United State Gypsum Company

Patent Trials and Appeals Board

Jun 2, 2021

2020003141 (P.T.A.B. Jun. 2, 2021)

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.
14/095,499 12/03/2013 Evan Vincent Rohlf 4480A US/2033.115026 6481
45455 7590 06/02/2021
GREER, BURNS & CRAIN, LTD.
300 SOUTH WACKER DRIVE
SUITE 2500
CHICAGO, IL 60606
EXAMINER
NELSON, MICHAEL B
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
06/02/2021 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):
docket@gbclaw.net
ptomail@gbclaw.net
verify@gbclaw.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EVAN VINCENT ROHLF
Appeal 2020-003141
Application 14/095,499
Technology Center 1700
Before JAMES C. HOUSEL, CHRISTOPHER C. KENNEDY, and
JEFFREY R. SNAY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 17, 23, and 25–27. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies United States Gypsum Company as the
real party in interest. Appeal Brief (“Appeal Br.”) filed October 30, 2019, 4.
Appeal 2020-003141
Application 14/095,499

2
CLAIMED SUBJECT MATTER
The invention relates to gypsum panels including mold-resistant paper
having an antimicrobial coating. Specification (“Spec.”) filed December 3,
2013, 1:5–9.2
Claim 17, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
17. A gypsum panel comprising a gypsum core sandwiched
between two paper sheets, a front paper sheet and a back paper
sheet, at least one or both paper sheets having an anti-microbial
coating comprising polymerized siloxane, a binder and
fungicide particles of 1 micron to 30 microns, wherein the
fungicide particles are a combination of zinc pyrithione,
thiabendazol and azoxystrobin.
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Beerse et al. (“Beerse”) US 6,294,186 B1 Sept. 25, 2001
Swofford et al.
(“Swofford”)
US 2003/0234068 A1 Dec. 25, 2003
Uhr et al. (“Uhr”) US 2012/0071324 A1 Mar. 22, 2012
Dutton et al. (“Dutton”) WO 2011/154494 A2 Dec. 15, 2011

http://www.chemicalbook.com/ProductChemicalPropertiesCB645607
0 EN.htm, Zinc pyrithione CAS#: 13463-41-7, accessed November
11, 2015 (“Zinc Pyrithione NPL”).
https://www.dictionary.com/browse/silicone, Silicone, accessed
December 31, 2018 (“Silicone NPL”).

2 This Decision also cites to the Final Office Action (“Final Act.”) dated
May 30, 2019, the Examiner’s Answer (“Ans.”) dated February 5, 2020, and
the Reply Brief (“Reply Br.”) filed March 23, 2020.
Appeal 2020-003141
Application 14/095,499

3
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections:
1. Claims 17 and 23 under 35 U.S.C. § 103 as unpatentable
over Uhr in view of Swofford and Dutton, as evidenced by
Zinc Pyrithione NPL and Silicone NPL; and
2. Claims 25–27 under 35 U.S.C. § 103 as unpatentable over
Uhr in view of Swofford and Dutton, as evidenced by Zinc
Pyrithione NPL and Silicone NPL, and further in view of
Beerse.
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering
Appellant’s arguments and the evidence of record, we are not persuaded of
reversible error in the stated rejections. Therefore, we affirm the Examiner’s
obviousness rejections based substantially on the fact findings, reasoning,
and conclusions set forth in the Examiner’s Answer, which we adopt as our
own. We offer the following for emphasis only.
Rejection 1: Obviousness of claims 17 and 23
The Examiner rejects claims 17 and 23 under 35 U.S.C. § 103 as
unpatentable over Uhr in view of Swofford and Dutton, as evidenced by
Zinc Pyrithione NPL and Silicone NPL. Ans. 4. Appellant argues the
rejected claims together, focusing on the limitations of claim 17 only.
Appeal 2020-003141
Application 14/095,499

