Scott Brown et al.

Patent Trials and Appeals Board

Mar 19, 2020

14543999 - (D) (P.T.A.B. Mar. 19, 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.
14/543,999 11/18/2014 Scott Brown LZA-53 (LP2372US00) 2876
22827 7590 03/19/2020
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
SONG, JIANFENG
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
03/19/2020 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, XIAO JIANG, and GEORGE POLSON1
Appeal 2018-007221
Application 14/543,999
Technology Center 1600
Before ERIC B. GRIMES, ULRIKE W. JENKS, and
MICHAEL A. VALEK, 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
biocidal preservative 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 Arch Chemicals, Inc.
Appeal Br. 2. We use the word Appellant to refer to “applicant” as defined
in 37 C.F.R. § 1.42(a).
Appeal 2018-007221
Application 14/543,999

2
STATEMENT OF THE CASE
“In the past, various different preservatives and preservative blends
have been suggested. For example, isothiazolin compounds are widely used
as biocides.” Spec. ¶ 4. “[I]sothiazolin biocides have been combined with
pyrithione biocides.” Id. ¶ 5.
The Specification discloses “a composition having biocidal properties.
In accordance with the present disclosure, a first biocide comprising an
isothiazolin is combined with at least one biocide enhancing agent. The
biocide enhancing agent acts as a potentiator and increases the effectiveness
of the first biocide against various microorganisms.” Id. ¶ 7. “Examples of
biocide enhancing agents . . . include 1-dodecylamine, cocodimethylamine
oxide, 4-dodecylmorpholine, lauryl dimethyl amine, Bis (3-aminopropyl)
dodecylamine, or mixtures thereof.” Id. ¶ 10.
Claims 1, 2, 4–8, 10, 11, and 26–28 are on appeal. Claim 1,
reproduced below, is illustrative:
1. A composition having biocidal properties comprising:
a first biocide comprising an isothiazolinone;
a second biocide comprising pyrithione; and
a biocide enhancing agent comprising cocodimethylamine oxide,
N, N-dimethyloctyl amine-n-oxide, Bis (3-aminopropyl) dodecylamine, or
mixtures thereof, wherein the first biocide and the biocide enhancing agent
are present in the composition at a weight ratio of from about 1:600 to about
2:1.

Appeal 2018-007221
Application 14/543,999

3
The claims stand rejected as follows:
Claims 1, 2, 4–8, 10, 11, and 26–28 under 35 U.S.C. § 103 as obvious
based on Hyde,2 Greene,3 Choi,4 Whittemore,5 Chisholm,6 and Tseng7
(Ans. 4);
Claims 1, 2, 4–8, 10, 11, 26, and 27 for obviousness-type double
patenting based on claims 1–18 of U.S. Patent 8,317,912 in view of Greene,
Choi, Whittemore, Chisholm, and Tseng (Ans. 13); and
Claims 1, 2, 4–8, 10, 11, 26, and 27 for obviousness-type double
patenting based on claims 1–6 of U.S. Patent 5,939,203 in view of Greene,
Choi, Whittemore, Chisholm, and Tseng (Ans. 14).
OPINION
Obviousness
Claims 1, 2, 4–8, 10, 11, and 26–28 stand rejected as obvious based
on Hyde, Greene, Choi, Whittemore,8 Chisholm,9 and Tseng. The Examiner

2 Hyde et al., US 2012/0247364 A1, Oct. 4, 2012.
3 Greene et al., US 2010/0239679 A1, Sept. 23, 2010.
4 Choi et al., US 2008/0063723 A1, Mar. 13, 2008.
5 Whittemore et al., US 6,034,081, Mar. 7, 2000.
6 Chisholm et al., US 2011/0171279 A1, July 14, 2011.
7 Tseng et al., US 6,448,279 B1, Sept. 10, 2002.
8 The Examiner cites Choi and Whittemore as providing a reason “to include
an alkyl amine with at least 6 carbons such as N-dodecyl morpholine,”
apparently with reference to, for example, claim 26. See Ans. 9–10. As
Appellant has pointed out, however, claim 26 requires an amine oxide, not
an alkyl amine. See Appeal Br. 28. Therefore, we will not further discuss
Choi or Whittemore.
9 The Examiner cites Chisholm as disclosing biocides comprising
polyethyleneimine, as recited in certain dependent claims. See Ans. 7–8.
Appeal 2018-007221
Application 14/543,999

