Ex Parte CHASON et al

Patent Trials and Appeals Board

Mar 28, 2019

14277112 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/277,112
110669 7590
Ajay A. Jagtiani
Miles & Stockbridge
17 51 Pinnacle Drive
Suite 1500
FILING DATE
05/14/2014
04/01/2019
Tysons Corner, VA 22102
FIRST NAMED INVENTOR
MARC CHASON
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.
109051-020201 4319
EXAMINER
ALAWADI, SARAH
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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):
ipdocketing@milesstockbridge.com
bgoodman@milesstockbridge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC CHASON, DANIEL ROMAN GAMOTA,
and RICK LATELLA
Appeal2018-000401
Application 14/2 77, 112 1
Technology Center 1600
Before ERIC B. GRIMES, TA WEN CHANG, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
antimicrobial liquid product, which have been rejected as anticipated and
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
According to the Specification "[t]hree types of antimicrobial
additives have commonly been used in producing antimicrobial liquids: (1)
nanoscale metal particles, (2) metal aluminosilicates, and (3) organic
1 Appellants identify the real party in interest as DMR International, Inc.
(Appeal Br. 3.)
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Application 14/277,112
compounds." (Spec. ,r 40.) The Specification states that "[p ]reviously,
organometallic compounds that are insoluble or sparingly soluble in water
have not been considered as antimicrobial additives." (Id. ,r 44.) The
invention is directed at a composition that includes an inorganic liquid, that
has a dispersed organic host liquid therein and which organic host liquid has
organometallic additives dispersed throughout. (Id. ,r 5.)
Claims 1, 2, 5, 7-11, 23, 24, 27, 29-31, 41, 43--45, and 48 are on
appeal. 2 Claim 1 is representative and reads as follows:
1. A product comprising:
an inorganic liquid; and
a dispersed liquid material system including,
an organic host liquid in the form of droplets
dispersed throughout the inorganic liquid, and
one or more first antimicrobial organometallic
additives dispersed throughout each of the droplets of
the organic host liquid,
wherein each of the one or more first antimicrobial
organometallic additives is water insoluble or sparingly
soluble in water and comprises a long-chain fatty acid
group, and
wherein the organic host liquid is a liquid at room
temperature.
(Appeal Br. 28.)
2 Claims 3, 4, 6, 12-22, 25, 26, 28, 32--40, 46, and 47 are also pending but
stand withdrawn from consideration. (Appeal Br. 3.)
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Application 14/277,112
The following grounds of rejection3 by the Examiner are before us on
review:
Claims 1, 2, 5, 7, 9, 11, 23, 24, 27, 29, 31, 41, 45, and 48 under 35
U.S.C. § I02(b) as anticipated by Iijima. 4
Claims 1, 2, 5, 7-11, 23, 24, 27, 29-31, 41, 43--45, and 48 under 35
U.S.C. § 103 as unpatentable over Tajmamet. 5
Claim 45 under 35 U.S.C. § 112, second paragraph as being indefinite
for failing to particularly point out and distinctly claim the subject matter
regarded as the invention.
DISCUSSION
I
Anticipation
The Examiner notes that "[ t ]he elected inorganic species is water, and
organometallic additive is zinc stearate." (Final Action 3.) The Examiner
finds that Iijima teaches a composition "having a mixture of water at 70%
(the majority of the liquid), zinc stearate and paraffin (organic liquid), see
abstract." (Id.) The Examiner notes that an oil in water emulsion has a
3 The Examiner raised, for the first time in the Answer, an objection to the
[S]pecification with respect to an amendment filed January 29, 2016 as
introducing new matter. (Ans. 2-3.) There was no corresponding rejection
of the claims. An objection and requirement to delete new matter is not an
appealable issue, it is subject to supervisory review by petition under 37
CPR § 1.181. See MPEP 2163 .06. Therefore, we do not consider in this
Appeal the objection raised or Appellants' response thereto.
4 Iijima et al., JP 06305243, Derwent Week 199503, 1995 Derwent World
Patents Index; AN 1995-018879, English translation.
5 Tajmamet et al., US 8,470,755 Bl, issued June 25, 2013.
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Application 14/277,112
greater aqueous phase than an oil phase as compared to a water in oil
emulsion, and Iijima discloses that the inorganic liquid comprises a majority
of water. (Ans. at 4--5.) The Examiner contends that the mixing of
ingredients described by Iijima is similar to Example 1 of Appellants'
Specification. (Id. at 4.) According to the Examiner "[b ]ecause Iijima is
mixing the organic host liquid (water) with inorganic liquid (wax) and with
organometallic additive (zinc stearate ), ... the combination would result in
the dispersion of droplets" with the components dispersed throughout in the
same way as the Examples of the Specification achieve the components
dispersed throughout. (Id.)
