Ex Parte Busch

Patent Trials and Appeals Board

Apr 12, 2019

14993588 - (D) (P.T.A.B. Apr. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/993,588 01/12/2016
29052 7590 04/16/2019
Eversheds Sutherland (US) LLP
999 PEACHTREE STREET, N.E.
Suite 2300
ATLANTA, GA 30309
FIRST NAMED INVENTOR
Frederick A. Busch
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
35248-0001 1003
EXAMINER
BROWN, COURTNEY A
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
04/16/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket@eversheds-sutherland.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERICK A. BUSCH
Appeal 2019-001042
Application 14/993,588 1
Technology Center 1600
Before ELIZABETH A. LA VIER, JOHN E. SCHNEIDER, and
DAVID COTTA, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant seeks review of the
Examiner's rejection of claims 1-13, 15, and 16. We have jurisdiction under
35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
BACKGROUND
The Specification relates to antimicrobial compositions. See Spec.
1 Appellant identifies the real party in interest as Biosyn, Inc. Appeal Br. 3.
Appeal 2019-001042
Application 14/993,588
Claim 1 is illustrative:
An antimicrobial composition in unit dose form comprising:
a water-soluble packaging encapsulating a powder formulation,
the powder formulation comprising at least one antimicrobial
quaternary ammonium compound and a water-soluble spacer
compound interspersed therewith, wherein the quaternary
ammonium compound is greater than 5% by weight of the
antimicrobial composition.
Appeal Br. 21 (Claims Appendix).
REJECTION MAINTAINED ON APPEAL
Claims 1-13, 15, and 16 stand rejected under 35 U.S.C. § 103 as
obvious over Caswell,2 Grande, 3 and Krinski. 4 Final Action 5; Ans. 3.
DISCUSSION
Appellant argues, inter alia, that the Examiner failed to provide a
sufficient explanation as to why the ordinarily skilled artisan would have
chosen the components recited in claim 1 from the myriad possibilities5
presented in Caswell. See Appeal Br. 14--16; Reply Br. 2. Although the
sheer number of options taught in the prior art is not a barrier to obviousness
2 Caswell et al., US 2003/0104969 Al, published June 5, 2003.
3 Grande et al., US 2012/0297551 Al, published Nov. 29, 2012.
4 Krinski et al., US 5,112,520, issued May 12, 1992.
5 Appellant estimates the number of possible combinations in Caswell to be
"likely in the trillions." Appeal Br. 14 ( citing Declaration under 3 7 C.F .R.
§ 1.132 by Frederick A. Busch, dated March 1, 2018 ("Busch Deel.") ,r,r 14--
15) ). The Examiner does not take issue with this particular characterization.
See Ans. 6-7.
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Appeal 2019-001042
Application 14/993,588
per se, see Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) ("[A] multitude of effective combinations does not render any
particular formulation less obvious."), the "prior art cannot be 'vague' and
must collectively, although not explicitly, guide an artisan of ordinary skill
towards a particular solution," Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d
1352, 1361 (Fed. Cir. 2011) (quoting Bayer Schering Pharma AG v. Barr
Labs., Inc., 575 F.3d 1341, 1347 (Fed. Cir. 2009)).
Here, the Examiner correctly points out that Caswell teaches the use
of quaternary ammonium compounds for "several reasons," i.e., as
antimicrobials, cationic surfactants, dispersibility aids, and/or scum
dispersants. Ans. 7 (citing Caswell ,r,r 203,229, 518, 557). But these uses
are all options, and quaternary ammonium compounds are but one class of
many possible compounds for achieving these aims. Even with respect to
the choice of cationic surfactant, for which quaternary ammonium
compounds are described as preferred, the subcategory of cationic
surfactants is not itself described as a preferred choice among the others
(nonionic surfactants, amine oxide surfactants) enumerated in the broader
category of emulsifying agents. See Caswell ,r,r 549--565. Thus, to arrive at
the composition of claim 1 from the disclosure of Caswell would require
making particular choices, and choices within choices, out of nearly
countless possible combinations, with very little guidance.
Indeed, the lack of guidance in the direction of the claimed
composition is the heart of the issue before us. Although the Examiner
provides a rationale for combining Caswell with Grande and Krinski, as is
relevant to additional limitations in certain dependent claims (see Final
Action 8-10), the Examiner fails to articulate ( or point to evidence
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Appeal 2019-001042
Application 14/993,588
supporting) a sufficient motivation for making the selections from Caswell
to arrive at the composition of claim 1. Accordingly, on the present record,
we cannot sustain the Examiner's rejection of claim 1, or of the other
appealed claims (claims 2-13, 15, and 16), all of which depend directly or
indirectly on claim 1.
CONCLUSION
The rejection is reversed.
REVERSED
4