Ex Parte Martin

Patent Trial and Appeal Board

Jan 17, 2017

13899000 (P.T.A.B. Jan. 17, 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.
13/899,000 05/21/2013 Howard Martin 026920.093060 1065
61494 7590 01/17/2017
Baker Donelson Bearman, Caldwell & Berkowitz, PC
100 Light Street
BALTIMORE, MD 21202
EXAMINER
BRANSON, DANIEL L
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
01/17/2017 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)
1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HOWARD MARTIN1
____________________

Appeal 2016-002876
Application 13/899,000
Technology Center 1600
____________________

Before JEFFREY N. FREDMAN, TAWEN CHANG, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.

CHANG, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
biocidal formulation, which have been rejected as obvious as well as on the
ground of nonstatutory obviousness-type double patenting. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
According to the Specification,
a . . . combination of quaternary ammonium cations with
glutaraldehyde, ortho-phthalaldehyde, isopropyl alcohol, and

1 Appellant identifies the Real Party in Interest as Dr. Howard Martin.
(Appeal Br. 1.)
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excipient constituents combined in preferred concentrations
within acceptable ranges [may] provide a synergistic [biocidal]
system that actively transports itself into the cells, through the
cell wall/membranes, thereby overcoming penetration restraints
and improving kill and kill time, without the need for activation
or any time or temperature control.
(Spec. 5:15–20.) Further according to the Specification, “the present
application discloses an improvement to the preceding formulation in which
a quaternary phosphonium salt, preferably tributyl tetradecyl phosphonium
chloride (TTPC), is substituted for the dual chain quaternary ammonium to
achieve markedly improved results.” (Id. at 5:24–6:5.)
Claims 1 and 8 are on appeal. Claim 1 is illustrative and reproduced
below:
1. A biocidal formulation comprising tributyl tetradecyl
phosphonium chloride (TTPC) within a range of from
.24–6 wt %, glutaraldehyde within a range of .25 wt % to
7 wt %, approximately equal amounts of said TTPC and
glutaraldehyde, isopropyl alcohol within a range of from
10 wt % to 60 wt %, water, and excipient constituents.
(Appeal Br. 18.)
The Examiner rejects claims 1 and 8 under 35 U.S.C. § 103(a) as
being unpatentable over Clifford2 and Martin.3 (Final Act. 3.)
The Examiner rejects claims 1 and 8 on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1, 2, 4,

2 Clifford et al., CA 1,262,667 A, issued Nov. 7, 1989 (“Clifford”).
3 Martin, US 5,252,606, issued Oct. 12, 1993 (“Martin”).
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and 8 of U.S. Patent No. 8,242,176 (hereinafter the ’176 patent) in view of
Clifford.4,5 (Final Act. 7.)
I.
Issue
The Examiner has rejected claims 1 and 8 under 35 U.S.C. § 103(a) as
being obvious over Clifford and Martin. The Examiner finds that Clifford
discloses “an antimicrobial composition with equal parts of TTPC and
glutaraldehyde that fall within the claimed concentrations and that possess
synergistic properties, but fails to specifically teach that the composition
comprises 15 to 41 wt% of isopropanol.” (Final Act. 4.) However, the
Examiner finds that “[t]he teachings of Martin help to cure this deficit.”
(Id.) In particular, the Examiner finds that “Martin teaches a biocidal
formulation comprising a[] glutaraldehyde, dual chain quaternary
ammonium compound, isopropyl alcohol and water. The combined biocidal
compounds have synergistic biocidal properties . . . . The isopropyl alcohol
is present in approximately 14% by weight and the glutaraldehyde is present
at approximately 25 wt%.” (Id. at 4–5 (citations omitted).)

