations omitted).

Analysis
Appellant asserts that differences exist between the instant claims and
the ‘655 claims. (App. Br. 9). In particular, Appellant asserts that although
both the instant claims and the ‘655 claims indicate that their respective
additives may be calcium stearate, only the instant claim 1 recites that its
additive “is present in an amount sufficient to protect the biocide against
thermal degradation when processed in a matrix at temperatures of up to
250°C.” (Id.). Regarding the amount of the additive, Appellant further
asserts that the instant dependent claims specifically recite amounts for the
additive, i.e. up to 1% or up to 3% by weight, “that are neither disclosed nor
suggested in the claims of the ‘655 application.” (Id.).
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We begin by noting that our obviousness-type double patenting
analysis is not limited to determining whether differences exist between the
instant claims and the application claims. Rather, our analysis involves a
second step of determining whether such differences render the claims
patentably distinct. See Eli Lilly, 251 F.3d at 968. Comparing appealed
claim 2 with co-pending ‘655 claim 8 shows that the instantly claimed range
of the additive (“an amount of up to 3%’) overlaps the range of the additive
recited in claim 8 of the ‘655 application (“0.1% up to about 15%”). We
agree with the Examiner (Ans. 10) that the appealed claims are prima facie
obvious over the co-pending claims. Put another way, the instantly claimed
range of additive does not patentably distinguish the claims from the ‘655
claims. See Peterson, 315 F.3d at 1329.
Regarding the recited property of the additive, the instant claims recite
the same compound included in the ‘655 composition, i.e., calcium stearate,
as protecting the biocide against thermal degradation. Thus, the calcium
stearate of the ‘655 claims necessarily shares the property of the calcium
stearate recited in the instant claims. See In re Best, 562 F.2d 1252, 1255
(CCPA 1977) (substantially identical products are presumed to inherently
share the same characteristics). As a result, the recitation that “said
stabilizer additive is present in an amount sufficient to protect the biocide
against thermal degradation when processed in a matrix at temperatures of
up to 250°C” does not patentably distinguish the instant claims from the
‘655 claims, which claim compositions having overlapping amounts of
calcium stearate.
Regarding the amount of biocide, we agree with Appellant that the
instant dependent claims 2, 3, 18 and 19 recite amounts for the biocide that
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are not recited in the ‘655 claims. However, Appellant has not argued, or
otherwise established that the instantly claimed range of biocide would not
have been obvious to a person of ordinary skill in the art at the time the
invention was made. Consequently, we are not persuaded that the recited
amounts of biocide render the instant claims patentably distinct from the
‘655 claims.

OBVIOUSNESS
The Issues
The Examiner’s position is that Williams disclosed a preservative
composition comprising an anti-microbial agent, i.e., iodopropynyl butyl
carbamate 9 (IPBC) and a gliding agent, i.e., calcium stearate. (Ans. 6).
The Examiner found that Williams taught that the composition could be used
in industrial products and materials, including plastic articles, as well as for
treatment of materials. (Id.). The Examiner also found that Williams taught
that the composition may be provided as a concentrate. (Id.). Additionally,
the Examiner found that Williams disclosed that additives can be added to
improve the characteristics of the treated commodity. (Id.). In particular,
the Examiner found that Williams disclosed that such additives included a
gliding agent, i.e., calcium stearate. (Id.). The Examiner also found that
Williams taught that IPBC may be present in an amount from about 0.1% to
70% by weight. (Id. at 7). According to the Examiner, Williams did not
teach the amount of calcium stearate in the composition.
The Examiner found that Cannelongo disclosed a dry blended,
extrudable resin composition comprising a pesticidal agent, polymer resins,
and a stabilizing agent. (Id.). The Examiner also found that Cannelongo
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disclosed that the composition can be prepared as a concentrate. (Id.).
Additionally, the Examiner found that Cannelongo taught that the polymer
resins in the composition can be effectively stabilized by stabilizing agents
such as calcium stearate. (Id.). Specifically, the Examiner found that
Cannelongo disclosed that the calcium stearate is present in the composition
in an amount of 1% by weight. (Id.).
The Examiner reasoned that a skilled artisan would have been
motivated to use Cannelongo’s calcium stearate stabilizing agent in a
concentrate composition comprising polymer resins and anti-microbial
agents, such as Williams’, to provide improved stability. (Id. at 8).
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 Williams and Cannelongo, that is, to stabilize Williams’
composition. (Id.).
Appellant contends that the Examiner “failed to provide an articulated
reason supporting the combination of the cited references.” (App. Br. 10).
According to Appellant, because Cannelongo is directed to dry-blended
extrudable pesticidal resin compositions, its teachings “are not relevant to
the present invention.” (Id.). Even if relevant, Appellant asserts that a
skilled artisan would not have been motivated to use Cannelongo’s
stabilizing additive in Williams’ composition which “already exhibits
surprising stability.” (Id. at 11).
Further, Appellant asserts that Williams “fail[ed] to disclose or
suggest the use of a stabilizer additive in an amount sufficient to protect the
biocide against thermal degradation as set forth in the [instant] claims….”
(Id.). According to Appellant, Williams only disclosed using calcium
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stearate as a gliding agent and not as a stabilizer additive. (Id.).
Additionally, Appellant asserts that claim 1 “should properly be interpreted
such that the recited temperature [i.e., of up to 250°C] is considered a
limitation and that the biocide exhibits thermal stability up to that
temperature,” rather than as an intended use. (Id.).
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
7. Williams disclosed a preservative composition comprising IPBC.
(Williams, Abstract).
8. Williams disclosed that the composition may be provided in a variety
of formulations, including in a concentrate form. (Id. at [0290], [0291]).
9. Williams disclosed that in a concentrated form, the concentration of
IPBC may be about 0.1-70%, e.g., 10-60% IPBC by weight. (Id. at [0326]).
10. Williams disclosed that the composition may also include gliding
agents, for example, calcium stearate. (Id. at [0327]).
11. Williams did not disclose the amount of calcium stearate to add to the
composition.
12. Cannelongo disclosed dry-blended extrudable pesticidal resin
compositions comprising a pesticidal agent, polyvinyl resins and a
stabilizing agent. (Cannelongo Abstract; col. 6, ll. 24-39).
13. Cannelongo disclosed that “[u]seful stabilizing agents effective for
stabilizing the resin include … calcium stearates”. (Id. at col. 7, l. 28-29).
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14. Cannelongo disclosed exemplary compositions comprising 1% by
weight of calcium stearate. (Id. at col. 10, ll. 9, 55, Ex. 1-2).
15. Cannelongo disclosed that its compositions can be prepared “in
concentrate or finished product form, which combine enhanced safety,
effective residual activity of the product and improved chemical stability of
the pesticide in the finished products.” (Id. col. 3, ll. 19-26).

