Ex Parte Ming et al

Board of Patent Appeals and Interferences

Aug 26, 2011

11133007 (B.P.A.I. Aug. 26, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte XINTIAN MING and
STEPHEN J. ROTHENBURGER
____________

Appeal 2010-002172
Application 11/133,007
Technology Center 1700
____________

Before CHUNG K. PAK, CATHERINE Q. TIMM, and
KAREN M. HASTINGS, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
refusal to allow claims 4 through 6 and 10 through 12, all of the claims
pending in the above-identified application. 1 We have jurisdiction under 35
U.S.C. § 6.

1 See Appeal Brief (“App. Br.”) filed July 6, 2009, 2; and Examiner’s
Answer (“Ans.”) filed August 24, 2009, 2.

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STATEMENT OF THE CASE
The subject matter on appeal is directed to an “antimicrobial
composition comprising lauric arginate (LAE) and diiodomethyl-p-
tolysulfone (DIMPTS)” (Spec. 1, ll. 6-8). According to page 3, lines 23-25,
of the Specification, this composition “may be used as a stand-alone
antimicrobial formulation, or in combination with medical articles or
medical devices.” (Emphasis original.) Details of the appealed subject
matter are recited in representative claim 42 reproduced from the Claims
Appendix to the Appeal Brief as shown below:
4. An antimicrobial composition comprising:

lauric arginate according to the following formula:

and diiodomethyl-p-tolylsulfone.
As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following evidence at page 3 of the Answer:
Ghosh US 6,149,927 Nov. 21, 2000
Urgell Beltran (Urgell) WO 03/043593 A1 May 30, 2003

2 Appellants have not separately argued the claims on appeal (App. Br. 5-
15). Therefore, for purposes of this appeal, we select claim 4 and decide the
propriety of the Examiner’s rejections set forth in the Answer based on this
claim alone in accordance with 37 C.F.R. § 41.37(c)(1)(vii) .

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Copending U.S. Application 11/389,824 filed by Xintian Ming et al. (Ming)
on March 27, 2006.

Appellants seek review of the following grounds of rejections set forth
in the Answer3:
1. Claims 4 through 6 under 35 U.S.C. § 103(a) as unpatentable
over Urgell in view of Ghosh;
2. Claims 4 through 6 and 10 through 12 under 35 U.S.C. § 103(a)
as unpatentable over Ghosh in view of Urgell;
3. Claims 4 through 6 and 10 through 12 provisionally on the
ground of nonstatutory obviousness-type double patenting as unpatentable
over claims 1 through 20 of Ming in view of Ghosh. (See App. Br. 3).

RELEVANT FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUE,
ANALYSIS, AND CONCLUSION
I. OBVIOUSNESS UNDER 35 U.S.C. § 103
From the collective teachings of Urgell and Ghosh4, the Examiner has
determined that one of ordinary skill in the art would have had at least some
reason or suggestion to employ Ghosh’s antimicrobial agent, such as
diiodomethyl-p-tolysulfone (DIMPTS), together with Urgell’s lauric
arginate (LAE) taught to be useful with a common antimicrobial agent. (See
Ans. 3-6.) On the other hand, Appellants contend that one of ordinary skill
in the art would have had no reason or suggestion to select diiodomethyl-p-

3 The Examiner has withdrawn the §103 rejection based on the combined
disclosure of Cox (U.S. Patent 6,503,531) and Urgell (Ans. 2).
4 As recognized by Appellants at page 10 of the Appeal Brief, the Examiner
has relied on the combined disclosures of Urgell and Ghosh, i.e., Urgell in
view of Ghosh or Ghosh in view of Urgell, to reject the claims on appeal.
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tolysulfone (DIMPTS) from the large number of antimicrobial agents listed
in Ghosh as the antimicrobial agent of the antimicrobial composition taught
by Urgell. (See App. Br. 7-8 and 10.) Appellants also contend that one of
ordinary skill in the art would not have looked to the disclosures of Urgell
and Ghosh to arrive at the claimed subject matter since they are from non-
analogous art. (See App. Br. 6 and 10.) Further, Appellants contend that the
claimed subject matter imparts unexpected synergistic results, thereby
rebutting any prima facie case of obviousness established by the Examiner.
(See App. Br. 8-10 and 12-14.)
Thus, the dispositive questions are: (1) Has the Examiner erred in
determining that one of ordinary skill in the art would have been led to
employ Ghosh’s antimicrobial agent, such as diiodomethyl-p-tolysulfone
(DIMPTS), as the common antimicrobial agent of the antimicrobial
composition containing lauric arginate (LAE) taught by Urgell and (2) if the
Examiner has not erred in making such determination, have Appellants
demonstrated that the claimed subject matter as a whole imparts unexpected
results, thereby rebutting any prima facie case of obviousness established by
the Examiner? On this record, we answer both the questions in the negative.
As correctly found by the Examiner at page 3 of the Answer, Urgell
teaches an antimicrobial composition containing 0.001% to 1% by weight of
a cationic surfactant corresponding to the claimed lauric arginate (LAE) and
0.0001% to 2% by weight of at least one antimicrobial agent. (See also
Urgell, Abstract and p. 4, ll. 1-5.) The Examiner has also correctly found at
page 3 of the Answer that Urgell teaches LAE as “activity enhancers of the
traditional antimicrobials” and “combinations of LAE with traditional
antimicrobials have a better activity than LAE or these antimicrobials by
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themselves in the tested applications.” (See also Urgell, p.1, ll. 7-23 and p.
2, ll. 11-14.) Indeed, we note that Urgell, at page 3, lines 10-15, further
emphasizes that:
It has now been found that the antimicrobial activity of the
combinations of LAE…with most of the common
antimicrobials used in formulations and preparations for skin
and oral care is higher than the activity displayed by each of the
components when used alone at the same dosage.

