DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 6 2026 has been entered.
Receipt of Arguments/Remarks filed on May 6 2026 is acknowledged. Claims 9, 11 and 13 were/stand cancelled. Claim 1 was amended. Claims 1-8, 10, 12 and 14-25 are pending. Claims 23-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 28 2023. Claims 1-8, 10, 12 and 14-22 are directed to the elected invention.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8, 10, 12 and 14-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection.
Claim 1 introduces new matter as the claims recite the limitation: "wherein the composition is free of..and other volatile C1-C4 alcohols”. There is no support in the specification for this limitation. The limitation of: "volatile C1-C4 alcohols" was not described in the specification as filed, and person skilled in the art would not recognize in the applicant’s disclosure a description of the invention as presently claimed. The specification discloses ethanol and isopropyl alcohol (see at least page 2) but does not describe the instantly claimed limitation. There is no guidance in the specification to select select any alcohol that is limited to C1 to C4 and volatile and from MPEP 2163.06: “Applicant should therefore specifically point out the support for any amendments made to the disclosure.” The remarks point to Table 2, 4 and paragraphs [0025], [0063], [0067], [0069], [0077], [0079], and [0106] for support for the claim amendments. The examiner believes these paragraph numbers must be in reference to the published application because the specification as filed does not include paragraph numbers. Nonetheless at most these portions of the speciation only provide support for exclusion of ethanol and isopropyl alcohol. Applicants are reminded that a description which renders the claim invention obvious does not satisfy the written description requirement (p 1172, Ariad v. Eli Lilly, 598 F3d 1336, 94 USPQ2d 1161, citing Lockwood v. Am. Airlines). MPEP 2163. Therefore, it is the Examiner’s position that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of filing of the instant application.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8, 10, 12 and 14-22 are rejected under 35 U.S.C. 103 as being unpatentable over Kaiser et al. (US Patent No. 6383505, cited on PTO Form 1449) in view of Guthery (WO 9629867, cited in the Office action mailed on September 8 2023) and Gerashchenko et al. (USPGPUB No. 20160271294, cited in the Office action mailed on December 12 2024).
Applicant Claims
The instant application claims an antimicrobial composition comprising: (a) an antimicrobial agent, (b) a sequestering agent for slowing release of the antimicrobial agent, and (c) a release agent comprising a double chained cationic surfactant selected from didodecyldimethylammonium bromide (DDAB), didecyldimethylammonium bromide, dioctadecyldimethylammonium bromide, ethonium, and combinations thereof, wherein the sequestering agent is a phospholipid capable of forming a barrier on a surface and sequestering the antimicrobial agent so as to reduce an initial release rate of the antimicrobial agent from said surface, wherein the surfactant endows the barrier with a positive charge, wherein the double chained cationic surfactant electrostatically disrupts said sequestering to provide sustained release of the antimicrobial agent,, and wherein the composition is free of ethanol and other volatile C1-C4 alcohols.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Kaiser et al. is directed to fast-acting antimicrobial lotion with enhanced efficacy. Taught is a lotion comprising 0.25-8% of a nonionic emulsifier (reading on instantly claimed non-ionic surfactant of claims 6-7), 0.1-2% of an anionic emulsifier, 0.5-10% of a thickener, 0-15% of a humectant, 0.02-5% of a skin conditioner, 2-20% of an oil and 0.25-5% of a cationic antimicrobial selected from the group consisting of chlorhexidine, benzalkonium chloride, benzethonium chloride, polyhexamethylene biguanide, and combinations thereof; and water (claim 26). Nonionic surfactants include phospholipid complexes (claim 2) as well as glycol fatty acid esters, fatty acid ester of sorbitan, etc. (column 3, lines 40-51). Thickeners include waxes as well as fatty acid esters, polymeric thickeners (claims 12). Humectants include glycolic acid, glycolate salts, lactate salts, etc. Humectants are used in amounts from 2-15% (column 5). The composition includes a safe and effective amount of at least one active antimicrobial ingredient (column 4, lines 33-43). It is taught that the composition is preferably used as a leave-on composition, which is applied to the skin and left in place to provide both immediate and long-term antimicrobial activity and moisturizing functions (column 2, lines 33-43).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
While Kaiser et al. teaches phospholipids, Kaiser et al. does not teach phosphatidylethanolamine or phosphatidylcholine. However, this deficiency is cured by Guthery.
