Ex Parte Pohlman

Patent Trial and Appeal Board

Jul 12, 2017

12731403 (P.T.A.B. Jul. 12, 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.
12/731,403 03/25/2010 John Pohlman 68280 US NP 1071
109 7590 07/14/2017
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
PO, MING CHEUNG
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
07/14/2017 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN POHLMAN
Appeal 2016-007996
Application 12/731,4031
Technology Center 1700
Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and
AVELYN M. ROSS, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1 and 9-14 under 35 U.S.C. § 103(a) over Diehl2
view of Hsu3 and Kenneth.4 We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 The Dow Chemical Company is identified as the real party in interest.
Appeal Br. 4.
2 Diehl et al., US 2004/0152748 Al, published August 5, 2004.
3 Hsu, US 5,489,588, issued February 6, 1996.
4 Kenneth Karsten, CA 982475, issued January 27, 1976; we cite the
reference as Kenneth in accord with the record.
Appeal 2016-007996
Application 12/731,403
THE INVENTION
The subject matter of the claims on appeal relates to a biocidal
composition comprising a biocidal N-(2-nitroalkyl) morpholine compound
together with an aromatic alcohol. Specification filed March 25, 2010
(“Spec.”), Abstract.
Claim 1 is representative.
A cold temperature stable biocidal composition
comprising:
from 38 to 44 weight percent of a mixture of N-(2-
nitrobutyl)morpholine and 2-ethyl-2-nitro-l,3-
dimorpholinopropane; and
from 62 to 56 weight percent of phenoxyethanol,
wherein the weight percent is based on the total weight of
the mixture of N-(2-nitrobutyl)morpholine and 2-ethyl-2-nitro-
1,3-dimorpholinopropane and the phenoxy ethanol present in the
composition.
Appeal Brief filed March 4, 2016 (“Appeal Br.”) (Claims App.), 10.
DISCUSSION
We have reviewed the grounds of rejection set forth by the Examiner,
Appellant’s arguments and proffered evidence, and the Examiner’s
response.5 On this record, we are unpersuaded that the Examiner erred
reversibly and we determine that a preponderance of the evidence supports
the Examiner’s conclusion of obviousness.
The Examiner relies, inter alia, on Diehl’s teaching of an
antimicrobial composition based on the synergistic combination of the
5 We refer to the Specification, the Final Office Action issued October 2,
2015 (“Final Act.”), Appellant’s Appeal Brief, and the Examiner’s Answer
issued July 1, 2016 (“Ans.”).
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Application 12/731,403
biocides 2-methyl-3-isothiazolone and phenoxyethanol. Ans. 2; Diehl,
Abstract.
The Examiner relies, inter alia, on Hsu’s teaching of synergistic
antimicrobial compositions including 2-methyl-3-isothiazolone with N-(2-
nitrobutyl)morpholine. Ans. 2-3 (citing Hsu, col. 1,11. 14-29, 40-52).
The Examiner relies, inter alia, on Kenneth’s teaching that a mixture
of N-(2-nitrobutyl)morpholine and 2-nitro-2-ethyl-1,3 -dimorpholinopropane
can be used as a biocide and is as effective as N-(2-nitrobutyl)morpholine.
Ans. 3 (citing Kenneth 6,11. 5-30).
The Examiner concludes, inter alia, that one of ordinary skill in the
art would have found it obvious at the time of the invention to have included
in the composition of Diehl N-(2-nitrobutyl)morpholine to obtain the
synergistic effect taught by Hsu and further to have substituted a mixture of
N-(2-nitrobutyl)morpholine and 2-nitro-2-ethyl-1,3-dimorpholinopropane
for the N-(2-nitrobutyl)morpholine as taught by Kenneth. Ans. 3—4. The
Examiner further determines that the recited limitations as to the weight
percent of the mixture of N-(2-nitrobutyl)morpholine and 2-ethyl-2-nitro-
1,3-dimorpholinopropane and phenoxyethanol would have been within the
ambit of the skilled artisan through no more than routine experimentation.
Ans. 4. As to the recitation “cold temperature stable” in the preamble, the
Examiner finds, inter alia, that it is met as being a property of the
composition taught by the relied on combination. Ans. 6.
Appellant relies in the main on the contention that there is unexpected
synergy in the lower melting (freezing) point and improved antimicrobial
activity. Appeal Br. 7-8 (citing Spec. Examples 1-3). Example 1 is relied
on to contrast that the mixture of biocides (w/o phenoxyethanol) and
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Application 12/731,403
phenoxyethanol freeze under the conditions applied, but that the
combination according to the claims does not. Appeal Br. 7-8; Spec. 7,
11. 4-16. Examples 2 and 3 are relied on as showing “greater efficacy
against microorganisms than would be expected from the efficacies of the
morpholine compound [mixture] and aromatic alcohol individually.”
Appeal Br. 7. While not particularly cited by Appellant, Table 7 of the
Specification sets forth estimated synergy indices grounded on results from
Example 2 (Table 5). Spec. 10-11.
Appellant further contends that Diehl alone or in combination with
Hsu does not teach or suggest the claimed morpholines in the claimed
amounts and that it is not reasonable to expect synergistic effects,
particularly those as to biocidal effect because “[ajdding or substituting
components in a biological system has unpredictable effects because
mechanisms of action in such systems are complicated” and “[m]any biocide
combinations do not exhibit synergy, and many compounds may exhibit
synergy with one biocide but not another.” Appeal Br. 8.
On this record, we are not persuaded that the Examiner erred in
concluding that one of ordinary skill in the art, armed with the cited
references, at the time of the invention, would have been led to the claimed
