Peter N. Coneski et al.

Patent Trials and Appeals Board

Aug 30, 2019

13832302 - (D) (P.T.A.B. Aug. 30, 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.
13/832,302 03/15/2013 Peter N. Coneski 102109-US2 4598
26384 7590 08/30/2019
NAVAL RESEARCH LABORATORY
ASSOCIATE COUNSEL (PATENTS)
CODE 1008.2
4555 OVERLOOK AVENUE, S.W.
WASHINGTON, DC 20375-5320
EXAMINER
GULLEDGE, BRIAN M
ART UNIT PAPER NUMBER
1612
MAIL DATE DELIVERY MODE
08/30/2019 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 PETER N. CONESKI, JEFFREY G. LUNDIN,
PRESTON A. FULMER, and JAMES H WYNNE
____________

Appeal 2018-000520
Application 13/832,3021
Technology Center 1600
____________

Before ULRIKE W. JENKS, RACHEL H. TOWNSEND, and
DAVID COTTA, Administrative Patent Judges.

COTTA, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 involving antimicrobial
fibers. Spec. ¶ 2. The Examiner rejected the claims on appeal as obvious
under 35 U.S.C. § 103(a).
We affirm.

1 According to Appellants, the real party in interest is the Government of the
United States of America, as represented by the Secretary of the Navy. App.
Br. 2.
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Application 13/832,302

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STATEMENT OF THE CASE
The Specification discloses that “[b]acterial contamination of clothing
and other assets is of constant concern, particularly due to the emergence of
antibiotic resistant bacteria. Personnel in hospitals, health care clinics, and
military settings are at particular risk.” Spec. ¶ 3. According to the
Specification, electrospinning, “an intricate process which utilizes
electrostatic forces to create polymeric, ceramic, and sol-gel fibers with
nano-scale diameters,” “has recently emerged as a promising method
through which to develop novel polymeric fiber and fabric formulations for
biological threat protection.” Id. ¶ 4.
The Specification discloses that “[m]any approaches have been taken
to develop antimicrobial polymer surfaces, of which, several can be tailored
to electrospinning.” Id. ¶ 7. However, these approaches “require[] either
some form of additional treatment after fabrication or reactivation of the
biocidal component prior to subsequent challenges.” Id. “A different
approach covalently incorporates biocides as monomers in the polymer
backbone which has resulted in polymers exhibiting very promising
antibacterial properties,” however this approach, “alters the physical
properties of the polymer and would result in a large proportion of the
biocide [being] buried within the bulk of the polymer, as opposed to at the
surface where microbial interaction is likely to occur.” Id.
The Specification discloses “a fiber comprising a polymeric matrix
and a quaternary ammonium salt” that “contains at least one aliphatic group
and no aromatic groups, is not covalently incorporated into the polymeric
matrix, and is present on both the surface and in the interior of the fiber.” Id.
¶ 8.
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Claims 1, 6, 7, 9, 10, 21, 22, 25, and 26 are on appeal. Claim 1 is
illustrative and reads as follows:
1. A fiber comprising:
a polymeric matrix;
wherein the polymeric matrix comprises a nylon or
a polycarbonate; and
a quaternary ammonium salt;
wherein the quaternary ammonium salt has the
formula:
X־R-CH2-N+(CH3)2-(CH2)n-CH3;
wherein X־ is an anion;
wherein R is CH3-O-CH2- or H-; and
wherein n is positive integer greater than 8;
wherein the fiber comprises at least 5 wt% of the
quaternary ammonium salt;
wherein the quaternary ammonium salt is not
covalently incorporated into the polymeric matrix;
wherein the quaternary ammonium salt is present
on both the surface and in the interior of the fiber;
wherein the fiber is made by electrospinning a solution of
the polymeric matrix and the quaternary ammonium salt; and
wherein the concentration of the quaternary ammonium
salt on the surface of the fiber is greater than the concentration
of the quaternary ammonium salt in the interior of the fiber.
App. Br. 8.
The claims stand rejected as follows:
Claims 1, 6, 9, 10, 21, 22, and 25 were rejected under 35 U.S.C.
§ 103(a) as obvious over the combination of Tan2 and Harney.3

