Ex Parte Unhoch et al

Patent Trial and Appeal Board

Nov 9, 2016

13623626 (P.T.A.B. Nov. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/623,626 09/20/2012 Michael J. Unhoch
12596 7590 11/14/2016
LUCAS & MERCANTI, LLP
30 BROAD STREET
21st FLOOR
NEW YORK, NY 10004
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
419A-103296-US 1017
EXAMINER
MATOS NEGRON, TAINADELMAR
ART UNIT PAPER NUMBER
1621
NOTIFICATION DATE DELIVERY MODE
11/14/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
info@lmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. UNHOCH,
NICOLE WISE, and DEREK FRANCIS PARISH
Appeal2015-004123
Application 13/623,626
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving a water treatment
composition. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
Statement of the Case
Background
"Chlorine releasing compounds have been used in a wide variety of
applications as a sanitizer or disinfectant ... In some applications,
particularly swimming pools and spas, it is desirable to have chlorine to
1 Appellants identify the Real Party in Interest as Arch Chemicals, Inc. (see
Br. 1).
Appeal2015-004123
Application 13/623,626
slowly be released into the water" (Spec. i-f 6). "It would be advantageous if
the static dissolution rate could be controlled in order to prevent both high
chlorine level and low pH resulting from continued dissolution of the tablet"
(Spec. i-f 8).
The Specification teaches that "forming a blend of a particulate
polyfluorinated polymer and a particulate halogen-releasing compound, and
forming a unitary structure from the blend, will provide a unitary structure
having a controlled dissolution rate, thus allowing the unitary structure of
the blend to last longer and need to be replaced less often" (Spec. i-f 27).
The Claims
Claims 1-26 are on appeal. 2 Claim 1 is representative and reads as
follows:
1. A water treatment composition, comprising:
50- 99.9 wt.% of a particulate halogen-releasing
compound, said halogen-releasing compound comprising a
compound selected from the group consisting of chlorinated
isocyanuric acids, chlorine containing hydantoins, bromine-
containing hydantoins and mixtures thereof; and
0.1- 10 wt.% of particulate fluoropolymer,
wherein all weight percentages are based on the total
weight of said composition.
The Issues
A. The Examiner rejected claims 1, 4, 9, 10, 12, 13, 16, 17, and 20-26
under 35 U.S.C. § 103(a) as obvious over Bridges, 3 Unhoch '208, 4 and
Johnson5 (Final Act. 3---6).
2 We note that while the parties agree that claims 1-26 are rejected (see
Final Act. 12; Br. 2), claims 5 and 6 are not included in the pending
rejections.
2
Appeal2015-004123
Application 13/623,626
B. The Examiner rejected claims 2, 3, 11, 15, 18, and 19 under 35 U.S.C.
§ 103(a) as obvious over Bridges, Unhoch '208, Johnson, and Halley6 (Final
Act. 6-7).
C. The Examiner rejected claims 7, 8, 14, and 18 under 35 U.S.C.
§ 103(a) as obvious over Bridges, Unhoch '208, Johnson, Halley, and
Unhoch '6467 (Final Act. 7-8).
A. 35 USC§ 103(a) over Bridges, Unhoch '208, and Johnson
The Examiner finds Bridges teaches "a composition and the method
for sustaining biocidal activity of chlorinated hydantoin beads" where the
"sources of chloride or bromide can include halohydantoin ... in an amount
of 40% wt." ... and trichloroisocyanurate ... in an amount of 28% wt."
(Final Act. 3). The Examiner further finds that Bridges teaches
"polytetrafluoroethylene [p.9, ln 26] as polyfluoropolymer in an amount of
25-57 % wt." (Id.).
The Examiner acknowledges that Bridges does not "teach the amount
range of halogen-containing hydantoins instantly claimed, or sulfate salts
and their respective amount range" (Id.).
