Ex Parte Minsek et al

Board of Patent Appeals and Interferences

Mar 14, 2012

10389214 (B.P.A.I. Mar. 14, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/389,214 03/14/2003 David W. Minsek 020732-90.629 2638
24239 7590 03/14/2012
MOORE & VAN ALLEN PLLC
P.O. BOX 13706
Research Triangle Park, NC 27709
EXAMINER
CHACKO DAVIS, DABORAH
ART UNIT PAPER NUMBER
1722
MAIL DATE DELIVERY MODE
03/14/2012 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
____________________

Ex parte DAVID W. MINSEK, MELISSA K. RATH, DAVID
DANIEL BERNHARD, and THOMAS H. BAUM
____________________

Appeal 2011-006557
Application 10/389,214
Technology Center 1700
____________________

Before FRED E. MCKELVEY, RICHARD TORCZON, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006557
Application 10/389,214

2
Appellants appeal under 35 U.S.C. § 134 from a rejection of
claims 4-6, 9, 12-17, 33-39, and 41-48. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
DISCUSSION
The Examiner rejected claims 4-6, 9, 12-17, 33-39, and 41-48 under
35 U.S.C. § 103(a) as unpatentable over Skee (US 6,599,370 B2, issued July
29, 2003) in view of Johnson (US 3,447,939, issued June 3, 1969).
(Examiner’s Answer, dated October 27, 2010, “Ans.” 3-5, 6-7.)
Specifically, the Examiner found that the stabilizing agents disclosed
in Skee’s cleaning solutions are oxidants because (1) Skee discloses that
“the stabilizing agent in the cleaning composition can be an oxidizing agent
such as hydrogen peroxide” and (2) Skee teaches that the best stabilizing
agents are not reducing agents. (Ans. 3-4, 6-7, 11.) Thus, because the
Examiner also found that Johnson discloses amine N-oxides, which are
identified by Appellants as oxidants (Spec. [0012]), the Examiner concluded
that it would have been obvious to one of ordinary skill in the art to have
substituted amine-N-oxides as disclosed in Johnson for the stabilizing agents
disclosed in Skee to arrive at the claimed cleaning solutions comprising
“amine-N-oxide” or “N-methylmorpholine-N-oxide.” (Ans. 5, 7.)
However, we agree with Appellants that Skee’s stabilizing agents are
not oxidizing agents per se, but rather compounds having at least one pKa in
the range of 10-13. (Appeal Brief filed August 2, 2010, hereinafter “App.
Br.” 7.) Indeed, Skee discloses that the defining characteristic of the bath
stabilizing agents is that each possesses at least one pKa in the range of
10-13. (Col. 7, ll. 34-39.) The Examiner has not provided sufficient
Appeal 2011-006557
Application 10/389,214

3
evidence to show that Johnson’s amine-N-oxides possess the pKa values
required in Skee. Accordingly, on this record, one skilled in the art would
have no reason to use the Johnson oxides as the stabilizing agent required by
Skee.
Further, while some of the stabilizing agents disclosed in Skee may be
oxidants, such does not provide a basis for selecting any oxidant as a
suitable stabilizing agent in the absence of an express disclosure in Skee or
recognition in the art that the stabilizing agents are oxidizing in nature. In
this regard, a disclosure that preferred bath stabilizing agents are not
reducing agents is not tantamount to a teaching to employ an oxidant as a
stabilizing agent. Therefore, the Examiner did not have an adequate basis
for concluding that one of ordinary skill in the art would have chosen an
amine-N-oxide as a stabilizing agent in Skee.

DECISION
The decision of the Examiner rejecting claims 4-6, 9, 12-17, 33-39,
and 41-48 is reversed.
REVERSED

rvb