Ex Parte Buhr et al

Patent Trial and Appeal Board

Aug 12, 2013

11250691 (P.T.A.B. Aug. 12, 2013)

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.
11/250,691 09/20/2005 Tony L. Buhr 95991 5085
23501 7590 08/12/2013
NAVAL SURFACE WARFARE CENTER
OFFICE OF COUNSEL CODE C7
17632 DAHLGREN ROAD
SUITE 158
DAHLGREN, VA 22448-5110
EXAMINER
SAUCIER, SANDRA E
ART UNIT PAPER NUMBER
1657
MAIL DATE DELIVERY MODE
08/12/2013 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 PATENT TRIAL AND APPEAL BOARD
__________

Ex parte TONY L. BUHR, LINDSAY A. SOBOTA, RYAN S. MACKIE,
and ANDREW F. SLATERBECK
__________

Appeal 2012-000453
Application 11/250,691
Technology Center 1600
__________

Before DONALD E. ADAMS, ERIC GRIMES, and FRANCISCO C.
PRATS, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
sporicidal composition. The Examiner has rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 1, 3, 4 and 8-10 are on appeal. Claim 1, the only independent
claim, reads as follows:
1. A sporicidal decontamination composition, consisting essentially
of:
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a metal cation present in an amount of from 0.1 M to 5.0 M, the metal
cation being selected from the group consisting of copper (Cu+2), chromium
(Cr+2), vanadium (V+2), cobalt (Co+2), iron (Fe+2), iron (Fe+3), and
combinations thereof;
ethanol present in an amount between 35wt% and 40wt% of the total
composition; and
at least one surfactant.
All of the claims on appeal stand rejected under 35 U.S.C. § 103(a) in
view of (1) Asakusa1 and Vignati;2 and (2) Kida3 in combination with
Winicov4 or Abdullin5 or Boucher.6
I.
The Examiner has rejected all of the claims on appeal as obvious in
view of Asakusa and Vignati. The Examiner finds that Asakusa discloses a
disinfectant composition comprising a water soluble ferric salt (0.5-5 wt%),
a surfactant, and an “aqueous solvent … which can be ethanol and water”
(Answer 6) and that Vignati discloses “that a 30-50% ethanol/water solution
has marked bactericidal effects” (id.). The Examiner concludes that “the use
of 35-40% ethanol … in the composition of Asakusa … would have been
obvious since … [Asakusa] is directed to an antibacterial solution which

1 Harumi Asakusa et al., JP (Kokai) 11-315001, Nov. 16, 1999.
2 J. Vignati et al., Effect of sodium citrate on the disinfecting capacity of
ethyl alcohol, 121 COMPTES RENDUS DES SEANCES DE LA SOCIETE DE
BIOLOGIE ET DE SES FILIALES 1642-1643 (1936).
3 Nori Kida et al., An effective Sporicidal Reagent against Bacillus subtilis
Spores, 47 MICROBIOL. IMMUNOL. 279-283 (2003).
4 Winicov et al., US 4,048,336, Sept. 13, 1977.
5 Abdullin Kh. Kh., et al., Finding new Disinfectants for spores of a second
Tsenkovskiy vaccine, 101 UCHENYYE ZAPISKI KAZANSKOGO
VETERINARNOGO INSTITUTA IM. N. V. BAUMANA 151-153 (1967).
6 Boucher US 3,968,248, July 6, 1976.
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specifically invites the addition of ethanol and concentrations of from about
30-50% ethanol/water solutions are known to have antibacterial effects as
taught by Vignati” (id. at 7).
Appellants argue, among other things, that Asakusa7 discloses an
“undiluted solution [that] contains metal salt of between 0.5 and 5wt%....
Such undiluted concentrations are well below the higher range recited in
claim 1.” (Appeal Br. 8.)
We agree with Appellants that the Examiner has not provided an
adequate basis for concluding that Asakusa discloses the metal ion
concentration recited in claim 1. The Examiner reasons that Asakusa
discloses “the concentration of ferric ion expressed as 0.5-5 wt% … [which]
can be calculated, using the atomic weight of iron as 55.8, to be 0.09-0.9M
which is an overlapping range” with the claimed range (Answer 9).
This reasoning, however, is faulty in two respects. First, Asakusa
describes it composition as containing 0.5-5 wt% of an “antibacterial metal
salt” (Asakusa 17, ¶ 0029 (emphasis added)), not 0.5-5 wt% of the metal
ion. Thus, the Examiner’s calculation fails to take into account the
counterion present in, e.g., ferric sulfate or ferric nitrate (see id. at 4, ¶
0021). In addition, Asakusa describes ferric sulfate and ferric nitrate as
“metal salt[s] having deodorizing properties” (id.), whereas its list of
antibacterial metal salts does not include any iron salts (id. at 11-12, ¶ 0020).
Asakusa describes its compositions as containing deodorizing metal salts in
amounts of 0.2-2 wt% (id. at 17, ¶ 0030). The Examiner has not provided an
adequate basis for concluding that a composition that contains 0.2-2 wt% of,

