Ex Parte Sakurai et al

Board of Patent Appeals and Interferences

Aug 17, 2009

10494267 (B.P.A.I. Aug. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JIRO SAKURAI and TAKESHI SUGIMOTO
____________

Appeal 2009-002797
Application 10/494,267
Technology Center 1700
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Decided: August 17, 2009
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Before BRADLEY R. GARRIS, CHUNG K. PAK, and PETER F. KRATZ,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 and 5 through 7, all of the claims pending in the above-
identified application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The subject matter on appeal is directed to “a cleaning agent of sulfamic
acid-hydroxycarboxylic acid system, which has excellent detergency and the
capability of preventing metal elution and hydrogen embrittlement of metal
Appeal 2009-002797
Application 10/494,267

when cleaning metal products with adhered calcium compounds.” (Spec. 1,
ll. 6-9). Details of the appealed subject matter are recited in representative
claim 1 reproduced below1:
1. A cleaning agent for metal products comprising sulfamic acid,
citric acid and malic acid, wherein a compounding ratio (weight ratio) of
sulfamic acid : citric acid : malic acid is (80 to 95) : (10 to 2.5): (10 to 2.5).

Claim 1, by virtue of the transitional term “comprising,” does not preclude
the presence of unclaimed ingredients, including an unclaimed amount of
water. Indeed, the Specification describes adding “a required amount of
water” to a mixture of sulfamic, citric, and malic acids to obtain “a 10%
aqueous solution thereof” (Spec. 5, ll. 3-6). Moreover, the Specification
describes the claimed sulfamic acid as “N-alkyl and N-allyl derivatives of
amidosulfonic acid or the like” (Spec. 3, ll. 27-29).

The Examiner relied upon the following prior art references as
evidence of unpatentability (Ans. 2-3)2:
Saitou JP 04-136100 May 11, 1992
Lin CN 1101950A Apr. 26, 1995
Takeshi JP 2000-063890 Feb. 29, 2000
The Examiner rejected the claims on appeal as follows:
1. Claims 1, and 5 through 7 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Lin and Saitou; and
2. Claims 1 and 5 under 35 U.S.C. § 103(a) as unpatentable over
the combined disclosures of Lin and Takeshi.

1 Pursuant to the requirements of 37 C.F.R. § 41.37(c)(1)(vii) (2007), we
limit our discussion to claim 1.

2 Our reference to the published Chinese and Japanese patent applications is
to the corresponding English translations of record.
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Appellants traverse the Examiner’s § 103(a) rejections, arguing that
one of ordinary skill in the art would not have had any reason to employ a
metal cleaning agent comprising sulfamic acid, citric acid and malic acid in
a compounding ratio of sulfamic acid:citric acid:malic acid of (80 to 95): (10
to 2.5):(10 to 2.5) (App. Br. 5-13 and Reply Br. 1-2). Appellants also
contend that the showing in Tables 1 through 4 at pages 5 through 9 of the
Specification evinces that the claimed invention imparts unexpected results,
thereby rebutting any prima facie obviousness established by the Examiner
(App. Br. 8-10 and Reply Br. 3-4).
ISSUES AND CONCLUSIONS
The dispositive questions raised in this case are: (1) Have Appellants
identified reversible error in the Examiner’s determination that one of
ordinary skill in the art would have been led to employ a metal cleaning
agent comprising sulfamic acid, citric acid and malic acid in a compounding
ratio (weight ratio) of sulfamic acid:citric acid:malic acid within (80 to 95):
(10 to 2.5):(10 to 2.5) and (2) if not, have Appellants demonstrated that the
showing in Tables 1 through 4 at pages 5 through 9 of the Specification is
sufficient to rebut any prima facie case of obviousness established by the
Examiner? On this record, we answer these questions in the negative.

RELEVANT FINDINGS OF FACT
1. Lin teaches a cleaning agent for steel, aluminum, and copper
materials, comprising 94 to 99.4 wt% of amino sulfonic acid
corresponding to the claimed sulfamic acid, 0 to 5.1 wt% citric acid,
0.3 to 0.6 wt% of a corrosion inhibitor and 0.05 to 0.1 wt% of a
surfactant (unnumbered p.3).
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2. Lin teaches that its amino sulfonic acid component “reacts vigorously
with calcium and magnesium in the scale, generating soluble sulfonic
acid salts” (id.).
3. Lin teaches that “[t]he citric acid included in the said composition can
increase the cleaner’s capability to remove iron oxide rust and scale”
(id.)
4. Lin teaches that about 5 to 10% (by weight) water can be included in
its cleaning agent (unnumbered p. 4)
5. According to Lin, “[t]he purpose of this invention is to offer an
effective cleaner of sulfonic acid type that would have a strong
detergency, low corrosion rate, low toxicity and be moderately
economical” (unnumbered p. 3).
6. Lin does not mention using malic acid in its cleaning agent. (See
generally Lin.)
7. Saitou teaches a liquid detergent containing 2 to 14 wt% of an organic
acid (with the remainder being mostly water) for satisfactorily
removing iron rust adhered strongly on surfaces of trains and
automobiles (pp. 3 and 5-8).
8. Saitou teaches (p. 5, ll. 1-5) that:
The “organic acid” exhibits an action of dissolving
and removing iron-rust stains adhered one the
vehicle outer panels together with oil, soot, etc., or
iron rust penetrating in the paint coating layer.
Specifically, as shown in the second claim of this
invention, the organic acid is one, two or more
compounds suitably selected from oxalic acid,
citric acid, sulfamic acid, malic acid, tartaric acid
and gluconic acid.

