Ex Parte Martin

Patent Trial and Appeal Board

Jun 7, 2017

13899014 (P.T.A.B. Jun. 7, 2017)

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.
13/899,014 05/21/2013 Howard Martin 026920.093059 2203
61494 7590 06/07/2017
Baker Donelson Bearman, Caldwell & Berkowitz, PC
100 Light Street
BALTIMORE, MD 21202
EXAMINER
BRANSON, DANIEL L
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
06/07/2017 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 HOWARD MARTIN1
Appeal 2017-003000
Application 13/899,014
Technology Center 1600
Before JEFFREY N. FREDMAN, TAWEN CHANG, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
biocidal formulation, which have been rejected as obvious and as being
unpatentable on the ground of nonstatutory double patenting. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
According to the Specification, “[t]he present invention relates to
chemical disinfection and sanitizing and, more particularly, to an improved
1 Appellant identifies the Real Party in Interest as Dr. Howard Martin.
(Appeal Br. 1.)
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Application 13/899,014
biocidal aldehyde composition particularly suited for secondary oil and gas
recovery.” (Spec. 2:17—19.)
Claims 1, 6, and 15 are on appeal. Claim 1 is illustrative and
reproduced below:
1. A biocidal formulation comprising glutaraldehyde within a
range of from .25—7% by weight, plus tributyl tetradecyl
phosphonium chloride (TTPC) within a range of from
.24—6% by weight, approximately equal amounts of said
glutaraldehyde and TTPC, isopropyl alcohol, and excipient
constituents including triethanol amine, glycol ether, sulfonic acid and
water all mixed in an aqueous solution having a pH within a range of
from 3 to 9;
wherein said biocidal formulation is diluted to within a range of
from 50 ppm to 1000 ppm prior to aqueous addition to fracturing
water for secondary oil and gas recovery from a well.
(Appeal Br. App’x A.)
The Examiner rejects claims 1, 6, and 15 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Clifford,2 Martin,3 Johnson,4 and
Peterson.5 (Ans. 2.)
The Examiner provisionally rejects claims 1, 6, and 15 on the ground
of nonstatutory double patenting as being unpatentable over claims 1 and 8
of Application No. 13/899,000 in view of Johnson and Peterson.6 (Final
Act. 7.)
2 Clifford et al., CA 1,262,667 A, issued Nov. 7, 1989 (“Clifford”).
3 Martin, US 5,252,606, issued Oct. 12, 1993 (“Martin”).
4 Johnson et al., US 2008/0293613 Al, published Nov. 27, 2008
(“Johnson”).
5 Peterson, US 5,759,486, issued June 2, 1998 (“Peterson”).
6 In an Advisory Action dated July 7, 2015, the Examiner “noted the
terminal disclaimers filed 06/22/2015” and stated that the Examiner “will
withdraw the double patenting rejections in due course once the terminal
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Application 13/899,014
The Examiner rejects claims 1, 6, and 15 on the ground of
nonstatutory double patenting as being unpatentable over claims 1, 2, 4, and
8 of U.S. Patent No. 8,242,176 in view of Clifford and Bryan.* * 7 (Final Act.
8.)
I.
Issue
The Examiner has rejected claims 1, 6, and 15 under pre-AIA 35
U.S.C. § 103(a) as being obvious over Clifford, Martin, Johnson, and
Peterson. The Examiner finds that Clifford discloses a biocidal formulation
comprising the biocides TTPC and glutaraldehyde, excipients, and water.
(Ans. 2.) The Examiner finds that Clifford teaches that “in a typical
formulation each biocide is present at 5—20 wt% of the formulation.” (Id.)
The Examiner finds that Clifford teaches that “[t]he combination of biocides
in the formulation demonstrates synergistic results.” (Id.)
The Examiner finds that Clifford does not specifically disclose the use
of isopropyl alcohol, triethanol amine, glycol ether, and sulfonic acid in the
composition. (Id.) However, the Examiner finds that Martin, Johnson, and
Peterson cure this deficit. In particular, the Examiner finds that Martin
teaches an aqueous biocidal formulation comprising an aldehyde, dual chain
quaternary ammonium compound, and approximately 14% by weight of
isopropanol (i.e., isopropyl alcohol). (Id. at 2—3.) The Examiner finds that
Martin also teaches that the combined biocidal compounds of its
disclaimers have been approved.” (Advisory Act. 2.) However, the
Examiner did not withdraw the double patenting rejections in the Answer.