4
finds that Hyde discloses an antimicrobial composition comprising an
isothiazolin-3-one (i.e., an isothiazolinone as recited in the claims), a
pyrithione, and a zinc compound. Ans. 4. The Examiner finds that Hyde
teaches that its compositions “may find utility in a variety of compositions in
which biocides are commonly used including, but not limited to polymer
latex, paints, coatings, adhesives,” etc. Id. at 5.
The Examiner finds that Hyde does not “teach cocodimethylamine
oxide as well as its ratio with isothiazolin-3-one.” Id. at 8. However, the
Examiner finds that Tseng “teaches a wood preservative composition
comprising an amine oxide and an isothiazolone.” Id.10 “I[n] example 1,
cocodimethylamine oxide is recited as specific amine oxide.” Id. The
Examiner finds that Tseng also teaches that “[t]he weight ratio of said amine
oxide to said isothiazolone ranges from about 100:1 to about 1:1.” Id.
Finally, the Examiner finds that Tseng “teaches amine oxides enhance the
performance of isothiazolones as wood preservatives and provide
waterproofing properties.” Id.11

Appellant does not separately argue the dependent claims. See Appeal Br.
31–32. Therefore, we will not further discuss Chisholm.
10 The Examiner finds that “[i]sothiazolones is other name of isothiazolin-3-
one.” Ans. 8. Appellant does not dispute this finding. See Appeal Br. 9
(“Tseng is solely directed to a composition that contains an amine oxide and
an isothiazolone for penetration of an isothiazolone into wood substrates[,]
. . . enhancing a wood preservative by improving the penetration of
isothiazolinone into a wood substrate.”).
11 The Examiner cites Greene for its disclosure that “Alkyl (C10–16)
dimethyl amine oxide . . . and isothiazolinone . . . both act as biocide.”
Ans. 5. This disclosure is cumulative in view of Tseng’s disclosure of
cocodimethylamine oxide. Therefore, we will not further discuss Greene.
Appeal 2018-007221
Application 14/543,999

5
The Examiner concludes that it would have been obvious to modify
Hyde’s composition “to include amine oxide with at least 6 carbons because
Tseng et al. teaches amine oxides (e.g. cocodimethylamine oxide) enhanc[e]
the performance of isothiazolones (isothiazolin-3-one) as wood preservatives
and it is [an] advantage for [a] biocidal composition [such] as paint (wood
coating) to include amine oxide for enhanced performance.” Id. at 9. The
Examiner also concludes that, “[r]egarding the ratio of the first biocide and
amine oxide,” it would have been obvious to use the agents at the “weight
ratio of amine oxide to isothiazolone from about 100:1 to about 1:1” taught
by Tseng, “and produce the instant claimed invention with reasonable
expectation of success.” Id. at 11.
We agree with the Examiner that Hyde and Tseng support a prima
facie case of obviousness with respect to claim 1. Hyde discloses “an
antimicrobial composition comprising (a) from about 15 ppm to about 50
ppm of at least one isothiazolin-3-one, [and] (b) from about 15 ppm to about
50 ppm of a pyrithione salt or pyrithione acid,” along with a zinc compound
and an anionic surfactant. Hyde ¶ 5. Hyde also states that its “antimicrobial
compositions . . . may find utility in a variety of compositions in which
biocides are commonly used including, but not limited to polymer latex,
paints, coatings,” etc. Id. ¶ 22. Hyde additionally states that its
“antimicrobial compositions . . . are suitably used to preserve mineral
slurries.” Id. ¶ 23.
Tseng discloses “a composition comprising an amine oxide and an
isothiazolone.” Tseng 1:36–37. Tseng discloses that the combination has a
number of advantageous properties: (a) “amine oxides enhance the
Appeal 2018-007221
Application 14/543,999

