Ex Parte Haas et al

Board of Patent Appeals and Interferences

Jul 26, 2007

10669978 (B.P.A.I. Jul. 26, 2007)

This opinion is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte THOMAS HAAS, CLAUDIA BRASSE,
GUIDO STOCHNIOL, JURGEN GLENNEBERG
and WOLFGANG WOLL
____________________

Appeal 2007-2985
Application 10/669,978
Technology Center 1700
____________________

Decided: 26 July 2007
____________________

Before: FRED E. McKELVEY, Senior Administrative Patent Judge,
and ADRIENE LEPIANE HANLON and MICHAEL P. TIERNEY,
Administrative Patent Judges.

McKELVEY, Senior Administrative Patent Judge.

DECISION ON APPEAL

A. Statement of the case 1
Appellants Thomas Haas, Claudia Brasse, Guido Stochniol, Jurgen 2
Glenneberg and Wolfgang Woll (hereafter "Haas") seek review under 3
35 U.S.C. § 134(a) of a final rejection of claims 1-15. 4
Claims 16-18 also appear in the application on appeal and have been 5
objected to as depending from a rejected claim. 6

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Claims 19-27 also appear in the application on appeal and have been 1
allowed. 2
We have jurisdiction under 35 U.S.C. § 6(b). 3
The application on appeal was filed on 24 September 2003. 4
Haas claims benefit of an earlier filing date based on provisional 5
application 60/414,327, filed 30 September 2002. 6
The real party in interest is Degussa AG (Düsseldorf, Germany). 7
The Examiner rejected claims 1-15 under 35 U.S.C. § 103(a) as being 8
unpatentable over Tsao. 9
10
Name Patent Number Issue Date 11
Tsao US 4,889,689 26 Dec. 1989 12
13
Tsao is prior under 35 U.S.C. § 102(b). 14
15
B. Record on appeal 16
In deciding this appeal, we have considered only the following 17
documents: 18
1. Specification, including original claims (there are no 19
drawings). 20
2. Office action entered 14 September 2005. 21
3. Amendment received 16 December 2005. 22
4. Final Rejection entered 30 January 2006. 23
5. Amendment filed 13 April 2006. 24
6. Office action entered 25 April 2006. 25

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7. Appeal Brief dated 22 September 2006 (numerous appeal 1
briefs have been filed to apparently overcome various informalities; the only 2
appeal brief we have considered is the Appeal Brief filed 22 September 3
2006.) 4
8. The Examiner’s Answer entered 17 November 2006. 5
9. Reply Brief dated 17 January 2007. 6
10. The Tsao patent relied upon by the Examiner. 7
11. PTO bibliographic data sheet for the application on appeal 8
12. Claims 1-15 on appeal as set out in the Amendment filed 9
13 April 2006. 10
11
C. Issues 12
The principal issue on appeal is whether Haas has sustained its burden 13
of showing that the Examiner erred in rejecting the claims on appeal as 14
being unpatentable under 35 U.S.C. § 103(a) over Tsao. 15
16
D. Findings of fact 17
The following findings of fact are believed to be supported by a 18
preponderance of the evidence. To the extent that a finding of fact is a 19
conclusion of law, it may be treated as such. Additional findings as 20
necessary may appear in the Discussion portion of the opinion. 21
The invention 22
The invention relates to aqueous hydrogen peroxide solutions 23
(1) characterized by a maximum amount of alkali metals, alkaline earth 24
metals and amines and (2) said to be suitable for epoxidation of olefins. 25
Specification ¶¶ 0002 and 0021. 26

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According to the specification, "the vast majority of hydrogen 1
peroxide is produced by the well-known anthraquinone process." 2
Specification ¶ 0003. 3
Highly purified hydrogen peroxide is known. Specification ¶ 0010. 4
Apparently, highly purified hydrogen peroxide is essentially free of 5
anionic components like phosphates and nitrates that are said to be necessary 6
for the stabilization of hydrogen peroxide solutions. Specification ¶ 0010. 7
Phosphates and nitrates are added to commercially available aqueous 8
hydrogen peroxide solutions as stabilizers to reduce hazardous 9
decomposition of hydrogen peroxide. Specification ¶ 0016. 10
The Haas invention is an aqueous hydrogen peroxide solution 11
comprising (1) less that 50 wppm (based on the amount of hydrogen 12
peroxide) of an alkali metal or an alkaline earth metal, (2) less that 50 wppm 13
of an amine having a pkB of less than 4.5 and (3) at least 100 wppm of an 14
anion or compound that can dissociate to form anions. Specification ¶ 0022. 15
Apparently, the alkali metal, alkaline earth metal and the amine have 16
adverse effects in hydrogen peroxide used to epoxidize olefins. 17
Specification ¶ 0025. 18
On the other hand, phosphates or nitrates which are frequently used to 19
stabilize aqueous hydrogen peroxide solution are said to have no or very 20
little effect on the activity and selectivity of a hydrogen peroxide 21
epoxidation catalyst. Specification ¶ 0025. 22
The specification makes clear that the lower the concentration of 23
alkali metals, alkaline earth metals and amines the better. Specification 24
¶¶ 0027 and 0029. 25

