Ex Parte Hata et al

Patent Trial and Appeal Board

May 8, 2017

12990378 (P.T.A.B. May. 8, 2017)

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.
12/990,378 01/13/2011 Tadayo Hata 100282 8204
23850 7590 05/09/2017
KRATZ, QUINTOS & HANSON, LLP
1420 K Street, N.W.
4th Floor
WASHINGTON, DC 20005
EXAMINER
BRANSON, DANIEL L
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
05/09/2017 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 TADAYO HAT A, TOMOYO HATA, HITOSHI TOSHIMORI,
MASAAKI MIYAZAWA, KOICHI OTSUKI, HIROKI TAKAKUWA, and
TOSHIYUKI MARUOKA1
Appeal 2016-008665
Application 12/990,378
Technology Center 1600
Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
RICHARD J. SMITH, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a
disinfectant. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Panacea Disinfectant
Co. of Hong Kong, China. (Br. 3.)
Appeal 2016-008665
Application 12/990,378
STATEMENT OF THE CASE
Claims on Appeal
Claims 1, 5—8, 10, 11, 13, and 14 are on appeal. (Claims Appendix,
Br. 12—14.) Claim 1 is illustrative and reads as follows:
Claim 1: A disinfectant comprising:
a metal ion having antimicrobial activity, L-cysteine, and L-ascorbic
acid as main components; and
in addition to the main components, a surfactant other than a non­
ionic surfactant;
wherein the metal ion having antimicrobial activity is a zinc ion
(Zn2+), a cobalt ion (Co2+), a nickel ion (Ni2+), or a silver ion (Ag+);
wherein the metal ion having antimicrobial activity has a
concentration of 7.5 to 125 ppm in the case of the zinc ion, 180 to 300 ppm
in the case of the cobalt ion, 85 to 175 ppm in the case of the nickel ion, and
1 to 3 ppm in the case of the silver ion;
wherein the L-cysteine has a concentration of 100 to 1000 ppm and
the L-ascorbic acid has a concentration of 100 to 500 ppm; and
wherein the disinfectant is adjusted to pH 2.5 to 4.0.
Examiner’s Rejection
Claims 1, 5—8, 10, 11, 13, and 14 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hata,2 Park,3 Shapiro,4 and Lloyd.5 (Final
Act. 3-8.)
2 Hata et al., US 6,296,881 Bl, issued Oct. 2, 2001 (“Hata”).
3 Park et al., High Levels of Intracellular Cysteine Promote Oxidative DNA
Damage by Driving the Fenton Reaction, Journal of Bacteriology,
185(6), 1942-50 (2003) (“Park”).
4 Shapiro et al., Killing of Bacillus subtilis Spores by a Modified Fenton
Reagent Containing CuCL and Ascorbic Acid, Applied and
Environmental Microbiology, 70(4), 2535-39 (2004) (“Shapiro”).
5 Lloyd et al., Comparison of the Formation of 8-Hydroxy-2'-
deoxyguanosine and Single- and Double-Strand Breaks in DNA Mediated by
Fenton Reactions, Chem. Res. Toxicol. 11, 420-27 (1998) (“Lloyd”).
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Application 12/990,378
FINDINGS OF FACT
We adopt the Examiner’s findings as our own, including with regard
to the scope and content of, and motivation to combine, the prior art. The
following findings are included for emphasis and reference purposes.
FF 1. The Examiner finds that Hata teaches a disinfectant comprising
ferric ions, ascorbic acid, and a surfactant. (Final Act. 4, citing Hata col. 1,
1. 5—15, col. 10,11. 56—59, and claim 1.)
FF 2. The Examiner finds that Hata teaches that zinc ions have
antimicrobial properties, and that the bactericidal strength of the iron ion-
containing bactericide can be enhanced by the addition of minute
concentrations of zinc. (Final Act. 4, citing Hata Table 1 and col. 5,11. 54—
64.)
FF 3. The Examiner finds that Park teaches
that cysteine rapidly reduces the ferric iron used as a Fenton
reagent in a Fenton reaction, so that free iron is permitted to
redox cycle rapidly with an oxidant to increase the rate at which
hydroxyl radicals are formed []. Thus, it was demonstrated that a
greater amount of E. coli was killed when Fenton reagents [were
used] in combination with cystine (which cystine is converted to
cysteine within the cell to greatly multiply intracellular pools of
cysteine) as opposed to the Fenton reagents alone.
(Final Act. 5, citing Park Abstract.)
FF 4. The Examiner finds that Shapiro teaches
that Fenton reagents comprise various metal ions plus hydrogen
peroxide or ascorbic acid, such as Cu2+ and ascorbic acid[,] and
that addition of a surfactant increases the killing of the pathogen.
Shapiro also states that the pH of the Fenton reagents copper-
ascorbic acid is 1.5 and that by decreasing pH in general, more
spores are killed.
(Final Act. 5 (citations omitted), citing Shapiro 2535, par. 2 and par. 5; 2537,
par. 1.)
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Application 12/990,378
FF 5. The Examiner finds that Hata, Park, Shapiro, and Lloyd “are
directed to Fenton reagents,” and that an ordinary skilled artisan “would
have been motivated to combine the cysteine of Park with the Fenton
reagents of Hata[], Shapiro or Lloyd because doing so would have resulted
in a significantly increased hydroxyl radical production rate with a lower
concentration of metal ions.” (Final Act. 6.)
FF 6. The Examiner finds that the claimed ranges of concentrations
of zinc ions and cysteine, as well as the claimed pH range, are result
effective variables that would be obvious to optimize based on the prior art,
and that the prior art ranges overlap or nearly abut the claimed ranges.
(Final Act. 6—8; Ans. 3—4.)
FF 7. The Examiner finds that “Shapiro and Lloyd make[] clear that
Fenton reagents include zinc and copper ions as well as ascorbic acid and
thus it would have been further obvious to include zinc ions in order to
