Ex Parte Feldman et al

Patent Trial and Appeal Board

Jul 24, 2013

11922952 (P.T.A.B. Jul. 24, 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.
11/922,952 12/27/2007 David Feldman 42994 1146
28249 7590 07/25/2013
DILWORTH & BARRESE, LLP
1000 WOODBURY ROAD
SUITE 405
WOODBURY, NY 11797
EXAMINER
ARNOLD, ERNST V
ART UNIT PAPER NUMBER
1613
MAIL DATE DELIVERY MODE
07/25/2013 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 DAVID FELDMAN, MICHEL ADDA, and
RAYMOND J. ROCCON
__________

Appeal 2012-003116
Application 11/922,952
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
compositions for water treatment, which have been rejected for obviousness,
indefiniteness, and including new matter. We have jurisdiction under 35
U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification discloses that “DBNPA ... [is] commonly used for
disinfection of cooling water and industrial water treatment. DBNPA is
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more stable under acidic aqueous conditions.” (Spec. 3:15-17.) “DBNPA
has poor solubility in water” (id. at 4:2) and “aqueous suspensions of
DBNPA can be utilized” (id. at 5:2). “Unfortunately, most of the commonly
used suspending agents are either unstable or fail to exhibit the desired effect
under acidic conditions” (id. at 5:5-6).
Claims 7-13, 42, and 54-64 are on appeal. Claims 7 and 54 are
illustrative and read as follows:
7. A formulation in the form of a suspension consisting essentially of
solid particles of 2,2-dibromo-3-nitrilopropionamide (DBNPA) in a
suspension-stabilizing amount of sodium bromide brine, the suspension
remaining stable for at least 7 days when kept at 50°C but in the absence of
said suspension-stabilizing amount of sodium bromide brine, failing to
remain stable for at least 7 days when kept at 50°C.

54. The formulation of claim 7 which is substantially free of organic
solvent.

The claims stand rejected as follows:
• Claims 7-13, 42 and 54-64 under 35 U.S.C. § 103(a) in view of
Williams,1 Gartner2 and Henkels;3
• Claims 7-13, 42 and 54-64 under 35 U.S.C. § 103(a) in view of
Burk,4 Gartner and Henkels;
• Claim 54 under 35 U.S.C. § 112, second paragraph, as indefinite;
and

1 Williams, US 2006/0003023 A1, Jan. 5, 2006.
2 Gartner, US 5,627,135, May 6, 1997.
3 Henkels et al., US 4,879,306, Nov. 7, 1989.
4 Burk et al., US 4,328,171, May 4, 1982.
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• Claim 54 under 35 U.S.C. § 112, first paragraph, as lacking
adequate written description in the Specification.
I.
The Examiner has rejected all of the claims on appeal as obvious in
view of Williams, Gartner and Henkels. The Examiner finds that Williams
discloses a microbicidal composition comprising (a) a stabilized
hypochlorite and bromide composition and (b) a microbicide that can be
DBNPA (Answer 8). The Examiner finds that “sodium bromide is taught as
the preferred soluble bromide source” (id., emphasis deleted), that the
microbicide “can be formulated in the form of a dispersion,” which reads on
a suspension (id. at 9), and that Williams’ dispersions can also contain
thickeners (id.).
The Examiner finds that Gartner discloses “aqueous suspensions of
DBNPA … [that] are generally used with thixotropes such as xanthan gum,
locust bean gum or clays” (id.). The Examiner concludes that it would have
been obvious “to add a suspending agent to the composition of Williams, as
suggested by Gartner and produce the instant invention … because Williams
suggests adding thickeners” (id. at 12).
Appellants argue that even assuming for the sake of argument that the
references are “properly combinable and … that one skilled in the art would
recognize the interchangeability of Williams’ dissolved DBNPA with
Gartner’s solid particles of DBNPA, the reaction between stabilized
hypochlorite and sodium bromide … would negatively impact upon the
stability of any suspension of DBNPA particles that might have initially
been realized” (Appeal Br. 17-18).
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We agree with Appellants that the Examiner has not established that
the cited references would have made obvious a suspension that would
remain stable for at least 7 days at 50°C, as claimed. Williams discloses “a
microbicidal composition comprising: (a) a stabilized hypochlorite and
bromide composition; and (b) at least one microbicide” which can be
DBNPA (Williams 1, ¶ 0003). Williams discloses that the “microbicides are
preferred to be formulated separately, due to the high reactivity and high pH
of the stabilized hypochlorite component” (id. at 3, ¶ 00215). Williams
discloses that “the microbicide components of the present invention may be
added to a locus sequentially, simultaneously, or may be combined before
being added to the locus” (id. at 3, ¶ 0022).
Thus, Williams discloses that the microbicide is preferably formulated
separately from the stabilized hypochlorite and bromide composition, rather
than the two components being formulated as a stable formulation, because
of the high reactivity and high pH of the stabilized hypochlorite component.
Although Williams discloses that the microbicides may be combined, its
disclosure that the stabilized hypochlorite component is highly reactive
would suggest combining the components just prior to use; it does not
support concluding that they would produce a stable formulation. Thus, the
Examiner has not adequately shown that the cited references would have