6
performance of isothiazolones as wood preservatives and provide
waterproofing properties,” (b) “[t]he amine oxide enhances penetration of
the isothiazolone into wood substrates and improves leach resistance,” and
(c) “the amine oxides aid[] in solubilizing the isothiazolone in water,”
forming “aqueous solutions . . . which have only one phase.” Id. at 1:32–34,
49–54.
Tseng states that “[t]he weight ratio of amine oxide to isothiazolone
broadly ranges from about 100:1 to about 1:1 and preferably from about
50:1 to 5:1.” Id. at 4:9–11. Tseng also states that “[o]ther biocides,
fungicides and insecticides may be include[d] in the composition.” Id. at
4:27–29. Tseng’s Example 1 reads as follows:
0.9 g of a 50% (w/w) 4,5-dichloro-2-n-octyl-3-isothiazolone
solution in xylene was dissolved in 30 g of a 30% (w/w)
cocodimethylamine oxide (coco-DMAO) solution in water and
14.1 g of water with stirring to yield solution containing 20%
by weight of coco-DMAO and 1% by weight of 4,5-dichloro-2-
n-octyl-3-isothiazolone.
Id. at 4:64 to 5:2 (emphasis added). Tseng describes the antifungal efficacy
of compositions comprising coco-DMAO and either 1,2-benzisothiazolone
or 4,5-dichloro-2-n-octyl-3-isothiazolone, “determined using the agar
dilution plate method.” Id. at 6:10–11, Tables 1 and 2.
Based on Tseng’s teachings, it would have been obvious to add
cocodimethylamine oxide to Hyde’s composition, because Hyde teaches that
its composition is useful in paints and coatings, and Tseng teaches that an
amine oxide such as cocodimethylamine oxide enhances the performance of
isothiazolones as wood preservatives, improves leach resistance, and aids in
solubilizing the isothiazolone in water. Because wood is a common substrate
Appeal 2018-007221
Application 14/543,999

7
for paints and coatings, a skilled artisan would appreciate that enhanced
wood preservation and decreased leaching would be desirable properties in a
paint or coating.
Tseng would also have made obvious the weight ratio recited in claim
1, because it discloses a weight ratio of amine oxide to isothiazolone
between 100:1 and 1:1. This range of ratios corresponds to ratios between
1:100 and 1:1 of first biocide (isothiazolinone) to biocide enhancing agent
(cocodimethylamine oxide), in the language of claim 1. Thus, Tseng’s range
of ratios is entirely encompassed by the recited range of 1:600 to 2:1.
“Selecting a narrow range from within a somewhat broader range disclosed
in a prior art reference is no less obvious than identifying a range that simply
overlaps a disclosed range.” In re Peterson, 315 F.3d 1325, 1329–30 (Fed.
Cir. 2003).
Appellant argues that “Tseng is solely directed to a composition that
contains an amine oxide and an isothiazolone for penetration of an
isothiazolone into wood substrates,” while “Hyde is directed to an
antimicrobial composition for an aqueous slurry, not a wood preservative.”
Appeal Br. 9. Appellant argues that “one having skill in the art would not be
prompted to include an amine oxide into the composition of Hyde for the
known use as a wood penetrant.” Id. at 10. Appellant argues that “no
articulated reasoning has been provided as to the motivation to pick an
adjuvant for wood preservatives for incorporation into a reference such as
Hyde, that contains absolutely no teaching or suggestion of use with wood or
wood products.” Id. at 11.
Appeal 2018-007221
Application 14/543,999

8
These arguments are not persuasive. Hyde states that its antimicrobial
composition is suitable for use in mineral slurries, but does not limit the use
of its compositions to such slurries. For example, Hyde states that mineral
slurries comprising its composition “can be used in the manufacturing of
papers, pigments, fillers, etc.” Hyde ¶ 23. Hyde also states, however, that its
“antimicrobial compositions . . . may find utility in a variety of compositions
in which biocides are commonly used,” without limiting such compositions
to ones that include a mineral slurry. Id. ¶ 22. Thus, Hyde suggests using its
composition in “polymer latex, paints, coatings, adhesives, functional fluids,
and aqueous systems having suitable conditions conductive to the growth of
microorganisms” generally. Id. A reference’s teachings are not limited to its
preferred embodiments, Merck & Co. Inc. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989), and when Hyde is viewed as a whole, its
disclosure is not limited to an antimicrobial composition for use in mineral
slurries.
In addition, Tseng’s disclosure is not limited to using an amine oxide
to enhance penetration of an isothiazolone into wood, as Appellant argues.
Tseng discloses that an amine oxide also improves leach resistance and aids
in solubilizing an isothiazolone in water, which provide additional reasons
for including an amine oxide in Hyde’s composition. In addition, Tseng’s
tests showing the improved antifungal activity of amine oxide/isothiazolone
combinations were carried out on agar plates in vitro, and therefore the
improved results shown were not due to enhanced penetration in wood. See
Tseng, Examples 6 and 7, Tables 1 and 2.
Appeal 2018-007221
Application 14/543,999

