Ex Parte Kerns et al

Patent Trial and Appeal Board

Jun 28, 2016

11645992 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/645,992 12/27/2006 Kelley J. Kerns
24024 7590 06/30/2016
Calfee, Halter & Griswold LLP
The Calfee Building
1405 East Sixth Street
Cleveland, OH 44114-1607
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
17922/04554 1560
EXAMINER
KOLLIAS, ALEXANDER C
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
ipdocket@calfee.com
wfrick@calfee.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PA TENT TRIAL AND APPEAL BOARD
Exparte KELLEY J. KERNS, 1
Robert H. Mizwicki, and Ryan Schwark
Appeal2014-005005
Application 11/645,992
Technology Center 1700
Before TERRY J. OWENS, MARK NAGUMO, and
N. WHITNEY WILSON, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Kelley J. Kerns, Robert H. Mizwicki, and Ryan Schwark ("Kerns")
timely appeal under 35 U.S.C. § 134(a) from the Final Rejection2 of
claims 111-116.3 We have jurisdiction. 35 U.S.C. § 6. We affirm.
1 The real party in interest is listed as Fairmount Minerals, Ltd. (Appeal
Brief, filed 30 October 2013 ("Br."), 4.)
2 Office Action mailed 4 January 2013 ("Final Rejection"; cited as "FR").
3 Remaining copending claims 105 and 108 have been withdrawn from
consideration by the Examiner (FR 1, § 5a) and are not before us.
Appeal2014-005005
Application 11/645,992
A. Introduction4
OPINION
The subject matter on appeal relates to a foundry sand product said to
cure with minimal odor. (Spec. 1 [0001 ].) The '992 Specification explains
that hollow light weight molds for pipe hubs, cores, crank shafts, intake
manifolds for engines, etc., are made by a so-called "Shell-" or "Croning-"
or "C-Process" (id. at [0003]), in which raw sand is coated with phenolic
resin, a curing agent, such as hexamethylenetetraamine ("hexa"), and other
additives in various treatment stages. At the "C" stage, the free-flowing
coated sand is placed into a heated mold at 450-600°F, and ammonia and
formaldehyde are released by the decomposition of the hexa. The
formaldehyde crosslinks the resin to create a solid form or core or mold, and
the ammonia is given off as a volatile offensive gas. (Id. at 2-3 [0006].) In
addition to being noxious, the ammonia is said to be converted in part to free
nitrogen, which can result in a bad casting. (Id. at 8-9 [0019].) It is
therefore desirable to reduce the amount of ammonia released during the
curing process. (Id. at 20 [0019].)
In the words of the Specification, "[t]he inventors determined that a
product sold by Odor Management, Inc[.], of Barrington, Illinois under the
brand name ECOSORB-303SG was a suitable buffering agent. ECOSORB
is an oil based (botanical) product supposedly in which the ingredients are
4 Application 11/645,992, Composition of matter and method of application
for elimination of odors in shell sand encapsulation,
filed 27 December 2006, claiming the benefit of 60/801,629, filed 18 May
2006. We refer to the '"992 Specification," which we cite as "Spec."
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Application 11/645,992
imported from Australia. Essentially ECOSORB is based on organic
hydrocarbon plant extract." (Spec. 9 [0021 ].)
The inventors found further that a masking agent could "mask with a
pleasant odor" the remaining malodors due to residual ammonia, phenol,
formaldehyde, and other by-products. A product sold under the brand name
V ANILLIN, identified as "4-Hydrox-3-Methoxybenzaldehyde; 3-Methoxy-4-
Hydroxbenzaldehyde," is said to perform this function. (Id. at 9 to 10 [0022].)
Independent claim 111 reads:
A dry free flowing foundry sand product for producing sand
molds for use in the Shell metal casting process, the dry free
flowing foundry sand product comprising
sand particles and
a resin coating on individual sand particles,
the resin coating comprising a mixture of
a novolac resin and
a hardener for the novolac resin,
the hardener being capable of liberating free ammonia
when the foundry sand is heated to the curing
temperature of the novolac resin during production of
the sand molds,
wherein the dry free flowing foundry sand product further
includes an odor control composition comprising
approximately equal amounts of
(a) an oil based botanical odor control product known as
ECOSORB 303SG, and
(b) vanillin.