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).
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor’s endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved. In re Clay,
966 F.2d 656, 658-9 (Fed. Cir. 1992).
“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).

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Analysis
We are not persuaded that Cannelongo is not relevant to the present
invention. (See App. Br. 10). Cannelongo’s composition, which could be
formed as a concentrate (FF-15), comprised a pesticide and a calcium
stearate stabilizer additive (FF-12, 13). Appellant has not provided any
argument or reasoning to establish that this reference is not reasonably
pertinent to the claimed invention which directed to a concentrate
comprising a biocide and a calcium stearate stabilizer agent. “A reference is
reasonably pertinent if, even though it may be in a different field from that
of the inventor’s endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor’s attention in
considering his problem.” Clay, 966 F.2d at 659.
Nor are we persuaded that the Examiner failed to provide an
articulated reason supporting the combination of the cited references. After
finding that Williams and Cannelongo both disclosed concentrated
compositions comprising an anti-microbial agent, polymer resin and calcium
stearate, the Examiner reasoned that a skilled artisan would have been
motivated to use Cannelongo’s calcium stearate stabilizing agent in
Williams’ composition to provide improved stability, as taught by
Cannelongo. (Ans. 6-9). Based upon the Examiner’s facts and reasoning, it
is apparent that the Examiner rationally determined that it would have been
obvious for a skilled artisan at the time of the invention to combine the
teachings of the prior art to yield the claimed invention. See Kahn, 441 F.3d
at 988. Even accepting Appellant’s contention that Williams’ composition
was already stable (see App. Br. 11) does not invalidate the Examiner’s
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sound reasoning for a skilled artisan being motivated to further improve
stability with calcium stearate.
Further, Appellant does not overcome the obviousness rejection by
asserting that Williams “fail[ed] to disclose or suggest the use of a stabilizer
additive in an amount sufficient to protect the biocide against thermal
degradation as set forth in the [instant] claims,” and that Williams only
disclosed using calcium stearate as a gliding agent and not as a stabilizer
additive. The Examiner relied on a combination of Williams and
Cannelongo to reject the claims. The failure of Williams to disclose the use
(and amount) of calcium stearate as a stabilizing agent is balanced by
Cannelongo in the combination. See In re Merck & Co. Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (each reference “must be read, not in isolation, but for
what it fairly teaches in combination with the prior art as a whole”)
Finally, Appellant asserts that claim 1 “should properly be interpreted
such that the recited temperature [i.e., of up to 250°C] is considered a
limitation and that the biocide exhibits thermal stability up to that
temperature.” (App. Br. 11.) We agree. However, the stabilizer additive
and amount suggested by the combined prior art teachings is the same as that
recited in the instant claims. The amount of calcium stearate in the
combined prior art necessarily shares this protective property of the calcium
stearate recited in the instant claims. See Best, 562 F.2d at 1255; see also
Spada, 911 F.2d at 708. Consequently, we agree with the Examiner that the
limitation recited in claim 1 does not overcome the obviousness of the
claimed invention over the combined prior art.
Accordingly, we affirm the obviousness rejection of claims 1-4 and
17-20 over Williams and Cannelongo.
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CONCLUSIONS OF LAW
Instant claims 1-4 and 17-20 are not patentably distinct from ‘655
claims 1-4 and 7-10.
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 taught by
Williams and Cannelongo for their known functions.

SUMMARY
We affirm the rejection of claims 1-4 and 17-20 as provisionally
rejected on the ground of non-statutory obviousness-type double patenting as
being unpatentable over claims 1-4 and 7-10 of co-pending Application No.
11/100,655 (‘655); and
we affirm the rejection of claims 1-4 and 17-20 under 35 U.S.C.
§103(a) as being unpatentable over William in view of Cannelongo.

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