4
Appeal Br. 7–19. We likewise focus on the limitations of claim 17 to address
Appellant’s arguments in our discussion below, which applies equally to
dependent claim 23.
The Examiner finds that Uhr teaches a mold-resistant fungicidal
coating for building materials, including a fungicide and an aqueous carrier
with silicone oil and emulsifiers. Ans. 4. The Examiner finds that Uhr
teaches that the fungicide may include thiabendazole and zinc pyrithione.3
Id. In addition, the Examiner finds that Uhr teaches that the fungicide
mixture may be formed into particles of a biocidal substance having a size of
1–150 µm, which overlaps the particle size range recited in claim 17. Id.
However, the Examiner acknowledges that Uhr fails to teach that the coating
is applied to the paper of a gypsum panel. Id. at 5.
Nonetheless, the Examiner finds that Swofford teaches a gypsum wall
board with paper layers on opposite sides of the gypsum core, wherein an
antimicrobial emulsion including pyrithione and thiabendazole with binder
is applied to the paper to provide antimicrobial properties. Ans. 5. The
Examiner also finds that Dutton teaches a fungicidal composition for
industrial products, including paper products, wherein the composition may
have improved/synergistic properties by including a mixture of ingredients
including thiabendazole and azoxystrobin to provide a broader spectrum of
anti-fungal activity. Id. at 5–6. The Examiner concludes that it would have
been obvious to have applied Uhr’s coating to the paper of a gypsum panel,
in light of Swofford’s teaching, and to include azoxystrobin in this coating

3 The Examiner finds that Uhr teaches a zinc salt of 1-hydroxy-2-
pyridinethione, which corresponds to zinc pyrithione, as evidenced by Zinc
Pyrithione NPL. Ans. 4.
Appeal 2020-003141
Application 14/095,499

5
since gypsum panels were known commercially-available building materials
and providing an additional fungicide would broaden the coating’s spectrum
of anti-fungal activity, as Dutton teaches. Id.
Appellant argues that Uhr is not directed to gypsum panels and Uhr’s
coating includes biocidal substances comprising one or more polymers, at
least one of which has structural elements derived from acrylonitrile. Appeal
Br. 8–9. In particular, Appellant contends that Uhr’s biocidal substance
comprises at least 98 wt.% of these polymers and are solidified melts or
polymeric matrices. Id. at 9. Appellant notes that claim 17 does not recite an
acrylonitrile-derived solidified melt or polymeric matrix. Id. Also, Appellant
notes that Uhr fails to disclose that the fungicide particles are a combination
of zinc pyrithione, thiabendazole, and azoxystrobin. Id.
Appellant’s arguments are not persuasive of reversible error. Initially,
we note that the rejection does not rely on Uhr alone for a teaching of a
combination of zinc pyrithione, thiabendazole, and azoxystrobin.
Appellant’s focus solely on Uhr for this point is, therefore, without merit. In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references. . . .
[The reference] must be read, not in isolation, but for what it fairly teaches
in combination with the prior art as a whole.”). We further note that
claim 17, though not reciting or requiring an acrylonitrile-based polymer,
not only fails to exclude such a polymer, but actually requires a binder. See
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (rejecting appellants’
nonobviousness argument as based on limitation not recited in claim); In re
Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of appellant’s arguments
Appeal 2020-003141
Application 14/095,499

6
fail from the outset because, as the solicitor has pointed out, they are not
based on limitations appearing in the claims.”).
Moreover, as the Examiner explains (Ans. 9–10), Uhr’s biocidal
substance stands apart from the polymer. Uhr’s biocidal compositions
include at least one biocidal substance, wherein the biocidal substance
comprises one or more biocides preferably present in particulate form. Id. at
10; Uhr ¶¶ 55, 56. As to Appellant’s contention that Uhr’s biocidal
substance comprises at least 98 wt.% of these polymers and are solidified
melts or polymeric matrices, this appears to be incorrect. Uhr teaches that at
least 98 wt.% of the polymers that are included in the biocidal substance are
preferably the acrylonitrile-derived polymer. Ans. 10; Uhr ¶ 30. Appellant
fails to direct our attention to any disclosure in Uhr requiring that the
biocidal substance itself include at least 98 wt.% polymer, nor do we find
any. To the contrary, Uhr teaches that the biocidal substance preferably
includes 2–80 wt.% biocides. Ans. 10; Uhr ¶¶ 33–35.
Appellant next argues that there is no motivation to modify Uhr’s
coating formulation and apply this modified formulation to a gypsum wall
panel. Appeal Br. 10. Appellant contends that Dutton fails to suggest that a
combination including compound A can be used in manufacturing gypsum
panels. Id. at 11. Appellant also contends that combining Uhr’s composition
with Dutton’s “does not reveal ‘fungicide particles of 1 micron to 30
microns, wherein the fungicide particles are a combination of zinc
pyrithione, thiabendazol and azoxystrobin.’” Id. Appellant asserts that the
Specification, including Figure 2, shows that the biocidal effect in gypsum
panels with paper covering depends on the size of the fungicide particles,
Appeal 2020-003141
Application 14/095,499