We disagree that the Examiner has set forth a prima facie case of
anticipation.
The Examiner has the burden of providing reasonable proof that a
claim limitation is an inherent characteristic of the prior art. In re Best, 562
F.2d 1252, 1254--55 (CCPA 1977). "Inherency ... may not be established
by probabilities or possibilities." MEHL/Biophile Int 'l. Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999). "[P]atentability is determined on the
totality of the record, by a preponderance of evidence with due consideration
to persuasiveness of argument." In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992).
Appellants' product of claim 1 requires an organic host liquid in the
form of droplets and one or more first antimicrobial organometallic additives
"dispersed throughout each of the droplets of the organic host liquid." 6
6 Appellants' claim 23, which is also an independent claim, likewise
requires this.
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Appellants' Specification defines "organic host liquid" in paragraph 28 as "a
liquid or a mixture of organic liquids in which one or more organometallic
additives are dispersed." (Spec. ,r 28, emphasis added.) Thus, claim 1
requires the one or more organometallic additives to be "dispersed" in the
droplets of the organic host liquid.
Moreover, Appellants' Specification defines "dispersed throughout"
in paragraph 27 as "additives being distributed relatively evenly throughout
an organic host liquid." (Spec. ,r 27.)7 Thus, claim 1 requires not only that
the droplets of the organic liquid contain the one or more antimicrobial
organometallic additives, but that the additive(s) is/are distributed evenly
throughout the droplet. 8
The Examiner contends that the method of forming the dispersions is
a product by process limitation "which absent evidence to the contrary holds
little patentable weight." (Final Action 4.) Yet, in the Advisory Action
dated April 21, 201 7, the Examiner acknowledges "that mixing various
phases to get droplets dispersed throughout one another [is accomplished] in
the same way that liquids are mixed to form emulsions." (Advisory Action
7 As noted above, we make no comment on the Examiner's objection to the
Specification with respect to this paragraph, but we do note that whether we
look at the amended paragraph or the original paragraph, the definition with
respect to the additives is the same.
8 We disagree with the Examiner's reliance in the Final Action on the
definition of "dispersed" rather than "dispersed throughout" in interpreting
the scope of the claims. (Final Action 3.) Thus, while it may be true that
mixing together ingredients can provide a mixture that is dispersed,
according to the Specification (see id.), the claims require something more
of the droplets with the inorganic liquid and the additives with the droplets,
as explained.
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2.) The Examiner states that while the ingredients of a water in oil and oil in
water emulsion are the same, an oil in water emulsion is made with oil being
combined with excess water, whereas a water in oil emulsion is made with
water being combined with excess oil. (Ans. 4--5.) Appellants argue that
the order of mixing phases matters in forming particular emulsions. (Appeal
Br. 11.) Appellants argue that, a) "[a]s no special means are described in,
Iijima for zinc stearate being dispersed in the paraffin dispersion of the
composition, Iijima fails to teach, or suggest, a protective layer composition
including a dispersed liquid material system wherein one or more zinc
stearate additives are dispersed throughout each of the droplets of the
paraffin dispersion, as claimed[,]" and b) "as there is no special means
described in Iijima for the paraffin being dispersed throughout the water in
the mixture, Iijima fails to teach, or suggest, the paraffin is in the form of
droplets dispersed throughout the water, as claimed." (Id.)
The English language abstract of Iijima is not particularly clear as to
what the mixture is that includes paraffin and zinc stearate in that the parts
by weight of all the ingredients add up to much more than 100. (Iijima ("A
mix of (A) 25 pts.wt., (B) 50 pts.wt., CaC03 25 pts.wt., 30% paraffin
dispersion 15 pts.wt., 30% zinc stearate 30 pts.wt., 49% styrene butadiene
latex 50 pts.wt., 27% polyvinyl acetate grafted starch soln. 100 pts.wt. and
glyoxal 2 pts.wt. was coated on one surface of woodfree paper.").) Mixes A
and B include water in a greater part than the other ingredients, but it does
not appear to be the case that water is present in a greater amount in the
combination of zinc stearate and "paraffin dispersion." Furthermore, we
agree with Appellants (Appeal Br. 11 ), that Iijima at most teaches mixing a
paraffin dispersion together with zinc stearate, and polyvinyl acetate, among
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other ingredients, and that the so mixed composition also has some amount
of water from the (A) and the (B) mix. However, Iijima does not say how
these ingredients are mixed together and does not call the paraffin and zinc
stearate a dispersion, nor does it call the mixture of all the ingredients an oil
in water emulsion/dispersion. Combining the ingredients together could
simply result in all of the ingredients being evenly distributed among each
other or it could result in a mixture where there is not even distribution.
