Ex Parte Gradtke et al

Board of Patent Appeals and Interferences

Mar 27, 2010

10933878 (B.P.A.I. Mar. 27, 2010)

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 Pending “[c]laims 34, 35, and 65-73 were withdrawn from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).

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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

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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?

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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).

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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.
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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,
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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
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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
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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.
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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
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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).
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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’
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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).

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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.
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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
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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.

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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
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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

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