Ex Parte Myntti

Patent Trial and Appeal Board

Sep 29, 2016

13468767 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/468,767 05/10/2012 Matthew F. MYNTTI
124743 7590 09/30/2016
Next Science, LLC c/o
Zollinger & Burleson Ltd.
Post Office Box 2368
North Canton, OH 44720-0368
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.
MDOOliOfUSg 8312
EXAMINER
ZHANG, YANZHI
ART UNIT PAPER NUMBER
1617
MAILDATE DELIVERY MODE
09/30/2016 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW F. MYNTTI
Appeal2014-007100
Application 13/468,767
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
RICHARD J. SMITH, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to an
antimicrobial solid. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
Statement of the Case
Background
"Due to the protection afforded by a macromolecular matrix (biofilm)
or shell (spore) and their down-regulated state, bacteria in biofilm- and spore
states are very difficult to treat" (Spec. ,-i 7). "Most water filtration is
1 Appellant identifies the Real Party in Interest as Next Science,
LLC (see App. Br. 3).
Appeal2014-007100
Application 13/468,767
accomplished using filters made of materials such as paper, fiber, and
synthetic fibers" (Spec. ii 9). "These membranes are effective at keeping
bacteria from passing through them into a clean water reservoir, but they do
not weaken, disable or kill the bacteria. This latter characteristics make such
membranes susceptible to bacterial growth, thereby increasing the risks of
contamination with biofilms and spore-forming bacteria" (Spec. ii 9).
The Claims
Claims 1-3, 7, 11-21, and 23-27 are on appeal. Claim 1 is
representative and reads as follows:
1. An antimicrobial solid comprising a hydrophilic
crosslinked polymer network that is an amorphous, spongy
solid which comprises some pores having diameters of at least
10 µm and some pores having diameters of less than about 0. 85
µm and one or more ionic surfactants entrained in said spongy
solid network.
The issues
A. The Examiner rejected claims 1-3, 7, 11, 14, 15, 18-20, 23-25, and
27 under 35 U.S.C. § 103(a) as obvious over Chen2 and Myntti3 (Ans. 2-5).
B. The Examiner rejected claims 12, 13, 21, and 26 under 35 U.S.C.
§ 103(a) as obvious over Chen, Myntti, and Rubner4 (Ans. 5-6).
C. The Examiner rejected claims 16 and 17 under 35 U.S.C. § 103(a) as
obvious over Chen, Myntti, and Kiser5 (Ans. 6-7).
2 Chen et al., US 2003/0220039 Al, published Nov. 27, 2003 ("Chen").
3 Myntti, M., US 2010/0086576 Al, published Apr. 8, 2010 ("Myntti").
4 Rubner et al., US 2005/0191430 Al, published Sept. 1, 2005 ("Rubner").
5 Kiser et al., US 6,521,431 Bl, issued Feb. 18, 2003 ("Kiser").
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Appeal2014-007100
Application 13/468,767
A. 35 U.S.C. § 103(a) over Chen and Myntti
The Examiner finds that Chen teaches "a structuring composition
comprises a removable phase which provides void space in the product and a
binder material and optionally other non-gaseous components such as
surfactants, antimicrobial agents" where "the fibrous structure (made from
a polymer) is filled with hydrophilic open-celled foams with the cell size
substantially smaller than the fibrous pores" (Ans. 2). The Examiner
acknowledges that Chen does "not explicitly disclose the surfactants are
cationic and anionic" (Ans. 3).
The Examiner finds that Myntti teaches "useful anionic surfactants
and cationic surfactants" and that "the antimicrobial composition, in addition
to being lethal toward a wide spectrum of gram positive and gram negative
bacteria, exhibits lethality toward other microbes such as viruses, fungi,
molds, yeasts, and bacterial spores" (Ans. 3).
The Examiner finds the combination of Chen and Myntti obvious
"because each structural element by Myntti et al. is designed organically to
lethality toward a wide spectrum of gram positive and gram negative
bacteria as well as viruses, fungi and etc., as required by Chen" (Ans. 4).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that Chen and Myntti render claim
1 obvious?
Findings of Fact
1. The Specification teaches "[ o ]ften, pores less than -0.22 µm,
less than -0.45 µm, less than -0.80 µm, and less than -0.85 µmare desirable
(based on the diameters of endotoxins, bacteria, and spores); for these and
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Appeal2014-007100
Application 13/468,767
other applications, a solid material with at least some larger pores (e.g., less
than -1, 2, 5, 10, 50, or 100 µm) can be used" (Spec. ii 34).
2. Figure 4 of Chen is reproduced below:
32
.... ,,,... ....
rru .. "'
"FIG. 4 depicts another embodiment based on FIG. 2 in which
the foam that served to structure the fibers has not collapsed,
but remains partly in tact as a structural component of the
absorbent fibrous structure 30 occupying a significant portion
of the void space 34 in the cells defined by the fibers 32 in
