Jeffry Golden et al.

Patent Trials and Appeals Board

Aug 8, 2019

13383067 - (D) (P.T.A.B. Aug. 8, 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.
13/383,067 11/16/2012 Jeffry Golden 290701-1130 4825
99722 7590 08/08/2019
J.M. Robertson, LLC
P.O. Box 131404
Birmingham, AL 35213
EXAMINER
LIU, SUE XU
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
08/08/2019 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 JEFFRY GOLDEN, PAUL BRISTER, JOAN STADER, and
CHARLES MARTIN
____________

Appeal 2019-001172
Application 13/383,067
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, JOHN G. NEW, and JAMIE T. WISZ,
Administrative Patent Judges.

WISZ, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants1 seek review of claims
26–33.2 We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we affirm.

1 Appellants identify the real party in interest as Contec, Inc. App. Br. 1.
2 Claims 1–25 and 34 have been withdrawn.
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STATEMENT OF THE CASE
The Specification describes methods for microbicidal treatment such
as sanitization, disinfection, sterilization, and decontamination of a surface
by using an anti-microbial thin film. Spec. ¶ 4. The Specification also
describes processes for making such anti-microbial compositions and the
compositions themselves. Id. Claim 26, the only independent claim, is set
forth below:
26. A microbicidal composition comprising:
hydrogen peroxide in concentration in a range of
about 2.0 to 6% by weight,
peracetic acid in concentration in a range of about
0.05 to about 0.74% by weight,
acetic acid,
phosphate ester surfactant in concentration in a
range of about 0.025 to about 0.3% by weight,
water soluble polymer in concentration in a range
of about 0.025 to about 0.3% by weight, and
a balance of water,
the resulting microbicidal composition having an
equilibrium concentration quotient of about
1.4 exp { 240.7 ( 1/T – 1/293.2 ) }
at a temperature T given in degrees Kelvin wherein T is
between about 283 and about 328 degrees Kelvin, and
the mole fraction of water of the said resulting
microbicidal composition is greater than 0.9 and wherein
the resulting microbicidal composition has a viscosity of
no more than 10% to 50% greater than water.
App. Br. 8 (Claim Appendix). Claim 27 depends from claim 26 and requires
that the soluble polymer contain lactam. Id.
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The Examiner rejected claims 26–33 under 35 U.S.C. § 103(a) as
being obvious over Hei ’5933 in view of Hei ’4454 and Ormerod.5

ISSUES AND ANALYSIS
We affirm the Examiner’s obviousness rejection. We address the
arguments raised by Appellants below.
Obviousness
The Examiner finds that Hei ’593 discloses “compositions comprising
4% hydrogen peroxide, 55% water, phosphate derivative surfactants (col.
1);” “application to a surface to reduce microorganisms (col. 2);” “surfactant
percentages (col. 21-23);” “peroxyacetic acid present at about 0.5% and an
acid catalytic reaction of hydrogen peroxide and peroxyacetic acid which
reads on an equilibrium amount of acetic acid (col. 16 and 19).” Final Act.
4.
The Examiner concedes that Hei ’593 does not explicitly disclose the
claimed viscosity of 1.1 to 1.5; however, the Examiner relies on Ormerod for
this disclosure because it teaches “spray cleansers (abstract) and a viscosity
of 0-30 (col. 1).” Id. at 5. The Examiner finds that one of ordinary skill in
the art would have been motivated to produce the formulations of Hei ’593
with the viscosity as taught by Ormerod because “both references are drawn
to cleansing compositions that are intended as spray applications and