4 Although the Examiner states that claims 1 and 8 are “provisionally”
rejected on the ground of nonstatutory double patenting as unpatentable over
certain claims of the ’176 patent (Final Act. 7), we note that this rejection is
over an issued patent and thus not provisional.
5 The Examiner states on page 8 of the Final Action that claims 1 and 8 are
obvious over claims 1, 2, 4, and 8 of the ’176 patent in view of Clifford and
Bryan. (Final Act. 8; see also Bryan et al., U.S. Patent No. 5,385,896,
issued Jan. 31, 1995.) As the Examiner did not otherwise refer to Bryan in
either the Final Action or the Answer, we understand the double patenting
rejection is over claims 1, 2, 4, and 8 of the ’176 patent in view of Clifford.
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Citing In re Kerkhoven, 626 F.2d 846 (CCPA 1980), the Examiner
concludes that
[i]t would have been prima facie obvious to one of ordinary
skill in the art at the time of the invention . . . to combine the
isopropyl alcohol of Martin, with the TTPC and glutaraldehyde
biocides of [Clifford], to form a formulation with biocidal
properties as all compounds are known for the same purpose.
A skilled artisan would have been further motivated to add the
isopropanol of Martin to the TTPC and glutaraldehyde
composition of [Clifford] in order to bolster the antimicrobial
properties of the Clifford composition. One of ordinary skill
would have had a reasonable expectation in such a result[,] as
the Martin composition contains the same or very similar types
[of] disinfectants ([i.e.,] glutaraldehyde in combination with a
quaternary cationic surface acting biocide).
(Id. at 5–6 (citation omitted).) With respect to the specific claimed
concentration ranges of glutaraldehyde, TTPC, and isopropanol, the
Examiner finds that a prima facie case of obviousness exists because the
prior art range either overlaps or touches the claimed ranges or is “close
enough that one skilled in the art would have expected them to have the
same properties.” (Id. at 6.)
Appellant contends that the Examiner erred in finding that the claim
differed from Clifford only in the inclusion of 15 to 41 wt% of isopropanol.
(Appeal Br. 4.) Appellant further contends that the Examiner has failed to
articulate a reason to modify Clifford to include the isopropanol disclosed in
Martin. (Id. at 5.) In particular, Appellant argues that In re Kerkhoven is
inapplicable to the facts of the instant appeal. (Id.) Citing Barah6 and

6 F. Barah, Non-antibiotic biocides: An updated review, in MICROBIAL
PATHOGENS AND STRATEGIES FOR COMBATING THEM: SCIENCE,
TECHNOLOGY AND EDUCATION 598–607 (A. Mendez-Vilas, ed. 2013).
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SCNA Guidelines,7 Appellant further argues that a skilled artisan would
have no reason to add isopropanol to Clifford’s formulation, or to do so with
a reasonable expectation of success, because Clifford and Martin do not
contain similar types of disinfectants, because alcohol is a poor biocide, and
because biocide synergy is not predictable. (Id. at 7–9.) Finally, Appellant
contends that the subject matter of the claims exhibits unexpected results.
(Id. at 9–15.)
Appellant does not separately argue claims 1 and 8. Accordingly, we
limit our analysis to claim 1 as representative. The issue with respect to this
rejection is whether the evidence of record supports the Examiner’s finding
that claim 1 is prima facie obvious over Clifford and Martin and, if so,
whether Appellant has presented evidence of unexpected results that, when
weighed with the evidence of obviousness, shows that claim 1 is not
obvious.
Findings of Fact
1. Clifford teaches a composition comprising a straight chain
aliphatic aldehyde and a phosphonium compound of the formula

