Ex Parte Healey

Patent Trial and Appeal Board

Jun 14, 2016

11828838 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111828,838 07/26/2007 Brian James Healey
23644 7590 06/16/2016
Barnes & Thornburg LLP (CH)
P.O. Box 2786
Chicago, IL 60690-2786
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.
920602-106071 1038
EXAMINER
GREENE, NAN A
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
06/16/2016 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):
Patent-ch@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN JAMES HEALEY
Appeal2013-010798
Application 11/828,83 8
Technology Center 1600
Before LORA M. GREEN, JEFFREY N. FREDMAN, and
TA WEN CHANG, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a two-
part disinfectant composition. The Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellant identifies the Real Party in Interest as Clinimax
Limited (see App. Br. 1 ).
Appeal2013-010798
Application 11/828,838
Statement of the Case
Background
Chlorine dioxide gas is potentially explosive and cannot be
stored for long periods in aqueous solution without degradation,
so the substance is generally prepared in situ. It is known
therefore to provide a dry powder comprising reagents which
generate Cl02 when added to water. However, these are not
ideal as even mere traces of water are sufficient to bring about
the reaction.
(Spec. 1.)
The Claims
Claims 1-3, 6, 8-21, and 23 are on appeal. Independent claim 1 is
representative and reads as follows:
1. A two-part disinfectant composition, wherein the parts
thereof are solid and are packaged in respective sealed
containers or packages, and wherein the separate sealed
containers or packages are themselves provided, at the same
time, in a single larger container or package, and wherein the
separately-packaged parts, when combined in the presence of
water or an aqueous solution, react to form chlorine dioxide,
wherein one part of the composition comprises a
dichloroisocyanurate and citric acid, and the remaining
ingredients, including a chlorite, are packaged in a second part.
The Issues
A. The Examiner rejected claims 1-3, 6, 8-14, 17-21, and 23 under
35 U.S.C. § 103(a) as obvious over Hartshom,2 optionally with
Zahradnik3 (Non-Final Act. 2-8).
2 Hartshorn, US 4,104,190, issued Aug. 1, 1978.
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Application 11/828,838
B. The Examiner rejected claims 15 and 16 under 35 U.S.C. § 103(a) as
obvious over Hartshorn, optionally Zahradnik, and Lamensdorfl (Non-Final
Act. 8-11).
A. 35 USC§ 103(a) over Hartshorn and Zahradnik
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that Hartshorn and Zahradnik
render claim 1 obvious?
Findings of Fact
1. Hartshorn teaches
a stable solid composition for addition to water to give a
disinfecting and/or sterilizing solution comprising:
(a) a chlorine-releasing component which will release
chlorine when in contact with water,
(b) an alkali metal or alkaline earth metal chlorite,
( c) a buffer, and optionally:
( d) a dessicant ...
( e) one or more effervescent reagents ...
(f) a surfactnat [sic] which is stable in the presence of
oxidizing agents,
(g) a lubricant ...
(h) a filler
(Hartshorn, col. 2, 11. 29-54).
2. Hartshorn teaches that the
composition, whether as a dry powder or as tablets, can be
prepared as a two-part formulation with the components a to h
divided between the two parts in various ways. This has the
3 Zahradnik et al., US 5,719,100, issued Feb. 17, 1998
("Zahradnik").
4 Lamensdorf et al., US 5,681,475, issued Oct. 28, 1997
("Lamensdorf ').
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Application 11/828,838
advantage particularly from the point of view of stability that,
for example component a can be separated until use from any
other component which may be hydrated
(Hartshorn, co 1. 3, 11. 2 5-3 1).
3. Hartshorn teaches that "it may be desirable for best stability for
component a to be kept separate from component b until use" (Hartshorn,
col. 3, 11. 33-35).
4. Hartshorn teaches that "component a and say half of
components c to h can constitute one part of the composition which
component b and the other half of components c to h will constitute the other
part of the composition" (Hartshorn, col. 3, 11. 36-39).
5. Hartshorn teaches that the "two-part formulations can be
provided in separate compartments of a single two-compartment pack so that
the correct relative proportions of the two-parts are available" (Hartshorn,
6. Hartshorn teaches that for "chlorine-releasing component a
the presently preferred compound is sodium dichloroisocyanurate"
(Hartshorn, col. 4, 11. 17-27).
7. Hartshorn teaches that for "[ t ]he alkali metal or alkaline earth
metal chlorite component b ... any chlorite is apparently suitable, the
preferred is sodium chlorite" (Hartshorn, col. 4, 11. 28-36).
8. Hartshorn teaches that "[t]he buffer can also include a solid acid
to assist in controlling the pH of the resulting solutions ... citric acid being
the most preferred" (Hartshorn, col. 5, 11. 6-14).