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9. Takeshi teaches a detergent for removing sediments of excreta of an
organism, especially calcium compounds, from artificial teeth and
drain pipes ( pp. 1-3).
10. Takeshi claims a cleaning agent for drain pipes “consisting of a malic
acid, a citric acid, amidosulfonic acid, and a binder” (emphasis added)
(p. 5, para 0029).
11. Takeshi exemplifies a cleaning agent containing 5 g or 10 g of
amidosulfonic acid, 10 or 100 g of malic acid, and 10 or 50g of citric
acid in reducing calcium phosphate solid spheres placed in
SUPPITON for dentistries (p. 7, paras. 0038 and 0043).
12. Takeshi teaches that hydroxy acids, such as malic acid and citric acid,
can be used for the same function (p. 6, para. 0033).
13. Takeshi teaches that the amounts of acids and binder employed are
dependent on the objective to be accomplished and can be provided in
the form of a solution without using a binder (p. 6, para. 0036).
14. The Specification evinces Tables 1 through 4 which provide sample
compositions containing particular proportions of any two or more of
sulfamic acid, citric acid and malic acid, which are mixed with “a
required amount of water” to form “a 10% aqueous solution thereof”
(Spec. 5-9).
15. The Specification discusses testing these sample compositions in
terms of calcium carbonate deposit removal, and preventing metal
elution and hydrogen embrittlement (id).
16. Examples 1 through 3 and 5-7 in Table 1 through 4 relied upon by
Appellants refer to aqueous cleaning solutions containing unidentified
sulfamic acid, citric acid and malic acid in the compounding
sulfamic/citric/malic weight ratios of either 90/5/5, 85/7.5/7.5,
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85/15/0, 80/10/10, 70/15/15, and 60/20/20 and a specific proportion of
water (id).
17. Comparative Examples 1, 3 and 4 in Tables 1 through 4 show
aqueous cleaning solutions containing unidentified sulfamic acid,
citric acid and/or malic acid in the compounding sulfamic/citric/malic
weight ratios of either 100/0/0, 20/40/40, and 40/60/0 and a specific
proportion of water (id).
18. Appellants do not compare the claimed invention with the
embodiment described in the closest prior art, i.e., the cleaning
composition containing, inter alia, 94 wt% of a specific sulfamic acid
and 5.1% of citric acid taught by Lin.
19. One of ordinary skill in the art would reasonably expect via
extrapolation of data from Example 3 and Comparative Example 1 in
the Specification that the cleaning composition taught by Lin imparts
the same or substantially the same results as many of the cleaning
agents encompassed by the claims on appeal.
20. Appellants do not demonstrate that the showing in the Examples
relied upon is reasonably commensurate in scope with the degree of
protection sought by claim 1 on appeal. See generally the Appeal
Brief and Reply Brief.
21. Appellants do not show that the same results can be obtained in terms
of the effectiveness of a detergency and prevention of metal elution
and hydrogen embrittlement once the acids are significantly diluted
with water. See generally the Appeal Brief and Reply Brief.

PRINCIPLES OF LAW
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Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any. Graham
v. John Deere Co., 383 U.S. 1, 17-18 (1966).
As stated in KSR Int’l Co., v. Teleflex, Inc., 550 U.S. 398, 418 (2007):
“[A]nalysis [of whether the subject matter of a claim
would have been prima facie obvious] need not seek out precise
teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.”

KSR also instructs:
[W]hen a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’
and yields no more than one would expect from such an
arrangement, the combination is obvious. [KSR Int'l Co. v.
Teleflex Inc., 550 U.S. at 418 (quoting Sakraida v. Ag Pro, Inc.,
425 U.S. 273, 282 (1976).]

