Ex Parte Frank

Patent Trial and Appeal Board

Jan 28, 2013

11473329 (P.T.A.B. Jan. 28, 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.
11/473,329 06/23/2006 Steven R. Frank FRANK-003 5588
21884 7590 01/28/2013
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
CHOI, FRANK I
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
01/28/2013 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 STEVEN R. FRANK
__________

Appeal 2011-010587
Application 11/473,329
Technology Center 1600
__________

Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a method for
enhancing the effectiveness of a silver colloid suspension. The Examiner
entered a rejection for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 1 and 19 are the claims on appeal (see App. Br. 3), and read as
follows:
1. A method for enhancing the antimicrobial effectiveness of a
silver colloid suspension containing nanometer sized silver particles
suspended in an aqueous carrier against a desired bacteria comprising:
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adding an agent to the colloid suspension which functions to modify
the cell wall of the bacteria to render the wall more penetrable to the
silver in a colloidal suspension while not affecting the silver particles‟
ability to remain in suspension and enhance the suspension
antimicrobial effectiveness; wherein the agent is a combination of
both peppermint oil and Polysorbate 20.

19. The method of claim 1, wherein the aqueous carrier is a
hydrogel.

The sole rejection before us for review is the Examiner‟s rejection of
claims 1 and 19 under 35 U.S.C. § 103(a) as obvious over Paul,
1
Holladay,
2

Cherepova,
3
Pattnaik,
4
and Romley
5
(Ans. 5-7).
OBVIOUSNESS
The Examiner cited Paul as describing a composition that included an
aqueous colloidal silver solution as well as surfactants, such as polysorbate
20, and other additives, including preservatives (see Ans. 5-6). The
Examiner found that Paul differed from Appellant‟s claims in that Paul did
not “expressly disclose the use of nanometer sized silver particles suspended
in an aqueous carrier, the addition of peppermint oil, [and] the addition of an
agent to the colloid suspension which functions to modify the cell wall of the
bacteria to render the wall more penetrable to the silver colloid” (id. at 6).

1
U.S. Patent App. Pub. No. 2006/0122082 A1 (filed January 6, 2006).
2
U.S. Patent App. Pub. No. 2006/0182813 A1 (PCT filed June 3, 2004).
3
N. Cherepova and D. Veljanov, Effect of sorbitan monolaurate
polyoxyalkylene (Tween 20) on the ultrastructure of some bacteria, 80
CYTOBIOS 179-185 (1994).
4
S. Pattnaik et al., Antibacterial and antifungal activity of ten essential
oils in vitro, 86 MICROBIOS 237-246 (1996).
5
U.S. Patent App. Pub. No. 2006/0086048 A1 (filed October 26, 2004).
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The Examiner found, however, that the prior art would have amply
suggested Appellant‟s claimed method in view of (a) Holladay‟s disclosure
that silver colloid can be in the form of nanometer sized silver particles and
can be combined with surfactants and other antimicrobials, (b) Cherepova‟s
disclosure that polysorbate 20 causes bacterial cell membranes to be thinner,
(c) Pattnaik‟s disclosure that peppermint oil has both antibacterial and
antifungal activity, and (d) Romley‟s disclosure of an aqueous suspension
containing silver colloid, peppermint oil, and non-ionic surfactant (see Ans.
6-7). Based on these teachings, the Examiner reasoned:
[O]ne of ordinary skill in the art would expect that polysorbate
20 as surface active agent or surfactant would solubilize the
lipoproteins of the bacterial cell wall resulting thinner,
translucent and partial disintegration and lysing in some surface
zones thereby increasing the permeability of the cell wall to the
silver colloid similar to hydrogen peroxide, that the peppermint
oil would provide added antibacterial effectiveness, that
nanosized silver colloids would be effective as an antibacterial
and that the use of peppermint oil and non-ionic surfactants
would not effect the ability of silver colloid to remain in
suspension.
Therefore, the claimed invention, as a whole, would have
been prima facie obvious to one of ordinary skill in the art at
the time the invention was made, because every element of the
invention has been collectively taught by the combined
teachings of the references.

(Id. at 7.)
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
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record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

