Ex Parte Geret et al

Patent Trial and Appeal Board

Jul 31, 2013

12236663 (P.T.A.B. Jul. 31, 2013)

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.
12/236,663 09/24/2008 Laurence Geret 2484US01 8346
7590 07/31/2013
Merchant & Gould, P.C.,
P.O. Box 2903
Minneapolis, MN 55402-0903
EXAMINER
DELCOTTO, GREGORY R
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
07/31/2013 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 PATENT TRIAL AND APPEAL BOARD

____________

Ex parte LAURENCE GERET and MICHAEL DECKER
__________

Appeal 2012-009571
Application 12/236,663
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and
JAMES C. HOUSEL, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the Final Rejection of claims
1-6, 10, and 11. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM.
Appellants’ invention is directed to a granular cleaning composition
generating peroxy acid containing use solution upon dissolution in water
(Spec. 1:3-4).
Claim 1 is illustrative:
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1. A cleaning and disinfectant composition, comprising:
(1) 15 - 60 wt% of a percarbonate,
(2) 8 - 35 wt% of an acylating agent,
(3) 0.5 - 5 wt% a nonionic surfactant, and
(4) 0.1 - 3 wt% of a foam inhibitor consisting of a
phosphonate,
wherein the composition is comprised of a mixture of at
least two granulates, the first granulate comprising a
percarbonate coated with a water-soluble inorganic salt, the
second granulate comprising an acylating agent coated with a
water-soluble ethoxylated tallow fatty acid surfactant, the
composition having a bulk density between 0.5 and 1.4 kg/L, at
least 40% of the particles have a particle size between 0.4 and
0.8 mm, the composition rapidly dissolves in water, and when
the composition is dissolved in water, the phosphonate is
sufficient to keep any foam generation to no greater than 12.1
mL after 300 minutes.

Appellants appeal the following rejections:
1. Claims 1-6, 10, and 11 are rejected under 35 U.S.C. § 103(a), as being
unpatentable over MacBeath (US 5,716,923; Feb. 10, 1998) or Welch
(US 6,551,983 B1; Apr. 22, 2003) in view of Himmrich (US
6,107,266; Aug. 22,2000) and Nollet (US 4,686,061; Aug. 11, 1987).
2. Claims 1-6, 10, and 11 are rejected under 35 U.S.C. § 103(a), as being
unpatentable over Meyer (US 2005/0153854 A1; Jul. 14, 2005) in
view of Himmrich, Nollet, and Welch.
Appellants’ arguments focus solely on the subject matter of claim 1
(App. Br. 9-12).

Rejection (1)

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ISSUE
Did the Examiner reversibly err in finding that the combined
teachings of MacBeath or Welch with Himmrich and Nollet would have
suggested a cleaning composition having a first granulate of a percarbonate
coated with a water-soluble inorganic salt and a second granulate of an
acylating agent coated with a water-soluble ethoxylated tallow fatty acid
surfactant? We decide this issue in the negative.