Moreover, it may not result in the zinc stearate being evenly dispersed
throughout each of the droplets of the paraffin, which is a dispersion prior to
its being mixed with the zinc stearate. Consequently, at a minimum, we
cannot conclude that the Examiner has supported with sufficient evidence
that the zinc stearate is inherently distributed relatively evenly throughout
each droplet of paraffin in Iijima simply because Iijima teaches a mixture
that includes these ingredients.
The Examiner's argument that Iijima teaches mixing the claimed
ingredients together with an excess of water like Appellants' Examples in
the Specification (Ans. 4) is not evidence that the required dispersion results
from the mere fact of Iijima's ingredients being "a mix of' particular
ingredients. The Examiner's position that "the Examples of the
[S]pecification also do not describe any special means to achieve
components 'dispersed throughout"' (Ans. 4) appears to be a concern as to
whether the Specification enables claims that require distribution of the
antimicrobial organometallic additive relatively evenly throughout each of
the droplets of the organic host liquid, but enablement is not an issue
properly before us for review.
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For the reasons discussed above, we do not affirm the Examiner's
rejection of claims 1, 2, 5, 7, 9, 11, 23, 24, 27, 29, 31, 41, 45, and 48 under
35 U.S.C. § 102(b) as anticipated by Iijima.
II
Obviousness
The Examiner finds that Tajmamet teaches a disinfectant composition
that comprises organometallic additives such as zinc ions from 0.001-10%
and includes a liquid carrier such as water present from 30-95%. (Final
Action 7.) The Examiner finds that the liquid carrier could be water. (Id.)
The Examiner further finds that Tajmamet teaches the composition can
include hexoxyethanol (also known as hexyl cellusolve) as an organic liquid
in an amount from 0.01-25%. (Id.) The Examiner also finds that Tajmamet
teaches that "[ t ]he water and optional components which include the organic
solvents can be dissolved, dispersed or suspended." (Id. at 8.) The
Examiner finds that "[ s ]ince the organic liquid is mixed with water and
includes hexoxyethanol which is not miscible [in] the inorganic liquid, the
organic host liquid would provide a dispersed phase of an emulsion in the
inorganic liquid" and because "the organic host is liquid it would have
droplets dispersed through a second (inorganic liquid)." (Id.) In support of
this conclusion, the Examiner notes that the inorganic liquid comprises the
majority of inorganic liquid. (Ans. 7 .)
As with the anticipation rejection discussed above, the Examiner
concludes that Tajmamet teaches a dispersion as claimed with the droplets of
an organic host liquid having zinc stearate evenly distributed throughout
each host liquid droplet because Tajmamet teaches mixing these ingredients
together. (Id. at 8.) For the reasons discussed above in the anticipation
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rejection, we do not find the Examiner has established by a preponderanc of
the evidence that requirements of claim 1 and claim 23 are met by
Tajmamet's disclosure of a mixture of ingredients.
Accordingly, we reverse the Examiner's rejection of the claims as
being obvious over Tajmamet.
III
Indefiniteness
Appellants did not contest the Examiner's rejection of claim 45 under
35 U.S.C. § 112, second paragraph (Final Action 14) in the Appeal Brief. In
the Reply Brief, Appellants admit there is a problem with the claim. (Reply
Br. 30.) Therefore, we summarily affirm the Examiner's indefiniteness
rejection.
SUMMARY
We reverse the rejection of claims 1, 2, 5, 7, 9, 11, 23, 24, 27, 29, 31,
41, 45, and 48 under 35 U.S.C. § 102(b) as anticipated by Iijima.
We reverse the rejection of claims 1, 2, 5, 7-11, 23, 24, 27, 29-31, 41,
43--45, and 48 under 35 U.S.C. § 103 as unpatentable over Tajmamet.
We affirm the rejection of claim 45 under 35 U.S.C. § 112, second
paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter regarded as the invention.
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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-IN-PART
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