Lee, JaeHong et al.

Patent Trials and Appeals Board

May 28, 2020

12961611 - (D) (P.T.A.B. May. 28, 2020)

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.
12/961,611 12/07/2010 JaeHong Lee KCX-1684
(64648685US01)
9489
7590 05/28/2020
Jason W. Johnston
Dority & Manning, P.A.
P.O. Box 1449
Greenville, SC 29602-1449
EXAMINER
PURDY, KYLE A
ART UNIT PAPER NUMBER
1611
MAIL DATE DELIVERY MODE
05/28/2020 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 JAEHONG LEE, VASILY A. TOPOLKARAEV,
NEIL T. SCHOLL, YOUNGSOOK KIM,
DAVID W. KOENIG, and JAMES H. WANG
Appeal 2019-0039781
Application 12/961,611
Technology Center 1600
Before RICHARD M. LEBOVITZ, RACHEL H. TOWNSEND, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.
HARDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims related to
an antimicrobial wipe. The Examiner rejected the claims as obvious under
35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Kimberly-
Clark Worldwide, Inc. Appeal Br. 3.
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Application 12/961,611

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CLAIMED SUBJECT MATTER
Claims 1–8, 10, 11, and 14–21 are on appeal. Final Act. 2. Claim 1,
the only independent claim, is illustrative of the claimed subject matter and
is reproduced below:
1. A wipe comprising
a web that includes a plurality of fibers, wherein the web
is coated with an antimicrobial composition comprising
a botanical oil,
a film-forming protein, the botanical oil and the
film-forming protein being associated through mixing and/or
homogenization such that the film-forming protein is associated
with and stabilizes the botanical oil and thereby inhibits
premature release of the botanical oil, and
an organopolysiloxane,
wherein the composition is configured for delivering the
botanical oil to a surface,
wherein the composition forms a discontinuous coating
on at least a portion of the fibers of the web,
wherein the discontinuous coating forms a pattern that
covers from about 5% to about 95% of a surface of the wipe,
and
wherein the antimicrobial composition is present on the
wipe at a solids add-on level ranging from about 15% to about
70%.
Appeal Br. 25 (Claims Appendix).

