Ex Parte 6299793 et al

Board of Patent Appeals and Interferences

Nov 30, 2010

95000136 (B.P.A.I. Nov. 30, 2010)

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.
95/000,136 03/14/2006 6299793 286656US96RX 8298
20874 7590 11/30/2010
MARJAMA MULDOON BLASIAK & SULLIVAN LLP
250 SOUTH CLINTON STREET
SUITE 300
SYRACUSE, NY 13202
EXAMINER
JOHNSON, JERRY D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
11/30/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

ICE BAN AMERICA, INC. & EARTH FRIENDLY CHEMICALS, INC.
Requesters
v.
Patent of SEARS ECOLOGICAL APPLICATIONS CO., LLC
Patent Owner and Appellant
____________

Appeal 2010-009574
Reexamination Control 95/000,136
Patent 6,299,793 B1
Technology Center 3900
____________

Before RICHARD TORCZON, ROMULO H. DELMENDO, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The one-month time period for filing a request for rehearing, as recited in
37 C.F.R. § 41.79, and the two-month time period for filing an appeal, as
recited in 37 C.F.R. § 1.304 (see 37 C.F.R. § 1.983(b)(1)), both begin to run
from the “MAIL DATE” shown on the PTOL-90A cover letter attached to
this decision.
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The Patent Owner (Sears Ecological Applications Co., Inc.) appeals
from the Examiner’s final decision to reject claims 1-3 and 7 (Appeal Brief
filed July 30, 2008, hereinafter “App. Br.,” Right of Appeal Notice,
hereinafter “RAN,” mailed May 10, 2008).2 We have jurisdiction under 35
U.S.C. §§ 134(b) and 315(a).
We AFFIRM.

PRELIMINARY MATTERS
We heard the Patent Owner’s oral arguments on November 3, 2010, a
transcript of which will be entered into the electronic record in due course.
Following oral arguments, the Patent Owner filed a facsimile submission on
November 11, 2010, styled as “APPELLANTS’ CLARIFICATION OF
EVIDENTIARY RECORD ON APPEAL.” In that submission (pp. 1-2), the
Patent Owner asserted, inter alia, that it had submitted certain new evidence
in response a new argument in the Examiner’s Answer mailed on April 15,
2009 (Defective Rebuttal Brief filed on May 15, 2009), but the Examiner
had refused its entry (Notification of Defective Rebuttal Brief mailed on
May 29, 2009).
The Patent Owner’s facsimile submission is inappropriate. The
briefing in this appeal ended upon the Patent Owner’s filing of the revised
Rebuttal Brief. Procedural matters such as the propriety of the Examiner’s
refusal to enter new evidence should have been raised by way of a timely
petition pursuant to 37 C.F.R. § 1.181. Because we have jurisdiction over an

2 Claims 4-6 and 8, which are directed to embodiments in which the
aqueous solution also contains a thickener, have been indicated as patentable
(RAN, PTOL-2066).
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appeal from a final rejection under 35 U.S.C. §§ 134(b) and 315(a), but not
over such petitionable matters – the time period for raising such matters
having long lapsed, we decline to consider the Patent Owner’s submission,
including arguments based on evidence not properly entered into the record.

STATEMENT OF THE CASE
The Patent Owner informs us that the patent under reexamination
(hereinafter the “ ‘793 Patent”) has been the subject of a patent infringement
action (“APPELLANTS’ NOTICE OF ARGUMENTS TO BE
PRESENTED AT ORAL HEARING PURSUANT TO 37 C.F.R. §
41.47(E)(2)” filed on October 19, 2010, hereinafter “APPELLANTS’
NOTICE,” at 7).3 According to the Patent Owner, a jury “returned a
unanimous verdict that the Defendants had failed to prove any of the claims
of the ‘793 Patent were invalid as obvious and/or anticipated by” the same
prior art references applied in the current reexamination (id.).
Additionally, the Patent Owner points out that the ‘793 Patent is the
parent of two other continuation-in-part (CIP) patents, namely United States
Patents 6,436,310 B1 and 6,440,325 B1 issued to the same inventors on
August 20, 2002 and August 27, 2002, respectively (hereinafter ‘310 and
‘325 Patents). The ‘310 and ‘325 CIP Patents were involved in an
interference proceeding against United States Patent Applications

