Ecolab USA Inc.

Patent Trials and Appeals Board

Jan 21, 2022

2021003698 (P.T.A.B. Jan. 21, 2022)

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. 16/059,776 08/09/2018 Peter J. Fernholz 00163.3229USC2 7609 92160 7590 01/21/2022 Merchant & Gould Ecolab P.O. Box 2903 Minneapolis, MN 55402 EXAMINER CARRILLO, BIBI SHARIDAN ART UNIT PAPER NUMBER 1711 NOTIFICATION DATE DELIVERY MODE 01/21/2022 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): USPTO92160@merchantgould.com ecolab_PAIR@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PETER J. FERNHOLZ and ANTHONY W. ERICKSON1 ____________ Appeal 2021-003698 Application 16/059,776 Technology Center 1700 ____________ Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and MERRELL C. CASHION, JR., Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1-7, 10-14, 16, 18, 20, 21, 23-29, and 31-38. A hearing was held on January 11, 2022.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to methods for cleaning hard surfaces, such as surfaces of industrial system components. E.g., Spec. 1:4- 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Ecolab USA Inc. Appeal Br. 2. 2 A transcript of the hearing will be entered into the record when available. Appeal 2021-003698 Application 16/059,776 2 10; Claim 1. Claim 1 is reproduced below from page 28 (Claims Appendix) of the Appeal Brief (key limitation at dispute in this appeal italicized): 1. A method for removing a soil from a surface of an industrial system using a clean-in-place process, said method comprising: (a) applying a pretreatment solution comprising about 0.2 wt.% to about 3.0 wt.% of a carbon dioxide-producing salt to a soil on an internal surface of the industrial system; (b) allowing the pretreatment solution to penetrate the soil for 5 minutes to about 30 minutes; (c) applying an override use solution comprising about 1 wt.% to about 3 wt.% of an acid to the surface, wherein the application of the override use solution activates the pretreatment solution to generate gas on and in the soil; and (d) rinsing the surface wherein the pretreatment and override solutions are applied at a temperature in the range of about 2°C to about 23°C. REJECTIONS ON APPEAL3 The claims stand rejected as follows: 1. Claims 1-7, 10-12, 14, 16, 18, 20, 21, 23-29, 31-33, and 35-38 under 35 U.S.C. § 103(a) as unpatentable over Herdt (US 2006/0046945 A1, published Mar. 2, 2006) and Deljosevic (US 2006/0276366 A1, published Dec. 7, 2006). 2. Claims 13 and 34 under 35 U.S.C. § 103(a) as unpatentable over Herdt, Deljosevic, and Harris (US 5,718,729, issued Feb. 17, 1998). 3 In the Examiner’s Answer, the Examiner withdrew a rejection under 35 U.S.C. § 103 based on primary reference Harris. Ans. 7. Appeal 2021-003698 Application 16/059,776 3 3. Claims 1-7, 10-12, 14, 16, 18, 20, 21, 23-29, 31-33, and 35-38 under 35 U.S.C. § 103(a) as unpatentable over Fernholz (US 2006/0042665 A1, published Mar. 2, 2006) and Deljosevic. 4. Claims 13 and 34 under 35 U.S.C. § 103(a) as unpatentable over Fernholz, Deljosevic, and Harris. 5. Claims 1, 2, 4, 5, 7, 10-14, 16, 18, 23, 24, 26, 27, 29, and 31-36 for nonstatutory double patenting over claims 1-11 of U.S. Patent No. 10,099,264 B2. ANALYSIS After review of the cited evidence in the appeal record and the opposing positions of the Appellant and the Examiner, we determine that the Appellant has not identified reversible error in the Examiner’s rejections. Accordingly, we affirm the rejections for reasons set forth below, in the Final Action dated August 7, 2020, and in the Examiner’s Answer. Rejection 1 The Appellant argues the claims as a group. We select claim 1 as representative, and the remaining claims subject to Rejection 1 will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Herdt teaches or suggests each limitation of claim 1 except that Herdt “teaches applying the pretreatment at 120F (about 50C), but fails to teach applying both the pretreatment and override solutions within the claimed temperature ranges.” Ans. 3. The Examiner finds that Deljosevic teaches hard surface cleaning treatment using cleaning ingredients the same as or similar to Herdt, and that Deljosevic discloses use of its cleaning ingredients at room temperature, which falls within the Appeal 2021-003698 Application 16/059,776 4 temperature range of claim 1. Id. The Examiner determines that, “[i]n the absence of a showing of criticality and/or unexpected results, it would have been obvious” to use Deljosevic’s temperature with the ingredients and method of Herdt “since it is conventional to treat substrates with acid/base solutions at ambient temperatures.” Id. at 3-4. The Appellant first argues that Deljosevic is concerned with “kitchen and bathroom surfaces” and uses ingredients that are mixed immediately prior to use. Appeal Br. 18-19. The Appellant argues that, in view of those differences, “a person skilled in the art would not be motivated to combine Herdt with Deljosevic.” Id. at 19. That argument is unpersuasive for reasons explained by the Examiner in detail in the Answer. See Ans. 8-9. We adopt the Examiner’s findings and conclusions as our own. See id. We emphasize that the only aspect of claim 1 that is not taught or suggested by Herdt is the recited temperature range, and, “[n]ormally, it is to be expected that a change in temperature . . . would be an unpatentable modification.