Ex Parte Gradtke et alDownload PDFBoard of Patent Appeals and InterferencesMar 27, 201010933878 (B.P.A.I. Mar. 27, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RALF GRADTKE, WOLFGANG BEILFUSS, and KLAUS WEBER ____________ Appeal 2009-008344 Application 10/933,878 Technology Center 1600 ____________ Decided: March 29, 2010 ____________ Before ERIC GRIMES, DONALD E. ADAMS, and MELANIE L. McCOLLUM, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims 24-33, 36-64, and 77-79. Pending “[c]laims 34, 35, and 65-73 were withdrawn from consideration as being directed to non-elected inventions and species” (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2009-008344 Application 10/933,878 2 STATEMENT OF THE CASE The claims are directed to a microbicidal composition. Claims 24 and 39 are illustrative: 24. A microbicidal composition comprising: a) at least one formaldehyde donor compound; and b) an antioxidant, wherein said antioxidant comprises at least one gallic ester. 39. The composition of claim 24, wherein said composition further comprises: a) at least one solvent or solubility promoter; and b) an additive, wherein said additive comprises at least one member selected from the group consisting of: 1) corrosion inhibitors; 2) alkalizing agents; 3) dyes; 4) perfumes; 5) viscosity-modifying agents; 6) foam inhibitors; 7) emulsifiers; 8) stabilizers; and 9) a biocide. The Examiner relies on the following evidence: Tollenaar, et al. US 2,586,274 Feb. 19, 1952 Beilfuss et al. US 2001/0021711 A1 Sep. 13, 2001 Appeal 2009-008344 Application 10/933,878 3 Appellants rely on the following evidence: Chemical Data sheet for 2-octyl-isothiazolone, http://www.chemicalland21.com/lifescience/phar/2-OCTYL- ISOTHIAZONLNE.htm, accessed April 23, 2007. Chemical Data sheet for lauryl gallate, http://www.chemicalland21.com/lifescience/foco/LAURYL%20GALLATE. htm, accessed April 23, 2007. The rejections presented by the Examiner follow: 1. Claims 39 and 46-51 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite. 2. Claims 24-33, 36-64, and 77-79 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Beilfuss and Tollenaar. We reverse the rejection of claims 39 and 46-51 under 35 U.S.C. § 112, second paragraph. We reverse the rejection of claims 58 and 64 under 35 U.S.C. § 103(a) as unpatentable over the combination of Beilfuss and Tollenaar. We affirm the rejection of claims 24-33, 36-57, 59-63, and 77-79 under 35 U.S.C. § 103(a) as unpatentable over the combination of Beilfuss and Tollenaar. Definiteness: ISSUE Has the Examiner erred in concluding that the recitation of the term “about 0%” in claims 46-51 lacks antecedent basis? Appeal 2009-008344 Application 10/933,878 4 FINDINGS OF FACT FF 1. The Examiner finds that: [c]laim 39 recites the limitation ‘wherein said composition further comprises: (a) at least solvent or solubility promoter; and (b) an[ ] additive,’ however dependant [sic] claims 46-51 recite the concentration of both a solvent or solubility promoter and an additive to be 0% or not present. There is insufficient antecedent basis for this limitation in the claims. (Ans. 3.) PRINCIPLES OF LAW The second paragraph of 35 U.S.C. § 112 requires only that one of skill in the art, reading the claims in light of the specification, be able to clearly distinguish between subject matter encompassed by the claims, and subject matter not encompassed by the claims. See Miles Laboratories Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993) (“The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification.”); see also, Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003) (“A claim is indefinite if, when read in light of the specification, it does not reasonably apprise those skilled in the art of the scope of the invention.”). Thus, “[t]he purpose of claims is not to explain the technology or how it works, but to state the legal boundaries of the patent grant. A claim is not ‘indefinite’ simply because it is hard to understand when viewed without benefit of the specification.” S3 Incorporated v NVidia Corp., 259 F.3d 1364, 1369 (Fed. Cir. 2001). Appeal 2009-008344 Application 10/933,878 5 ANALYSIS Claim 39 depends from and further limits claim 24 to further comprise at least one solvent or solubility promoter and an additive (Claim 39). Claim 46 depends from and further limits claim 39 to require that the solvent or solubility promoter is in the amount of about 0% to about 99.95% of the total composition weight (Claim 46). Claims 47 and 48 depend directly or indirectly from claim 46. Claim 49 depends from and further limits claim 39 to require that the additive is in the amount of about 0% to about 50% of the total composition weight (Claim 49). Claims 50 and 51 depend directly or indirectly from claim 49. The Examiner