7 Society of Gastroenterology Nurses and Associates, Inc., GUIDELINE FOR
USE OF HIGH LEVEL DISINFECTANTS & STERILANTS FOR REPROCESSING
FLEXIBLE GASTROINTESTINAL ENDOSCOPES (2013).
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where R and R1 consist of specified alkyl groups. (Clifford 1:24–2:16,
3:15–19.) Clifford teaches that “[w]ith the phosphonium compounds it is
particularly preferred that R represents n-butyl, R1 represents tetra-decyl and
X is chlorine.” (Id. at 3:1–3.) Clifford further teaches that “[s]uitable
straight chain aliphatic aldehydes generally possess 2 to 6 carbon atoms,
especially saturated dialdehydes having 2 to 6 carbon atoms such as
glutaraldehyde which is particularly preferred.” (Id. at 3:6–9.)
2. Clifford teaches that the phosphonium and aliphatic aldehyde
combinations of its invention give rise to synergistic biocidal effects. (Id. at
1:24–2:4, 4:18–5:5.) In particular, Clifford teaches that “the alkyl
phosphonium chloride and glutaraldehyde are synergistic at least in the ratio
of 3:1 to 1:3.” (Id. at 6:26–7:2.)
3. Clifford teaches that “[t]he weight ratio of the two types of
bactericide is typically from 10:1 to 1:10, especially from 3:1 to 1:3. A very
cost effective formulation can be provided with a weight ratio of about 1:1.”
(Id. at 4:2–5.)
4. Clifford teaches that “other ingredients can be present in the
composition, notably dispersants, especially dispersants which have
biological activity . . . .” (Id. at 4:6–9.) Clifford further teaches that, “[i]n a
typical formulation, there will be 5–20% by weight of each of the two
biocides and 2–10% by weight of dispersant . . . , with the remainder . . .
being water.” (Id. at 4:18–22.)
5. Martin teaches a disinfectant and sterilant formulation
consisting of quaternary ammonium chloride, glutaraldehyde, para tertiary
amylphenol, ortho phenylphenol, citric acid, isopropyl alcohol, and water,
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where isopropyl alcohol comprises 14% by weight of the formulation.
(Martin 1:6–8, 3:35–4:9. 4:15–23.)
6. Martin teaches that “[t]he combination of chemicals of [its]
invention create a synergistic effect . . . .” (Id. at 2:18–23, see also id. at
2:38–41.)
7. Martin teaches that
[a]lcohols have been shown to have antimicrobial properties.
. . . Isopropyl alcohol is considered to be more effective against
bacterial than ethyl alcohol.
Alcohol is effective against mycobacterium tuberculosis.
The isopropyl alcohol bactericidal effectiveness paralleled that
of ethyl alcohol but surpassed ethyl alcohol in lower ranges.
Either isopropyl or ethyl alcohol may be utilized within the
formulation.
(Id. at 2:5–17.) Martin further teaches that “[t]he ethanol or isopropyl
alcohol acts as a solvent to release constituents which leads to bacterial
death. It is also virucidal against both hydrophilic and lipophilic viruses.”
(Id. at 2:31–34.)
8. Martin teaches that its formulation “has usage in the health field
and industrial, agricultural and consumer area” and “may be in the form of
an immersion solution, a spray, or a wipe.” (Id. at 4:10–13.)
9. Barah lists alcohols as one of the main groups of biocides.
(Barah 598.)
10. Barah teaches that isopropyl alcohol (isopropanol) has shown
antimicrobial features and that it is one of the alcohols most widely used as a
biocide. (Id.)
11. Barah teaches that “alcohols are not recommended for
sterilization but are still widely used for both hard-surface disinfection and
skin antisepsis.” (Id.)
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12. Barah teaches that, “[g]enerally, the antimicrobial activity of
alcohols is optimal in concentration of 60–95% range” but further teaches
that “[l]ower concentrations may also be used . . . to potentiate the activity of
other biocides or other means of sterilization.” (Id.)
13. Barah describes surface active agents as one of the main groups
of biocides, and further describes cationic agents as a subcategory of such
surface active agents. (Id. at 602.)
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 3–6, 9–11; Ans. 2–15; FF1–
FF13) and agree that the claim 1 is prima facie obvious over the cited art.
We address Appellant’s arguments below.
Appellant contends that the Examiner “err[ed] in assessing the
difference between the prior art and the claims.” (Appeal Br. 4.) In
particular, Appellant contends that, in addition to the 15 to 41 wt%
isopropanol, the formulation of claim 1 also differs from that of Clifford in
the range of percent composition of TTPC and glutaraldehyde, the amounts
and identity of excipients, and the solvents used in the formulation. (Id.)
Appellant contends that “[t]he Examiner ignore[d] all [differences] but the
isopropanol.” (Id.)
We are not persuaded. The Examiner explicitly addressed the
differences between the percent ranges of TTPC and glutaraldehyde in claim
1 as compared to Clifford, finding that a prima facie case of obviousness
existed because the ranges overlapped. (Ans. 6; FF4.) We see no error in
the Examiner’s analysis. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003) (“In cases involving overlapping ranges, we and our predecessor court
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have consistently held that even a slight overlap in range establishes a prima
facie case of obviousness.”).8 Likewise, the claim does not require any
particular excipient or any particular amount of excipients; thus the
excipients do not constitute a difference between claim 1 and Clifford. As to
the difference in solvent – water in Clifford versus alcohol-water mix in the
claim – the Examiner has acknowledged the difference and articulated a
reason why a skilled artisan would modify Clifford to include isopropanol,
which is taught by Martin, as discussed further below. Martin also discloses
a formulation comprising 14% isopropanol, which falls within the range (10
wt % to 60 wt %) recited in claim 1. (FF5).
Appellant contends that the Examiner has failed to articulate a reason
to modify Clifford to include the isopropanol disclosed in Martin. (Appeal
Br. 4–5.) Appellant first contends that there is no evidence a skilled artisan
“would have expected improved results” by adding isopropanol to the
Clifford formulation, arguing that “[s]odium and chlorine both have a