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Anions are advantageously present in the hydrogen peroxide solutions 1
of the invention "in the usual stabilizing amounts." Specification ¶ 0035. 2
Claims on appeal 3
Claim 1 as reproduced in the Appeal Brief is not accurate. 4
Accordingly, we turn to the claims as presented in the Amendment 5
filed 13 April 2006. 6
Claim 1 on appeal is representative of the claimed composition. 7
Claim 1 reads: 8
An aqueous hydrogen peroxide solution comprising: 9
i) less than 50 wppm alkali metals, alkaline earth metals 10
or combinations thereof in total, irrespective whether the alkali metals or 11
alkaline earth metals are present in cationic or complex form; 12
ii) less than 50 wppm of amines having a pkB of less 13
than 4.5 or the corresponding protonated compounds in total; and 14
iii) at least 100 wppm anions or compounds that can 15
dissociate to form anions in total, 16
the wppm being based on the weight of hydrogen peroxide. 17
18
Tsao 19
Tsao relates to a hydrogen peroxide solution said to be useful for 20
disinfecting a soft lens. Col. 1:11-12. 21
In order to overcome perceived problems in the field, Tsao describes 22
addition to hydrogen peroxide solutions of particular amines. Col. 2:30-39. 23
Tsao does not describe the method for making the hydrogen peroxide 24
mentioned in the patent. In the words of Haas: "there is no information 25
whatsoever with respect to how to make [the] hydrogen peroxide [described 26

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by Tsao]." Amendment received 16 December 2005, page 10, last 1
paragraph, fourth line. 2
The Tsao invention, while interesting, is not the most relevant 3
information provided by Tsao. 4
Rather, it is Tsao's description of the prior art which surfaces as highly 5
relevant to the claims on appeal. 6
Specifically, we refer to the description by Tsao of drawbacks said 7
to exist in unstabilized hydrogen peroxide solutions. Col. 1:56 through 8
col. 2:7: 9
Hydrogen peroxide in the form of a dilute solution, e.g., about 10
0.5 to 6% by weight in water, is known to be effective for use 11
with contact lenses in order to kill any contaminating 12
microorganisms. 13
One drawback with unstabilized dilute hydrogen 14
peroxide solutions, however, is that without the use of a 15
stabilizer or a combination of stabilizers, the aqueous peroxide 16
solutions characteristically decompose over a period of time.[1] 17
The rate at which such dilute hydrogen peroxide solutions 18
decompose will, of course, be dependent upon such factors as 19
pH and the presence of trace amounts of various metal 20
impurities, such as copper or chromium, which may act to 21
catalytically decompose the same. Moreover, at moderately 22

1 Any observant purchaser of hydrogen peroxide in a brown bottle from a
drug store to be used to cleanse wounds knows that after a certain amount of
time the hydrogen peroxide decomposes and becomes ineffective.

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elevated temperatures the rate of decomposition of such dilute 1
aqueous hydrogen peroxide solutions is greatly accelerated. 2
A large variety of stabilizers have been proposed for use 3
with hydrogen peroxide to deactivate trace catalytic impurities, 4
including stannous salts, ethylene diamine tetraacetic acid and 5
the like. 6
Tsao goes on to state that while stabilizers can be added, for the 7
purpose of the Tsao invention the pH has to be maintained between about 5 8
and about 7—because the solution may come into contact with the eye. 9
Col. 2:33. 10
Additional findings appear in the Discussion section of this opinion. 11
12
E. Principles of law 13
A claimed invention is not patentable if the subject matter of the 14
claimed invention would have been obvious to a person having ordinary skill 15
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 16
82 USPQ2d 1385 (2007); Graham v. John Deere Co. of Kansas City, 383 17
U.S. 1 (1966). 18
Facts relevant to a determination of obviousness include (1) the scope 19
and content of the prior art, (2) any differences between the claimed 20
invention and the prior art, (3) the level of skill in the art and (4) any 21
relevant objective evidence of obviousness or non-obviousness. KSR, 22
82 USPQ2d at 1389, Graham, 383 U.S. at 17-18. 23
A person having ordinary skill in the art uses known elements and 24
process steps for their intended purpose. Anderson's-Black Rock, Inc. v. 25