finds that the term “about 0%” as recited in claims 46- 51 reads on 0% (FF 1). Appellants contend that “claim 46 recites ‘said composition comprises said solvent or solubility promoter in the amount of about 0% to about 99.995%’. . . . The recitation of “comprises” in claim 46 requires a solvent or solubility promoter and an additive, and, thus, ‘about’ 0% is greater than 0%” (App. Br. 3). Appellants further contend that since “claims 47-51 depend from claim 46, the ranges recited in claims 47-51 are for the same reasons greater than 0%” (id.). We agree. For the foregoing reasons, we are not persuaded by the Examiner’s assertion that “interpreting the claim broadly, the concentration reads on 0%” (Ans. 6). CONCLUSION OF LAW The Examiner erred in concluding that the recitation of the term “about 0%” in claims 46-51 lacks antecedent basis. The rejection of claims 39 and 46-51 under 35 U.S.C. § 112, second paragraph is reversed. Appeal 2009-008344 Application 10/933,878 6 Obviousness: Appellants provide separate arguments for the following groups of claims: (I) claims 24-33, 36-57, and 59-63; (II) claims 58 and 64; (III) claim 77; (IV) claim 78; and (V) claim 79. Claims 24, 58, and 77-79 are representative and are separately addressed below. 37 C.F.R. § 41.37(c)(1)(vii). PRINCIPLES OF LAW “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). It is proper to “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. See also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). In sum, the “suggestion test is in actuality quite flexible and not only permits, but requires, consideration of common knowledge and common sense.” Dystar Textilfarben GmbH Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006). The disclosure of a reference is not limited to preferred embodiments or specific working examples contained therein. See In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982); In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). Instead, the disclosure of each reference must be considered for what it fairly teaches one of ordinary skill in the art, including not only the specific teachings, but also the inferences which one of ordinary skill in the art would reasonably have been expected to draw therefrom. See In re Boe, Appeal 2009-008344 Application 10/933,878 7 355 F.2d 961, 965 (CCPA 1966); and In re Preda, 401 F.2d 825, 826 (CCPA 1968). It is well settled that evidence of unexpected results may rebut an Examiner’s prima facie case of obviousness. See In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); In re Sullivan, 498 F.3d 1345, 1351 (Fed. Cir. 2007). However, in order to establish unexpected results for a claimed invention, objective evidence of non-obviousness must be commensurate in scope with the claims for which the evidence is offered to support. In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978). In addition, “when unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii). Claim 24: ISSUE Has the Examiner erred in concluding that a person of ordinary skill in this art would have found it obvious to substitute Tollenaar’s fungicide for the fungicide set forth in Beilfuss’ composition, and if not, does Appellants’ evidence of unexpected results overcome the Examiner’s prima facie case of obviousness? FINDINGS OF FACT FF 2. Beilfuss teaches “a microbicidal composition comprising a bactericidal N-formal, fungicide, solvent or solubility promoter, and Appeal 2009-008344 Application 10/933,878 8 stabilizer (abstract and claims)” (Ans. 4; see also Beilfuss 1: ¶ [0016]). An N-formal is a formaldehyde donor (Spec. 5: 28-34). FF 3. The Examiner finds that Beilfuss “fail[s] to disclose the specific fungicide, dodecyl gallate” (Ans. 5). FF 4. Tollenaar teaches dodecyl gallate (a gallic ester) is an antioxidant, “which also possesses fungicidal activity (col. 1, lines 32-49)” (id.). FF 5. The Examiner finds that both Beilfuss and Tollenaar “teach the use of fungicides. There is no teaching that one fungicide would not be useful for the other intended use” (Ans. 7). FF 6. Beilfuss teaches that “[t]he fungicides used in the additive mixture according to the invention include isothiazolones” (Beilfuss 2: ¶ [0020]). In this regard, Beilfuss discloses “[p]referred examples of isothiazolones” (id). FF 7. The Examiner finds that Appellants’ claimed invention does not require a homogeneous composition or the presence of dodecyl gallate in liquid form (Ans. 7-8). FF 8. The Examiner finds that “Beilfuss heats the composition (up to 90 ºC) to ensure that all components are soluble” (Ans. 8). ANALYSIS Claim 24 is drawn to a microbicidal composition comprising (a) at least one formaldehyde donor compound and (b) an antioxidant that comprises at least one gallic ester (Claim 24). Based on the foregoing