Ex Parte 6262013 et al

Patent Trial and Appeal Board

Aug 29, 2018

90013720 (P.T.A.B. Aug. 29, 2018)

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.
90/013,720 04/08/2016 6262013 5719.123677 2524
149890 7590 08/29/2018
SMITH BALUCH LLP
376 BOYLSTON ST
STE 401
BOSTON, MA 02116
EXAMINER
TORRES VELAZQUEZ, NORCA LIZ
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
08/29/2018 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
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.
90/013,369 10/13/2014 6262013 5719.118309 1241
149890 7590 08/29/2018
SMITH BALUCH LLP
376 BOYLSTON ST
STE 401
BOSTON, MA 02116
EXAMINER
TORRES VELAZQUEZ, NORCA LIZ
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
08/29/2018 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ECOLAB INC.,
Patent Owner and Appellant
____________

Appeal No. 2018-004716
Reexamination Control 90/013,369 & 90/013,720
Patent 6,262,013
Technology Center 3900
____________

Before MARK NAGUMO, JEFFREY B. ROBERTSON, and
WESLEY B. DERRICK, Administrative Patent Judges.

DERRICK, Administrative Patent Judge.

DECISION ON APPEAL
Ecolab Inc. (“Patent Owner”), the real party in interest of U.S. Patent
No. 6,262,013 (“the ’013 Patent”),1 appeals under 35 U.S.C. §§ 134(b) and
306 from a final rejection of claims 1–5, 10, 11, 15–20, and 25–32.2 Appeal
Brief filed November 28, 2017 (“App. Br.”), 3; Final Office Action mailed
May 15, 2017 (“Final Act.”). We have jurisdiction under 35 U.S.C. §§ 6,
134(b), and 306.
We affirm.

1 U.S. Patent No. 6,262,013 B1 to Smith et al., issued July 17, 2001.
2 Originally issued claims 6–9, 12–14, and 21–24 were cancelled during
reexamination. App. Br. 3. Claims 26–32 were added. Id.
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STATEMENT OF THE CASE
This merged reexamination proceeding arose out of two third-party
requests for ex parte reexamination of the ’013 Patent filed by Patrick J.
Smith of the law firm Greer, Burns & Crain, Ltd. on October 13, 2014
(Control 90/013,369), and April 8, 2016 (Control 90/013,720). A decision
in Reexamination Control 90/013,369 was the subject of an appeal to the
Board (Appeal No. 2016-004393); the Board affirmed the Examiner’s
decision and entered a new ground of rejection (Decision on Appeal 2016-
004393, dated September 8, 2016 (“Board Dec.”)). The two reexamination
proceedings were merged on January 24, 2017.
The ’013 Patent states that the invention relates to improved laundry
sour compositions that are used to provide desirable properties to garments
that have been cleaned using alkaline detergent prior to being contacted with
the laundry sour compositions. ’013 Patent 1:10–17.
Independent claims 1, 15, and 25 are representative and read as
follows (underlining and bracketing omitted):
1. A laundry process that provides cleaned, sanitized
and pH neutralized laundry items, the process comprising:
(a) contacting soiled laundry items with an alkaline
detergent to form a treated laundry item; and
(b) in a machine cycle at a temperature of less than about
70° C, contacting the treated laundry item with a peracid
composition comprising at equilibrium about 5 to 15%
hydrogen peroxide by weight, about 20 to 40% acetic acid by
weight, and about 10 to 20% of the resulting organic peracid,
peroxyacetic acid, by weight, wherein the composition is
substantially free of other carboxylic acids and other peracids;
wherein said composition neutralizes and sanitizes the laundry
item; and thereafter
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(c) rinsing the laundry items;
(d) performing a separate sour soft step; and
(e) performing an extraction step.
15. A laundry process, substantially free of a
permanganate component, that cleans and sanitizes laundry
items, the process comprising:
(a) contacting a soiled laundry item with about 1 to 300
ounces of a laundry detergent chemical per hundred pounds of
fabric laundry item, said laundry detergent comprising a source
of alkalinity, and an anionic or nonionic surfactant in an
aqueous medium, to remove soil to produce a treated laundry
item; and
(b) in a machine cycle at a temperature of less than about
70° C, contacting the treated laundry item with about 1 to 10
ounces of an aqueous peracid composition per hundred pounds
of laundry item, said peracid composition comprising at
equilibrium about 5 to 15% hydrogen peroxide by weight,
about 20 to 40% acetic acid by weight, and about 10 to 20% of
the resulting organic peracid, peroxyacetic acid, by weight,
wherein the composition is substantially free of other
carboxylic acids and other peracids; and thereafter
(c) rinsing the laundry items;
(d) performing a separate sour soft step; and
(e) performing an extraction step.

25. A process for simultaneously sanitizing and pH
neutralizing a laundry item treated with an alkaline detergent
comprising contacting the treated laundry item with about 1 to
10 ounces of an aqueous peracid composition per hundred
pounds of laundry item,
wherein said peracid composition comprises at
equilibrium about 5 to 15% hydrogen peroxide by weight,
about 20 to 40% acetic acid by weight, and about 10 to 20% of
the resulting organic peracid by weight, wherein the peracid is
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peroxyacetic acid, wherein the composition is substantially free
of other carboxylic acids and other peracids;
and wherein the composition sanitizes the treated laundry
item and neutralizes alkaline residues on the treated laundry
item to a level that does not cause skin irritation.
App. Br. (Claims App’x) 31, 33–36.

