Ex Parte Ryther et al

Patent Trial and Appeal Board

Feb 21, 2017

12816016 (P.T.A.B. Feb. 21, 2017)

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.
12/816,016 06/15/2010 Robert J. Ryther P10686US00 - 2573USU1 2497
124330 7590 02/23/2017
McKee, Voorhees & Sease P.L.C. ATTN: Ecolab Inc
801 Grand Avenue
Suite 3200
Des Moines, IA 50309
EXAMINER
ASDJODI, MOHAMMADREZA
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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):
patatty@ipmvs.com
michelle. woods @ ipmvs. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT J. RYTHER and
WALTER D. CUMMINGS
Appeal 2016-001865
Application 12/816,0161
Technology Center 1700
Before JAMES C. HOUSEL, BRIAN D. RANGE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 27, 31, 39—48, and 50—53. We have jurisdiction.
35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Ecolab USA Inc.
Appeal Br. 1.
Appeal 2016-001865
Application 12/816,016
STATEMENT OF THE CASE
Appellants describe the invention as relating to a composition for
removing polymerized zero trans fat soils from, for example, food
processing equipment. Spec. 2:12—20; 4:7—11. Claim 27, reproduced below
with emphasis added to certain key recitations, is the only independent claim
on appeal and is illustrative of the claimed subject matter:
27. A high alkaline cleaning composition for removing
polymerized zero trans fat soil comprising;
(i) about 1 wt.% to about 20 wt.% alkaline wetting and
saponifying agent(s);
(ii) about 0.1 wt.% to about 15 wt.%
chelating/sequestering system;
(iii) about 0.5 wt.% to about 30 wt.% surface modifying-
threshold agent system comprising a silicate compound and a
polyacrylate additive;
(iv) about 0.01 wt.% to about 5 wt.% thickening agent;
(v) about 0.2 wt.% to about 15 wt.% cleaning agent
comprising a surfactant or surfactant system comprising an alkyl
polyglucoside;
wherein the silicate compound and the polyacrylate
additive are in a synergistic combination, wherein the ratio of
said surfactant or surfactant system to said silicate
compound is about 4:1 or about 1:10, and wherein the surface
modifying-threshold agent is selected from the group consisting
of polyacrylic acid or a derivative of polyacrylic acid including
acidic types, sodium salts, ammonium salts, amine salts and
alkali metal silicate;
wherein the alkaline wetting and saponifying agent(s) are
selected from the group consisting of alkali or alkaline earth
metal hydroxides, silicate salts, amines, alkanol amines,
phosphate salts, polyphosphate salts, carbonate salts, borate salts,
sodium hydroxide, potassium hydroxide, sodimn silicate, sodium
metasilicate, sodium orthosilicate, potassium silicate, potassium
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metasilicate, potassium orthosiiicate and combinations thereof;
and,
wherein the chelating/sequestering agent(s) are selected
from the group consisting of polyamino carboxylic acids, organic
acids with carboxylic acid and sulfrmic acid functionalities,
phosphates, polyphosphates, organophosphates, amino
phosphonates, homopolymeric carboxylates, copolymeric
carboxylates, sodium gluconate, sodium citrate, EDTA, NT A,
HEDTA, sodium tripolyphosphate, acrylic acid polymers,
methacrylic acid polymers, acrylic acid-methacrylic acid
copolymers, water-soluble salts of the said polymers, and
combinations thereof.
Appeal Br.2 35 (Claims App’x).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Klier et al.
(hereinafter “Klier”)
Gross et al.
(hereinafter “Gross”)
Underwood et al.
(hereinafter “Underwood”)
Ahmed et al.
(hereinafter “Ahmed”)
US 5,811,383
US 5,877,142
US 7,838,484 B2
US 2006/0035808 Al
Sep. 22, 1998
Mar. 2, 1999
Nov. 23,2010
Feb. 16, 2006
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 27, 39—45, and 50-53 under 35 U.S.C. § 103 as
unpatentable over Underwood in view of Gross. Ans. 2.
2 In this decision, we refer to the Final Office Action mailed January 29,
2015 (“Final Act.”), the Appeal Brief filed June 24, 2015 (“Appeal Br.”), the
Examiner’s Answer mailed October 30, 2015 (“Ans.”), and the Reply Brief
filed November 30, 2015 (“Reply Br.”).
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Rejection 2. Claim 31 under 35 U.S.C. § 103 as unpatentable over
Underwood and Gross further in view of Klier. Id. at 5.
Rejection 3. Claims 46-48 under 35 U.S.C. § 103 as unpatentable
over Underwood and Gross further in view of Ahmed. Id.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by appellants and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellants’ contentions,
we are not persuaded that Appellants identify reversible error. Thus, we
affirm the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Rejection L claims 27 and 39-45. Appellants do not separately argue
claims 27 and 39-45. We therefore limit our discussion to claim 27.