The Examiner relies on Unhoch '208 for an "amount of bromine-
containing hydantoins [that] range from 1-99% by weight" (Final Act. 3--4)
3 Bridges et al., WO 2005/033004 Al, published Apr. 14, 2005 ("Bridges").
4 Unhoch et al., US 2008/0274208 Al, published Nov. 6, 2008 ("Unhoch
'208").
5 Johnson et al., US 5,009,806, issued Apr. 23, 1991 ("Johnson").
6 Halley, J., US 3,753,676, issued Aug. 21, 1973 ("Halley").
7 Unhoch, M., WO 2011/025646 Al, published Mar. 3, 2011 ("Unhoch
'646").
3
Appeal2015-004123
Application 13/623,626
and Johnson for an "amount range of the particulate polytetrafluoroethylene
[that] is from about 0.001-1.0 % weight" (Final Act. 4).
The Examiner finds it obvious "to combine bromine-hydantoins,
chlorine-hydantoins, trichloroisocyanuric acid, polytetrafluoroethylene and
sulfate salts to develop a water treatment composition because Bridges et al.,
Unhoch et al. and Johnson et al. teach that these components can be
included in a water treatment composition" (Final Act. 5).
The issues with respect to this rejection is:
(i) Does the evidence of record support the Examiner's conclusion
that Bridges, Unhoch '208, and Johnson render claim 1 obvious?
(ii) If so, have Appellants presented evidence of secondary
considerations that, when weighed with the evidence of obviousness, is
sufficient to support a conclusion of non-obviousness?
Findings of Fact
1. Bridges teaches "water purification systems, including systems
employing polymers having pendant heterocyclic amine groups, such as
polystyrene having pendant hydantoin and halogenated hydantoin groups"
(Bridges 1 :5-7).
2. Bridges teaches:
[O]ne or more compounds capable of releasing chlorine
and/or bromine at predetermined low concentrations in flowing
or stagnant water that is determined by the design of the article,
including the article's solubility, density, erosion rate, ratio of
volume to surface area, and optionally, the amount and/or type
of binders and tableting aides,
(Bridges 7:3-7).
4
Appeal2015-004123
Application 13/623,626
3. Bridges teaches "halohydantoin, including but not limited to
l,3,dichloro-5,5-dimethylhydantoin 1,3,dibromodimethylhydantoin, 1-
chloro-3-bromo-5,5-dimethylhydantoin or l-bromo-3-chloro-5,5-
dimethylhydantoin" (Bridges 7:24--26).
4. Bridges teaches "chlorinated isocyanurate or a metal salt of a
chlorinated isocyanurate, including but not limited to trichloroisocyanuric
acid, dichloroisocyanuric acid, potassium trichloroisocyanurate, sodium
trichloroisocyanurate, potassium dichloroisocyanurate or sodium
dichloroisocyanurate" (Bridges 7 :27-30).
5. Bridges teaches that "[f]or an article comprising
dichlorodimethylhydantoin, sodium metaphosphate and
polytetrafluoroethylene (TEFLON®7), the ratio of the respective
compounds is about 2:2: 1 ... For an article comprising sodium
trichloroisocyanurate, sodium metaphosphate, and polytetrafluoroethylene
(TEFLON®7), the ratio of the respective compounds is about 2: 1 :4."
(Bridges 9: 19-27). The Examiner calculates the first article comprises 40%
hydantoin and 20% fluoropolymer and the second article comprises 28%
isocyanuric acid and 57% fluoropolymer (see Final Act. 3).
6. Bridges teaches, in Example 4, a "solid, ~-inch diameter, 240
mg compressed tablet (Parr Pellet Press, Parr Instruments Co.) having a
density of 2.388 glee of well mixed powdered dichlorodimethylhydantoin,
sodium metaphosphate, and TEFLON 7 ® (DuPont) at a ratio of 2:2:1 by
weight" (Bridges 16: 17-20).