Moreover, the Examiner has correctly found that Urgell broadly teaches
employing common antimicrobial agents, including 2,4, 4’ –trichloro-2’-
hydroxy-diphenylether (triclosan), in its antimicrobial composition and
teaches such antimicrobial composition as being useful for cosmetic
formulations and other preparations directed to body odor and oral care.
(See also Urgell, p. 3, ll. 20-27.)
Although Urgell does not mention that its common antimicrobial
agent useful for its antimicrobial composition includes diiodomethyl-p-
tolysulfone (DIMPTS), the Examiner has correctly found at pages 4 and 5 of
the Answer that Ghosh lists common antimicrobial agents, including 2,4, 4’
–trichloro-2’-hydroxy-diphenylether (triclosan) and diiodomethyl-p-
tolysulfone (DIMPTS). (See also Ghosh, col. 2, ll. 27-34 and col. 2, l. 52 to
col. 3, l. 63.) In particular, Ghosh describes two types of common biocides
used in its solid compositions that provide controlled release of biocidal
compounds which may be in the form of solid or liquid. (See col. 1, ll. 6-14
and col. 2, ll. 27-28 and col. 4, ll. 48-61.) Ghosh identifies one common
biocide as an antimicrobial agent, i.e., a microbiocide for “inhibiting the
growth of or controlling the growth of microorganism in a locus” and lists
common microbiocides (common antimicrobial agents). (See col. 2, ll. 27-
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34 and 52-53.) According to column 3, lines 59-63, of Ghosh, common
antimicrobial agents include, among other things, 2, 4, 4’ –trichloro-2’-
hydroxy-diphenylether (triclosan) and diiodomethyl-p-tolysulfone
(DIMPTS). As correctly found by the Examiner at page 4 of the Answer,
Ghosh teaches that its composition is “useful for wherever the biocidal
compound [i.e., microbiocide,] would be useful…cosmetics and toiletries;
shampoos; disinfectants and antiseptics…medical devices…odor control
fluids; [and] coating.” (See also Ghosh, col. 5, ll. 33-55.)
Given the above factual findings, we concur with the Examiner that
one of ordinary skill in the art would have been led to employ Ghosh’s
antimicrobial agent, such as diiodomethyl-p-tolysulfone (DIMPTS), as the
antimicrobial agent of the common antimicrobial composition containing
lauric arginate (LAE) and an antimicrobial agent taught by Urgell, with a
reasonable expectation of successfully enhancing the antimicrobial activity
of the common antimicrobial agent, such as DIMPTS, used in, for example,
cosmetic formulations or odor control fluids.5 See, e.g., KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc.,
425 U.S. 273, 282 (1976) (“[W]hen a patent ‘simply arranges old elements
with each performing the same function it had been known to perform’ and
yields no more than one would expect from such an arrangement, the
combination is obvious.”); see also Merck & Co., Inc. v. Biocraft Labs., Inc.,

5 We also note Appellants’ admission at page 3 of the Specification, which
acknowledges that the use of DIMPTS as an antimicrobial agent is desirable
because it is a known broad spectrum antimicrobial agent. See In re
Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (The admitted prior art in
applicant’s Specification may be used in determining the patentability of a
claimed invention.); see also In re Davis, 305 F.2d 501, 503 (CCPA 1962).

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874 F.2d 804, 807 (Fed. Cir. 1989) (The disclosure in a prior art reference of
compositions having a multitude of effective ingredient combinations does
not render any particular formulation less obvious.)
In reaching the above determination, we have carefully considered
Appellants’ argument at pages 6 and 10 of the Appeal Brief that both Urgell
and Ghosh are from non-analogous art. However, we are not persuaded that
they are not from analogous art as indicated by the Examiner at page 8 of the
Answer. As our reviewing court in In re Bigio, 381 F.3d 1320, 1325 (Fed.
Cir. 2004) stated:
Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.