provide alternative Fenton reagents in order to enhance the biocidal
properties of the disinfectant.” (Final Act. 6.)
DISCUSSION
We adopt the Examiner’s findings, analysis, and conclusions as our
own, as set forth in the Final Action (Final Act. 3—10) and Answer (Ans. 2—
5). We discern no error in the rejection of the claims as obvious.
Issue
Whether a preponderance of evidence of record supports the
Examiner’s rejection under 35 U.S.C. § 103(a).
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Analysis
Appellants contest the obviousness conclusion by advancing several
arguments. We limit our consideration to claim 1 because the claims were
not separately argued. We address Appellants’ arguments below.6
Argument No. 1
Appellants argue that “[a]t least three different ranges are used at the
same time (metal ion, L-cysteine, and pH), and each affects the other.” (Br.
9.) Moreover, according to Appellants, “here specific teachings from four
separate references must be combined, and then the ranges of those specific
teachings must further be optimized in the resulting multi-variable system to
arrive at the recitations in claim 1,” and that “such a process far exceeds the
bounds of ‘obvious to try.”’7 (Id.)
Appellants thus argue that, while “[t]he law and the MPEP recognize
that routine experimentation may render a range obvious,” here there are
multiple ranges being optimized based on multiple references. (Id.)
However, a similar argument was rejected by our reviewing court in In re
Applied Materials, Inc., 692 F.3d 1289 (Fed. Cir. 2012). The court in
Applied Materials affirmed the rejection of obviousness based, in part, on
the result effective nature of multiple variables taught by multiple prior art
references. Id. at 1294—98. The court concluded:
Nothing indicates that the optimization of the variables was
anything other than the exercise of ordinary skill in the art. []
Fikewise, the combination of the various dimensions from the
6 Arguments not presented for review on appeal are waived. MPEP
§ 1205.02.
7 We do not interpret the Examiner’s rejection as based on an “obvious to
try” analysis, and Appellants do not point to any part of the record to support
that contention.
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different pieces of prior art was also obvious. The mere fact that
multiple result-effective variables were combined does not
necessarily render their combination beyond the capability of a
person having ordinary skill in the art. Evidence that the
variables interacted in an unpredictable or unexpected way could
render the combination nonobvious . . . but Applied failed to
show anything unpredictable or unexpected in the interaction of
the variables.
Id. at 1297—98 (internal citation omitted).
Here, in addition to the Examiner’s finding regarding result effective
variables (FF 6), the Examiner shows that zinc(II) chloride concentrations in
Lloyd and cysteine concentrations in Park overlap the respective claimed
concentrations of zinc ions and L-cysteine. (Ans. 3—4.) See In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving overlapping
ranges, we and our predecessor court have consistently held that even a
slight overlap in range establishes a prima facie case of obviousness.”).
Moreover, as explained by the Examiner, Appellants “have not provided
evidence of criticality, such as by showing the claimed range achieves
unexpected results relative to the prior art range.” (Ans. 4.) See Applied
Materials, 692 F.3d at 1297—98.
Argument No. 2
Appellants argue that “the combination of Hata, Park, and Shapiro
does not disclose a disinfectant comprising a zinc ion.” (Br. 9-10.) We are
not persuaded. As explained by the Examiner, “Hata explicitly teaches the
addition of zinc ions to a bactericidal composition to enhance the
antibacterial properties.” (Ans. 5, citing Hata col. 5,11. 54—57; FF 2.)
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Argument No. 3
Appellants argue that
Lloyd recognizes that a disinfectant agent capable of breaking
DNA of cells is not a Fenton reaction solution containing a zinc
ion... but a Fenton reaction solution containing a chromium ion,
a copper ion, an iron ion or a vanadium ion.
. . . [E]ven if Lloyd is combined with the other three cited
prior art references . . . the combination of the references would
still not disclose a disinfectant comprising a zinc ion . . .
(Br. 10.)
We are not persuaded. Hata teaches the use of zinc ions. See
discussion, supra. In addition, as explained by the Examiner, Lloyd
demonstrates that Fenton reagents containing zinc ions create single strand
DNA breaks, and that
[i]n combination with the teachings in Park, which link fenton
reagent induced bacterial death to single stranded DNA damage
caused by exposure of the bacterial DNA to fenton reagents [],
one of ordinary skill in the art would additionally have found it
obvious to add the fenton reactant zinc ion to the disinfectant
composition of Hata for these reasons as well.
(Ans. 5 (internal citation omitted).)
Conclusion of Law
A preponderance of evidence of record supports the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a). Claims 5—8, 10, 11, 13, and
14 were not argued separately and fall with claim 1.
SUMMARY
We affirm the rejection of all claims on appeal.
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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
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