Geoffrey A. Brown et al.

Patent Trials and Appeals Board

Jan 17, 2020

14018039 - (D) (P.T.A.B. Jan. 17, 2020)

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.
14/018,039 09/04/2013 Geoffrey A. Brown 44551 6414
144982 7590 01/17/2020
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
MCCLAIN-COLEMAN, TYNESHA L.
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
01/17/2020 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):
uspatents@hoveywilliams.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEOFFREY A. BROWN and JOSHUA M. SHIPMAN
____________

Appeal 2019-000002
Application 14/018,039
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 8–32.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Compass Minerals America Inc. as
the real party in interest. Appeal Brief filed March 28, 2018 (“Appeal Br.”)
at 4.
2 Non-Final Office Action entered May 17, 2017 (“Office Act.”) at 1.
Appeal 2019-000002
Application 14/018,039

2
CLAIMED SUBJECT MATTER
Appellant claims a free-flowing, solid salt composition, and a method
of preventing or inhibiting caking of solid inorganic salt granules. Appeal
Br. 6–7. Independent claims 8 and 25 illustrate the subject matter on appeal,
and are reproduced below with emphasis added to highlight contested
subject matter:
8. A free-flowing, solid salt composition comprising:
an inorganic salt;
an anticaking agent for inhibiting or preventing caking of
inorganic salt granules, said anticaking agent comprising
a coordination complex of iron and a salt anion of an
organic acid, wherein said salt anion is selected from the
group consisting of malates, polyacrylates,
diphosphonates, and mixtures thereof; and
wherein said solid salt composition is resistant to caking.

25. A method of preventing or inhibiting caking of solid
inorganic salt granules, said method comprising:
providing an anticaking agent dispersed or dissolved in a
solvent system, said anticaking agent comprising a
coordination complex of iron and a salt anion of an
organic acid, wherein said salt anion is selected from the
group consisting of malates, polyacrylates,
diphosphonates, and mixtures thereof; and
applying said anticaking agent to said inorganic salt granules to
yield a solid salt composition comprising said anti caking
agent and a quantity of treated inorganic salt granules,
wherein said solid salt composition is resistant to caking.

Appeal Br. 23, 25 (Claims Appendix) (emphasis added).

REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered July 30, 2018 (“Ans.”):
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I. Claims 8–10, 12–25, and 30–32 under 35 U.S.C. § 103(a) as
unpatentable over Koefod3 in view of Thwater;4
II. Claims 26 and 29 under 35 U.S.C. § 103(a) as unpatentable
over Koefod in view of Thwater and Liang;5 and
III. Claims 11 and 26–28 under 35 U.S.C. § 103(a) as unpatentable
over Koefod in view of Thwater and Lum.6

FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejections of
claims 8–32 under 35 U.S.C. § 103(a), generally for reasons set forth in the
Appeal and Reply Briefs, and below.
Independent claim 8 requires the recited solid salt composition to
include, in part, an anticaking agent comprising a coordination complex of
iron and a salt anion of an organic acid selected from a malate, polyacrylate,
diphosphonate, and mixtures thereof. Independent claim 25 requires the
recited method of preventing or inhibiting caking of solid inorganic salt
granules to comprise, in part, providing an anticaking agent comprising a
coordination complex of iron and a salt anion of an organic acid selected
from a malate, polyacrylate, diphosphonate, and mixtures thereof.

