Ex Parte Garner et alDownload PDFPatent Trial and Appeal BoardMay 14, 201814119931 (P.T.A.B. May. 14, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/119,931 03/05/2014 George Victor Garner 23550 7590 05/16/2018 HOFFMAN WARNICK LLC 540 Broadway 4th Floor ALBANY, NY 12207 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. Yl8663USN1 9527 EXAMINER BRANSON, DANIELL ART UNIT PAPER NUMBER 1616 NOTIFICATION DATE DELIVERY MODE 05/16/2018 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): PTOCommunications@hoffmanwarnick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEORGE VICTOR GARNER, JAN ROGERS, and VICTORIA TAYLOR 1 Appeal2017-006963 Application 14/119,931 Technology Center 1600 Before ERIC B. GRIMES, RICHARD J. SMITH, and JOHN E. SCHNEIDER, Administrative Patent Judges. SCHNEIDER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to methods for treating grass growing surfaces that have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE "Grass-carrying surfaces are enjoyed by people the world over and provide a natural habitat for wildlife and food for livestock." Spec. 1. 1 Appellants identify the real party in interest as Arcis Biotechnology Holdings Limited. Appeal Br. 1. Appeal2017-006963 Application 14/119,931 "Millions of people participate in sports played on grass-carrying surfaces including football, rugby, hockey, golf, tennis, cricket and horse-racing." Id. "A particular problem that has increased in recent years is damage to grass, especially turf grass that is used on sports playing surfaces, by nematodes." Id. "Traditional nematicidal treatments for turf grass have involved the use of organophosphate compounds. However these are toxic to humans and cause damage to the environment." Spec. 2. The Specification describes a method for treating a grass-carrying surface with a nematicidal composition having an improved environmental profile and lower toxicity. Id. Claims 1-11 are on appeal. Claim 1 is the sole independent claim and reads as follows: 1. A method of treating a grass-carrying surface, the method comprising applying to the grass-carrying surface: (a) a compound of formula (I): R~ R1 l ! J; § r ']' R"'-N-L-Si-,R-- n+ l t ke ~:~ (0 or a derivative salt thereof wherein Lis a linking group; each of R1, R2 and R3 is independently selected from an optionally substituted alkyl, alkenyl, aryl or alkoxy group; R4 is oxygen or an optionally substituted alkyl, alkenyl or aryl group; each of R5 and R6 is an optionally substituted alkyl, alkenyl or aryl group; and n is 0 or 1; (b) at least one cationic biocide; ( c) a hydrocarbyl saccharide compound; and ( d) a non-ionic surfactant. 2 Appeal2017-006963 Application 14/119,931 The claims have been rejected as follows: 2 Claims 1-8 and 11 have been rejected under 35 U.S.C. § 103(a) as unpatentable over Yahiaoui 3 in view of Figueredo. 4 Claims 1-11 have been rejected under 35 U.S.C. § 103(a) as unpatentable over Y ahiaoui, in view of Figueredo, in further view of Hotson. 5 OBVIOUSNESS Yahiaoui combined with Figueredo Issue The issue with respect to this rejection is whether a preponderance of the evidence supports the Examiner's finding that the subject matter of claims 1-8 and 11 would have been obvious over Y ahiaoui combined with Figueredo. The Examiner finds that Y ahiaoui discloses an antimicrobial composition which can be applied to a variety of surfaces. Final Act. 4. In one embodiment the composition comprises 3-(trimethoxysilyl)propyl dimethyloctadecyl ammonium chloride, alkyl polyglycoside, PG- 2 In addition to the rejections under 35 U.S.C. § 103(a), the Examiner provisionally rejected claims 1-11 for non-statutory obviousness-type double patenting based on claims 1-11 of copending application USSN 14/119,927 in view of Figueredo. Final Act. 10. However, the '927 application has been abandoned. See Notice of Abandonment mailed Oct. 20, 2017. 3 Yahiaoui et al., US 2007/0048344 Al, published Mar. 1, 2007 ("Y ahiaoui"). 4 Figueredo, US 2009/0312428 Al, published Dec. 17, 2009 ("Figueredo"). 5 Hotson et al., US 5,859,024, issued Jan. 12, 1999 ("Hotson"). 3 Appeal2017-006963 Application 14/119,931 hydroxyethylcellulose cocodimonium chloride (quaternary ammonium cellulosic salt) and polyhexamethylene biguanide. Id. The Examiner finds that Y ahiaoui teaches that the composition may also include a cationic or non-ionic surfactant and water. Id. The Examiner finds that Figueredo teaches the use of a quaternary ammonium compound biocide with urea to treat turf. Final Act. 4--5. The Examiner concludes: It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention by Applicant to combine the teachings of Y ahiaoui et al. with Figueredo et al. because both references are directed to quaternary ammonium compound containing antimicrobial compositions. Furthermore, an ordinarily skilled artisan would have been motivated to apply the composition ofYahiaoui et al. to a turf/grass carrying surface in order to treat or prevent bacterial, viral, fungal or algal infections/ diseases/infestations based upon the teachings of Figueredo et al. As Figueredo teaches doing so with a quaternary ammonium compound containing biocide and Y ahiaoui teaches the biocidal composition comprises at least two quaternary ammonium biocides, one of ordinary skill in the art would have had a reasonable expectation of treating or preventing these diseases in turf/ grass with the biocidal composition of Y ahiaoui et al. Final Act. 5. Findings of Fact We adopt the Examiner's findings as our own, including with regard to the scope and content of, and motivation to modify or combine, the prior art. The following findings are included for emphasis and reference purposes. 