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). In contrast to the Appellant’s emphasis on Deljosevic’s disclosures concerning kitchen and bathroom surfaces, Deljosevic broadly discloses the cleaning of “hard surface[s]” including surfaces made of, e.g., glass and metal. Deljosevic ¶ 119, ¶ 132 (mentioning “industrial” applications). There is no dispute that Deljosevic’s cleaning ingredients are the same as those of Herdt. See Ans. 9 (“[B]oth references teach using the same chemical ingredients.”). Although the Appellant files a Reply Brief, the Appellant does not acknowledge or otherwise address the Examiner’s additional explanation in the Answer as to why it would have been obvious to use Deljosevic’s known Appeal 2021-003698 Application 16/059,776 5 suitable temperature range with Herdt’s method. On this record, the Appellant’s argument that the Examiner fails to establish a prima facie case of obviousness is not persuasive. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections . . . .”). The Appellant also argues that criticality and unexpected results support a conclusion of nonobviousness in this case. See Appeal Br. 20; Reply Br. 2-3. For support, the Appellant relies on the Declaration of Tony W. Erickson, dated Sept. 6, 2016. The burden of showing that objective indicia support a conclusion of nonobviousness rests with the Appellant. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). The relied-upon evidence must be commensurate in scope with the claims. In re Peterson, 315 F.3d 1325, 1329-31 (Fed. Cir. 2003). “Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for ‘it is the view of [the CCPA] that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’” In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). Additionally, “even though a modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art, unless the claimed ranges produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art.” See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322-23 (Fed. Cir. 2004) (internal quotation marks and alterations omitted; emphasis added). Appeal 2021-003698 Application 16/059,776 6 The Appellant has failed to carry its burden of establishing that objective indicia support a conclusion of nonobviousness in this case for reasons stated by the Examiner. See Ans. 7-8. We emphasize that the Examiner finds that the relied-upon data uses a limited number of “specific ingredients, concentration of the ingredients, temperature, type of substrate, [and] type of soil being removed,” Final Act. 12, whereas claim 1 broadly encompasses, e.g., any carbon dioxide-producing salt for use in the pretreatment solution, and any acid for use in the override use solution. In the Appeal Brief, the Appellant argues that the evidence “explor[es] the effect of pretreatment time on soil removal,” and the effect of “treatment temperature” on soil removal, but the Appellant fails to address the Examiner’s findings that, e.g., the limited number of carbon dioxide- producing salts and acids used are not commensurate with the broad scope of the claims, and that the examples show results of cleaning only one particular type of soil. See Appeal Br. 14, 20. The Examiner explains in the Answer that the relied-upon results “are based on treating a specific soil (i.e. brewery trub soil) using a pretreatment solution of sodium bicarbonate with reaction of a 2% concentration of AC- 55-5 (water, phosphoric acid, nitric acid mixture) under various temperatures . . . and contacting time periods . . . .” Ans. 7. The Examiner reiterates that claim 1 is not limited with respect to “a) type of soil being removed, b) the type of carbon dioxide producing salt, c) the type of acid, d) the concentration of the claimed bases and acids.” Id. at 8. The Examiner also points out that the Declaration identifies a “peak soil removal” temperature range of “between about 30 to about 60 degrees C,” which is Appeal 2021-003698 Application 16/059,776 7 outside the claimed range of 2°C to 23°C, thereby calling into question any criticality associated with the claimed range. Id. at 8-10. In the Reply Brief, the Appellant for the first time addresses the Examiner’s concerns about the number of ingredients tested in the relied- upon experimental data. The Appellant, for example, identifies six different carbon dioxide-producing salts used in the experiments. Reply Br. 2. The Appellant’s reliance on new evidence in the Reply Brief is untimely. See 37 C.F.R. § 41.41(b)(2). But even if it were timely, the Appellant provides no evidence that data concerning only six different carbon dioxide-producing salts is representative of the full scope of the claims. We observe that all six of the salts are either carbonates or bicarbonates, whereas the Specification identifies other broad genuses of carbon