Ex Parte Warkotsch et al

Patent Trial and Appeal Board

Nov 13, 2014

12571693 (P.T.A.B. Nov. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NADINE WARKOTSCH, BIRGIT MIDDELHAUVE,
MARC-STEFFEN SCHIEDEL, and MATTHIAS LÜKEN1
____________

Appeal 2013-001743
Application 12/571,693
Technology Center 1700
____________

Before JEFFREY T. SMITH, N. WHITNEY WILSON, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge, ABRAHAM.

Opinion Concurring filed by Administrative Patent Judge, SMITH.

ABRAHAM, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 18–20. We have jurisdiction pursuant
to 35 U.S.C. § 6(b). We affirm.

1 According to the Appeal Brief, the Real Party in Interest is Henkel AG and
Co. KGaA. App. Br. 3.
App
App

surfa
sanit
repro
eal 2013-0
lication 12

Appellan
ces, such
ary ware.
Claim 1
duced bel
18. An
(a) a
compoun
formula
compoun
and II w
selected
secondar
formulae

in
k
X
C2-C6-al
denotes
C1-C6-al
alkyl, am
01743
/571,693
ts’ claime
as wall and
Spec. ¶ 2
8 is the on
ow from th
agent for
compound
ds of the
II, and a p
d selected
ith a polym
from hydr
y amino g
I and II a
which R d
denotes a n
denotes C
kylene-SO
C1-C30 alk
kyloxy-C1
ino-C1-C
BACK
d inventio
floor tile
and Abstra
ly indepen
e Claims
treating a h
selected f
general fo
olymer tha
from the
eric subst
oxyl group
roups, wh
re,
enotes C1
umber gr
O-CH=CH
2-CH=CH
yl, C1-C30
-C30-alkyl
30-alkyl, m
2
GROUN
n relates t
s, kitchen
ct.
dent claim
Appendix
ard surfac
rom the gr
rmula I, co
t is obtain
compound
rate havin
s, primary
erein the c
-C12 alkyle
eater than
2, CO-C(C
2, or CO-N
haloalkyl,
, C1-C6-alk
ono- or di
D
o compoun
appliances
at issue o
(App. Br.
e, the age
oup consi
mpounds
ed by reac
s of gener
g function
amino gr
ompounds
ne;
0;
H3)=CH2
H-R1, wh
C1-C30 hy
ylcarbony
(C1-C6-alk
ds used to
, and cera
n appeal a
19):
nt compris
sting of
of the gen
ting a
al formula
al groups
oups, and
of the gen

, CO-O-ar
erein R1
droxyalky
loxy-C1-C
yl)amino-
treat hard
mic
nd is
ing
eral
e I
eral
yl,
l,
30-
C1-

Appeal 2013-001743
Application 12/571,693

3
C30-alkyl, ammonio-C1-C30-alkyl, polyoxyalkylene-C1-C30-
alkyl, polysiloxanyl-C1-C30-alkyl, (meth)acryloyloxy-C1-C30-
alkyl, sulfono-C1-C30-alkyl, phosphono-C1-C30-alkyl, di(C1-C6-
alkyl)phosphono-C1-C30-alkyl, phosphonato-C1-C30-alkyl,
di(C1-C6-alkyl)phosphonato-C1-C30-alkyl, or a saccharide
residue, wherein X has this meaning in the formula I only when
k denotes 1 or,
if k denotes a number greater than 1, X denotes
(i) the residue of a polyamine, onto which the
portion of the formula located between parentheses is
attached via (CO)NH groups, or
(ii) a polymeric skeleton, onto which the portion of
the formula located between parentheses is attached via
(CO), NH-C2-C6-alkylene-O(CO) or (CO)-O-C2-C6-
alkylene-O(CO)groups; or
(iii) a polymeric skeleton, onto which the portion
of the formula located between parentheses is attached
via (CO)-polysiloxanyl-C1-C30-alkyl groups;
(b) a surfactant; and
(c) optionally, water and, optionally, further conventional
constituents compatible with other components of surface
treatment or cleaning agents.

The Examiner maintains, and Appellants appeal, the final rejection of
claims 18–20 under 35 U.S.C. § 103 as unpatentable over Kirk (EP 0 634
486 A1, published Jan. 18, 1995) or Komatsu (WO 2006/005358 A1,
published Jan. 19, 2006), in view of Keul (WO 2005/058863 A1, published
June 30, 2005).2

2 United States Patent Application Publication No. 2007/0092656 A1,
published April 26, 2007, is a national stage application of the WO ’863
application, and has been used by the Examiner and Appellants as an
English language translation of WO ’863. We likewise use the ’656
publication as an English language translation of WO ’863, and all
Appeal 2013-001743
Application 12/571,693

4
Appellants do not separately argue dependent claims 19–20. See App.
Br. 5–10. Accordingly, claims 19–20 will stand or fall together with
independent claim 18.