9. Example 9 of Hartshorn is reproduced below:
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Application 11/828,838
A solid mixture was prepared from the following
ingredients:
sodium dichloroisocyanurate ... 0.05 g
disodium hydrogen phosphate ... 0.35 g
sodium bicarbonate ... 0.20 g
citric acid ... 0.35 g
sodium lauryl sulphate ... 0.02 g
After tableting, the mixture dissolved in 1 liter of a
solution of sodium chlorite (approximately 50 ppm) to give a
solution containing chlorine dioxide at a pH of 5.8.
(Hartshorn, col. 9, 11. 29-43.)
10. Hartshorn teaches that
If, however, the mixtures are prepared as a two[-]part
formulation, the acid can be in one part and the anhydrous
ingredients such as the chlorine-releasing component, the alkali
metal or alkaline earth metal chlorite, and the effervescent salt
such as potassium carbonate can be in the other part. In such a
case the acid need not be anhydrous to achieve stability of the
composition and so the solid acid or its acid salt can be used in
an hydrated form in this instance.
(Hartshorn, co 1. 5, 11. 15-2 3.)
11. Zahradnik teaches that "since sodium chlorite is inherently
unstable and highly active, it is felt preferred that in the present invention the
sodium chlorite component be mixed with other substances in the form of a
premix, in order to lessen problems of instability and explosiveness"
(Zahradnik, col. 4, 11. 30-34).
12. Zahradnik teaches to
produce a composition containing a reaction-preventing barrier
between the sodium chlorite and the acid activator such that the
two active ingredients do not react together prematurely ....
Such a reaction-preventing barrier could be achieved in a
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Application 11/828,838
multitude of ways ... even through the production of a
composition wherein the reactive ingredients are segregated
apart from each other ....
(Zahradnik, col. 4, 1. 66 to col. 5, 1. 8.)
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). "If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability." Id. at 417.
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Non-Final Act. 3-8; FF 1-12) and agree
that the claims are rendered obvious by Hartshorn and Zahradnik. We
address i~ .. ppellant's arguments belo\v.
Prima Facie Obviousness
Appellant acknowledges that Hartshorn discloses that the solid
composition "can be prepared as a two-part formulation with the
components a to h divided between the two parts in various ways," but
contends that "[i]t will be immediately apparent that the eight components
(a) to (h) could theoretically be divided into two parts in a large number of
different combinations (8!=40,320), and the quoted passage does not give
any detailed guidance to the person skilled in the art as to how to divide the
components" (App. Br. 3--4, emphasis in the original).
We are not persuaded. It is well settled that it is a matter of
obviousness for one of ordinary skill in the art to select a particular
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Application 11/828,838
component from among many disclosed by the prior art as long as it is
taught that the selection will result in the disclosed effect. See Merck & Co.,
Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the
'813 patent discloses a multitude of effective combinations does not render
any particular formulation less obvious."); In re Corkill, 771F.2d1496,
1500 (Fed. Cir. 1985) (obviousness rejection affirmed in light of prior art
teaching that "hydrated zeolites will work" in detergent formulations, even
though "the inventors selected the zeolites of the claims from among
'thousands' of compounds").
Although Hartshorn discloses eight possible components ( a-h) in its
composition (FF 1 ), Hartshorn specifically requires a chlorine-generating
compound (for component a), preferably dichloroisocyanurate (FF6), and an
alkali metal of alkaline earth metal chlorite (for component b ), preferably
sodium chlorite (FF 7), and also suggests the desirability of citric acid as an
additional ingredient (FF 8). The obviousness rejection is thus consistent
with Wrigley, where the Federal Circuit found a strong case of obviousness
where a claim "recites a combination of elements that were all known in the
prior art, and all that was required to obtain that combination was to
substitute one well-known ... agent for another." Wm. Wrigley Jr. Co. v.
Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012).
Appellant also contends that "the teaching of Hartshorn is away from
the present invention, in which the SDIC and citric acid are provided in one
part, and the remaining ingredients provided in a second part" (App. Br. 5).
We are not persuaded. A teaching away requires a reference to
actually criticize, discredit, or otherwise discourage the claimed solution.
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See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's
mere disclosure of more than one alternative does not constitute a teaching
away from any of these alternatives because such disclosure does not
criticize, discredit, or otherwise discourage the solution claimed.").
Appellant does not identify, and we do not find, any such criticism in
Hartshorn.
