11382976 (B.P.A.I. Aug. 17, 2011)

Ex Parte Kantner

Board of Patent Appeals and InterferencesAug 17, 2011

11382976 (B.P.A.I. Aug. 17, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte STEVEN S. KANTNER __________ Appeal 2011-005351 Application 11/382,976 Technology Center 1600 __________ Before TONI R. SCHEINER, ERIC GRIMES, and STEPHEN WALSH, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a topical insect repellent composition. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The Specification discloses “[s]table, low VOC [volatile organic compounds], water-based compositions containing high levels of water- insoluble topical insect repellents … as single-phase solutions containing a Appeal 2011-005351 Application 11/382,976 2 film-forming polymer” (Spec. 3: 5-7). The Specification discloses that the “repellent and film-forming polymer are solubilized by partial neutralization with a base and addition of a low level of water miscible organic solvent. . . . A surfactant or emulsifier is not required nor is it desirable as it will detract from the splash and sweat resistance provided by the film-forming polymer” (id. at 3: 7-12). Claims 1-17 are on appeal. Claim 1 is the only independent claim and reads as follows: 1. A single phase, surfactant-free, topical insect repellent composition comprising: (a) an effective amount of one or more film-forming methyl vinyl ether-maleic acid monobutyl or monoethyl ester copolymers comprising neutralized carboxylic acid groups; (b) an effective amount of one or more insect repellents selected from the group consisting of sec-butyl 2-(2-hydroxyethyl)piperidine-1- carboxylate, ethyl N-butyl-N-acetyl-3-aminopropionate, N,N-diethyl-meta- toluamide, p-menthane-3,8-diol, and mixtures thereof; (c) an effective amount of one or more water miscible organic solvents selected from the group consisting of ethanol, 1-propanol, isopropanol, and mixtures thereof; and (d) water. The Examiner has rejected claims 1-17 under 35 U.S.C. § 103(a) as being obvious in view of Narayanan1 and Seo.2 The Examiner finds that Narayanan discloses a “low VOC sunscreen spray and/or pesticide composition” containing a hydrophobic, film-forming polymer (Answer 4). 1 Narayanan et al., US 5,653,965, issued Aug. 5, 1997. 2 Seo et al., Biodegradation of the Insecticide N,N-Diethyl-m-Toluamide by Fungi: Identification and Toxicity of Metabolites, 48 ARCH. ENVIRON. CONTAM. TOXICOL. 323-328 (2005). Appeal 2011-005351 Application 11/382,976 3 The Examiner finds that Narayanan discloses a matrix for its composition that comprises, by weight, “(a) a film former, … optionally neutralized up to 20%, (b) a surfactant, … optionally a cosurfactant ..., (c) ethanol … and (d) water” (id. at 4-5). The Examiner finds that Narayanan discloses that the “polymers are solubilized either by partial neutralization with a base, or by emulsification with appropriate emulsifiers” (id. at 5). The Examiner finds that Narayanan’s composition does not include N,N-diethyl-meta-toluamide (DEET), but Seo discloses that “DEET is a topical insect repellent that has been widely used because of its low cost and broad insecticidal spectrum of activity.… DEET is an insecticide.” (Id.) The Examiner concludes that it would have been obvious to one of ordinary skill in the art to combine Seo’s DEET with Narayanan’s low VOC composition “because Narayanan et al. teach that the spray composition can comprise both a sunscreen and a pesticide … [and] DEET is taught by Seo et al. to be a very common and widely used insecticide for topical application” (id. at 6). Appellant contends that the claimed “single phase, surfactant-free, topical insect repellent composition” would not have been obvious because the cited references do not disclose or suggest a surfactant-free composition (Appeal Br. 4). Appellant argues that “regardless of how the polymer is incorporated into their formulations, Narayanan et al. still do not teach that the formulations are surfactant-free.… [T]he table in col. 2 describes compositions which must contain surfactant.” (Id.) We agree with Appellant that the Examiner has not adequately shown that the cited references would have made obvious the claims on appeal. Appeal 2011-005351 Application 11/382,976 4 Narayanan discloses “[s]table, water-based formulations containing high levels of water insoluble UV protectants/insecticides … as sprayable microemulsions containing a film-forming polymer” (Narayanan, col. 1, ll. 30-33). Narayanan discloses that the “formulations are useful as UV protectants in veterinary use, for protection of UV-labile insecticides, and for ‘pour on’ applications” (id. at col. 1, ll. 39-42). Narayanan discloses that the “polymers are solubilized either by partial neutralization with a base, or by emulsification with appropriate emulsifiers” (id. at col. 1, ll. 35-36). In the broadest description of the components of its compositions, Narayanan discloses that the compositions optionally comprise a neutralizer, but necessarily comprise a surfactant. See the Table in column 2, which describes the compositions as containing “[o]ptionally, a neutralizer” sufficient to provide 0-20%, preferably 0-10% neutralized film-forming polymer, and 1-25%, preferably 2-16% surfactant (Narayanan, col. 2, ll. 24- 26). As the Examiner has pointed out, Narayanan also discloses that “[s]olubilization of the polymer in alcohol/water medium was accomplished either by partial neutralization using bases … or by emulsification using appropriate emulsifiers” (id. at col. 2, ll. 62-66). Nonetheless, Narayanan discloses that surfactants are required in its composition even when the polymer is partially neutralized. See id. at col. 4, ll. 60-62 (solubilization of unneutralized polymers is “a challenging task”) and col. 5, ll. 14-16 (“In the partially neutralized forms, VEMA ES resins required lower levels of specific emulsifiers to solubilize in aqueous or aqueous-ethanol medium.”). Finally, Narayanan discloses that its “active ingredients were also Appeal 2011-005351 Application 11/382,976 5 microemulsified … by proper choice of emulsifiers” (id. at col. 3, ll. 1-3), indicating a need for emulsifiers (surfactants) to solubilize the active agent(s) as well as the film-forming polymer. Thus, the Examiner has not adequately shown that one of ordinary skill in the art would interpret Narayanan to suggest that its compositions should not include emulsifiers or surfactants. The rejection of independent claim 1 and dependent claims 2-17 is reversed. SUMMARY We reverse the rejection of claims 1-17 under 35 U.S.C. § 103(a). REVERSED cdc