Ex parte Mattox

Board of Patent Appeals and Interferences

Jun 29, 1998

08006021 (B.P.A.I. Jun. 29, 1998)

Application for patent filed January 15, 1993.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JOHN R. MATTOX
________________
Appeal No. 94-4487
Application No. 08/006,0211
________________
ON BRIEF
________________
Before KIMLIN, WEIFFENBACH and WALTZ, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-16,
all the claims in the present application. Claim 1 is
illustrative:
1. A method of preparing a stable, dilute solution of active
ingredient consisting of 5-chloro-2-methyl-3-isothiazolone and,
optionally, one or more additional 3-isothiazolone compounds, the
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Application No. 08/006,021
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concentration of said active ingredient in said solution being
about 0.5 to 5% by weight based on solution, comprising
introducing about 0.1 to 5% by weight based on said solution, of
a water soluble, non-chelated ferric salt as the stabilizer.
The examiner relies upon the following references as
evidence of obviousness:
Miller et al. (Miller I) 3,870,795 Mar. 11, 1975
Miller et al. (Miller II) 4,067,878 Jan. 10, 1978
Petigara 4,310,590 Jan. 12, 1982
Law et al. (Law) 5,160,527 Nov. 3, 1992
Appellant's claimed invention is directed to a method of
preparing a stable, dilute solution of 5-chloro-2-methyl-3-
isothiazolone (CMI) comprising adding a water soluble, non-
chelated ferric salt as the stabilizer. Appealed claims 9-16 are
directed to a composition comprising the stabilized, dilute
solution.
Appellant presents separate arguments for patentability for
claims 2-6 and 14. Accordingly, claims 7-13, 15 and 16 stand or
fall together.
Appealed claims 1-16 stand rejected under 35 U.S.C. § 112,
first paragraph. In addition, claims 1, 5, 6, 8-10, 15 and 16
stand rejected under 35 U.S.C. § 103 as being unpatentable over
Law, Miller I, Miller II and Petigara.
We have carefully reviewed the respective positions advanced
by appellant and the examiner. In so doing, we will not sustain
the examiner's rejection under 35 U.S.C. § 112, first paragraph.
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However, we fully concur with the examiner that the subject
matter of claims 1, 5, 6, 8-10, 15 and 16 would have been obvious
to one of ordinary skill in the art within the meaning of
35 U.S.C. § 103 in view of the applied prior art. Accordingly,
we will sustain the examiner's § 103 rejection for essentially
those reasons expressed in the Answer.
We consider first the examiner's rejection under 35 U.S.C.
§ 112, first paragraph. We do not agree with the examiner that
the amendment to the specification changing "dilute aqueous
solution" to "dilute solution" introduces new matter. Rather, we
agree with appellant that one of ordinary skill in the art, upon
reading the entirety of the original specification, would readily
understand that the amended language "dilute solution" refers to
an aqueous solution.
We also do not concur with the examiner that amending the
language "consisting essentially of" at pages 3 and 4 of the
specification to read "comprising" is new matter. The original
specification, at page 3, lines 28-29, discloses that the object
of the invention involves a stabilization method "comprising
introducing about 0.1 to 5% by weight based on said solution, of
a ferric salt." The term "comprising" provides original
descriptive support for the amendment inasmuch as appellant's
inventive method "comprises" introducing a ferric salt into a
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dilute solution. Also, it is evident from the original
specification that the composition disclosed at page 3, lines
30-34, may also comprise an acid and an oxidant.
The examiner has also found that the appealed claims are not
enabled by the specification insofar as the claims encompass a
ferric salt of any anion, whereas the specification exemplifies
only three specific anions and the prior art discloses that metal
salts other than nitrates are ineffective. However, as pointed
out by appellant, the present specification teaches that six
specific ferric salts are effective, and it is our view that one
of ordinary skill in the art would not have to resort to undue
experimentation to determine which, if any, ferric salts are
ineffective. It must be borne in mind that it is not the
function of the claims to specifically exclude possible
inoperable substances. In re Dinh-Nguyen, 492 F.2d 856, 858-59,
181 USPQ 46, 48 (CCPA 1974); In re Anderson, 471 F.2d 1237, 1242,
176 USPQ 331, 334-35 (CCPA 1973).
We now turn to the examiner's rejection under 35 U.S.C.
