Lee, JaeHong et al.Download PDFPatent Trials and Appeals BoardMay 28, 20202019003978 (P.T.A.B. May. 28, 2020) Copy Citation 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. Appeal 2019-003978 Application 12/961,611 2 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). Appeal 2019-003978 Application 12/961,611 3 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 Appeal 2019-003978 Application 12/961,611 4 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. Appeal 2019-003978 Application 12/961,611 5 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 Appeal 2019-003978 Application 12/961,611 6 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 Appeal 2019-003978 Application 12/961,611 7 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. Appeal 2019-003978 Application 12/961,611 8 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 Appeal 2019-003978 Application 12/961,611 9 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. Appeal 2019-003978 Application 12/961,611 10 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. Appeal 2019-003978 Application 12/961,611 11 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 Copy with citationCopy as parenthetical citation