Ex Parte Premachandran et al

Patent Trials and Appeals Board

May 15, 2019

13885614 - (D) (P.T.A.B. May. 15, 2019)

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.
13/885,614 06/11/2013 Raman Premachandran 3403USPCT 1067
67749 7590
Ashland LLC
WILLIAM J. DAVIS, ESQ.
1005 U.S. 202/206
Bridgewater, NJ 08807
05/17/2019 EXAMINER
HELM, CARALYNNE E
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
05/17/2019 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):
ntietcheu @ ashland.com
wdavis@ashland.com
schen@ashland.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMAN PREMACHANDRAN, NAJEEB H. NAJEHAKIMI,
KAREN WINKOWSKI, and ANDREA WINGENFELD
Appeal 2018-001142
Application 13/885,614
Technology Center 1600
Before JEFFREY N. FREDMAN, RYAN H. FLAX, and DAVID COTTA,
Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1,2 under 35 U.S.C. § 134 involving claims to an
aqueous alkaline, stable and highly-concentrated preservative composition.
The Examiner rejected the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as ISP INVESTMENTS INC.
(Br. 3).
2 We have considered the Specification of May 15, 2013 (“Spec.”); Final
Office Action ofNov. 18, 2015 (“Final Action”); Appeal Brief of Oct. 18,
2016 (“Br.”); and Examiner’s Answer of Jan. 30, 2017 (“Ans.”).
Appeal 2018-001142
Application 13/885,614
Statement of the Case
Background
[PJersonal care products . . . often include a variety of natural
and synthetic ingredients used to fulfill the aesthetic desires of
the customer. Unfortunately, these ingredients also provide pH,
moisture, and nutritional conditions that support microbial
growth. Due to this potential vulnerability, many personal care
products employ natural or synthesized preservatives to prevent
spoilage.
(Spec. 12). “The present application relates to a concentrated preservative
composition, and more particularly, to an aqueous, color stable, highly-
concentrated preservative composition comprising dehydroacetic acid
(DHA) and 2-methyl-4-isothiazolin-3-one (MIT).” {id. 11).
The Claims
Claims 1, 4—17, 19, 22, and 23 are on appeal. Claim 1 is
representative and reads as follows:
1. An aqueous alkaline, stable and highly-concentrated
preservative composition comprising:
i. about 6 to 50wt% of a dehydroacetic acid (DHA) or a salt
thereof;
ii. about 1 to 20wt% of a 2-methyl-4-isothiazolin-3-one
(MIT);
iii. about 0.1 to 10wt% of at least one block copolymer
selected from the group consisting of tetra-fimctional block
copolymer comprising at least one polyethyleneoxide
(PEO) and polypropyleneoxide (PPO), wherein the
molecular weight of block copolymer is from about 1000 to
about 100000;
iv. optionally, about 0.01 to 5.0wt% of at least one
sulfosuccinate surfactant;
v. optionally, about 0.01 to 5.0wt% of at least one
sequestering agent; and
vi. optionally, about 0.01 to 5.0wt% of at least one additive.
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Application 13/885,614
The Rejections
A. The Examiner rejected claims 1, 4—17, 19, and 23 under 35 U.S.C.
§ 103(a) as obvious over Shultz,3 Wingenfeld,4 Levy,5 and Lee6 (Linal Act.
4—8).
B. The Examiner rejected claims 8 and 22 under 35 U.S.C. § 103(a) as
obvious over Shultz, Wingenfeld, Levy, Lee, and Ritter7 (Linal Act. 8—9).
A. 35 U.S.C. § 103(a) over Shultz, Wingenfeld, Levy, and Lee
The Examiner finds Schulz teaches “a liquid alkaline composition
composed of preservatives . . . Both 2-methyl-4-isothiazolin-3-one and
dehydroacetic acid are envisioned preservatives where their proportion is
envisioned at up to 5 wt%” (Linal Act. 4—5). The Examiner finds Schulz
teaches “ethylene oxide/propylene oxide block copolymers with a molecular
weight between 500 and 15,000 as well as sulfosuccinates present at up to 1
wt%” (Linal Act. 5).
