Ex Parte Macinga et al

Patent Trial and Appeal Board

Apr 6, 2017

13377839 (P.T.A.B. Apr. 6, 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.
13/377,839 02/09/2012 David R. Macinga 33298/05643 1251
24024 7590 04/10/2017
Calfee, Halter & Griswold LLP
The Calfee Building
1405 East Sixth Street
Cleveland, OH 44114-1607
EXAMINER
BROWE, DAVID
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
04/10/2017 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):
ipdocket @ c alfee .com
wfrick @ c alfee. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID R. MACINGA,
SARAH L. EDMONDS, KRISTIN E. HARTZELL,
KELLY A. DOBOS and CAROL A. QUEZADA
Appeal 2015-004224
Application 13/377,8391
Technology Center 1600
Before ERIC B. GRIMES, FRANCISCO C. PRATS, and
KRISTI L. R. SAWERT, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to methods for
skin sanitization. The Examiner rejected the claims for indefiniteness and
obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm the
Examiner’s rejection for indefiniteness. We also affirm the Examiner’s
obviousness rejections, except as to two claims.
1 Appellants identify the real party in interest as GOJO Industries, Inc. App.
Br. 2.
Appeal 2015-004224
Application 13/377,839
STATEMENT OF THE CASE
The following rejections are before us for review:
(1) Claims 1—9 and 44^46, under 35 U.S.C. § 112, second paragraph,
for indefiniteness (Ans. 2);
(2) Claims 1-6, 8, 9, 15-20, 22, 23, 41, and 43^16, under 35 U.S.C.
§ 103(a), for obviousness over Snyder2 and Roeding3 (Ans. 3 4); and
(3) Claims 7 and 21, under 35 U.S.C. § 103(a), for obviousness over
Snyder, Roeding, and Policello4 (Ans. 4—6).
Claims 1 and 41 illustrate the appealed subject matter and read as
follows (App. Br. 21 (paragraphing added)):
1. A method for skin sanitization, the method comprising:
contacting the skin with foam formed from a
foamable antimicrobial composition comprising
at least 50 wt. % of a Ci-6 alcohol,
from about 0.02 to about 10 wt. % of a C<5-io
alkane diol, based upon the total weight of the
antimicrobial composition; and
a foaming surfactant selected from the group
consisting of siloxane polymer surfactants and
fluorosurfactants,
wherein the antimicrobial composition provides
cumulative antimicrobial efficacy, when the
antimicrobial composition is tested according to Federal
Register 59 [116], Jun. 17, 1994: pp 31402-31452.
41. A method for surface sanitization, the method
comprising:
contacting the surface with foam formed from a
foamable antimicrobial composition comprising
2 US 2007/0184013 A1 (published Aug. 9, 2007).
3 US 2007/0265352 A1 (published Nov 15, 2007).
4 US 6,221,922 B1 (issued Apr. 24, 2001).
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at least 50 wt. % of a Ci-6 alcohol,
from about 0.02 to about 10 wt. % of 1,2-octane
diol, and
from about 0.002 to about 4 wt. % of a siloxane
polymer surfactant, based upon the total weight of the
antimicrobial composition,
wherein the composition comprises from zero to
about 0.1 wt. % of auxiliary antimicrobial agent.
In response to a species election requirement, Appellants elected skin
as the species of sanitized surface, and 1,2-octane diol as the species of
alkane diol. Final Action 2. Accordingly, as to the appealed obviousness
rejections, we limit our analysis to the patentability of the elected species
and the extent to which the rejected claims read on them. See Ex parte
Ohsaka, 2 USPQ2d 1460, 1461 (BPAI 1987).
INDEFINITENESS
The Examiner’s Position
The Examiner concludes that claim 1, and its dependent claims 2—9
and 44-46, are indefinite based on the recitation in claim 1 requiring the
antimicrobial composition to be tested according to “Federal Register 59
[116], Jun. 17, 1994: pp 31402-31452.” Ans. 2.
The Examiner contends that the claims must “stand alone to define the
invention, and should not rely on the description, drawings, or extraneous
material to give them meaning. Incorporation by express reference to the
specification and/or drawings or extraneous material is not permitted except
in very limited circumstances.” Id. (citing Ex parte Fressola, 27 USPQ 2d
1608 (BPAI 1993)).
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Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
Appellants contend that the “FDA TFM healthcare personnel hand
wash test is well known in the art, and is defined by the Federal Register
publication that is cited in Claim 1.” App. Br. 7. Thus, Appellants contend,
the “test requirements set forth in the cited publication are fixed in a
permanent, tangible medium and are easily available to the public.
