Ex Parte Eng et al

Patent Trial and Appeal Board

Dec 19, 2016

12974296 (P.T.A.B. Dec. 19, 2016)

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.
12/974,296 12/21/2010 Aik Hwee Eng A0221-00 3448
99653 7590 12/21/2016
Moser TahnaHa / An sell T imiterl
EXAMINER
1030 Broad Street OSTRUP, CLINTON T
Suite 203
Shrewsbury, NJ 07702 ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
docketing@mtiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AIK HWEE ENG, LOK SI TANG, DAVID M. LUCAS, and
WAN ASHRUZI WAN AHMAD
Appeal 2014-0077361
Application 12/974,2962
Technology Center 3700
Before STEFAN STAICOVICI, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—11, 14—16, and 21—23. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
Mar. 5, 2014) and Reply Brief (“Reply Br.,” filed July 7, 2014), and the
Examiner’s Answer (“Ans.,” mailed May 8, 2014), Advisory Action (“Adv.
Act.,” mailed Dec. 6, 2013), and Final Office Action (“Final Act.,” mailed
Sept. 18,2013).
2 Appellants identify Ansell Healthcare Products LLC as the real party in
interest. App. Br. 1.
Appeal 2014-007736
Application 12/974,296
CLAIMED INVENTION
Appellants’ claimed invention “relates to elastomeric articles,
specifically gloves, that have one or more surfaces coated with an
antimicrobial tack-free coating that kills germs fast.” Spec. 11.
Claim 1, reproduced below, is the only independent claim and is
representative of the subject matter on appeal:
1. An elastomeric medical glove having a stable, fast
release antimicrobial surface coating comprising:
a polymeric layer, and
a dried, non-tacky coating on a surface of the polymeric
layer, the coating comprising an cationic antimicrobial agent, a
wax agent, a polysiloxane lubricant, and a water-soluble wetting
agent, the coating essentially free of film-forming polymer;
wherein the glove comprises a residual powder of less than 2 mg
per glove, and wherein, if tested after storage of the glove for 10
days of accelerated aging at 70°C, the coating remains
antimicrobially active, providing at least a 6 log reduction in
Staphylococcus aureus (ATCC 6538) and Escherichia coli
(ATCC 11229) after a 2 minute exposure.
REJECTIONS
Claims 1—11, 14—16, and 21—23 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
Claims 1—11, 14—16, and 21—23 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Wang (US 2007/0104766 Al, pub. May 10, 2007),
Goddard (US 4,605,422, iss. Aug. 12, 1986), and Podell (US 4,575,476, iss.
Mar. 11, 1986).
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Appeal 2014-007736
Application 12/974,296
ANALYSIS
Written Description
In rejecting claims 1—11, 14—16, and 21—23 under 35 U.S.C. § 112,
first paragraph, the Examiner finds that the Specification does not include
explicit or implicit support for the limitation “the coating essentially free of
film-forming polymer,” as recited in independent claim 1. Final Act. 7.
Appellants acknowledge that the Specification does not explicitly disclose
the disputed claim limitation. However, Appellants identify paragraph 13 of
the Specification and the Specification’s alleged “lack of any description of
a film-forming polymer in the described coating” as providing implicit
support of Appellants’ possession of the disputed, negative claim limitation.
App. Br. 2; see also id. 2—9 (citing Santarus, Inc. v. Par Pharm, Inc., 694
F.3d 1344, 1351 (Fed. Cir. 2012) (negative limitations are adequately
supported when the Specification describes a reason to exclude the relevant
limitation).
In Santarus, the Specification provided sufficient reason to exclude
the negative claim limitation, because the Specification expressly described
disadvantages of the negative claim limitation. Santarus, 694 F.3d at 1351.
In contrast, paragraph 13 of Appellant’s Specification states:
PCT Patent Application No. W02007/058880A2 to Wang
et al discloses a powder-free elastomeric article having a
surface coating comprising an antimicrobial agent, hydrophilic
film-forming polymer and a hydrophobic component. The
antimicrobial agent in incorporated in a controlled-release
matrix comprising a hydrophilic film-forming polymer and a
hydrophobic component. . [sic] The hydrophilic polymer is
believed to provide a reservoir for the antimicrobial agent,
while the hydrophobic component is believed to improve the
film's flexibility through its plasticizing effect. Paraffin wax is
used for hydrophobicity enhancement, friction control,
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Appeal 2014-007736
Application 12/974,296