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REFERENCES
The Examiner relied upon the following references:
Name Reference Date
Beerse US 6,482,423 B1 Nov. 19, 2002
Seth US 6,773,718 B2 Aug. 10, 2004
Li US 2004/0241236 A1 Dec. 2, 2004
Coyne US 2007/0042184 A1 Feb. 22, 2007
Holmberg US 2009/0246240 A1 Oct. 1, 2009
REJECTIONS
Claims 1–8, 10, 11, and 15–18 stand rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Beerse, Coyne, and Seth. Final Act. 5.
Claim 14 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Beerse, Coyne, Seth, and Holmberg. Id. at 7.
Claims 19–21 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Beerse, Coyne, Seth, and Li. Id. at 8.
OPINION
Rejection of Claims 1–8, 10, 11, and 15–18 as Obvious Over Beerse, Coyne,
and Seth; Rejection of Claims 19–21 as Obvious Over Beerse, Coyne, Seth,
and Li
We treat the above two rejections together, because the same issues
are dispositive of both. We select claim 1 as representative of claims 1–4,
6–8, 10, 11, and 15–21. 37 C.F.R. § 41.37(c)(1)(iv). We separately address
claim 5 below.
The Examiner rejected claims 1–8, 10, 11, and 15–18 as obvious over
the combination of Beerse, Coyne, and Seth. The Examiner found that
Beerse teaches an antimicrobial wipe made by applying an antimicrobial
emulsion onto a wipe material, where the antimicrobial agent may be an
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essential oil such as carvacol or thymol. Final Act. 5. The Examiner further
found that the emulsion can comprise a lipophilic skin conditioning agent,
such as dimethylpolysiloxane, which is an organopolysiloxane, and a film-
forming agent. Id.
The Examiner found that although Beerse fails to teach that the film-
forming agent is a protein, Coyne teaches microcapsules comprising a
hydrophobic shell, which can be a protein (e.g., soy protein, whey, or zein,
as recited in instant claim 7). Final Act. 6. The Examiner found that the
hydrophobic shell surrounds an aqueous bead comprising an active
ingredient such as an essential oil, and the shell enables controlled/sustained
release of the encapsulated active ingredient. Id. The Examiner found that a
person of ordinary skill in the art would have been motivated to modify the
teachings of Beerse such that Beerse’s essential oils were presented in
Coyne’s microcapsules, to prevent the oil from premature release during
product storage. Id.
The Examiner further found that Beerse fails to teach that the
antimicrobial emulsion is discontinuous, covering about 5–95% of the wipe.
Final Act. 6. The Examiner found that Seth is directed to oil absorbent
wipes with a visual indicator oil coating, wherein the oil coating can be a
botanical oil with antimicrobial properties. Id. The Examiner further found
that the oil coating can cover between 1–100% of the wipe, and thus found
that the claimed range overlaps with the range disclosed in Seth. Id.
The Examiner found that Beerse discloses a wipe “wherein the
antimicrobial composition is present on the wipe at a solids add-on level
ranging from about 15% to about 70%,” as recited in claim 1. Ans. 8–10.
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We agree with and adopt the Examiner’s findings of fact on
obviousness, and determine that the Examiner has presented a prima facie
case of obviousness. We address Appellant’s arguments below.
Appellant argues that none of Beerse, Coyne, or Seth teach an
antimicrobial composition present on a wipe at a solids add-on level ranging
from about 15% to about 70%. Appeal Br. 12. We are not persuaded by this
argument. For the reasons articulated by the Examiner (Ans. 8–10), which
Appellant did not dispute (see generally Reply Br.), we find that Beerse
discloses the claimed solids add-on level.
Appellant additionally argues that Coyne mentions cosmetic
applications only briefly, and discusses use of essential oils only in the food
industry. Appeal Br. 16. We are not persuaded by this argument, because it
reads Coyne too narrowly. Coyne expressly discloses the use of the
disclosed microcapsules in cosmetic applications, and also discloses use of
antimicrobials in pharmaceutical applications, including in transdermal
application systems (not just food applications as suggested by Appellant).
Coyne ¶¶ 23, 105, 110. Although Coyne does not present cosmetic-related
working examples, “a reference is not limited to the disclosure of specific
working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972); see also
In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (“Patents [and publications]
are part of the literature of the art and are relevant for all they contain.”).
Appellant further argues that the Examiner selectively chose only
specific aspects of the references, namely only the oil component of Beerse
and the hydrophobic shell of Coyne’s microcapsules, whereas Beerse
teaches multi-component aqueous-based compositions, and Coyne teaches
double-layered microcapsules. Appeal Br. 16–17. Appellant thus argues
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that the Examiner has improperly “dismantle[d]” the references, rather than
considering the references in their entireties. Appeal Br. 17. We are not
persuaded by this argument, because we do not read the rejection to be as
limited as Appellant contends. We see nothing in the rejection that requires
encapsulating only the essential oil of Beerse, or using only the outer layer
of Coyne’s microcapsules. We also see nothing in the rejection that
excludes encapsulation of other excipients taught in Beerse, or use of the
Coyne’s double-layered microcapsules.
Appellant additionally argues that the proposed modification of
Beerse in light of Coyne would render Beerse unsatisfactory for its intended
purpose. Appeal Br. 15. Specifically, Appellant argues that Beerse teaches
incorporating a silicone polymer (e.g., an organopolysiloxane) to enhance
mildness to the skin, but the presence of Coyne’s “hard” and “solid”
microcapsules on the surface of such a wipe “would destroy the desired
mildness of the wipes.” Appeal Br. 17–18. We are not persuaded by this
argument, because Appellant has not pointed to any persuasive evidence of
record that Coyne’s microcapsules would be perceived by a user as “hard,”
“solid,” or as “destroy[ing] the desired mildness of the wipes.” Id. at 18; see
also Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989)
(explaining that attorney argument is “no substitute for evidence”).
Appellant also argues that the combination of Beerse and Coyne
would destroy the intended function of Beerse’s wipes because “the
encapsulated skin cleansing composition would not contact the user’s skin
without some additional process to break open the outer shell,” such as heat
treatment, freezing, processing conditions, or mastication. Appeal Br. 18.
We are not persuaded by this argument, because Coyne teaches that the
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encapsulated ingredients can be released by stress treatment. Coyne ¶ 106.
We agree with the Examiner that “stress treatment” is broad enough to read
on rubbing of a wipe on the skin. Ans. 11.
Appellant additionally argues that “the point of the cleansing wipes of