9
Appellant also argues that “the Declaration of Helen Hyde[12]
persuasively shows a lack of motivation to combine Hyde and Tseng.”
Appeal Br. 12. Appellant argues that
Helen Hyde is the primary inventor of the Hyde reference. . . .
In the Declaration, Ms. Hyde states in regards to Tseng, “One
with ordinary skill in the art would not combine the amine
oxide in Tseng with the invention contained in Hyde, as there
would be no motivation to modify an aqueous slurry with a
penetrating adjuvant or waterproofing agent for wood.” One
with ordinary skill in the art would have no such motivation
because “the invention in Hyde . . . would have no need for a
penetrating adjuvant.”
Id. at 12–13. Appellant argues that “the Declaration shows that, not only one
having skill in the art, but the actual inventor of the cited reference would
have had no motivation to modify Hyde as asserted by the Office Action.”
Id. at 14.
This argument, and the declaration on which it is based, are
unpersuasive, because they are again based on reading Hyde as limited to
using its antimicrobial composition in mineral slurries. As previously
discussed, however, Hyde suggests using its composition in “a variety of
compositions in which biocides are commonly used,” without limiting such
compositions to ones that include a mineral slurry. Hyde ¶ 22. The
argument, being based on an unduly narrow interpretation of the references,
is unpersuasive.
Appellant also argues that Choi, Greene, Whittemore and Chisholm
do not adequately support the rejection of the independent claims. Appeal
Br. 16–22. As discussed above, however, we conclude that Hyde and Tseng

12 Filed April 4, 2017.
Appeal 2018-007221
Application 14/543,999

10
provide adequate evidence to support a prima facie case of obviousness with
respect to claim 1. Appellant’s separate arguments with respect to
independent claims 26 and 28 are addressed below.
Appellant also argues that
[t]he examples contained in the present application demonstrate
results that would be unexpected. . . . The present inventors
found unexpectedly that the combination of an isothiazolinone,
a pyrithione, and at least one amine oxide can reduce the
amounts of each of the components needed to be effective
compared to what would be initially expected if the effects were
additive. Therefore, the claimed combination of components
produces synergistic results.
Appeal Br. 23.
Appellant points to results shown in the Specification’s working
examples, including Tables 5 and 9. Id.13 Appellant also points to the Brown
Declaration14 as evidence that, “in Mr. Brown’s opinion, the combination of
an isothiazolinone, a pyrithione, and at least one amine oxide exhibits better
results than would be expected from their individual results and properties.”
Id. at 24–25.
We have considered the evidence presented in the Specification and in
the Brown Declaration but conclude that a preponderance of the evidence
weighs in favor of obviousness. “To be particularly probative, evidence of
unexpected results must establish that there is a difference between the
results obtained and those of the closest prior art, and that the difference
would not have been expected by one of ordinary skill in the art at the time

13 However, the results that Appellant points to in Table 5 seem to
correspond to those shown in Table 6.
14 Filed April 4, 2017.
Appeal 2018-007221
Application 14/543,999