Guthery is directed to fast acting and persistent topical antiseptics. It is taught that it is preferred to have an antiseptic that not only quickly kills microorganisms with a high log ratio kill on contact with the skin but also has the ability to penetrate throughout the levels of the skin, bind to lipids or proteins in the intercellular layers of the epidermis to produce a prolonged kill or persistence (page 13). Also included with the quick kill component is a persistent component. In order to achieve persistence in excess of six hours, it is necessary to incorporate or more of the persistent components (page 18). Persistent components are lipids such as phospholipids and glycosphingolipids (page 19). Phospholipids include phosphatidylcholine, phosphatidyl ethanolamine, phosphatidylserine (page 24).
While Kaiser et al. teaches one or more cationic antimicrobials and specifically teaches antimicrobials falling within the scope of claim 2, Kaiser et al. does not expressly teach a double chained cationic surfactant as claimed. However, this deficiency is cured by Gerashchenko et al.
Gerashchenko et al. is directed to a pharmaceutical preparation and method of its production and use. The composition comprises one or both of a cationic surfactant and an antimicrobial substance (abstract, claim 1, paragraph 0016). The cationic surfactant is present in an amount from 0.2 to 4 wt% and antimicrobial substance is present in an amount of 0.5 to 10 wt% (paragraph 0022). Preferably both a cationic surfactant and an antimicrobial substance are present (paragraph 0052). Cationic surfactants are either mono- or bis-quaternary ammonium compounds. Preferred cationic surfactants include ethonium and benzalkonium chloride (paragraph 0294). Compositions can be in the form of a powder, a suspension, a gel, an ointment, etc. (paragraph 0299). The composition may comprise a single cationic surfactant or may comprise 2 or more different cationic surfactants (paragraph 0322). A preferred mono-quaternary ammonium compound is benzalkonium chloride. This compound is taught as having a wide spectrum of antimicrobial activity (paragraph 0323). Preferred bis-quaternary ammonium compounds are ethonium. Ethonium is taught has having activity against gram positive bacteria, fungi and viruses (paragraph 0324).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Kaiser et al., Guthery and Gerashchenko et al. and utilize phospholipids such as phosphatidylcholine or phosphatidyl ethanolamine, reading on the instantly claimed sequestering agent. One skilled in the art would have been motivated to utilize these phospholipids in order to provide for persistence of the composition as taught by Guthery. One skilled in the art would have a reasonable expectation of success as Kaiser et al. teaches phospholipids can be included and teaches the compositions provide for immediate and long-term antimicrobial activity. Regarding the claimed “capable of forming a barrier on a surface and sequestering the antimicrobial agent so as to reduce an initial release rate of the antimicrobial agent from said surface”, these limitations are directed to the capabilities of the phospholipid and do not structurally modify the claimed phospholipids. Therefore, since Guthery teaches the same phospholipids it would be expected to possess the same claimed properties. “The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). NOTE: MPEP 2145.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Kaiser et al., Guthery and Gerashchenko et al. and utilize ethonium, a cationic surfactant, in combination with benzalkonium chloride (instantly claimed antimicrobial agent). One skilled in the art would have been motivated to add ethonium (reading on instantly claimed release agent) as it is a known cationic surfactant with antimicrobial activity as taught by Gerashchenko et al. Since both benzalkonium chloride and ethonium are cationic surfactants with antimicrobial activity as taught by Gerashchenko et al. their combination is obvious. As a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06. Furthermore, the inclusion of multiple antimicrobials would be expected to provide for more of a broader spectrum of activity against a variety of microbes. MPEP 2144. Regarding the recitation “wherein the double chained cationic surfactant electrostatically disrupts said sequestering to provide sustained release of the antimicrobial agent”, this limitation does not modify the structure of the cationic surfactant but merely states the property of the claimed double chained cationic surfactant. Therefore, the wherein clause does not structurally distinguish the instant claims from the prior art. NOTE: MPEP 2111.04.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Kaiser et al., Guthery and Gerashchenko et al. and utilize sorbitan esters or fatty acid esters of polyhydroxy compounds, i.e. glycol fatty acid esters, fatty acid ester of sorbitan. One skilled in the art would have been motivated to utilize these compounds as they are specifically taught non-ionic surfactants (reading on instant claims 6-7). All of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007).