findings of fact (FF 2-4) the Examiner concludes that “it would have been prima facie obvious to a person of ordinary skill in the art, at the time the claimed invention was made, to Appeal 2009-008344 Application 10/933,878 9 substitute the fungicide, dodecyl gallate, as taught by Tollenaar et al. in the microbicidal composition taught by Beilfuss” (Ans. 5). Appellants contend that Beilfuss teaches that the disclosed compositions “are added as preservatives to industrial products . . ., household products . . . and cosmetic products”, whereas Tollenaar teaches compositions for use as additives to foodstuffs (App. Br. 5). Accordingly, Appellants contend that “[b]ased [on] the different purposes disclosed in these two publications, one of ordinary skill in the art would not have recognized dodecyl gallate as a functional equivalent to the fungicides of B[eilfuss]” (App. Br. 6). We are not persuaded. While Tollenaar teaches the use of dodecyl gallate as an additive to foodstuffs, Tollenaar also teaches that “dodecyl gallate . . . possesses fungicidal activity” (FF 4). As the Examiner explains both Beilfuss and Tollenaar “teach the use of fungicides. There is no teaching that one fungicide would not be useful for the other intended use” (FF 5). Nevertheless, Appellants contend that “the preferred fungicide of B[eilfuss], 2-octyl-isothiazolone, is a very toxic liquid used for making broad-spectrum biocides” (App. Br. 6). In contrast, Appellants contend that “[d]odecyl gallate, or lauryl gallate . . . is classified as an antioxidant in a solid form, having a melting point of 95-98ºC” (id.). Accordingly, Appellants contend that it “would have been unobvious to one of ordinary skill in the art to substitute the dodecyl gallate of T[ollenaar] for a fungicide[ ] of B[eilfuss], as they differ by the intended use, e.g., antioxidant for foods versus broad-spectrum biocides for industrial products, and physical characteristics, e.g., solid versus liquid” (id.). We are not persuaded. Appeal 2009-008344 Application 10/933,878 10 Fungicides useful in Beilfuss’ composition “include”, but are not limited to, isothiazolones (FF 6). A reference is not limited to its preferred embodiments. There is no persuasive evidence or argument on this record that Tollenaar’s fungicide would not be useful in Beilfuss’ composition. We are not persuaded by Appellants’ contentions regarding the physical form of dodecyl gallate, which according to Appellants is a solid, versus Beilfuss’ liquid composition (App. Br. 6). As the Examiner explains, Appellants’ claimed invention does not require a homogeneous composition or the presence of dodecyl gallate in liquid form (FF 7). Nevertheless, the Examiner finds that “Beilfuss heats the composition (up to 90 ºC) to ensure that all components are soluble” (FF 8). Therefore, the Examiner concludes it would have been prima facie obvious to a person of ordinary skill in this art to heat the composition to allow dodecyl gallate to solublize in the liquid solution (Ans. 8). There is no persuasive evidence or argument to support a conclusion that dodecyl gallate could not be solublized in Beilfuss’ liquid composition or more generally that dodecyl gallate would not be useful as an antioxidant and fungicide in Beilfuss’ composition in either a solid or liquid form. Appellants contend that the claimed composition has an unexpected property that was not recognized by Beilfuss, the closest prior art (App. Br. 7). Specifically, Appellants contend that Beilfuss fails to recognize the “the reduction of the problem of the neck-in effect so as to reduce the deformation of packaging” (id.). Appellants contend that their unexpected results are set forth in Tables I-III of their Specification (id.). We are not persuaded. Beilfuss’ composition comprises, inter alia, a formaldehyde donor compound and a stabilizer. While Appellants recognize that Beilfuss Appeal 2009-008344 Application 10/933,878 11 is the closest prior art, the comparative composition shown in the Specification’s Tables I-III consists of a formaldehyde donor compound (Grotan OX) alone. Thus, Appellants fail to present evidence that compares Beilfuss’ composition against Appellants’ claimed composition. CONCLUSION OF LAW The Examiner did not err in concluding that a person of ordinary skill in this art would have found it obvious to substitute Tollenaar’s fungicide for the fungicide set forth in Beilfuss’ composition. Appellants’ evidence of unexpected results fails to overcome the Examiner’s prima facie case of obviousness. The rejection of claim 24 under 35 U.S.C. § 103(a) as unpatentable over the combination of Beilfuss and Tollenaar is affirmed. Claims 25-33, 36-57, and 59-63 fall together with claim 25. Claim 58: ISSUE Has the Examiner erred in concluding that