Furthermore, this test has been described in detail in the patent application.”
Id. at 7—8 (citing Spec. Tflf 100—105); see also Reply Br. 4—7 (same
argument).
Therefore, Appellants contend, by “rejecting the claims as indefinite,
the [EJxaminer has failed to recognize federally established procedures that
have been published in an official government publication and that are
widely recognized by those of ordinary skill in the art. In so doing, the
Examiner has deprived Applicants] of effectively claiming their invention.”
Reply Br. 7.
Appellants do not persuade us that a preponderance of the evidence
fails to support the Examiner’s conclusion of indefmiteness.
We first note that claim 1 does not recite the “FDA TFM healthcare
personnel hand wash test,” as Appellants contend. See, e.g., App. Br. 7.
Rather, the recitation at issue requires that “the antimicrobial composition
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provides cumulative antimicrobial efficacy, when the antimicrobial
composition is tested according to Federal Register 59 [116], Jun. 17, 1994:
pp 31402-31452.” App. Br. 21 (claim 1).
The portion of the Federal Register cited by Appellants’ claim 1,
which is approximately 50 pages long, was promulgated by the Food and
Drug Administration and is entitled “Topical Antimicrobial Drug Products
for Over-the-Counter Human Use; Tentative Final Monograph for
Healthcare Antiseptic Drug Products” (hereinafter “FDA TFM”). FDA
TFM, 59 Fed. Reg. 31402-31452 (June 17, 1994).
Rather than describing a single test, the FDA TFM recited in claim 1
includes multiple tests. First, the FDA TFM provides for in vitro testing of
handwash compositions, which includes tests for antimicrobial spectrum,
minimum inhibitory concentration, resistance development, and time kill
studies. Id. at 31444.
The FDA TFM also provides for three different in vivo testing
procedures: (1) a test method for evaluating “surgical hand scrub products,”
(2) a test method for evaluating “health-care antiseptic handwash or health­
care personnel handwash drug products,” and (3) a test method for
evaluating “patient preoperative skin preparation drug products.” Id. at
31445.
The procedures for testing surgical hand scrub products are set forth at
pages 31445—31448 of the FDA TFM. The procedures for testing antiseptic
handwashes or health-care personnel handwashes are set forth at pages
31448—31450 of the FDA TFM. The procedures for testing patient
preoperative skin preparations are set forth at pages 31450-31452 of the
FDA TFM.
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Thus, rather than providing for a single test as Appellants assert, the
FDA TFM cited in Appellants’ claim 1 provides for multiple ways in which
the claimed antimicrobial composition may be tested for cumulative
antimicrobial efficacy. Claim 1, therefore, is amenable to multiple plausible
interpretations, in that it encompasses testing according to as few as one of
the tests described in the FDA TFM, or as many as all of the described tests.
Because claim 1 is amenable to multiple plausible interpretations,
Appellants do not persuade us that the Examiner erred in concluding that
claim 1 is indefinite. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI
2008) (precedential) (“[I]f a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.”).
We acknowledge that claim 1 must be given its broadest reasonable
interpretation, viewed in light of Appellants’ Specification. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Nonetheless, it is improper to
confine the claims to a specific embodiment in the Specification when the
claim itself does not limit the encompassed subject matter to that
embodiment. See In re Trans Texas Holdings Corp., 498 F.3d 1290, 1299
(Fed. Cir. 2007).
In the instant case, as noted above, claim 1 does not identify a specific
test, but instead cites generally to the FDA TFM which, as discussed above,
describes multiple tests. Thus, it would be improper to confine claim 1 to a
specific test procedure described in Appellants’ Specification. The
Specification, moreover, does not resolve the ambiguity in claim 1, because
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the Specification cites to both the “FDA TFM test for healthcare personnel
hand wash” (Spec. 1100) as well as the “FDA TFM surgical hand scrub
test” {id. 1106). As noted above, those are two distinct tests. See FDA
TFM, 59 Fed. Reg. at 3144A-31450.
In sum, for the reasons discussed, Appellants do not persuade us that
the Examiner erred in concluding that claim 1 is indefinite. We, therefore,
affirm the Examiner’s rejection of that claim, and its dependent claims,
under 35U.S.C. § 112, second paragraph.