Regarding the free of ethanol and other volatile C1-C4 alcohols recitation, while short chain alcohols such as ethanol or propanol are taught by Kaiser et al. Kaiser et al. teaches that they can cause undue drying of the skin (column 1, lines 44-53; column 2, line 11) and numerous examples do not contain either ethanol or propanol. While Guthery does claim that the composition can comprise an antimicrobial alcohol (claim 12) and that these alcohols could be n-propanol, isopropanol or ethanol (claims 17-19), the alcohol could also be phenylethyl alcohol (claim 20). Thus, in light of the teachings of Kaiser et al. one skilled in the art would readily recognize that alcohols such as ethanol or isopropanol do not have to be present.
Regarding claim 2, Kaiser et al. teaches that the antimicrobial is selected from chlorhexidine, benzalkonium chloride, benzethonium chloride, polyhexamethylene biguanide. There are only 4 choices for the antimicrobial of which two fall within the scope claimed. Where selection of one named species from a list of alternatives is all that is required to arrive at the instantly claimed subject matter, that species is anticipated. Ex Parte A., 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990). See also In re Sivaramakrishnan, 213 USPQ 441 (CCPA 1982). MPEP 2131.02.
Regarding the claimed dispersing agent (claim 10), Kaiser et al. teaches anionic emulsifiers which read on the instantly claimed dispersing agent as Kaiser et al. teaches a dispersion in which a fine dispersion of oil phase droplets is held in the surrounding water phase by suitable emulsifiers (column 2, lines 48-55).
Regarding the claimed concentration of antimicrobial agent (claim 3), sequestering agent (claim 5) by way of concentration of non-ionic surfactant/emulsifier, and dispersing agent (claim 12) by way of the concentration of the anionic emulsifier, Kaiser et al. teaches an overlapping range. Regarding the claimed concentration of antimicrobial and cationic surfactant (claim 8), Gerashchenko et al. teaches an overlapping range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding claims 14, firstly, the prior art suggests the same combination of ingredients. Secondly, Guthery recognizes that the phospholipids allow for a persistent (i.e. sustained effect) effect. Since the composition contains the same antimicrobials, the inclusion of the phospholipid would be expected to provide not only an immediate effect but also a sustained effect. Furthermore, Kaiser et al. teaches that the lotion when rubbed into the skin and left on to continue moisturizing and killing microbes for up to 12 hours (abstract). Kaiser et al. teaches which is applied to the skin and left in place to provide both immediate and long-term antimicrobial activity and moisturizing functions. Therefore, the combination of prior art suggests a sustained effect overlapping with a time period claimed.
Regarding claims 15-21, it is taught that the lotion when rubbed into the skin and left on to continue moisturizing and killing microbes for up to 12 hours (abstract). The compositions are taught as antimicrobial (example 4). Since the same antimicrobial agents are included, it would be expected to provide for the same effect.
Regarding claim 22, the composition is a disinfectant for hands reading on the claimed hand sanitizer.
Response to Arguments
Applicants’ arguments filed May 6 2026 have been fully considered but they are not persuasive.
Applicants argue that (1) claim 1 was amended to clarify the language relating to the sequestering agent and the release agent as well as their functional interaction. It is argued that claim 1 as amended is not taught nor suggested by the combination of Kaiser, Guthery and Gerashchenko nor would a person of ordinary skill have a reasonable expectation of success in arriving at the claimed invention. Claim 1 was amended such that myristyl alcohol is not excluded. Applicants point to paragraph [0103] further notes that the results reference in formula 3 containing myristyl alcohol was consistent with results using formulation 4 which contains ethonium rather than myristyl alcohol and formulation 5 which contains both ethonium and myristyl alcohol. All the samples tested in the ZOI experiments were dried prior to testing such that any ethanol was absent.
Regarding Applicants’ first argument, firstly, the specification as filed does not include paragraph numbers. Thus, the examiner is interpreting this paragraph number as referring to the paragraph in the published application. It appears Applicants are re-arguing the results in the specification that were previously made. Specifically, Applicants argued that the combination of the amicrobial agent, the phospholipid sequestering and the double chained cationic surfactant provides surprising and unexpected results that would not be obvious based on the teachings of Kaiser, Guthery and Gerashchenko. The claimed components act together to provide sustained release of therapeutic levels of the antimicrobial over several days. The examiner notes that this is not a required limitation of the claims. The most limiting claim, claim 14, recites sustained antimicrobial effect from about 1 hour to up to about 30 days. Thus, sustained release is only required for 1 hr. Applicants argued that the instant examples show that the combination of the antimicrobial agent and the phospholipid sequestering agent (Formula 2) led to reduced level and duration of activity compared to antimicrobial agent only (formulation 1). However, when the double chained cationic surfactant release agent was added, the effects of the sequestering agent were counteracted resulting in increased level and duration of activity.