OPINION

The Examiner finds that Komatsu teaches compositions containing
anti-soil and surface-treating agents, which are useful for treating hard
surfaces. Ans. 3. According to the Examiner, the Komatsu compositions
may include surfactants and organic solvents as required by claim 18. Id.
The Examiner acknowledges that Komatsu does not teach the use of the
specific reaction products3 or a composition containing the reaction products
recited in claim 18. The Examiner finds Keul describes protective coatings
formed on various surfaces comprising the claimed reaction product. Id. at
4. The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art to use a reaction product from Keul in the
composition taught by Komatsu because both Keul and Komatsu teach that
their respective compositions are useful for the same purpose, namely the
treatment of hard surfaces. Id. at 4–7 (citing In re Kerkhoven, 626 F.2d 846,
850 (CCPA 1980)).
Appellants do not contest that Keul discloses the reaction products
required in claim 18, or that these reaction products are used to clean hard
surfaces. See App. Br. 8; Spec. ¶ 12. Nor do Appellants contest that the

remaining citations to Keul in this opinion are made to the ’656 publication.
3 Appellants and the Examiner use the term “reaction products” to refer to
the required “compound” in claim 18, which encompasses the entire group
of compounds set forth in subpart (a) of claim 18. See, e.g., App. Br. 6, n.
1.
Appeal 2013-001743
Application 12/571,693

5
combination of Komatsu and Keul would provide a composition that
satisfies all of the limitations in claim 18. Instead, Appellants contend that
the Examiner improperly relied on In re Kerkhoven in rejecting claim 18
under 35 U.S.C. § 103. App. Br. 8. Specifically, Appellants argue that the
cited prior art references do not identify the equivalency of the compositions
disclosed therein, which is a condition that must be satisfied under the
holding in In re Kerkhoven. Id. (citing In re Ruff, 256 F.2d 590 (CCPA
1958)). Appellants further argue that the present facts are distinguishable
from those in In re Kerkhoven. Id. at 8–9 (citing Ex Parte Chudzik, 2010
WL 200395 (BPAI Jan. 4, 2010)).
We are not persuaded by Appellants’ arguments.
As stated in In re Kerkhoven,
It is prima facie obvious to combine two compositions each of
which is taught by the prior art to be useful for the same
purpose, in order to form a third composition which is to be
used for the very same purpose. . . . [T]he idea of combining
them flows logically from their having been individually taught
in the prior art.
In re Kerkhoven, 626 F.2d at 850 (internal citations omitted). Because
Komatsu and Keul disclose that their respective compositions are useful for
the same purpose, specifically treating hard surfaces (e.g., Komatsu 1–2;
Keul ¶ 60), we agree with the Examiner that the legal principle set forth in In
re Kerkhoven is applicable to the present facts, and find that the idea of
combining Komatsu and Keul flows logically from the disclosures in the
prior art. Accordingly, we find that the Examiner has established a prima
facie case of obviousness.
Appellants have not provided the necessary evidence on this record to
overcome the Examiner’s prima facie case. The holding in In re Ruff is not
Appeal 2013-001743
Application 12/571,693

6
applicable here because, as noted above, both Keul and Komatsu recognize
that their compositions are useful for the same purpose. Further, the present
facts are distinguishable from those in In re Chudzik, as we do not find the
combination of Komatsu and Keul to require “the mixing of nonobvious
polymers” to create a “new entity.” App Br. 8. In addition, although
Appellants contend that the claimed invention “unexpectedly improved hard
surface treatment performance,” (id. at 9), Appellants offer no persuasive
factual evidence of unexpected results.
For all of the foregoing reasons, we affirm the Examiner’s rejection of
claims 18–20 under 35 U.S.C. §103 over Komatsu in view of Keul.

CONCLUSION
The decision of the Examiner to reject claims 18–20 under 35 U.S.C.
§ 103 is affirmed.
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

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NADINE WARKOTSCH, BIRGIT MIDDELHAUVE,
MARC-STEFFEN SCHIEDEL, and MATTHIAS LÜKEN
____________

Appeal 2013-001743
Application 12/571,693
Technology Center 1700
____________

Before JEFFREY T. SMITH, N. WHITNEY WILSON, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

SMITH, Administrative Patent Judge, concurring.

I write separately to emphasize my view that the “real” issue
presented for review is:
Did the Examiner err in determining that the combined teachings of
Komatsu and Keul would have led one skilled in the art to an agent for
treating a hard surface comprising a compound formed from the reaction
product of components corresponding to formula I and II, a surfactant, and
optionally water and other components as required by the subject matter of
independent claims 18?
As the Specification makes clear, Keul describes modifying surfaces
by the application of the reaction product comprising cyclic carbonates and
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Application 12/571,693

2
ureas with polymers containing hydroxy or amino groups. Spec. ¶ 12; Keul
¶ 60. Keul discloses representative surfaces include ceramic, metal, and
plastic. Keul ¶ 60. Keul also discloses the prepared reaction product
polymers are useful as dispersants and (reactive) emulsifiers. Id. at ¶ 61.
Komatsu teaches copolymers suitable for use as anti-soiling agents and
surface-treating agents, as well as for use in hard surface cleaning
compositions. Komatsu 1. Komatsu discloses the compositions may
include any kind of known surfactant. Id. at 18–19. Thus, a person of
ordinary skill in the art following the teachings of Komatsu would have
reasonably expected that the reaction product from Keul would have been
suitable for use as a dispersant/emulsifier in the hard surface cleaning
compositions of Komatsu. “Obviousness does not require absolute
predictability of success . . . all that is required is a reasonable expectation
of success.” In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re
O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988)).
I join my colleagues in finding that Appellants have not revealed
harmful error in the appealed rejection, and I concur in the affirmance.

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