Lonza Inc.

Patent Trials and Appeals Board

Dec 21, 2020

2020002512 (P.T.A.B. Dec. 21, 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.
15/698,846 09/08/2017 Scott Brown LZA-82 (LP2517US00) 2639
22827 7590 12/21/2020
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
SONG, JIANFENG
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
12/21/2020 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):
USDOCKETING@DORITY-MANNING.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT BROWN, KATHRYN NEELY and MICHELLE RIOUX1
Appeal 2020-002512
Application 15/698,846
Technology Center 1600
Before ERIC B. GRIMES, FRANCISCO C. PRATS, and
DEBRA L. DENNETT, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
biocide composition, which have been rejected for obviousness and
obviousness-type double patenting. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies the real party in interest as Lonza, Inc. Appeal Br. 2.
We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42.
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Application 15/698,846

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STATEMENT OF THE CASE
“Many compositions and formulations are known in the art for the
prevention, inhibition, and treatment of growth or infestation of microbes . . .
includ[ing] isothiazolinones and pyrithiones.” Spec. ¶¶ 2–3. “[D]ue to
economic, environmental, and/or toxicological considerations, it is desirable
to improve the biocidal efficacy at a specific use level and/or reduce the
amount of the biocide required for a desired efficacy.” Id. ¶ 3.
The Specification discloses a “biocide composition compris[ing] an
isothiazolinone, a pyrithione, a zinc compound, and an organic amine. . . .
[T]he combination of the aforementioned components provides a synergistic
effect, in particular against bacteria and fungi.” Id. ¶ 19. Thus, a “desired
activity can be achieved at a lower concentration of active ingredients.” Id.
¶ 20.
In particular, the sum of the fractional inhibitory concentrations
of the isothiazolinone and the pyrithione may be less than 1
when tested against a target microorganism. The fractional
inhibitory concentration is calculated as the concentration of a
biocide which controlled growth in a mixture divided by the
amount of biocide required to control growth when used
alone. . . . [W]hen targeting a particular microorganism, the
sum of the fractional inhibitory concentrations of the first
biocide and the second biocide can be . . . less than 1
indicat[ing] synergistic interactions.
Id. ¶ 21.
Claims 1–12, 17–24, and 26–29 are on appeal. Claim 1, reproduced
below, is illustrative:
1. A biocide composition comprising:
an isothiazolinone,
a pyrithione,
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a zinc compound, and
an organic amine comprising a C1–C5 alkanolamine;
wherein a sum of a fractional inhibitory concentration of
the isothiazolinone and a fractional inhibitory
concentration of the pyrithione is less than one.

Claim 26 is the other independent claim, and is directed to a “biocide
composition concentrate” comprising the same limitations as claim 1.
The claims stand rejected as follows:
Claims 1–12, 17–24, and 26–29 under 35 U.S.C. § 103 as obvious
based on Brown,2 Goettsche,3 and Rioux4 (Ans. 25);
Claims 1–12, 17–24, and 26–29, provisionally, for obviousness-type
double patenting based on application 14/543,9996 in view of Brown,
Goettsche, and Rioux (Ans. 9);
Claims 1–12, 17–24, and 26–29 for obviousness-type double
patenting based on U.S. Patent 8,317,912 in view of Brown, Goettsche, and
Rioux (Ans. 10);
Claims 1–12, 17–24, and 26–29 for obviousness-type double
patenting based on U.S. Patent 5,939,203 in view of Brown, Goettsche, and
Rioux (Ans. 11).