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Pavement Salvage Co., 396 U.S. 57, 90 S.Ct. 305 (1969) (radiant-heat 1
burner used for its intended purpose in combination with a spreader and a 2
tamper and screed); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 96 S.Ct. 3
1532, 1537 (1976) (the involved patent simply arranges old elements with 4
each performing the same function it had been known to perform); Dunbar 5
v. Myers, 4 Otto (94 U.S.) 187, 195 (1876) (ordinary mechanics know how 6
to use bolts, rivets and screws and it is obvious that any one knowing how to 7
use such devices would know how to arrange a deflecting plate at one side 8
of a circular saw which had such a device properly arranged on the other 9
side). 10
To render an invention obvious, the prior art does not have to address 11
the same problem addressed by a patent applicant. KSR, 127 S.Ct. at 12
1741-42, 82 USPQ2d at 1397; In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 13
(Fed. Cir. 1990) (en banc); In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 14
1309, 1311 (Fed. Cir. 1996) ("[a]lthough the motivation to combine here 15
differs from that of the applicant, the motivation in the prior art to combine 16
the references does not have to be identical to that of the applicant to 17
establish obviousness." citing In re Dillon). 18
19
F. Discussion 20
Scope of claim 1 21
We begin our obviousness analysis with a determination of the scope 22
of claim 1. 23
During prosecution of a patent application, claims are given their 24
broadest reasonable interpretation consistent with the specification. In re 25
Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) 26

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(unpatented claims given broadest reasonable construction consistent with 1
specification). 2
The claims require that the aqueous hydrogen peroxide solution have 3
less than 50 wppm of alkali metal, alkaline earth metals or amines with a pkB 4
less than 4.5. 5
Nothing in the specification requires that an alkali metal, an alkaline 6
earth metal or an amine with a pkB less than 4.5 be present in the claimed 7
composition. 8
Accordingly, the claim requires only aqueous hydrogen peroxide and 9
an anion, e.g., a stabilizer. 10
The claim is broad enough to read on the following composition: an 11
aqueous hydrogen peroxide solution comprising water, hydrogen peroxide 12
and at least 100 wppm [based on the hydrogen peroxide] of anions. 13
14
Applicability of Tsao 15
Tsao differs, if at all, in that the unstabilized dilute hydrogen peroxide 16
described by Tsao arguably does not have anions, e.g., a stabilizer. 17
However, Tsao turns right around and says one skilled in the art 18
would use a stabilizer. 19
The Tsao revelations are totally consistent with the representations by 20
Haas in the Haas specification that stabilizers are known to be used in 21
aqueous hydrogen peroxide solutions to prevent decomposition. 22
Specification ¶¶ 0025, 0035 and 0036. 23
On this record it is abundantly clear that one skilled in the art would 24
know (1) the need for a stabilizer in an aqueous solution of hydrogen 25

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peroxide and (2) how to add a proper amount of stabilizer depending on the 1
circumstances. 2
The fact that Haas is interested in an epoxidation catalyst and Tsao is 3
concerned with solutions to clean lenses does not help Haas's case. The fact 4
is that Tsao renders obvious "the objective reach" of claim 1. KSR, 127 5
S.Ct. at 1742, 82 USPQ2d at 1397. Stated in other terms, claim 1 is so 6
broad that it includes subject matter which would have been obvious even if 7
an argument might be made that it also covers subject matter which might 8
not have been obvious. In re Muchmore, 433 F.2d 824, 167 USPQ 681 9
(CCPA 1970) (claims which include obvious subject matter and non-obvious 10
subject matter are not patentable under § 103). 11
Claims 2-8 12
Claims 2-8 stand or fall with claim 1 because like claim 1 they do not 13
require the presence of an alkali metal, an alkaline earth metal or an amine. 14
Claim 8, while identifying amines, does not require that they be 15
present—only that if they are present then the amine is one of the amines set 16
out in claim 8. 17
Claims 9-15 18
These claims require the presence of a base having a pkB of at 19
least 4.5. 20
The base can be ammonia. See claims 14-15. 21
Tsao is said by Haas not to describe the use of ammonia. 22
On this particular record, it does not matter whether Haas describes 23
the use of ammonia. 24

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In the Examiner's Answer (admittedly for the first time during 1
prosecution of the application), the Examiner in response to an argument in 2
the Appeal Brief (also made for the first time during prosecution) found: 3
[1] it would have been within the skill of one of ordinary skill 4
in the art to determine a suitable amount of the bases with a pkB of at 5
least 4.5 in order to achieve a pH of about 7.5 or less and 6
[2] since ammonia is a well-known base, it would have been 7
obvious to employ such a well-known base in the composition of Tsao 8
to provide a pH of about 7.5 or less. 9
Examiner's Answer 7. 10
Haas does not challenge the Examiner's findings in the Reply Brief. 11
On this record we therefore have the Examiner's uncontested findings 12
and we have no independent reason to question those findings. 13
The fact that Haas might have argued that the findings are not 14
supported by the evidence is of no avail when—as here—a challenge is not 15
timely presented. 16
Based on the unchallenged findings made by the Examiner, we have 17
little difficulty holding that it would have been obvious to add ammonia to a 18
stabilized aqueous solution of hydrogen peroxide to obtain a proper pH 19
consistent with the objectives of Tsao. 20
Arguments by Haas 21
We have considered all arguments presented in the Appeal Brief and 22
Reply Brief. 23
Haas argues that the Examiner could not have found that the aqueous 24
solution of Tsao "inherently" does not have an alkali metal, an alkaline earth 25

