Ex Parte 6416684 et al

Patent Trial and Appeal Board

Jun 1, 2018

95001136 (P.T.A.B. Jun. 1, 2018)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,136 01/23/2009 6416684 UNUI132159 9338
1009 7590 06/01/2018
KING & SCHICKLI, PLLC
800 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
EXAMINER
JOHNSON, JERRY D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
06/01/2018 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
____________

UNIVAR USA, INC.
Requester

v.

Patent of
NATURAL ALTERNATIVES, LLC.
Patent Owner and Appellant
____________

Appeal 2017–011228
Reexamination Control 95/001,136
Patent 6,416,684 B1
Technology Center 3900
____________

Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

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Patent Owner Natural Alternatives, LLC. (“Patent Owner”) appeals
under 35 U.S.C. §§ 134(b) and 315(a) (pre-AIA) the Examiner’s decision to
reject claims 1–5, 8–10, 12, 15–19, 22–24, 26–35, 38–55, 58, 62–70, 72–90,
92, 95, 97, 99, 101–119, and 121–125.1 Third-Party Requester Univar USA,
Inc. (hereinafter “Requester”) urges that the Examiner’s decision to reject
these claims must be affirmed.2
Requester also appeals under 35 U.S.C. §§ 134(c) and 315(b) (pre-
AIA) Requester appeals the Examiner’s decision to indicate claims 56, 57,
59–61, 120, and 126–131 as patentable, as well as the Examiner’s decision
not to adopt certain rejections of claims 1, 4, 5, 26, 29-32, 34, 35, 38, 39, 43,
45-47, 51, 52, 54-63, 78-84, 99, 102, 117-120, and 126-131.3 Patent Owner
urges that the Examiner’s decision not to adopt these rejections and confirm
patentability of claims 56, 57, 59–61, 120, and 126–131 must be affirmed.4
We have jurisdiction under 35 U.S.C. § 6.
As discussed infra, we AFFIRM-IN-PART the Examiner’s decision to
reject the claims. We REVERSE the Examiner’s decision not to adopt the
rejection of claims 119 and 120, which by operation of rule, results in the
entering of a new ground of rejection of those claims.

1 See Patent Owner’s Appeal Brief 1 (filed January 3, 2017) (hereinafter
“PO Appeal Br.”) Examiner’s Answer (mailed March 31, 2017) (hereinafter
“Ans.”); Right of Appeal Notice (mailed September 16, 2016) (hereinafter
“RAN.”).
2 See Requester’s Respondent Brief (filed March 15, 2017) (hereinafter
“Req. Resp’t Br.”).
3 See Requester’s Appeal Brief filed December 29, 2016, hereinafter “JMI
Appeal Br.,” 4, 19.
4 See Patent Owner’s Respondent Brief to Requester’s Appeal Brief filed
January 30, 2017, hereinafter “PO Resp’t Br.”
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STATEMENT OF THE CASE
United States Patent 6,416,684 B1 (hereinafter the “’684 Patent”),
which is the subject of the current inter partes reexamination, issued to Todd
A. Bloomer on July 9, 2002, with 38 claims. A Request for Inter Partes
Reexamination was filed by Requester on January 9, 2009. Patent Owner
identifies related U.S. Patent 6,080,330, which was the subject of three
merged ex parte reexamination proceedings 90/010,381, 90/011,454, and
90/011,713, and which was appealed to the Board (Appeal No. 2013–
009547). (PO Appeal Br. 1.) The Board affirmed the Examiner’s rejections,
but the Board’s decision was reversed on appeal to the Court of Appeals for
the Federal Circuit. (Id.; Decision on Appeal in Appeal No. 2013–009547
issued on May 30, 2014; Decision on Request for Rehearing Appeal No.
2013–009547 mailed April 28, 2015; In re Natural Alternatives, LLC, 659
Fed.Appx. 608 (Fed. Cir. 2016).)
During the course of the reexamination proceeding Patent Owner has
added 93 claims. Claims 1, 12, 15, 26, 46–55, 62, 92, 95, 97, 99, 101–103,
105, 117, 119–121, 123, 126, and 129 are independent. Claims 6, 7, 11, 13,
14, 20, 21, 25, 36, 37, 71, 91, 93, 94, 96, 98, and 100 have been canceled.
(PO Appeal Br. 1.) The Examiner indicated that claims 56, 57, 59–61, and
126–131 are patentable. (RAN 83.)
The ’684 Patent relates to a composition and method for preventing
the accumulation of snow or ice on a surface or object, as well as a method
of deicing surfaces or objects on which snow or ice has already accumulated.
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(Col. 1, ll. 5–9.) The composition includes desugared molasses and a second
deicing component including a glycol or salt. (Col. 4, ll. 40–53.)
Claim 1, which is illustrative of the appealed subject matter, reads as
follows (with bracketing showing deletions relative to the originally issued
claim):
1. A deicing composition comprising at least 20% by
weight of desugared molasses and a second deicing component,
said second deicing component being selected from the group
consisting of ethylene glycol, di-ethylene glycol, [soluble
potassium salts,] and the sodium, calcium, magnesium, and
potassium salts of acetate, [chloride,] carbonate, and formate.

(PO Appeal Br. 31, Claims App’x.)

PATENT OWNER’S APPPEAL
As identified by Patent Owner, the claims on appeal are subjected to
38 grounds of rejection, which can be found in Patent Owner’s Appeal Brief.
(PO Appeal Br. 3; see also RAN 7–64.) Patent Owner contests each ground
of rejection. (Id.)

Rejection of claims 40–42 under 35 U.S.C. § 314(a)
Claim 40, which we designate as a representative claim, depends from
method claim 15. (Id. at 32, 34–35.) Claim 15 was amended during
reexamination to delete certain members recited in the Markush group for
the “second deicing component” in a manner not directly relevant to the
issue raised in this rejection. (Id.; RAN 4). Claim 15, as recited in the
original ’684 Patent, reads in pertinent part (’684 Patent, Col. 9, ll. 14-18):
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A method for deicing an icy surface, comprising applying to said icy
surface a deicing composition in an amount effective to reduce the
level of ice on said surface, said composition comprising at least 20%
by weight of desugared molasses and a second deicing component....

Claim 40 further recites that the method for deicing an icy surface includes
“separately applying said desugared molasses and said second deicing
component to said surface.” Claim 41 contains a similar limitation. Claim
42 depends from claim 41.
The Examiner rejected claims 40–42 as being broader than the
originally patented claims, which, as seen in the text of original claim 15,
did not require a method where the desugared molasses and second deicing
component are applied separately to a surface. (RAN 7.)
Patent Owner contends that the ’684 Patent discloses that the
“applying” step may include separate application of the components, such
that claims 40–42 are narrower in scope than the limitations at issue in
originally issued claim 15. (PO Appeal Br. 4, citing ’684 Patent, Col. 6, ll.
47–54.)
Requester contends that the original claims cannot cover both
simultaneous and separate application of the composition because there is no
evidence that the two components, when separately applied, will come
together to form a composition with at least 20% desugared molasses, as
recited in claim 15. (Req. Resp’t Br. 4.) Requester argues that because of
the presence of other components such as water and ice, it is unclear that a
composition having at least 20% desugared molasses will be obtained. (Id.)
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The issue with respect to this rejection is whether the Examiner erred
in determining that new claims 40–42 enlarge the scope of the originally
issued claims of the ’684 Patent.
We look to the ’684 Patent Specification to ascertain what the
Inventor meant by “applying.” The ’684 Patent enlightens one skilled in the
relevant art that (col. 6, ll. 51–55):
The composition may be “applied” by applying the components
separately, such as by first applying salt and then applying desugared
sugar beet molasses and optionally other components such as the anti-
skid agent.

The ’684 Patent originally issued with claim 15 reciting a method
comprising “applying” a deicing composition including at least 20% by
weight of desugared molasses and a second deicing component to an icy
surface. As reproduced above, the ’684 Patent expressly discloses that the
term “applied” may include separate application of the components of the
composition, and, therefore, both simultaneous and separate applications are
implicit in the original claim language read in light of the Specification.
That is, the ’684 Patent Specification reasonably informs a person skilled in
the art that the term “applying” in claim 15, as originally issued,
encompassed both simultaneous and separate application of the components
of the composition. As to Requester’s contention that it is unclear whether a
composition containing 20% by weight desugared molasses would be
formed, we do not agree. When reading the claims in context, one of
ordinary skill in the art would have understood that the composition amounts
are based on the “dry weight” of the composition, as evidenced by
dependent claims 18 and 19. Moreover, while the composition in claim 15
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is open to other components as a result of the “comprising” transitional
phrase, there is no indication that one of ordinary skill in the art would have
considered materials already existent on the surface upon which the
components are to be applied to be part of the “deicing composition” that is
applied “to said icy surface,” as recited in claim 15.
Accordingly, we reverse the Examiner’s rejection of claims 40–42
under 35 U.S.C. § 314(a).