5 Although Williams suggests that “solid compositions may allow both
components to be formulated together thus eliminating the undesired cross
reactivity” (id. at 3, ¶ 0021, emphasis added), the claims on appeal are
limited to suspensions of DBNPA particles in a sodium bromide brine and
therefore do not read on solid compositions.
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made obvious a suspension that would have been expected to remain stable
for at least 7 days when kept at 50°C.
We reverse the rejection of independent claim 7 and dependent claims
8-13, 42 and 54-64 as being obvious in view of Williams, Gartner and
Henkels.
II.
The Examiner has rejected all of the claims on appeal as obvious in
view of Burk, Gartner and Henkels. The Examiner finds that Burk discloses
an antimicrobial composition comprising, among other things, water,
DBNPA, and up to 20 weight percent alkali metal bromide (Answer 15,
citing claim 12 of Burk), where a “formulation with 20% sodium bromide
reads on a brine” (id. at 17). The Examiner finds that Gartner discloses
“aqueous suspensions of DBNPA … [that] are generally used with
thixotropes such as xanthan gum, locust bean gum or clays” (id.). The
Examiner concludes that it “would have been obvious to one of ordinary
skill in the art … to add a suspending agent to the composition of Burk et al.,
as suggested by Gartner” (id. at 18).
Appellants argue that “all of the Burk et al. antimicrobial
compositions illustrating the formulation disclosed in their Claim 12 contain
fully dissolved DBNPA, not solid particles of DBNPA as required by
appellants’ claims” (Appeal Br. 20-21). Appellants argue that in Burk’s
process “for making the DBNPA-containing antimicrobial composition of
their Claim 12, glycol solvent is continuously present throughout.… [T]he
effect of the glycol solvent together with the water present in the
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composition is such as to maintain the DBNPA reaction product in
solution.” (Id. at 21-22.)
We agree with the Appellants that the Examiner has not adequately
explained how the cited references would have made obvious the DBNPA
suspension of claim 7. Burk discloses “an improved method of making …
stabilized antimicrobial compositions of DBNPA” (Burk, col. 2, ll. 11-14).
Burk discloses that an
alkyl α-cyanoacetate is reacted with ammonia in a glycol
solvent medium to form cyanoacetamide. Advantageously and
without requirement of separation of the formed cyano-
acetamide in glycol solvent … 2,2-dibromo-3-nitrilopropion-
amide [DBNPA] is formed in situ by treating the cyano-
acetamide in glycol with an appropriate mixture of bromine and
an alkali metal bromate.
(Id., abstract.) Burk discloses that a stable DBNPA composition can then be
prepared by incorporating paraformaldehyde in the reaction mixture (id.).
Burk also discloses that DBNPA antimicrobial compositions can contain up
to 20 weight %, preferably 1-5 weight %, of sodium bromide (id. at col. 1, l.
24).
Thus, Burk discloses a composition containing DBNPA and sodium
bromide, but Burk’s composition results from a series of chemical reactions
that produce DBNPA, which can be stabilized by addition of
paraformaldehyde. Burk’s description of its process for making DBNPA
thus indicates that its composition contains DBNPA in solution, not in the
form of solid particles. Although Gartner discloses suspensions of
particulate DBNPA, the Examiner has not set forth any reason why one of
ordinary skill in the art would add particulate DBNPA to Burk’s
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composition, as would be required in order to produce a DBNPA suspension