Claims 39-45 (which each depend from claim 27) stand or fall with that
claim. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
The Examiner finds that Underwood teaches (i) alkaline wetting and
saponifying agent(s), (ii) a chelating/sequestering system, (iii) surface
modifying threshold agent comprising a silicate compound and a
polyacrylate additive, (iv) thickening agent, and (v) surfactant or surfactant
system as recited by claim 27. Ans. 2 (providing citations to Underwood).
The Examiner finds that Underwood teaches ranges for each of (i)—(iii) and
(v) that overlap the ranges recited by claim 27. Id. The Examiner also finds
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that Underwood’s ranges of (v) surfactant to (iii) silicate compound result in
a range of ratios of surfactant to silicate that overlap the claimed ratios of 4:1
and 1:10. Id. Based on the Examiner’s findings, the maximum such ratio
disclosed by Underwood would be 30% surfactant and 3% silicate (i.e., a
10:1 ratio) and the minimum such ratio would be 2% surfactant and 24%
silicate (i.e., a 1:12 ratio). Appellants’ ratios fall within the range of
acceptable ratios taught by Underwood (i.e., both 4:1 and 1:10 fall between
10:1 and 1:12).
The Examiner finds that Underwood does not expressly teach
thickening agent concentration but that Gross teaches a fatty soil cleaning
composition where xantham gum thickening agent comprises 0.01—3%.
Ans. 3 (providing citations to Gross). The Examiner finds that Gross and
Underwood both relate to surface cleaning compositions. The Examiner
concludes it would have been obvious to a person of ordinary skill to
provide the fat cleaning composition with xantham gum in order to enhance
the cleaning properties of the Underwood composition as taught by Gross.
Id. A preponderance of the evidence supports the Examiner’s findings and
conclusion.
Appellants argue, based on claim 27’s recitation of “the ratio of said
surfactant or surfactant system to said silicate compound is about 4:1 or
about 1:10” that “[t]he cited references do not teach or discuss the
importance of the ratio relationship of these two components.” Appeal
Br. 14; see also Reply Br. 1^4. Appellants do not dispute, however, the
Examiner’s finding that Underwood teaches ranges of surfactant and silicate
compound that include many points within the range reflecting the claimed
ratios. Ans. 7. While Appellants are correct that claim 27’s ratio recitation
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permits only specific values for percent silicate compound once percent
surfactant is chosen, Underwood nonetheless teaches ranges that overlap
with these possibilities.
Our reviewing court has held that “even a slight overlap in range
establishes a prima facie case of obviousness.” See In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003); see also, e.g.. In re Woodruff, 919 F.2d at 1577
(concluding that claimed invention was rendered obvious by prior art
reference whose disclosed range (“about 1—5%” carbon monoxide) abutted
claimed range (“more than 5% to 25%” carbon monoxide)). Thus, the
Examiner’s findings based on Underwood here are sufficient to initially
establish obviousness. Cf In re Waymouth, 499 F.2d 1273, 1275—76 (CCPA
1974) (considering unexpected results and thereby suggesting that a prima
facie case was established where prior art reference did not specifically
disclose claimed ratio but ratios could be calculated from disclosure).
Once prima facie obviousness is established, the burden shifts to
Appellants to rebut. Appellants may overcome a prima facie case of
obviousness by establishing “that the [claimed] range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range.” In re Peterson, 315 F.3d at 1330 (citation and internal
quotes omitted). Whether an invention has produced unexpected results is a
question of fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). A
party asserting unexpected results as evidence of nonobviousness has the
burden of proving that the results are unexpected. In re Geisler, 116 F.3d
1465, 1469-70 (Fed. Cir. 1997). Such burden requires Appellants to proffer
factual evidence that actually shows unexpected results relative to the closest
prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir.
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1991), and that is reasonably commensurate in scope with the protection
sought by claim 1 on appeal, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir.
1983). “[I]t is not enough to show that results are obtained which differ
from those obtained in the prior art: that difference must be shown to be an
unexpected difference.” In reKlosak, 455 F.2d 1077, 1080 (CCPA 1972).
Here, Appellants submit that the Examples in the Specification
provide a teaching of the criticality of the 4:1 and 1:10 ratios. Appeal Br.
21. Appellants, however, cite pages 26 to 40 of the Specification without
providing any explanation for how these pages provide such a teaching.
Appellants’ argument thus amounts to a mere pleading. A mere pleading
unsupported by proof or showing of facts is inadequate. In re Borkowski,
505 F.2d 713,718 (CCPA 1974). We need not attempt to independently
determine the comparisons on which the Appellants rely upon or the
significance thereof. Cf. In re Baxter TravenolLabs., 952 F.2d 388, 391
(Fed. Cir. 1991) (“It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.”) (Emphasis added).