composition within the meaning of 35 U.S.C. § 103(a). To the extent
Appellant contends a lack of teaching or suggestion of the specific
compounds in the specific amounts recited in the claims, we discern no
cogent argument contesting the Examiner’s determination grounded on
Diehl in view of Hsu and Kenneth as set forth in the rejection. In re Keller,
642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness ... is what the
combined teaching of the references would have suggested to those of
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Application 12/731,403
ordinary skill in the art.”); cf. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art. Because Lovin did not provide such
arguments, the Board did not err in refusing to separately address claims 2—
15, 17-24, and 31-34.”).
Having not been persuaded of reversible error in the Examiner’s
prima facie case of unpatentability, we turn to Appellant’s reliance on the
lower melting (freezing) point and improved antimicrobial activity as
evidence of unexpected synergistic effects.
The burden of demonstrating unexpected results rests on the party
asserting them. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). It is well
settled that results must be established by factual evidence. In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“Mere argument or conclusory
statements in the specification does not suffice.”). Further, “[sjynergism, in
and of itself, is not conclusive in that synergism might be expected.” In re
Kollman, 595 F.2d 48, n.6 (CCPA 1979)). In addition, “objective evidence
of nonobviousness must be commensurate with the scope of the claims.” In
re Linder, 457, F.2d 506, 508 (CCPA 1972).
On this record, we are directed to no persuasive evidence or even a
statement in the Specification that the results were unexpected (see generally
Appeal Br.). See, e.g., Geisler, 116 F.3d at 1471 (“Geisler made no such
assertion [that results were unexpected] in his application. Nor did Geisler
submit any such statement through other evidentiary submissions, such as an
affidavit or declaration under Rule 132 .. . Instead, the only reference to
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Application 12/731,403
unexpected results was a statement by Geisler’s counsel. . . that Geisler’s
results were ‘surprising.’”).
As to the freezing test, the cited evidence in Example 1 in the
Specification (Spec. 7,11. 4-16) merely constitutes evidence of differences in
freezing behavior of the inventive sample relative to comparative samples
lacking phenoxyethanol and consisting of phenoxyethanol, not that it was
unexpected, and Appellant’s argument that it is was unexpected is not
evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s
argument. . . cannot take the place of evidence.”).
As to the improved antimicrobial activity, the Specification sets forth
in Example 3 that the inventive compositions have a synergistic effect and,
based on data from Example 2, calculates synergy index values according to
a disclosed formula, which values are set forth in Table 7. Spec. 8-11. The
Specification states that “[t]he results in Table 7 illustrate that there is a
synergistic effect between NMB/ENDM and phenoxyethanol.” Spec. 11.
Appellant contends that the Examiner has failed to establish any
sound basis for an expected synergistic effect in the claimed combination
(Appeal Br. 8), but provides neither persuasive evidence that the synergistic
effect would not have been expected, nor persuasive evidence that the
proffered results are adequate to establish a surprising, unexpected result. In
particular, on this record, we are directed to neither a composition that
includes both phenoxyethanol and an antimicrobial agent other than the
morpholine mixture recited in the claims, nor to any persuasive evidence
that phenoxyethanol does not have a synergistic effect with antimicrobial
agents generally. See generally Appeal Br.
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Further, as to the proffered synergy index values, on this record, there
is no adequate explanation supported with evidence as to their significance,
including whether they would be recognized by one of skill in the art to
establish the existence of a synergistic effect between the compositions of
Sample A (morpholinos) and phenoxyethanol. See generally Appeal Br.
Still further, because claim 1 merely recites the percent weight range
of a mixture of N-(2-nitrobutyl)morpholine and 2-ethyl-2-nitro-l,3-
dimorpholinopropane, but does not define the relative amounts of these
components in the mixture, the claim encompasses compositions with a wide
range in the percentages of these two compounds. See claim 1. The
experimental data proffered, however, is limited to N-(2-nitrobutyl)-
morpholine and 2-ethyl-2-nitro-l,3-dimorpholinopropane in a ratio of
16.2:1. Spec. 6,11. 10-12, 16-17 (describing Samples A and B used in
Examples 1-3). Appellant fails further to provide any persuasive evidence
or argument why the proffer of such limited evidence should suffice. See
generally Appeal Br. The evidence is, accordingly, inadequate to rebut the
prima facie case. See 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 claim.”); see also Lindner, 457, F.2d at 508.
For these reasons, we find Appellant has not met the burden of
demonstrating unexpected results to rebut the prima facie case.
On balance, thus, the evidence of record weighs most heavily in favor
of the Examiner’s conclusion of obviousness.
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DECISION
The Examiner’s decision rejecting claims 1 and 9-14 is 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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