as defined by claim 7.
Thus, we reverse the rejection of independent claim 7 and dependent
claims 8-13, 42 and 54-64 as being obvious in view of Burk, Gartner and
Henkels.
III.
The Examiner has rejected claim 54 under 35 U.S.C. § 112, second
paragraph, as indefinite because the “term ‘substantially free’ in claim 54 is
a relative term which renders the claim indefinite” (Answer 6). The
Examiner reasons that the “term ‘substantially free’ is not defined by the
claim, [and] the specification does not provide a standard for ascertaining
the requisite degree, and one of ordinary skill in the art would not be
reasonably apprised of the scope of the invention” (id.).
Appellants argue that “[o]ne skilled in the art would readily
understand that [the term] ‘substantially free’ excludes … all but a negligible
or functionally insignificant amount of organic solvent, e.g., an amount of
organic solvent that might typically be present in some non-organic solvent
component of the claimed formulation as an impurity” (Appeal Br. 14).
We agree with Appellants that the Examiner has not shown that the
scope of claim 54 would be unclear to those of ordinary skill in the art. The
Specification states that “[s]ince DBNPA has poor solubility in water, these
[liquid] formulations typically contain as a carrier a mixture of water and an
organic solvent, most often a glycol” (Spec. 4:1-2). The Specification also
states that “[t]he use of organic solvents, however, is generally undesirable”
(id. at 4:8-11), and that the inventive compositions are “organic solvent-free,
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aqueous suspension formulations, containing high concentrations of
DBNPA” (id. at 15:14-15). We agree with Appellants that those of skill in
the art would understand the term “substantially free of organic solvent” to
mean a functionally insignificant or negligible amount of organic solvent,
rather than the amounts used in prior art compositions to aid in solubilizing
DBNPA.
IV.
The Examiner has rejected claim 54 under 35 U.S.C. § 112, first
paragraph, as lacking adequate written description in the Specification
because the limitation “‘substantially free of organic solvent’ was not
described in the specification as filed, and [a] person skilled in the art would
not recognize” a description of the claimed invention in Appellant’s
disclosure (Answer 4-5). The Examiner reasons that the “specification
discloses ‘organic solvent free’ in [0098] and ‘solvent-free’ in [0162] but
does not describe the instantly claimed limitation” (id. at 5).
Appellants argue that the Specification makes “clear that the prior art
use of solvents is undesirable. Clearly, the purpose of appellants having
noted this disadvantage of the prior art formulations was to provide context
for other disclosure in the specification indicating solvent-free formulations
to be beneficial and therefore preferred.” (Appeal Br. 14.)
We agree with Appellants that the Specification provides adequate
written descriptive support for the disputed limitation. “[T]he test for
sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date” Ariad
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Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
Since the Specification discloses organic solvent-free aqueous suspension
formulations of DBNPA, it also reasonably conveys to those skilled in the
art that Appellants had possession of DBNPA formulations that were
“substantially free” of organic solvent.
Thus, we reverse the rejection of claim 54 under 35 U.S.C. § 112, first
paragraph.
SUMMARY
We reverse all of the rejections on appeal.

REVERSED

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