Rejection of claims 40–42, and 130 under 35 U.S.C. § 112, fourth
paragraph
The Examiner also rejected claims 40–42 under 35 U.S.C. § 112,
fourth paragraph for failing to further limit claim 15, because the Examiner
had determined that claim 15 did not cover a method including applying
desugared molasses and a second deicing component separately. (RAN 9.)
For the reasons discussed above with respect to the rejection of claims 40–
42 under 35 U.S.C. § 314(a), we reverse the Examiner’s rejection of claims
40–42.
New claim 130 depends from new claim 129. (PO Appeal Br. 45.)
Claim 129 recites a method for preventing the formation of ice on an
outdoor surface by applying a composition comprising at least 20% by
weight desugared molasses, said desugared molasses derived from the
Steffen process . . ..” (Id.) Claim 130 recites that the method “further
including the step of deriving the desugared molasses from molasses via the
Steffen process.” (Id.)
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The Examiner determined that claim 130’s process step does not
further limit claim 129 because claim 129 already recites that the desugared
molasses is derived from the Steffen process. (RAN 9.)
Patent Owner contends that claim 129 does not require the step of
deriving the desugared molasses from molasses via the Steffen process, only
using a product derived from the Steffen process, such that claim 130 further
limits claim 129. (PO Appeal Br. 6.)
We agree with Patent Owner. Claim 130 positively recites a step that
is not present in claim 129, the actual step of deriving the desugared
molasses via the Steffen process. Although claim 129 recites “said
desugared molasses derived from the Steffen process,” we interpret that
language as a product-by-process limitation defining the “desugared
molasses” that could be met by any “desugared molasses” that is chemically
and structurally indistinguishable from that derived from the Steffen
process—not a positive step actually required by the claim. Accordingly,
claim 130 further limits claim 129. Therefore, we reverse the Examiner’s
rejection of claim 130 under 35 U.S.C. § 112, fourth paragraph.

Rejection of claims 39, 44–47, 58, and 119 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement

Claim 39, which was added during reexamination depends from
composition claim 1, and recites that the deicing composition includes
“between 40 and 70% by weight desugared molasses.” Claims 44–47 are
method claims or composition claims reciting the same weight range for
desugared molasses. Claim 58 is rejected as dependent from claim 46.
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Claim 119 is a method claim reciting a deicing composition having “70% by
weight of desugared molasses.”
The Examiner found that the Specification of the ’684 Patent does not
support a deicing method or composition comprising between 40 and 70%
by weight desugared molasses. (RAN 8.) In particular, the Examiner found
that Example 1 of the ’684 Patent contains two compositions that are
relevant to the claimed range, one having 70% desugared sugar beet
molasses and one having 40% desugared sugar beet molasses, where neither
composition specifies whether the percentages are by weight. (Id.) In
addition, the Examiner found that the claims are broader than the specific
Example 1 compositions because they are not limited to magnesium chloride
as the second deicing component. (RAN 9.)
Patent Owner contends that if the weight percentages in Example 1 of
the ’684 Patent are taken as calculated by weight, then the claim language is
directly supported by Example 1. (PO Appeal Br. 4.) Patent Owner argues
also that if the percentages in Example 1 are taken as by volume, Patent
Owner has provided calculations based on density disclosed in the ’684
patent (col. 7, l. 13) to show that the claimed weight percentages are still
disclosed. (Id.) Patent Owner contends further that the ’684 Patent
discloses that water may be added to any embodiment, which would
necessarily decrease the concentration of desugared molasses in the overall
composition, and include percentages between 40% and 70% by weight.
(PO Appeal. Br. 5.) Patent Owner does not set forth separate arguments for
claim 119.
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Requester contends that claims 39, 44–47, and 58 require that the
second deicing component be a salt, which is a solid, and as such cannot
encompass the “solution,” described in Example 1. (Req. Resp’t Br. 4.)
Accordingly, the issue with respect to this rejection is whether the
Examiner erred in finding that the ’684 Patent does not provide adequate
written descriptive support for a composition having between 40% and 70%
by weight, or exactly 70% by weight, desugared molasses, as recited in the
claims.
To satisfy the written description requirement, a patent applicant must
“convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention.” Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (emphasis omitted).
Literal support for a claim limitation is not required under the first paragraph
of 35 U.S.C. § 112. Id. at 1563; In re Gosteli, 872 F.2d 1008, 1012 (Fed.
Cir. 1989).
Upon review of the ’684 Patent, we agree with Patent Owner, that the
recited ranges of desugared molasses including 40 to 70% by weight are
conveyed with reasonable clarity to those skilled in the art. In this regard,
originally issued claim 1 of the ’684 Patent recites that the desugared
molasses is present in “at least 20% by weight,” which informs the skilled
artisan that the percentages of desugared molasses are expressed as weight
percentages. (’684 Patent, col. 8, ll. 32–38.) Also, we observe that the ’684
Patent discusses the concentrations of the second deicing component in
percentages by weight. (Col. 6, ll. 19–29.) As a result, we are of the view
that one skilled in the art would have readily understood that the 70% and
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40% desugared molasses amounts disclosed in Example 1 are expressed in
weight percentages. (col. 7, ll. 35–55.)
As to the Examiner’s position that the percentages of desugared
molasses disclosed in Example 1 are relevant only to combinations of
desugared sugar beet molasses with magnesium chloride, we do not agree.
Neither the Examiner nor the Requester directs us to concrete evidence or
technical reasoning that the use of magnesium chloride is essential for the
calculated 40% and 70% by weight data points. The ’684 Patent specifically
discloses several other deicing agents that may be used as alternative second
deicing components, whether provided as solid salt or solution as well as
that the amounts of the second deicing composition may vary widely,
depending on the particular composition. (’684 Patent, col. 4, ll. 42–52; col.
6, ll. 19-28 (generally citing maximum amounts for additional deicing agents
while contemplating that even “higher concentrations are possible”); col. 8,
ll. 32–38, 47–50.)
Accordingly, we reverse the Examiner’s rejection of claims 39, 44–
47, 58, and 119 under 35 U.S.C. § 112, first paragraph.

Claim 62 under 35 U.S.C. § 102(b) as anticipated by Daly5,6
Claim 62 was added during reexamination and is reproduced below
(PO Appeal Br., Claims App’x 38):

5 US Patent 5,639,319, issued June 17, 1997.
6 The Federal Circuit’s holding that Daly is non-analogous art (Natural
Alternatives, 659 Fed.Appx. at 614) further discussed infra is not relevant to
an anticipation rejection.
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62. A deicing composition comprising greater than 25% by weight
of desugared molasses and further comprising a second deicing
component selected from the group consisting of the sodium, calcium,
magnesium, and potassium salts of chloride.

The Examiner found that Daly discloses a composition comprising
desugared sugar beet molasses having from 35–85% by weight solids and
containing up to 50% by weight of calcium or magnesium chloride. (RAN
60.) The Examiner found that a composition comprising calcium or
magnesium chloride in such amounts would necessarily contain greater than
25% by weight desugared molasses. (Id.)
Patent Owner contends that the Examiner’s logic is flawed because
Daly does not expressly disclose that the composition includes only
desugared molasses and calcium or magnesium chloride. (PO Appeal Br.
24–25.)
The issue with respect to this rejection is whether one of ordinary skill
in the art would have appreciated that Daly discloses compositions including
desugared molasses within the range recited in claim 62.
We agree with the Examiner that claim 62 is anticipated by Daly.
Daly discloses a composition that combines desugared molasses with
inorganic salts, where the salts are present in an amount “less than about
fifty percent (50%) by weight.” (Daly, col. 3, ll. 4–7.) Daly discloses
antifoam agents and enhancers to improve smell that may be added to the
composition. (Col. 3, ll. 25–37.) Because these components are disclosed as
“preferred” but not required (id.), Daly expressly teaches a composition with
only desugared molasses and an inorganic salt. Even if Daly’s disclosure
cannot be considered to be explicit, “it is proper to take into account not only
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specific teachings of the reference but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom” in assessing
whether a claim is anticipated. In re Preda, 401 F.2d 825, 826 (CCPA
1968).
Thus, Daly discloses that desugared molasses is present in amounts
greater than 50% by weight, which is within the claimed range of greater
than 25% by weight.
Accordingly, Patent Owner’s arguments are not persuasive.
As a result, we affirm the Examiner’s rejection of claim 62 as
anticipated by Daly.

Rejection of Claims 1–5, 8–10, 12, 15–19, 22–24, 39, 44, 46, and 47 under
35 U.S.C. § 103(a) as obvious over Johnston,7 Longworth,8 and Gall I9

The Examiner found that Johnston discloses methods of inhibiting
corrosion caused by chloride ions in conventional deicers, such as calcium
and magnesium chloride, by adding corrosion inhibitors to the deicer. (RAN
16.) The Examiner found that Johnston does not disclose a deicing
composition comprising a desugared molasses. (Id.) The Examiner found
that Longworth discloses that ethylene glycol/water systems, which Johnston
teaches as another conventional deicer, are also known to be corrosive to
metal surfaces, and thus ethylene glycol is one of Johnston’s further
described “other corrosive deicers.” (Id.) The Examiner found that Gall I