7
such that sizes larger than 30 µm are not effective in inhibiting mold growth.
Id. at 12; see also Reply Br. 12–13.
Although it appears that Appellant is asserting that the fungicide
particle size range recited in claim 17 provides unexpected mold growth
inhibition results, Appellant fails to provide and explain evidence of record
sufficient to establish unexpected results. The burden of establishing that
unexpected results support a conclusion of nonobviousness rests with
Appellant. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). “[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.” In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). “[I]t is not enough to
show that results are obtained which differ from those obtained in the prior
art: that difference must be shown to be an unexpected difference.” See In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Additionally, the relied-upon
results must be commensurate in scope with the claims. See In re Peterson,
315 F.3d 1325, 1329–31 (Fed. Cir. 2003). “Establishing that one (or a small
number of) species gives unexpected results is inadequate proof, for ‘it is the
view of [the CCPA] that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.’” See In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (quoting
In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). Finally, “it is well settled that
unexpected results must be established by factual evidence. ‘Mere argument
or conclusory statements in the specification does not suffice.’” See In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1994)); see also In re Pearson, 494 F.2d 1399,
Appeal 2020-003141
Application 14/095,499

8
1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence.”).
Here, Appellant merely directs attention to the Specification
generally, and to Figure 2 specifically, without any discussion of the
evidence presented. We note Figure 2 only presents evidence of particles
sizes, D(95% < 1 µm), D(95% < 5 µm), D(95% < 13 µm), and soluble
fungicide. These examples do not extend beyond 13 µm, and Appellant fails
to explain how such results would be commensurate for the entire range of
1–30 µm, much less what results would be expected for sizes greater than 30
µm. We further note that the Specification fails to identify the composition
of the water-insoluble fungicide, as well as the amounts of the respective
ingredients used in the coating composition. Therefore, Appellant’s results
are not persuasive of unexpected results as to particle size.
As to Appellant’s argument that there is no suggestion to combine
Uhr with Swofford and Dutton to coat a gypsum wall panel with a fungicidal
composition including zinc pyrithione, thiabendazole, and azoxystrobin, we
disagree. An ordinary artisan would have found it obvious to apply Uhr’s
coating composition to a gypsum wall panel because Uhr teaches that the
composition is for coating building materials to provide mold resistance and
Swofford teaches a gypsum wall panels with paper covering treated with an
antimicrobial composition including the same fungicides as Uhr. Ans. 4–5.
As the Examiner explains, without dispute, gypsum wall panels are a known
commercially-available building material, and Swofford suggests that such
panels would benefit from fungicidal coating compositions. Moreover, an
ordinary artisan would have found it obvious to include azoxystrobin in
Uhr’s coating composition because doing so would broaden the spectrum of
Appeal 2020-003141
Application 14/095,499

9
fungicidal activity as Dutton teaches. Id. at 5–7, 12, citing In re Kerkhoven,
626 F.2d 846, 850 (CCPA 1980), In re Crockett, 279 F.2d 274 (CCPA
1960), and Ex parte Quadranti, 25 USPQ2d 1071 (BPAI 1992).
In addition, Appellant’s contention that Dutton fails to suggest that a
combination including component A can be used in manufacturing gypsum
panels mischaracterizes the Examiner’s proposed combination. The rejection
relies on Dutton’s teaching that azoxystrobin is another known fungicide,
along with thiabendazole taught by both Uhr and Swofford. The rejection
does not rely on Dutton’s teaching of component A and is not based upon a
bodily incorporation of Dutton’s ABC composition into Uhr’s composition.
See In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (The
obviousness inquiry does not ask “whether the references could be
physically combined but whether the claimed inventions are rendered
obvious by the teachings of the prior art as a whole.”); In re Keller, 642 F.2d
413, 425 (CCPA 1981) (citations omitted) (“The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference . . . . Rather, the test is what the
combined teachings of those references would have suggested to those of
ordinary skill in the art.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”). Also, as noted above, claim 17 does not
exclude the presence of additional components such as Dutton’s component
A.
Appellant next argues that the Examiner’s proposed combination
requires the use of impermissible hindsight. Appeal Br. 12; see also Reply
Appeal 2020-003141
Application 14/095,499