FINDINGS OF FACT AND ANALYSES
The Examiner’s finding and conclusions are located on pages 8-10 of
the Answer. The Examiner finds that MacBeath or Welch discloses, inter
alia, a detergent composition comprising an acylating agent and a
percarbonate coated with inorganic salts (Ans. 8). The Examiner finds that
MacBeath or Welch does not disclose an acylating agent coated with a
surfactant such as ethoxylated tallow fatty acid or a composition having the
specific bulk density containing a coated percarbonate, a coated acylating
agent, a nonionic surfactant and a phosphonate in the specific amounts
recited in the claims (Ans. 9). The Examiner finds that Himmrich discloses
coating an acylating agent to extend the shelf life of the detergent
composition by preventing the reaction of the activator grain with the grain
of the hydrogen peroxide source during storage (Ans. 9). The Examiner
finds that Nollet discloses using ethoxylated tallow fatty acid as a coating
agent for bleach activators (Ans. 9). The Examiner concludes that it would
have been obvious to one of ordinary skill in the art to coat the acylating
agent (i.e., TAED) bleach activator as disclosed by MacBeath or Welch with
a coating of ethoxylated tallow fatty acid in light of Nollet’s and Himmrich’s
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teachings to improve the shelf life of the detergent composition (Ans. 9).
The Examiner concludes that it would have been obvious to formulate a
composition having the specific bulk density containing a coated
percarbonate, a coated acylating agent, a nonionic surfactant, and a
phosphonate in the specific amounts recited in the claims because the broad
teachings of MacBeath and Welch each in combination with Himmrich and
Nollet suggest a composition having the specific bulk density with the
particular claimed components (Ans. 10).
Appellants argue that the references do not teach the claimed two-
granulate composition (App. Br. 9). Appellants contend that there is nothing
in the cited references that suggest the desirability of coating both the
percarbonate and the acylating agent. Id. Appellants argue that providing a
coated acylating agent to composition that already has coated percarbonate
would have been duplicative and based on hindsight as evidenced by the
Examiner’s finding that providing a coating on the acylating agent of the
composition would “further ensure” neither agent reacts with one another
(App. Br. 9-10).
Contrary to Appellants’ arguments the Examiner’s rejection is not
based on hindsight. Rather, the Examiner finds based on the teachings of
Himmrich and Nollet that one of ordinary skill in the art would have
provided an ethoxylated tallow fatty acid coating on the acylating agent to
extend the shelf-life of the detergent composition by preventing the reaction
of the activator grain with the grain of the hydrogen peroxide source in the
course of storage (Ans. 9). While Appellants argue that the additional
coating would be duplicative, such argument does not undermine the
Examiner’s reasonable finding that coating the acylating agent would
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provide additional protection in order to extend the shelf-life of the detergent
composition by preventing side reactions between detergent components.
Appellants do not argue or direct us to any specific teachings in the
references that would lead away from additionally coating the acylating
agent of a composition that has a coated percarbonate.
Appellants argue that the cited references fail to teach the rapid
release property recited in claim 1 (App. Br. 10-11). Appellants contend that
Himmrich teaches time-optimized release of the coated bleach activator and
not rapid release (App. Br. 10-11). Appellants argue that Nollet teaches
applying ethoxylated fatty acids to p-sulphophenyl carbonates, not the
percarbonates and acylating agents claimed and does not address that
Himmrich teaches time-optimized release (App. Br. 10-11).
The Examiner cites Nollet as teaching applying ethoxylated tallow
fatty acid coatings on bleach activators (Ans. 6, 9). Nollet’s invention is
directed to the use of p-sulphophenyl carbonates as bleach activators. Nollet
teaches that the use the p-sulphophenyl carbonate as a bleach activator is
superior to the conventionally used tetraacetyethylenediamine (TAED)
bleach activator (Nollet col. 1, ll. 29-51). In other words, Nollet, as does
Himmrich, teaches that TAED is a known bleach activator. Nollet further
recognizes that the various known techniques for adding the bleach
activators such as acyl group-containing bleach activators may be used with
Nollet’s p-sulphophenyl carbonate bleach activator (Nollet, col. 4, ll. 1-15).
Accordingly, we agree with the Examiner that Nollet’s teaching that
ethoxylated fatty acids are suitable coating materials for Nollet’s bleach
activator and Himmrich’s teachings of coating TAED bleach activators
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would have led one of ordinary skill to combine Nollet’s ethoxylated fatty
acid coating with Himmrich’s TAED bleach activator.
Regarding Appellants’ argument that the rapid release feature is not
suggested by the applied prior art, Himmrich teaches that the coated bleach
activator provides a time-optimized release of the bleach activator to avoid
interaction between the bleaching system and the enzyme system
(Himmrich, col. 4, ll. 60-67). Himmrich teaches that appropriate coating
permits the tailoring of the rate of dissolution of the peracid and thus bleach
reactivity (Himmrich, col. 5,ll. 1-9). We understand Himmrich to teach that
the coating may be tailored or optimized to permit the desired dissolution of
the peracid. So where enzyme activity is not important, one of ordinary skill
in the art would have understood from Himmrich’s teachings that the coating
may be tailored to permit more rapid dissolution of the bleach activator.
Appellants’ claims to do require any particular degree of rapidity and so any
degree of more rapid dissolution of the bleach activator meets the claims.
Based on the combined disclosures of MacBeath, Welch, Himmrich
and Nollet the Examiner finds that the claimed amount of foam generation
and rapid dissolution properties would have resulted therefrom (Ans. 15). In
other words, once Nollet’s ethoxylated fatty acid coating material is
substituted for Himmrich’s coating on the TAED bleach activator for the
acylating agent in either MacBeath’s or Welch’s composition, the Examiner
finds that the rapid dissolution property would flow naturally therefrom. Ex
parte Obiaya, 227 USPQ 58, 60 (BPAI 1985). Appellants do not dispute
this finding of the Examiner (Reply Br. generally).
Appellants argue that the cited references do not teach the
phosphonate foam inhibitor or render it obvious (App. Br. 11). Appellants
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contend that Welch discloses phosphonates as heavy metal sequestrants and
then describes a suds suppressing system at column 26 (App. Br. 11).
The Examiner responds that Welch discloses that the suds suppressing
system “may” be added to the composition which indicates that the suds
suppressing system is not necessary (Ans. 15). We agree with the Examiner.
Welch and MacBeath employ phosphonates as part of the detergent
compositions (Ans. 8-9). The Examiner finds that the combined teachings
of MacBeath or Welch with Himmrich and Nollet suggest compositions
containing the same components in the same amounts as recited in the
claims (Ans. 10). Appellants do not specifically challenge this finding of the
Examiner. Based on this undisputed finding, we fail to see how the resulting
identical compositions would have different properties such as foam
generation. In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the
standpoint of patent law, a compound and all of its properties are
inseparable; they are one and the same thing.”).
Appellants argue that the Examiner has not cited a reference that
includes all the components of claim 1 including two coated granulates that
have a bulk density within the claimed range (App. Br. 12).
Contrary to Appellants’ argument MacBeath discloses that the bulk
density of the detergent composition may be between 800 to 1200 g/liter
(MacBeath col. 14, ll. 33-36). Welch discloses that the detergent
composition may have a bulk density of at least 580 g/liter (Welch, col. 4, ll.
36-38). Welch and MacBeath each disclose bulk density ranges that overlap
with Appellants’ claimed range. Accordingly, one of ordinary skill when
combining Himmrich’s and Nollet’s teachings regarding the coating for the
acylating agent would have tailored the resulting detergent composition such
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that the bulk density falls within the ranges disclosed by Welch and
MacBeath and thus, the claimed bulk density range.
On this record, we affirm the Examiner’s § 103 rejection over
MacBeath or Welch in view of Himmrich and Nollet. That decision is
dispositive of the appeal. It is not necessary, therefore, to address the other
ground of rejection entered by the Examiner over Meyer in view of Welch,
Himmrich and Nollet that is used to reject the same claims. See In re Hyon,
102 USPQ2d 1889, 1893 (Fed. Cir. 2012) (Affirmance of rejection of all
claims under § 103(a) made it unnecessary to reach other grounds of
rejection); Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(Having decided a single dispositive issue, the ITC was not required to
review other matters decided by the presiding officer).

DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

ORDER
AFFIRMED

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