7 US Patent 5,071,579, issued December 10, 1991.
8 US Patent 4,689,201, issued August 25, 1987.
9 CA 2 287 582 A1, published April 27, 2000.
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discloses that desugared molasses is useful as a corrosion inhibitor in
chloride-based deicers or other deicing materials sprayed on roads where the
desugared molasses has a solid content greater than 45 percent by volume
and may comprise 1 to 50 percent by volume of the composition. (RAN 16–
17.)
The Examiner concluded that it would have been obvious to have
used the desugared molasses in the amounts disclosed in Gall I in a deicing
composition as an alternative corrosion inhibitor to that disclosed in
Johnston to arrive at the amount of desugared molasses recited in the claims.
(RAN 17–18.)
Patent Owner contends that Johnston, in addition to lacking a teaching
of desugared molasses, does not disclose that the corrosion inhibitor is
present in amounts greater than 5 percent by weight. (PO Appeal Br. 12.)
Patent Owner argues that the rejection does not account for how the
teachings of Gall I would be merged with Johnston in order to arrive at the
claimed amount of desugared molasses. (Id. at 12–13.)
Requester contends that Johnston provides appropriate amounts when
using a different corrosion inhibitor than desugared molasses, and as such
Gall I provides the proper amount of desugared molasses when it is to be
used as an alternative corrosion inhibitor. (Req. Resp’t Br. 9.) In addition,
Requester argues that the desugared molasses does not have to be a
substitute for the corrosion inhibitor disclosed in Johnston, but may be added
in addition to Johnston’s corrosion inhibitor. (Id.)
Accordingly, the issue with respect to this rejection is whether it
would have been obvious to have used the desugared molasses in Gall I as a
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corrosion inhibitor with Johnston’s corrosive conventional deicers in the
amounts recited in the claims.
Johnston discloses a corrosion inhibiting system for inhibiting
corrosion caused by corrosive deicers, which deicers include sodium
chloride, calcium chloride, and “other corrosive deicers or any other
products causing or susceptible of causing similar corrosions.” (Col. 1, ll.
10–18.) Johnston discloses that conventional deicers include glycols,
calcium chloride, magnesium chloride, “and in general other deicers that are
generally available.” (Col. 3, ll. 3–11.) Johnston discloses that the deicing
composition comprising at least 50% by weight, preferably at least 70% by
weight of a deicer. (Col. 3, ll. 12–14.) Johnston discloses that the corrosion
inhibitor is sodium fluorophosphates, which is present in an amount of at
least 0.25% by weight, and preferably 2–5% by weight of the system. (Col.
4, ll. 13–17.)
Gall I discloses desugared sugar beet molasses as a corrosion inhibitor
in chloride-based deicers or other deicing materials sprayed on the roads.
(P. 3, ll. 13–20.) Gall I discloses that the chloride-based deicers include
calcium and magnesium chloride. (Id.) Gall I discloses that the desugared
molasses may be added in amounts of from 1 to 50 percent by volume to a
chloride-based deicer solution having a solid content of 45 to 65 percent by
volume. (Pages 3, l. 30 – p. 4, l. 2.) Gall I additionally discloses that
desugared molasses improves the solubility of other inhibitors in chloride
brine by acting as a carrying agent. (P. 4, ll. 10–15.)
As pointed out by the Examiner and Requester, Gall I discloses
amounts of desugared molasses that overlap or encompass the amounts
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recited in the claims. Here, we observe that Patent Owner has not argued or
presented persuasive evidence that the percent by volume of desugared
molasses disclosed in Gall I would not include amounts in percent by weight
within the claims.
We do not subscribe to Patent Owner’s view that a skilled artisan
would only consider adding up to 5% by weight of corrosion inhibitor to the
conventional corrosive deicers of Johnston where the skilled artisan would
understand similar anti-corrosive effect with from 1 to 50 percent by volume
of desugared molasses with the same conventional corrosive deicers.
Johnston does not disparage using amounts of alternative corrosion inhibitor
above 5%. (See Col. 4, ll. 13–17.) Gall I would have informed one of
ordinary skill in the art that when applying desugared molasses as a
corrosion inhibitor, amounts including those recited in the instant claims
would have been used successfully.
In addition, and importantly for all of Patent Owner’s arguments
directed to the precise concentration of desugared molasses and a second
deicing component recited throughout the claims, “where the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.” In re
Aller, 220 F.2d 454, 456 (CCPA 1955). If a routine variable change causes
an unexpected effect, the claimed subject matter will be unobvious under the
law if the claimed range is critical to obtaining unexpected beneficial results.
See In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990). In this regard, we observe that the ’684 Patent
does not assign any criticality to the amounts of the composition
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components. (’684 Patent, col. 6, ll. 47–51, “[t]he composition is applied to
a surface in any amount effective for its intended purpose, i.e., as a deicing
agent or as an anti-icing agent. The exact amounts applied will be
determined by persons of skill in the art, depending on the exact composition
chosen.”)
Alternatively, we observe that Gall I discloses that desugared
molasses can be used in conjunction with “chloride-based de-icers”
particularly calcium chloride, sodium chloride, potassium chloride or
magnesium chloride, “or other de-icing materials sprayed on the roads to
reduce the corrosion rate of metallic surfaces of motor vehicles, and
structural roadway components such as bridges, signs and guardrails.” (Gall
I, p. 3, ll. 13–16, emphasis added.) “[O]ther de-icing materials” would
include the conventional deicers such as ethylene glycol systems disclosed
in Johnston (col. 2, l. 67– col. 3, l. 8), which Longworth discloses are also
corrosive (Col. 3, ll. 12–16.) Thus, one of ordinary skill in the art would
have used the desugared molasses of Gall I with the conventional deicers
disclosed in Johnston as instructed by the teachings of Gall I.
Accordingly, we are not persuaded by Patent Owner’s arguments that
applying the amounts of desugared molasses recited in the claims would not
have been obvious in view of the prior art of record.
Regarding claims 46 and 47, Patent Owner similarly argues that the
amounts of the corrosion inhibitor taught in Johnston (up to 5% by weight)
teaches away from the amounts of desugared molasses taught by Gall I
(from 1 to 50 percent by volume) which the Examiner determined renders
obvious the ranges recited in claims 46 and 47 of between 40 and 70% by
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weight. (PO Appeal Br. 13.) We are not persuaded by these arguments for
the reasons discussed above. We emphasize again that Johnston’s disclosure
of certain amounts for a different corrosion inhibitor does not constitute a
teaching away where Johnston does not disparage using a different corrosion
inhibitor in amounts above 5%.
Regarding claim 12, Patent Owner argues that the Examiner has not
provided a prima facie case of obviousness with respect to a step of mixing
the desugared molasses with water. (PO Appeal Br. 13.)
We disagree. The Examiner specifically references Gall I (page 3,
line 30 – page 4, line 2) in the course of rejecting claim 12. (RAN 17.) Gall
I discloses that chloride-based deicing solutions are administered in water.
(Gall I, p. 3. ll. 21–22.) Indeed, as discussed above, Gall I discloses that
desugared molasses is used in conjunction with chloride brine. (P. 4, ll. 10–
15.) In addition, Johnston also discloses water as a solvent or diluent for
corrosion inhibitors. (Johnston, col. 4, ll. 32–44.) On the record before us,
Patent Owner has directed us to no error in the Examiner’s rejection of claim
12.

Secondary Considerations
“Objective indicia of nonobviousness play a critical role in the
obviousness analysis. They are not just a cumulative or confirmatory part of
the obviousness calculus but constitute independent evidence of
nonobviousness.” Leo Pharmaceutical Products, Ltd. v. Rea, 726 F.3d
1346, 1358 (Fed. Cir. 2013) (internal quotations and citation omitted).
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“Objective indicia can be the most probative evidence of nonobviousness in
the record, and enables the court to avert the trap of hindsight.” Id.
Thus, as part of the obviousness analysis, we consider the evidence of
patentability presented by Patent Owner, and weigh that evidence against the
evidence in favor of obviousness discussed above.
Patent Owner relies on the First Bloomer Declaration,10 which
according to Patent Owner describes “successful licensing of the ’684
Patent.” (PO Appeal Br. 26.) Patent Owner also relies on the Second
Bloomer Declaration,11 which allegedly establishes that products sold under
the trademark GEOMELT are anti-icing/deicing fluids “produced under the
’684 Patent” and contains evidence of industry praise, professional approval,
and unexpected results. (PO Appeal Br. 26–27.) Patent Owner argues that
the First and Second Bloomer Declarations provide evidence of a nexus
between the claimed invention and the commercial success. (PO Appeal Br.
27.) Patent Owner also cites to articles that discuss use of GEOMELT on
city roads in order to show significant commercial success. (PO Appeal Br.
27; Evidence App’x E-I.) Patent Owner contends that the report “Beet juice
beats salt”12 provides evidence of industrial praise, professional approval,
and unexpected results. (PO Appeal Br. 27.)

10 Declaration of Todd A. Bloomer executed on October 27, 2009. (PO App.
Br., Evidence App’x C.)
11 Declaration of Todd A. Bloomer executed on January 21, 2014. (PO App.
Br., Evidence App’x D.)
12 “Beet juice beats salt,” NEWSCHANNEL 3, February 27, 2008. (App.
Br. Ev. App’x E.)
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The Federal Circuit discussed similar evidence presented by Patent
Owner with respect to secondary considerations in In re Natural
Alternatives, noting that the Board found the evidence lacked a nexus where
Patent Owner’s commercial success was based on the same advantages of
using desugared beet molasses that were taught in the prior art. Natural
Alternatives, 659 Fed.Appx. at 615. The Federal Circuit, in view of the
decision that Zdzislaw did not disclose the desugared beet molasses recited
in the claims, rejected the lack of nexus argument, stating “we conclude that
the unrebutted objective indicia in the record confirm that the claimed
invention would not have been obvious.” Id.
In this case, the Examiner similarly determined, inter alia, that the
prior art already taught that desugared molasses was useful as a corrosion
inhibitor in deicing materials, citing to Gall I, such that there was no nexus
between the evidence and the novel aspects of the claims. (RAN 80.)
We are not persuaded that the evidence presented by Patent Owner
outweighs the evidence in favor of obviousness. In this regard, as the
Examiner points out, Gall I discloses a combination of salt and desugared
molasses as discussed above. Moreover, Gall I discloses the use of
desugared molasses as a corrosion inhibiting component in deicing
materials. (Gall I, p. 3, ll. 13–16.) Gall I further teaches that desugared
molasses is “environmentally friendly, agriculturally-derived material” and
is “non-toxic.” (Gall I, p. 2, l. 21–27.) Similarly, the evidence submitted by
Patent Owner emphasizes that the combinations of desugared molasses and
salt is “less corrosive to metal” (“City to Use Environmentally Friendly
Road Salt Mixture,” City of Wheaton Illinois, November 6, 2008, PO
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Appeal Br., Evidence App’x F) and “can reduce the amount of corrosion-
causing salt used to treat streets” (“Topeka to use beet juice mix to treat
roads,” Topeka Capital-Journal, November 11, 2008, p. 2, PO Appeal Br.,
Evidence App’x H). Thus, the evidence of record is indicative of well-
known facts from the art, namely that a salt-desugared molasses mixture
works better than salt alone because it has corrosion inhibiting benefits. As
such, the evidence is insufficient to establish a nexus between the novel
aspects of the claimed subject matter and the evidence presented. See Tokai
Corp. v. Easton Enters, Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011).
The same reasoning applies to all of the rejections further discussed
below in which the Examiner relies on the teachings of Gall I.
Accordingly, the evidence in favor of obviousness outweighs the
evidence in favor of nonobviousness. As a result, we affirm the Examiner’s
rejection of claims 1–5, 8–10, 12, 15–19, 22–24, 39, 44, 46, and 47 under 35
U.S.C. § 103(a) as obvious over Johnston, Longworth, and Gall I.

