Ex Parte Hart

Board of Patent Appeals and Interferences

Jan 21, 2009

10719567 (B.P.A.I. Jan. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL R. HART
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Appeal 2008-5972
Application 10/719,567
Technology Center 1700
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Decided: January 21, 2009
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Before EDWARD C. KIMLIN, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-4, 6, 7, and 10-
18. Claim 1 is illustrative:
1. A composition for removing solubilized organics from a water-like
fluid phase consisting essentially of:

a hydrophilic α-hydroxymonocarboxylic acid (AHA); and

an anionic polymer,
Appeal 2008-5972
Application 10/719,567

in the absence of a cationic emulsion breaker, where the weight ratio
of AHA to anionic polymer in the composition ranges from over 50:1 to
10,000 to 1.

The Examiner relies upon the following references as evidence of
obviousness:
Valint US 4,835,234 May 30, 1989
Augustin US 5,045,212 Sep. 3, 1991
Bellos US 5,853,592 Dec. 29, 1998

Appellant's claimed invention is directed to a composition consisting
essentially of a hydrophilic α-hydroxymonocarboxylic acid (AHA) and an
anionic polymer. There is an absence of a cationic emulsion breaker in the
composition, and the composition finds utility in removing solubilized
organics from a water-like fluid phase.
Appealed claims 1-4, 6, 7, and 10-18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bellos in view of Augustin and Valint.
Appellant has not separately argued any particular claim on appeal.
Accordingly, all of the appealed claims stand or fall together with claim 1.
We have thoroughly reviewed each of Appellant's arguments for
patentability. However, we are in complete agreement with the Examiner's
reasoned analysis and application of the prior art, as well as his cogent and
thorough disposition of the arguments raised by Appellant. Accordingly, we
will adopt the Examiner's reasoning as our own in sustaining the rejection of
record, and we add the following for emphasis only.
There is no dispute that Bellos, like Appellant, discloses a
composition for removing solubilized organics from a water-like fluid phase
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comprising a hydrophilic α-hydroxymonocarboxylic acid (AHA). As
acknowledged by the Examiner, Bellos does not specifically teach the
presence of an anionic polymer in the composition. However, the Examiner
correctly points out that Bellos discloses the importance of adding
demulsifiers when significant shear is created by the action of stirrers or
agitators. The reference also teaches that the demulsifier may be added in
combination with the organic acid (col. 7, ll. 17-21). Since Augustin teaches
the use of an anionic polymer as a demulsifier to, like Bellos, purify an
aqueous phase stream from which the oil phase has been initially separated
by a cationic demulsifier, we agree with the Examiner that it would have
been obvious for one with ordinary skill in the art to select an anionic
polymer for the demulsifier taught by Bellos. Valint also evidences that it
was known in the art to use anionic polymeric flocculants to separate oil-in-
water emulsions after cationic polymers are used to break up most of the oil.
Regarding the claim recitation of an absence of a cationic emulsion
breaker, the Examiner properly explains that Bellos expressly teaches that
the AHA may be added separately in combination with the demulsifier
(anionic polymer). Hence, we agree with the Examiner that Bellos teaches a
composition consisting essentially of AHA and a demulsifier in the absence
of a cationic emulsion breaker, and that Augustin and Valint evidence the
obviousness of employing an anionic polymer as the demulsifier.
Also, notwithstanding Appellant's arguments to the contrary, we fully
concur with the Examiner that the claim language "consisting essentially of"
does not exclude an inorganic acid from the claimed composition. Appellant
and the Examiner agree that the claim language "consisting essentially of"
excludes ingredients that would materially affect the basic novel and
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Application 10/719,567

properties of the invention. But we agree with the Examiner that Appellant
has not demonstrated that the addition of an inorganic acid to the claimed
composition consisting essentially of AHA and an anionic polymer would
materially affect the basic characteristic of the claimed composition of being
able to remove solubilized organics from a water-like fluid phase. If
Appellant wished to exclude mineral acids from the claimed composition,
the effective claim language would be "consisting of" not "consisting
essentially of."
Appellant urges that there is nothing in Bellos or the secondary
references "that teaches or suggests that the mineral acid is not required in
the Bellos, et al. composition or that it may be omitted to give a composition
that is still effective for the stated purpose" (Principal Br. 11, first para.).
Appellant's argument, however, misses the thrust of the Examiner's
rejection. Although Bellos requires a mineral acid, Bellos also expressly
teaches that the mineral acid may be added separately to the aqueous
solution being treated after the addition of the organic acid, such as AHA
(col. 5, ll. 54-59). Consequently, it is clear that Bellos teaches a composition
comprising AHA and a demulsifier in the absence of an inorganic, mineral
acid.
Although Appellant acknowledges that Bellos teaches the addition of
corrosion inhibitors, demulsifiers, alcohol and wetting agents to the
composition, Appellant contends that since Bellos teaches a "typical acid
formulation" not comprising a demulsifier, Bellos "in fact teaches away
from using a demulsifier in a typical formulation" (Principal Br. 12,
penultimate para.). We find no merit in this argument. Manifestly, a clear
teaching in Bellos of using a demulsifier in the treating composition cannot
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fairly be considered as a teaching away from using the very same
demulsifier. Also, Appellant has not refuted the Examiner's finding that "the
formulation labeled 'typical' by Bellos at column 7, lines 3-13 only concerns
an embodiment that utilizes a pre-mixed formulation employing organic acid
and mineral acid together" (Ans. 13, second para.).
Appellant also maintains that "there is still no reason for one having
only ordinary skill in the art to choose an anionic polymer from the
extremely large universe of possibilities, based on the scant teachings of
Bellos" (Principal Br. 14, first para.). However, the Examiner's rejection is
not based on Bellos alone but, rather, on the combination of Bellos with
Augustin and Valint.
Appellant also submits that nowhere in Augustin or Valint "is there
any suggestion that anionic polymers do anything except in the aftermath of
a prior treatment with cationic polymers" (Principal Br. 18, last para.). This
argument, as emphasized by the Examiner, is not germane to the claimed
subject matter which defines a composition, not a process for treating a
water-like fluid phase. The relevant issue on appeal is the obviousness of a
composition consisting essentially of an AHA and an anionic polymer in the
absence of a cationic emulsion breaker.
As a final point, we note that Appellant bases no argument upon
objective evidence of nonobviousness, such as unexpected results, which
would serve to rebut the inference of obviousness established by the applied
prior art.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner's decision rejecting the appealed claims is
affirmed.
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Application 10/719,567

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)(effective
Sept. 13, 2004).
AFFIRMED

cam

PAUL S. MADAN
MADAN, MOSSMAN
& SRIRAM, P.C.
2603 AUGUSTA DRIVE, SUITE 700
HOUSTON TX 77057-5662
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