All of the disclosures in a prior art reference, including non-preferred
embodiments, “must be evaluated for what they fairly teach one of ordinary
skill in the art.” In re Boe, 355 F.2d 961, 965 (CCPA 1966); See also Merck
& Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)(quoting In
re Lamberti, 545 F.2d 747, 750 (CCPA 1976)(“[T]he fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.”); In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982)(A prior
art reference’s disclosure is not limited to its examples.); See also In re
Hoeschele, 406 F.2d 1403, 1406-407 (CCPA1969) (“[I]t is proper to take
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into account not only specific teachings of the references but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom . . . .”).
A showing of unexpected results may be sufficient to overcome a
prima facie case of obviousness. In re Dillon, 919 F.2d 688, 692-93 (Fed.
Cir. 1990) (internal citations omitted). However, the burden of analyzing
and explaining data to support nonobviousness rests with Appellants. In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appellants must show that the
showing relied upon actually demonstrates unexpected results relative to the
closest prior art, In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir.
1991) and is commensurate in scope with the degree of protection sought by
a claim, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens,
622 F.2d 1029, 1035 (CCPA 1980).
ANALYSES
As indicated supra, Lin teaches the importance of employing a metal
cleaning agent containing, inter alia, 94 to 99.4 wt % of amino sulfonic acid
(sulfamic acid) and 5.1 wt. % of citric acid. Lin, like Appellants, teaches
that water can be added to its cleaning agent to form a 5 to 10 wt% water
solution of the cleaning agent. Lin teaches that its amino sulfonic acid is
primarily used to remove calcium and magnesium deposits and its citric acid
is used to remove iron rust and scale. Lin teaches that this cleaner of
sulfonic acid type, like those exemplified in Appellants’ Specification, is
effective in providing a strong detergency (e.g., a high descaling rate), a low
corrosion rate, and a low toxicity.
Lin does not mention that malic acid can be included in its cleaning
agent. However, Saitou teaches a liquid cleaning agent containing 2 to 14
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Application 10/494,267
wt% of an organic acid (with the remainder being mostly water) for
satisfactorily removing iron rust adhered strongly on surfaces of trains and
automobiles. Saitou then goes onto explain (p. 5, ll. 1-5) that:
The “organic acid” exhibits an action of dissolving
and removing iron-rust stains adhered on the
vehicle outer panels together with oil, soot, etc., or
iron rust penetrating in the paint coating layer.
Specifically, as shown in the second claim of this
invention, the organic acid is one, two or more
compounds suitably selected from oxalic acid,
citric acid, sulfamic acid, succinic acid, malic acid,
tartaric acid and gluconic acid.

In other words, Saitou teaches that malic acid, like citric acid, is useful for
removing iron rust even when it is used in conjunction with any proportions
of sulfamic acid and citric acid.
Similar to the teachings of Saitou, Takeshi teaches a cleaning agent
consisting of malic acid, citric acid, amidosulfonic acid (sulfamic acid), and
a binder for removing calcium deposits in drain pipes. Although Takeshi
exemplifies a cleaning agent containing amidosulfonic acid, malic acid and
citric acid in a compounding ratio different from those claimed, it is not
limited to such exemplified embodiments. Takeshi teaches that the amounts
of acids and binder employed are dependent on the objective to be
accomplished and can be provided in the form of a solution without using a
binder. Takeshi also teaches that malic acid and citric acid, which are
hydroxy acids having the same functions, can be used together with sulfamic
acid.
Given the above teachings, we determine that one of ordinary skill in
the art would have been led to employ a metal cleaning agent having a high
concentration (e.g., 94 to 99.4 wt % ) of amino sulfonic acid (sulfamic acid)
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and 5.1 wt. % of citric acid or functionally equivalent malic acid, or
mixtures thereof (inclusive of the claimed sulfamic/citric/malic ratio of
95/2.5/2.5), with a reasonable expectation of successfully forming a metal
cleaning detergent having the advantageous properties of a high detergency,
a low corrosion rate, and a low toxicity. As indicated supra, Saitou and
Takeshi individually teach that the citric acid used by Lin and malic acid are
useful for the same function, e.g., dissolving iron rust, and/or can be used in
appropriate amounts together with amidosulfonic acid (sulfamic acid) to
effectuate any objective, including that taught by Lin.
Appellants refer to certain Examples in Tables 1 through 4 at pages 5
through 9 of the Specification to show that the claimed subject matter
imparts unexpected results. However, Appellants have not carried their
burden of showing unexpected results.
First, Appellants do not show unexpected results relative the closest
prior art, i.e. Lin, which teaches obtaining some of the superior properties
(e.g., a high detergency and a low corrosion rate) discussed in the
Specification via employing a cleaning composition containing a high
concentration of amino sulfonic acid (sulfamic acid). In fact, from Example
3 and Comparative Example 1 in Tables 1 through 4 at pages 5 through 9 of
the Specification, one of ordinary skill in the art can adduce that Lin’s
cleaning composition would impart the same or substantially the same
superior results as many of the cleaning compositions embraced by claim 1
on appeal.
Second, Appellants also do not demonstrate that the showing in the
Examples relied upon is commensurate in scope with the degree of
protection sought by the claims on appeal. While the showing is limited to a
specific cleaning composition containing a required specific amount of
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water and a specific sulfamic acid/citric acid/malic acid compounding
weight ratio with an unidentified specific sulfamic acid, the claims on appeal
as represented by claim 1 are not so limited. Appellants do not show and/or
adequately explain that diluting the acids with a significant amount of water
and/or employing other types of sulfamic acid, for example, do not affect the
alleged unexpected properties of a cleaning agent.
Thus, based on the record, including due consideration of Appellants’
arguments and evidence, we determine that the preponderance of evidence
weighs most heavily in favor of obviousness within the meaning of 35
U.S.C. § 103(a).
DECISION
In view of the foregoing, the decision of the Examiner is affirmed.

AFFIRMED

tc

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