7 Appellants refer to Asakusa as “Magusa” (see Appeal Br. 8).
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e.g., ferric sulfate or ferric nitrate will contain at least 0.1 M metal ion, as
recited in claim 1. We therefore reverse the rejection based on Asakusa and
Vignati.
II.
Issue
The Examiner has rejected all of the claims on appeal as obvious in
view of Kida in combination with Winicov, Abdullin or Boucher. The
Examiner finds that Kida discloses that a “solution comprising 0.05M ferric
ion, 0.85% NaCl, 50 mM EDTA and 10, 25 or 50% EtOH in water has
sporicidal activity” (Answer 7). The Examiner finds that Abdullin, Winicov,
and Boucher all disclose that the addition of a detergent to a sporicidal
composition enhances the sporicidal efficiency of that composition (id. at
7-8).
The Examiner concludes that the addition of a detergent to Kida’s
sporicidal composition would have been obvious in order to “increase[ ] the
effectiveness of the sporicidal composition” (id. at 8). The Examiner further
concludes that increasing ferric ion concentration “from 0.05M as described
in Kida et al. to a range from 0.1-5M as claimed would have been well
within the purview of one of skill in the art absent evidence of criticality of
the concentration range” (id.) and that Kida’s range of ethanol
concentrations would have made obvious the claimed range of 35-40 wt%
(id.).
Appellants contend that the “consisting essentially of” language of
claim 1 excludes the additional ingredients of Kida’s composition (Reply Br.
3-4). Appellants also contend that Abdullin’s alkaline surfactant would not
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be compatible with Kida’s acidic compositions (id.), and that the cited
references would not have made obvious a composition with the amount of
metal cation recited in claim 1 (Appeal Br. 10).
The issues presented are: Does the “consisting essentially of”
language of claim 1 exclude any of the ingredients of Kida’s composition?
If not, does the evidence of record support the Examiner’s conclusion that
the cited references would have made obvious the composition of claim 1?
Findings of Fact
1. Kida discloses that a “0.85% NaCl solution supplemented with
ethanol, EDTA-2Na and FeCl3·6H2O had comparable sporicidal activity to
sodium hypochlorite solution” (Kida 279, paragraph bridging the columns).
2. Kida discloses testing the sporicidal activity of three different test
solutions at pH 1.1, which respectively included 10 mM, 25 mM or 50 mM
each of EDTA-2Na and FeCl3, in 0.85% NaCl (id. at 280, left col., Fig. 1).
3. Kida discloses that “the 50 mM EDTA-2Na and 50 mM FeCl3
solution showed the highest sporicidal activity at 60 C” (id. at 280-281).
4. Kida discloses that the “sporicidal activity of the 50 mM solution
of EDTA-2Na and FeCl3, with three different concentrations of ethanol
(10%, 25% and 50%) was investigated.… The addition of ethanol enhanced
activity significantly at 60 C.” (Id. at 281, paragraph bridging the columns.)
5. Kida discloses that the “50 mM EDTA-2Na, 50 mM FeCl3 and
50% ethanol in 0.85% NaCl solution was regarded as the optimum
composition of the test solution” (id. at 281, right col.).
6. Abdullin discloses that “[i]n treatment with surfactants the
permeability of the spore sheath increases [among other effects] … ; as a
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result the spores lose their resistivity. We decided to use this phenomenon
to increase the sporicidal action of disinfectants for spores of anthrax
bacilli.” (Abdullin 2-3.)
7. Abdullin discloses that more than 20 surfactants were studied in
combination with chemical disinfectants (id. at 3).
8. Abdullin discloses that “the most active of the surfactants”
included those designated “emulsifier Nos. 1 and 3” (id. at 4).
9. Abdullin discloses that “[g]ood results were obtained using
disinfectant solutions in the following prescriptions: a) emulsifier No. 1 or 3
– 0.2%; chloramine – 3%, hydrochloric acid – 1%” (id. at 4-5).
Principles of Law
“By using the term ‘consisting essentially of,’ the drafter signals that
the invention necessarily includes the listed ingredients and is open to
unlisted ingredients that do not materially affect the basic and novel
properties of the invention.” PPG Indus. v. Guardian Indus. Corp., 156 F.3d
1351, 1354 (Fed. Cir. 1998).
It is axiomatic that claims are given their broadest reasonable
construction consistent with the specification.… [A]n applicant
who has not clearly limited his claims is in a weak position to
assert a narrow construction. Therefore, in construing the
phrase ‘consisting essentially of’ in appellants’ claims, it is
necessary and proper to determine whether their specification
reasonably supports a construction that would include additives
such as [those in the prior art].
In re Herz, 537 F.2d 549, 551 (CCPA 1976).
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Analysis
Kida discloses sporicidal compositions comprising 50 mM (0.05 M)
each EDTA and FeCl3, combined with ethanol (10%, 25%, or 50%, in
0.85% NaCl solution (FFs 2-4). Abdullin discloses that surfactants increase
the sporicidal action of disinfectants (FF 6). Abdullin discloses the specific
combination of “emulsifier No. 1 or 3” (surfactant) with the sporicidal agent
chloramine and hydrochloric acid (FF 9). In view of these disclosures, it
would have been obvious to one of ordinary skill in the art to add a
surfactant to Kida’s sporicidal composition because Abdullin teaches that