it would have been obvious to optimize the concentration of N-formal in Beilfuss’ composition to 99.90% by weight? FINDINGS OF FACT FF 9. The Examiner finds that Beilfuss teaches the use of the N-formal “3,3’-methylenebis(5-methyloxazolidine) . . . in a concentration of from 1 to 99% by weight” (Ans. 4). Appeal 2009-008344 Application 10/933,878 12 FF 10. The Examiner finds that “it is obvious to optimize the concentration of N-formal as limited by [claims 58 and 64], where the upper amount is 99.90% by weight” (id.). FF 11. Beilfuss teaches that “N-formal is generally present in the additive mixture . . . in a concentration of from 1 to 99% by weight” (Beilfuss 2: ¶ [0018]). FF 12. Beilfuss teaches that “fungicide is present in the additive mixture . . . in a concentration of from 0.1 to 99% by weight” (Beilfuss 2: ¶ [0018]). FF 13. Beilfuss teaches that “stabilizer is present in the additive mixture . . . in a concentration of from 0.1 to 40% by weight” (Beilfuss 2: ¶ [0018]). ANALYSIS Claim 58 depends ultimately from and further limits the composition of claim 46 to require, inter alia, N,N’-methylenebis(5-methyloxazolidine) in the amount of about 99.90% to about 99.995% of the total composition weight (Claim 58). Claim 64 also depends ultimately from and further limits the composition of claim 46 to require, inter alia, the presence of N,N’- methylenebis(5-methyloxazolidine) in the amount of about 99.90% to about 99.995% of the total composition weight (Claim 64). The Examiner finds that it would have been prima facie obvious to a person of ordinary skill in the art to optimize the concentration of N-formal in Beilfuss’ composition to 99.90% by weight (FF 9 and 10). We are not persuaded. As Appellants explain Beilfuss’ “compositions comprise 1-99 wt % of an N-formal, 0.1-99 wt% . . . of a fungicide and 0.1-40 wt% . . . of a stabilizer” (App. Br. 9; FF 11-13). Accordingly, we agree with Appellants’ Appeal 2009-008344 Application 10/933,878 13 contention that “it would have been unobvious to increase the amount of N- formals in the composition of B[eilfuss], as one would have been forced to reduce the amount of the fungicide and/or stabilizer to a level outside the desired ranges” (id.). CONCLUSION OF LAW The Examiner erred in concluding that it would have been obvious to optimize the concentration of N-formal in Beilfuss’ composition to 99.90% by weight. The rejection of claims 58 and 64 under 35 U.S.C. § 103(a) as unpatentable over the combination of Beilfuss and Tollenaar is reversed. Claim 77: ISSUE Has the Examiner erred in concluding that the combination of Beilfuss and Tollenaar suggests an amount of antioxidant effective to reduce formaldehyde emission after 1 year of storage at room temperature? FINDINGS OF FACT FF 14. Appellants’ Specification discloses that the concentration range for the antioxidant component of the claimed composition is “0.0001 to 10% by weight (preferably 0.001 to 1% by weight and in particular 0.01 to 0.5% by weight)” (Spec. 10: 22-23). Appeal 2009-008344 Application 10/933,878 14 ANALYSIS Claim 77 depends from and further limits the antioxidant of claim 24 to require that the antioxidant is present in an amount effective to reduce formaldehyde emission after 1 year of storage at room temperature (Claim 77). The Examiner relies on the combination of Beilfuss and Tollenaar as set forth above (FF 2 - 4). While Appellants recognize that Tollenaar teaches the use of “antioxidants for the purpose [of] retarding the autoxidation of edible fats and oils, in [an] amount of 0.005% to 0.03%”; Appellants contend that “[t]here is no suggest[ion] nor motivation provided in either B[eilfuss] or T[ollenaar] to reduce formaldehyde emission using antioxidants” (App. Br. 10). We are not persuaded. Beilfuss teaches that “fungicide is present in the additive mixture . . . in a concentration of from 0.1 to 99% by weight” (FF 12). Tollenaar teaches the fungicide, dodecyl gallate, which is also an antioxidant (FF 4). Accordingly, the combined teaching of Beilfuss and Tollenaar suggest the use of from 0.1 to 99% by weight of dodecyl gallate in Beilfuss’ composition. This range overlaps the concentration range for the antioxidant component of Appellants’ claimed invention (FF 14). There is no persuasive evidence or argument on this record to support a conclusion that the composition suggested by the combination of Beilfuss and Tollenaar would not comprise an antioxidant in an amount effective to reduce formaldehyde emission after 1 year of storage at room temperature. Appeal 2009-008344 Application 10/933,878 15 CONCLUSION OF LAW The Examiner did not err in concluding that the combination of Beilfuss and Tollenaar suggests an amount of antioxidant effective to reduce formaldehyde emission after 1 year of