11
of the invention.” Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., 752
F.3d 967, 977 (Fed. Cir. 2014).
Here, the closest prior art embodiment is provided by Hyde, which
describes a sample referred to as Biocide A (0.046%), and consists of 25
ppm 1,2-benzisothiazolin-3-one (BIT), 25 ppm zinc pyrithione (ZPT), and
68 ppm zinc oxide. Hyde ¶ 27, Table 1.
Appellant’s Table 6 shows the biocidal effect of 25 ppm ZPT plus 25
ppm BIT in acrylic paint. Spec. Table 6, line 8. This sample, which
corresponds to Hyde’s composition, showed no contamination (“0”) for all
“1st inoculation” time points and severe contamination (“5”) for all time
points in the 2nd and 3rd inoculations. Id. By comparison, the sample
containing 25 ppm each of ZPT and BIT, plus 1200 ppm cocodimethylamine
oxide (“CDMA Oxide”), showed show no contamination for all 1st
inoculation time points, moderate contamination (“3”) for the first 2nd
inoculation time point (24 hours), and severe contamination for all
remaining 2nd and 3rd inoculation time points. Id. at Table 6, line 12. The
Specification’s Table 9 shows results for another sample containing 25 ppm
each of ZPT and BIT, plus 1200 ppm cocodimethylamine oxide; for this
sample showed no contamination at the time points in the 1st and 2nd
inoculations, and severe contamination at all time points in the 3rd
inoculation. Id. at Table 9, line 19.
Appellant cites the Brown Declaration as evidence that the results
shown are better than expected. Mr. Brown discusses the results shown in
the Specification’s Tables 6 and 9. Brown Decl. ¶¶ 8–10. Mr. Brown states
that “Table 6 show[s] that a combination of two biocides in amounts up to
Appeal 2018-007221
Application 14/543,999

12
50 ppm are also below the effectiveness at controlling bacterial growth
exhibited by a combination including a fatty amino oxide.” Id. ¶ 8. Mr.
Brown also states that Tables 6 and 9 show that, “when all three components
are combined, the preservative blend is more effective than any of the
components used alone or the combination of the two biocides without the
amine oxide.” Id. ¶ 9.
Mr. Brown concludes that “[t]his result is unexpected as CDMA oxide
is not a biocide in itself.” Id. Mr. Brown also states that “in my opinion, the
combination of an isothiazolinone, a pyrithione, and at least one amine oxide
exhibits better results that would be expected.” Id. ¶ 11.
We find the results cited by Appellant to be, at best, dubious evidence
of unexpected results when viewed in light of the cited prior art. While it
might be, as Mr. Brown states, that cocodimethylamine oxide is not itself a
biocide, Tseng discloses that “amine oxides enhance the performance of
isothiazolones as wood preservatives.” Tseng 1:32–33. Tseng also shows
that cocodimethylamine oxide (“Coco-DMAO”) increases the antifungal
efficacy of two specific isothiazolones. Id., Tables 1 and 2.
Moreover, even accepting that the results shown in the Specification
are better than would have been expected, we conclude that they are
inadequate to support the nonobviousness of the claimed composition.
“Evidence of unexpected results must be reasonably commensurate with the
scope of the claims.” In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir.
2011). Appellant points to the Specification’s data regarding the
combination of cocodimethylamine oxide with an isothiazolinone and a
pyrithione. None of the claims on appeal, however, limits the biocide
Appeal 2018-007221
Application 14/543,999

13
enhancing agent to cocodimethylamine oxide. Independent claims 1 and 28
recite “a biocide enhancing agent comprising cocodimethylamine oxide,
N, N-dimethyloctyl amine-n-oxide, Bis (3-aminopropyl) dodecylamine, or
mixtures thereof,” and independent claim 26 recites “a biocide enhancing
agent comprising an amine oxide, the amine oxide having a carbon chain
length of at least 6 carbon atoms.”
In contrast to the broader scope of the claims, Appellant’s evidence of
unexpected results is limited to cocodimethylamine oxide. Appellant has not
pointed to evidence of unexpectedly superior results for either of the other
two species recited in claims 1 and 28, or any of the other species within the
genus recited in claim 26. Nor has Appellant pointed to evidence or provided
sound technical reasoning to show that a skilled artisan would expect other
enhancing agents encompassed by the claims to provide results similar to
those of cocodimethylamine oxide.
In addition, Appellant’s evidence only shows a limited range of
isothiazolinone-to-amine oxide ratios. The Specification’s Table 6 only
shows results for the combination of 25 ppm BIT to 1200 ppm CDMA
Oxide, a ratio of 1:48. Spec. Table 6, lines 12–13. The Specification’s Table
9 includes ratios of 1:240 (5 ppm BIT:1200 ppm CDMA Oxide) and 1:27
(several, including 10 ppm BIT:270 ppm CDMA Oxide). Id. Table 9, lines
9, 11–18.
Claim 1, however, encompasses weight ratios of isothiazolinone to
biocide enhancing agent ranging from 1:600 to 2:1. The results shown in the
Specification do not demonstrate any results, let alone unexpectedly superior
results, for ratios of isothiazolinone to biocide enhancing agent higher than
Appeal 2018-007221
Application 14/543,999