We find that both Urgell and Ghosh are from the same field of endeavor as
the claimed subject matter since they, like the claimed subject matter, are
directed to antimicrobial compositions as indicated supra. Even if Urgell
and Ghosh are from different fields of endeavor than that claimed, we find
that they still are reasonably pertinent to the particular problem which the
inventors are involved. We find that Urgell, like the inventors, deals with
solving a problem associated with producing an antimicrobial composition
having a synergistic effect via using a cationic surfactant (LAE) with an
antimicrobial agent. (Compare Urgell, pp. 2-3 with Spec. 4, 11, and 12.)
We find that Ghosh, like the inventors, deals with solving a problem of using
an antimicrobial composition on medical devices or as coatings to prevent or
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reduce the effects of fungi and pathogens. (Compare Ghosh, cols. 2 and 5,
with Spec. 3, 6, and 10.)
Appellants also rely on synergistic results of using LAE and DIMPTS
shown in Tables 1 and 2 at pages 11 and 12 of the Specification to
demonstrate that the claimed invention imparts unexpected results as
indicated supra. However, Appellants have not shown that such results are
unexpected by one of ordinary skill in the art. In re Klosak, 455 F.2d 1077,
1080 (CCPA 1972) (The burden of showing unexpected results is on the
party asserting them.); In re Huellmantel, 324 F.2d 998, 1003 (CCPA 1963)
(Synergism must be unexpected, for it to support nonobviousness.) As
correctly found by the Examiner at page 11 of the Answer and supra, Urgell
teaches that “combinations of LAE with traditional antimicrobials have a
better activity than LAE or these antimicrobials by themselves.” In re
Skoner, 517 F.2d 947, 948 (CCPA 1975) (Expected results are evidence of
obviousness just as unexpected results are evidence of unobviousness).
Notwithstanding Appellants’ arguments to the contrary at pages 13
and 14 of the Appeal Brief, Urgell’s experiments shown in its Tables 1 and 2
support its statement regarding the synergistic effect of using LAE and a
common antimicrobial agent. Appellants’ arguments at pages 13 and 14 of
the Appeal Brief relating to Urgell’s experiments conveniently ignore the
amounts of the antimicrobial agent (triclosan) employed in the compared
samples. In particular, Urgell shows a better antimicrobial activity for
sample 8 having a small amount of a cationic surfactant (LAE) than sample
2 having no LAE even though sample 8 employed only 50% of the amount
of the same antimicrobial agent, triclosan, used in sample 2. (See pp. 8-9,
Tables 1 and 2.)
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As also correctly found by the Examiner at page 10 of the
Specification, Appellants have not shown that the showing in the
Specification is reasonably commensurate in scope with the degree of
protection sought by the claims on appeal. While the showing is limited to
using particular ratios and amounts of LAE and DIMPTS to obtain
synergistic results, the claims are not so limited. See, e.g., In re Harris, 409
F.3d 1339, 1344 (Fed. Cir. 2005) (“Even assuming that the results were
unexpected, Harris needed to show results covering the scope of the claimed
range. Alternatively Harris needed to narrow the claims.”); In re Greenfield,
571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a small
number of) species gives unexpected results is inadequate proof, for ‘it is the
view of this court that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.’”) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)).
Accordingly, based on the reasons set forth in the Answer and above,
we determine that the preponderance of evidence weighs most heavily in
favor of obviousness of the subject matter recited in claims 4 through 6 and
10 through 12 within the meaning of 35 U.S.C. § 103(a).
II. OBVIOUSNESS-TYPE DOUBLE PATENTING
Appellants do not dispute that the claims of Ming would have
suggested an antimicrobial composition containing LAE and a common
antimicrobial agent, such as sulfones, and a medical device having such
antimicrobial composition. Appellants rely on the same arguments directed
to Ghosh and unexpected results in the context of the above obviousness
rejections (App. Br. 12). Thus, based on the findings set forth above
regarding Ghosh and unexpected result, we concur with the Examiner that
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the preponderance of evidence supports the Examiner’s determination that it
would have been obvious to use DIMPTS (diiodomethyle-p-tolylsulfone) as
the common antimicrobial agent of the antimicrobial composition recited in
the claims of Ming.

ORDER
In view of the foregoing, it is
ORDERED that the decision of the Examiner to reject claims 4
through 6 under 35 U.S.C. § 103(a) as unpatentable over Urgell in view of
Ghosh is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject
claims 4 through 6 and 10 through 12 under 35 U.S.C. § 103(a) as
unpatentable over Ghosh in view of Urgell is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject
claims 4 through 6 and 10 through 12 provisionally on the ground of
nonstatutory obviousness-type double patenting as unpatentable over THE
claims of Ming in view of Ghosh is AFFIRMED; and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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