2 US 2015/0141393 A1; pub. May 21, 2015.
3 US 5,186,947; iss. Feb. 16, 1993.
4 US 2005/0158263 A1; pub. July 21, 2005.
5 All of the pages of the Answer are numbered “Page 1.” We have
renumbered them consecutively as pages 1 through 22.
6 The ’999 application issued as U.S. Patent 10,721,934 on July 28, 2020, so
the rejection is no longer provisional.
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OPINION
Obviousness
Claims 1–12, 17–24, and 26–29 stand rejected as obvious based on
Brown, Goettsche, and Rioux. The Examiner finds that Brown discloses a
composition comprising an isothazolin, optionally a pyrithione, and an
amine, amine salt, or amine oxide. Ans. 3. “The composition further
comprises zinc compound.” Id. The Examiner acknowledges that “Brown et
al. do not expressly teach ethanolamine.” Id. at 5.
The Examiner finds that Goettsche teaches a wood preservative
concentrate comprising a zinc compound, an isothiazolone, and a water
soluble amine such as ethanolamine. Id. at 4.
The Examiner finds that Rioux teaches a soluble, stable antimicrobial
composition comprising pyrithione, a zinc source, “and certain 1,2-
alkanolamines, and 1,3-alkanolamines,” alone or combined with a second
organic amine. Id. The Examiner finds that Rioux teaches that
monoethanolamine is particularly preferred. Id. The Examiner also finds that
“Rioux et al. teaches ‘enhanced biocidal effect’ refers to an interaction
between the pyrithione or pyrithione salt component, the water-soluble zinc
component, and the organic amine component that results in the biocidal
effect of the composition being greater than any of the components taken
individually.” Id.
The Examiner concludes that it would have been obvious
to choose ethanolamine as amine in Brown et al. invention
because Brown et al. teaches amine formula R2(R3)N R1 (when
R1 being hydroxyalkyl (hydroxyethyl); R2 and R3 each
independently being a H) encompassing ethanolamine,
Goettsche et al. teaches ethanolamine as suitable amine in wood
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preserve composition comprising isothiazolone, and Rioux et
al. teaches ethanolamine as suitable organic amine in
antimicrobial composition concentrate compris[ing] a
pyrithione complex in combination with a zinc source for
enhanced biocidal effect for wood preserve. Thus, one artisan in
the art would regard ethanolamine as suitable component in
biocidal coating composition such as paint in Brown et al.
invention.
Id. at 5–6. The Examiner also reasons that,
[s]ince ethanolamine is taught by Rioux et al. for enhancing
biocidal effect for wood preserve composition comprising
pyrithione or salt, it is obvious for one of ordinary skill in the
art to replace ethanolamine for alkyl amine or alkyl amine oxide
in Brown’s working example to produce instant claimed
invention with reasonable expectation of success.
Id. at 6.
We agree with the Examiner that the claimed biocide composition
would have been obvious based on Brown and Rioux.7 “The test for
obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art.” In re Young, 927 F.2d 588, 591
(Fed. Cir. 1991). “[I]f a technique has been used to improve one device [or
composition], and a person of ordinary skill in the art would recognize that it
would improve similar devices [or compositions] in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Brown discloses “a composition having biocidal properties . . . [in
which] a first biocide comprising an isothiazolin is combined with at least

7 The teachings of Goettsche are not necessary to support a prima facie case
of obviousness with respect to claim 1.
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one biocide enhancing agent.” Brown ¶ 7. “In one embodiment, the
isothiazolin comprises an isothizaolin-3-one compound.” Id. ¶ 21. “In one
embodiment, the composition can contain a second biocide. The second
biocide may comprise a pyrithione.” Id. ¶ 13. “The composition may also
contain a zinc compound.” Id. ¶ 14.
Brown states that, “[i]n addition to a first biocide and a second
biocide, the composition can further include a biocide enhancing agent.” Id.
¶ 30. “The biocide enhancing agent, in one embodiment, may comprise an
amine, an amine salt, an amine oxide (collectively referred to ‘amine
compounds’), or mixtures thereof.” Id.
In one embodiment, the amine may have the following formula:

