Ex Parte Lenoir et al

Patent Trial and Appeal Board

May 1, 2018

12307599 (P.T.A.B. May. 1, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/307,599 08/21/2009 Pierre Marie Lenoir
109 7590 05/03/2018
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
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.
64933A 4079
EXAMINER
KLINKEL, KORTNEY L
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
05/03/2018 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PIERRE MARIE LENOIR and IRENE SIEGRIST 1
Appeal2018-003140
Application 12/307 ,599
Technology Center 1600
Before ERIC B. GRIMES, RICHARD J. SMITH, and RY ANH. FLAX,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision under 35 U.S.C. § 134(a) involving appealed claims
directed to a freeze stable formulation comprising 1,2-benzisothiazolin-3-
one (BIT) and a polyglycol liquid carrier. 2 The Examiner's rejection of
claims 1, 3-8, 12-14, 16, and 19 under 35 U.S.C. § 103(a) is appealed. 3 We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as "Dow Global Technologies
Limited (DGTL)." Appeal Br. 4.
2 We herein refer to the Specification filed on Jan. 6, 2009 ("Spec."); Final
Office Action mailed Jan. 13, 2017 ("Final Action"); Appeal Brief filed July
13, 2017 ("Appeal Br."); and Examiner's Answer mailed Nov. 2, 2017
("Answer").
3 Claims 2, 9-11, 22, and 30-32 are withdrawn/cancelled. See Final Action;
Appeal Br. 10-13.
Appeal2018-003140
Application 12/307,599
STATEMENT OF THE CASE
The Specification states:
The invention relates to stable biocide formulations which
contain 1,2-benzisothiazolin-3-one ("BIT") and polyglycols.
The new formulations exhibit one or more of the following
properties: low volatile organic carbons ("VOCs"), low
viscosities, near neutral to acidic pH, and good freeze-thaw
stability. The new formulations of BIT, with or without one or
more additional biocides, are advantageous for use in latex, paint,
coating, leather, metal working fluids, cosmetic, and personal
care products for controlling the undesired microbial growth in
those media.
Spec. 1 :7-13. The Specification further states, "[i]n one embodiment of the
invention, the preferred liquid carrier is MeO-(CH2CH20)6-0H with a
molecular weight of about 350 ("MPEG-350"). Id. at 7:6-7.
Independent claim 1, reproduced below, is representative:
1. A freeze stable formulation comprising 1,2-
benzisothiazolin-3-one (BIT), and a polyglycol liquid carrier of
formula (I):
R-0-(AO)n-R'
wherein
n is 4-25;
Rand R' are independently hydrogen, C1-C3 alkyl groups,
O=C-CH3 group, or O=C-C2Hs group; and
AO is a) CH2CH20, orb) CH2CH20 /CH2CHMe-O block
or random copolymer;
with proviso that when R and R' are both hydrogen, AO is
a block or random copolymer
wherein the molecular weight of the polyglycol is between
300 and 800.
Appeal Br. 10 (Claims App'x).
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Appeal2018-003140
Application 12/307,599
The following rejections are appealed:
Claims 1, 3-8, 12-14, 16, and 19 stand rejected under 35 U.S.C.
§ 103(a) over Liu,4 INEOS Alkoxylates, 5 and INEOS MPEG. 6 Final
Action 3.
Claims 1, 3-8, 12-14, 16, and 19 stand rejected under 35 U.S.C.
§ 103(a) over Liu, INEOS Alkoxylates, INEOS MPEG, and Jerusik. 7 Id. at
7-8.
FINDINGS OF FACT
We adopt the Examiner's findings of fact as set forth in the Final
Action and Answer. Final Action 2-14; Answer 3-10. We note the
following findings of fact (FF) to highlight certain evidence.
FFI. Liu discloses:
a neutral pH, VOC-free biocidal compos1t10n consIStmg
essentially of by weight, about 0.1-30%, 1,2-benzisothiazolin-3-
one (BIT), about 20-90% polyethylene glycol (PEG) of
molecular weight 400 or more, about 0-3%, preferably 1.5-2.5%
sodium hydroxide (NaOH), KOH or LiOH and about 0-15%,
preferably 5-10% water. These compositions are stable at
temperatures as low as -20° C for an extended period of time. A
preferred composition consists essentially of 20% BIT, 70%
PEG-400, 2.1 % NaOH and 7.9% water.
4 US 2005/0220830 Al (pub. Oct. 6, 2005) ("Liu").
5 INEOS Oxide, Technical Data Sheet- Alkoxylates (2005) ("INEOS
Alkoxylates").
6 INEOS Oxide, Technical Data Sheet- Methoxy Polyethylene Glycols
(2004) ("INEOS MPEG").
7 US 5,004,749 (issued Apr. 2, 1991) ("Jerusik").
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Application 12/307,599
Such compositions are particularly useful in latex, paint,
coating, cosmetic or personal care formulations.
Liu i-fi-f 15-16; see also Final Action 3-10 and Answer 3-5, 10
(discussing Liu). Liu also discloses that such compositions are stable
from -20°C to 25°C and are "very effective in protecting the paint
from developing microbial spoilage for an extended period of time."
Liu i-fi-125-27; see also Final Action 3-10 and Answer 3-5, 10
(discussing Liu).
FF2. INEOS Alkoxylates discloses that PEG 400 and MPEG
350, both ethylene oxide derivatives (alkoxylates), have similar
characteristics, e.g., molar mass, melting range, density, pH, and
water solubility. INEOS Alkoxylates 1-2; see also Final Action 3--4,