antiblocking and barrier properties. The antimicrobial activity
of 2-log reduction is claimed against micro-organisms which is
rather low for any practical application. A desiccant is needed
in the packaging of the glove to maintain the stability of the
glove.
The last sentence of paragraph 13 describes a problem with “maintain[ing]
the stability of [Wang’s] glove,” but does not describe, explicitly or
implicitly, that the stability problem stems from Wang’s use of a film-
forming polymer coating. Appellants’ citations to other portions of the
Specification also fail to provide implicit or explicit description that the
claimed invention seeks to avoid a film-forming polymer coating. App. Br.
5, 8 (citing Spec. ^fl[ 18, 20, 43).
For example, paragraphs 18 and 20 of the Specification describe a
non-tacky coating comprising an antimicrobial agent on a polymeric layer,
paragraphs 23 and 46 describe a polymeric shell having an antimicrobial
coating, paragraph 43 describes a non-tacky composition, and paragraph 26
describes the glove having “fast acting antimicrobial properties.” But we
find nothing that provides sufficient reason to exclude the claimed coating
from having a film-forming polymer.
Accordingly, we are not persuaded that a person of ordinary skill in
the art would understand that Appellants were in possession of the claimed
invention, including that “the coating [is] essentially free of film-forming
polymer,” as recited in independent claim 1, at the time the present
application was filed. Therefore, we sustain the Examiner’s rejection of
claim 1 and dependent claim 2—11, 14—16, and 21—23 under 35 U.S.C.
§112, first paragraph.
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Appeal 2014-007736
Application 12/974,296
Obviousness
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) because the combination of
Wang, Goddard, and Podell does not disclose or suggest that the coating is
essentially free of film-forming polymer, as required by claim 1. App. Br.
10-13; see also Reply Br. 4.
In rejecting independent claim 1, the Examiner acknowledges that the
combination of Wang, Goddard, and Podell does not disclose or suggest that
the coating is essentially free of film-forming polymer, as required by claim
1. FinalAct.il. However, the Examiner finds that the argued limitation
amounts to a product by process limitation that describes only the process
for attaching the coating, not the resulting structure. Id. at 11—12. The
Examiner takes the position that “it is these polymers [(the cationic
antimicrobial agent, the wax agent, the polysiloxane lubricant, and the
water-soluble wetting agent)] that. . . [are] not. . . film-forming.” Adv.
Act. 2. We disagree.
Here, claim 1 recites “a dried, non-tacky coating” that includes “an
cationic antimicrobial agent, a wax agent, a polysiloxane lubricant, and a
water-soluble wetting agent” and is “essentially free of film-forming
polymer.” See App. Br. 24. Hence, claim 1 requires that the claimed
“coating” include the recited components, but does not include a “film-
forming polymer.” As such, the argued limitation relates to the structure of
the claimed coating and is not a product-by-process limitation as interpreted
by the Examiner. Reply Br. 2; see also Ans. 7.
Wang describes powder-free gloves that provide sustainable
antimicrobial activity. Wang | 7. Wang further discloses a water-based
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Application 12/974,296
coating formula for elastomeric materials, such as gloves, that includes an
antimicrobial agent in a blend of a hydrophilic polymer and a hydrophobic
component. Id. 9, 10. Wang further discloses that this blend “provides
good film-forming properties” and the controlled release of the antimicrobial
agent embraced therein. Id. 136; see also id. H 20, 27 (describing film­
forming properties of hydrophilic polymer). Thus, Wang expressly
describes the coating as including a film-forming polymer, i.e., a hydrophilic
polymer.
In view of the foregoing, we reverse the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). For the same reasons, we also reverse the
Examiner’s rejection under 35 U.S.C. § 103(a) of dependent claims 2—11,
14—16, and 21—23.
DECISION
The Examiner’s rejection of claims 1—11, 14—16, and 21—23 under 35
U.S.C. § 112, first paragraph, is affirmed.
The Examiner’s rejection of claims 1—11, 14—16, and 21—23 under 35
U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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