14
1:27, such as equal amounts (a 1:1 ratio) of isothiazolinone and biocide
enhancing agent.
Thus, Appellant’s evidence is not commensurate with the scope of the
claims, with respect to either the identity of the biocide enhancing agent or
the ratio of isothiazolinone to biocide enhancing agent.
With regard to claim 26, Appellant argues that the Examiner “appears
to be asserting . . . that reference to Choi and/or Whittemore teach an amine
oxide having greater than 6 carbon atoms. However, Appellant notes that the
rejection is directed to an alkyl amine, whereas the present claims recite an
amine oxide.” Appeal Br. 28. However, the Examiner expressly stated that it
would have been obvious modify Hyde’s composition “to include [an]
amine oxide with at least 6 carbons,” as recited in claim 26, “because Tseng
et al. teaches amine oxides (e.g. cocodimethylamine oxide).” Ans. 9. Thus,
regardless of what Choi and Whittemore disclose, the Examiner found that
Tseng discloses the disputed limitation as well. Appellant’s argument is
therefore unpersuasive.
With regard to claim 28, Appellant argues that the Specification
shows unexpected results over the claimed range of first biocide
concentration (i.e., 5–15 ppm). Appeal Br. 29–31. As discussed above,
however, Appellant’s evidence of unexpected results is not commensurate
with the scope of the claims, with respect to either the identity of the biocide
enhancing agent or the ratio of isothiazolinone to biocide enhancing agent.
These considerations apply equally to claim 28, and Appellant’s argument is
therefore unpersuasive.
Appeal 2018-007221
Application 14/543,999

15
Obviousness-type Double Patenting
Claims 1, 2, 4–8, 10, 11, 26, and 27 stand rejected based on the claims
of either U.S. Patent 8,317,912 or U.S. Patent 5,939,203, in view of Greene,
Choi, Whittemore, Chisholm, and Tseng. The Examiner cites claims in both
the ’912 and ’203 patents to compositions that include an isothiazolinone
and a pyrithione, and concludes that adding an amine oxide to the
composition would be an obvious variant in view of the other cited
references, for the same reasons discussed above with respect to
obviousness. Ans. 13–14. We agree with the Examiner’s reasoning and
conclusion.
Appellant argues that, “as not a single claim in [either the ’912 patent
or the ’203 patent] recites cocodimethylamine oxide, N, N-dimethyloctyl
amine-n-oxide, or Bis (3-aminopropyl) dodecylamine, . . . the present claims
are not only patentably distinct, they are also directed to a completely
different invention.” Appeal Br. 33. Appellant also argues that both double
patenting rejections should be reversed “for at least the reasons discussed
above.” Id. at 33–34.
We are not persuaded. The claims of the ’912 patent and the ’203
patent use open claim language that encompasses components in addition to
those recited, and the Examiner has presented sufficient evidence to show
that a composition within the scope of the issued claims, and also
comprising a biocide enhancing agent, as recited in the instant claims, would
have been an obvious variant in view of, for example, Tseng. We therefore
affirm both of the rejections for obviousness-type double patenting.

Appeal 2018-007221
Application 14/543,999

16

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–8,
10, 11, 26–
28
103 Hyde, Greene, Choi,
Whittemore, Chisholm,
Tseng
1, 2, 4–8,
10, 11, 26–
28

1, 2, 4–8,
10, 11, 26,
27
Obviousness-type
double patenting;
8,317,912, Greene,
Choi, Whittemore,
Chisholm, Tseng
1, 2, 4–8,
10, 11, 26,
27

1, 2, 4–8,
10, 11, 26,
27
Obviousness-type
double patenting;
5,939,203, Greene,
Choi, Whittemore,
Chisholm, Tseng
1, 2, 4–8,
10, 11, 26,
27

Overall
Outcome
1, 2, 4–8,
10, 11, 26–
28

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