Indeed, Hartshorn suggests the claimed invention. Hartshorn teaches
that in two-part formulations, acids such as citric acid should be in a
different part than the chlorite compound (FF 10). This teaching is
consistent with the requirement of claim 1 that the chlorite is in one part and
the citric acid is in the second part (see Claim 1 ). Example 9 of Hartshorn
also provides specific disclosure, inter alia, of a preparing a solid mixture
first of sodium dichloroisocyanurate and citric acid, and then, after tableting,
dissolving the mixture in a solution of sodium chlorite (FF 9). Although not
disclosed to be a two-part formulation, in this example the two steps clearly
illustrate mixing the ingredients in two separate steps, each of which involve
the ingredients mixed together as claimed by Appellant.
Appellant acknowledges that Zahradnik teaches "forming a protective,
reaction-preventing coating on the sodium chlorite" and "preventing these
ingredients [sodium chlorite and citric acid] from prematurely reacting
together" (App. Br. 5), but contends that Zahradnik is "concerned with
single part formulations and it would not have been obvious for the person
skilled in the art, seeking to formulate a two-part composition, to tum [sic]
the disclosure of Zahradnik et al for assistance" (App. Br. 5-6) (emphasis
added).
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Application 11/828,838
We are not persuaded. Zahradnik explicitly teaches that "since
sodium chlorite is inherently unstable and highly active, it is felt preferred
that in the present invention the sodium chlorite component be mixed with
other substances in the form of a premix, in order to lessen problems of
instability and explosiveness" (FF 11 ). Zahradnik teaches that one solution
to this problem is "through the production of a composition wherein the
reactive ingredients are segregated apart from each other" (FF 12). Thus,
Zahradnik provides reasons for the ordinary artisan to employ the two-part
composition of Hartshorn (FF 5), and specifically suggests that the reactive
reagents should be placed in segregated or separate parts (FF 12), supporting
the obviousness of claim 1.
We recognize, but find unpersuasive, Appellant's contention that in
Hartshorn's Example 11 "Part (a) of the disclosed formulation comprises,
together, sodium chlorite and sodium dichloroisocyanurate, which is directly
contrary to the arrangement recited in present claim 1, in which these two
components are separated into separate parts" (Reply Br. 2). We likewise
find unpersuasive Appellant's contention that Hartshorn's "Example 12 does
teach away from the present claims, since Example 12 discloses a two-part
formulation in which a dichloroisocyanurate and a chlorite are packaged
together, rather than in the separate parts of the formulation" (Reply Br. 3).
Disclosed examples and preferred embodiments do not constitute a
teaching away from a broader disclosure or non-preferred embodiments. In
re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). Examples 11and12 do not
criticize, discredit, or discourage the two-part composition expressly
suggested by Hartshorn (FF 2). Nor do these examples teach away from
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Application 11/828,838
Hartshom's teaching that "it may be desirable for best stability for
component a to be kept separate from component b until use" (FF 3), where
a preferred component a is sodium dichloroisocyanurate (FF 6) and a
preferred component b is sodium chlorite (FF 7).
Appellant cites to the Healy5 Declaration for the proposition that "the
present application has been found to be especially beneficial" (App. Br. 6).
Appellant also contends that "the composition has been produced and sold in
the United Kingdom and is experiencing commercial success." (Id.)
We find these arguments unpersuasive. The Healy Declaration does
not present any evidence of unexpected results or secondary considerations;
instead, it only represents the opinion of the inventor on the legal issues. See
In re Reuter, 670 F.2d 1015, 1023 (CCPA 1981) (expert's opinion on
ultimate legal issue entitled to no weight).
Lastly, Appellant contends that "given the antiquity of the primary
reference ... one could legitimately question why it had not been made a
great deal sooner, if the invention were indeed obvious from the disclosure
of Hartshorn" (App. Br. 6).
We find the elapsed time unpersuasive because the "mere age of the
references is not persuasive of the unobviousness of the combination of their
teachings, absent evidence that, notwithstanding knowledge of the
references, the art tried and failed to solve the problem." In re Wright, 569
F.2d 1124, 1127 (CCP A 1977).
5 Declaration of Brian James Healy, dated Sept. 2, 2011.
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Application 11/828,838
Conclusion of Law
The evidence of record supports the Examiner's conclusion that
Hartshorn and Zahradnik render claim 1 obvious.
B. 35 USC§ 103(a) over Hartshorn, Zahradnik, and Lamensdorf
Appellant does not argue separately this obviousness rejection. The
Examiner provides sound fact-based reasoning for combining Hartshorn,
Zahradnik, and Lamensdorf (see Non-Final Act. 8-9). Having affirmed the
obviousness rejection of claim 1 for the reasons given above, we also find
that the further combination with Lamensdorf renders claims 15 and 16
obvious for the reasons given by the Examiner.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Hartshorn and, optionally, Zahradnik. Claims 2, 3,
6, 8-14, 17-21, and 23 fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
We affirm the rejection of claims 15 and 16 under 35 U.S.C. § 103(a)
over Hartshorn, optionally Zahradnik, and Lamensdorf.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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