7 The Examiner did not provide a citation for Bryan in the Final Action.
However, we understand Bryan to refer to Bryan et al., U.S. Patent No.
5,385,896, issued Jan. 31, 1995.
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composition have “synergistic biocidal properties” that result in lower
concentration of active compounds used and thus reduced toxicity. (Id.)
The Examiner further finds that Martin teaches that glutaraldehyde reaction
rate is pH dependent and teaches adding citric acid to accomplish the desired
pH. (Id. at 3.) Similarly, the Examiner finds that Johnson teaches “a
premoistened cleaning substrate with a glycol ether solvent which is the
preferred solvent because it evaporates more slowly [and allows] more
working time . . . before the substrate . . . dried out.” (Id.) The Examiner
further finds that Johnson exemplifies compositions having pH values of
7.29 and 5.55. (Id.) Finally, the Examiner finds that Peterson teaches a
sterilizing composition where biocides that may be used include
glutaraldehyde, methanesulfonic acid, and triethanolamine. (Id.)
The Examiner concludes that it would have been obvious to a skilled
artisan to include Johnson’s glycol ether solvent in Clifford’s composition so
as to prevent premature evaporation and give the composition more time for
biocidal action. (Id.) The Examiner further concludes that it would have
been obvious to combine sulfonic acids, triethanolamine and isopropanol
with the biocides of Clifford’s composition, as they are also known biocides
used in sterilizing composition. (Id.) Finally, the Examiner concludes that a
prima facie case of obviousness exists with respect to the claimed
concentrations of glutaraldehyde, TTPC, and isopropanol because the
claimed concentrations overlap or are close to the concentrations disclosed
in the prior art. (Id. at 4.) Likewise, the Examiner concludes that the
claimed pH range is prima facie obvious because Martin teaches that
composition pH is a result effective variable that a skilled artisan would
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have routinely optimized and Johnson also exemplifies a composition with a
pH within the claimed range. (Id.)
Appellant contends that the Examiner’s rejection is “technically
deficient” because Martin was not properly included in the rejection in the
Final Action. (Appeal Br. 6; Reply Br. 1—2.) Appellant contends that
Clifford “lacks a majority of the elements of Appellant’s claims” and that
there is only a “very slight overlap” between the claimed and prior art ranges
of glutaraldehyde and TTPC. (Appeal Br. 6) Appellant also argues that a
skilled artisan would have no reason to combine Clifford with Martin,
Johnson, or Peterson, particularly with the claimed concentration ranges of
glutaraldehyde, TTPC and, for claim 6, isopropanol. (Id. at 7—9.) Appellant
further argues that the claimed subject matter exhibits unexpected results.
(Id. at 9-15.) Finally, Appellant argues with respect to claim 15, which uses
the closed transitional phrase “consisting of,” that the Examiner has not
shown the prior art teaches or suggests excluding components other than
those claimed. (Id. at 15.)
The issue with respect to this rejection is whether the evidence of
record supports the Examiner’s conclusion that claims 1, 6, and 15 are prima
facie obvious and, if so, whether Appellant has provided evidence of
unexpected results that, when considered together with evidence of
obviousness, shows the claims to be nonobvious.
Findings of Fact
1. Clifford teaches a composition comprising a straight chain
aliphatic aldehyde and a phosphonium compound of the formula
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R
R - P® ~ X®
R
where R and Ri consist of specified alkyl groups. (Clifford 1:24—2:16,
3:15—19.) Clifford teaches that “[w]ith the phosphonium compounds it is
particularly preferred that R represents n-butyl, Ri represents tetra-decyl and
X is chlorine.” (Id. at 3:1—3.) Clifford further teaches that “[sjuitable
straight chain aliphatic aldehydes generally possess 2 to 6 carbon atoms,
especially saturated dialdehydes having 2 to 6 carbon atoms such as
glutaraldehyde which is particularly preferred.” (Id. at 3:6—9.)
2. Clifford teaches that the phosphonium and aliphatic aldehyde
combinations of its invention give rise to synergistic biocidal effects. (Id. at
1:24—2:4, 4:18—5:5.) In particular, Clifford teaches that “the alkyl
phosphonium chloride and glutaraldehyde are synergistic at least in the ratio
of 3:1 to 1:3.” (Id. at 6:26-7:2.)
3. Clifford teaches that “[t]he weight ratio of the two types of
bactericide is typically from 10:1 to 1:10, especially from 3:1 to 1:3. A very
cost effective formulation can be provided with a weight ratio of about 1:1.”
(Id. at 4:2-5.)