4 Appeal2017-006963 Application 14/119,931 FF 1. Y ahiaoui discloses an antimicrobial composition comprising a primary antimicrobial agent, a secondary antimicrobial agent and optionally an organic acid. Y ahiaoui, Abstract. FF2. Yahiaoui teaches a composition comprising 3- (trimethoxysilyl)propyl dimethyloctadecyl ammonium chloride, 6 alkyl polyglycoside, PG-hydroxyethylcellulose cocodimonium chloride (quaternary ammonium cellulosic salt) and polyhexamethylene biguanide. Yahiaoui, Table 22. FF3. Yahiaoui teaches that the antimicrobial composition may be applied to "almost any kind of substrate material," including woven and nonwoven fabrics made from either natural or synthetic fibers or combination blends of the two, elastic and nonelastic, porous and non-porous membranes or films, and laminates or combinations thereof. Other substrates may include rubber, plastic, or other synthetic polymer materials, or metal, steel, glass or ceramic materials. Y ahiaoui, Abstract and i-f 1 7. FF4. Figueredo discloses a biocide composition comprising at least one quaternary ammonium compound and urea. Figueredo, Abstract. FF5. Figueredo teaches that the biocide composition can be used to clean and disinfect cool rooms, hoses, containers, nets, tanks, filters, feed preparation equipment, drains and transport vehicles. Figueredo, Table 8. 6 Yahiaoui refers to this compound as "Octadecylaminodimethyl Trimethoxysilylpropyl Ammonium Chloride." Yahiaoui, Table 22. Appellants do not dispute that the chemical name used by the Examiner, and in FF2 above, is equally correct, or that the compound is within the scope of claim 1 's Formula I. See Appeal Br. 3--4. 5 Appeal2017-006963 Application 14/119,931 FF6. Figueredo teaches that the biocide can be applied to turf. Figueredo i-f 60. Legal Principles [T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prim a f acie case ofunpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant. After evidence or argument is submitted by the applicant in response, patentability 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). Analysis We find the Examiner has established that the subject matter of the claims would have been obvious to one of ordinary skill in the art at the time the invention was made over Yahiaoui combined with Figueredo. Appellants have not produced evidence showing, or persuasively argued, that the Examiner's determinations on obviousness are incorrect. Only those arguments made by Appellants in the Briefs have been considered in this Decision. Arguments not presented in the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). We have identified claim 1 as representative; therefore, all claims fall with claim 1. We address Appellants' arguments below. Appellants contend that one skilled in the art would not have been motivated to combine Y ahiaoui with Figueredo as the references are directed to entirely distinct and incompatible applications. Appeal Br. 2. Appellants point to the teachings of Yahiaoui that the antimicrobial composition can be applied to surfaces such that it does not leach from the applied substrate as 6 Appeal2017-006963 Application 14/119,931 teaching one skilled in the art that the composition is unsuitable for application to a grass-carrying surface. Appeal Br. 3--4. Appellants also contend that Y ahiaoui teaches away from the present invention in that Y ahiaoui teaches against leaching of the antimicrobial material and that the present invention calls for the antimicrobial material to penetrate the turf to kill subsurface nematodes. Id. at 5. We have considered Appellants' arguments and find them unpersuasive. Y ahiaoui and Figueredo are both directed to biocides containing quaternary ammonium salts. FF2, FF4. The references teach application of the biocide to many of the same types of surfaces. Compare FF3 and FF5. Figueredo recites the additional teaching that the biocide can be used to treat turf, which would include a grass-carrying surface. FF6. We find that one skilled in the art would have been motivated to use the biocide of Yahiaoui in the method of Figueredo as posited by the Examiner. Appellants' argument with respect to the anti-leaching property of the biocide in Yahiaoui is not persuasive. The claims only call for application of the biocide to a grass-carrying surface. Nothing in the claims calls for the biocide to penetrate the surface. Thus, Appellants are arguing limitations that are not recited in the claims. See Sjolund v. Musland, 847 F.2d 1573, 1581-82 (Fed. Cir. 1988) ("[W]hile it is true that claims are to be interpreted in light of the specification ... , it does not follow that limitations from the specification may be read into the claims .... [T]he claims define the invention."). Appellants' argument that Y ahiaoui teaches away from the claimed invention is also unpersuasive. We agree with the Examiner that "while 7 Appeal2017-006963 Application 14/119,931 Y ahiaoui does teach that the composition in most cases is non-leaching, this does not criticize, discredit or otherwise discourage the application to grass or a grass-carrying substrate to control unwanted organisms." Ans. 5. As discussed above, the claims recite application to a grass-carrying surface and do not call for the composition to penetrate the surface. Conclusion We conclude that a preponderance of the evidence supports the Examiner's conclusion that the subject matter of claims 1-8 and 11 would have been obvious over Yahiaoui combined with Figueredo. Yahiaoui combined with Figueredo and Hotson Appellants have not argued this rejection separately from the rejection discussed above. See Appeal Br. 2. For the reasons stated above, we affirm this rejection. DECISION We affirm the rejections under 35 U.S.C. § 103(a). 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 8 Copy with citationCopy as parenthetical citation