8 Appellant cites to Ex parte Shanks (Appeal Br. 4) for the proposition that
“[t]here must be sufficient findings of fact that one skilled in the art would
have expected the prior art compounds and ranges versus the claimed
compounds/ranges to have the same properties.” Ex parte Shanks, 2011 WL
3218585, Appeal No. 2009-010707 (BPAI 2011). Appellant’s citation is
inapposite. In Shanks, the claim required a laser beam having a wavelength
in the ultraviolet range while the prior art disclosed wavelengths of between
about 400nm and 700 nm, which “either comes very close to or touches the
ultraviolet range.” Id. at *8. Thus, the ranges do not overlap as they do
here. Moreover, the Board in Shanks found that the usefulness of the laser
beam in the prior art depended on its visibility to the user; thus, “[f]or
purposes of [the prior art] device, visible and ultraviolet light would not have
the same properties, that is, visibility,” despite the closeness of the
wavelength ranges. Id. Here, claimed components such as TTPC and
glutaraldehyde are used as biocides in both Clifford and claim 1.
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biocidal effect yet one explodes when mixed with carbon chloride and the
other does not.” (Id.) We are not convinced. “[T]he expectation of success
need only be reasonable, not absolute.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1364 (Fed. Cir. 2007). Given the biocidal function of both
isopropanol and the Clifford formulation, and the disclosure in Martin that a
formulation comprising glutaraldehyde, isopropyl alcohol, and another
quaternary cationic surface active biocide (quaternary ammonium chloride)
exhibits synergy (FF2, FF5–FF7), the Examiner has sufficiently articulated a
reason to combine the teachings of Clifford and Martin. (Ans. 5–6.) See,
e.g., Kerkhoven, 626 F.2d at 850 (“It is prima facie obvious to combine two
compositions each of which is taught by the prior art to be useful for the
same purpose, in order to form a third composition which is to be used for
the very same purpose.”).
Appellant argues that In re Kerkhoven is inapplicable to the facts of
the instant appeal because, “[u]nlike . . . Kerkhoven, . . . claim 1 is not
simply a combination of two elements to form a third that does the same
thing,” but rather “a combination of four constituents . . . at specific
concentrations, each serving a function within the claimed [composition].”
(Appeal Br. 5.) This argument is not convincing. As the Examiner points
out, Kerkhoven’s holding relates to the combination of two compositions
and is not limited to the combination of two binary elements. (Ans. 9.)
Kerkhoven, 626 F.2d at 850. Furthermore, Appellant has neither provided
persuasive evidence that the combination of ingredients in the claimed
formulation is anything more than “the predictable use of prior art elements
according to their established functions” nor, as discussed further below,
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shown that the claimed subject matter exhibits unexpected results.9 KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007).
Appellant further argues that a skilled artisan would have no reason to
add isopropanol to Clifford’s formulation, or to do so with a reasonable
expectation of success, because Clifford and Martin do not contain similar
types of disinfectants, because biocidal synergy is not predictable, and
because alcohol is a poor biocide. (Appeal Br. 7–9.) We are not convinced.
As the Examiner points out, both Clifford and Martin contain a combination
of glutaraldehyde and quaternary cationic surfactant biocides. (Ans. 7.)
Even if the combination of Clifford’s formulation and isopropanol were not
obvious under Kerkhoven, we find that the Examiner has established that it
is prima facie obvious to combine isopropanol with Clifford’s formulation in
light of the similarity between other biocidal components in the Clifford and
Martin formulations and Martin’s disclosure that its formulation is
synergistic. (FF1, FF5, FF6, FF13.)
Appellant does not appear to dispute that the biocides of Clifford and
Martin share certain characteristics. However, Appellant argues that
“shar[ing] one or more characteristics in common . . . is no indication of any
substantial degree of chemical similarity in the eye of a [person of ordinary
skill in the art],” and further argues that “the outcome reaction [of