Claims 8-10 and 22-24 as obvious over Johnston, Longworth, Gall I, and
Janke;13 Claims 40-42 as obvious over Johnston, Longworth, Gall I, and
Lin14

Patent Owner does not present separate arguments with respect to the
rejections of claims 8–10, 22–24, and 40–42. (PO Appeal Br. 13.)
Accordingly, we affirm the Examiner’s rejection of claims 8–10, 22–24, and

13 US Patent 5,635,101 issued June 3, 1997.
14 US Patent 4,824,588 issued April 25, 1989.
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40–42 for similar reasons as discussed above with respect to the rejection
based on Johnston, Longworth, and Gall I.

Claims 26–35, 38, and 45 as obvious over Johnston, Longworth, Gall I, and
Janke

Regarding independent claims 26 and 45, Patent Owner similarly
argues that the amount of corrosion inhibitor taught in Johnston (up to 5%
by weight) teaches away from the amount of desugared molasses disclosed
in Gall I (from 1 to 50 % by volume), which the Examiner determined
renders obvious the amounts of desugared molasses recited in claim 26 (at
least 20% by weight) and claim 45 (between 40 and 70% by weight). (PO
App. Br. 14.)
We are not persuaded by Patent Owner’s arguments for the reasons
discussed above.

Claims 1–5, 12, 15–19, 39, 44, 46–50, 106–115 as obvious over
Skankowiak I,15 Gall I, and Daly; claims 40–42 as obvious over Stankowiak
I, Gall I, and Lin; claims 43 and 55 as obvious over Stankowiak I, Gall I,
and Blake16

The Examiner adopted the rejection proposed by Requester in
Requester Comments filed November 25, 2009 and February 19, 2014.
(RAN 10.) The Examiner found that Stankowiak I discloses a deicing
composition containing 87 to 99.45% by weight of alkali metal acetate
and/or alkali metal formate deicer and a light metal corrosion inhibitor

15 US Patent 6,059,989 issued May 9, 2000.
16 US Patent 4,594,076 issued June 10, 1986.
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comprising from 0.5 to 10% by weight of an alkali metal silicate and from
0.05 to 3% by weight of an alkali metal phosphate, where the amounts of the
three components, with or without further advantageous components, in the
aqueous deicing composition can be varied within wide limits. (RAN 11.)
The Examiner found that Stankowiak I fails to disclose a deicing
composition comprising a desugared molasses. (Id.)
The Examiner found that Gall I discloses that typical inhibitors, such
as phosphates and silicates (as disclosed in Stankowiak I) have had limited
success due to certain disadvantages including solubility and toxicity
concerns. (RAN 11.) The Examiner found that Gall I discloses that
desugared molasses is useful as a corrosion inhibitor in chloride-based
deicers or other deicing materials sprayed on roads where the desugared
molasses has a solid content greater than 45 percent by volume and may
comprise 1 to 50 percent by volume of the composition. (RAN 11–12.) The
Examiner found that Daly discloses a desugared beet molasses containing
35–89% by weight of solids, a density of 8.0 to 11.6 lbs per gallon (0.95 to
1.4 kg/liter), and that contains 18% protein, 15% sugars, 18% carbohydrates,
and 16% potassium salts by weight. (RAN 12.)
The Examiner concluded that it would have been obvious to have
used the desugared molasses in the amounts disclosed in Gall I in a deicing
composition as an alternative corrosion inhibitor to that disclosed in
Stankowiak I to arrive the amount of desugared molasses recited in the
claims. (RAN 12.) The Examiner concluded also that it would have been
obvious to use a desugared beet molasses with the properties disclosed in
Daly, as Daly discloses a desugared beet molasses prepared using the
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Steffen process, which the ’684 Patent acknowledges is a known method of
obtaining suitable desugared molasses. (RAN 12, citing ’684 Patent, col. 5,
ll. 45–58.)
Patent Owner contends that Daly is non-analogous art, relying on,
inter alia, the Federal Circuit’s decision, which was entered before the
Examiner’s Answer and Right of Appeal Notice, holding that Daly was not
analogous art because the tire ballast that is the subject of Daly is not
reasonably pertinent to the problem of deicing or preventing the
accumulation of ice on road surfaces. (PO App. Br. 7–8; Natural
Alternatives, 659 Fed.Appx. at 614.) Patent Owner contends also that
Stankowiak I discloses that the acetate and/or formate deicer is used over a
narrow and high range of 87–99.5%, which does not support the Examiner’s
finding that the amounts of components in the deicing composition may be
varied within wide limits, and is different from the claimed amount of
desugared molasses of at least 20% by weight. (PO App. Br. 8–9.)
Requester contends that Stankowiak I discloses that the amounts of
the components can vary within wide limits (col. 2, ll. 45–49 ) and that
Stankowiak I discloses acetate and or formate deicers in amounts of 45 to 60
% by weight. (Req. Resp’t Br. 6.)
The issues with respect to this rejection are whether Daly is analogous
art, and whether it would have been obvious to arrive at the composition
recited in the claims, and in particular the amount of desugared molasses
recited in view of Stankowiak I and Gall I.
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Analogous Art
For the reasons expressed in the Federal Circuit’s Decision, we agree
with Patent Owner that Daly is non-analogous art. However, we observe
that Daly, in this case, is only cited in order to reach certain limitations of
the claims relating to the specific properties of desugared beet molasses
recited in claims 3, 17, 28, 48, 50, 106–115. Indeed, the Right of Appeal
Notice indicates that the rejection was adopted as proposed by Requester,
who relied on Daly in the event that “the weight percent of solids in
desugared molasses is not obvious in view of Gall I.” (RAN 10, citing
Comments filed November 25, 2009, pp. 15–18; Third Party Requester’s
Comments to Patent Owner’s Comments on Action Closing Prosecution
filed November 25, 2009, p. 18.) Thus, Patent Owner’s argument regarding
Daly is only persuasive to warrant reversal of the Examiner’s rejection as
applied to claims 3, 17, 28, 48, 50, and 106–115.

Obviousness
As discussed above, Daly is only relied upon for disclosing particular
characteristics and synthesis procedures for the desugared molasses recited
in claims 3, 17, 28, 48, 50, and 106–115. Regarding Patent Owner’s
argument that the amounts of components disclosed Stankowiak I do not
support the Examiner’s findings, we are not persuaded.
As pointed out by the Examiner, Stankowiak I specifically discloses
that the amounts of the three components may be varied “within wide
limits.” (col. 2, ll. 45–49). Furthermore, in view of the amounts of
desugared molasses disclosed in Gall I (p. 3, l. 30 – p. 4, l. 2), one of
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ordinary skill in the art, in considering the prior art as whole, would not have
been limited to the amounts of deicer disclosed in Stankowiak I. Moreover,
because Gall I addresses the drawbacks pertaining to silicate and phosphate
inhibitors taught by Stankowiak I and teaches using desugared molasses
instead (Gall I, p. 1, ll. 10–12, 25–28), one of ordinary skill in the art would
have had a specific reason to use the desugared molasses of Gall I in the
amounts taught therein as an alternative corrosion inhibitor to those taught
by Stankowiak I.
Accordingly, we are not persuaded that the Examiner erred in
rejecting claims 1, 2, 4, 5, 15, 16, 18, 19, 39, 44, 46, 47, and 49 over the
combination of Stankowiak I and Gall I.
Regarding claims 40–42, 43, and 55, Patent Owner does not set forth
separate arguments for claims 40–42, 43, and 55, but rather relies on the
same arguments set forth above made for claim 15, from which claims 40–
42, 43, and 55 depend. (PO App. Br. 9, 23.) Accordingly, we affirm the
Examiner’s rejection for the same reasons as discussed above.

