LANXESS CORPORATION

Patent Trials and Appeals Board

Oct 21, 2021

2021000077 (P.T.A.B. Oct. 21, 2021)

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.
15/096,318 04/12/2016 MARK WALLACE SQUIRE P003 00043CIP 8460
34947 7590 10/21/2021
LANXESS CORPORATION
111 RIDC PARK WEST DRIVE
PITTSBURGH, PA 15275-1112
EXAMINER
ROSENTHAL, ANDREW S
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
10/21/2021 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):
ipmail@lanxess.com
patentmail-us@lanxess.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK WALLACE SQUIRE,
CATHERINE MARY CHALONER, SHARON ELIZABETH HICKS,
KELLY ANN BOARD, and MARTIAL JEAN-JACQUES PABON

Appeal 2021-000077
Application 15/096,318
Technology Center 1600
Before JOHN E. SCHNEIDER, DEBRA L. DENNETT, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5, 6, and 8–19. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as LANXESS Corp.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to “an easy-to-use multi-part kit system for
the preparation of an efficient disinfectant comprising a combination of a
peroxy biocide and a co-biocide of the substituted ammonium type.” Spec.
1. The kit exhibits “considerable stability in terms of only slow loss of
peroxidic oxygen (active oxygen) and a low or even negligible tendency to
develop unwanted precipitate.” Id. Claim 1 reproduced below, is
illustrative of the claimed subject matter:
1. A multi-part kit system comprising:
(i) a solid part A which comprises:
10 to 80 wt.% of at least one peroxy compound
selected from the group consisting of KHS05, K2S20 8,
Na2S208 magnesium monoperoxyphthalate hexahydrate,
sodium percarbonate, and sodium perborate;
0.1 to 10 wt.% of at least one MCI compound
wherein M is selected from the group consisting of
lithium, sodium and potassium; and
1 to 20 wt.% of taurine;
wherein the wt.% of part A ingredients is based on the
total weight of solid part A; and
(ii) a liquid part B in the form of an aqueous solution
which comprises:
0 to 20 wt.% of nonionic surfactant;
3.6 to 20 wt.% of amphoteric surfactant; and
0.5 to 20 wt.% of at least one compound
comprising substituted ammonium selected from the
group consisting of dihydrocarbyl dimethylammonium
halides, didecyl methyl-poly(oxyethyl) ammonium
propionate, chlorhexidine gluconate, cetylpyridinium
halide and polyhexamethylene biguanide hydrochloride,
wherein at least one of the two hydrocarbyl residues
comprises 8 to 18 carbon atoms, wherein halide means
chloride or bromide; and
wherein the wt.% of part B ingredients is based on the
total weight of liquid part B.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Auchincloss US 4,822,512 Apr. 18, 1989
Fendler US 5,719,113 Feb. 17, 1998
Du Pont GB 932,750 July 31, 1963
Stief2 DE 19712565 A1 Oct. 1, 1998
Carreño et al., Oxidative De-aromatization of para-Alkyl Phenols into
para-Peroxyquinols and para-Quinols Mediated by Oxone as a Source of
Singlet Oxygen, 45 Angew. Chem. Int. 2737 (2006)
Gilbert and Moore, Cationic antiseptics: diversity of action under a
common epithet, 99 J. App. Microbiol. 703 (2005)

REJECTION
The Examiner has rejected the pending claims under 35 U.S.C. § 103
as unpatentable over Auchincloss, in view of Fendler, Gilbert, Du Pont, Stief
and Carreño.
OPINION
The issue before us is whether a preponderance of evidence supports
the Examiner’s conclusion that the subject matter of the pending claims
would have been obvious to one of ordinary skill in the art at the time the
invention was made over Auchincloss combined with Fendler, Gilbert, Du
Pont, Stief and Carreño.
The Examiner finds Auchincloss teaches a dry, water soluble
composition comprising an “inorganic halide such as sodium chloride (0.01 -
5%), an oxidizing agent such as the potassium persulfate triple salt (25-60%;

2 Citations are to the English translation of record.
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aka oxone), and sulfamic acid (3-8%) wherein the pH of a 1% solution
thereof is from 1.2-5.5. Final Act. 5. The Examiner finds the product of
Auchincloss is formulated “as a powder (solid) and diluted in water at time
of use (col 3, lns 30-32) to be used as a broad spectrum virucide (col 3, lns
45-50).” Id.
The Examiner finds Fendler teaches an aqueous disinfectant, biocide
composition comprising “chlorhexidine digluconate, a nonionic surfactant,
and an amphoteric surfactant.” Id. The Examiner finds Fendler teaches that
the composition has a pH of from 5.5 to 8. Id. at 6.
The Examiner finds
Carreno teaches that oxone is a well-known source of
singlet oxygen in aqueous basic medium (pg 2740, ¶ 1; Scheme
3).
Stief teaches that singlet oxygen is a disinfecting agent
(pg 1, 14). Stabilizers such as taurine are used to preserve the
oxidation potential of the singlet oxygen agent by stabilizing
the chlorine and preventing its release (pg 3, 12).