2 Tan et al., Fabrication and Evaluation of Electrospun Nanofibrous
Antimicrobial Nylon 6 Membranes, 305 J. MEMBRANE SCI. 287–298 (2007)
(“Tan”).
3 Harney et al., Surface Self-Concentrating Amphiphilic Quaternary
Ammonium Biocides as Coating Additives, APPLIED MATERIALS &
INTERFACES (1) 39–41 (2009) (“Harney”).
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Claims 1, 7, 9, 10, and 26 were rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Tan and Gannon.4
OBVIOUSNESS OVER TAN AND HARNEY
Appellants argue claims 1, 6, 9–10, 21, 22, and 25 together. We
designate claim 1 as representative.
In finding claim 1 obvious, the Examiner finds that Tan discloses
electrospun nylon nanofibers comprising antimicrobial N-halamine
additives. Ans. 2. The Examiner acknowledges that Tan does not disclose
antimicrobial quaternary ammonium salts or that the concentration of the
quaternary ammonium salt on the surface of the fiber is greater than the
concentration in the interior of the fiber. Id. However, the Examiner finds
that this element is disclosed in Harney, which discloses self-concentrating
amphiphilic quaternary ammonium biocides. Id. The Examiner finds that it
would have been obvious to incorporate Harney’s quaternary ammonium
biocides into the fibers taught by Tan because they are taught to be useful
for the same purpose as Tam’s antimicrobial N-halamine additives. Id. at 3.
Appellants do not challenge the Examiner’s prima facie case, but
argue that “[t]he unexpected results in this case overcome any prima facie
case of obviousness.” App. Br. 4. Appellants contend that it was
unexpected that the quaternary ammonium salt would concentrate on the
surface of the claimed nanofibers. Id. at 3. Relying on the Wynne
Declaration,5 Appellants explain that the ability of an additive to surface

4 Gannon et al., US Patent No. 4,978,685, issued Dec. 18, 1990 (“Gannon”).
5 Declaration Under 37 C.F.R. § 1.132 of James H. Wynne, signed on
September 28, 2015 (“Wynne Decl.”).
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concentrate is dependent on drying time, and that electrospun fiber dries so
fast that surface concentration would not be expected. Id. at 4.
Appellants also argue that while Harney teaches that quaternary
ammonium salts migrate to the surface, Harney also teaches that this ability
is “partially dependent on the presence of polyurethane and that this is a
unique property.” Id. Appellants further argue that Harney teaches that
migration stops once the film is cured and there is “no evidence that a
compound that surface migrates in uncured polyurethane will do so in cured
nylon or polycarbonate.” Id. Thus, according to Appellants, Harney does
not provide reason to expect quaternary ammonium salts to surface migrate
in electrospun nylon fibers. Id.
Appellants have the burden of demonstrating unexpected results. We
are not persuaded that the current record supports a finding of unexpected
results sufficient to demonstrate the non-obviousness of the claimed fiber.
Appellants contend that the surface concentration of quaternary
ammonium salts in the claims is unexpected as compared to the N-halamine
antimicrobial in Tan. However, Appellants do not identify any teaching in
Tan to support that the N-halamine did not exhibit greater surface than
interior concentration,6 nor do they provide experimental data comparing the

6 The Examiner acknowledged that Tan did not teach that its N-halamine
additives surface concentrate to a greater extent than the concentration of the
N-halamine that remains in the interior of the fiber. Ans. 2. However, the
absence of a teaching regarding the relative surface concentration of N-
halamine does not establish that the N-halamine additive in Tan lacks the
claimed relative surface concentration. In this regard, we note that Tan
states that “X-ray mapping showed that N-halamine additives were
uniformly distributed on the electrospun membrane surface providing a
potentially potent antimicrobial surface.” Tan, 293 (emphasis added).
While this statement does not address the concentration of N-halamine on
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surface concentration of N-halamine additives of Tan to that of the claimed
quaternary ammonium salts. Appellants do provide the testimony of Dr.
Wynne that Tan’s halamines “did not demonstrate enhanced concentration at
the surface (surface migration),” however Dr. Wynne does not provide
evidentiary support or otherwise explain the basis for this opinion. Wynne
Decl. ¶ 8. We find that the lack of factual corroboration warrants
discounting this opinion. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the
declarations and conclude that the lack of factual corroborations warrants
discounting the opinions expressed in the declarations.”). Accordingly, we
find that Appellants have not persuasively demonstrated that the results
obtained using a quaternary ammonium salt were unexpected as compared to
the closest prior art.
In addition, unexpected results must be “commensurate in scope with
the degree of protection sought by the claimed subject matter.” In re Harris,
409 F.3d 1339, 1344 (Fed. Cir. 2005). Here, claim 1 encompasses
quaternary ammonium salts having the formula: X־R-CH2-N+(CH3)2-(CH2)n-
CH3, “wherein n is a positive integer greater than 8.” App. Br. 8. Claim 1
also encompasses quaternary ammonium salts comprising “at least 5 wt%”
of the fiber. The claim thus defines two genera: quaternary ammonium salts

the surface of the nanofiber as compared to the concentration on the interior,
it suggests that a significant quantity of the N-halamine additives were
present on the membrane surface. Moreover, as it is Appellants’ burden to
demonstrate unexpected results, In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972) (“the burden of showing unexpected results rests on he who asserts
them”), it falls upon Appellants to demonstrate that the claimed fibers are
unexpectedly different from the fibers in Tan, which comprises the closest
prior art.