Claims 1, 2, 73, and 86 over Gall I and Stankowiak I
In rejecting claims 1, 2, 73, and 86 over the combination of Gall I and
Stankowiak I, the Examiner found that Gall I discloses deicers including
desugared molasses in combination with conventional chloride based deicers
or other deicing materials sprayed on the roads, but does not disclose sodium
formate as a known deicer, as recited in claims 73 and 86. (RAN 40.) The
Examiner found that Stankowiak I discloses combining conventional deicing
agents including sodium formate with corrosion inhibitors. (RAN 41.) The
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Examiner concluded that it would have been obvious to form a deicer
composition having improved corrosion resistance comprising a sodium
formate deicer of Stankowiak I and the desugared molasses of Gall I, and
that one of ordinary skill in the art would have been able to select the
optimum or workable concentration range of each component by routine
experimentation. (RAN 41.)
For claims 1 and 2, Patent Owner relies on similar arguments directed
to the amounts of corrosion inhibitor taught by Stankowiak I and Gall I as
discussed above with respect to the rejection of claim 1 over Stankowiak I in
view of Gall I. (PO Appeal Br. 19.) We are not persuaded for the reasons
discussed above.
Regarding claims 73 and 86, Patent Owner contends that the
Examiner does not allege that Gall I or Stankowiak I disclose the
specifically recited weight percentage of sodium formate recited in the
claims (55% by weight). (PO Appeal Br. 19.) In this regard, Patent Owner
contends that Stankowiak I discloses only the alkali metal formate deicer,
and discloses the deicer in amounts that are different from the amounts
recited in the claims. (Id.)
Requester contends that Patent Owner does not consider the
combination of references and that the test for obviousness is not whether
the features of the secondary reference may be bodily incorporated in the
structure of the primary reference. (Req. Resp’t Br. 14.)
We agree with the Examiner that one of ordinary skill in the art, when
formulating a composition including sodium formate and desugared
molasses from the teachings of Stankowiak I and Gall I, respectively, would
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have determined optimal or workable amounts of sodium formate by routine
experimentation, including the amounts recited in the claims. Aller, 220
F.2d at 456. Patent Owner has not directed our attention to persuasive
evidence that the amounts of sodium formate recited in the claims are in any
way critical to achieving a specific result.
Accordingly, we affirm the Examiner’s rejection of claims 1, 2, 73,
and 86.

Claims 50, 117, 118, 123–125 as obvious over Daly; Claim 104 as
obvious over Daly and Hicks;17 Claims 62, 63, and 105 as obvious over
Daly and Hull18

Because, as discussed above, the Federal Circuit has held that Daly is
nonanalogous art (Natural Alternatives, 659 Fed.Appx. at 614) and because,
inconsistent with the court’s ruling, the Examiner relies on the teachings of
Daly as key evidence in rejecting each of these claims as obvious, we
reverse the Examiner’s rejections.

Claims 8–10, 22, 24, 26–35, 38, and 45 as obvious over Stankowiak I,
Gall I, and Janke

Regarding claims 8–10 and 22–24, Patent Owner contends that
because these claims depend from claims 1 and 15, which are only rejected
in combination with Daly, this rejection should be reversed because Daly is
non-analogous art. (PO App. Br. 9.)

17 US Patent 2,884,039 issued April 28, 1959.
18 US Patent 5,364,463 issued November 15, 1994.
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As pointed out above with respect to claims 1 and 15 and further by
the Examiner, claims 1, 8–10, 15, and 22–24 do not define the properties of
the desugared molasses for which Daly was relied upon, and thus Daly is not
necessary to the rejection of claims 1, 8–10, 15, and 22–24. (RAN 69.)
Accordingly, Patent Owner’s arguments are not persuasive.
Regarding claims 26 and 45, Patent Owner contends that Stankowiak
I in combination with Gall I does not render obvious the amount of
desugared molasses in the claims (at least 20% by weight and between 40
and 70 % by weight, respectively) for similar reasons that we found
unpersuasive above with respect to claims 1–5, 12, 15–19, 39, 44, 46–50,
106–115, in particular, arguing that the amount of deicing component
disclosed by Stankowiak I cannot be varied within wide limits, but is limited
to a narrow and high range that would preclude the amount of desugared
molasses recited in the claims. (PO App. Br. 9.) As discussed above, this
argument is not persuasive because it does not address the teaching in Gall I
of an amount of desugared molasses (1–50%) that renders the recited range
obvious.
Accordingly, we affirm the Examiner’s rejection of claims 8–10, 22–
24, 26–35, 38, and 45 as obvious over Stankowiak I, Gall I, and Janke.

Claims 26–35, 38, and 45 as obvious over Gall I and Janke
Similar to the discussion in detail above, the Examiner found that
Gall I discloses desugared molasses in amounts of 1–50% by volume of the
composition. (RAN 19.) The Examiner found that Janke discloses sand,
river gravel, cinders, sawdust, or other skid-reducing grit are used with
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deicing compositions and applied to surfaces to keep free of snow and ice.
(RAN 20.) The Examiner concluded that it would have been obvious to
pretreat an outdoor surface taught by Janke with a deicing composition as
taught by Gall I in order to prevent the adherence of snow and ice to the
surfaces. (RAN 20.)
Even though the Examiner does not so state in the rejection, Patent
Owner contends that, because Gall I discloses the desugared molasses is
present in 1–50% by volume, the Examiner must be relying on calculations
based on the density disclosed in Daly to arrive at the amounts recited in
rejected claims of at least 20% by weight desugared molasses. (PO Appeal
Br. 13.) According to Patent Owner this would be error because Daly is
non-analogous art. (Id.) For claims 29 and 30, Patent Owner argues that the
dry weight percentages of 5–80% and 10–60%, respectively, are not
addressed in the rejection, and thus, a prima facie case of obviousness is
lacking.
We are not persuaded by Patent Owner’s arguments for the same
reasons as discussed above with respect to the rejection of claims 1–5, 8–10,
12, 15–19, 22–24, 39, 44, 46, and 47 including Gall I. That is, Patent Owner
has not directed our attention to sufficient evidence rebutting the Examiner’s
reasonable finding that the weight percentages recited in the claims overlap
or encompass the volume percentages recited in the prior art. Moreover, as
discussed above, it is not inventive to determine optimal or workable
amounts by routine experimentation, and Patent Owner has not shown that
the particular amounts recited in the claims are critical to obtaining
unexpectedly beneficial results. Aller, 220 F.2d at 456.
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As to the alleged reliance on Daly for converting the amounts from
volumetric to weight percentages, there is no indication that the Examiner
relied on Daly for such a conversion. As discussed above, Patent Owner had
not argued or provided persuasive evidence identifying reversible error in
the Examiner’s finding that the volume percentage range disclosed in Gall I
would, when converted to weight percentages, overlap or encompass the
weight percentages recited in the claims.

Claims 1–5, 12, 15–19, 39, 44, 46–55, and 116 over Public Works,19
Gall I, Stankowiak I, Daly

Patent Owner contends, inter alia, that Daly is nonanalogous art, and
that Public Works describes only a concentrated fermentation byproduct,
which is not the desugared molasses of the claimed invention. (PO Appeal
Br. 14–15.)
We agree with Patent Owner, because, as discussed above, the Federal
Circuit determined that Daly is nonanalogous art. Natural Alternatives, 659
Fed.Appx. at 614. Moreover, the Federal Circuit determined that Public
Works does not disclose the desugared molasses products in the ’330 Patent,
which the ’684 Patent claims to be a divisional, and thus contains the same
disclosure. Natural Alternatives, 659 Fed.Appx. at 615. The Examiner’s
failure to take account of the court’s rulings constitutes reversible error.
Accordingly, we reverse the rejection of claims 1–5, 12, 15–19, 39,
44, 46–55, and 116 over Public Works, Gall I, Stankowiak I, and Daly.

19 Winter is Hell, Public Works, July 1997, pgs. 53-54.
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Claim 50 as obvious over Gall I; Claims 51–53 as obvious over Gall I
and Neal;20 claim 54 as obvious over Gall I and Janke

Regarding claim 50, the Examiner found that Gall I discloses a
deicing composition comprising desugared molasses and a chloride-based
deicer or other deicing materials. (RAN 15.) The Examiner found that
Gall I does not specifically disclose a composition comprising at least 20%
by weight of desugared molasses and 5% to 80% by dry weight calcium
chloride or magnesium chloride, but that it would have been obvious to
follow the teachings of Gall I to arrive at the claimed composition. (Id.)
Patent Owner argues that the obviousness rejection is conclusory and
not sufficiently supported. (PO Appeal Br. 10.) Even though the Examiner
does not so state in the rejection, Patent Owner also contends that the
Examiner improperly relies on the density of desugared beet molasses
disclosed in Daly in order to convert the volumetric compositional
disclosures in Gall I to the compositions based on weight recited in the
claims, because Daly is non-analogous art. (PO Appeal Br. 10–11.)
Accordingly, the issue with respect to this rejection is whether the
Examiner erred in concluding that the disclosure in Gall I renders claim 50
obvious.
We are not persuaded by Patent Owner’s argument that the Examiner
did not set forth a sufficient rationale in rejecting claim 50. The Examiner
set forth explicit findings as to where in Gall I, the general conditions with
respect to the amount and solid content of desugared molasses, as well as the
identity and concentrations of the second deicing component are disclosed.

20 US Patent 4,668,416 issued May 26, 1987.
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(RAN 15, Gall I, page 3, ll. 7–8, 13–16, 18–19, 21–22, and page 3, l. 30 –
page 4, l. 2.) Patent Owner does not dispute that the amounts disclosed in
Gall I do not overlap or encompass the amounts recited in claim 50. Patent
Owner also does not direct our attention to persuasive evidence that the
amounts set forth in claim 50 are critical to the composition.
Therefore, we are not persuaded by Patent Owner’s arguments for
similar reasons as discussed above with respect to claims 26–35, 38, and 45.
Thus, we agree with the Examiner that claim 50 would have been
obvious to one of ordinary skill in the art.
Patent Owner relies on the same arguments for the rejections of
claims 51–54. (PO Appeal Br. 14.) Accordingly, we affirm the Examiner’s
rejections of claims 51–54 for the same reasons as claim 50.

