Unhoch, Michael J. et al.Download PDFPatent Trials and Appeals BoardApr 21, 202013623626 - (D) (P.T.A.B. Apr. 21, 2020) Copy Citation 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): ip@brownrudnick.com usactions@brownrudnick.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 __________ 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). Appeal 2019-002941 Application 13/623,626 2 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”). Appeal 2019-002941 Application 13/623,626 3 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”). Appeal 2019-002941 Application 13/623,626 4 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 Appeal 2019-002941 Application 13/623,626 5 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. Appeal 2019-002941 Application 13/623,626 6 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). Appeal 2019-002941 Application 13/623,626 7 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 Appeal 2019-002941 Application 13/623,626 8 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 Appeal 2019-002941 Application 13/623,626 9 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 Appeal 2019-002941 Application 13/623,626 10 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 Appeal 2019-002941 Application 13/623,626 11 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. Appeal 2019-002941 Application 13/623,626 12 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. Appeal 2019-002941 Application 13/623,626 13 (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. Appeal 2019-002941 Application 13/623,626 14 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 Copy with citationCopy as parenthetical citation