The Examiner finds an “explicit example of each composition
embraced by or obvious from the teachings of Shultz et al. is not provided”
(Linal Act. 5).
The Examiner finds Wingenfeld teaches a combination of
antimicrobial compounds that may be at alkaline pH including “2-methyl-4-
isothiazolin-3-one at 0.1 to 20 wt% and dehydroacetic acid at 0.1 to 10 wt%
along with phenylethanol at 0 to 99.9 wt% and glycol ether” (Linal Act. 5).
3 Schulz, US 2002/0100893 Al, published Aug. 1, 2002.
4 Wingenfeld et al., US 2009/0143341 Al, published June 4, 2009.
5 Levy et al., US 2006/0106024 Al, published May 18, 2006.
6 Lee, US 5,780,283, published July 14, 1998.
7 Ritter, US 2006/0265814 Al, published Nov. 30, 2006.
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Application 13/885,614
The Examiner finds Levy teaches “synergistic microbicidal compositions
where a combination of dehydroacetic acid and 2-methyl-4isothiazolin-3-
one is taught” that may include surfactants and sulfosuccinates (Final Act.
5—6). The Examiner finds Lee teaches PEO glycols copolymers such as
“Tetronic® 1304” (Final Act. 6).
The Examiner finds it would have been obvious to:
combine both dehydroacetic acid and 2-methyl-4isothiazolin-3-
one as the preservative components in the composition of
Shultz et al. because 1) they were envisioned by Shultz et al., 2)
they were generally known for use in combination and 3) their
combination was known to yield a synergistic antimicrobial
effect. Since multiple surfactants are envisioned by Shultz et
al., the inclusion of both disodium dioctyl sulfosuccinate and an
ethylene oxide/propylene oxide block copolymers with a
molecular weight between 500 and 15,000 within the given
range of concentration proportions would have been obvious
based upon this guidance.
(Final Act. 6). The Examiner also finds the range would have been obvious
because “proportions of dehydroacetic acid and 2-methyl-4isothiazolin-3-
one as well as the surfactants overlap with those claimed” (Final Act. 7).
The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner’s conclusion that the prior art
render the claims obvious?
Findings of Fact (FF)
1. Wingenfeld teaches “a microbicidal composition which
comprises a mixture of at least two components, the first component being
2-methyl-3-isothiazolone (MIT)” (Wingenfeld ]f 1).
2. Wingenfeld teaches “the inventive composition is usable, for
example, in the pH range from 4 to 10” (Wingenfeld 113).
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Application 13/885,614
3. Wingenfeld teaches an exemplary composition containing MIT
and dehydroacetic acid termed sample 8 as reproduced below:
MIT 5 0.1 ... 3)
Dekydio&eeike acid s 0.1 .. . 10
PheayletM&ol 82 0 , . . 99.9
PPCL2~rne%J ether 0... .99.9
1,2-propyleBe glycol 0 „ ,. 99.0
Water 5 0 „ .. 99.9
(Wingenfeld 142).
4. Levy teaches an “antimicrobial composition [that] comprises 2-
methyl-4-isothiazolin-3-one and dehydroacetic acid or its salts, preferably
sodium dehydroacetate” (Levy 135).
5. Levy teaches “[w]hen a microbicide component is formulated
in a solvent, the formulation may optionally contain surfactants” (Levy
137).
6. Levy teaches “[s]uch dispersions can contain adjuvants, for
example . . . sulfosuccinates” (Levy 138). Levy further teaches that the
composition may comprise EDTA (Levy 116).