OBVIOUSNESS—SNYDER AND ROEDING
The Examiner’s Position
In rejecting claims 1—6, 8, 9, 15—20, 22, 23, 41, and 43^46 for
obviousness, the Examiner cites Snyder as describing a method of using an
antimicrobial composition to sanitize skin, and notes in particular Snyder’s
disclosure that, in addition to the alcohol required by the rejected claims,
Snyder also discloses that its composition suitably contains parabens. Ans.
3. The Examiner finds that Snyder differs from the rejected claims in that
Snyder does not “explicitly disclose that the antimicrobial agent includes
1,2-octanediol.” Id. at 4.
To address that deficiency, the Examiner cites Roeding as disclosing
antimicrobial compositions, useful for contacting skin, in which the
combination of a paraben and an alkane diol, such as 1,2-octane diol,
provides synergistic antimicrobial action. Id. at 3^4.
Based on the references’ combined teachings, the Examiner reasons:
Since Roeding et al. disclose that compositions that combine
1,2-octanediol with antimicrobial agents like parabens exhibit
synergistically intensified antimicrobial action; one of ordinary
skill in the art would be motivated to incorporate 1,2-octanediol
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with parabens as an antimicrobial agent in the composition
employed in the method of Snyder et al., with the reasonable
expectation that the resulting method will successfully produce
a synergistically intensified antimicrobial effect when applied
to skin. Moreover, since the prior art discloses the claimed
method steps using the claimed composition, it follows that the
resulting outcome of the prior art method must also be a
cumulative antimicrobial efficacy, with a log reduction of at
least 3 after one wash, and at least 4 after ten washes.
Ans. 4
Analysis
Appellants do not persuade us that a preponderance of the evidence
fails to support the Examiner’s conclusion that the rejected claims would
have been obvious. We select claim 1 as representative of the rejected
claims. See 37 C.F.R. § 41.37(c)(iv).
As the Examiner finds, and as required by claim 1, Snyder discloses
methods of sanitizing skin (see Snyder 121), using a composition containing
at least 50 weight percent Ci_6 alcohol (see id. H 26—28), as well as a
foaming siloxane polymer surfactant (id. 1 53).
As the Examiner finds, Snyder discloses that its compositions can
contain 0.1 to 1 percent by weight of any of a variety of auxiliary
antimicrobial agents, among them parabens. Id. 1 60.
Although Snyder does not appear to include 1,2-octanediol (the
elected species of alkane diol) in its compositions, Roeding discloses that
combining 1,2-octanediol with parabens synergistically improves the
antimicrobial efficacy of compositions containing the combination:
It was now particularly surprising that the mixtures
according to the invention display a strongly synergistic
efficacy and are distinctly superior to the individually metered
preservatives potassium sorbate, parabens and iodopropynyl
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butylcarbamate or to a mixture of 1,2-hexanediol and 1,2-
octanediol at the same concentration, particularly with regard to
the germ-count reduction.
Roeding 127 (emphasis added). Roeding discloses that the amount of
1,2-octane diol may range from 0.1 to 10 percent by weight of its
compositions, a concentration overlapping that of Appellants’ claim 1. See
id. 151.
We acknowledge Appellants’ contention that Roeding’s teachings are
limited to preservatives, and do not contemplate skin sanitization. App. Br.
12-14; Reply Br. 7-8.
Contrary to Appellants’ arguments, however, Roeding expressly
contemplates applying its synergistic mixtures to skin for sanitizing
purposes, and suggests combining its mixtures with other antimicrobial
agents:
The present invention relates ... to appropriate processes
for the cosmetic and/or therapeutic treatment of germs, in
particular of (a) micro-organisms causing body odour, (b)
micro-organisms causing acne and/or (c) micro-organisms
causing mycoses, comprising the topical application of an
antimicrobially effective quantity of a mixture according to the
invention, the proportions of said diols in the mixture
preferably being adjusted in such a way that their antimicrobial
effect is synergistically intensified.
The mixtures according to the invention can be
incorporated without difficulty into marketable cosmetic or
dermatological formulations such as, inter alia, pump sprays,
aerosol sprays, creams, ointments, tinctures, lotions, nail-care
products (e.g. nail varnishes, nail-vamish removers, nail balms)
and such like. In this connection it is also possible, and in
many cases advantageous, to combine the synergistic mixtures
according to the invention with further active substances, for
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example with other antimicrobially, antimycotically or
antivirally active substances. In this connection the cosmetic
and/or dermatological/keratological formulations containing the
synergistic mixtures according to the invention may otherwise
be composed as usual and may serve for treating the skin and/or
the hair along the lines of a dermatological treatment or along
the lines of a treatment within the field of grooming cosmetics.