storage at room temperature The rejection of claim 77 under 35 U.S.C. § 103(a) as unpatentable over the combination of Beilfuss and Tollenaar is affirmed. Claim 78: ISSUE Has the Examiner erred in concluding that the combination of Beilfuss and Tollenaar suggests a microbicidal composition that comprises (a) at least one formaldehyde donor compound and (b) an antioxidant that comprises at least one gallic ester, wherein the composition remains a clear colorless solution after one year in storage at room temperature? ANALYSIS Claim 24 is drawn to a microbicidal composition. The claimed composition comprises (a) at least one formaldehyde donor compound and (b) an antioxidant that comprises at least one gallic ester (Claim 24). Claim 78 depends from and further limits the antioxidant and formaldehyde donor compound of claim 24 to require that as a mixture, they remain a clear colorless solution after one year in storage at room temperature (Claim 78). Accordingly, claim 78 is drawn to a microbicidal composition that comprises (a) at least one formaldehyde donor compound and (b) an antioxidant that comprises at least one gallic ester, wherein the composition Appeal 2009-008344 Application 10/933,878 16 remains a clear colorless solution after one year in storage at room temperature. The Examiner relies on the combination of Beilfuss and Tollenaar as set forth above (FF 2 - 4). Appellants acknowledge that Beilfuss’ composition “is storable and stable for several months to several years”, but contend that this long term stability is due to the stabilizer in Beilfuss’ composition (App. Br. 11). Accordingly, Appellants contend that neither Beilfuss nor Tollenaar suggests that a composition consisting of N-formal and an antioxidant would remain colorless after one year. Appellants’ claimed composition comprises N-formal and an antioxidant, which does not exclude the presence of a stabilizer. Accordingly, we are not persuaded by Appellants’ contentions regarding the stability of a composition consisting of N-formal and an antioxidant. CONCLUSION OF LAW The Examiner did not err in concluding that the combination of Beilfuss and Tollenaar suggests a microbicidal composition that comprises (a) at least one formaldehyde donor compound and (b) an antioxidant that comprises at least one gallic ester, wherein the composition remains a clear colorless solution after one year in storage at room temperature. The rejection of claim 78 under 35 U.S.C. § 103(a) as unpatentable over the combination of Beilfuss and Tollenaar is affirmed. Appeal 2009-008344 Application 10/933,878 17 Claim 79: ISSUE Has the Examiner erred in concluding that the combination of Beilfuss and Tollenaar suggests a microbial composition comprising an antioxidant concentration in the range of 0.0006% to 0.1% by weight of a mixture of antioxidant and formaldehyde composition? ANALYSIS Claim 79 depends from and further limits the antioxidant of claim 24 to require that the antioxidant is present in an amount of 0.0006% to 0.1% by weight of the mixture of the antioxidant and donor compound (Claim 79). The Examiner relies on the combination of Beilfuss and Tollenaar as set forth above (FF 2 - 4). Appellants contend that even if the lowest amount, 0.1%, of fungicide taught by Beilfuss is used (FF 12), in order to meet the requirements of Appellants’ claim 79, less than 0.1% of stabilizer must be used and this is contrary to the teachings of Beilfuss. We are not persuaded. Beilfuss’ composition comprises from 1 to 99% by weight of N- formal (the donor compound), from 0.1 to 99% by weight of a fungicide, and from 0.1 to 40% by weight of a stabilizer (FF 2 and 11-13). Tollenaar’s fungicide, dodecyl gallate, is also an antioxidant. Thus, the use of 0.1% of Tollenaar’s fungicide/antioxidant in Beilfuss’ composition is clearly within the ranges taught by Beilfuss. Further, the use of 0.1% of Tollenaar’s fungicide/antioxidant and 99% of Beilfuss’ N-formal donor compound provides a composition wherein the antioxidant is present in an amount of Appeal 2009-008344 Application 10/933,878 18 0.1% by weight of the mixture of just the antioxidant and the donor compound, which is within Appellants’ claimed range. CONCLUSION OF LAW The Examiner did not err in concluding that the combination of Beilfuss and Tollenaar suggests a microbial composition comprising an antioxidant concentration in the range of 0.0006% to 0.1% by weight of a mixture of antioxidant and formaldehyde composition. The rejection of claim 79 under 35 U.S.C. § 103(a) as unpatentable over the combination of Beilfuss and Tollenaar is affirmed. 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-IN-PART dm YOUNG & THOMPSON 209 MADISON STRET SUITE 500 ALEXANDRIA, VA 22314 Copy with citationCopy as parenthetical citation