Ex Parte Unhoch

Patent Trial and Appeal Board

Aug 22, 2016

12806073 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/806,073 08/05/2010 Michael J. Unhoch
12596 7590 08/24/2016
LUCAS & MERCANTI, LLP
30 BROAD STREET
21st FLOOR
NEW YORK, NY 10004
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.
419A-103260-US 9090
EXAMINER
STELLING, LUCAS A
ART UNIT PAPER NUMBER
1773
NOTIFICATION DATE DELIVERY MODE
08/24/2016 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):
info@lmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. UNHOCH
Appeal2015-002420
Application 12/806,073
Technology Center 1700
Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
JEFFREY R. SNAY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 20-28, 30-41, 43, 44, 47, and 48 under
35 U.S.C. § 103(a) as unpatentable over at least Unhoch et al. (US
2008/0142453 Al; June 19, 2008) ("Unhoch '453"). The Examiner also
relied on Unhoch et al. (US 6,811,711 B2; Nov. 2, 2004) ("Unhoch '711") in
the rejection of dependent claim 39 (Final Action 7).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is stated to be "ARCH CHEMICALS, INC." (Br.
1 ).
Appeal2015-002420
Application 12/806,073
Claim 20 is illustrative of the subject matter on appeal (emphasis
added to highlight key disputed limitation):
20. A method of stabilizing oxidizers and preventing a body of water
from clouding, comprising the steps of:
(a) providing a body of water containing PHMB
[polyhexamethylene biguanide];
(b) adding to said body of water a first treatment
composition comprising an oxidizer stabilizing amount of 2,2-
dibromo-3-nitrilopropionamide (DBNPA) to provide a final
concentration of at least 3 PPM,
( c) adding to said body of water a second treatment
composition comprising an oxidizer;
and
(d) repeating steps (b) and (c) on a weekly basis to
maintain residual oxidizer levels and a reduction in biofilm
formation thereby avoiding clouding of said body of water.
Appellant argues the claims as a group in the first rejection, and do
not present additional arguments to independent claim 30 or to separately
rejected dependent claim 39 (Br. 3---6). Accordingly, all the claims stand or
fall together with independent claim 20 in the first rejection.
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellant's contentions, we find that the preponderance of evidence
supports the Examiner's conclusion that the subject matter of Appellant's
claims is unpatentable over the applied prior art. We sustain the Examiner's
§ 103 rejections essentially for the reasons set out by the Examiner in the
Answer.
2
Appeal2015-002420
Application 12/806,073
We add the following primarily for emphasis.
There is no dispute that Unhoch '453 treats water containing PHMB
with DBNPA and an oxidizer. Rather, Appellant's principal arguments in
the Appeal Brief are that the Examiner 1) has not provided a reason to
combine the embodiment that includes a weekly peroxide dosage of Unhoch
'453 with the embodiment that includes a weekly DBNP A dosage of
Unhoch '453 (Br. 3, 4); 2) has not explained how there is a reasonable
expectation of success in achieving the claimed invention (Br. 4); 3) is not
allowed to change the principle of operation ofUnhoch '453 which requires
that the composition be free of oxidizers (Br. 5); and 4) has not supported his
determination that the 132 declarations (hereinafter referred to as Unhoch I
(dated Oct. 21, 2013) and Unhoch II (dated March 17, 2014)) are insufficient
to establish unexpected results (Br. 5, 6).
We are unpersuaded of error in the Examiner's determination of
obviousness. Appellant's arguments and evidence do not fully address the
rejection and the inferences ofUnhoch '453, taking into account the scope of
the claim language, which are presented on this record for our review.
Appellant has not persuasively disputed the Examiner's determination
that one of ordinary skill in the art, using no more than ordinary creativity,
would have used both known water treatment chemicals (an oxidizer such as
hydrogen peroxide and the known water treatment biocide DBNP A) on a
weekly basis to treat water containing PHMB. It has been established that
"the [obviousness] analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
3
Appeal2015-002420
Application 12/806,073
(2007). Likewise, it is also well settled that a reference stands for all of the
specific teachings thereof as well as the inferences one of ordinary skill in
the art would have reasonably been expected to draw therefrom. See In re
Fritch, 972 F.2d 1260, 1264---65 (Fed. Cir. 1992).
that:
InKSR Int'! Co., 550 U.S. at 419--420 the Supreme Court observed
In determining whether the subject matter of a ... claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is .
. . [ unpatentable] under § 103.
A person of ordinary skill in the art would have reasonably expected
that a weekly dosage of a known water treatment oxidizer (e.g., hydrogen
peroxide) as well as of a known water treatment biocide DBNP A as recited
in claim 20 (as well as in independent claim 30) would have been obvious if
not implicit from the teachings of the reference as detailed by the Examiner
(e.g., Ans. 9-12). One of ordinary skill would have expected that a weekly
dosage of each of two chemicals known to be useful in water treatment, in
weekly, biweekly, or daily doses, would have been successful. (Cf In re
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) ("[i]t is generally considered
prima facie obvious to combine two compounds each of which is taught by
the prior art to be useful for the same purpose, in order to form a
composition which is to be used for the very same purpose.").
Furthermore, the claims recite a method "comprising" weekly
additions of DBNPA and an oxidizer; accordingly, the claims also permit the
daily addition of either chemical, or of both chemicals. Contrary to
Appellant's Unhoch I declaration (paragraph 6), the claims also do not
4
Appeal2015-002420
Application 12/806,073
appear to preclude using a tablet that releases DBNPA on a daily basis.
Accordingly, Appellant's assertion of "unexpected results" from going from
a daily to weekly dosing of DBNP A (Unhoch I Declaration paragraph 7) is
not commensurate in scope with the claims. Appellant has not provided the
required side-by-side comparison of the claimed invention with the closest
prior art which is commensurate in scope with the claims, and explained
why the results would have been unexpected by one of ordinary skill in the
art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Klosak, 455 F.2d
1077, 1080(CCPA1972).
Accordingly, we affirm the Examiner's prior art rejections of the
claims under 35 U.S.C. § 103(a) for the reasons given above and presented
by the Examiner.
DECISION
The Examiner's§ 103 rejections are affirmed.
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)(l )(iv).
AFFIRMED
5