7, 12 and Answer 7-8, 10 (discussing INEOS Alkoxylates).
FF3. INEOS MPEG discloses MPEGs are "easy to handle and
store," "not corrosive," "improve[] wheatherability [sic] of polymers
applied in paints and coatings," "are used in a great variety of
applications because of their chemical structure, their low toxicity,
their solubility and their lubricating properties," and "are used in
surfactants, polyester and polyurethane based paints," and that
"MPEG 350 [is a] ... clear viscous liquid[] at room temperature."
INEOS MPEG 1--4; see also Final Action 3-9, 12 and Answer 3, 8, 10
(discussing INEOS MPEG).
DISCUSSION
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
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Application 12/307,599
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"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). "[T]he analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ." Id. at
418. "In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim. If the
claim extends to what is obvious, it is invalid under§ 103." Id. at 419.
When the examiner has required the applicant to elect single chemical
species for examination, as is the case here, the issue on appeal is the
patentability of the single elected species. It is appropriate to limit
discussion to that single issue and take no position respecting the
patentability of the broader generic claims, including the remaining, non-
elected species. See Ex parte Ohsaka, 2 USPQ2d 1460 (BP AI 1987).
The Examiner determined Liu disclosed the claimed invention, but for
the inclusion of MPEG-350. The Examiner also determined that it would
have been obvious to either add MPEG-350 to the Liu composition or
replace the PEG-400 of the Liu composition with MPEG-350 because, in
paint applications such as disclosed by Liu, MPEG-350 provides several
advantages and was known as a paint additive. See Final Action 3-7; FF 1-
FF3. The Examiner determined that there would have been a reasonable
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likelihood that a skilled artisan could successfully make such a combination.
Final Action 5-6. We discern no error in the Examiner's determinations.
Appellants acknowledge that "[a] preferred liquid carrier according to
the [claimed] invention is MPEG-350." Appeal Br. 7; see also id. at 11
(claim 8); Final Action 2 (identifying MPEG-350 as within scope of claim
1 ); Response to Restriction Requirement dated July 2 8, 2011 ("provisional
species elections: for the polyglycol liquid carrier of formula (I),
compounds where AO is CH2CH20, R is methyl, R' is H, and n is 6").
Appellants argue that it would not have been obvious to use MPEG-350 in
the compositions disclosed by Liu "to improve viscosity" because "the
viscosity of the formulation is not necessarily linked to the viscosity of the
liquid carrier." Appeal Br. 7. Appellants suggest that they discovered the
viscosity improvements offered by using MPEG-350 in a BIT composition.
Id. at 8. Appellants also argue they discovered that using MPEG-350
provides "better freeze-thaw stability than PEG-400 formulations." Id.
Appellants also argue the claimed "short alkyl capping groups and/ or the
presence of CH2CHMe-O in the AO moiety" provides the improved
viscosity to the claimed invention. Id. Appellants argue this means that the
entire claim scope provides an improvement over the compositions disclosed
in Liu. Id.
Appellants' arguments are not persuasive. The Examiner's rationale
for including MPEG-350 in the compositions of Liu is not premised solely,
if at all, on the idea that doing so would reduce the viscosity of the
composition because MPEG-350 has a lower viscosity than PEG-400. As
discussed above, the Examiner provided a plethora of characteristics and
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advantages of MPEG-350 and its use that would make it an attractive
additive for a paint composition as disclosed by Liu, either with or to replace
PEG-400. FF1-FF3. Moreover, it is not determinative whether or not
Appellants' claimed invention necessarily improves over the Liu-disclosed
composition over the entire scope of Appellants' claims; such an argument is
not pertinent to or persuasive on the issue of obviousness. Finally, while we
do not find Appellants have necessarily argued that their invention achieves
some unexpected result, the Examiner explains at length why such perceived
arguments are not persuasive (e.g., they are not commensurate with the
claim scope, do not illustrate anything unexpected, and are mere attorney
argument). We agree with the Examiner, whether or not Appellants
intended to make such arguments on secondary indicia of non-obviousness.
Because we find the preponderance of the evidence supports the
Examiner's case for the obviousness of the claims, and we are not persuaded
by Appellants' arguments, we affirm the rejections for the reasons set forth
above.
SUMMARY
The obviousness rejections are each affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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