Ex Parte Sakurai et alDownload PDFBoard of Patent Appeals and InterferencesAug 17, 200910494267 (B.P.A.I. Aug. 17, 2009) Copy Citation 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 ____________ Decided: August 17, 2009 ____________ 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. 2 Appeal 2009-002797 Application 10/494,267 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). 3 Appeal 2009-002797 Application 10/494,267 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. 4 Appeal 2009-002797 Application 10/494,267 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, 5 Appeal 2009-002797 Application 10/494,267 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 6 Appeal 2009-002797 Application 10/494,267 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 7 Appeal 2009-002797 Application 10/494,267 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 8 Appeal 2009-002797 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) 9 Appeal 2009-002797 Application 10/494,267 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 10 Appeal 2009-002797 Application 10/494,267 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 CHENG LAW GROUP, PLLC 1100 17TH STREET, N.W. SUITE 503 WASHINGTON, DC 20036 11 Copy with citationCopy as parenthetical citation