fibrous struts. Here are depicted hollow spherical shells 38 of a
polymeric foamable material from the structuring composition,
the shells having openings 39 such that they are substantially
open celled and the void spaces contained therein are in fluid
communication with the void spaces defined by the fibrous
struts.
(Chen ii 234.)
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Appeal2014-007100
Application 13/468,767
3. Chen teaches that "[m]icrospheres can be about 10 microns to 1
mm in diameter and typically have a shell thickness 1 to about 5 microns,
while macrospheres have diameters greater than about l mm" (Chen 155).
4. Chen teaches that the "absolute diameter of the cells defined by
the foamable binder material can be about 3 mm or less; specifically about 1
mm or less, more specifically about 0.3 mm or less, still more specifically
about 0.1 mm or less, and most specifically from about 0.02 mm to about 0.2
mm" (Chen ii 235).
5. Chen teaches that the "composition comprises a removable
phase which provides void space in the product and a binder material,
optionally with a liquid carrier phase and optionally with other non-gaseous
components such as surfactants ... antimicrobial agents ... to achieve the
desired functional characteristics of the absorbent fibrous structure" (Chen
ii 86).
6. Myntti teaches a "antimicrobial composition, which is adapted
for use against bacteria in a biofilm that includes a macromolecular matrix,
can consist essentially of water, dissociation product(s) of one or more
organic acids, and at least 1 % by weight of one or more surfactants" (Myntti
ii 10).
7. Myntti teaches that "[p ]otentially useful anionic surfactants
include, but are not limited to, sodium chenodeoxycholate, N-
lauroylsarcosine sodium salt ... Potentially useful nonionic surfactants
include, but are not limited to, polyoxyethyleneglycol dodecyl ether"
(Myntti ii 45).
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Appeal2014-007100
Application 13/468,767
Principles of Law
"[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). This rule is
limited to cases in which the optimized variable is a "result-effective
variable." In re Antonie, 559 F.2d 618, 620 (CCPA 1977).
Analysis
The Examiner finds that "selection of pore size is not a patentable
modification in the absence of unobvious results . . . The size of the particle
size is clearly a result effective parameter that a person of ordinary skill in
the art would routinely optimize" (Ans. 9).
Appellant contends that:
This discussion ignores one important point: neither D 1 nor D2
has been shown to teach any pore diameter that is less than
0.85 µm. To establish prima facie obviousness, each claim
limitation must be shown to be taught or suggested in the cited
prior art. Rather than explain where D 1 even suggests the
lower end of the bimodal distribution of pore sizes, the
Examiner's Answer merely waves away the issue by resort to
the now well-worn "optimization" justification.
(Reply Br. 10.)
We find that Appellant has the better position. While Chen clearly
teaches pore sizes of 10 microns or greater (FF 3), the Examiner does not
identify a teaching in Chen or the other cited prior art for two different pore
size ranges. Thus, even if we accept the Examiner's optimization rationale
for a first set of pores with a size range of at least 10 µm, a value that
overlaps the teachings of Chen (FF 3), the Examiner has not provided a
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Application 13/468,767
reason to create a second set of pores that are "less than about 0.85 µm" as
required by claim 1. That is, the Examiner has not established that the pore
size of a second set of pores is a "results optimizable variable" because the
Examiner provides no reason or evidence to form a second set of pores
distinct in size from the first set of pores. Without such evidence or
reasoning, we are constrained to reverse this rejection.
Conclusion of Law
The evidence of record does not support the Examiner's conclusion
that Chen and Myntti render claim 1 obvious.
B. and C. 35 U.S.C. § 103(a)
These rejections rely upon the underlying obviousness rejection over
Chen and Myntti. Having reversed that rejection, we also necessarily
reverse the further obviousness rejections over Rubner and Kiser because the
Examiner does not identify teachings of a second set of pores in either of
these references.
SUMMARY
In summary, we reverse the rejection of claims 1-3, 7, 11, 14, 15,
18-20, 23-25, and 27 under 35 U.S.C. § 103(a) as obvious over Chen and
Myntti.
We reverse the rejection of claims 12, 13, 21, and 26 under 35 U.S.C.
§ 103(a) as obvious over Chen, Myntti, and Rubner.
We reverse the rejection of claims 16 and 17 under 35 U.S.C. § 103(a)
as obvious over Chen, Myntti, and Kiser.
REVERSED
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