Ex Parte Desai et al

Board of Patent Appeals and Interferences

Jun 25, 2003

08482579 (B.P.A.I. Jun. 25, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

Paper No. 21

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SURESH DESAI and
JOHN F. HESSEL
__________

Appeal No. 2001-1154
Application No. 08/482,579
__________

ON BRIEF1
__________

Before WINTERS, ADAMS and GREEN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1, 3-11, 13-18 and 20-25, which are all the
claims pending in the application.
Claim 1 is illustrative of the subject matter on appeal and is reproduced
below:
1. An iodine complex concentrate comprising :

(a) from about 0.5 to about 30% by weight of iodine;

1 Appellants waived their request for oral hearing. Accordingly, we considered this appeal on
Brief.
Appeal No. 2001-1154 Page 2
Application No. 08/482,579

(b) from about 0.2 to about 14% by weight of an iodide
component selected from the group consisting of iodide salt,
iodide acid and mixtures thereof; and

(c) from about 2% to about 85% by weight of an alkyl
polyglycoside having the formula I;

R1O(R2O)b(Z)a I

wherein R1 is a monovalent organic radical having from about 6 to about
30 carbon atoms; R2 is a divalent alkylene radical having from 2 to 4
carbon atoms; Z is a saccharide residue having 5 or 6 carbon atoms; b is
a number having a value from 0 to about 12; a is a number having a value
from 1 to about 6, all weights being based on the weight of the
concentrate.

The references relied upon by the examiner are:
Sheety 4,576,818 Mar. 18, 1986
McCurry, Jr., et al. (McCurry) 5,266,690 Nov. 30, 1993

Lennette et al. (Lennette), Manual of Clinical Microbiology, 4th Edition, American
Society for Microbiology, p. 132 (1985)

GROUNDS OF REJECTION
Claim 22 stands rejected under 35 U.S.C. § 112, second paragraph, as
lacking antecedent basis for the phrase “said aqueous antimicrobial use
composition.”2
Claims 1, 3-11, 13-18 and 20-25 stand rejected under 35 U.S.C. § 103 as
being unpatentable over appellants’ acknowledged prior art in view of Lennette,
Shetty and McCurry.
We affirm the rejection under 35 U.S.C. § 112, second paragraph and
reverse the rejection under 35 U.S.C. § 103.

2 We note that the rejection of claims 4, 14 and 21 was withdrawn (see Paper No. 17) in response
to appellents’ amendments. See Reply Brief, Appendix of Claims.
Appeal No. 2001-1154 Page 3
Application No. 08/482,579

DISCUSSION
THE REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH:
According to appellants (Reply Brief, page 3), “the term ‘use’ had
previously been deleted from the claim in Applicant’s [sic] Amendment Under
Rule [§] 116, which was to be entered upon filing of an appeal.” Contrary to
appellants’ argument, no amendment addressing the term “use” was made to
claim 22. See Paper No. 17.
Accordingly we affirm the rejection of claim 22 under 35 U.S.C § 112,
second paragraph.
THE REJECTION UNDER 35 U.S.C. § 103:
According to the examiner (Answer, page 3), appellants specification
acknowledges that alkyl polyglycosides are known surfactants, and that iodine is
a well known antimicrobial that has been formulated or complexed with a variety
of adjuvants. The examiner supplements this finding with Lennette and Shetty.
With regard to Lennette, the examiner finds (Answer, page 4) the
reference teaches “the well established knowledge that detergents are typical
carriers for iodine in an iodophor….” We recognize that Lennette does teach
detergents as a carrier, however, Lennette also teaches quaternary ammonium
compounds and polyvinylpyrrolidone. See Lennette, page 132, column 2. As
appellants point out (Brief, page 5), “the term ‘detergent’ is extremely broad and
includes many compounds such as nonionic surfactants, anionic surfactants,
cationic surfactants, detergent builders, sequestering agents, etc. Iodine cannot
complex with every detergent component known in the art.”
Appeal No. 2001-1154 Page 4
Application No. 08/482,579

Regarding Shetty, the examiner finds (Answer, page 4) the patent
discloses “that iodides are used to solubilize the insoluble iodine … and [a]
myriad [of] organic polymers are known to be useful for complexing iodine to
result in iodophors.” The examiner emphasizes that Shetty disclose a “‘broad
variety of detergent/surface-active polymers’ may be used for the iodophor
(column 3, lines 1-3).” We note that the examiner finds support for his reliance
on Shetty in the background section of the Shetty patent. In the last paragraph
of this background section, Shetty discloses “[a]s noted above, the most suitable
polymer for the formation of iodophors is polyvinylpyrrolidone[3], which is the only
nondetergent, nonionic organic polymer suitable for the formation of antiseptic
iodophors.” Shetty, column 3, line 67 – column 4, line 2. Based on this
observation, Shetty discloses (column 4, lines 5-9), “a primary object of the
present invention [is] to provide a new nondetergent, nonionic polymer which can
form complexes with elemental iodine to provide highly effective iodine-
containing germicidal preparations.” As appellants point out (Brief, page 5),
Shetty “relates to the complexing of iodine with a poly[]dextrose or a polymer
resulting from the copolymerization of sucrose and epichlorohydrin. These
molecules are not surface-active agents, such as the alkyl polyglycoside of the
present invention, but are merely nonionic polymers.”
While the examiner does not so state, neither Lennette nor Shetty teach
alkyl polyglycosides as required by appellants’ claimed invention. To make up
for this deficiency the examiner relies on McCurry. According to the examiner