3 Hei et al., U.S. Patent No. 6,627,593 B2, issued Sept. 30, 2003 (“Hei
’593”).
4 Hei et al., U.S. Patent No. 6,436,445 B1, issued Aug. 20, 2002 (“Hei
’445”).
5 Ormerod, IV et al., U.S. Patent No. 6,211,124 B1, issued Apr. 3, 2001
(“Ormerod”).
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[Ormerod] . . . further teach[es] that a desired viscosity is from 0-30.” Id. at
6. The Examiner concludes that “it would have been obvious to produce the
spray formulations of [Hei ’593] . . . with a viscosity known to be suitable
for [a] spray application.” Id.
The Examiner also concedes that Hei ’593 does not disclose a water-
soluble polymer containing a lactam such as PVP (as recited in claim 27);
however, the Examiner relies on Hei ’445 for this disclosure. Id. at 5.
Specifically, the Examiner finds that Hei ’445 “teaches cleansing
compositions comprising thickeners such as polyacrylates and PVP (col. 13
and 14).” Id. The Examiner further finds that it would have been obvious to
one of ordinary skill in the art to produce the formulations of Hei ’593 with
PVP as taught by Hei ’445 in order to produce the instant invention. Id.
According to the Examiner, one of ordinary skill would have been motivated
to do so because “both references are drawn to cleansing compositions
comprising thickeners such as polyacrylates and [Hei ’445] . . . teach[es] that
PVP may also be used as a thickener.” Id. The Examiner concludes that “it
would have been obvious to utilize the PVP of [Hei ’445] . . . , in the
formulations of [Hei ’593] . . . in order to use a functionally equivalent
thickener known to be utilized in similar formulations.” Id.
Appellants’ arguments are directed to the viscosity and water-soluble
polymer limitations. Specifically, Appellants assert that “[t]he recited
combination of constituents in combination with the claimed viscosity is
inconsistent with any teaching or suggestion in the cited art.” App. Br. 3.
Appellants contend that the teachings in both Hei ’445 and Ormerod
“advocate significantly higher viscosity levels than those presently claimed
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and/or use different rheology modifiers thereby preventing any reasonable
expectation of success in achieving the claimed invention.” Id. at 4.
According to Appellants, Hei ’445 does not disclose a water-soluble
polymer in a concentration range of about 0.025 to about 0.3% by weight as
claimed and does not disclose the claimed viscosity. Id. Furthermore,
Appellants assert that Hei ’445 explains that the purpose of adding a
thickener is to cause the aqueous treatment to cling to the surface being
treated, which “enables the composition to remain in contact with the
transient and resident pathogenic bacteria for longer periods of time, thereby
promoting microbiological efficacy and resisting waste because of excessive
dripping.” Id. (citing Hei ’445, col. 13). Appellants conclude that Hei ’445,
therefore, teaches that adding a thickener “should provide a fairly significant
enhanced viscosity relative to water” and that such higher viscosity is
“desirable to promote proper performance.” Id. at 4–5.
Appellants further contend that the alleged deficiencies of Hei ’593
and Hei ’445 are not addressed in Ormerod. Id. at 5. Appellants argue that
the disclosure in Ormerod, which states that the viscosity of the cleaning
composition can be from about 0 to about 30 centipoise, “appears to be a
typographical error since it is inconsistent with the corresponding teachings
in the body of the specification,” because another part of the specification
recites a desired viscosity of about 10 to about 30 centipoise. Id. (citing
Ormerod 7:46–55). Appellants further contend that the Office Action does
not establish any correlation between the chemical composition of Hei ’593
and the cleaning composition in Ormerod. Id.
The Examiner responds that Appellants’ arguments regarding the
teachings of Hei ’445 and Ormerod are not persuasive because these
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references are used in combination with Hei ’593. Ans. 3. According to the
Examiner, Hei ’593 teaches compositions (including spray applications)
with a percentage range of thickener (i.e., water-soluble polymer) that
overlaps with the claimed range. Ans. 3 (citing Hei ’593, cols. 2, 24). The
Examiner further finds that Hei ’445, which also discloses spray
applications, teaches that the concentration of thickener used will be dictated
by the method of application, whereby “[s]praying and misting requires a
lower composition viscosity.” Id. at 3–4 (citing Hei ’445, cols. 14, 15).
The Examiner further explains that Ormerod is relied on for teaching
“common viscosity values for spray applications” and clearly teaches a
spray formulation with a viscosity range of 0–30 cps and the narrower
viscosity ranges recited later in Ormerod are preferred embodiments, to
which Ormerod is not limited. Id. at 4–5. According to the Examiner,
Ormerod is utilized for teaching standard viscosity ranges for spray
compositions and Hei ’593 and Hei ’445 are utilized for teaching the
claimed compositions, including spray formulations. Id.
Having considered Appellants’ arguments, we are not persuaded of
any reversible error in the Examiner’s rejection of claim 26. With respect to
Appellants’ arguments that Hei ’445 does not disclose a water-soluble
polymer in a concentration range of about 0.025 to about 0.3% by weight,
nor discloses the claimed viscosity levels, Appellants are arguing against Hei
’445 individually rather than in combination with Hei ’595 and Ormerod as
a whole. “Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