9 Appellant cites Ex parte Wittpenn et al., Appeal No. 03-4043 (BPAI 1990),
for the proposition that where a claim does not involve “the mere
combination of components for the same purpose that each would
individually be used,” In re Kerkhoven is not applicable. (Appeal Br. 5.)
Appellant has provided no persuasive evidence, however, that any of the
claimed components—TTPC, glutaraldehyde, and isopropanol—is not being
used for the same purpose that each would individually be used (e.g., as
biocides and antimicrobials).
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substituting Clifford’s TTPC for Martin’s quaternary ammonium chloride]
would be unclear, the biocidal effect unknown, and toxicity possibly
increased.” (Reply Br. 2.) In particular, Appellant points out that the
Specification discloses that dual chain quaternary ammonium is a molecular
solvent while TTPC is ionic and that substitution of TTPC for dual chain
quaternary ammonium results in “different thermodynamics and kinetics,
and improved synergism and killing” as well as reduced toxicity. (Appeal
Br. 8.) Nothing Appellant has cited, however, including Barah and the
SCNA Guidelines discussed further below, suggests that a skilled artisan
would not expect a combination of TTPC, glutaraldehyde, and isopropanol
to function as a biocide formulation in light of the prior art, and we note
again that in an obviousness analysis “the expectation of success need only
be reasonable, not absolute.” Pfizer, 480 F.3d at 1364.
We are also not persuaded by Appellant’s argument that a skilled
artisan would not have incorporated isopropanol into Clifford’s formulation
because alcohol is a poor biocide. As an initial matter, Martin itself suggests
that alcohol has antimicrobial properties. (FF7.) Likewise, and as the
Examiner points out, neither Barah nor the SCNA Guidelines cited by
Appellant supports the argument that a skilled artisan would not have
incorporated isopropanol into Clifford’s formulation: Barah in fact provides
additional reason for a skilled art artisan to add isopropanol to Clifford’s
formulation, as it teaches that alcohol may be used to potentiate the activity
of other biocides.10 (Ans. 6; FF12.)

10 Appellant argues that the claimed invention “does not use alcohol for its
direct biocidal properties” but rather uses alcohol “1) as a solvent (to hold
the solution for of the [quaternary ammonium chloride] QAC to avoid the
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Finally, Appellant contends that the subject matter of the claims
exhibits unexpected results. (Appeal Br. 9–15.) We agree with the
Examiner that Appellant has not submitted evidence of unexpected results
that, when combined with evidence of obviousness, shows the claims to be
non-obvious. (Ans. 9–15.) First, Appellant has not shown that any alleged
synergistic results of the claimed TTPC/glutaraldehyde composition are
unexpected given that Clifford already teaches that the combination of
TTPC and glutaraldehyde exhibits synergy. (FF1, FF2.) Apparently
referring to the results from Clifford’s Example 1, Appellant argues that his
formulation unexpectedly showed more favorable results than Clifford’s
formulation. (Appeal Br. 7–8.) We do not find this argument convincing:
Appellant’s experiments were done under different conditions and thus not
directly comparable to Clifford’s example. (Ans. 11.)
Furthermore, to the extent the test results Appellant submitted may be
considered unexpected, Appellant has not shown unexpected results
commensurate with the scope of the claims. In re Lindner, 457 F.2d 506,
508 (CCPA 1972) (“It is well established that the objective evidence of
nonobviousness must be commensurate in scope with the claims.”). Indeed,
it is unclear whether the formulations tested in the reports submitted by the

QAC precipitating out of solution); and 2) to displace water at the bacterial
cell membrane.” (Appeal Br. 8; Reply 2–3.) First, the claim does not
require QAC; thus it is not clear why Appellant included alcohol as a solvent
for QAC. Second, in determining whether a claim is obvious, “neither the
particular motivation nor the avowed purpose of the patentee controls.”
KSR, 550 U.S. at 419. Third, Martin discloses the use of isopropanol both as
a solvent and for its antimicrobial properties. (FF7.) Fourth, the
Specification teaches that isopropyl alcohol is used as a solvent and to
displace water molecules as well as an “aid in the disruptive mechanism of
the biocidal formula.” (Spec. 11:9–13.)
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Appellant even fall within the claims, as most if not all appear to lack
claimed ingredient isopropanol.11 (Martin Decl., Ex. B at 3, Ex. C, Table 1.)
Neither did Appellant present any basis to support the conclusion that any
alleged unexpected results would be present through the claimed ranges of
TTPC and glutaraldehyde.12
Accordingly, we affirm the Examiner’s rejection of claim 1. Claim 8,
which Appellant does not argue separately, falls with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
II.
Issue
The Examiner rejects claims 1 and 8 on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1, 2, 4,