Claims 64 and 66 as obvious over Gall I, Koefod,21 and Stankowiak I;
Claims 65 and 68 as obvious over Gall I, Koefod, Stankowiak I, and
Stankowiak II22

Claim 64 recites that the desugared molasses comprises desugared
citrus molasses.
The Examiner found that Gall I did not specifically disclose a
desugared citrus molasses, but found that Koefod discloses deicers having
improved corrosion properties including those with molasses solids, where
the molasses includes citrus molasses. (RAN 35.) The Examiner
acknowledged that Koefod teaches molasses and not desugared molasses,

21 US Patent 6,398,979 B2 issued June 4, 2002.
22 US Patent 5,238,592 issued August 24, 1993.
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but determined that it would have been obvious to use desugared citrus
molasses because one of ordinary skill in the art would have understood that
desugared molasses also contains molasses solids and would have been
expected to improve the corrosion resistance of a deicer composition as also
taught by Gall I, especially in view of the teaching in Gall I that the
desugared molasses is not limited to that from any single source. (RAN 35–
36.)
In addition to the arguments addressed above with respect to Gall I,
Patent Owner argues that Koefod does not disclose that the molasses solids
are present in the deicing composition as a corrosion inhibitor, but rather that
the total deicing compound has improved corrosion resistance through the
addition of a corrosion inhibitor. (PO Appeal. Br. 16–17.) Furthermore,
Patent Owner argues that Koefed does not disclose desugared molasses such
that the Examiner’s rationale for combining Koefod with Gall I and
Stankowiak I lacks rational underpinnings. (PO Appeal. Br. 17.) Regarding
claim 66, similar to Patent Owner’s argument addressed above with respect
to claims 73 and 86, Patent Owner contends that the Examiner does not
make any reference to the required percentage of sodium formate recited in
the claims. (PO Appeal Br. 17–18.)
Regarding the rejection of claims 65 and 68, which depend from claim
64, Patent Owner relies on the arguments made for claim 64. (PO App. Br.
18.)
We do not agree with Patent Owner that Koefod does not attribute any
of the corrosion resistance to the presence of the molasses. Indeed Koefod
states expressly that “[e]ven a relatively small dose of molasses can have a
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dramatic improvement in corrosion resistance.” (Col. 4, ll. 1–4; RAN 74.)
In addition, the Examiner readily acknowledges the difference between the
molasses disclosed in Koefod and desugared molasses in Gall I. We have
not been directed to sufficient evidence that the difference between
desugared molasses and molasses would have dissuaded one of ordinary
skill in the art from looking to the citrus molasses as the source of the
desugared molasses as disclosed in Gall I because Gall I expressly is “not
limited to de-sugared sugar molasses from any single source.” (Gall I, p. 4,
ll. 16–19.) Accordingly, Patent Owner’s arguments are not persuasive.

Claim 67 as obvious over Gall I, Koefod, Stankowiak I, and Zaid23
Claim 67 depends from claim 64, and recites that the second deicing
component comprises 50% by weight calcium magnesium acetate. The
Examiner found that the combination of Gall I, Koefod, and Stankowiak I
discloses the deicing composition of claim 67 with the exception of calcium
magnesium acetate. (RAN 38.) The Examiner found that Zaid discloses
mixed salt deicers including sodium chloride and calcium magnesium
acetate, where the use of calcium magnesium acetate is thought to reduce
corrosive effects. (RAN 38.) The Examiner concluded that it would have
been obvious to have formulated a deicing composition according to Gall I,
Koefod, and Stankowiak I having improved corrosion resistance by
including the calcium magnesium acetate deicer as taught by Zaid, and that
it would have been obvious to have selected the optimum or workable

23 US Patent 5,595,679 issued January 21, 1997.
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concentration range of each component including the claimed concentration
by routine experimentation. (RAN 38–39.)
In addition to the arguments set forth above for claim 64, Patent
Owner contends that Zaid fails to disclose the percent by weight of calcium
magnesium acetate recited in claim 67. (PO App. Br. 18.) Patent Owner
also argues that it would not have been obvious to have combined citrus
molasses and calcium magnesium acetate to improve corrosion resistance in
the absence of some element that causes corrosion. (Id.)
Requester contends that Koefod discloses a 50/50 mixture of
molasses/liquid bittern and Gall I discloses that desugared molasses is used
with chloride deicing solutions either by itself or mixed with other corrosion
inhibitors, such that the combination of Gall I, Koefod, and Zaid discloses
the deicing composition recited in claim 67. (Req. Resp’t Br. 13–14.)
Patent Owner’s contentions are not persuasive. Stankowiak I, Gall I,
and Zaid evince that it was known in the art to add corrosion inhibitors to
conventional deicing components that are corrosive but have good deicing
properties. Thus, the desugared molasses component and the calcium
magnesium acetate component are added as corrosion inhibitors to a
conventional deicing component that may have a corrosive effect.

Claims 69 and 70 as obvious over Gall I, Koefod, Stankowiak I,
Smith,24 and Longworth
Claims 69 and 70 depend from claim 64, and further recite that the
second deicing component comprises 70% by weight ethylene glycol and

24 US 5,064,551 issued November 12, 1991.
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70% by weight diethylene glycol, respectively. Patent Owner contends that
the Examiner does not address the proportional percent by weight
requirement of the second component recited in claims 69 and 70. (PO
Appeal. Br. 18–19.)
However, the Examiner found that it would have been obvious to have
selected the optimum workable concentration range of each component by
routine experimentation. (RAN 39–40.) Patent Owner has not explained
why such ranges would not include the percentages by weight recited in the
claims, nor has Patent Owner explained how such weight percentages are
critical to the invention. Accordingly, we are not persuaded by Patent
Owner’s argument.

Claims 72, 75, 85, and 88 as obvious over Gall I, Stankowiak I, and
Stankowiak II; Claims 74 and 87 as obvious over Gall I, Stankowiak I, and
Zaid; Claims 76, 77, 89, and 90 as obvious over Gall I, Stankowiak I, Smith,
and Longworth

For the claims subject to these rejections, Patent Owner relies on
similar arguments already addressed above with respect to the rejection over
Gall I and Stankowiak I, and with respect to the claims reciting particular
percentages, similar argument as addressed above with respect to claims 73
and 86. (PO Appeal Br. 19–20.) We find Patent Owner’s arguments to be
unpersuasive for similar reasons discussed above.

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Claim 92 as obvious over Gall I, Murray,25 and Koefod
Claim 92 recites a deicing composition comprising at least 20% by
weight desugared citrus molasses and a second deicing component
comprising 45% by weight calcium chloride. Patent Owner contends that
the rejection does not account for the percentage by weight desugared
molasses for similar reasons as addressed above with respect to Gall I. (PO
Appeal. Br. 20–21.) In addition, Patent Owner relies on similar arguments
as addressed above with respect to Koefod. (PO Appeal. Br. 21.)
We are not persuaded by Patent Owner’s arguments for similar
reasons as expressed above.

Claims 78 and 80 as obvious over Gall I, Koefod, and Stankowiak I;
Claims 79 and 82 as obvious over Gall I, Stankowiak I, Koefod, and
Stankowiak II; Claims 97, 101, and 102 as obvious over Gall I, Neal, and
Koefod; Claim 81 as obvious over Gall I, Stankowiak I, Koefod, and Zaid

For claims 97 and 101, which recite deicing compositions comprising
at least 20% by weight of desugared citrus molasses and a second deicing
component comprising 40% by weight magnesium chloride or 42% by
weight potassium chloride, respectively, Patent Owner relies on similar
arguments above regarding the disclosure of Gall I and Koefod.
We are not persuaded for the reasons expressed above with respect to
the rejection of claim 50 over Gall I, and the rejection of claims 64 and 66
over Gall I, Koefod, and Stankowiak I.

25 US Patent 5,296,167 issued March 22, 1994.
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Regarding claim 80, which recites the presence of 55% by weight
sodium formate, we are not persuaded by Patent Owner’s arguments (PO
Appeal Br. 23) for the same reasons as discussed above with respect to
claims 73 and 86.
Regarding claims 78 and 102, which are directed to “desugared
sorghum molasses,” Patent Owner contends that Koefod discloses grain
molasses but does not disclose desugared grain molasses and that at best
Koefod discloses a genus of grain molasses, of which there are at least 20
different types of grains including sorghum. (PO Appeal Br. 21, 23.)
Requester contends that the there is evidence of record that shows
grain molasses is understood by one of ordinary skill in the art to mean grain
sorghum, the sorghum molasses of the claims. (Req. Resp’t Br. 16–17;
citing “MOLASSES-GENERAL CONSIDERATIONS,” by Dr. Leo V.
Curtin, RAN 6.)
We agree with Requester, that in view of the description in the RAN
(RAN 6) and the prior art cited therein, one of ordinary skill in the art would
have immediately understood sorghum molasses as a grain molasses referred
to in Koefod. Further, we have not been directed to sufficient evidence that
the difference between desugared molasses and molasses would have
dissuaded one of ordinary skill in the art from looking to the sorghum
molasses as the source of the desugared molasses as disclosed in Gall I
because Gall I expressly is “not limited to de-sugared sugar molasses from
any single source.” (Gall I, p. 4, ll. 16–19.)
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For claims 79, 81, and 82, Patent Owner relies on the dependency of
these claims from claim 78. (PO Appeal Br. 23–24.) Accordingly, we are
not persuaded by Patent Owner’s arguments as discussed above.