7. Lee teaches surfactants including:
A suitable polyoxyalkylene glycol ether block-copolymer that
may be used according to the present invention contains a
hydrophobe based on a hydrocarbon moiety of an aliphatic
monohydric alcohol containing from 1 to about 8 carbon atoms,
where the hydrocarbon moiety has attached thereto through an
ether oxygen linkage, a heteric mixed chain of oxyethylene and
1,2-oxypropylene groups. The weight ratio of oxyethylene
groups to 1,2-oxypropylene groups in the hydrophobe is from
about 5:95 to about 15:85 and the average molecular weight of
the hydrophobe is from about 1,000 to about 2,000.
(Lee 9:29-42).
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Application 13/885,614
8. Lee teaches specific surfactants including “Tetronic® 1304 .. .
[that] has an average molecular weight of about 10,500” (Lee 10:17—19).
9. Shultz teaches a “liquid formulation may also inhibit or retard
generation of odiferous substances by containing a preservative, such as an
antimicrobial agent” (Shultz 110).
10. Shultz teaches “an aqueous solution (or emulsion). . . [that]
may also include one or more preservatives (to include one or more
antimicrobial formulations), an alkali metal carbonate or bicarbonate, one or
more surfactants, and/or an alkali metal hydroxide” (Shultz 115).
11. Shultz teaches that “[s]uitable preservatives for use in the
present formulation include . . . 2-methyl-4-isothiazolin-3-one . . .
[d]ehydroacetic Acid” (Shultz || 17, 22, 42).
12. Shultz teaches a “variety of surfactants may be useful”
including “[e]thylene oxide/propylene oxide (eo/po) block copolymers with
average molecular weights of between 500 and 15,000” and “disodium
dioctyl sulfosuccinate” (Shultz || 50, 61, 87).
13. Shultz teaches “[a]n alkaline pH may be advantageous in
promoting penetration or coverage of the substance being treated” (Shultz
18).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
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Analysis
We adopt the Examiner’s findings of fact and conclusion of law (see
Final Act. 3—8, FF 1—13) and agree that the combination of Wingenfeld,
Fevy, Fee, and Shultz renders the claims obvious. We address Appellants’
arguments below.
Appellants contend that because Shultz “is directed to providing a
long lasting, odor-suppressing liquid formulation,” “one of ordinary skill in
the art would be unlikely to consult the Shultz et al patent in developing an
aqueous alkaline, stable and highly-concentrated preservative composition
comprising DHA and MIT” (Br. 11). Appellants specifically assert that the
“preamble recitation ‘An aqueous alkaline, stable and highly-concentrated
preservative composition’ limits the present claims” (Br. 14; emphasis in
original).
We find this argument unpersuasive because we do not agree with the
Appellants interpretation of the preamble phrase in claim 1 of “[a]n aqueous
alkaline, stable and highly-concentrated preservative composition.” That is,
while this phrase does require a composition that has water (aqueous), with a
pH greater than 7 (alkaline), neither the relative terms “stable” and “highly-
concentrated” or the intended use recitation of “preservative” impose any
particular structural requirements on the composition. Here, the Examiner
provided specific teachings and reasons to form the composition of claim 1,
irrespective of the use recited by the preamble.
If, however, the body of the claim fully and intrinsically sets
forth the complete invention, including all of its limitations, and
the preamble offers no distinct definition of any of the claimed
invention’s limitations, but rather merely states, for example,
the purpose or intended use of the invention, then the preamble
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Application 13/885,614
is of no significance to claim construction because it cannot be
said to constitute or explain a claim limitation.
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999). In claim 1, the term “stable and highly-concentrated preservative
composition” is an intended use of the composition that does not impose any
specific limitation on the composition itself, and is therefore not limiting.
Appellants contend:
Merely stating that one of the hundreds of permutations or
possible compounds disclosed by Shultz would lead a person of
ordinary skill in the art to Appellants’ claimed composition
comprising specific preservative compounds (DHA and MIT),
Polymer (EO/PO tetra block copolymer), and surfactants
(sulfosuccinate) without making explicit or clearly articulating
the rationale for a person of ordinary skill in the art to select
said DHA and MIT and etc., cannot support a finding of
obviousness.