10
Br. 4–9.4 Appellant suggests that choosing pesticidal mixtures from Dutton,
choosing Dutton’s component A, and choosing specifically thiabendazole
and azoxystrobin from Dutton’s lists for components B and C entails
impermissible hindsight because there is no suggestion to selectively choose
only thiabendazole and azoxystrobin and disregard the remainder of
Dutton’s disclosure. Appeal Br. 13–15. Likewise, Appellant urges that it is
impossible to selectively choose only zinc pyrithione from Uhr’s list of
biocides, and then further combine it with Dutton. Id. at 15–19, relying on In
re Stepan Co., 868 F.3d 1342 (Fed. Cir. 2017) and Polaris Indus., Inc. v.
Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018).
We do not find Appellant’s hindsight argument persuasive because
the Examiner’s reasons for combining the teachings of Uhr, Swofford, and
Dutton are supported by the prior art disclosures themselves. See, e.g.,
Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996)
(“The invention must be viewed not after the blueprint has been drawn by
the inventor, but as it would have been perceived in the state of the art that
existed at the time the invention was made.” (citing Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985))). Here, as the Examiner

4 Appellant presents argument (Reply Br. 5–6, 8) for the first time in the
Reply Brief related to three Board decisions, Ex parte Lajoie, Appeal No.
96-2311, (BPAI Nov. 27, 1998), Ex parte Chopra, Appeal 2014-007825,
(PTAB July 1, 2016), and Ex parte Cummins, Appeal 2016-003800, (PTAB
June 16, 2017). In addition, Appellant argues for the first time the problem
addressed by the present invention is the need for hydrophobic anti-
microbial combinations in gypsum panels. Reply Br. 8–9. Because
Appellant does not provide good reason why such arguments could not have
been filed in the principal brief, we will not consider these arguments. See
37 C.F.R. § 41.41(b)(2) (2019).
Appeal 2020-003141
Application 14/095,499

11
explains, the skilled artisan would have understood from the teachings of
Uhr and Swofford that applying a biocidal composition to a gypsum wall
panel would have provided the panel with mold resistance with a reasonable
expectation of success. Both Uhr and Swofford teach zinc pyrithione and
thiabendazole as known biocides/fungicides, thereby suggesting their
combination. Similarly, Dutton teaches a biocidal composition including
known fungicides such as thiabendazole and azoxystrobin, and even
provides an example of these two fungicides used together. Dutton 8, Table.
We are also unpersuaded that the purpose of the fungicides as used in Uhr or
Swofford is different from the purpose of fungicides in Dutton—in each
case, the fungicide is used for its fungicidal activity. That the prior art
teaches these compounds within lists of known fungicides does not render
their selection any less obvious. Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989) (“That the ʼ813 patent discloses a multitude
of effective combinations does not render any particular formulation less
obvious. This is especially true because the claimed composition is used for
the identical purpose.”); see also In re Susi, 440 F.2d 442, 445 (CCPA 1971)
(obviousness rejection affirmed where the disclosure of the prior art was
“huge, but it undeniably include[d] at least some of the compounds recited in
appellant’s generic claims and [was] of a class of chemicals to be used for
the same purpose as appellant’s additives”); In re Kubin, 561 F.3d 1351,
1359 (Fed. Cir. 2009) (“[W]here a skilled artisan merely pursues ‘known
options’ from a ‘finite number of identified, predictable solutions,’
obviousness under § 103 arises.” (quoting KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007)).
Appeal 2020-003141
Application 14/095,499

12
We are also not persuaded that the Examiner’s rejection of claim 17 is
somehow in conflict with either the Stepan or Polaris decisions. See Appeal
Br. 9, 18. In Stepan, the court determined that the Board failed to explain
why it would have been routine optimization to select and adjust the claimed
surfactants and achieve a cloud point above at least 70°C from the teachings
of the prior art with a reasonable expectation of success. Stepan, 868 F.3d at
1346. However, unlike Stepan, claim 17 does not recite any property that
requires optimization of the selection and adjustment of the components of
the claimed composition. In Polaris, the court stated that the Board
improperly characterized Polaris’ teaching away argument as a conflation of
known modifications having known benefits with subjective preferences.
Polaris, 882 F.3d at 1068. In addition, the court stated that the Board
improperly determined that the ordinary artisan has the ability to weigh the
various benefits and disadvantages based on subjective preferences in an
analysis largely unrelated to obviousness. Id. Unlike Polaris, Appellant has
not raised any teaching away argument, nor has the Examiner made any
findings involving subjective preferences.
Appellant further argues that Uhr’s biocidal substance is chemically
different from claim 17’s recited fungicidal particles which are a
combination of three fungicides because Uhr’s substance are chemical
compounds with structural elements derived from acrylonitrile. Reply Br.
10–11.
This argument is not persuasive because claim 17 does not exclude
polymers with structural elements derived from acrylonitrile and Uhr’s
substance includes one or more fungicides including zinc pyrithione and
thiabendazole. Appellant fails to direct our attention to any evidentiary
Appeal 2020-003141
Application 14/095,499