3 In contrast to our disposition of the Patent Owner’s improper submission
on November 11, 2010, we have considered the Patent Owner’s arguments
in “APPELLANTS’ NOTICE OF ARGUMENTS TO BE PRESENTED AT
ORAL HEARING PURSUANT TO 37 C.F.R. § 41.47(E)(2)” filed on
October 19, 2010, because they are based on two district court decisions
rendered after the briefing period ended.
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10/266,975 and 10/690,894 filed October 8, 2002, and October 22, 2003,
respectively (Interference No. 105,405). In that interference proceeding, this
Board held, inter alia, that certain claims of the ‘310 and ‘325 Patents (which
differ from the claims now before us), were unpatentable over United States
Patent 5,876,621 issued to Richard Sapienza on March 2, 1999. Sears
Ecological Applications Co., LLC v. MLI Associates, LLC, Interference No.
105,405 (Final Decision on Preliminary Motions, Paper 127 at 48-68). On
appeal under 35 U.S.C. § 146, the district court ruled that the term “water-
balance” appearing in the claims of the ‘310 and ‘325 Patents closed a
specified “aqueous solution” to “unrecited components except for incidental
impurities found in the recited components” and reversed the Board’s
decision as to this rejection. Sears Ecological Applications Co., LLC v. MLI
Associates, LLC, 652 F.Supp.2d 244, 263 (N.D.N.Y. 2009).
The invention of the ‘793 Patent relates to a “de-icing and anti-icing
composition” (claim 1). According to the Patent Owner, the invention is
marketed and sold under the “Ice B’Gone® II” brand of de-icers (App. Br.
5). Claim 1, which is an original patent claim, is reproduced in its entirety
below:
1. A de-icing and anti-icing composition comprising an
aqueous solution which contains a low molecular weight
carbohydrate and a chloride salt in which the constituents are
present in the following concentration:
Weight %
Carbohydrate 3 to 60
Chloride salt 5 to 35
Water Balance
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and where said carbohydrate has a molecular weight in the
range of about 180 to 1500, and is at least one selected from the
group consisting of glucose, fructose and higher saccharides
based on glucose and/or fructose and mixtures thereof.
(App. Br., App’x A).
The Examiner relied on the following as evidence of unpatentability
(Examiner’s Answer mailed April 15, 2009, hereinafter “Ans.,” 3):
Collins 1,776,181 Sept. 16, 1930
Hu 5,817,252 Oct. 6, 1998
Pilgrim GB 796,633 June 18, 1958

The Patent Owner relied on the following (App. Br., Evidence
App’x):
Declaration of E. Bruce Nauman dated July 5, 2006 (Ex. B1);
File History of Collins (Ex. B2);
Declaration of E. Bruce Nauman dated April 5, 2007 (Ex. B3);
Declaration of L. David Minsk dated April 5, 2007 (Ex. B4);
Declaration of John Dellaportas dated April 6, 2007 (Ex. B5); and
The Encyclopedia Americana, “Glucose” (Frederick Converse Beach
et al. eds., publication date unknown) (Ex. B6).

The Examiner rejected the claims as follows (Ans. 5):
I. Claims 1-3 and 7 under 35 U.S.C. § 102(b) as
anticipated by Pilgrim;
II. Claims 1, 2, and 7 under 35 U.S.C. § 102(b) as
anticipated by Collins; and
III. Claim 3 under 35 U.S.C. § 103(a) as unpatentable
over Collins in view of Hu.
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We uphold Rejection I. Because our affirmance of Rejection I
addresses the unpatentability of all appealed claims, we do not reach
Rejections II and III.