In one embodiment, R1 may be a linear, branched, cyclic, or
any combination thereof of a C1–40 saturated or unsaturated
group . . . such as a C1–5 saturated or unsaturated group. R1 may
be an alkyl group, an alkenyl group, an alkynyl group, a
hydroxyalkyl group, an alkoxy group, or an aminoalkyl group.
Id. ¶ 32. “R2 and R3 each independently of one another may be H or a
linear, branched, cyclic, or any combination thereof of a C1–40 saturated or
unsaturated group.” Id. ¶ 33. Thus, as the Examiner found, Brown’s amine
component encompasses the species in which R2 and R3 are H and R1 is C2
hydroxyalkyl; i.e., ethanolamine.
Brown does not describe a specific embodiment in which its biocide
enhancing agent is ethanolamine. However, Rioux discloses “a stable,
soluble, antimicrobial composition concentrate comprising pyrithione,
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pyrithione salt or a pyrithione complex . . . , a zinc source . . . , and an
organic amine component.” Rioux ¶ 29. “The organic amine component
comprises a first organic amine selected from the group consisting of 1,2-
alkanolamines, and 1,3-alkanolamines, and combinations thereof, alone or in
combination with a second organic amine.” Id.
Rioux discloses that its composition “provid[es] a soluble, stable and
concentrated biocidal composition that possesses enhanced biocidal efficacy
relative to pyrithione or its derivatives alone.” Id. ¶ 45. More specifically,
Rioux states that its “antimicrobial combination . . . exhibits both ‘in-can’
preservation and an enhanced biocidal effect, relative to pyrithione alone,
and relative to pyrithione and zinc alone, against a wide range [of]
microorganisms in both the free-living and biofilm state.” Id. ¶ 47. Thus, a
skilled artisan would have understood Rioux to disclose that addition of a
1,2-alkanolamine or a 1,3-alkanolamine (e.g., ethanolamine, id. ¶ 102) to a
composition comprising pyrithione and zinc would provide enhanced
biocidal efficacy compared to pyrithione and zinc alone.
Based on these teachings, we agree with the Examiner that it would
have been obvious to modify Brown’s biocidal composition—comprising an
isothiazolinone, a pyrithione, and a zinc compound—by adding to it a C1–C5
alkanolamine (e.g., ethanolamine), because Rioux teaches that adding an
alkanolamine to a pyrithione- and zinc-containing mixture enhances its
biocidal efficacy.
Appellant argues that “throughout the specification, Brown teaches
that the amine is a long chain amine” and “one having skill in the art would
have no motivation to look to Brown for a composition that uses a C1–C5
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alkanolamine.” Appeal Br. 12. See also id. at 13–14 (“[W]hen taken as a
whole, Brown clearly teaches that the biocide enhancing agent is a long
chain amine, and thus, . . . one having skill in the art would have no
motivation to modify the long chain amine of Brown to be a C1–C5
alkanolamine.”).
This argument is unpersuasive, because the rejection is based on the
combined disclosures of Brown and Rioux (and Goettsche), and Rioux
provides ample reason to add a C1–C5 alkanolamine (e.g., ethanolamine) to
Brown’s composition; specifically, because Rioux teaches that an
alkanolamine enhances the biocidal efficacy of compositions comprising
pyrithione and zinc, compared to pyrithione and zinc alone.
Appellant also argues that “Rioux teaches that the combination of a
first and second organic amine allows greater amounts of zinc and pyrithione
to be concentrated in a solution without precipitating.” Appeal Br. 17.
“Rioux also fails to teach or disclose any properties for the amine other than
improved solubility. Particularly, Rioux contains no teaching or use for the
amine other than to solubilize large amounts of biocide.” Id. at 18. Appellant
argues that, “as Brown has no need to solubilize large amounts of biocide,
. . . one having skill in the art would have no motivation to modify the long
chain amine of Brown with the organic amine solubilizer of Rioux.” Id.
This argument is also unpersuasive, because Rioux expressly teaches
that its composition—comprising pyrithione, a zinc compound, and an
organic amine that includes an alkanolamine—“exhibits . . . an enhanced
biocidal effect, relative to pyrithione alone, and relative to pyrithione and
zinc alone.” Rioux ¶ 47. Rioux expressly states that “the term ‘enhanced
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biocidal effect’ refers to an interaction between the pyrithione or pyrithione
salt component, the water-soluble zinc component, and the organic amine
component that results in the biocidal effect of the composition being greater
than any of the components taken individually.” Id. ¶ 48. Thus, a skilled
artisan would have expected that combining an alkanolamine with a
composition comprising pyrithione and a zinc component, like Brown’s,
would result in an enhanced biocidal effect compared to the effect of the
pyrithione- and zinc-containing composition by itself.