Regardless if myristyl alcohol is allowed to be present or not, the examiner cannot agree that the data establishes an unexpected effect. Looking at table 2, the examiner can see for formulation 1 which is the combination of BAC and PC the effect does not last as long and reduces over the first day. However, this effect still could potentially fall within the scope claimed as claim 14 recites that the composition has an antimicrobial effect that is sustained from about 1 hr to up to about 30 days and the data isn’t granular enough to show the effect over one hour. While formulation 4 and 5 shows less reduction on day 2 and a longer effect (to day 4) this does not establish an unexpected effect nor an unexpected effect commensurate in scope with the claims. These results are at a single concentration with a specific combination of ingredients and nothing in the record establishes that any purported “unexpected” effect occurs over the full scope of the claims. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) Note: MPEP 716.02(d). Finally, all the results in Table 2 formulations include 40% ethanol which is expressly excluded from the claims. While the remarks indicate that the compositions were dried and thus ethanol was removed, the specification does not teach this. Nor is there actual evidence that any of these compositions are actually ethanol free as required by the claims. Drying does not necessarily equate to ethanol free. While drying can reasonably be interpreted as reducing the content of ethanol, it cannot be said that it would necessarily be ethanol-free as alleged. “The arguments of counsel cannot take the place of evidence in the record.” In re Schulze, 346 F.2d 600, 145 USPQ 716, 718 (CCPA 1965), In re Huang, 40 USPQ 2d 1685 (Fed. Cir. 1996), In re De Blauwe et al., 222 USPQ 191, (Fed. Cir. 1984).
Applicants argue that (2) they disagree with the Office Action’s interpretation of the Zone of Inhibition Data. It is argued that the Office Action appears to interpret the ZOI data as indicating that prolonged or expanded zones of inhibition necessarily reflect increased antimicrobial activity of ethonium itself It is argued that based on the knowledge in the art, in ZOI testing, the size of an inhibition zone is approximately proportional to the dose of the antimicrobial released from the test article. Table 2 demonstrates that ethonium does not function as an antimicrobial agent. The data shows the effect of ethonium in the presence of the antimicrobial agent BAC. A comparison of formula 1 and formula 6 shows that the summed ZOI values are essentially identical. Thus, Table 2 shows the addition of ethonium to BAC does not increase the total antimicrobial release or antimicrobial activity. This data undermines the Office Actions assertion that adding ethonium of Gerashchenko would lead to predictable results of increased antimicrobial efficacy.
Regarding Applicants’ second argument, while the examiner can appreciate that in Table 2 formulation 6 appears to produce the same/similar effect as formulation 1, this appears to be specific to MRSA. As table 3 which is testing with the same formulations and E. coli, comparison of formula 1 and 6 clearly show an increase by adding ethonium. Furthermore, the use of ethonium as an antimicrobial agent is not a statement the examiner made from their knowledge but from the specific teachings in the prior art. Gerashchenko et al. expressly teaches that ethonium is a surface-active antimicrobial substance (paragraph 0014; 0324). Thus, with regards to MRSA, it could just be that the concentration of ethonium utilized, which is 0.1% in table 1, is not sufficient to produce an antimicrobial effect. This would be a reasonable conclusion as Gerashchenko et al. teaches cationic surfactant in 0.2 to 4 wt%.
Applicants argue that (3) the experimental data clearly demonstrate that the phospholipids stabilize, while ethonium destabilizes, the antimicrobial agent in the context of the claimed invention. The data in the specification shows by comparing Formulation 1 and 2 that phosphatidylcholine sequesters and stabilizes BAC on the surface, substantially reducing its release rate. This property of the phospholipid sequestering agent is directly contrary to the release-maximizing approach taught by Kaiser, which seeks to maintain antimicrobials freely available in the aqueous phase.