§ 103. We fully concur with the examiner that the disclosures of
Law, Miller I, Miller II and Petigara evidence the prima facie
obviousness of stabilizing a dilute solution of CMI by
incorporating a water soluble, non-chelated ferric salt. Law
teaches the use of water soluble ferric salts to stabilize dilute
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solutions of CMI (column 2, line 36; column 3, lines 49 and 50;
column 4, line 18 and 46-60). We simply do not understand
appellant's argument that "Law differs from the invention in that
it does not teach water-soluble, non-chelated ferric salts as the
stabilizer" (page 5 of Brief). As for appellant's argument that
Law does not teach or suggest using the disclosed stabilizers for
dilute solutions, we note that Law expressly teaches that at high
levels of dilution of the isothiazolone the ratio of stabilizer
to isothiazolone can range from about 1:7 to about 50:1 (column
4, lines 52-56). Also, see column 5, lines 40 et seq..
As explained by the examiner, Miller also discloses the use
of ferric salts, such as ferric nitrate, to stabilize solutions
of 3-isothiazolones. While appellant contends that Miller I and
II teach the stabilization of concentrates, not dilute solutions,
the examiner has properly noted that the Miller references
provide no disclosure that ferric nitrate stabilizes only
concentrated solutions of isothiazolones. Indeed, the Miller
patents disclose that "the amount of metal nitrate or nitrite
needed to stabilize the solution will be partly dependent on the
solvent, the isothiazolone and its concentration . . ." (column
3, lines 33-36 of Miller II, emphasis added). We agree with the
examiner that based on the disclosures of the Miller patents one
of ordinary skill in the art would have found it prima facie
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obvious to select a water soluble, non-chelated ferric salt as a
stabilizer for a dilute solution of CMI, as presently claimed.
Also, as noted by the examiner, Miller II exemplifies the
stabilization of a dilute non-aqueous solution.
Petigara also discloses the employment of ferric nitrate to
stabilize dilute solutions of 3-isothiazolones. See column 3,
line 6, for the disclosure of ferric nitrate and lines 22-27 for
the teaching that the amount of metal nitrate needed to stabilize
the solution is partly dependent on the concentration of the
isothiazolone. Also, as pointed out by the examiner, dilute
solutions of the 3-isothiazolone are taught in the sentence
bridging columns 4 and 5.
As for separately argued claim 5, although appellant states
at page 7 of the Brief that "ferric chloride is so surprising as
a stabilizer," claim 5 encompasses the use of ferric nitrate
which is specifically disclosed in the cited references.
Regarding separately argued claim 6, we agree with the examiner
that it would have been obvious for one of ordinary skill in the
art to prepare the dilute solutions from commercially available
concentrates containing magnesium salts (see Miller II at column
3, line 19 and Law at column 5, line 63 for the disclosure of
magnesium salts).
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Appellant cites EXAMPLE 3 of the present specification to
demonstrate that, contrary to the teachings of the prior art,
salts of magnesium, nickel, zinc, manganese, sodium and calcium
do not stabilize dilute solutions of CMI, whereas the ferric salt
does. However, the relevant issue is whether, based on the
teachings of the prior art, the claimed invention utilizing
ferric salt as a stabilizer would have been unobvious to one of
ordinary skill in the art. Manifestly, the applied prior art
teaches the use of the claimed ferric salt as a stabilizer in a
dilute solution, and EXAMPLE 3 does not evidence unexpected
results by demonstrating that the claimed ferric salt operates as
taught by the prior art. While appellant's specification data
may be unexpected to the extent that it demonstrates certain
salts are ineffective, this is not relevant to the claimed
subject matter.
In conclusion, based on the foregoing, the examiner's
rejection under 35 U.S.C. § 112, first paragraph, is reversed.
The examiner's rejection under 35 U.S.C. § 103 is affirmed. The
examiner's decision is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Appeal No. 94-4487
Application No. 08/006,021
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EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
CAMERON WEIFFENBACH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Appeal No. 94-4487
Application No. 08/006,021
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Michael B. Fein
Rohm and Haas Co.
Independence Mall West
Philadelphia, PA 19105