Id. at 7.
The Examiner concludes
The person of ordinary skill in the art at the time of the
invention would have found it prima facie obvious to take the
biocidal powder composition of Auchincloss, which teaches the
solid part A of claim 1 and combine it with the aqueous
disinfectant, biocidal cleansing composition of Fendler, which
teaches the liquid part B of claim 1 to form a two part kit
composition useful as a biocidial disinfecting solution. The
invention of Auchincloss is for a solid powder disinfecting
composition designed to be activated at time of use by
dissolving in water. Auchincloss teaches the components of the
solid part A in the required concentrations of instant claim 1
and teaches that said composition works up to a pH of 5.5. for a
1 % solution. The composition of Fendler, also taught as a
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disinfecting composition, further teaches the liquid part B in the
required compositions of claim 1, which works at a pH of at
least 5.5. Generally, it is prima facie obvious to
combine/substitute two compositions, each of which is taught
by the prior art to be useful for same purpose, in order to form a
third composition to be used for the very same purpose. The
idea for combining them flows logically from their having been
individually taught in the prior art. (see MPEP § 2144.06; In re
Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA
1980)). Because Auchincloss teaches that the solid part A can
be activated by an aqueous solution, it would have been
obvious to use the aqueous surfactant-containing composition
of Fendler in a kit designed for preparing disinfecting solutions
at the point of use. Regarding the inclusion of taurine,
GB932750 teaches that sulfamic acid is useful for the trapping
of free chlorine ions in an oxone solution. Stief and Carreno
further teach[] that a singlet oxygen disinfectant (like oxone)
can be stabilized by taurine, which also works to trap free
chlorine. Thus, the skilled artisan would have had motivation to
use taurine over sulfamic acid (to stabilize oxone) and a
reasonable expectation of success based on the prior art
teachings. Generally, it is prima facie obvious to select a known
material for incorporation into a composition, based on its
recognized suitability for its intended use (see MPEP §
2144.07). Therefore, it would have been obvious to use taurine
in place of sulfamic acid.

Id. at 7–8.
Appellant contends that it would not have been obvious to one skilled
in the art to combine the biocidal powder of Auchincloss with the aqueous
disinfectant, biocidal composition of Fender. Appeal Br. 10. Appellant
contends that the composition taught in Auchincloss is intended for
domestic, industrial and farm uses whereas the composition of Fendler is
designed for personal human use. Id. Appellant contends that one skilled in
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the art would not have expected the combination of an industrial sanitizing
agent and a skin cleaner to be effective. Id. at 11.
Appellant contends that Auchincloss and Fendler operate at different
pH ranges with Auchincloss operating at a pH of from 1.2 to 5.5 whereas
Fendler operates at a pH of from 5.5 to 8. Id. at 11. Appellant contends that
one skilled in the art would not combine the two systems because of the
different ranges and that the pH ranges teach away from combing the two
systems. Id. at 11–12.
Appellant contends that the Examiner has not stated an adequate basis
as to why one skilled in the art would combine the teachings of Auchincloss
and Fendler. Id. at 12.
Appellant contends that one skilled in the art would not substitute
taurine for sulfamic acid with a reasonable expectation of success. Id.
Appellant contends that Auchincloss teaches that sulfamic acid works within
the pH range cited in Auchincloss and would not be effective in the range
taught by Fendler. Id. at 13. Appellant contends that one skilled in the art
would understand “that there may be chemical interactions that occur that
render this hypothetical combination and substitution of components useless
for a multi-part disinfectant kit.” Id.
Appellant contends that there is sufficient evidence of unexpected
results to overcome the Examiner’s prima facie case of obviousness. Id. at
13. Appellant contends that when taurine is substituted for sulfamic acid, the
resulting composition exhibits unexpectedly high stability. Id. Appellant
relies on the Declaration of Mr. Squire.3 Id.