dioxide-producing salts such as percarbonate salts and sesquicarbonate salts. Spec. 5:17-19. Moreover, in the Reply Brief, the Appellant fails to address the Examiner’s finding that the number of acids used in the experimental data is not commensurate in scope with the claims. Accordingly, even if we were to consider the new argument in the Reply Brief, it would not be sufficient to carry the Appellant’s burden of establishing that objective indicia support a conclusion of nonobviousness in this case. Finally, we observe that the experimental data appears to reflect only a small improvement over prior art processes. For example, Exhibit G of the Erickson Declaration is reproduced below with numerical reference labels added to each column in the bar graph by the Board. Appeal 2021-003698 Application 16/059,776 8 Exhibit G, above, shows that column 6 (which apparently falls within the scope of claim 1), outperforms columns 3 and 4 by only 2-3%. It is simply not clear that the results at issue here are “different in kind and not merely in degree from the results of the prior art.” See Iron Grip Barbell, 392 F.3d at 1322. Thus, although we have carefully considered the Appellant’s arguments, and we have attributed appropriate weight to the objective evidence and to the Erickson Declaration, we nevertheless determine that the totality of the evidence concerning claim 1 supports the Examiner’s Appeal 2021-003698 Application 16/059,776 9 conclusion that the subject matter of claim 1 would have been obvious to a person of ordinary skill in the art. We affirm the Examiner’s rejection.4 Rejection 2 Claims 13 and 34 require that the carbonate salt is a “percarbonate salt . . . selected from the group consisting of sodium percarbonate, lithium percarbonate, potassium percarbonate, and mixtures thereof.” The Examiner finds that Harris teaches similar acid/base cleaning compositions in which percarbonates are used as the base. Ans. 4. The Examiner determines that it would have been obvious to have modified Herdt “to include equivalent carbonates, such as potassium percarbonate, for purposes of performing the same function of soil removal by acid/base reactions.” Id. The Appellant argues that Harris concerns textile cleaning rather than hard surface cleaning, and that the Examiner has failed to “bridge [that] gap.” Appeal Br. 22. That argument is not persuasive. The Appellant does not dispute the Examiner’s finding that both Harris and Herdt concern acid/base cleaning compositions. Nor does the Appellant dispute the Examiner’s finding that Harris teaches that carbonates and percarbonates are “equivalent” in such cleaning compositions. Those undisputed findings are sufficient to suggest to a person of ordinary skill in the art that percarbonates are suitable alternatives to carbonates in processes such as Herdt that use acid/base cleaning compositions. Additionally, we note that Herdt itself discloses that 4 In view of the foregoing discussion, which does not rely on Harris to affirm the Examiner’s rejection, we need not address the Appellant’s argument that the Examiner improperly relied on Harris. See Appeal Br. 21. Appeal 2021-003698 Application 16/059,776 10 “percarbonates . . . are suitable” ingredients for Herdt’s pre-treatment solution. See Herdt ¶¶ 10, 23, 42. On this record we are not persuaded that recitations concerning percarbonate salts patentably distinguish the claimed subject matter from the prior art. Rejections 3 and 4 Rejections 3 and 4 are essentially identical to Rejections 1 and 2, respectively. Fernholz is substituted for Herdt as the primary reference, but the disclosures of Fernholz and Herdt are materially the same. See Ans. 5 (Rejection 3), 6 (Rejection 4). The Appellant’s arguments concerning Rejections 3 and 4 are the same as those discussed above concerning Rejections 1 and 2. We find those arguments unpersuasive for reasons set forth above. Additionally, as to Rejection 4 specifically, we note that Fernholz, like Herdt, expressly discloses the use of percarbonates, including sodium percarbonate, in its pre-treatment solutions. E.g., Fernholz ¶¶ 50, 94. We affirm as to Rejections 3 and 4. Rejection 5 As the Examiner correctly observes in the Answer, “Appellant did not argue the Double Patenting Rejection over Patent 10,099,264.” Ans. 10. Accordingly, we summarily affirm Rejection 5 because it is uncontested. Appeal 2021-003698 Application 16/059,776 11 CONCLUSION In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1-7, 10-12, 14, 16, 18, 20, 21, 23-29, 31-33, 35-38 103(a) Herdt, Deljosevic 1-7, 10-12, 14, 16, 18, 20, 21, 23-29, 31- 33, 35-38 13, 34 103(a) Herdt, Deljosevic, Harris 13, 34 1-7, 10-12, 14, 16, 18, 20, 21, 23-29, 31-33, 35-38 103(a) Fernholz, Deljosevic 1-7, 10-12, 14, 16, 18, 20, 21, 23-29, 31- 33, 35-38 13, 34 103(a) Fernholz, Deljosevic, Harris 13, 34 1, 2, 4, 5, 7, 10-14, 16, 18, 23, 24, 26, 27, 29, 31-36 Nonstatutory Double Patenting 1, 2, 4, 5, 7, 10-14, 16, 18, 23, 24, 26, 27, 29, 31-36 Overall Outcome 1-7, 10-14, 16, 18, 20, 21, 23-29, 31-38 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