surfactants can enhance the effectiveness of sporicidal compositions.
Appellants argue that claim 1 uses the transition phrase “consisting
essentially of,” which “restricts Appellants’ composition substantially to the
listed elements” (Reply Br. 3). Appellants argue that their claims “do not
include, inter alia, the EDTA or any of the taught acids” of Kida’s
composition (id.).
This argument is not persuasive. Appellants do not identify, and the
Specification does not expressly define, the basic and novel properties of the
claimed composition. However, the Specification does describe the
composition as “useful in biological decontamination or decontamination of
persons, e.g., effective in a methodology requiring possible human contact”
(Spec. 2:19-20) and “useful in decontamination as a topical solution for
people” (id. at 4:14-15). Thus, we interpret the basic and novel properties of
the claimed composition as possessing sporicidal activity and being useful in
topical treatment of people. Kida, however, states that one of the advantages
of its ethanol-containing reagent is that “all chemicals employed in the
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reagent are safe for humans” (Kida 282, right col.) and that “it may also be
used for disinfecting normal skin with permeation” (id.). Thus, the evidence
does not support Appellants’ position that the “consisting essentially of”
transition phrase of claim 1 excludes the additional components of Kida’s
composition.
Appellants also argue that “Kida lacks any teaching or suggestion for
the concentration ranges recited in” claim 1 (Appeal Br. 10).
We agree with the Examiner (Answer 11), however, that increasing
the concentration of ferric ion from Kida’s 0.05 M to 0.1 M – a two-fold
increase of a low starting concentration – would have been obvious based on
Kida’s disclosure that the ferric ion is an active ingredient in its sporicidal
composition because an increase in an active ingredient would be expected
to increase sporicidal activity. In addition, Kida discloses a range of ethanol
concentrations (10-50%) that includes the claimed range of 35-40%. See
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir.
2004) (“[W]here there is a range disclosed in the prior art, and the claimed
invention falls within that range, there is a presumption of obviousness.”).
Appellants argue that Kida “teaches away from including a surfactant
based on the very low pH (high acidity) described therein” (Appeal Br. 10).
Specifically with respect to Abdullin, Appellants argue that “Abdullin
provides for calcium hypochloride concentration of 48.8%, which has an
alkaline pH of 12.… The high acidity of Kida renders the inclusion of
alkaline detergent as rendering inoperative either the EDTA composition or
else the additional surfactant.” (Reply Br. 4.)
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This argument is not persuasive. First, Appellants provide no
evidence or technical reasoning to support their position that Abdullin’s
composition has a pH of 12. “Attorney’s argument in a brief cannot take the
place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Second, Abdullin describes a specific composition that includes surfactant,
chloramine, and hydrochloric acid (FF 9), demonstrating that its surfactants
are not incompatible with a composition having an acidic pH.
Thus, we affirm the rejection of claim 1 as being obvious in view of
Kida and Abdullin. Claims 3, 4, and 10 have not been argued separately and
therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue that “Winicov, Abdullin and/or Boucher . . . further
do not teach or suggest the additional features of claims 8 and 9 regarding
either at most 15%wt surfactant or such compositions that include amine
oxide surfactant, cationic surfactant, anionic surfactant, and nonionic
surfactant” (Appeal Br. 10).
These arguments are not persuasive. Abdullin discloses that a
composition comprising 0.2% surfactant provides “[g]ood results” (FF 9),
and therefore would have made obvious a composition comprising “at most
15 wt%” surfactant, as recited in claim 8.
With regard to claim 9, Abdullin discloses that “treatment with
surfactants” – generically – increases the permeability of the spore sheath
and causes spores to lose their resistivity (FF 6). Although Abdullin
identifies certain surfactants (“cation-active resin No.1, emulsifier Nos. 1
and 3 and pyridine” (Abdullin 4)) as the “most active,” Appellants have not
provided persuasive evidence-based reasoning to show that the Examiner
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erred in finding that a skilled worker would have expected Abdullin’s
teachings to be applicable to surfactants belonging to one of the groups
listed in claim 9.
Conclusion of Law
The “consisting essentially of” language of claim 1 does not exclude
any of the ingredients of Kida’s composition. The evidence of record
supports the Examiner’s conclusion that the cited references would have
made obvious the composition of claim 1, as well as the additional
limitations of claims 8 and 9.
SUMMARY
We reverse the rejection of claims 1, 3, 4 and 8-10 under 35 U.S.C.
§ 103(a) as obvious based on Asakusa and Vignati. We affirm the rejection
of claims 1, 3, 4 and 8-10 under 35 U.S.C. § 103(a) as obvious based on
Kida and Abdullin.
TIME PERIOD FOR RESPONSE
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

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