Ethonium, in turn, destabilizes the interaction between the BAC and phospholipid barrier, as shown by a comparison of the results of using Formulation 2 (BAC + phosphatidylcholine) and Formulation 4 (BAC + phosphatidylcholine + ethonium), which differ only in the presence of ethonium. Table 2 shows a summed ZOI of 3.7 mm for Formulation 2, compared with 9.2 mm over four days for Formulation 4. These results thus demonstrate that while phosphatidylcholine stabilizes BAC by suppressing its release, ethonium reverses this stabilization by disrupting the association between BAC and the phospholipid barrier, thereby promoting controlled release of BAC. Applicant submits, as would further be understood based on the knowledge of the ordinarily skilled artisan, that the disruption occurs due to electrostatic interactions between the positively charged cationic surfactant and the negatively charged phospholipid. Importantly, Formulation 4 does not replicate the BAC-only results of Formulation 1. Rather, the combination of antimicrobial agent, sequestration agent, and release agent in Formulation 4 allows for extended release over multiple days, resulting in sustained antimicrobial efficacy. These results were surprising and unexpected and could not have been predicted based on the combination of cited references. See M.P.E.P. § 2143(A) ("The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art.") (citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)) (emphasis added). Additionally, this distinguishing functional interaction is expressly reflected in claim 1 as presented herein.
Regarding Applicants third arguments, while Applicants state that the data demonstrate that the phospholipids stabilize, while ethonium destabilizes, the antimicrobial agent in the context of the claimed invention, at the end of the day the claims require both components to be present. Thus, if the prior art teaches motivation to include phospholipids and ethonium and their combination would be expected to product an antimicrobial composition which possess both immediate and long-term antimicrobial effect, then the claimed composition is obvious. Again, the claimed combination does not product more than what is expected by the prior art. It is well settled that "any 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." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). As long as some suggestion to combine the elements is provided by the prior art as a whole, the law does not require that they be combined for the reason or advantage contemplated by the inventor. In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); In re Kronig, 539 F.2d 1300, 1304 (CCPA 1976). MPEP 2143.01 and 2144 (IV).
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991)
In In re Lintner, the claimed invention was a laundry composition consisting essentially of a dispersant, cationic fabric softener, sugar, sequestering phosphate, and brightener in specified proportions. The claims were rejected over the combination of a primary reference which taught all the claim limitations except for the presence of sugar, and secondary references which taught the addition of sugar as a filler or weighting agent in compositions containing cationic fabric softeners. Appellant argued that in the claimed invention, the sugar is responsible for the compatibility of the cationic softener with the other detergent components. The court sustained the rejection, stating "The fact that appellant uses sugar for a different purpose does not alter the conclusion that its use in a prior art composition would be [sic, would have been] prima facie obvious from the purpose disclosed in the references." 173 USPQ at 562.
Note: MPEP 2145: Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979); In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991); see also In re Woodruff, 919 F.2d 1575, 1577-78 (Fed. Cir. 1990) (obviousness rejection affirmed where using claimed elements in the manner suggested by the prior art necessarily resulted in claim-recited effect).
The examiner cannot agree that the combination of the prior art would not result in the same claimed composition and these properties/functions claimed are merely what would occur.
Kaiser et al. teaches that the composition is preferably used as a leave-on composition, which is applied to the skin and left in place to provide both immediate and long-term antimicrobial activity and moisturizing functions (column 2, lines 33-43). Therefore, Kaiser et al. clearly desires a sustained effect. Thus, inclusion of components which would be expected to control the release are not contrary to the teachings of Kaiser et al. Thus, contrary to Applicants arguments, Guthery teaches phospholipids are persistent components, that is to say they are components which allow for persistence of the composition to kill microorganisms, this is the motivation to include them in the invention of Kaiser et al. as Kaiser et al. clearly desires long-term antimicrobial activity. Therefore, the examiner cannot agree that the combination would change the function of the ingredients included as argued.
Applicants argue that (4) the cited references fail to provide a reasonable expectation of success. Kaiser teaches avoiding sequestration in order to preserve immediate antimicrobial activity.
Regarding Applicants’ fourth argument, nowhere does Kaiser say that agents which sequester cannot be included. The portion of Kaiser pointed to by Applicants refers to immediate release. But Kaiser expressly teaches the desire for both immediate and long-term antimicrobial activity (column 2, lines 37-40). This is the same thing taught by Guthery; the compositions provide immediate and long-term antimicrobial effect (page 41, 17-18). Guthery expressly teaches that the phospholipids are persistent compound so the fact that they provide for controlled release is the expected effect and not a change in function. An explanation as to how the phospholipids allow for persistent antimicrobial activity does not make the use of the phospholipid any less obvious.
Conclusion
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/ABIGAIL VANHORN/Primary Examiner, Art Unit 1636