Appellant also argues that the cited references do not meet the
“fractional inhibitory concentration” limitation of the claims. Appeal Br. 8.
Specifically, Appellant argues that
fractional inhibitory concentration is calculated as the
concentration of a biocide which controlled growth in a
mixture divided by the amount of biocide required to control
growth when used alone when tested against a target
microorganism. . . . Therefore, it is clear that the FIC as used in
the present disclosure has its common meaning in the art, and
as would be understood by one having skill in the art, is
dependent on not only the biocides, but is also dependent upon
the other compounds contained in the mixture.
Id. at 9.
Appellant argues that instant claim 1 recites a composition comprising
an isothiazolinone, a pyrithione, a zinc compound, and a C1–C5
alkanolamine, but “the example of Brown relied upon in the Office Action,
and as admitted in the Office Action, contains an isothiazolinone, zinc
pyrithione, and cocodimethylamine oxide, which is a C12 amine oxide.” Id.
at 9–10. Appellant argues that the Examiner has provided “no articulated
reasoning . . . that one having skill in the art would understand that the
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replacement of a C12 amine oxide with a C1–C5 alkanolamine would yield
the same unexpected results yielded by the C12 amine oxide.” Id. at 10.
Appellant also argues that “Brown is directed towards long-chain
amines (C6 or greater)” and there is no articulated reasoning why a skilled
artisan would expect “that replacing the long chain amine (cocodimethyl-
amine oxide) with a short chain alkanolamine (C1–C5 alkanolamine) would
result in the same FIC.” Id. at 11. Finally, Appellant argues that, as noted in
the Specification, “any FIC value less than 1 indicates synergistic
interactions. Therefore, Appellant[] further respectfully submits that the FIC
limitation in claim 1 is not a mere recitation of properties, and instead shows
the synergistic effects exhibited by the composition according to the
presently pending claims.” Id. at 19.
These arguments are also unpersuasive. As Appellant has pointed out,
“the FIC as used in the present disclosure . . . is dependent on not only the
biocides, but is also dependent upon the other compounds contained in the
mixture.” Appeal Br. 9. “The fractional inhibitory concentration [FIC] is
calculated as the concentration of a biocide which controlled growth in a
mixture divided by the amount of biocide required to control growth when
used alone.” Spec. ¶ 21.
In this case, the FIC of pyrithione is the biocidally effective
concentration of pyrithione in the claimed mixture divided by the biocidally
effective concentration of pyrithione alone. Rioux discloses that the biocidal
efficacy of pyrithione is enhanced when it is combined with an alkanolamine
such as ethanolamine. Thus, a skilled artisan would reasonably expect, based
on Rioux’s teaching, that a lower concentration of pyrithione would be
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needed for effective biocidal activity in the claimed composition than would
be needed for pyrithione used alone.
That is, even if the biocides in the claimed composition act
independently (i.e., with additive effects) and the isothiazolinone in the
claimed composition is unaffected by any of the other components of the
mixture, a skilled artisan would still expect the sum of the FIC of
isothiazolinone and the FIC of pyrithione in the claimed composition to be
less than one, because the alkanolamine in the composition enhances the
biocidal efficacy of pyrithione, and therefore less pyrithione is required in
the claimed composition for biocidal efficacy, compared to pyrithione by
itself. For this reason, a skilled artisan would reasonably expect that the
composition made obvious by the combined teachings of Brown and Rioux
would meet the “fractional inhibitory concentration” limitation of claim 1.
Appellant relies on the same arguments with respect to independent
claim 26 and the dependent claims. See Appeal Br. 20–21. The arguments
are unpersuasive for the reasons discussed above. We therefore affirm the
rejection of claims 1–12, 17–24, and 26–29 under 35 U.S.C. § 103 based on
Brown, Goettsche, and Rioux.
Obviousness-type double patenting
All of Appellant’s claims stand rejected for obviousness-type double
patenting, based on the claims of application 14/543,999 (now U.S. Patent
10,721,934), U.S. Patent 8,317,912, or U.S. Patent 5,939,203, any one of
which is combined with the teachings of Brown, Goettsche, and Rioux. Ans.
9–11. The Examiner finds that each of the earlier patents’ claims include all
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of the elements of instant claim 1 except for an alkanolamine (e.g.,
ethanolamine).
The Examiner finds, however, that because “Rioux et al. teach
ethanolamine as suitable amine (as biocidal enhancing agent) in biocidal