4. Clifford teaches that “other ingredients can be present in the
composition, notably dispersants, especially dispersants which have
biological activity . . . .” (Id. at 4:6—9.) Clifford further teaches that, “[i]n a
typical formulation, there will be 5—20% by weight of each of the two
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biocides and 2—10% by weight of dispersant. . ., with the remainder . . .
being water.” (Id. at 4:18—22.)
5. Clifford teaches that, “[i]n general, the composition will be
added to the [aqueous] system [to be treated] in an amount up to 500 mg per
litre (active) and especially to 50 mg per litre.” (Id. at 3:20-22.)
6. Martin teaches a disinfectant and sterilant formulation
consisting of quaternary ammonium chloride, glutaraldehyde, para tertiary
amylphenol, ortho phenylphenol, citric acid, isopropyl alcohol, and water,
where isopropyl alcohol comprises 14% by weight of the formulation.
(Martin 1:6-8, 3:35^1:9, 4:15-23.)
7. Martin teaches that “[t]he combination of chemicals of [its]
invention create a synergistic effect. . . .” (Id. at 2:18—23, see also id. at
2:38-41.)
8. Martin teaches that:
[a]lcohols have been shown to have antimicrobial properties.
. . . Isopropyl alcohol is considered to be more effective against
bacteria than ethyl alcohol.
Alcohol is effective against mycobacterium tuberculosis.
The isopropyl alcohol bactericidal effectiveness paralleled that
of ethyl alcohol but surpassed ethyl alcohol in lower ranges.
Either isopropyl or ethyl alcohol may be utilized within the
formulation.
(Id. at 2:5—17.) Martin further teaches that “[t]he ethanol or isopropyl
alcohol acts as a solvent to release constituents which leads to bacterial
death. It is also virucidal against both hydrophilic and lipophilic viruses.”
(Id. at 2:31—34.)
9. Martin teaches that its formulation “has usage in the health field
and industrial, agricultural and consumer area[s]” and “may be in the form
of an immersion solution, a spray, or a wipe.” (Id. at 4:10-13.)
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10. Johnson relates to “a premoistened cleaning disposable
substrate for cleaning hard or soft surfaces.” (Johnson 123.) Johnson
teaches that antimicrobial agents, for example quaternary and non-
quaternary biocides, can “be included in the cleaning composition.” {Id. at
HI 94-95.)
11. Johnson teaches that the cleaning composition comprises from
about 0.25% to about 15% by weight of a non-volatile organic solvent. {Id.
at 1123, 27.)
12. Johnson teaches that, “[f]or the purpose of [its] patent, the non­
volatile organic solvent has a vapor pressure of less than about 0.1 mm of
mercury at 20 C. or has a boiling point of at least about 230 C.” (Id. at 1
28.) Johnson further teaches that,
[d]ue to their low volatility, these solvents tend not to
evaporate rapidly and allow sufficient “working” time for the
wipe before it dries out. Preferred solvents are esters and
glycol ethers. The most preferred solvents are glycol ethers of
high boiling point.
{Id. at 129.)
13. Peterson teaches “a[] . . . method for sterilizing instruments at
atmospheric pressure in a microwave oven,” which comprises immersing the
instruments in a sterilization chemical and subjecting the instruments to
microwave heating. (Peterson Abstract, 4:24-41, 17:22—18:2 (claim 10).)
14. Peterson teaches that the sterilization chemical may be selected
from a group consisting of, among others, triethanolamine and methane
sulfonic acid. {Id. at 18:11—19 (claim 15).)
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Analysis
Claims 1 and 6
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 2—9; FF1—FF14) and agree that the
claims 1 and 6 are prima facie obvious over the cited art.8 We address
Appellant’s arguments below.
Appellant contends that Martin was not properly included in the
rejection set forth in the Final Action and that “Appellant was not fully
apprised of how ‘Martin’ ‘606 was being applied until the Examiner’s
Answer.” (Appeal Br. 6; Reply Br. 1—2.) Whether a Final Action is
premature for failing to present the bases for all rejections and whether the
Examiner should have designated a rejection as a new ground of rejection in
the Answer are matters petitionable to the Director, rather than appealable to
the Board. Compare 37 C.F.R. § 1.181 and 37 C.F.R. § 41.40(a). Failure to
timely file a petition waives any arguments that a rejection must be
designated as a new ground of rejection. 37 C.F.R. § 1.181. Furthermore, in
the Appeal Brief Appellant responded to the substance of the rejection
including Martin. Accordingly, we do not reach Appellant’s apparent
8 We note for the sake of completeness that the limitations “diluted to within
a range of from 50 ppm to 1000 ppm prior to aqueous addition to fracturing
water for secondary oil and gas recovery from a well” (claims 1 and 15) and
“for aqueous addition to fracturing water during secondary oil and gas
recovery from a well” (claim 15) recite intended uses and do not impart
patentable weight even if the uses are not discussed in the prior art. In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)
(“It is well settled that the recitation of a new intended use for an old product
does not make a claim to that old product patentable.”).