(Claims App., Br. 26; some indentation and paragraphing added.)
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Application 11/645,992
Remaining independent claim 113 is mostly identical to claim 111;
the difference reads:
(a) an oil based botanical odor control product which is
known as ECOSORB 303 SG and which contains
limonene, pine extract, abies alba extract, clove extract
and camphor tree extract as its main active ingredients,
(Claims App., Br. 27; emphasis added.)
The Examiner maintains the following grounds of rejection5' 6, 7 :
A. Claims 111-116 stand rejected under 35 U.S.C. § 112(2) as
indefinite in the trademark ECOSORB-303SG.
B. Claims 113 and 114 stand rejected under 35 U.S.C. § 112(1)
for lack of an adequate written description.
5 Examiner's Answer mailed 21November2013 ("Ans.").
6 Objections to amendments to the Specification regarding the term
"precipitation" are not before us, as that term does not appear in any of the
appealed claims. Because that matter is petitionable (3 7 C.F .R. § § 1.181-
183 ), we lack jurisdiction over that dispute.
7 Because the '992 Application was filed before 16 March 2013, we refer to
the pre-AIA versions of the statute.
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Application 11/645,992
C. Claims 111-116 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Suzuki, 8 Timcik, 9
Biddle, 10 and MSDS. 11
D. Claims 111-116 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Ina, 12 Timcik, Biddle, and
MSDS.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Re} ection A, 3 5 U.S. C. § 112 (2): Indefiniteness
As the Examiner explains, it is well-settled that the use of a trademark
or tradename in a claim as a limitation to identify or describe a particular
material or product does not comply with the requirements of
35 U.S.C. § 112, second paragraph. This is because, as a matter of law, a
trademark is a mark by which the goods of the trademark owner may be
distinguished from the goods of others. 15 U.S.C. § 1052. Put another way,
8 Takatoshi Suzuki et al., Molding material and mold, U.S. Patent
No. 4,767,801 (1988).
9 Charles Timcik and John Fergeus, Additives and methods for reducing
odor, U.S. Patent Application Publication 2004/0220295 Al (2004) (issued
as U.S. Patent No. 7,037,955 on 2 May 2006, assigned to Odor
Managements, Inc.).
10 Arthur Biddle and Alpheus Eugene Clonts, Aqueous natural resinoid
compositions, U.S. Patent No. 4,013,479 (1977).
11 Material Safety Data Sheet, ECOSORB 303SG
("prepared 20 September 2006").
12 Yoshimasu Ina, Resin-coated sand, U.S. Patent Application Publication
2008/0274374 Al (2008).
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Application 11/645,992
a trademark or tradename serves to identify the source of goods, not the
goods themselves. An "exception" arises if a trademark has become
generic-that is, if a word, for example, no longer functions as an identifier
of the source, it is no longer a trademark. In the present case, Kerns has not
come forward with credible evidence that the trademark
"ECOSORB 303SG" has become generic.
Moreover, as the Examiner emphasizes (FR 28-29, ,-i 21; Ans. 4-6.
,-i 5), the relative amounts of the various ingredients in ECOSORB 303 SG
are not specified. Thus, a person would not be sure whether a mixture
comprising the recited ingredients would be within the literal scope of the
claim.
We therefore affirm the rejection for indefiniteness. 13
Rejection B, 35 U.S. C. § 112(1): Written description
The inquiry into the written description requirement of§ 112(1) is a
question of fact. Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F .3d
1336, 1351 (Fed. Cir. 2010)(en bane). As the court explained, the test for an
adequate written description "requires an objective inquiry into the four
13 As the Examiner also points out (Ans. 4-9), additional problems arise
because the purveyor of the goods may change the composition or properties
of the marked in a way that remains within the scope of utility intended by
the purveyor, but which no longer performs in the way required by a later
user, such as Kerns. These issues become particularly problematic in the
absence of evidence that, at the time the application was filed, the
composition associated with the trademark was not known to those skilled in
the art. These problems can be avoided if the trademarked goods are
identified generically in the specification as originally filed, with the
components responsible for critical properties or functions identified.