(Br. 12).
We find this argument unpersuasive because “picking and choosing
may be entirely proper in the making of a 103, obviousness rejection.” In re
Arkley, 455 F.2d 586, 587 (CCPA 1972). Here, Shultz teaches that
formulations may include antimicrobials including DHA and MIT as well as
surfactants including EP/PO tetra block copolymers and dioctyl
sulfosuccinate (FF 9—13). Shultz, in combination with Wingenfeld and Levy
who also teach compositions with MIT and DHA as well as surfactants like
polyoxyethylene glycol block copolymers and adjuvants like sulfosuccinate,
demonstrate that the combination of these elements was routine in the prior
art (FF 1—8). Consequently, KSR contradicts Appellants’ obviousness
position because “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
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Application 13/885,614
predictable results.” KSR, 550 U.S. at 416. Appellants provide no evidence
of any secondary considerations such as unexpected results that would
require reevaluation of the obviousness position.
Appellants contend that the “Examiner provides no explanation or
reason why a person of ordinary skill in the art would apply the teachings of
Wingenfeld to Shultz because Shultz deals with long lasting, odor­
suppressing liquid formulation, and Shultz and Wingenfeld are thus directed
to fundamentally two disparate inventions” (Br. 12).
We find this argument unpersuasive because the Examiner explains
that Shultz teaches “the inclusion of preservatives to stop or inhibit the
growth of microorganisms that produce odiferous substances (see paragraph
10). The teachings of Wingenfeld are directly related to this purpose in their
focus on a pair of preservative compounds, also envisioned by Shultz, that
act synergistically against microorganisms” (Ans. 5). And indeed, Shultz
does directly suggest a formulation “containing a preservative, such as an
antimicrobial agent” (FF 9) and Wingenfeld teaches “a microbicidal
composition which comprises . . . MIT” (FF 1) with an example using MIT
and DHA (FF 3). Thus, Shultz, Wingenfeld, and Fevy are all in the same
field of endeavor, antimicrobial compositions, and directed to the same
concerns of inhibiting microbial growth (FF 1, 4, 9).
Appellants contend that “[tjetronics of Fee is specifically limited to
[ejnzyme stabilization, and do not teach about appellants’ specific tetra
functional polymer-surfactant complex or tetra-functional polymer
employed to provide stable combination of DHA and MIT in an alkaline
medium” (Br. 13).
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We find this argument unpersuasive because Shultz and Levy
expressly teach the inclusion of surfactants into antimicrobial compositions,
including ethylene oxide block copolymer surfactants (FF 5, 12). The
Tetronic 1304 surfactant of Lee is simply a known equivalent surfactant to
those disclosed by Shultz and Levy (FF 8). An ordinary artisan would have
found it obvious to incorporate such a known equivalent into the obvious
composition consistent with claim 1, which “recites a combination of
elements that were all known in the prior art, and all that was required to
obtain that combination was to substitute one well-known . . . agent for
another.” Wm. WrigleyJr. Co. v. Cadbury Adams USALLC, 683 F.3d 1356,
1364 (Fed. Cir. 2012).
Appellants contend the Examiner’s
motivation fails to describe why a person of ordinary skill in the
art would look to the teachings of Levy and pick the additives
such as thickeners, dispersants, solvents, and sequestrants for
use in Shultz’s odor-absorbing composition comprising
preservative, alkali metal salt and activated carbon to arrive at
Appellants’ claimed invention.
(Br. 13).
We find this argument unpersuasive for several reasons. First, as
already discussed above, just as Wingenfeld and Levy are directed to
microbicidal compositions (FF 1, 4), Shultz also teaches an “aqueous
solution (or emulsion). . . [that] may also include one or more preservatives
(to include one or more antimicrobial formulations)” (FF 10). Thus, all of
these references share an interest in antimicrobial compositions.
Second, claim 1 states that the sequestering agent and the additive are
“optional” and therefore these elements are not required limitations. See In
re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Appellant’s arguments fail
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from the outset because . . . they are not based on limitations appearing in
the claims.”)