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argument that the Examiner raised an undesignated new ground of
rejection.9
With respect to the substance of the rejection, Appellant first contends
that Clifford “lacks a majority of the elements of Appellant’s claims” and
that there is only a “very slight overlap” between the claimed and prior art
ranges of glutaraldehyde and TTPC. (Appeal Br. 6.) We are not persuaded.
“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.” In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Our reviewing court has also
held that “even a slight overlap in range establishes a prima facie case of
obviousness.”10 In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Appellant next argues that a skilled artisan would have no reason to
combine Clifford with Martin, Johnson, or Peterson to arrive at the claimed
invention. (Appeal Br. 7—9.) With respect to isopropanol and Martin,
Appellant argues that there is no evidence supporting the finding that a
skilled artisan would have expected improved results if isopropanol were
9 Appellant appears to cite to In reLeithem, 661 F.3d 1316 (Fed. Cir. 2011)
in his argument. (Appeal Br. 6.) Leithem does not apply to this case, as it
involves the question of whether the Board, rather than the Examiner,
should have designated a rejection as a new ground.
10 Appellant cites to Atofina for the proposition that “[vjiewing claim 1 in its
entirety there is a ‘considerable difference between the claimed range and
the range in the prior art.’” Atofina v. Great Lakes Chem. Corp., 441 F.3d
991, 999 (Fed. Cir. 2006). Atofina, however, is inapposite, because it
involves an anticipation rather than an obviousness rejection.
10
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added to Clifford’s formulation. {Id. at 8, 10-11.) Citing Barah11 and
SCNA Guidelines,12 Appellant argues that alcohols are poor biocides at low
concentration and “are not recommended for sterilization.” {Id. at 11.)
Appellant also argues that “[g]lut/TTPC versus [isopropyl alcohol (IPA)] are
not recognized biocidal equivalents,” that biocides may nevertheless have
different properties, that biocidal synergy is unpredictable, and that “A
PHOSITA would not have been motivated to add isopropanol to the
TTPC/glut composition of Clifford . . . because the outcome reaction would
be unclear, the biocidal effect unknown, and toxicity increased.” {Id. at 8,
10-11.) Finally, Appellant argues that Appellant uses alcohol “as a solvent
(to hold the solution form of the [quaternary ammonium chloride (QAC)] to
avoid the QAC precipitating out of solution)[] and to displace water at the
bacterial cell membrane” rather than for its “direct biocidal properties.”13
(Id. at 11.)
We are not persuaded. As the Examiner points out and as evidenced
by Martin, isopropanol is a known biocide. (Ans. 3; FF8.) As the Examiner
also points out, Martin teaches a formulation that combines isopropanol
with, among other things, glutaraldehyde and a quaternary ammonium
chloride, which is a quaternary surfactant. (Ans. 6.) Martin further teaches
that the combination of the chemicals of its invention creates a synergistic
11 F. Barah, Non-antibiotic biocides: An updated review, in Microbial
Pathogens and Strategies for Combating Them: Science,
Technology and Education 598-607 (A. Mendez-Vilas, ed. 2013).
12 Society of Gastroenterology Nurses and Associates, Inc., Guideline for
Use of High Level Disinfectants & Sterilants for Reprocessing
Flexible Gastrointestinal Endoscopes (2013).
13 We note that the claims on appeal recite TTPC (tributyl tetradecyl
phosphonium chloride) rather than QAC.
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effect. (FF7.) Accordingly, a skilled artisan would have reason to add
isopropanol to Clifford’s formulation of glutaraldehyde and TTPC, which,
like quaternary ammonium chloride, is a quaternary surfactant. This is the
case even if, as Appellant argues, alcohols are poor biocides at lower
concentrations, are not recommended for sterilization, and/or are not known
biocidal equivalents of glutaraldehyde/TTCP. Indeed, Barah, cited by
Appellant, supports Martin’s suggestion of potential synergistic effect of
adding isopropanol: Barah states that “[l]ower concentrations [of alcohol]
may ... be used ... to potentiate the activity of other biocides or other
means of sterilization.” (Barah 598.) With respect to Appellant’s arguments
regarding lack of expectation of success, we note that “expectation of
success need only be reasonable, not absolute.” Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348, 1364 (Fed. Cir. 2007). Finally, with respect to Appellant’s
argument that isopropanol in the claimed invention is not used for its direct
biocidal properties, we note that
[i]n determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. . . . [A]ny need or problem
known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the
elements in the manner claimed.