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metal or an amine with a pkB of less that 4.5. This line of argument is highly 1
peculiar in this case because Tsao does not say that its aqueous solutions 2
have an alkali metal, an alkaline earth metal or an amine with a pkB of less 3
that 4.5. So it is not clear to us why Haas insists that the Examiner had to 4
prove that Tsao "inherently" would not have an alkali metal, an alkaline 5
earth metal or an amine with a pkB of less that 4.5. 6
Another argument which appears throughout the prosecution is that 7
"commercial" hydrogen peroxide solutions have high amounts of alkali 8
metal ions and/or amines. But, the claims are not limited to "commercial" 9
hydrogen peroxide solutions. Nor do the claims require that the hydrogen 10
peroxide be made by the anthraquinone process. Haas bottoms the 11
"commercial" and "made by anthraquinone process" argument on limitations 12
which do not appear in the claims. Hence, we find these arguments to be 13
entitled to little, if any, weight. 14
In the Examiner's Answer, the Examiner found (for the first time 15
during the prosecution) that certain compounds were present in the Tsao 16
compositions in amounts called for by the claims. Examiner's Answer 4. 17
Haas in the Reply Brief presents some calculations hoping to establish that 18
the Examiner is wrong. There was no Supplemental Examiner's Answer so 19
we were basically left with no views from the Examiner on the Haas 20
calculations. However, given our rationale for affirmance, which differs 21
from the rationale used by the Examiner to reject, we need not consider 22
whether the Haas calculations answer the Examiner's findings. The portion 23
of Tsao upon which we rely does not describe the presence of alkali metals 24
or alkaline earth metals. 25

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On page 3 of the Appeal Brief, Haas says "[c]laims 2 to 15 stand or 1
fall together and are not argued separately in the following arguments." But, 2
the "following arguments" proceed to discuss limitations in each of claims 2 3
to 15. Which is it? Do the claims stand or fall together or do they not? The 4
Examiner was obviously perplexed by the dilemma presented by Haas and 5
decided that Haas was "implicitly arguing these claims." Examiner's 6
Answer 3. In this case, we have addressed each claim. However, applicants 7
should not leave the Examiner or the Board to guess what they are arguing. 8
We would further note that in the arguments dealing with some of the 9
dependent claims, all Haas does is point out a difference: "Claim 9 differs 10
from Claim 1 by specifying …" and "[t]he cited reference does not mention 11
amines of any kind." The mere fact that a claim differs from a reference 12
does not establish non-obviousness. Dann v. Johnston, 425 U.S. 219, 230, 13
189 USPQ 257, 261 (1976). 14
We have considered Haas' remaining arguments and find none that 15
warrant reversal of the Examiner’s rejection. Cf. Hartman v. Nicholson, 16
483 F.3d 1311, 1315 (Fed. Cir. 2007). 17
G. Conclusions of law 18
Haas has not sustained its burden on appeal of showing that the 19
Examiner erred in rejecting the claims on appeal as being unpatentable under 20
35 U.S.C. § 103(a) over Tsao. 21
On the record before us, Haas is not entitled to a patent containing 22
claims 1-15. 23
24

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H. Decision 1
ORDERED that the decision of the Examiner rejecting 2
claims 1-15 over Tsao is affirmed. 3
FURTHER ORDERED that since our claim interpretation has 4
not previously been discussed on the record and because we have applied 5
Tsao in a manner different from the Examiner, our affirmance is designated 6
as a new rejection. 37 C.F.R. § 41.50(b) (2006). 7
FURTHER ORDERED that our decision is not a final agency 8
action. 9
FURTHER ORDERED that within two (2) months from the 10
date of our decision appellant may further prosecute the application on 11
appeal by exercising one of the two following options: 12
1. Request that prosecution be reopened by submitting 13
an amendment or evidence or both. 37 C.F.R. § 41.50(b)(1) (2006). 14
2. Request rehearing on the record presently before the 15
Board. 37 C.F.R. § 41.50(b)(2) (2006). 16
FURTHER ORDERED that no time period for taking any 17
subsequent action in connection with this appeal may be extended under 18
37 C.F.R. § 1.136(a)(1)(iv) (2006). 19

AFFIRMED
(37 C.F.R. § 41.50(b) (2006)

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