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where n is greater than 8, and quaternary ammonium salts comprising at
least 5 wt% of the fiber. Appellants present evidence that two species of the
claimed quaternary ammonium salt exhibited surface migration at
concentrations of 5% and 10%. Wynne Decl. ¶ 8. We are not persuaded
that evidence from two species of salt at two concentrations is sufficient to
demonstrate unexpected results over the entire range of compounds
encompassed by “n” greater than 8 and over the entire range of
concentrations greater than 5 wt%. We recognize that Dr. Wynne testifies
that based on this data “in [his] expert opinion, an alkyl chain greater than
C8 in such [QAS] compounds at any concentration of at least 5 wt% in
nylons and polycarbonates will promote surface migration.” Id. ¶ 7.
However, the persuasiveness of this testimony is diminished because it is
conclusory and lacks an explanation as to why the results from these limited
data points can be extend to cover the entire genus. See In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d at 1368.
We acknowledge Appellants’ argument that Harney does not create an
expectation that the claimed quaternary ammonium salts would demonstrate
enhanced surface migrate in electrospun nylon or polycarbonate. App. Br. 4.
However, regardless of any expectation fostered by Harney, it was
Appellants burden to demonstrate unexpected results commensurate with the
scope of the claim as compared to the closest prior art. Moreover, while
Appellants’ argument that the ordinary artisan would not expect Harney’s
observed surface migration of QAS in slow-drying polyurethane to extend to
a fast drying process like electrospinning is appealing, the factual
contentions supporting this position are opinion testimony without
underlying experimental data, which diminishes the persuasiveness of
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Appellants’ argument. See Wynne Dec. ¶¶ 4, 6. With respect to Appellants’
argument that the surface migration described in Harney is unique to
polyurethane (App. Br. 4), Harney appears to attribute the surface migration
of its quaternary ammonium salt not to the polyurethane itself, but to the
hydrophilicity of the polyurethane. Harney Abstract (“The migration to the
surface is a consequence of the hydrophobicity of the additive within the
hydrophobic polyurethane resin”). Appellants do not persuasively explain
how or why the polymers claimed, i.e., nylon or polycarbonate fibers, would
differ from polyurethane with respect to this property so as to cause one of
ordinary skill in the art to expect the quaternary ammonium salt to interact
differently with the claimed polymers.
Accordingly, we affirm the Examiner’s rejection of claims 1, 6, 9, 10,
21, 22, and 25 as obvious over the combination of Tan and Harney.
OBVIOUSNESS OVER TAN AND GANNON
In finding claim 1 obvious, the Examiner finds that Tan discloses
electrospun nylon nanofibers comprising antimicrobial N-halamine
additives. Ans. 4. The Examiner acknowledges that Tan does not disclose
antimicrobial quaternary ammonium salts or that the concentration of the
quaternary ammonium salt on the surface of the fiber is greater than the
concentration in the interior of the fiber. Id. However, the Examiner finds
that this element is disclosed in Gannon, which discloses the use of
quaternary ammonium halides as biocides, including specifically
cetyltrimethylammonium bromide. Id. at 5. The Examiner finds that it
would have been obvious to “have incorporated cetyltrimethylammonium
bromide into the fibers taught by Tan” because “it is prima facie obvious to
combine two compositions, each of which is taught by the prior art to be
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useful for same purpose, in order to form a third composition to be used for
the very same purpose.” Id.
Appellants do not challenge the Examiner’s prima facie case, but
contend that “the Tan and Gannon references contain no evidence of surface
concentration, and it has been shown above that Applicants’ data showing
this is an unexpected result.” App. Br. 6. Appellants argue that the
unexpected results arguments presented with respect to the rejection over the
combination of Tan and Harney “apply to this rejection as well.” Id.
We addressed Appellants’ arguments regarding unexpected results
and found them unpersuasive supra. Accordingly, we affirm the Examiner’s
rejection of claims 1, 7, 9, 10, and 26 as obvious over the combination of
Tan and Gannon for the reasons discussed above.
SUMMARY
For the reasons set forth herein, and those set forth in the Examiner’s
Answer and Final Office Action, we affirm the Examiner’s rejection of
claims 1, 6, 9, 10, 21, 22, and 25 under 35 U.S.C. § 103(a) as obvious over
the combination of Tan and Harney and the Examiner’s rejection of claims
1, 7, 9, 10, and 26 under 35 U.S.C. § 103(a) as obvious over the combination
of Tan and Gannon.
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