Moreover, after reviewing the cited portions of the Specification, we
do not discern any evidence that the 4:1 or 1:10 ratio provides superior
results over other possible ratios such as 3:1, 5:1, 1:9, or 1:11. Nor do we
discern evidence that results from these ratios were unexpected.
Accordingly, Appellants arguments concerning criticality or unexpected
results based on claim 27 ’s recited ratios do not adequately rebut the case for
obviousness in this instance.
Appellants cite Ex parte Cropper, Appeal 2011-003885 (BPAI Oct.
19, 2011), for the proposition that references teaching overlapping weight
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percentages do not also teach a particular claimed ratio. Appeal Br. 23; see
also Reply Br. 3. Ex parte Cropper, however, is not precedential.
Moreover, in Ex parte Cropper, the Board found that appellants established
“that the claimed ratio of segregation inhibitor to gallant yields better results
than other ratios.” Ex parte Cropper at 8. Thus, Ex parte Cropper presents
a scenario where appellants established criticality of the claimed ratio. As
explained above, Appellants have not made the same showing.
Appellants also, although using different wording, appear to argue
that the cited references would not lead a person of skill to claim 27 ’s
recitation of “wherein the silicate compound and the polyacrylate additive
are in a synergistic combination.” Appeal Br. 15. The Examiner, however,
finds that this characteristic will necessarily result from the prior art’s
teaching of the same ingredients in the same amounts. Ans. 8—9. The
Examiner’s reasoning is correct, and Appellants provide no evidence to the
contrary. See In re Best, 562 F.2d 1252, 1256 (CCPA 1977) (“Where, as
here, the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed
product.”); see also Merck & Co., Inc. v. Bio craft Lab., Inc., 874 F.2d 804,
808 (Fed. Cir. 1989) (“when an inventor tries to distinguish his claims from
the prior art by introducing evidence of unexpected synergistic properties,
the evidence should at least demonstrate an effect greater than the sum of the
several effects taken separately.” (internal quotes omitted)).
Appellants argue for the first time in reply that Underwood does not
disclose a thickener. Reply Br. 4. We need not consider this argument
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because it was not raised in the initial brief and is not responsive to an
Argument raised in the Answer. 37 C.F.R. § 41.41(b)(2) (2015). Moreover,
the Examiner finds (in the Final Office Action) that Underwood teaches
“thickening agents such as polycarboxylates, polyacrylic acid and
derivatives (as similarly disclosed by applicant; 0055-56) and glycerin.”
Final Act. 2; see also Ans. 2, 10. Appellants do not persuasively dispute this
finding. That Underwood labels these same agents as a chelant or solvent
(Reply Br. 4) does not change the agents’ composition or nature.
Because Appellants’ arguments do not establish reversible error, we
sustain the Examiner’s rejection of claims 27 and 39-45.
Rejection 1, claim 50. Appellants do not specifically indicate that
they are arguing claim 50 separately, but Appellants argue that “Gross et al.
fail[s] to disclose and/or suggest the use of xantham gum with a cleaning
composition comprising a surface modifying threshold agent system as
claimed in Appellants’ invention.” Appeal Br. 25; see also Reply Br. 4—5.
Claim 50 is the only claim on appeal that recites xantham gum. Because the
Examiner responds to this argument substantively (Ans. 10), it appears the
Examiner understood the Appellants as making an argument with respect to
claim 50. Thus, under these particular circumstances, we are willing to
consider Appellants’ argument concerning xantham gum as a separate
argument directed at claim 50.
The Examiner explains that Underwood teaches thickeners such as
polyacrylic acid derivatives and glycerol. Ans. 10 (citing Underwood). The
Examiner also finds that substituting xantham gum as a different thickener
would be a routine matter in the art. Id. Appellants do not persuasively
rebut this finding. We discern no error in the Examiner’s conclusion that “it
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would have been obvious to a person of ordinary skill in the art to also
provide the fat cleaning composition [of Underwood] with xantham gum in
order to enhance the cleaning properties of the composition as taught by
Gross et al. . . Ans. 3. SeeKSR Inti v. Teleflex Inc., 550 U.S. 398, 417
(2007) (“when a patent simply arranges old elements with each performing
the same function it had been known to perform and yields no more than one
would expect from such an arrangement, the combination is obvious”)
(internal quotes and citation omitted). We thus sustain the Examiner’s
rejection of claim 50.