3Declaration under 37 C.F.R. § 1.132, filed June 14, 2018 (“Squire Decl.”).
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Finally, Appellant contends that the references do not teach or suggest
all of the elements of claim 16. Id. Appellant contends that claim 16 calls for
the presence of a nonionic surfactant selected from the group comprising
“polyoxyethylenes, polyoxypropylenes, polyoxyethylene/oxypropylene
moieties, and combinations thereof.” Appellant contends that Fendler
teaches away from these compounds in that Fendler teaches “No
polyoxypropylene/polyoxyethylene block copolymers should be used.” Id. at
14.
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established a
prima facie showing that the subject matter of the claims would have been
obvious over Auchincloss combined with Fendler, Gilbert, Du Pont, Stief
and Carreño to a person of ordinary skill in the art. Appellant has not
produced evidence showing, or persuasively argued, that the Examiner’s
determinations on obviousness are incorrect. Only those arguments made by
Appellant in the Briefs have been considered in this Decision. Arguments
not presented in the Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv)
(2015). We have identified claim 1 as representative; therefore, all claims,
with the exception of claim 16, fall with claim 1. We address Appellant’s
arguments below.
Appellant contends that one skilled in the art would not combine the
teachings of Auchincloss with Fendler because Auchincloss relates to an
industrial sanitizing agent and Fendler is directed to a cleanser for human
skin. Appeal Br. 10. Appellant contends that
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There is no evidence that one skilled in the art could have
expected, let alone predicted, that an effective disinfectant kit
would result through the combining of Fendler's liquid
cleansing agent useful for its mild effect to human skin with the
industrial farm sanitizing agent of Auchincloss. In fact, the
opposite is the case. One skilled in the art would not have
expected the combination of an industrial sanitizing agent and a
skin cleanser to be effective and the result of such a
combination would certainly have been unpredictable.

Id. at 10–11. Appellant goes on to argue that one skilled in the art could not
predict what would result from combining the two compositions due of the
complex nature of the chemical systems involved. Id. at 11.
We have considered Appellant’s argument and the evidence of record
and conclude that the rejection was not in error. We begin by noting that the
present claims are directed to a kit comprising two separate components.
Appeal Br. 15 (Claims App.). Nothing in the claims calls for combining the
two compositions.
In addition, both references relate to biocidal or antibacterial
compositions. Auchincloss, Abstr.; Fendler, Abstr. We agree with the
Examiner that both references contemplate application to the skin. See Ans.
10–11. Fendler teaches “The present invention is directed toward an
antibacterial cleansing composition which effectively kills bacteria and other
microorganisms, but is otherwise mild on the skin such that it does not cause
skin irritation or dryness.” Fendler, col. 3, ll. 56–59. Auchincloss teaches
“The use of an edible organic acid, e.g. malic acid, to achieve a low pH
enables the following benefits to be obtained: . . . (d) the aqueous
preparation is not a skin or eye irritant, . . . (t) it is possible to bathe in the
aqueous preparation. Auchincloss, col. 7, ll. 43–53. Thus, we agree with the
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Examiner that one skilled in the art would have been motivated to combine
the two compositions as separate elements but provide them together in a kit.
Final Act. 7–8; And. 10–11.
Appellant contends that one skilled in the art would not have been
motivated to combine Auchincloss with Fendler as the two compositions
operate at two different pH ranges. Appeal Br. 11. Appellant contends that
the use of two different pH ranges teaches away from the proposed
combination. Id at 11–12.
We are not persuaded by Appellant’s argument. First, even if it were
true that the compositions operate at two different pH ranges, the claim is
directed to a kit and nothing in the claim requires that the compositions are
combined together in the kit. Second, as the Examiner points out, the pH
ranges of Auchincloss and Fendler overlap, with both references teaching a
pH of 5.5. Auchincloss, col. 6. Ll. 57–59; Fendler, col. 7, ll. 50–52. In
addition, Fendler only states that the recited pH range is of optimal
antibacterial efficiency. Fendler, col. 7, ll. 50–52. Fendler does not teach that
its composition will not work at a lower pH. Fendler’s preference for a
relatively high pH does not equal a teaching away from using the lower pH
of Auchincloss. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A
known or obvious composition does not become patentable simply because
it has been described as somewhat inferior to some other product for the
same use.”)
Appellant contends that the Examiner has not stated an adequate
rationale for combining the teaching of Auchincloss and Fendler. Appeal Br.
12. Appellant contends that the Examiner’s finding regarding motivation to
combine is conclusory and lacking support. Id.
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We are not persuaded by this argument. As discussed above, both
Auchincloss and Fendler relate to antibacterial compositions. As the
Examiner points out:
Generally, it is prima facie obvious to combine/substitute
two compositions, each of which is taught by the prior art to be
useful for same purpose, in order to form a third composition to
be used for the very same purpose. The idea for combining
them flows logically from their having been individually taught
in the prior art. (see MPEP § 2144.06; In re Kerkhoven, 626
F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980)).