ISSUES
With respect to Rejection I based on Pilgrim, the Patent Owner has
argued the claims together (App. Br. 25-28). Accordingly, we confine our
discussion to claim 1, which we select as representative of the appealed
claims. See 37 C.F.R. § 41.67(c)(1)(vii).
The Examiner found that Pilgrim describes, either explicitly or
inherently, every limitation recited in claim 1 (Ans. 5, 15; Request for Inter
Partes Reexamination filed on March 14, 2006 at 4-9). According to the
Examiner, the appealed “claims, due to the non-exclusive term
‘comprising[,]’ are open to the inclusion of other, non-recited components
. . . including [Pilgrim’s] undissolved calcium hydroxide” (Ans. 15).
The Patent Owner asserts that “Pilgrim cannot anticipate . . . since
none of the compositions comply with the claimed ‘water – balance’
limitation, which the District Court ruled closes the claimed aqueous
solution to unrecited components except for incidental impurities found in
the recited components” and thus excludes Pilgrim’s calcium hydroxide
component (“APPELLANTS’ NOTICE” at 6; App. Br. 27). Additionally,
the Patent Owner argues that a jury determined “that the Defendants [in a
patent infringement action involving the ‘793 Patent] had failed to prove that
any of the claims . . . were invalid as obvious and/or anticipated by . . .
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Pilgrim” (id. at 7). Furthermore, the Patent Owner contends that Pilgrim
does not disclose a “de-icing and anti-icing composition” (App. Br. 25).
Thus, the dispositive issues are:
(1) Do the two district court decisions cited by the Patent Owner
compel reversal of the Examiner’s rejection based on Pilgrim?
(2) If not, did the Examiner err in concluding that the language
defining the de-icing and anti-icing composition of claim 1, when read in
light of the ‘793 Patent Specification as a whole, is open to calcium
hydroxide as described in Pilgrim?
(3) Did the Patent Owner show that Pilgrim’s disclosed
composition containing relatively small amounts of calcium hydroxide
cannot function as a “de-icing and anti-icing composition”?