5
Appeal2015-004123
Application 13/623,626
7. Bridges teaches "it is to be appreciated that ratios can deviate
from the following depending on the chosen water purification system and
the other variable factors affecting the article" (Bridges 9: 15-17).
8. Unhoch '208 teaches "a composition for reducing the levels of
microorganisms in recreational water systems, comprising: (1) a biocidal
effective amount of dibromonitrilopropionamide (DBNP A); (2) optionally, a
biocidal effective amount of an algaecide" (Unhoch '208 i-f 9).
9. Johnson teaches "a mixture of granular calcium hypochlorite
and finely divided polyfluorinated polymer may be compressed and formed
into an article which, when placed in contact with water, dissolves more
slowly than an article composed of calcium hypochlorite without the
polyfluorinated polymer (or other binders)" (Johnson 1 :68 to 2:5).
10. Table 1 of the Specification is reproduced below:
"Various 30 gram (g) sticks, labeled as Samples A-G were formed using the
process described below containing the composition shown in Table 1"
(Spec. i-fi-1 43--44).
6
Appeal2015-004123
Application 13/623,626
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability." Id. at 417. As noted by the Supreme Court in KSR, "[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton." Id. at 421.
Analysis
Prima Facie Obviousness
Bridges teaches a water treatment composition (FF 1) that comprises
between 28 to 40% of a halogen releasing compound (FF 5) where the
halogen releasing compound may be either a halohydantoin or a chlorinated
isocyanuric acid such as dichloroisocyanuric acid (FF 3--4) and between 20
and 57% of a fluoropolymer including polytetrafluoroethylene (FF 5).
While Bridges does not teach the use of 50% of the halogen releasing
compound or 10% of the fluoropolymer, Bridges does teach that "it is to be
appreciated that ratios can deviate from the following depending on the
chosen water purification system and the other variable factors affecting the
article" (FF 7).
Thus, Bridges recognizes that the amounts and ratios of these two
components are results optimizable variables. "[W]here 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). This rule is limited to cases in
7
Appeal2015-004123
Application 13/623,626
which the optimized variable is a "result-effective variable." In re Applied
Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (citing In re Antonie,
559 F.2d 618, 620 (CCPA 1977)).
Because Bridges teaches to optimize the amounts of halogen-releasing
compound and fluoropolymer so that they are results optimizable variables,
and teaches specific wt.% values for these compounds that are reasonably
close to the end points of the range recited in claim 1, we agree with the
Examiner that "it is well known from the prior art that polyfluoropolymer
are used in recreational water treatment compositions to control the rate of
dissolution, accordingly, adjusting the amount of polyfluoropolymer would
have been obvious to optimize rate of dissolution" (Ans. 11 ). The
Examiner's position is supported by Johnson, who teaches that addition of
polyfluorinated polymer slows the dissolution rate when incorporated into
water treatment compositions (FF 9).
Appellants contend:
[T]he Examiner is required to give patentable weight to the fact
that the claimed compounds are organic compounds. Further,
because patentable weight must be given to the organic nature
of Appellants' claimed compounds, the Examiner cannot
disregard Appellants' arguments of record regarding organic,
halogen-releasing compounds versus inorganic, halogen-
releasing compounds. See Declaration of Michael Unhoch at
paragraphs 7-10.
(Br. 3).
We find this argument unpersuasive because the only reason that the
Examiner relies upon Unhoch '208 is for the amount of bromine-containing
compounds and "sulfate salts such zinc sulfate and copper sulfate ...
8
Appeal2015-004123
Application 13/623,626
because these can be used in as an algaecides" (Ans. 3--4). However,
because we take the position that routine optimization of the ratio and
amounts of the halogen releasing compounds taught by Bridges renders the
particular amounts required by claim 1 obvious as routinely optimized, we
do not rely upon the inorganic halogen releasing compounds ofUnhoch
'208, only upon Unhoch '208's teaching of algaecides directed towards
dependent claims 9 and 10.
Appellants contend that "the most logical direction for the
fluoropolymer of Bridges to be adjusted is upwards because 25% is the
lower limit taught by Bridges. See Declaration at paragraph 6. Merely
because a modification is possible, does this mean that one skilled in the art
will automatically make the modification?" (Br. 4).
We find this argument unpersuasive because "discovery of an
optimum value of a result effective variable ... is ordinarily within the skill
of the art" In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Here, the
ordinary artisan would have had reason to modify the amounts of Bridges
halogen release compound and fluoropolymers because Bridges teaches "it
is to be appreciated that ratios can deviate from the following depending on
the chosen water purification system and the other variable factors affecting
the article" (FF 7). This express suggestion to modify answers Appellants'
question, because it suggests modifying the amounts and ratio of the
components to the person skilled in the art.
Appellants contend that:
[T]he claimed invention in In re Aller was rejected as
obvious over a single reference that disclosed all the elements
of the claimed invention but for the specific claimed
9
Appeal2015-004123
Application 13/623,626
temperatures and concentrations of the sulfuric acid used in the
reaction ... The present facts here are not analogous by any
stretch of the imagination.
(Br. 4--5).
We find this argument unpersuasive because Bridges is a single
reference that teaches a water treatment composition comprising 40% of a
particulate halogen releasing compound within the scope of claim 1 and 20%
of a particulate fluoropolymer within the scope of claim 1 (FF 3---6) and
specifically suggests optimizing the amounts of these two components (FF
7). These facts are substantially similar to those in Aller, and reasonably
support the Examiner's reliance on the optimization rationale in making the
rejection (Aller, 220 F.2d at 456; see Ans. 11).
Secondary Considerations
Appellants contend:
[T]he Examiner stated that i\.ppellants' claims are not
commensurate with composition "E" of example 1 cited by
Appellants as rebuttal evidence in the submitted 132 declaration
... However, Appellants are unaware of any requirement to test
a "myriad of possibilities" in order to demonstrate unexpected
results indicative of non-obviousness.
(Br. 5).
"[O]bjective evidence of non-obviousness must be commensurate in
scope with the claims which the evidence is offered to support". In re
Tiffin, 448 F.2d 791, 792 (CCPA 1971). Harris found that "showing of
unexpected results is not commensurate in scope with the degree of
protection sought by the claimed subject matter because ... the record does
not show that the improved performance would result if the weight-
10
Appeal2015-004123
Application 13/623,626
percentages were varied within the claimed ranges." In re Harris, 409 F.3d
1339, 1344 (Fed. Cir. 2005).
Applying Tiffin and Harris to the instant factual situation, the results
asserted in Tables 1 and 2 of the Specification are all drawn to ranges of the
halogen releasing compound between 93.5% for Sample E to 98.5 % for
Sample I and fluoropolymer from 1 % for sample L to 2 % for sample B.
When compared to the scope of claim 1, which encompasses 50 to 99.9 % of
halogen releasing compound and 0 .1 to 10 % of fluoropolymer, we agree
with the Examiner that the evidence, even if unexpected, is not
commensurate in scope because the record does not show that the improved
performance would result if the ratios or weight-percentages varied within
the ranges of claim 1. Harris, 409 F.3d at 1344.
We note that the facts for commensurate in scope are actually much
worse than Appellants acknowledge, because not only are the ranges not
commensurate in scope, but claim 1 reasonable encompasses any
fluoropolymer and the Specification details a large number of such
fluoropolymers (Spec. i-fi-134--35). In addition, Appellants' results are solely
demonstrated for one PFTE fluoropolymer, despite that the claim generally
recites a "fluoropolymer" (FF 10). This is an additional dimension on which
the scope of claim 1 is not commensurate with the results in the
Specification.
We have also considered the Unhoch Declaration, 8 which states that
"the discovery that small amounts of particulate fluoropolymer can slow the
dissolution rate the claimed organic halogen-releasing compounds was
8 Declaration of Dr. Michael J. Unhoch, dated Mar. 31, 2014.
11
Appeal2015-004123
Application 13/623,626
considered surprising because excipients typically have the opposite effect
with these compounds" (Unhoch Dec. i-f 9).
We do not find the Unhoch Declaration persuasive, however, because
Johnson teaches that a mixture with fluoropolymer "dissolves more slowly
than an article composed of calcium hypochlorite without the
polyfluorinated polymer" (FF 9). Thus, Johnson evidences that the result of
slower dissolution rate that Appellants assert as surprising would have been
expected from the addition of a fluoropolymer, not unexpected. See In re
Skoner, 517 F.2d 947, 950 (CCPA 1975) ("Expected beneficial results are
evidence of obviousness of a claimed invention. Just as unexpected
beneficial results are evidence of unobviousness. ")
Appellants contend:
[T]he Examiner clearly considered just example 1 and nothing
more based on the Examiner's assertion in the Advisory Action
that Appellants' failed to test a "myriad of possibilities" to
show unexpected results commensurate with the claims.
Nothing in the record indicates that the Examiner considered
Appellants additional data in the specification, as filed.
(Br. 6).
We find this argument unpersuasive because the Examiner
specifically addresses all of the data, but concludes that the evidence of
secondary considerations was not persuasive (see Ans. 14). We agree with
the Examiner because, as already discussed, the evidence of record does not
clearly demonstrate that the results are unexpected relative to the teachings
of Johnson, nor does the evidence demonstrate that the results are
commensurate in scope with claim 1.
12
Appeal2015-004123
Application 13/623,626
Conclusion of Law
(i) The evidence of record supports the Examiner's conclusion that
Bridges, Unhoch '208, and Johnson render claim 1 obvious.
(ii) Appellants have not presented evidence of secondary
considerations that, when weighed with the evidence of obviousness, is
sufficient to support a conclusion of non-obviousness.
B. 35 US.C. § 103(a) over Bridges, Unhoch '208, Johnson, and Halley
Appellants do not separately argue this obviousness rejection, instead
relying upon their arguments to overcome Bridges, Unhoch '208, and
Johnson. The Examiner provides sound fact-based reasoning for combining
these references with Halley (see Final Act. 6-7). Having affirmed the
obviousness rejection of claim 1 over Bridges, Unhoch '208, and Johnson
for the reasons given above, we also find that the further combination with
Halley renders the rejected claims obvious for the reasons given by the
Examiner.
C. 35 US.C. § 103(a) over Bridges, Unhoch '208, Johnson, Halley, and
Unhoch '646
Appellants do not separately argue this obviousness rejection, instead
relying upon their arguments to overcome Bridges, Unhoch '208, Johnson,
and Halley. The Examiner provides sound fact-based reasoning for
combining these references with Unhoch '646 (see Final Act. 7-8). Having
affirmed the obviousness rejection of claim 1 over Bridges, Unhoch '208,
Johnson, and Halley for the reasons given above, we also find that the
further combination with Halley renders the rejected claims obvious for the
reasons given by the Examiner.
13
Appeal2015-004123
Application 13/623,626
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Bridges, Unhoch '208, and Johnson. Claims 4, 9,
10, 12, 13, 16, 17, and 20-26 fall with claim 1 pursuant to 37 C.F.R.
§ 41.37(c)(l)(iv).
We affirm the rejection of claims 2, 3, 11, 15, 18, and 19 under 35
U.S.C. § 103(a) as obvious over Bridges, Unhoch '208, Johnson, and Halley.
We affirm the rejection of claims 7, 8, 14, and 18 under 35 U.S.C.
§ 103(a) as obvious over Bridges, Unhoch '208, Johnson, Halley, and
Unhoch '646.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
14