coating composition, it is obvious for one artisan in the art to have
ethanolamine as biocide enhancing amine in appellant’s claimed invention.”
Id. at 10. Thus, the Examiner concludes that a skilled artisan would
recognize the instant claims as an obvious variant of the previously patented
subject matter. Id. at 10–11.
We agree with the Examiner’s reasoning and conclusion. “[T]he law
of obviousness-type double patenting looks to the law of obviousness
generally. As we further explained in Amgen, ‘[t]his part of the obviousness-
type double patenting analysis is analogous to an obviousness analysis under
35 U.S.C. § 103.’” Abbvie Inc. v. The Mathilda and Terence Kennedy Inst.
of Rheumatology Trust, 764 F.3d 1366, 1378 (Fed. Cir. 2014) (quoting
Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1361 (Fed. Cir.
2009). “Obviousness is determined from the vantage point of a hypothetical
person having ordinary skill in the art to which the patent pertains. . . . The
legal construct also presumes that all prior art references are available to this
hypothetical skilled artisan.” In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir.
1998).
Here, claim 1 of the ’934 patent is directed to a biocidal composition
comprising an isothiazolin-3-one; zinc pyrithione; and cocodimethylamine
oxide, N,N-dimethyloctyl amine-n-oxide, or a mixture thereof. ’934 patent
20:56–67. Dependent claim 4 adds the requirement of a zinc compound.
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Claim 1 of the ’912 patent is similarly directed to an antimicrobial
composition comprising an isothiazolin-3-one, a pyrithione, a zinc
compound, and an anionic surfactant. ’912 patent 11:65 to 12:49. Claim 1 of
the ’203 patent is directed to a paint comprising, among other things, a
pyrithione and zinc oxide; dependent claim 6 adds the requirement of a co-
biocide that can be n-octyl isothiazolinone. ’203 patent 13:59 to 14:18.
Thus, the claims of each of the ’934 patent, the ’912 patent, and the
’203 patent are directed to biocidal compositions comprising an
isothiazolinone, pyrithione, and a zinc compound. The previously patented
compositions do not include a C1–C5 alkanolamine, but Rioux disclosed
that addition of an alkanolamine to a composition comprising a pyrithione
and a zinc compound enhances the biocidal efficacy of the composition
relative to pyrithione alone or pyrithione plus zinc alone. Rioux ¶¶ 45, 47.
Thus, it would have been obvious to a person of ordinary skill in the art to
modify the previously patented compositions by additionally including an
alkanolamine such as ethanolamine, in order to enhance the biocidal activity.
We therefore agree with the Examiner that the instant claims represent an
obvious variant of the claims of the ’934 patent, the ’912 patent, and the
’203 patent.
Appellant argues that the claims of the ’934 patent recite long chain
amines and the Examiner has not provided articulated reasoning why a
skilled artisan would be motivated to modify the specifically enumerated
long chain amines with a C1–C5 alkanolamine. Appeal Br. 22–23. With
regard to the ’912 patent and the ’203 patent, Appellant argues that “that, if
multiple references are necessary in order to assertedly show that the
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presently pending claims are unpatentable over [the earlier patents], the fact
instead clearly shows that the presently pending claims are patentably
distinct over [the earlier patents].” Id. at 23–24.
These arguments are unpersuasive. “[T]he obviousness-type double
patenting analysis is analogous to an obviousness analysis under 35 U.S.C.
§ 103.” Abbvie, 764 F.3d at 1378. “Obviousness is determined from the
vantage point of a hypothetical person having ordinary skill in the art. . . .
[A]ll prior art references are available to this hypothetical skilled artisan.” In
re Rouffet, 149 F.3d at 1357. Thus, the question is whether a hypothetical
person of ordinary skill in the art, aware of all of the relevant teachings of
the prior art, would have considered the instantly claimed composition to be
an obvious variant of the previously patent compositions. For the reasons
discussed above, we conclude that, based on Rioux’s teachings, a skilled
artisan would have considered it obvious to modify the previously patented
claims by adding an alkanolamine such as ethanolamine, in order to enhance
the biocidal efficacy of the pyrithione-containing compositions.
We therefore affirm all of the rejections for obviousness-type double
patenting.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–12, 17–
24, 26–29
103 Brown, Goettsche,
Rioux
1–12, 17–
24, 26–29

1–12, 17–
24, 26–29
Provisional
Obviousness-type
Double Patenting
1–12, 17–
24, 26–29

1–12, 17–
24, 26–29
Obviousness-type
Double Patenting, ’912
Patent
1–12, 17–
24, 26–29

1–12, 17–
24, 26–29
Obviousness-type
Double Patenting, ’203
Patent
1–12, 17–
24, 26–29

Overall
Outcome
1–12, 17–
24, 26–29

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