Roeding || 49, 68 (emphases added).
Thus, as seen above, Roeding discloses that its combination of
1,2-octanediol and parabens has a synergistic antimicrobial effect that
renders it useful for skin application and combination with other
antimicrobial formulations. As also seen above, Snyder discloses that its
skin-sanitizing formulations may contain auxiliary antimicrobial agents,
including parabens. Because an ordinary artisan, therefore, would have
recognized that 1,2-octanediol would impart to Snyder’s composition the
synergistically potentiated antimicrobial effect taught in Roeding, we agree
with the Examiner that an ordinary artisan had a good reason for, as well as
a reasonable expectation of success in, including 1,2-octanediol in Snyder’s
formulation, thereby yielding a composition having the ingredients required
by Appellants’ claim 1, in amounts encompassed by claim 1.
Moreover, because the composition suggested by Snyder and Roeding
includes the ingredients required by Appellants’ claim 1, in amounts
encompassed by the claim, we find that the Examiner has advanced a
reasonable basis for concluding that the suggested composition also meets
the functional recitation in claim 1 requiring the antimicrobial composition
to provide cumulative antimicrobial efficacy when tested according to the
FDA TFM. As our reviewing court’s predecessor has explained, when the
Office advances a reasonable basis for concluding that a functional property
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recited in a claim at issue is present in a prior art product, the Office may
require an applicant to demonstrate that the prior art product lacks the
claimed functional property. See In re Best, 562 F.2d 1252, 1255 (CCPA
1977). As further explained in Best, whether the rejection at issue “is based
on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under
35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and
its fairness is evidenced by the PTO’s inability to manufacture products or to
obtain and compare prior art products.” Id.
To that end, Appellants contend that an ordinary artisan lacked a
reasonable expectation of achieving the cumulative efficacy required by
claim 1, as evidenced by the fact that a number of preservative-containing
commercial compositions, including one containing parabens, do not meet
claim l’s cumulative efficacy limitation. App. Br. 14—16 (citing Macinga
Decl.).5 Although we acknowledge the experimental evidence advanced by
Appellants, we note that none of the compared compositions contains the
diols expressly disclosed by Roeding as imparting to skin-treating
compositions the synergistically potentiated antimicrobial properties
discussed above. Thus, that compositions lacking 1,2-octanediol did not
provide the cumulative efficacy recited in claim 1 does not persuade us that
the cited prior art failed to suggest compositions meeting that limitation,
given the prior art’s disclosure that 1,2-octanediol-containing compositions
have significantly improved antimicrobial properties.
In sum, for the reasons discussed, Appellants do not persuade us that
the evidence of record fails to support the Examiner’s prima facie case of
5 Declaration of David R. Macinga, Ph.D., dated August 27, 2013.
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obviousness as to claim 1. We are also unpersuaded, moreover, that
Appellants have advanced evidence of unexpected results sufficient to
outweigh the evidence of prima facie obviousness.
As to Appellants’ contentions regarding unexpected results, we
acknowledge the comparison between the compositions of Appellants’
inventive Examples 2 and 3, both of which contain 0.5 weight percent
1.2- octanediol, and Example 1, which is identical to Example 2 except that
Example 1 lacks 1,2-octanediol. Spec. 1125.
We acknowledge also that, in the hand wash scrub test, the
1.2- octanediol-lacking composition of Example 1 achieved a mean logio
reduction of 4.26 after Wash 1, but only a 3.56 log reduction after Wash 10.
Id. 1127 (Table 3). In contrast, the 1,2-octanediol-containing compositions
of Example 2 (log reduction after Wash 1 = 4.29, after Wash 10 = 4.75) and
Example 3 (log reduction after Wash 1 = 4.46, after Wash 10 = 4.92) both
improved their efficacy after subsequent washes, thus meeting claim l’s
requirement for cumulative efficacy.6 Id.
As discussed above, however, Roeding discloses expressly that
1.2- octanediol imparts significant antimicrobial activity to compositions
suitable for skin treatment. Thus, because Roeding discloses that
1,2-octanediol imparts significant antibacterial activity to skin-treating
compositions, Appellants do not persuade us that the improvement in
properties over a composition lacking 1,2-octanediol would have been
6 Although not an express definition of “cumulative antimicrobial efficacy,”
the Specification states that “the enhanced composition unexpectedly
provides cumulative activity, i.e. the efficacy of the enhanced composition
increases with multiple uses.” Spec. 1105 (emphasis added).
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unexpected. In that regard we note, moreover, that Appellants’ Example 4, a
commercially available liquid formulation that contained about 63 percent
by volume isopropanol, marketed by Steris Corporation under the trademark
CalStat®, also exhibited cumulative efficacy (log reduction after Wash 1 =
4.44, after Wash 10 = 4.97). Spec. Tflf 125—127. Thus, Appellants do not
persuade us that cumulative efficacy, by itself, is an unexpected property.
Further, because Roeding discloses that 1,2-octanediol imparts
significant antibacterial activity to skin-treating compositions, we are not
persuaded that Appellants have explained adequately why the comparison of
Examples 1, 2, and 3 from the Specification equates to a comparison to the
closest prior art. See In re Baxter-Travenol Labs., 952 F.2d 388, 392 (Fed.
Cir. 1991) (“[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.”).
In addition, representative claim 1 encompasses broad concentration
ranges for both the alcohol (at least 50 wt. %) and alkane diol (0.02 to about
10 wt. %). App. Br. 21. In contrast, Appellants’ Examples 2 and 3 contain
only a single 1,2-alkanediol concentration (0.5 wt. %), and contain
significantly less alcohol than the maximum amount encompassed by claim
1 (Example 2 = 70 wt. % ethanol; Example 3 = 62 wt. %). Spec. 1125.
Appellants do not persuade us, therefore, that the evidence advanced to show
unexpected results is commensurate in scope with the claimed subject
matter. See In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003)
(“[ Applicant’s showing of unexpected results must be commensurate in
scope with the claimed range.”).
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In sum, for reasons discussed above, Appellants do not persuade us
that the evidence of record fails to support the Examiner’s prima facie case
of obviousness as to claim 1. For the reasons discussed above, we are also
unpersuaded that Appellants have advanced evidence of unexpected results
sufficient to outweigh the evidence of prima facie obviousness as to claim 1.
Because the preponderance of evidence, therefore, supports the
Examiner’s conclusion that the method of claim 1 would have been obvious
to an ordinary artisan in view of Snyder and Roeding, we affirm the
Examiner’ rejection of claim 1 over those references. Because they were not
argued separately, claims 2—6, 8, and 9 fall with claim 1. 37 C.F.R.
§ 41.37(c)(iv).
As to claim 15, Appellants advance the same arguments as those
discussed above in relation to claim 1. App. Br. 16—17. Accordingly, for
the reasons discussed above, we affirm the Examiner’s rejection of claim 15
over Snyder and Roeding. Claims 16—20, 22, and 23, all dependent directly
or ultimately from claim 15, fall with claim 15. See 37 C.F.R.
§ 41.37(c)(iv).
As to claim 41, we acknowledge the limitation that the composition
recited therein “comprises from zero to about 0.1 wt. % of auxiliary
antimicrobial agent.” App. Br. 25. We acknowledge also Roeding’s
disclosure that the synergistic antimicrobial properties of the compositions
taught therein rely on combining the alkane diols with other preservatives,
such as parabens. See Roeding 127. Nonetheless, because the up to 0.1
weight percent encompassed by claim 41 overlaps the suitable range of
paraben concentrations in Roeding (up to 0.4 % (id. 1 56)), Appellants do
not persuade us that the cited references fail to suggest the methods recited
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in claim 41. We, therefore, also affirm the Examiner’s rejection as to claim
41.
Claims 43 and 46, which depend from claims 41 and 1, respectively,
recite that “the composition is devoid of auxiliary antimicrobial agents.”
App. Br. 25, 26. Claims 43 and 46, therefore, exclude the presence of any
antimicrobial ingredient, including Roeding’s parabens, beyond those recited
in claims 1 and 41.
Because Roeding teaches that its synergistic antimicrobial effect is
derived from combining 1,2-octanediol with other preservative agents (see,
e.g., Roeding 127), we are not persuaded that the cited references would
have suggested a process meeting all of the requirements of claims 43 and
46. In particular, the Examiner does not persuade us (see Ans. 10-11), that
an ordinary artisan would have extrapolated the teachings of Roeding and
Snyder as suggesting that 1,2-octanediol, by itself, would provide the
synergistic effect described in Roeding. We, therefore, reverse the
Examiner’s obviousness rejection of claims 43 and 46 over Snyder and
Roeding.
Claim 44 recites “[t]he method of claim 1, wherein the tested
antimicrobial composition provides a log 10 reduction of at least 2 after one
wash, and at least 3 after ten washes.” App. Br. 26. Appellants aver that
claim 44 is patentable over Snyder and Roeding separately from claim 1.
See id. at 17. Appellants do not, however, present any specific argument as
to claim 44 in their Appeal Brief. See id.
Appellants also contend that claim 44 recites an unexpected result.
See Reply Br. 9. The composition of Appellants’ Example 1, however,
which does not include the inventive 1,2-octanediol potentiating ingredient
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(see Spec. 1125), meets claim 44’s requirement for a loglO reduction of at
least 2 after one wash, and at least 3 after ten washes. See id. 1127 (Table
3). Because Appellants do not persuade us, therefore, that claim 44’s
process would have been unobvious over that suggested by Snyder and
Roeding, we affirm the Examiner’s rejection of that claim over those
references.
Claim 45 recites “[t]he method of claim 1, wherein the tested
antimicrobial composition provides a log 10 reduction of at least 3 after one
wash, and at least 4 after ten washes.” App. Br. 26. Although Appellants do
not advance any specific argument as to claim 45 in the Appeal Brief,
Appellants contend, in response to argument presented in the Examiner, that
claim 45 recites an unexpected result. Reply Br. 9.
As seen in Appellants’ Specification, however, the commercial
product tested alongside the invention achieves the log reductions required
by claim 45. See Spec. 1127 (Table 3). Moreover, as discussed above, the
process recited in claim 1, from which claim 45 depends, is not
commensurate in scope with the evidence advanced by Appellants to show
unexpected results. Because Appellants do not persuade us, therefore, that
claim 45’s process would have been unobvious over that suggested by
Snyder and Roeding, we affirm the Examiner’s rejection of that claim over
those references.
OBVIOUSNESS—
SNYDER, ROEDING, AND POLICELLO
Claim 7 depends from claim 1, discussed above, and claim 21
depends ultimately from claim 15, also discussed above. See App. Br. 22,
23. In rejecting claims 7 and 21 for obviousness, the Examiner relied on the
teachings in Snyder and Roeding, discussed above, and cited Policello as
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evidence that it would have been obvious to use the specific siloxane
polymer surfactant recited in claims 7 and 21 in the method suggested by
Snyder and Roeding. Ans. 5—6.
Appellants do not persuade us that the Examiner failed to make out a
prima facie case of obviousness as to claims 7 and 21. To the extent
Appellants rely on their previous arguments as to claims 1 and 15 (see App.
Br. 19), we do not find those arguments persuasive for the reasons discussed
above.
In addition, Appellants argue, an ordinary artisan would not have been
motivated to combine Policello with Snyder and Roeding because “Policello
relates to foam control agents, and does not relate to alcoholic skin
sanitizers. Foam control agents, rather than operating to create foam, are
used to control or reduce foam.” App. Br. 19.
We do not find this argument persuasive. As the Examiner finds,
Policello discloses that a siloxane polymer surfactant, undisputedly
encompassed by claims 7 and 21, “gives improved foam control as well as
superspreading properties in aqueous systems.” Policello, 1:57—58. As
Policello explains “[o]ne of the most common deficiencies with high
performance wetting agents comprised of alkoxylated organo silicone
surfactants is that foam generated from these products is difficult to control.”
Id. at 1:5—8.
Appellants do not persuade us, therefore, that the Examiner erred in
concluding that it would have been obvious to use Policello’s foam control
agent in Snyder’s composition, given Snyder’s disclosure, discussed above,
of the suitability of including a foaming siloxane polymer surfactant in its
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compositions. See Snyder | 53. We, therefore also affirm the Examiner’s
rejection of claims 7 and 21 over Snyder, Roeding, and Policello.
SUMMARY
For the reasons discussed, we affirm the Examiner’s rejection of
claims 1—9 and 44^46, under 35 U.S.C. § 112, second paragraph, for
indefmiteness.
For the reasons discussed, we affirm the Examiner’s rejection of
claims 1—6, 8, 9, 15—20, 22, 23, 41, 44, and 45, under 35 U.S.C. § 103(a), for
obviousness over Snyder and Roeding.
For the reasons discussed, however, we reverse the Examiner’s
rejection of claims 43 and 46 for obviousness over Snyder and Roeding.
For the reasons discussed, we affirm the Examiner’s rejection of
claims 7 and 21, under 35 U.S.C. § 103(a), for obviousness over Snyder,
Roeding, and Policello.
TIME PERIOD
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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