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isolation, but for what it fairly teaches in combination with the prior art as a
whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
As presented by the Examiner, Hei ’593 discloses anti-microbial
compositions, which include water-soluble polymers (e.g., polyacrylates)
within the claimed range, and teaches that the compositions can be made to a
desired viscosity. Ans. 3 (citing Hei ’593, cols. 2, 24). Furthermore,
according to the Examiner, Hei ’445 discloses anti-microbicidal
compositions, including spray applications, and teaches that spraying
requires a lower composition viscosity. Id. at 3–4 (citing Hei ’445, cols. 14–
15). Lastly, Ormerod teaches common viscosity values for detergent spray
applications, including within the claimed range. Id. Therefore, because the
combination of Hei ’593, Hei ’445, and Ormerod teaches every limitation of
the claims, we are not persuaded that the Examiner erred.
Appellants also argue that Hei ’445 teaches that adding a thickener
“should provide a fairly significant enhanced viscosity relative to water” and
that “based on the clear teachings in [Hei ’445] . . . one would expect that
any inclusion of PVP or other water soluble polymer should be such as to
lead to significantly higher viscosities and that such higher viscosities are
desirable to promote proper performance.” App. Br. 4–5. This argument is
also unavailing. First, Appellants’ claims also recite a viscosity that is
greater than water and it is unclear what Appellants mean by viscosity that is
“fairly significant enhanced viscosity relative to water.” Appellants have not
sufficiently explained how the claimed viscosity differs from that which is
disclosed in Hei ’445. “[A]ttorney argument [is] not the kind of factual
evidence that is required to rebut a prima facie case of obviousness.” In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Furthermore, as discussed
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supra, Hei ’445 teaches that the concentration of thickener used will be
dictated by the method of application whereby spraying requires lower
viscosity. Hei ’445, col. 14. In making the spray formulations of Hei ’593
and Hei ’445, one of skill in the art would have been motivated to look to
Ormerod to determine the viscosity for such spray compositions.
With regard to Appellants’ argument that the disclosure in Ormerod of
a viscosity range of about 0 to about 30 centipoise must be a typographical
error because the Specification later cites to a desired range of about 10 to
about 30 centipoise, we agree with the Examiner that the later narrower
range is a preferred embodiment and that Ormerod is not so limited.
“‘. . . [A]ll disclosures of the prior art, including unpreferred embodiments,
must be considered.’” Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750
(CCPA 1976)).
With respect to dependent claim 27, which requires that the soluble
polymer contains lactam, Appellants argue that Ormerod does not teach the
lactam containing polymer PVP. App. Br. 6. Appellants further argue that,
while Hei ’445 discloses the use of PVP as a rheology modifier, it does not
teach the claimed composition levels. Id. Appellants further contend that
Hei ’445 teaches that the thickener additions “are intentionally used to raise
viscosity to levels well beyond the claimed range.” Id.
The Examiner responds that Hei ’445, and not Ormerod, is relied on
for teaching PVP. The Examiner further explains that “Hei [’]445 teach
functionally equivalent thickeners to those in Hei [’]593 that contain a
lactam group, and Ormerod et al. teach appropriate viscosities for spray
formulations overlapping the claimed range.” Ans. 6. Therefore, the
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Examiner concludes that “[i]t would have been obvious to one of ordinary
skill in the art to utilize the PVP polymer of Hei [’]445 and the viscosity of
[Ormerod] . . . in the formulations of Hei [’]593 as Hei [’]593 teach spray
formulations, adjustment of viscosity based on the thickener concentration
and functionally equivalent thickeners to those claimed.” Id.
Having considered Appellants’ arguments, we are not persuaded of
any reversible error in the Examiner’s rejection of claim 27. Hei ’593
discloses anti-microbial compositions with water-soluble polymer
thickeners, such as polyacrylamides, in a range of 0 wt-% to about 1 wt-%,
which overlaps with the claimed range of 0.025 to about 0.3% by weight.
Hei ’593, col. 21. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)
(“In cases involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness.”).
Furthermore, Hei ’445, which also teaches anti-microbial
compositions, discloses the use of thickeners, including polyacrylamides and
PVP. Hei ’445, col. 13. Therefore, one of skill in the art would have been
motivated to substitute the polyacrylamide thickener in the compositions of
Hei ’593 with PVP as disclosed in Hei ’445, with a reasonable expectation
of success. (It is obvious to those skilled in the art to substitute one known
equivalent for another. See In re Omeprazole Patent Litigation, 483 F.3d
1364, 1374 (Fed. Cir. 2007)). In addition, as discussed, supra, one of skill
in the art would also have been motivated to look to the viscosity ranges as
taught by Ormerod for standard spray formulations.
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For the reasons described herein and those already of record, we
sustain the Examiner’s rejection of claims 26–27. Claims 28–33 are not
argued separately, and fall with claim 26. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
We affirm the Examiner’s obviousness rejection of claims 26–33.
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