13
support showing, or otherwise persuasively explain, how Uhr’s substance is
chemically different from the claimed particles.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 17 and 23 over the combination of Uhr, Swofford, and Dutton.5
Rejection 2: Obviousness of claims 25–27
The Examiner rejects claims 25–27 under 35 U.S.C. § 103 as
unpatentable over Uhr in view of Swofford and Dutton, as evidenced by
Zinc Pyrithione NPL and Silicone NPL, and further in view of Beerse. Ans.
7–9. Specifically, the Examiner acknowledges that the combination of Uhr,
Swofford, and Dutton fails to teach the particular type or amount of silicone
oil as recited in claims 25–27. Id. at 7–8. The Examiner finds that Beerse
teaches anti-fungal coatings for industrial substrates using water and
polymerized siloxane carriers with emulsifiers. Id. at 8. The Examiner
further finds that Beerse’s siloxanes include linear chains of
dimethylsiloxane (R2SiO) units. Id. The Examiner concludes that it would
have been obvious to have used Beerse’s polymerized siloxanes in amounts
taught therein for the silicone oil carrier of Uhr because Beerse teaches this
type and amount of silicone oil is effective for forming water/silicone
emulsion coating compositions for anti-fungal coatings. Id.
Appellant argues that Beerse fails to remedy the deficiencies of the
Uhr, Swofford, and Dutton combination as applied to claim 17. Appeal
Br. 20. However, as discussed above, we are not persuaded of any

5 Appellant does not dispute or otherwise challenge the Examiner’s reliance
on either Zinc Pyrithione NPL or Silicone NPL.
Appeal 2020-003141
Application 14/095,499

14
deficiency in the Uhr, Swofford, and Dutton combination applied to
claim 17 requiring remedy by Beerse.
Appellant further argues that Beerse’s compositions are used for
cleaning, rather than coating surfaces. Appeal Br. 21. Appellant contends
that Beerse fails to teach use of the compositions on gypsum products and
there is no reason to believe that Beerse’s compositions can be used
preventatively to prevent a surface from microbial infection. Id. at 21–22.
Appellant also contends that a combination of Uhr and Beerse would
produce a cleaning emulsion rather than a gypsum panel. Id. at 22.
Appellant’s arguments are unpersuasive because the rejection does not
rely on Beerse for teaching an anti-fungal composition for coating gypsum
products, but for its teaching of the use of a polymerized siloxane including
linear chains of dimethylsiloxane units for forming effective emulsions
including anti-microbial agents. To the extent that Appellant is arguing that
Beerse is non-analogous to the coating compositions of Uhr, Swofford, and
Dutton, the Examiner finds that Beerse is applicable to industrial and paper
substrates. Ans. 16. In other words, the Examiner finds that Beerse is in the
same field of endeavor as Appellant and the remaining applied prior art. In
re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Two separate tests define
the scope of analogous prior art: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed and, (2) if the reference is not
within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.”) (citations omitted). Further, even if Beerse were not from
Appellant’s field of endeavor, its teaching is nonetheless reasonably
pertinent to one or more particular problems to which the invention relates.
Appeal 2020-003141
Application 14/095,499

15
Beerse teaches a similar emulsion as Uhr’s based on water and silicone oil,
and teaches that the particular siloxane selected is effective to provide a
suitable emulsion for an anti-microbial composition. As such, an ordinary
artisan would have found it obvious to have used Beerse’s particular
siloxane in Uhr’s anti-fungal coating emulsion with a reasonable expectation
of success.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 25–27 as unpatentable over the combination of Uhr, Swofford,
Dutton, and Beerse.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Examiner’s Answer, the Examiner’s decision to reject claims 17,
23, and 25–27 under 35 U.S.C. § 103 is affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
17, 23 103 Uhr, Swofford,
Dutton, Zinc
Pyrithione NPL,
Silicone NPL
17, 23
25–27 103 Uhr, Swofford,
Dutton, Zinc
Pyrithione NPL,
Silicone NPL, Beerse
25–27
Overall
Outcome
17, 23, 25–27

Appeal 2020-003141
Application 14/095,499

16
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