Claims 83 and 84 as obvious over Gall I, Stankowiak I, Koefod,
Smith, and Longworth

Claims 83 and 84 depend from claim 78. Patent Owner relies on the
arguments made for claim 78, or in the alternative on similar arguments as
made for claims 69 and 70. (PO Appeal Br. 24.) We are not persuaded for
the reasons addressed above.

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Claims 95 and 99 as obvious over Koefod and Gall I
Patent Owner relies on similar arguments for these claims as relied
upon for claims 64 and 102 addressed above. (PO Appeal Br. 25.) We are
not persuaded for the reasons set forth above.

Claim 103 as obvious over Gall I, Public Works and Greenwald26
Claim 103 recites a “composition for deicing or inhibiting the
formation of ice and snow on surfaces comprising a mixture of desugared
sugar cane molasses and rock salt and including 8 gallons of desugared
sugar cane molasses per ton of rock salt.”
The Examiner found that Gall I discloses desugared cane molasses as
a corrosion inhibitor in deicing materials with sodium chloride deicers.
(RAN 52.) The Examiner found that Gall I does not disclose that desugared
cane molasses is used in an amount of 8 gallons per ton of rock salt. The
Examiner found that Greenwald discloses examples of ice melting agents
including rock salt (sodium chloride). (RAN 53.) The Examiner found that
Public Works discloses use of ICE BAN, a product that can be described as
molasses or other base stock with much of the sugar removed, which is used
in combination with a salt deicer to reduce the corrosive effect of the salt.
(RAN 52.) The Examiner found that Public Works discloses a range for the
use of desugared molasses with rock salt from 100/0% (i.e., all desugared
molasses and no rock salt) to 32 gallons of desugared molasses per ton of
rock salt, and that it would have been obvious to have selected optimal or
workable ranges of the desugared cane molasses and rock salt, including the

26 US Patent 4,597,884 issued July 1, 1986.
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amount of 8 gallons desugared molasses per ton of rock salt, by routine
experimentation. (RAN 53.)
Patent Owner contends that the Examiner’s reliance on Public Works
is misplaced, because it discloses a fermentation product, which is distinct
from the desugared molasses as claimed. (PO Appeal. Br. 22.) Patent
Owner contends also that the range of amounts of ICE BAN used in
combination with rock salt disclosed by Public Works (32 gal/ton) is greater
than the claimed 8 gallons per ton of rock salt, and in particular that the
rejection does not accurately assess the teachings of Public Works. (PO
Appeal Br. 22.) In particular, Patent Owner argues that Public Works
discloses ICE BAN without salt is irrelevant to the combination of ICE BAN
with salt, and that the single value of road salt with ICE BAN, which is
400% greater than the claimed value, cannot be relied upon to disclose the
required percentage of rock salt. (PO Appeal. Br. 22.)
Accordingly, the issue with respect to this rejection is whether the
amount of desugared sugar cane molasses per ton of rock salt would have
been obvious in view of the prior art of record.
We agree with the Examiner that the amount of desugared sugar cane
molasses would have been obvious to one of ordinary skill in the art.
Initially, we observe that the Examiner does not rely on Public Works for the
particular type of desugared molasses disclosed therein. Thus, despite the
reference in Public Works to fermentation products disparaged in the ’684
Patent, Public Works provides general information as to the amounts of
molasses-based corrosion inhibitors added to deicing materials. Public
Works discloses using eight gallons of Ice Ban (DSBM) per ton of a salt
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mix. (Public Works 54.) We acknowledge that the salt mix is 25% salt in
that example, however, Public Works also discloses several other examples
of using eight gallons of Ice Ban per ton of mix. (Public Works 53-54.)
Thus, Public Works does discloses that 8 gallons per ton is a general rule for
achieving corrosion inhibiting properties using a desugared molasses. As
such, one of ordinary skill in the art would have been directed to similar
amounts when formulating similar deicing compositions with molasses
based corrosion inhibitors to achieve a corrosion inhibiting effect.
In addition, we agree with the Examiner that it is not inventive to
determined optimal or workable amounts by routine experimentation, and
Patent Owner does not direct our attention to evidence indicating that the
particular amount as claimed is critical to achieving a specific result. Aller,
220 F.2d at 456. Accordingly, we affirm the Examiner’s rejection of claim
103.

Claims 121 and 122 as obvious over Gall I, Stankowiak II, and
Crofoot27

The Examiner found that Gall I discloses the desugared molasses as
claimed, which is useful as a corrosion inhibitor in chloride-based deicers or
other deicing materials. (RAN 63.) The Examiner found that Gall I fails to
disclose the particular salts recited in the claims or that desugared molasses
is derived from the Steffen process. (Id.) The Examiner relied on
Stankowiak II for the particular salts and Crofoot for teaching a process of

27 US Patent 1,581,179 issued April 20, 1926.
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making desugared molasses that is derived from the Steffen process and may
be used as the desugared molasses disclosed in Gall I. (RAN 64.)
Regarding claim 121, Patent Owner relies on the arguments with
respect to the percentages disclosed in Gall I, which we have found
unpersuasive as discussed above. (PO Appeal Br. 25.)
In addition, Patent Owner argues that the Examiner’s combination
lacks the appropriate rational underpinning to support an obviousness
rejection because Crofoot discloses using desugared beet molasses as an
antifreeze agent, but Gall I discloses desugared beet molasses as a corrosion
inhibitor, such that in combination, there would be no second component as
claimed. (PO Appeal Br. 25.)
We agree with the Examiner with respect to claim 121, because
Crofoot is not necessary to reject claim 121. Crofoot is relied upon for
production process of desugared molasses, which is not recited in claim 121.
However, with respect to claim 122, we agree with Patent Owner that
the Examiner’s combination lacks rational underpinnings with respect to
Crofoot. That is, as Patent Owner points out, Crofoot discloses desugared
molasses as an antifreeze agent for “automobile radiators and for similar
purposes.” (Crofoot, ll. 9–11.) Thus, similar to the disclosure in Daly, which
discloses using the molasses as a tire ballast because it does not freeze at low
temperatures and which the Federal Circuit held was non-analogous art, we
have not been directed to sufficient explanation as to how such a disclosure
is either in the same field of endeavor as Patent Owner or how an antifreeze
composition for use in engines would have been reasonably pertinent to the
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problem with which the inventors of the ’684 Patent were concerned of
treating roads with a deicing composition.
Accordingly, we affirm the Examiner’s rejection of claim 121.
However, we reverse the Examiner’s rejection of claim 122.

Summary of Claims Subject to Patent Owner’s Appeal
As a result of the above discussion, the claims rejected by the
Examiner and affirmed are: claims 1–5, 8–10, 12, 15–19, 22–24, 26–35,
38–47, 49–55, 62, 64–70, 72–90, 92, 95, 97, 99, 101–103, and 121.
The Examiner’s decision to reject claims 48, 58, 106–119, 122–125 is
reversed.
Below we address Requester’s challenges to the non-adoption of
certain rejections involving claims 58 and 117–119, which stood rejected on
appeal but which now have been reversed. In addition, we address
Requester’s challenges to the non-adoption of certain rejections involving
claims 56, 57, 59–63, 120, and 126–131, which were not the subject of
Patent Owner’s appeal.

REQUESTER’S APPEAL
A listing of the specific rejections argued by Requester may be found
in Requester’s Appeal Brief. (Req. Appeal Br. 19.) As discussed above, we
limit our discussion of Requester’s Appeal to rejections of those claims that
are not subject to rejections that have been affirmed as discussed above with
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respect to Patent Owner’s Appeal. See Tempo Lighting, Inc. v. Tivoli, LLC,
742 F.3d 973, 979 (Fed. Cir. 2014.)
Claims 56–58, 60, and 61 as anticipated by Zdzislaw28
Claims 56–58, 60, and 61 depend from claims 1, 15, 46, 26, and 54,
which independent claims recite a deicing composition comprising
desugared molasses and a second deicing component. Requester does not
argue any particular limitations of claims 56–58, 60, and 61, which recite
particular second deicing components, but rather contends that the Examiner
erred by not adopting the rejection of claims 1, 15, 46, 26, and 54, because
the Examiner erred in determining that Zdzislaw fails to disclose a
desugared molasses. (Req. Appeal Br. 22–23; RAN 27.)
The Examiner’s reasoning for not adopting the rejection is consistent
with the reasoning of the Federal Circuit, which held that the molasses
disclosed in Zdzislaw, which “contains approximately 50% of sugar” is not
the desugared beet molasses disclosed in the ’330 Patent. Natural
Alternatives, 659 Fed.Appx. at 612–13. Accordingly, we affirm the
Examiner’s decision not to adopt the proposed rejection.
Requester argues that “the molasses of Zdzislaw comes from the same
process and performs the same function as the desugared molasses of the
’684 patent; therefore, it would be obvious to use in place of the desugared
molasses of the '684 patent.” (Req. Appeal Br. 23–24.) In view of the
above discussion of the molasses disclosed in Zdzislaw, Requester’s position
is not persuasive.