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007).
Neither are we persuaded by Appellant’s argument that the
Examiner’s rejection “improperly focusses on the bare presence of
isopropanol and ignores the specific ranges required for the constituents of
claim 1, and of IP A in claims 6 and 15.” (Appeal Br. 9.) The Examiner
correctly explained (Ans. 4) that Clifford and Martin establishes a prima
facie case of obviousness with respect to the claimed ranges of
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glutaraldehyde, TTPC, and isopropanol because they disclosed ranges of
these chemicals that either overlapped or are close enough to the claimed
ranges such that the skilled artisan would expect them to have the same
properties. See, e.g., In re Peterson, 315 F.3d at 1329.
With respect to Johnson, Appellant argues that “Johnson’s glycol
ether is not used for sterilization and . . . has no cidal effect, whereas
[Appellant] uses 0.5% 0.25—2% [sic] [g]lycol [e]ther in combination with a
specific TTPC/glut[araldehyde]/IPA solution to boost cidal effectiveness.”
(Appeal Br. 7.) Appellant similarly argues that sulfonic acid and
triethanolamine are known in the prior art as acidic surfactants rather than
biocides, that “Appellant uses its triethanolamine ... as a synergist to
increase cidal effectiveness,” and that Peterson does not teach “how
triethanolamine would react in combination with TTPC/glut/IPA solution,
let alone that it will boost cidal effectiveness.” {Id. at 7—8.)
We are not persuaded. As an initial matter, the Specification
describes glycol ether, triethanolamine, and sulfonic acid only as “inert
additives” (Spec. 13:17), and Appellant cites to no persuasive evidence from
the record regarding the alleged cidal effectiveness enhancing properties of
glycol ether and triethanolamine. Johnston v. IVAC Corp., 885 F.2d 1574,
1581 (Fed. Cir. 1989) (“Attorneys’ argument is no substitute for evidence.”).
Furthermore, as discussed above, “neither the particular motivation nor the
avowed purpose of the patentee controls” in determining whether a claim is
obvious. KSR, 550 U.S. at 419-20. The Examiner has articulated a reason
for a skilled artisan to include glycol ether, triethanolamine, and sulfonic
acid in a biocidal formulation (i.e., as a low volatility solvent and sterilizing
chemicals); the fact that Appellant may have included the excipients for
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other reasons does not render the combination non-obvious. In re Kemps, 97
F.3d 1427, 1430 (Fed. Cir. 1996) (“[T]he motivation in the prior art to
combine the references does not have to be identical to that of the applicant
to establish obviousness.”).
For similar reasons, we are unpersuaded by Appellant’s argument that
Peterson discloses methane sulfonic acid and triethanolamine merely as “two
of a . . . large group of [possible] candidates” for a sterilizing chemical:
“The combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results,” KSR, 550
U.S. at 416, and Appellant has not persuasively shown that the inclusion of
sulfonic acid and triethanolamine in the claimed composition is anything
more than “the predictable use of prior art elements according to their
established functions.” Id. at 417.
Finally, we are also unpersuaded by Appellant’s arguments that a
skilled artisan would not look to combine ingredients disclosed in Johnson
and Peterson with Clifford’s formulation because Johnson and Peterson
involve, respectively, cleaning composition used in a wipe and sterilization
using a microwave. (Appeal Br. 7, 8.) Appellant has not provided a
persuasive reason why a low volatility solvent such as glycol ether or
sterilizing chemicals such as sulfonic acid and triethanolamine would be
useful in a biocidal composition only if the composition is incorporated into
a wipe or used in conjunction with a microwave oven. Neither does
obviousness require that all the features of one reference be incorporated
into the other. Cf. Orthopedic Equip. Co. v. United States, 702 F.2d 1005,
1013 (Fed. Cir. 1983) (“Claims may be obvious in view of a combination of
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references, even if the features of one reference cannot be substituted
physically into the structure of the other reference.”).