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Application 11/645,992
comers of the specification from the perspective of a person of ordinary skill
in the art. Based on that inquiry, the specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed." (Id.) The court has further
explained that "a prior application itself must describe an invention, and do
so in sufficient detail that one skilled in the art can clearly conclude that the
inventor invented the claimed invention as of the filing date sought."
Lockwood v. American Airlines Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
Independent claim 113 recites that ECOSROB 303SG contains
limonene, pine extract, abies alba14 extract, clove extract, and camphor tree
extract as main active ingredients. Claim 114, which depends from
claim 113, 15 recites the further presence of methyl ester of soybean oil and
sorbitan monooleate as "main ingredients." (Claims App., Br. 27.)
The Examiner finds the Specification lacks written descriptive support
" • "1 • r- • "1. • "1 • • "1 "1 • 1 h: ror me spec1nc mgremems namea m rnese crn1ms. iv
The only description provided in the original Specification is at
page 9, paragraph [0021 ], quoted supra. That generic description, "an oil
14 Abies alba is the formal botanical name for the European silver fir tree.
15 Kerns observes, with commendable clarity, that the Examiner's rejections
apply to claims 113-116, and argues for the patentability of all these claims.
(Br. 12, 11. 20-25.)
16 The record indicates that Kerns amended the Specification and claims to
include the rejected subject matter (Amendment filed 9 July 2012), as part of
the continued prosecution initiated by a Request for Continued Examination
filed 27 June 2012. The Examiner rejected the amended claims and objected
to the amended Specification as containing new matter. In response, Kerns
removed the added description from the text of the Specification.
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Application 11/645,992
based (botanical) product supposedly in which the ingredients are imported
from Australia," does not support the recitation of the specific ingredients.
Kerns urges that§ 112, first paragraph, does not require "that at the
time a patent application is filed a patent applicant must understand the
chemical composition of a material used to make the invention being
claimed." (Br. 13, 11. 26-28.) While this assertion is in some senses true, it
does not relieve an applicant for patent from providing a complete
description of the materials used in an invention. A trademark, without an
accompanying generic description of the trademarked material, does not
suffice as a sufficiently distinct description of the material the inventors
discovered because, as Kerns notes, "Odor Management, Inc.,l17J may be
free to change the composition of ECOSORB 303SG at any time" (Id. at 11,
11. 15-16.)
Kerns urges that the MSDS presented during examination (appended
as Exhibit 1 to the Brief), "makes clear that, at the time this application was
filed, it was known in the art that ECOSORB 303SG contained the particular
ingredients recited in claims 113-116." (Br. 14, 11. 1-3.) One difficulty
with this argument is that although the MSDS states that it was "Prepared
on: 20.09.2006," which is before the filing date of the '992application, 18
there appears to be no indication of when the MSDS was published.
Notably, the MSDS provided in Exhibit 2, which bears a "Date Prepared" of
17 Odor Management, Inc., is identified as the assignee of Timcik.
18 But after the filing date of the provisional application; so
the '992 Specification would not be entitled to the benefit of the filing date
of the provisional application for this subject matter.
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"08-01-04," is silent as to ingredients. Nothing in the '992 Specification ties
the description in the MSDS of Exhibit 1 to the material described in
the '992 Specification.
Kerns argues further that"[ c ]learly, the description of
ECOSORB 303SG in this MSDS (Exhibit 1) is at least as clear and definite
as the plant extract products defined in the claims of these patents[19J_"
(Br. 11, 11. 12-14.) This argument is unavailing for several reasons. First,
Kerns does not direct our attention to a specific description in the Timcik
specification or in the claims of the issued patent of an odor additive
corresponding to what was later marketed as ECOSORB 303SG. Second,
Kerns does not direct our attention to a specific reference in
the '992 Application to such a description.