As Appellant has not argued the patentability of the claims separately,
the claims stand or fall together. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant‟s arguments do not persuade us that a preponderance of the
evidence does not support the Examiner‟s conclusion that claim 1 would
have been prima facie obvious to an ordinary artisan.
Claim 1 recites a method for enhancing the antimicrobial
effectiveness of a silver colloid suspension containing nanometer sized silver
particles suspended in an aqueous carrier.
The sole step required by claim 1 to enhance the silver colloid
suspension‟s antimicrobial effectiveness is the step of adding, to the
suspension, an agent that functions to modify the cell wall of the bacteria to
render the wall more penetrable to the silver, while not affecting the silver
particles‟ ability to remain in suspension and enhance the suspension‟s
antimicrobial effectiveness. Claim 1 requires the added agent to contain
both peppermint oil and polysorbate 20.
Contrary to Appellant‟s argument that the polysorbate 20 used in
Paul‟s antimicrobial foam compositions is in no way linked to Paul‟s use of
silver colloid (App. Br. 10-11), Paul explicitly discloses combining the two
agents, with polysorbate being presented first in a list of preferred
surfactants (see Paul [0059] (“In this composition, colloidal silver in water is
employed, with the silver content ranging between about 10 parts per million
and 32 parts per million in a water solution. In addition, the preferred
surfactants comprise one or more selected from the group consisting of
polysorbate 20 . . . .”)).
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Given this teaching, we agree with the Examiner that Paul would have
prompted an ordinary artisan to add polysorbate 20 to a silver colloid
suspension, as claim 1 requires. We acknowledge the Examiner‟s finding
that Paul does not describe adding peppermint oil to the composition as
claim 1 also requires.
However, as the Examiner pointed out, Holladay discloses that
antimicrobial silver colloid compositions may contain “various”
antimicrobial ingredients in addition to the silver (see Holladay [0284]). As
the Examiner also pointed out, peppermint oil was known in the art to have
antibacterial and antifungal properties (see Pattnaik 237 (abstract)
(peppermint oil had antibacterial activity against all 22 bacteria tested and
antifungal activity against 11 of 12 fungi tested)).
Given Holladay‟s teaching of the suitability of including additional
antimicrobial ingredients in colloidal silver compositions, and further given
Pattnaik‟s disclosure that peppermint oil was known in the art to possess
antibacterial and antifungal activity against a number of different strains, we
agree with the Examiner that an ordinary artisan would have been prompted
to add to silver colloid compositions such as that taught by Paul, an agent
that included peppermint oil as well as polysorbate 20. Moreover, given
Holladay‟s disclosure of the suitability of using nano-sized silver particles in
colloidal silver solutions (see Holladay [0020]), we further agree with the
Examiner that an ordinary artisan would have considered it obvious to
include such particles in antimicrobial colloidal silver compositions.
Thus, we are not persuaded that the Examiner failed to advance a
sufficiently articulated rationale for combining the teachings of Paul,
Holladay, and Pattnaik, as Appellant argues. Rather, as the Supreme Court
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reaffirmed in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), “when a
patent „simply arranges old elements with each performing the same
function it had been known to perform‟ and yields no more than one would
expect from such an arrangement, the combination is obvious.” Id. at 417
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
In KSR, the Court also reaffirmed that “[i]n determining whether the
subject matter of a patent claim is obvious, neither the particular motivation
nor the avowed purpose of the patentee controls. What matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” Id. at 419.
Thus, even if it were true that the prior art‟s rationale for practicing
the claimed process might not be for Appellant‟s express purpose of
increasing bacterial cell wall permeability to silver, that fact does not
demonstrate that Appellant‟s claimed process would have been considered
unobvious.
We acknowledge that the embodiment in Holladay described as
including antimicrobial agents in addition to the silver is described as a
hydrogel (see Holladay [0281]-[0283]). However, as the Examiner points
out (Ans. 10), Paul discloses that, like Holladay, its formulations can
suitably contain a number of the same hydrogel-forming thickening agents
as described in Holladay, so as to allow its silver gel formulations to be
dispensed as gels (see Paul [0078]). Thus, we are not persuaded that an
ordinary artisan would have viewed Holladay‟s teachings as not being
directed or relevant to formulations described in Paul.
Moreover, as the Supreme Court further explained in KSR, “the
[obviousness] analysis need not seek out precise teachings directed to the
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specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR, 550 U.S. at 418. Thus, a “person of ordinary skill is .
. . a person of ordinary creativity, not an automaton.” Id. at 421.
Here, given Holladay‟s teaching of the suitability of including
additional antimicrobial ingredients to silver colloid compositions intended
for topical application, we agree with the Examiner that an ordinary artisan
would have reasonably inferred that it would be similarly suitable to include
additional ingredients having known antimicrobial properties, such as
peppermint oil, to the antimicrobial polysorbate 20-containing silver colloid
foam compositions of Paul (see, e.g. Paul [0053]-[0059]).
We also acknowledge the teachings in Cherepova and Romley. As
we understand it, the Examiner‟s rationale in applying these references was
to provide evidence that an ordinary artisan would have reasonably expected
polysorbate 20 to modify bacterial cell walls as claim 1 provides (see
Cherepova generally), and that adding peppermint oil and a surfactant to
colloidal silver would allow the silver particles to remain in suspension, as
claim 1 also provides (see Romley [0017]-[0019]; see also Ans. 6-7).
We see no teaching, however, in either Cherepova or Romley
undermining the teaching in Holloway of including additional antimicrobial
ingredients in colloidal silver compositions. To the contrary, if anything,
Romley‟s disclosure of including non-ionic surfactants (Romley [0019]-
[0020]) would have suggested the desirability of including a non-ionic
surfactant such as polysorbate 20 in Romley‟s compositions.

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In sum, rather than presenting a hodgepodge of unrelated teachings
that an ordinary artisan would have only considered together when viewing
Appellant‟s disclosure using impermissible hindsight, for the reasons
discussed, we agree with the Examiner that an ordinary artisan preparing a
colloidal silver suspension containing nanometer sized silver particles would
have considered it obvious to add an agent containing polysorbate 20 and
peppermint oil to that suspension. As Appellant‟s arguments do not,
therefore, persuade us that the Examiner failed to make out a prima facie
case of obviousness, and as Appellant has not advanced any clear or specific
evidence regarding secondary considerations of non-obviousness, we affirm
the Examiner‟s rejection of claim 1 over the cited references. Claim 19 falls
with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
SUMMARY
We affirm the Examiner‟s obviousness rejection of claims 1 and 19
over Paul, Holladay, Cherepova, Pattnaik, and Romley.

TIME PERIOD
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

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