FINDINGS OF FACT (“FF”)
1. Although not identical to the current claims on appeal, the
claims of the CIP ‘310 and ‘325 Patents involved in
Interference 105,405 also recited a “de-icing and anti-icing
composition comprising an aqueous solution,” in which the last
specified component was recited as “Water Balance” (‘310
Patent, claim 1; ‘325 Patent, claim 1).
2. The district court framed the issue in Interference 105,405 as
follows: “[W]hether, when read in light of the specification and
claims stated in the ‘310 and ‘325 patents, the term [‘water-
balance’] closes the aqueous solution to unrecited components
other than incidental impurities and/or harmless ingredients
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associated with the commercial sources of the recited
components” (emphasis added). Sears, 652 F.Supp.2d at 261.
3. Based on its review of the working examples of the ‘310 and
‘325 Patents, the district court ruled that “the broadest
reasonable construction of the term ‘water-balance’ viewed
through the perspective of a person of ordinary skill in the art
indicates that the aqueous solution is closed to unrecited
components except for incidental impurities found in the recited
components” (emphasis added). Sears, 652 F.Supp.2d at 263.
4. The district court did not address the issue of whether the term
“comprising” in “de-icing and anti-icing composition
comprising” opens the claimed de-icing composition to
unrecited components.
5. The district court did not indicate whether it considered the
descriptions in the ‘310 and ‘325 Patents as a whole, including
the disclosures that a colorant, which is an unclaimed
component, may be further included in the supposedly-closed
aqueous solution (and thus the overall de-icing and anti-icing
composition) (‘310 Patent, Example I; ‘310 Patent claim 10;
‘325 Patent, Example I).
6. The district court made no finding that a colorant is one of the
“incidental impurities found in the recited components.” Sears,
652 F.Supp.2d at 263.
7. The ‘793 Patent Specification does not define “comprising” to
mean “consisting of” or indicate other closed language.
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8. The ‘793 Patent Specification states (col. 9, ll. 42-47):
While the present invention has been particularly
shown and described herein with reference to various
preferred modes it will be understood by one skilled in
the art that various changes in detail may be effected
therein without departing from the spirit and scope of the
invention as defined by the claims.
9. Claim 3 of the ‘793 Patent states that the composition of claim
1 “further includes a colorant to provide visual aid in applying
the composition to a surface” (col. 10, ll. 1-3, claim 3).
10. The ‘793 Patent states (col. 9, ll. 38-41): “Colorants may also
be used to enable applicators to see where the deicer has been
deposited. Non-toxic colorants which may be used include
caramel solutions and food grade dyes.”
11. Pilgrim discloses “anti-freeze mixtures or to freezing point
depressants to lower the freezing point of water” (p. 1, col. 1, ll.
8-10).
12. Pilgrim teaches that the composition is especially useful for use
in radiators but states that “its use is not to be construed as
being limited thereto” (p. 1, col. 1, ll. 10-14).
13. Pilgrim describes a mixture of 16 parts by weight NaCl, 8-48
parts by weight of cane sugar, and 1-4 parts by weight of
calcium hydroxide (p. 1, col. 1, ll. 42-47).
14. Pilgrim further teaches that 1 part by weight of the solid
mixture is combined with 3 parts of water for protection against
most extreme degrees of cold (p. 1, col. 2, ll. 48-50, 78-82).
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15. Mr. Naumann states that he is the Patent Owner’s expert
consultant ( Ex. B1, ¶ 1).
16. Mr. Naumann states that an “antifreeze is quite different from a
deicer or anti-icer” in terms of intended use (Ex. B1, ¶ 27).
17. Mr. Naumann further states that a two-phase mixture is
“unsatisfactory as an anti-icer or deicer . . . because of the need
to spray the product” (Ex. B3, ¶ 10).
18. Mr. Minsk states that he is also the Patent Owner’s expert
consultant (Ex. B4, ¶ 1).
19. Mr. Minsk testifies that “[d]eicing is the technique of applying
a chemical freezing point depressant in either liquid or solid
form on snow or ice that has formed a bond to the pavement
surface that is strong enough to resist removal by conventional
snowplows or ice scrapers,” while “[a]nti-icing is the practice
of applying an ice-control chemical to a pavement before
precipitation begins falling, or at least during the very early
stages of an ice or snow event before traffic has compacted any
snow, or any ice has formed” (Ex. B4, ¶¶ 15, 17; emphasis
added).
20. Mr. Minsk states that “freezing-point depression” or “freezing-
point depressant” is an important characteristic for ice control
chemicals for roadways (Ex. B4, ¶ 20).

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PRINCIPLES OF LAW
“During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification . . . . Therefore, we look to the specification to see if it provides
a definition for claim terms, but otherwise apply a broad interpretation.” In
re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
(citation omitted).