3 We note as set forth above, that polyvinylpyrrolidone is one of the three carriers taught by
Lennette.
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Application No. 08/482,579

(Answer, page 4), McCurry discloses “alkyl polyglycosides are known for their
detergent and surfactant functionalities …” and “can be made to have ‘maximum
stand-alone surfactant properties….’” The examiner finds (Answer, page 7), “the
precise meaning of the [phrase maximum stand-alone surfactant properties] … is
that the alkyl polyglycosides are so excellent in their surfactant properties that
they do not require additional surfactants.” See e.g., McCurry, column 3, lines
51-55. However, as appellants point out (Brief, page 6), “[t]he phrase ‘maximum
stand-alone surfactant properties’ is … neither synonymous with, nor analogous
to the formation of an iodine complex using alkyl polyglycosides.” According to
appellants (id.), McCurry “fails to contain any teaching, suggestion or motivation
relating to the formation of iodine complexes using alkyl polyglycosides.”
Nevertheless, based on the evidence of record, the examiner finds
(Answer, page 5), “one having ordinary skill in the art would have been motivated
to formulate an iodophor with a good stand alone detergent such as the instant
alkyl polyglycoside, as claimed with the expectation that the resulting iodophor
would provide antimicrobial efficacy.” While the examiner recognizes (Answer,
page 7) appellants’ argument “that iodine cannot complex with every detergent,
the [e]xaminer’s position is that iodine would have been expected to complex
with a detergent-surfactant that has such excellent surfactant properties as
formula I alkyl polyglycosides, in view of prior art teachings of iodine complexing
with ‘broad variety of detergent/surface-active polymers.’”
Appeal No. 2001-1154 Page 6
Application No. 08/482,579

To establish a prima facie case of obviousness, there must be both some
suggestion or motivation to modify the references or combine reference
teachings and a reasonable expectation of success. In re Vaeck, 947 F.2d 488,
493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). On this record, we find neither a
suggestion to modify the reference nor a reasonable expectation of success.
There is no evidence on this record that alkyl polyglycoside is the type of
detergent (Lennette), or detergent/surface-active agent (Shetty) that can act as a
carrier for iodine. As appellants point out, that a broad variety of
detergents/surface-active agents can act as carriers for iodine does not mean
that every detergent or surface-active agent can do so. The examiner failed to
present any evidence that alkyl polyglycoside can be a carrier for any molecule,
or that alkyl polyglycoside is so similar to the prior art detergents that one could
reasonably expect it to act as a carrier. To the contrary, the examiner has
emphasized the differences between alkyl polyglycoside and other prior art
detergents/surface-active agents, specifically that alkyl polyglycoside has
miximum stand-alone surfactant properties, thus requiring minimal, if any,
formulations with other surfactants, as typically required in the past. See
McCurry, column 3, lines 51-55. Therefore, we find no suggestion in the prior art
relied upon to combine McCurry with Lennette and Shetty.
In addition, because the examiner failed to identify a nexus, e.g.,
structural similarity, other than its surface-active properties, between the claimed
alkyl polyglycoside and the prior art iodine carriers, we find no reasonable
expectation of success in utilizing alkyl polyglycoside as a carrier for iodine. In
Appeal No. 2001-1154 Page 7
Application No. 08/482,579

the absence of a reasonable expectation of success one is left with only an
“obvious to try” situation which is not the standard of obviousness under 35
U.S.C. § 103. In re O’Farrell, 858 F.2d 894, 903, 7 USPQ2d 1673, 1680 (Fed.
Cir. 1988).
Accordingly, we reverse the rejection of claims 1, 3-11, 13-18 and 20-25
under 35 U.S.C. § 103 as being unpatentable over appellants’ acknowledged
prior art in view of Lennette, Shetty and McCurry.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART

)
Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Donald E. Adams )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Lora M. Green )
Administrative Patent Judge )

Appeal No. 2001-1154 Page 8
Application No. 08/482,579

John E. Drach
Henkel Corporation
Law Department
140 Germantown Pike Suite 150
Plymouth Meeting PA 19462

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