28 PL 164018 B1, published Nov. 7, 1990.
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Claim 59 as obvious over Zdzislaw and Gall I
Claim 59 depends from claim 50, and further recites specific second
deicing components. Requester points out that claim 50 stands rejected over
Gall I alone, and argues that it would have been obvious “to substitute the
desugared molasses of Zdzislaw for the desugared molasses of Gall I patent
since both are a waste or byproduct of sugar beet production, and both are
use in anti-icing/de-icing compositions.” (Req. Appeal Br. 24.) Requester
refers to Comments submitted on September 16, 2011 (THIRD-PARTY
REQUESTER’S COMMENTS ON ACTION CLOSING PROSECUTION
AND PATENT OWNER’S COMMENTS filed September 16, 2011,
“September 2011 Comments”) for the proposed rejection. (Id.) In the
September 2011 Comments, Requester contends that Zdzislaw discloses a
combination of desugared molasses and ethylene glycol, but Zdzislaw does
not disclose the solids range recited in the claims. (September 2011
Comments 34–35.) Requester contends that it would have been obvious to
use the desugared molasses of Gall I for the desugared molasses of Zdzislaw
combined with ethylene glycol, because Zdzislaw and Gall I both disclose a
desugared molasses from sugar beets, and as such it would just be a simple
substitution of one element for another. (September 2011 Comments 35.)
The Examiner did not adopt the rejection because the Examiner found
that Zdzislaw does not disclose desugared molasses and Gall I does not
provide a reason to substitute desugared molasses in a composition as taught
by Zdzislaw. (RAN 27–28.)
We agree with the Examiner. As discussed above, the Federal Circuit
held that Zdzislaw does not disclose “desugared molasses.” As a result,
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Requester’s rationale, which is based on the premise that Zdzislaw discloses
desugared molasses does not rest on sufficient rational underpinnings.

Claims 62 and 63 as obvious over Public Works
Claim 62 recites a deicing composition comprising greater than 25%
by weight desugared molasses and a second deicing component selected
from the group consisting of the sodium, calcium, magnesium, and
potassium salts of chloride. Claim 63 recites that the second deicing
component is sodium chloride.
The Examiner did not adopt the rejection because “the teachings of
Public Works do not encompass the subject matter (i.e., desugared molasses
concentration) of claims 62 and 63.” (RAN 28–29.)
Requester contends that the Examiner erred in not adopting the
rejection of claims 62 and 63 over Public Works because Public Works
discloses the general conditions of the claims, a combination of desugared
molasses and road salt, such that the determination of the exact amounts
required in the claim would have been obvious to one of ordinary skill in the
art. (Req. Appeal Br. 25–26.)
The Federal Circuit held that Public Works discloses “fermentation
and distillation” desugared molasses product, which is a different product
then the desugared molasses disclosed in the ’684 Patent. Natural
Alternatives, 659 Fed.Appx. at 615. Thus, Public Works does not disclose a
desugared molasses as recited in the claims. Accordingly, we affirm the
Examiner’s decision not to adopt the proposed rejection.

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Claims 119 and 120 as obvious over Gall I, Stankowiak II, and
Crofoot

Requester argues that Gall I discloses a corrosion inhibited deicing
compound including desugared molasses and chloride salt, but does not
recite a specific concentration of 70% by weight for desugared molasses and
30% for the second deicing component. (Req. Appeal Br. 33.) Requester
contends that the differences in concentrations between Gall I (1–50%
desugared molasses) and claim 119 would have been obvious, because it is
not inventive to discover the optimum or workable ranges by routine
experimentation as further evidenced by statements in the ’684 Patent (col.
6, ll. 47–51) suggesting that the exact amounts are not critical. (Req. Appeal
Br. 33–34.) Requester relies on Stankowiak II for the disclosure of
magnesium chloride recited in claim 120. (Req. Appeal Br. 34–35.) Here,
we observe that Requester does not appear to rely on Crofoot for the
rejection of claims 119 and 120. Indeed, as originally proposed it appears
that Crofoot was included by Requester for the limitations of claim 122,
which we addressed above. (See “THIRD PART[Y] REQUESTER’S
RESPONSE TO PATENT OWNER’S AMENDMENT AND RESPONSE”
filed November 13, 2014.)
The Examiner stated: “Because the cited prior art does not teach a
method of deicing an icy surface with a deicing composition comprising
70% by weight of desugared molasses having 60% to 65% suspended solids,
the proposed rejection of claims 119 and 120 is not adopted.” (RAN 62.)
Patent Owner contends that the ’684 Patent discloses particular results
created by amounts of the deicing composition as claimed. (PO Resp’t Br.
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12, Patent Owner cite incomplete.) Patent Owner argues that contrary to
Requester’s position that it is cost effective to ship aqueous compositions in
a concentrated form, it would be more expensive to ship concentrated
desugared molasses, because it would require the user to procure more
desugared molasses. (Id.)
We agree with Requester. The Examiner’s reasoning for not adopting
the rejection does not adequately explain why varying the amounts of Gall I
would not have been obvious. Contrary to Patent Owner’s position, the ’684
Patent’s general reference to “very good results” obtained with the amount
of desugared beet molasses does not attribute the results obtained to the
particular amounts of desugared molasses chosen. (’684 Patent, col. 7, ll.
34–54.) In this regard, the ’684 Patent discloses that the compositions may
be applied in any amount effective for its intended purpose and may be
determined by one of ordinary skill in the art. (’684 Patent col. 6, ll. 47–55.)
In other words, as discussed above, it is not inventive to determined optimal
or workable amounts by routine experimentation, and Patent Owner has not
shown that the particular amounts recited in claim 119 are critical to
obtaining unexpectedly beneficial results. Aller, 220 F.2d at 456.
Accordingly, we reverse the Examiner’s decision not to reject claims
119 and 120 over the combination of Gall I and Stankowiak II. Therefore,
pursuant to 37 C.F.R. § 41.77(b), we enter a new ground of rejection of
claims 119 and 120 only as obvious over the combination of Gall I and
Stankowiak II.

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Claims 126–128 as obvious over Zdzislaw, Stankowiak II, Crofoot,
and Blake; Claims 129–131 as obvious over Zdzislaw, Stankowiak II,
Crofoot, and Blake

For both of these rejections, Requester contends, inter alia, that “it
would be obvious to substitute the desugared molasses of Zdzislaw with the
desugared molasses from Crofoot, since Crofoot discloses that a Steffen
process is used to manufacture desugared sugar beet molasses.” (Req.
Appeal Br. 36, 38.)
The Examiner did not adopt these rejections because Zdzislaw does
not disclose a desugared molasses. (RAN 64.) Patent Owner agrees because
Requester’s reasoning lacks a rational underpinning as it is based on
Zdzislaw disclosing desugared molasses, where Zdzislaw discloses
molasses. (PO Resp’t Brief 13.)
We agree with the Examiner. That is, the rationale proposed by
Requester relies on the proposition that Zdzislaw discloses desugared
molasses. However, as held by the Federal Circuit, Zdzislaw does not
disclose desugared molasses, but rather discloses “making molasses in the
traditional sugared form.” Natural Alternatives, 659 Fed.Appx. at 613.
Accordingly, we affirm the Examiner’s decision not to adopt the proposed
rejections.

DECISION
The Examiner’s decision to reject claims 1–5, 8–10, 12, 15–19, 22–
24, 26–35, 38–47, 49–55, 62, 64–70, 72–90, 92, 95, 97, 99, 101–103, and
121 is affirmed.
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The Examiner’s decision to reject claims 40–42 under 35 U.S.C.
§ 314; claims 40–42 under 35 U.S.C. § 112, fourth paragraph; and claims
39, 44–47, 58, and 119, first paragraph are reversed.
In addition, the Examiner’s decision to reject claims 48, 106–118,
122–125 over the prior art is reversed.
The Examiner’s decision not to reject claims 56–63 and 126–131 is
affirmed.
However the Examiner’s decision not to reject claims 119 and 120 is
reversed and a new ground of rejection is entered only for claims 119 and
120.

TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that “[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.” Correspondingly, no portion of the decision is final for
purposes of judicial review. A requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board. For further guidance on
new grounds of rejection, see 37 C.F.R. § 41.77(b)–(g). The decision may
become final after it has returned to the Board. 37 C.F.R. § 41.77(f).
Section 41.77(b) of Title 37 of the Code of Federal Regulations also
provides that the Owner, WITHIN ONE MONTH FROM THE DATE OF
THE DECISION, must exercise one of the following two options with
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respect to the new grounds of rejection to avoid termination of the appeal as
to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner.
Such a response must be either an amendment of the claims
so rejected or new evidence relating to the claims so
rejected, or both.

(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the
same record . . . .

Any request to reopen prosecution before the examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.”
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the Owner seek to substitute
claims, there is a presumption that only one substitute claim would be
needed to replace a cancelled claim.
A requester may file comments in reply to Owner response. 37 C.F.R.
§ 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be limited
in scope to the issues raised by the Board’s opinion reflecting its decision to
reject the claims and the Owner's response under paragraph 37 C.F.R.
§ 41.77(b)(1). A newly proposed rejection is not permitted as a matter of
right. A newly proposed rejection may be appropriate if it is presented to
address an amendment and/or new evidence properly submitted by the
Owner, and is presented with a brief explanation as to why the newly
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proposed rejection is now necessary and why it could not have been
presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all Owner responses and requester comments, is required.
The Examiner, after the Board’s entry of Owner response and
Requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board’s rejection is maintained or has been overcome.
The proceeding will then be returned to the Board together with any
comments and reply submitted by the Owner and/or Requester under 37
C.F.R. § 41.77(e) for reconsideration and issuance of a new decision by the
Board as provided by 37 C.F.R. § 41.77(f).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.77(g).

AFFIRMED-IN-PART; 37 C.F.R. § 41.77(b)

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PATENT OWNER:
KING & SCHICKLI, PLLC
800 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503

THIRD-PARTY REQUESTER:
LAURA A. CRUZ
CHRISTENSEN, O’CONNOR, JOHNSON, KINDNESS PLLC
1201 THIRD AVE., SUITE 3600
SEATTLE, WA 98101-3029

lb