ANALYSIS
The Patent Owner’s reliance on the two district court decisions in this
appeal is misplaced.
We first address the Patent Owner’s argument that a jury determined
that the defendants in the ‘793 Patent litigation failed to prove invalidity of
the claims over Pilgrim. “In civil litigation, a challenger who attacks the
validity of patent claims must overcome the presumption of validity [under
35 U.S.C. § 282] with clear and convincing evidence that the patent is
invalid.” In re Swanson, 540 F.3d 1368, 1377 (Fed. Cir. 2008). “If this
statutory burden is not met, “‘[c]ourts do not find patents ‘valid,’ only that
the patent challenger did not carry the ‘burden of establishing invalidity in
the particular case before the court.’’” Id. (quoting Ethicon, Inc. v. Quigg,
849 F.2d 1422, 1429 n. 3 (Fed. Cir. 1988)). By contrast, “[i]n PTO
examinations and reexaminations, the standard of proof – a preponderance
of the evidence – is substantially lower than in a civil case.” Swanson, 540
F.3d at 1377 (citation omitted). Also, “unlike in district courts, in
reexamination proceedings ‘[c]laims are given ‘their broadest reasonable
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interpretation, consistent with the specification . . . .’’” Swanson, 540 F.3d
at 1377-78 (internal citations omitted). Thus, “[t]he two forums take
different approaches in determining validity and on the same evidence could
quite correctly come to different conclusions.” Ethicon, 849 F.2d at 1428.
Moreover, the PTO was not a party to the patent infringement action and
thus cannot be estopped by its holdings. In re Trans Texas Holdings Corp.,
498 F.3d 1290, 1297-98 (Fed. Cir. 2007). Therefore, we are not bound by
the findings and conclusions of the court in the patent infringement
litigation.
As to the district court decision concerning the two CIP patents, there
can be no question that the court decision is binding on the two parties (the
Patent Owner and MLI Associates, LLC) as law of the case in each of those
CIP patents, which are not at issue here. While similar, the claims of the
two CIP patents differ from those of the ‘793 Patent (FF 1). Based on MLI’s
arguments and facts relied upon in court, the court framed the issue as
whether the term “water-balance” closes the aqueous solution to “unrecited
components other than incidental impurities and/or harmless ingredients
associated with the commercial sources of the recited components” (FF 2).
As will be discussed below, that question is different from, and not
coextensive with, the issues decided here (FF 3-6). The court decision
cannot have an estoppel or preclusive effect on a different proceeding of a
different patent involving different relevant facts. In addition, as in the
patent infringement action, the Director did not participate in the court
action, and therefore the agency is not bound by the decision as to this
reexamination. Indeed, the Patent Owner’s argument that the court decision
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should be binding here is directly contrary to the express provisions of 35
U.S.C. § 146, which states that the Director was not a necessary party in the
court action and the court decision merely “authorize[s the Director] . . . to
issue such patent on filing in the [PTO] of a certified copy of the judgment
and on compliance with the requirements of law.”
Next, we turn to the substantive merits of the case, starting with claim
interpretation. As we indicated, a dispositive issue in this case is whether
the claim language “de-icing and anti-icing composition comprising an
aqueous solution which contains . . . Water Balance [in weight %]” excludes
calcium hydroxide (dissolved and/or undissolved), as described in Pilgrim.
By using the open-ended term “comprising,” the inventors of the ‘793
Patent signaled to one skilled in the relevant art that the claimed composition
reads on compositions that include unrecited components in addition to the
recited “aqueous solution.” In re Baxter, 656 F.2d 679, 686 (CCPA 1981).
That, of course, does not end our inquiry. We have also looked to the
Specification of the ‘793 Patent for any enlightenment that would have
indicated to one skilled in the relevant art that the inventors intended to use
the term “comprising” following the claimed “de-icing and anti-icing
composition” in a closed fashion contrary to normal convention. Even
assuming that the component “aqueous solution” is closed to calcium
hydroxide, the Patent Owner has failed to direct us to any description in the
‘793 Patent that would support the conclusion that the term “comprising”
following “de-icing and anti-icing composition” closes the claimed
composition to only the “aqueous solution” (FF 4, 7) Absent any indication
that “comprising” actually meant “consisting of” (closed), we are obligated
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under the law to give the term its broadest reasonable construction – i.e., its
normal construction.
Moreover, the written description of the ‘793 Patent as a whole does
not support the notion that one skilled in the relevant art would have
understood the recited “aqueous solution which contains . . . Water Balance”
to be closed except for “unrecited components other than incidental
impurities and/or harmless ingredients associated with the commercial
sources of the recited components” (FF 2). For one thing, dependent claim
3, which under 35 U.S.C. § 112, ¶ 4, necessarily further limits claim 1,
recites that the “composition . . . further includes a colorant” (emphasis
added) (FF 9).4 The term “further” indicates that the colorant is a
component distinct from and in addition to a carbohydrate, chloride salt, and
water. While the ‘793 Patent Specification states that “caramel solutions”
may be used as a colorant, it also mentions “food dyes” and does not limit
the scope of “colorant” in any way (FF 8, 10). As the Patent Owner has
failed to direct us to any evidence that the colorant is necessarily part of
“incidental impurities and/or harmless ingredients associated with the
commercial sources of the recited components” of the “aqueous solution,”
we conclude that one skilled in the relevant art would have understood that
the claimed de-icing and anti-icing composition comprising an “aqueous
solution . . . Water Balance” is open to unrecited components.
Relying on the district court interference decision involving the CIP
patents, the Patent Owner appears to be arguing that the recitation “aqueous