Claim 15
Appellant argues that claim 15 uses the closed transitional phrase
“consisting of’ and that the Examiner “has failed to make a prima facie case
that the cited references teach or suggest excluding other constituents.”
(Appeal Br. 15.) We are not persuaded. Clifford teaches a composition
consisting of glutaraldehyde and TTPC. (FF1-FF3.) In particular, while
Clifford’s composition may contain dispersants, Clifford teaches that such
dispersants are optional. (FF4; see also Clifford Examples 1,3, and claim 4
(describing compositions consisting of glutaraldehyde and alkyl
phosphonium).) As explained by the Examiner and further discussed above,
the cited prior art combination also renders obvious the addition of
isopropanol, glycol ether, triethanolamine, and sulfonic acid to Clifford’s
composition, as well as the claimed composition pH, glutaraldehyde to
TTPC ratio, and concentration ranges of glutaraldehyde, TTPC, and
isopropanol. Accordingly, we find the cited prior art combination renders
obvious the formulation of claim 15 notwithstanding its use of the closed
transitional phrase “consisting of.”
Unexpected Results
Appellant argues that, even if the Examiner has established a prima
facie case of obviousness, the claims are nevertheless non-obvious because
the claimed subject matter exhibits unexpected results. {Id. at 9-15.) In
particular, Appellant argues, based apparently on Example 1 of Clifford, that
“[w]hen Clifford[’s] solution is added ... in an amount up to 500 mg per
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liter (active) it kills 90% of Pseudomonas Fluorescens within 2—A hours.”14
{Id. at 9-10.) Appellant argues that “[t]his is a poor and commercially-
unacceptable result in comparison to Appellants formulation which kills
99.999% in only thirty minutes (four to six times faster than Clifford) with a
higher kill rate and importantly, no ecological burden.” {Id. at 10 (citing
Martin Declaration15110).)
We are not persuaded for the reasons articulated by the Examiner:
First, Appellant has not shown that any alleged synergy in Appellant’s
formulation is unexpected, given that Clifford teaches that the combination
of glutaraldehyde and TTCP results in synergy and Martin also teaches that
a formulation containing glutaraldehyde, quaternary ammonium chloride,
and isopropanol exhibits synergy. (Ans. 7; FF2, FF7.) Second, “when
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 TravenolLabs., 952 F.2d 388, 392 (Fed. Cir. 1991). Given the
differences in the testing conditions between Clifford’s Example 1 and the
tests described in the Martin Declaration, including differences in the
bacteria and biocide concentrations tested, we agree with the Examiner that
Appellant has not persuasively shown that its formulation exhibits
unexpected results as compared to Clifford. (Ans. 8—9.) Finally, given the
Examiner’s detailed discussion of the Martin Declaration (Ans. 7—9), we
14 While Clifford states that “[i]n general, the composition will be added to
the [aqueous] system [to be treated] in an amount up to 500 mg per litre
(active),” Example 1 of Clifford teaches that much less than 500 mg/L of
biocides is needed for Clifford’s formulation to kill 90% ofp. Fluorescens
within 2-4 hours. (FF5; Clifford Example 1.)
15 Declaration under Rule 132 by Dr. Howard Martin (Jan. 16, 2015).
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note but are not persuaded by Appellant’s argument that the Examiner
ignored the test results set forth therein. (Appeal Br. 11—12.)
Accordingly, we affirm the Examiner’s decision rejecting claims 1, 6,
and 15 as obvious over Clifford, Martin, Johnson, and Peterson.
II.
The Examiner provisionally rejects claims 1, 6, and 15 on the ground
of nonstatutory double patenting as being unpatentable over claims 1 and 8
of Application No. 13/899,000 in view of Johnson and Peterson. (Final Act.
7. ) Application No. 13/899,000 was abandoned on March 24, 2017. We
dismiss as moot the provisional double patenting rejection based on this
application.
The Examiner rejects claims 1, 6, and 15 on the ground of
nonstatutory double patenting as being unpatentable over claims 1, 2, 4, and
8 of U.S. Patent No. 8,242,176 in view of Clifford and Bryan. (Final Act.
8. ) Appellants did not address the merits of this rejection in the Appeal
Brief. Accordingly, we summarily affirm the rejection. See MPEP §
1205.02 (“If a ground of rejection stated by the examiner is not addressed in
the appellant's brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it.”); Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to
present arguments on a particular issue — or, more broadly, on a particular
rejection — the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.”).
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Appeal 2017-003000
Application 13/899,014
SUMMARY
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1, 6, and 15.
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).
AFFIRMED
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