Rejection 1. claims 51—53. Appellants argue claims 51 and 53
together. Appeal Br. 24. Appellants present no separate argument for
claim 52, and claim 52 depends from claim 51. We therefore treat
claims 51—53 as a group and focus on claim 51. Claims 52 and 53 stand or
fall with claim 51. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Claim 51 recites “[t]he composition of claim 27 wherein the
composition is used to remove a polymerized zero trans fat soil from a soiled
surface.” Appeal Br. 37 (Claims App’x). Appellants argue that “[t]he
combination of references further lacks teaching and/or motivation to arrive
at the claimed composition for penetrating a polymerized zero trans fat soil,
as claimed in claims 51 and 53.” Appeal Br. 24. Appellants, however, do
not dispute the Examiner’s finding that “Underwood’s composition is
designed to remove oily soil from surfaces . . . .” Ans. 4. Moreover, as
explained above, the composition suggested by the combination of
Underwood and Gross as proposed by the Examiner would have the same
effects and physical properties because it would have the same ingredients.
Id. Appellants argue that Underwood also teaches other possibilities that
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may not have these properties, but “all disclosures of the prior art. . . must
be considered.” In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).
To the extent Appellants’ remaining arguments regarding claim 51
(Appeal Br. 24) are substantively the same as arguments raised as to
claim 27, those arguments fail to identify Examiner error for the reasons
explained above. We thus sustain the Examiner’s rejection of claims 51—53.
Rejection 2, claim 31. The Examiner rejects claim 31 as obvious over
Underwood and Gross further in view of Klier. Ans. 5. Claim 31 recites
“[t]he composition of claim 27 wherein the composition is emulsified at a
usable cleaning solution concentration or in a concentrated form that can be
diluted to a usable cleaning solution concentration.” Appeal Br. 26—28
(Claims App’x). To the extent Appellants’ arguments regarding claim 31
(Appeal Br. 24) are substantively the same as arguments raised as to
claim 27, those arguments fail to identify Examiner error for the reasons
explained above.
Appellants also argue that Klier does not suggest using an emulsion
for a “high alkaline cleaning composition specifically suitable for the
removal of polymerized zero trans fat soils with a surface modifying
threshold agent according to Appellants’ invention.” Appeal Br. 27. The
Examiner’s rejection, however, is based on the combination of Underwood,
Gross, and Keller. “Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986); see also Ans. 11.
The Examiner finds that Klier and Underwood are analogous art
“from the same field of endeavor, that of surface cleaning compositions” and
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concludes that “it would have been obvious to a person of ordinary skill in
the art to also provide the fat cleaning composition of Underwood in
emulsion state to enhance the cleaning efficacy of the composition as taught
by Klier et al.” Ans. 5 (providing citations to Klier). Appellants do not
persuasively dispute the Examiner’s findings or conclusion, and the findings
and conclusion are supported by a preponderance of the evidence. We thus
sustain the Examiner’s rejection of claim 31.
Rejection 3, claims 46-48. The Examiner rejects claims 46-48 as
obvious over Underwood and Gross further in view of Ahmed. Ans. 5.
Appellants argue claims 46-48 as a group. Appeal Br. 28—32. We therefore
focus on claim 46. Claims 47 and 48. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Claim 46 recites “[t]he composition of claim 45 wherein the cleaning
booster is hydrogen peroxide (H2O2), percarboxylic acid, a persulphate, a
perborate, a percarbonate or combinations thereof.” Appeal Br. 37 (Claims
App’x). Again, to the extent Appellants’ arguments regarding claim 46 are
substantively the same as arguments raised as to claim 27, those arguments
fail to identify Examiner error for the reasons explained above.
Appellants also argue that Ahmed’s detergent composition is acidic in
contrast to Appellants’ highly alkaline composition and that, because of this
difference, the references “do[] not provide any rationale and/or motivation
for success . . . .” Appeal Br. 31. The Examiner, however, cites Ahmed
merely to show that the Underwood/Gross composition could comprise a
cleaning booster. Ans. 11. The Examiner finds that Ahmed “teaches a hard
surface cleaning composition (i.e. removing oily soils) comprising cleaning
boosters such as hydrogen peroxide and sodium bi-sulfite . . . .” Id. at 6
(providing citations to Ahmed). The Examiner also finds that Ahmed and
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Underwood are analogous art from the same field of surface cleaning
compositions. Id. The Examiner concludes “it would have been obvious to
a person of ordinary skill in the art to add the booster ingredients of Ahmed
et al. to fat cleaning composition of Underwood with the motivation of
enhancing the cleaning efficacy of the composition, as taught by Ahmed et
al.” Id. Appellants do not persuasively dispute these findings. Appellants
do not, for example, explain why the different pH of Ahmed and the claimed
invention would cause a person of skill to not reasonably expect success in
adding Ahmed’s boosters. Rather, the evidence supports that Ahmed’s
booster ingredients would predictably improve the Underwood/Gross
combination in the same manner they improve Underwood. KSR Int 7 Inc.,
550 U.S. at 417. We therefore sustain the Examiner’s rejection of claims
46-48.
DECISION
For the above reasons, we affirm the Examiner’s rejection of
claims 27, 31, 39-48, and 50-53.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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