4 When pressed at oral argument, the Patent Owner’s counsel confirmed that
claim 3 does not simply duplicate claim 1.
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solution which contains . . . Water Balance” should be limited to what are
shown in the working examples of the ‘793 Patent. While appealing, we
decline to do so because such an approach is contrary to the clear command
of the Federal Circuit. Trans Texas, 498 F.3d at 1299 (“Even if the
examples are so limited (which the PTO disputes), Trans Texas’s argument
conflicts with our decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
Cir. 2005) (en banc).”); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
(“[T]his court counsels the PTO to avoid the temptation to limit broad claim
terms solely on the basis of specification passages.”). Moreover, such a
construction is contrary to the Specification of the ‘793 Patent itself, which
emphasizes that the “scope of the invention as defined by the claims” should
not be limited to “various preferred modes” (FF 8).
Having concluded that the claimed “de-icing and anti-icing
composition” does not exclude calcium hydroxide, we turn to the teachings
of Pilgrim. It is undisputed that Pilgrim describes a composition containing
16 parts by weight of NaCl, 8-48 parts by weight of a carbohydrate having a
molecular weight within the claimed range (cane sugar), and 1-4 parts by
weight of calcium hydroxide (FF 11-13). It is also undisputed that Pilgrim
discloses mixing 1 part by weight of the resulting solid mixture with 3 parts
by weight water (FF 14).
While Pilgrim does not say that the final composition can be used as a
“de-icing and anti-icing composition,” it does teach other uses and states that
the composition can be used as a freezing point depressant to lower the
freezing point of water (FF 11). According to Mr. Minsk, the freezing point
depressant property is an important characteristic of ice control chemicals
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for roadways (FF 20). Additionally, the calcium hydroxide content of
Pilgrim’s composition may be as low as 1 part by weight of total solids (FF
14). Thus, it would reasonably appear that the prior art composition would
inherently or necessarily have the recited “de-icing and anti-icing”
characteristic in view of the substantial identity in terms of components
between the claimed composition and the prior art composition. That
substantial identity, coupled with Pilgrim’s explicit disclosure of freezing
point depressants, is sufficient to shift the burden of proof to the Patent
Owner. The Patent Owner, however, failed to meet its burden. In re
Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (citing In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990)).
We have considered the relied-upon portions of the testimonies of the
Patent Owners’ experts but find them unconvincing (FF 15-20). None of the
relied-upon testimonies demonstrate that Pilgrim’s mixture containing 1 part
by weight of calcium hydroxide, when diluted with water, cannot be used as
a de-icer and anti-icer. While Mr. Naumann states that a two-phase mixture
is unsatisfactory as an anti-icer or de-icer to be sprayed (FF 17), the claimed
composition is not limited to single-phase, sprayable compositions and, in
fact, reads on de-icers and anti-icers applied by hand on sidewalks. Nor has
the Patent Owner shown that 1 part by weight of calcium hydroxide
necessarily renders the composition unsuitable as a sprayable de-icer and
anti-icer. Indeed, Mr. Naumann’s testimony (FF 17) appears to be at odds
with Mr. Minsk’s testimony (FF 19), which states that a de-icer can be in the
form a solid.
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For these reasons, we discern no error in the Examiner’s rejection
based on Pilgrim.

DECISION
The Examiner’s decision to reject claims 1-3 and 7 is AFFIRMED.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
AFFIRMED

rvb

cc:

For Patent Owner:
MARJAMA MULDOON BLASIAK & SULLIVAN LLP
205 SOUTH CLINTON STREET
SUITE 300
SYRACUSE, NY 13202

For Third Party Requesters:
JAMES J. KELLY
OBLON SPIVAK MCCELLAND MAIER & NEUSTADT
1940 DUKE STREE
ALEXANDRIA, VA 22314