Third, Levy also teaches the use of “sequestering agents” in
antimicrobial compositions including some listed in the Specification (see
Spec. 151) such as EDTA (FF 6). As to “additives”, this term reasonably
encompasses the presence of any other component, since the Specification
states “[ejxamples of specific additives include, but are not limited to”
particular general types of components (see Spec. 1 59).
Appellants contend that
it is only through improper hindsight that the Examiner is able
to reconstruct the appellants’ invention based on using
appellants' disclosure as a template. The mere fact that there is
an overlap between some of the components in the
compositions disclosed in each patent fails to satisfy the
requirement for some rational basis to support the finding of
obviousness.
(Br. 14).
While we are aware that hindsight bias may plague determinations of
obviousness, Graham v. John Deere Co., 383 U.S. 1, 36 (1966), we are also
mindful that the Supreme Court has clearly stated that the “combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 550 U.S. at 416. Here,
the reason to modify compositions that already contain the antimicrobial
components MIT and DHA with surfactants and sulfosuccinate is based on
Shulz’ suggestion to use surfactants and sulfosuccinate in a final
composition (FF 12) and Fevy’s teaching that antimicrobial formulations
may include surfactants and sulfosuccinate adjuvants (FF 5, 6). Thus, these
were known components used in known ways in known compositions.
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Appellants do not identify any secondary considerations or any
unpredictability in the combination of these elements.
Conclusion of Law
A preponderance of the evidence of record supports the Examiner’s
conclusion that the prior art render the claims obvious.
B. 35 U.S.C. § 103(a) over Shultz, Wingenfeld, Levy, Lee, and Ritter
While Appellants provide separate headings for claims 8 and 22,
Appellants do not identify specific limitations in either claim 8 or claim 22
that are unobvious over the cited prior art with the further teachings of
Ritter. Instead, Appellants mostly rely upon their previous arguments,
which we found insufficient to overcome the underlying rejection of claim 1
over Shultz, Wingenfeld, Levy, and Lee.
Appellants do make one additional argument that “the aqueous
alkaline highly concentrated preservative composition comprising DHA
(50wt %), MIT (20wt %) and tetra-fimctional block copolymer is capable of
preventing instability towards color when these two compounds (DHA and
MIT) are formulated together in an alkaline medium. The unexpected
results overcome any prima facie case of obviousness” (Br. 16).
We find the evidence insufficient to demonstrate unexpected results
for at least three reasons, first, Appellants must provide evidence
explaining why the results are, in fact, unexpected. Currently, Appellants
only have attorney argument supporting this point (Br. 16). See In re Soni,
54 L.3d 746, 750 (Led. Cir. 1995) (“It is well settled that unexpected results
must be established by factual evidence. Mere argument or conclusory
statements . . . [do] not suffice.”) Second, unexpected results must be
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“commensurate in scope with the degree of protection sought by the claimed
subject matter.” In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). Here,
none of the claims is limited to 50% DHA and 20% MIT, but rather each
encompasses broader ranges such as amounts ranging from 6 to 50% for
DHA and 1 to 20% for MIT in claim 1. Third, Appellants provide no
comparison to the closest prior art of either Levy or Wingenfeld, which
teach exemplary compositions comprising MIT and DHA, in order to
demonstrate that any result in the Specification is, in fact, unexpected. See
In re Baxter TravenolLabs., 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.”).
We therefore agree with the Examiner’s sound, fact based reasoning
that claims 8 and 22 would have been obvious over Shultz, Wingenfeld,
Levy, Lee, and Ritter (see Final Act. 8—9).
SUMMARY
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Shultz, Wingenfeld, Levy, and Lee. Claims 4—17, 19, and 23
fall with claim 1.
We affirm the rejection of claims 8 and 22 under 35 U.S.C. § 103(a)
as obvious over Shultz, Wingenfeld, Levy, Lee, and Ritter.
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
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