Beerse is to provide personal cleansing in the form of a ‘wet-wipe,’” but
“[i]f one were to encapsulate the aqueous composition of Beerse in the
microcapsules of Coyne and coat the resulting microcapsules on the surface
of a wipe, the resulting combination would no longer be a wet cleansing
wipe.” Appeal Br. 18. We are not persuaded. Appellant does not provide a
citation to support the argument that the point of Beerse is to provide a “wet
wipe.” Indeed, this reads Beerse too narrowly. The point of Beerse is to
provide an “antimicrobial wipe” (see, e.g., Beerse at Title, Abstract), and
encapsulating Beerse’s antimicrobial oil and other agents in Coyne’s
microcapsules would not destroy this function.
Appellant additionally argues that the Examiner has not provided a
sufficient motivation to combine Beerse with Seth. Appeal Br. 19–20. We
are not persuaded. Appellant characterizes the purpose of the oil coating in
Seth as allowing the user to “more rapidly determine that facial oil has been
removed by the wipes.” Appeal Br. 19. While Seth does teach that this is
one function of the oil coating (see, e.g., Seth 2:65–67), Appellant overlooks
Seth’s additional teaching that the oil can be a botanical oil having
antimicrobial activity (id. at 3:51–54). This is the same function of the
natural essential oils taught for use in Beerse’s wipes (see, e.g., Beerse 9:24–
44), and as such, provide sufficient motivation to combine the cited teaching
of Seth with the wipes of Beerse.
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The Examiner also cited Seth for its teaching with respect to the
coating pattern of the oil on the wipe. Final Act. 6–7. The ranges recited in
Seth for the coating pattern of oil on the wipe encompass the claimed range.
Compare Seth 4:17–21 (disclosing that the “oil coating pattern can be
formed by conventional techniques over from 1 to 100% of the surface area
of the wipe, preferably 2 to 100% of the wipe surface area”) with Appeal Br.
25 (reciting “wherein the discontinuous coating forms a pattern that covers
from about 5% to about 95% of a surface of the wipe”). The overlap
between the ranges in the prior art and the claims is evidence of
obviousness, and provides a sufficient motivation to optimize the ranges. In
re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012)
(obviousness affirmed where prior art taught groove dimensions that
overlapped with claimed dimensions). Indeed, “[a] prima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art.” In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003). Although evidence that claimed ranges are “critical”
may constitute evidence of nonobviousness, In re Geisler, 116 F.3d 1465,
1469–70 (Fed. Cir. 1997), Appellant has not directed us to persuasive
evidence showing that the claimed range is critical.
We now turn to Appellant’s arguments regarding dependent claim 5.
Claim 5 depends from claim 1 and recites that “the botanical oil is
synthesized.” Appeal Br. 25. Appellant argues that none of the cited
references disclose or suggest use of a synthetic botanical oil. Id. at 20. In
rejecting this claim, the Examiner found that Beerse discloses use of
carvacol and thymol, and found that these oils are chemically identical
whether produced synthetically or extracted from a plant. Final Act. 5. On
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this record, we agree with the Examiner. Beerse discloses use of the “key
chemical components of the plant oils which have been found to provide the
antimicrobial benefit,” including carvacol and thymol. Beerse 9:35–44.
This disclosure is broadly directed to the chemicals themselves, whether
produced synthetically or extracted from a plant. Appellant argues that
“[t]here is on-going argument in the art as to the differences and quality of
natural extract materials vs. synthetic materials,” but on this record,
Appellant neither explains why Beerse does not disclose oils of any origin,
nor points us to any evidence of any criticality in the structure or properties
of synthetic oil that should be considered in the determination of
patentability.
Rejection of Claim 14 as Obvious Over Beerse, Coyne, Seth, and Holmberg
The Examiner rejected claim 14 as obvious over the combination of
Beerse, Coyne, Seth, and Holmberg. Final Act. 8. Claim 14 depends from
claim 1 and recites: “The wipe of claim 1, wherein the antimicrobial
composition has a solvent content of less than about 5 wt.%.” Appeal Br.
26.
The Examiner found that Holmberg teaches dry antimicrobial wipes
having a moisture (solvent) content of less than about 12%. Final Act. 8.
The Examiner found that this amount overlaps with the claimed range, and
thus concludes that
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify the combination of
Beerse, Coyne and Seth with the dry antimicrobial wipe of
Holmberg with a reasonable expectation for success in arriving
at a wipe composition having a solvent (water) content of less
than 5% wherein the dry wipe would inhibit unwanted
bacterial/microbial pathogens.
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Id.
We conclude that the Examiner has not satisfied the initial burden of
presenting a prima facie case of obviousness with respect to claim 14.
Holmberg is directed to a dry, bactericidal wipe that remains substantially
dry during storage, packaging, and use. Holmberg ¶ 3. Holmberg states that
“[t]he dry antimicrobial nonwoven wipe of the invention will have a
moisture content less than about 20%, more preferably less than about 15%,
and most preferably less than about 12%.” Id. at ¶ 11. Thus, the Examiner
points to portions of Holmberg that discuss the moisture content of the
overall wipe. In contrast, claim 14 refers to the solvent content of the
antimicrobial composition that is applied to the wipe, not the solvent content
of the overall wipe. The Examiner has not directed us to disclosure in
Holmberg regarding the solvent content of the antimicrobial composition
that is contemplated for application to Holmberg’s wipes. Indeed, the
Examiner relies on Beerse and Coyne for disclosure relating to the
antimicrobial composition that is applied to the wipe. The Examiner,
however, points to nothing in either of these references suggesting that the
antimicrobial composition has a solvent content of less than about 5 wt.%.
Accordingly, we reverse the rejection of claim 14 as obvious over the
combination of Beerse, Coyne, Seth, and Holmberg.
CONCLUSION
We affirm the rejection of claims 1–8, 10, 11, and 15–18 under 35
U.S.C. § 103(a) as unpatentable over Beerse, Coyne, and Seth.
We reverse the rejection of claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Beerse, Coyne, Seth, and Holmberg.
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We affirm the rejection of claims 19–21 35 U.S.C. § 103(a) as
unpatentable over Beerse, Coyne, Seth, and Li.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 10, 11,
15–18
103(a) Beerse, Coyne, Seth 1–8, 10,
11, 15–18

14 103(a) Beerse, Coyne, Seth,
Holmberg
14
19–21 103(a) Beerse, Coyne, Seth, Li 19–21
Overall
Outcome:
1–8, 10,
11, 15–21
14
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-IN-PART