11 While the Martin Declaration states that the ATS report (attached as
Exhibit B to the declaration) shows testing done on Appellant’s
“glutaraldehyde/TTPC/IPA formulation,” it is not clear from the report itself
whether the tested formulation in fact comprises isopropanol and, if so,
whether the isopropanol was present within the claimed amounts.
(Declaration of Dr. Howard Martin under Rule 132 (Sept. 9, 2014) (“Martin
Decl.”) ¶ 9, Ex. B.) In any event, the test results described in the ATS report
do not suffice to show unexpected results for the other reasons discussed.
12 For instance, claim 1 recites a formulation comprising approximately
equal amounts of TTPC and glutaraldehyde and TTPC from 0.24–6 wt %
and glutaraldehyde from 0.25–7 wt %. (Appeal Br. 18.) However, the
testing Appellant relies on appears to have been conducted on formulations
comprising TTPC/glutaraldehyde in amounts ranging from, at most,
0.0025% (25 ppm) to 0.1% (1000 ppm). (Martin Decl. Ex. B, Tables 5 & 7,
Ex. C, Table 2.) Appellant argues in the Appeal Brief that “in this instance
. . . claim 1 covers a single compound with nominal variability in the
constituent ranges” and that “Appellant’s tests are a direct comparison to
Clifford at various of those ranges.” (Appeal Br. 14.) However, attorney
argument is not evidence. Johnston v. IVAC Corp., 885 F.2d 1574, 1581
(Fed. Cir. 1989).
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and 8 of U.S. Patent No. 8,242,176 (hereinafter the ’176 patent) in view of
Clifford. The Examiner finds, and Appellant does not dispute, that the
claims of the ’176 patent “differ from the claims of the present invention in
that quaternary ammonium biocides [are] utilized in place of quaternary
phosphonium biocides at specific concentrations [and] include further
ingredients not claimed in the present composition.” (Final Act. 7; Appeal
Br. 16.) The Examiner finds, however, that
[a]s Clifford teach[es] biocidal synergism between the use of
TTPC and glutaraldehyde at the concentrations as discussed
above, it would have been obvious for one of ordinary skill in
the art to substitute TTPC for the quaternary ammonium
biocides of [the] ’176 [patent] . . . in order to obtain an
effective, synergistic biocidal composition. Furthermore, the
concentration of isopropanol of the present claims would have
been prima facie obvious over the overlapping concentration . .
. of [the] ’176 [patent]. Furthermore, the claims of the present
application permit additional ingredients as the transitional
phrase “comprising” is used.
(Ans. 7–8.)
Appellant contends that, because “all claims of [the] ’176 [patent]
require quaternary ammonium chloride (QAC) and glutaraldehyde, whereas
the captioned claims require TTPC and glutaraldehyde,” [t]here is no subject
matter overlap, no double-patenting, and no obviousness-type double
patenting.” (Appeal Br. 16.) Appellant contends that
QAC “is a molecular solvent rather than a completely ionic
solvent like TTPC. Therefore the outcome reactions are
different.” . . . A PHOSITA would not have been motivated to
add the isopropanol of [the] ’176 [patent] to the
TTPC/glutaraldehyde composition to Clifford . . . because the
outcome reaction would be unclear, the biocidal effect unclear,
and toxicity increased.

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(Id.)
Appellant does not separately argue claims 1 and 8. Accordingly, we
limit our analysis to claim 1 as representative. The issue with respect to this
rejection is whether the Examiner erred in finding that claim 1 is
unpatentable on the ground of nonstatutory obviousness-type double
patenting over claims 1, 2, 4, and 8 of the ’176 patent and Clifford.
Findings of Fact
14. Claims 1, 2, 4, and 8 of the ’176 patent are reproduced below:
1. A biocidal formulation comprising an aldehyde selected from
the group consisting of glutaraldehyde and orthophtha[l]aldehyde
within a range of concentration from 0.25% to 7% by weight of said
biocidal formulation, a dual chain quaterna[r]y ammonium compound,
isopropyl alcohol, proppant comprising a microcrystalline cellulosic
compound selected from the group consisting of methylcellulose,
ethylcellulose and hydroxymethylcellulose, a block copolymer
defined by monomolecular micelles, a flocculating agent consisting of
a nonionic triblock poloxamer copolymer, and water, combined to
yield a pH within a range of from 3 to 9.

2. A biocidal formulation containing an aldehyde selected from
the group consisting of orthophthalaldehyde and g[l]utarald[e]hyde
within a range of concentration from 0.25% to 7% by weight of said
biocidal formulation, a dual chain quaternary ammonium compound,
microcrystalline cellulosic proppant, a friction-reducer consisting of
aqueous monomer block copolymer defined by monomolecular
micelles, a wetting agent consisting of triblock non-ionic copolymer
surfactant, and water, combined to yield a pH within a range of from 3
to 9.

4. The biocidal formulation according to claim 1 wherein said
isopropyl alcohol comprises a range of from 10.00%–60.00% by
weight.

8. The biocidal formulation according to claim 1 in aqueous form.
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(’176 patent, 6:40–8:2.)
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 3–8, 9–11; Ans. 2–16; FF1–
FF14), except for any findings and reasoning regarding claim 2 of the ’176
patent, and agree that claims 1, 4, or 8 of the ’176 patent and Clifford render
claim 1 obvious for obviousness-type double patenting.13 We address
Appellant’s arguments below.
Appellant contends that Examiner erred in making the obviousness-
type double patenting rejection because all claims of the ’176 patent require
quaternary ammonium chloride and glutaraldehyde while claim 1 at issue
requires TTPC and glutaraldehyde. (Appeal Br. 16.) We are not convinced.
Clifford discloses the combination of TTPC and glutaraldehyde, and a
skilled artisan would have found it obvious to substitute TTPC for the
quaternary ammonium compound of the ’176 patent claims: Both
quaternary ammonium chloride and TTPC are quaternary cationic
surfactants, and Clifford discloses that the combination of TTPC and
glutaraldehyde also exhibits synergistic effect. (FF1, FF2, FF13.) Neither
are we convinced by Appellant’s contention that claim 1 is not obvious over
the cited ’176 patent claims and Clifford because quaternary ammonium
chloride is a molecular solvent while TTPC is ionic and thus “the outcome

13 We note that neither claim 2 of the ’176 patent nor Clifford discloses a
formulation comprising isopropyl alcohol, and the Examiner has not
articulated how the combination of claim 2 of the ’176 patent and Clifford
would render that claim limitation obvious. Accordingly, we reverse the
Examiner’s nonstatutory obviousness-type double patenting rejection to the
extent the rejection is based on claim 2 of the ’176 patent.
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Application 13/899,000

18
reaction [of combining TTPC, glutaraldehyde, and isopropanol] would be
unclear, the biocidal effect unclear, and toxicity increased.” (Appeal Br 16.)
As already discussed, “expectation of success need only be reasonable, not
absolute.” Pfizer, 480 F.3d at 1364. Appellant also has not cited any
persuasive evidence that toxicity would be increased when TTPC, rather
than quaternary ammonium chloride, is combined with glutaraldehyde and
isopropanol. Again, “[a]ttorneys’ argument is no substitute for evidence.”14
Johnston, 885 F.2d at 1581.
Finally, Appellant requests that the nonstatutory obviousness-type
double patenting rejection be held in abeyance pending further examination
in order to permit the filing of a terminal disclaimer. (Appeal Br. 17.) We
decline to do so, as holding the rejection in abeyance could result in
piecemeal examination and delay. Appellant is free to file such a terminal
disclaimer in any subsequent prosecution.
Accordingly, we affirm the Examiner’s rejection of claim 1. Claim 8,
which Appellant does not argue separately, falls with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
SUMMARY
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1 and 8.

14 Indeed, it appears that Appellant acknowledges elsewhere that “[t]he
substitution of TTPC for the dual chain quat” results in reduced toxicity.
(Appeal Br 16.)
Appeal 2016-002876
Application 13/899,000

19
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