On this record, we affirm the rejection for lack of written description.
Rejections C and D, obviousness
Kerns does not dispute the Examiner's findings that Suzuki and Ina
describe foundry sand products meeting the limitations recited in the claims,
but for the presence ofECOSORB 303SG and vanillin. Nor does Kerns
dispute the Examiner's findings that Timcik renders obvious products such
as ECOSORB 303SG, and that Biddle describes vanillin, and that both
references describe the respective materials as being useful as components
of odor control compositions.
19 Referring to U.S. Patents 7,037,995 [corresponding to Timcik, cited by the
Examiner] and 7 ,306,666 [issued from a division of the application that
issued as the '995 patent].
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Rather, Kerns argues that the MSDS for ECOSORB 303SG is not
prior art. (Br. 18, 11. 2-7.) Kerns urges further that Timcik is directed to
reducing only noxious organic odors (id. at 17, 11. 11-12), whereas ammonia
is inorganic (id. at 11. 10-11 ). Kerns urges still further that Biddle and
"information which was publicly available prior to the filing date of the
provisional application informs that ECOSORB 303SG is also an effective
odor control agent for capturing fugitive ammonia in aqueous systems in
which liquid water is always present." (Id. at 18, 11. 12-14.) Therefore, in
Kerns's view, the combination of teachings is improper.
We find the Examiner's reliance on the ECOSORB 303SG MSDS as
evidence of a "universal fact" (Ans. 13, last para.) misplaced, as the
composition of a particular commercial product is not a "universal fact."20
On the present record, however, this reliance was not harmful. Timcik
discloses odor reducing additives comprising one or more essential oils, by
which Timcik means "natural extracts of various parts of aromatic plants and
trees." (Timcik 1 [0017].) Timcik provides an extensive list of examples
that includes the components listed in claim 113 (id. at 1-2 [0020]), as well
as somewhat more specific guidance in [0021] (reactants with acid and base
derived odors, odor reactive carbocations, etc.), "like dissolves like"
(id. at [0022]), and teaching that "essential oil components that reduce odors
such as ammonia, sulfur and mercaptans can be readily selected" (id.;
emphases added). Moreover, every component recited in claim 113, with
the possible exception of abies alba extract, is named in paragraphs [0023]-
20 A "universal fact" would be, for example, a property of a well-defined
material under well-defined conditions, such as the boiling point of water at
standard atmospheric pressure.
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[0026] as a preferred odor reducing additive. In any event, to the extent that
Kerns maintains that ECOSORB 303SG was a known material prior to the
filing date of the '992 Application, the MSDS merely indicates what were
the principle ingredients of that material.
In view of the specific teaching that ammonia odor-reducing additives
are readily selected, we find Kerns's unelaborated distinction between
inorganic and organic odorants without persuasive merit given Timcik's
general teachings regarding odorants (e.g., id. at [0004]-[0005]), which are,
by common definition, volatile. Similarly, while Biddle, as illustrated by the
title, is concerned with aqueous natural resinoid compositions, we find no
similar restriction of use in Timcik, which mentions vanilla
(Timcik 2 [0020], five lines from end; table at 2 [0023], 3d from last entry).
On balance, the weight of the evidence supports the Examiner's
conclusion that the use of odor-reducing compositions within the scope of
Timcik and Biddle would have been no more than the use of such
compounds for their intended purposes to reducing a known odor-problem
resulting from the use of foundry sands described by Suzuki or by Ina.
The evidence of unexpected results proffered by Kerns in the
Declaration by Kelley J. Kerns, attached as Exhibit 3 to the Brief, filed
during examination, is not reasonably commensurate with the scope of
exclusionary protection sought by the claims. The five samples (control, all
ECOSORB 303SG, all vanillin, and two samples equal amounts by weight
of 1: 1 ECOSORB 303SG:vanillin) amount to little more than a
demonstration that two odor-reduction compounds are more effective than a
single odor-reducing compound.
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C. Order
It is ORDERED that the rejection of claims 111-116 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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