Final Act. 8.
Appellant contends that the art does not teach or suggest substitution
of taurine for sulfamic acid nor would one skilled in the art expect the
substitution would work. Appeal Br. 12–13.
We have considered Appellant’s argument and are not persuaded that
one skilled in the art would not have substituted taurine for sulfamic acid.
Auchincloss teaches the inclusion of sulfamic acid. Auchincloss, col. 2, l.
25. Du Pont teaches that sulfamic acid acts as a chlorine accepting
compound that ties up free chlorine without interfering with the germicidal
activity of the composition. Du Pont, 1. Stief teaches that taurine also acts to
stabilize chlorine and prevent its release. Stief, 3. Thus, the art teaches that
sulfamic acid and taurine are functionally equivalent with respect to
stabilization of chlorine. 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) (“[T]his court finds no . . . error in
[the] conclusion that it would have been obvious to one skilled in the art to
substitute one ARC [alkaline reactive compound] for another.”).
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Appellant contends that there is evidence of unexpected results
sufficient to overcome the Examiner’s prima facie case of obviousness.
Appeal Br. 13. Appellant contends that the data reported in Mr. Squire’s
Declaration shows that the substitution of taurine for sulfamic acid results in
higher stability for the resulting product. Id. Appellant contends that the
results are unexpected. Id.
We have considered Appellant’s argument and Mr. Squire’s
Declaration and are not persuaded that the data represents unexpected results
sufficient, when considered together with the evidence of obviousness, to
overcome the Examiner’s prima facie case of obviousness. “If an applicant
demonstrates that an embodiment has an unexpected result and provides an
adequate basis to support the conclusion that other embodiments falling
within the claim will behave in the same manner, this will generally
establish that the evidence is commensurate with [the] scope of the claims.”
In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).
In the present case, Appellant has provided data that taurine, when
used at a concentration of 9.71 wt. % exhibits higher stability than a similar
composition containing either 9.71 wt. % or 7.5 wt. % sulfamic acid. Squire
Decl. App. A. The claims, however, call for an amount of taurine of from 1
to 20 wt. %. Appeal Br. 15. (Claims App.). Appellant has offered no
persuasive evidence to support the conclusion that the same result would be
seen across the entire range of taurine recited in the claims.
Finally, Appellant contends that claim 16 is separately patentable.
Appeal Br. 13. Appellant contends that claim 16 calls for the nonionic
surfactant to be selected from the group comprising polyoxyethylenes,
polyoxypropylenes, polyoxyethylene/oxypropylene moieties, and
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combinations thereof. Id. Appellant contends that Fendler does not teach the
use of these compounds. Id. at 13–14. Appellant argues that Fendler actually
teaches away from the use of these compounds in that Fendler teaches “No
polyoxypropylene/polyoxyethylene block copolymers should be used.” Id. at
14.
We have considered Appellant’s argument and the evidence of
records and find that claim 16 is not separately patentable. The present
Specification teaches “Nonionic surfactants are in particular ones
comprising at least one polyoxyethylene and/or polyoxypropylene and/or
polyoxyethylene/oxypropylene moiety. Preferred examples of such nonionic
surfactants include polyethoxylated alcohols, in particular, polyethoxylated
fatty alcohols.” Spec. 6 (emphasis added). Fendler teaches that alcohol
ethoxylates, such as tridecylalcohol ethoxylate can be used in the practice of
the invention. We agree the Examiner that Fendler teaches at least one class
of compounds falling within the group recited in claim 16. See Ans.13.
Based on the foregoing we conclude that a preponderance of the
evidence supports the Examiner’s conclusion that the subject matter of the
pending claims would have been obvious to one of ordinary skill in the art at
the time the invention was made over Auchincloss combined with Fendler,
Gilbert, Du Pont, Stief and Carreño.
CONCLUSION
The Examiner’s rejection is affirmed.
More specifically, rejection of claims1–3, 5, 6, and 8–19 under 35
U.S.C. § 103 as unpatentable over Auchincloss, in view of Fendler, Gilbert,
Du Pont, Stief and Carreño is affirmed.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5, 6, 8–
19
103 Auchincloss,
Fendler, Gilbert,
Du Pont, Stief,
Carreño
1–3, 5, 6, 8–
19

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED