Unhoch, Michael J. et al.

Patent Trials and Appeals Board

Apr 21, 2020

13623626 - (D) (P.T.A.B. Apr. 21, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
13/623,626 09/20/2012 Michael J. Unhoch WATE-058/01US
35211/566
1017
21710 7590 04/21/2020
BROWN RUDNICK LLP
ONE FINANCIAL CENTER
BOSTON, MA 02111
EXAMINER
MATOS NEGRON, TAINA DEL MAR
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
04/21/2020 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):
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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
__________

Appeal 2019-002941
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 appeal1 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,

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the Real Party in Interest as Arch
Chemicals, Inc. (see Appeal Br. 1).
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particularly swimming pools and spas, it is desirable to have chlorine to
slowly be released into the water” (Spec. ¶ 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. ¶ 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. ¶ 27).
The Claims
Claims 1–4, 7–11, 13–15, and 18–28 are on appeal. Claim 1 is
representative and reads as follows:
1. A water treatment composition, comprising:
(i) a unitary structure formed from (i) 50 – 99.9 wt.% of a
particulate halogen-releasing compound, said halogen-releasing
compound comprises an organic compound selected from the
group consisting of chlorinated isocyanuric acids; and
(ii) 0.75 – 2 wt.% of particulate fluoropolymer to slow
the static dissolution rate of the organic halogen-releasing
compound in water,
wherein all weight percentages are based on the total
weight of said composition.

The Issues
A. The Examiner rejected claims 1, 2, 4, 9, 10, 13, and 20–27 under 35
U.S.C. § 103(a) as obvious over Bridges,2 Unhoch ’208,3 and Johnson4
(Final Act. 3–8).

2 Bridges et al., WO 2005/033004 A1, published Apr. 14, 2005 (“Bridges”).
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B. The Examiner rejected claims 3, 11, 15, 19, and 28 under 35 U.S.C.
§ 103(a) as obvious over Bridges, Unhoch ’208, Johnson, and Halley5 (Final
Act. 8–10).
C. The Examiner rejected claims 7, 8, 14, and 18 under 35 U.S.C.
§ 103(a) as obvious over Bridges, Unhoch ’208, Johnson, and Unhoch ’6466
(Final Act. 10–11).

A. 35 U.S.C. § 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. at 3–4).
The Examiner acknowledges that Bridges does not “teach the amount
range of halogen releasing compound trichloroisocyanuric acid instantly
claimed, or sulfate salts and their respective amount range” (Final Act. 4).
The Examiner relies on Unhoch ’208 for “a compound capable of in
situ activation to form an oxidizing agent such as trichloroisocyanuric acid
[0023 and claim 30]. The oxidizing agent can be in an amount of 0.1-50
wt.%” (Final Act. 4).

3 Unhoch et al., US 2008/0274208 A1, published Nov. 6, 2008 (“Unhoch
’208”).
4 Johnson et al., US 5,009,806, issued Apr. 23, 1991 (“Johnson”).
5 Halley, US 3,753,676, issued Aug. 21, 1973.
6 Unhoch, WO 2011/025646 A1, published Mar. 3, 2011 (“Unhoch ’646”).
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The Examiner relies on Johnson to teach the use of “a calcium
hypochlorite article and particulate polyfluorinated polymer [col 1, ln 32-34]
such as polytetrafluoroethylene” (Final Act. 4–5). The Examiner finds
Johnson teaches the “amount range of the particulate polytetrafluoroethylene
is from about 0.001-1.0 % weight” (Final Act. 5). The Examiner finds
Johnson teaches tablets “prepared from polyfluorinated polymer containing
a granular calcium hypochlorite have been found to dissolve more slowly in
water than tablets prepared with granular calcium hypochlorite that does not
contain the such additive [col.6, ln 26-31]” (id.).
The Examiner finds it obvious “to combine trichloroisocyanuric acid,
polytetrafluoroethylene polymer 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 are:
(i) Does a preponderance of the evidence of record support the
Examiner’s conclusion that Bridges, Unhoch ’208, and Johnson render claim
1 obvious?
(ii) If so, has Appellant 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 where
the need for replacing the halogen-depleted charge of HPSH
polymer with new HPSH polymer or taking a water treatment
system off-line for recharging, is avoided by providing a low
concentration of halogen in the water that is to be treated that is
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sufficient to maintain the HPSH polymer at an effective
biocidally active state.
(Bridges 2:29–33).
2. Bridges teaches
one 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).
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 sodium
dichloroisocyanurate, calcium phosphate dibasic, and
polytetrafluoroethylene (TEFLON®7), the ratio of the respective
compounds is about 1:1:2. 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). These result in ratios of 25% to 28% of the
chloroisocyanurate component and of 50% to 57% polytetrafluoroethylene.
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6. Bridges teaches, in Example 6, “a solid, ¼-inch diameter, 200
mg compressed tablet (Parr Pellet Press, Parr Instruments Co.) having a
density of 1.990 g/cc of well mixed powdered sodium dichloroisocyanurate,
calcium phosphate dibasic and TEFLON 7® (DuPont) in a ratio of 1:1:2 by
weight” (Bridges 17:26–29).
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 (DBNPA); (2) optionally, a
biocidal effective amount of an algaecide” (Unhoch ’208 ¶ 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. Johnson teaches the “amount of polyfluoririated polymer
present in the granular calcium hypochlorite (and compressed mixture) may
vary from about 0.001. to about 1.0 weight percent” (Johnson 2:5–8).
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11. 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. ¶ 43).

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 a
unitary structure, a tablet (FF 6). Bridges teaches the tablet may comprise
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between 25 to 28% of a halogen releasing compound where the halogen
releasing compound may be a chlorinated isocyanuric acid such as
dichloroisocyanuric acid (FF 5–6) and between 50 and 57% of a
fluoropolymer including polytetrafluoroethylene (FF 5).
While Bridges does not teach the use of 50% of the halogen releasing
compound or 2% 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).
Johnson teaches that the amount of polymer may range from 0.001 to
about 1.0 percent, thereby suggesting a range that substantially overlaps the
claimed range of 0.75 to 2 wt.% of polymer recited in claim 1 (FF 10).
Thus, Johnson’s teaching of an overlapping polymer range along with
Bridges’ recognition that the amounts and ratios of these two components
are results-optimizable variables, reasonably renders the specific amounts
recited as optimized 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 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 result-effective variables, we
agree with the Examiner that “it is well known from the prior art that
polyfluoropolymer are used in recreational water treatment composition to
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control the rate of dissolution, therefore, adjusting the amount of
polyfluoropolymer would have been obvious to optimize rate of dissolution”
(Ans. 12). 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).
We therefore adopt the Examiner’s findings of fact and reasoning
regarding the scope and content of the prior art (FF 1–10) and agree that the
claims are obvious over Bridges, Unhoch ’208, and Johnson. We address
Appellant’s arguments below.
Appellant contends:
The Examiner should be reversed because the Examiner
continues to interpret the claims as requiring halogenated
hydantoins when they do not. . . . While the previously
appealed claims included hydantoins, currently appealed claims
require chlorinated isocyanuric acids and not hydantoins. This
is not a harmless error.

(Appeal Br. 3). Appellant contends “one skilled in the art would have to
reduce the amount [of] fluoropolymer of Bridges by 50-fold to obtain the
level of Johnson and not the alleged 25-fold reduction when the claims still
required hydantoins” (Appeal Br. 3–4).
We find this argument unpersuasive for two reasons. First, while we
agree that Bridges suggests the use of 50% fluoropolymer when used with
isocyanuric acids (FF 56), Bridges also teaches that the amounts of polymer
are optimizable (FF 2) and Johnson teaches polymer amounts in products
that release into swimming pools may be as low as 0.001 to 1 percent (FF
10). “[D]iscovery 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
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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 addresses Appellant’s concerns, because it suggests modifying the
amounts and ratio of the components to the person skilled in the art. Thus,
the evidence supports the Examiner’s position that the amount of polymer
recited in claim 1 is a routinely optimizable value rendered obvious by the
prior art.
Second, while claim 1 no longer expressly recites the use of
hydantoins, claim 1 does use the open transitional term “comprising” and
therefore does not exclude the presence of hydantoins. See Georgia-Pacific
Corp. v. U.S. Gypsum Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999) (The
transitional term “comprising” is “inclusive or open-ended and does not
exclude additional, unrecited elements or method steps.”) Thus, while the
Examiner need not rely on the hydantoin, it is not error to do so because the
claims do not exclude their presence.
Appellant contends “the Examiner cannot rely on In re Spada to show
that control of static dissolution is inherent in the combination taught by the
cited prior art. The Examiner contends that the compositions of identical
composition can not have mutually exclusive properties” (Appeal Br. 4).
Appellant also contends that, in the context of litigation as in Par Pharm.,
Inc. v. TWI Pharms., Inc., 773 F.3d 1186 (Fed. Cir. 2014), a “party must,
therefore, meet a high standard in order to rely on inherency to establish the
existence of a claim limitation in the prior art in an obviousness analysis--the
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limitation at issue necessarily must be present, or the natural result of the
combination of elements explicitly disclosed by the prior art” (Appeal Br. 5).
Appellant contends that “[i]n four related decisions, the PTAB refused to
institute IPR’s due to the petitioner’s failure to meet the heightened burden
for inherency in the context of obviousness” (id.).
We are not persuaded by Appellant’s arguments based on the legal
analysis or the factual merits. While we agree that inherency requires that
the limitation must necessarily be present, consistent with Par, we do not
agree that the burden on the Examiner is identical to that of either a party in
litigation or in an IPR proceeding. The CCPA, in In re Best, 562 F.2d 1252,
1255 (CCPA 1977), explained that “[w]here, as here, the claimed and prior
art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.” The CCPA explained
that this was appropriate based on “the PTO’s inability to manufacture
products or to obtain and compare prior art products” (id.).
In Ex Parte Grillo-Lopez,7 a recently designated precedential
decision, the PTAB found “the examination context involves a burden-
shifting framework under which the USPTO can shift the burden to the
applicant to come forward with rebuttal evidence or argument to overcome a
prima facie case” (Grillo-Lopez at 2). The PTAB distinguished “the
different legal frameworks and burdens . . . in IPR proceedings and
examination” (id. at 3).

7 See https://www.uspto.gov/sites/default/files/documents/Ex%20parte%
20Grillo-Lopez%20-%202018-006082%20Rhg.pdf.
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Thus, we find that when the Examiner provides prima facie evidence
that the products are necessarily the same and will necessarily yield the same
result, the Examiner has properly shifted the burden to Appellant to
demonstrate that either the product is different because it does not have the
necessary characteristic or otherwise explain why use of the product would
not produce the same result.
As applied to the instant facts, the Examiner finds Bridges “recites a
water treatment composition that is substantially identical to the composition
claimed” (Ans. 12). The Examiner finds the combination of Bridges and
Johnson would result in a composition that would “dissolve more slowly in
water for water treatment” (Final Act. 6). The Examiner does not solely rely
upon identity of components but also relies upon Johnson’s express teaching
that a composition with a polyfluorinated polymer like those in Bridges
“dissolves more slowly than an article . . . without the polyfluorinated
polymer (or other binders)” (FF 9). Thus, the Examiner has reasonably
provided evidence that the composition of Bridges, and compositions
rendered obvious by Bridges and Johnson, would have been expected to
necessarily dissolve more slowly due to the inclusion of polymers such as
PTFE. Appellant has therefore not rebutted the Examiner’s prima facie case.
Secondary Considerations
Appellant does not, in this appeal, rely upon any evidence of
secondary considerations.
Conclusion of Law
(i) A preponderance of the evidence of record supports the Examiner’s
conclusion that Bridges, Unhoch ’208, and Johnson render claim 1 obvious.
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(ii) Appellant has 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 U.S.C. § 103(a) over Bridges, Unhoch ’208, Johnson, and Halley
Appellant does not separately argue this obviousness rejection, instead
relying upon its arguments to overcome Bridges, Unhoch ’208, and Johnson.
The Examiner provides sound fact-based reasoning for combining these
references with Halley (see Final Act. 8–10). Having affirmed the
obviousness rejection of claims 1, 2, 4, 9, 10, 13, and 20–27 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 U.S.C. § 103(a) over Bridges, Unhoch ’208, Johnson, and Unhoch
’646
Appellant does not separately argue this obviousness rejection, instead
relying upon its arguments to overcome Bridges, Unhoch ’208, and Johnson.
The Examiner provides sound fact-based reasoning for combining these
references with Unhoch ’646 (see Final Act. 10–11). Having affirmed the
obviousness rejection of claims 1, 2, 4, 9, 10, 13, and 20–27 over Bridges,
Unhoch ’208, and Johnson for the reasons given above, we also find that the
further combination with Unhoch ’646 renders the rejected claims obvious
for the reasons given by the Examiner.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 9, 10,
13, 20–27
103 Bridges, Unhoch
’208, Johnson
1, 2, 4, 9, 10,
13, 20–27

3, 11, 15, 19,
28
103 Bridges, Unhoch
’208, Johnson,
Halley
3, 11, 15, 19,
28

7, 8, 14, 18 103 Bridges, Unhoch
’208, Johnson,
Unhoch ’646
7, 8, 14, 18
Overall
Outcome
1–4, 7–11,
13–15, 18–28

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