3 Koefod, WO 2011/044135 A1, published April 14, 2011.
4 Thwater, HEDP, Shandon Taihe Water Treatment Co., Ltd.,
http://web.archive.org/web/20080309093937/http://www.thwater.net/01-
HEDP.htm, 4/29/2015.
5 Liang et al., US 2006/0094637 A1, published May 4, 2006.
6 Lum, US 3,790,610, issued February 5, 1974.
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The Examiner finds that Koefod discloses a solid salt composition
comprising an anticaking agent for inhibiting or preventing caking of
inorganic salt granules. Office Act. 3 (citing Koefod Abstr., ¶¶ 5, 8, 29).
The Examiner finds that Koefod does not disclose that the anticaking agent
comprises a coordination complex of iron and a salt anion of an organic acid
selected from a malate, polyacrylate, diphosphonate, and mixtures thereof.
Office Act. 3. The Examiner finds, however, that Koefod discloses
incorporating a corrosion inhibitor additive, such as a phosphonate, into
Koefod’s solid salt composition. Office Act. 4 (citing Koefod ¶¶ 5, 8, 19,
28, and 30).
The Examiner finds that Thwater discloses a coordination complex of
iron and a diphosphonate that is “effective as a corrosion inhibitor” and “is
suitable for usage in winter and freezing districts.” Office Act. 4 (citing
Thwater pg. 1).
In view of this disclosure in Thwater, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art at the time of
Appellant’s invention “to select a coordination complex of iron and
diphosphonates [as disclosed in Thwater] in the method of Koefod based in
its suitability for its intended purpose [as a corrosion inhibitor].” Office Act.
4 (citing Koefod ¶¶ 5, 8, 19, 28, and 30).
On the record before us, however, the Examiner does not establish
that the relied-upon disclosures in Koefod and Thwater would have
suggested an anticaking agent for a solid salt composition comprising a
coordination complex of iron and a salt anion of an organic acid, for reasons
express by Appellant (Appeal Br. 16), and discussed below.
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Koefod discloses a deicing composition comprising a solid deicing
salt, an aqueous solution of a deicing salt, and a corrosion inhibitor additive,
such as an organic phosphonate. Koefod ¶¶ 4, 5, 8, 19, and 30.
Thwater discloses that 1-hydroxy ethylidene-1,1-diphosphonic acid
(HEDP) is “an organophosphoric acid corrosion [and scale] inhibitor” used
in circulating cool water systems, and in oil field and low-pressure boilers in
the electrical power and fertilizer fields, the chemical industry, and
metallurgy. Thwater pg. 1. Thwater discloses that HEDP “can chelate with
Fe, Cu, and Zn ions to form stable chelating compounds . . . , can dissolve
the oxidized materials on these metals’ surfaces,” and “can react with metal
ions in water system[s] to form hexa-element chelating complex,” and,
therefore, “shows excellent scale and corrosion inhibition effects.” Id.
As Appellant points out (Appeal Br. 16), Thwater thus discloses that
HEDP—when not complexed with a metal ion—functions as a corrosion
inhibitor. We find no disclosure in Thwater indicating that HEDP functions
as a corrosion inhibitor when complexed with a metal ion. The Examiner
does not identify any such disclosure in Thwater, or provide any other
evidence, which indicates or would have suggested that metal-complexed
HEDP functions to inhibit corrosion.
In fact, Appellant filed a Declaration of inventor Geoffrey Brown with
the U.S. Patent and Trademark Office on April 17, 2017, which indicates
that one of ordinary skill in the art would have understood that an iron
complex of HEDP would not function to prevent corrosion. Brown Dec. ¶ 6.
The Brown Declaration explains that Thwater “teaches that un-complexed
HEDP can be added to iron surfaces, and the HEDP will then complex with
iron ions on the surface to inhibit corrosion. However, already-complexed
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HEDP would not have the same effect,” which is why HEDP “promotes that
it has low iron connect (i.e. 10 ppm max in the liquid formulation).” Brown
Dec. ¶ 4.
The Examiner does not sufficiently address these statements in the
Brown Declaration. Rather, the Examiner responds to the Declaration by
indicating that “Thwater teaches it is know that HEDP can be used in
corrosion inhibition, can chelate with Fe, and forms a coordination complex
with metal ions . . . one of ordinary skill in the art would combine the
complex with an inorganic salt to form the claimed product since Koefod
discloses the incorporation of a corrosion inhibitor additive.” Final Office
Action entered May 17, 2017 at 10–11 (emphasis added). These statements
by the Examiner do not directly address the argument made in the Brown
Declaration, and do not explain why Thwater’s disclosure that HEDP—
when not complexed with iron—can be used as a corrosion inhibitor,
somehow negates or undermines the Declaration’s indication that one of
ordinary skill in the art would have understood that an iron-HEDP complex
would not function as a corrosion inhibitor. The Examiner, therefore, fails
to give sufficient evidentiary weight to the Brown Declaration.
In view of Koefod’s disclosure that suitable corrosion inhibitors for
use in Koefod’s deicing composition include organic phosphonates, and
Thwater’s disclosure that the organophosphoric acid HEDP functions as a
corrosion inhibitor, the Examiner does not provide a reason with rational
underpinning that explains why one of ordinary skill in the art would have
used an HEDP metal complex—rather than HEDP in un-complexed form—
as a corrosion inhibitor in Koefod’s deicing composition. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on obviousness
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grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”)
Consequently, the Examiner does not establish that the combined
disclosures of Koefod and Thwater would have suggested an anticaking
agent for a solid salt composition comprising a coordination complex of iron
and a salt anion of an organic acid, as required by independent claims 8 and
25. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner
bears the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability”)
We, accordingly, do not sustain the Examiner’s rejection under
35 U.S.C. § 103(a) of independent claims 8 and 25, and rejections under
35 U.S.C. § 103(a) of claims 9–24 and 26–32, which each depend from
either claim 8 or claim 25.
CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8–10, 12–
25, 30–32
103(a) Koefod,
Thwater
8–10, 12–25,
30–32
26, 29 103(a)  Koefod,
Thwater, Liang
26, 29
11, 26–28 103(a)  Koefod,
Thwater, Lum
11, 26–28
Overall
Outcome
8–32

REVERSED