The claims stand rejected under title 35 of the U.S. Code (pre-AIA) as
follows:
Claims 1–5, 10, 11, 15–20, 26, and 27 stand rejected under 35 U.S.C.
§ 112, first paragraph as failing to comply with the written
description requirement;
Claim 26 stands rejected under 35 U.S.C. § 112, second paragraph3
for indefiniteness;
Claims 1–5, 10, 11, 15–20, and 25–32 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Oakes4 in view of Tibbitts5 and
Lozo;6 and
Claims 1–5, 10, 11, 15–20, and 25–32 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Oakes in view of Tibbitts, Lozo,
and DE ’335.7
See Final Office Action, mailed May 15, 2017 (“Final Act.”); Examiner’s
Answer, mailed January 18, 2018 (“Ans.”).

3 The Examiner cites 35 U.S.C. § 112(b) in the alternative. Final Act. 6.
4 Oakes et al., US 5,200,189, issued April 6, 1993 (also assigned to Ecolab).
5 Tibbitts, US 5,529,696, issued June 25, 1996.
6 Lozo, US 3,729,422, issued April 24, 1973.
7 Trabizsch, DE 39 29 335 A1, published July 3, 1991.
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An oral hearing was held on July 11, 2018. A transcript of the oral
hearing (“Transcript”) was entered into the record on August 6, 2018.
Written Description
Independent claims 1 and 15 both recite “performing a separate sour
soft step”—step (d)—subsequent to two prior, recited steps, a first step using
alkaline detergent to obtain a treated laundry item—step (a)—and a second
step in which the treated laundry item is contacted with a peracid
composition—step (b). App. Br. 31, 33–34.
The Examiner finds that “there is no support for the claimed ‘separate
sour soft step’” even if there is “support for ‘an optional softening step.’”
Ans. 2–3 (citing ’013 Patent, 3:45–54). In essence, the Examiner maintains
that there is support for a further softening step, but not for the particular
type of softening step—a sour soft step. Id.; see also Final Act. 5–6.
Patent Owner contends that there is written description support for a
separate soft sour step because the ’013 Patent “discloses an optional
softening step and equates ‘softening’ with ‘souring’ and ‘sour soft’
procedures.” Reply Br. 3. Patent Owner argues that “the ’013 patent uses
the term ‘soften’ to mean ‘souring’, because the souring process renders the
fabric compatible for human contact.” App. Br. 14 (citing Fast Declaration8
¶ 26)). Paragraph 26 of the Fast Declaration states that “textiles with a high
residual pH are skin irritants, are less soft, and are prone to fabric damage.”
Patent Owner further argues that “softness is . . . used as a synonym for
neutralization.” App. Br. 14–15 (citing ’013 Patent, 2:44–55). Column 2,

8 Declaration of Jonathan Fast, dated June 3, 2015.
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lines 44 to 55, of the ’013 Patent includes the disclosure that “the
compositions of the present invention can be used in a single step following
an alkaline laundry detergent step . . . providing both softness and
sanitizing.” ’013 Patent, 2:51–55.
Having considered the cited testimony and disclosure, we find that
while the souring process is reasonably considered a softening step, the
meaning of softening step is not limited to a souring process. Thus, the
disclosure of a separate softening step itself is not sufficient written
description. The further fact that the disclosed single step souring process
following an alkaline laundry detergent step provides softness, likewise,
does not render the generic disclosure of a separate softening step into
sufficient written description of a separate sour soft step after treatment of
the laundry with a peracid composition. See, e.g., Tronzo v. Biomet, Inc.,
156 F.3d 1154, 1158 (Fed. Cir. 1998) (“A disclosure in a patent application
that merely renders the later-claimed invention obvious is not sufficient to
meet the written description requirement; the disclosure must describe the
claimed invention with all its limitations.”). Thus, on this record, we find
that there is insufficient written description support for “performing a
separate sour soft step.”
Accordingly, we sustain the rejection of claims 1–5, 10, 11, 15–20,
26, and 27 for lack of written description.
Indefiniteness
The Examiner finds that there is insufficient antecedent basis for “of
the sanitizing laundry sour” recited in claim 26. Final Act. 6–7. The
Examiner determines “Claim 26 depends on [pending] independent claim 1
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that does NOT recite ‘the sanitizing laundry sour’ referred to by claim 26.”
Ans. 3. The Examiner notes that an amendment filed July 14, 2017, which
would have replaced “sanitizing laundry sour” with “peracid composition,”
was not entered. Id. at 3–4; App. Br. 16.
Patent Owner contends that “[a] person of ordinary skill would have
easily seen that the ‘sanitizing laundry sour’ referred to in claim 26 is the
‘peracid composition’ of claim 1, because the ‘peracid composition’ is used
to ‘sanitize and pH neutralize’ a laundry item in claim 1.” App. Br. 16; see
also Reply Br. 6–8. Patent Owner further argues that “there is no doubt
from the specification . . . that the sanitizing laundry sours are peracid
compositions” and that “antecedent basis can be found by implication.”
Reply Br. 7–8 (citing Slimfold Mfg. Co. v. Kinkead Indus., 810 F.2d 1113,
1116–17 (Fed. Cir. 1987)). As noted by Patent Owner (Reply Br. 7–8), in
Slimfold, our reviewing court relied on the “specification show[ing] only one
collar and in only one place” in rejecting an invalidity theory grounded on a
lack of antecedent basis (Slimfold, 810 F.2d at 1116–17).
The difficulty with Patent Owner’s position, however, is that the
“sanitizing laundry sour” of claim 26 might also be taken to refer to the
“separate sour soft step” of step (d) in claim 1 rather than to the “peracid
composition . . . [that] neutralizes and sanitizes the laundry item” in step (b).
While counsel at oral hearing contended that this is not the case because
claim 26 recites that the laundry sour is sanitizing, only step (b) in claim 1
similarly relates to sanitizing, and the sour soft step of step (d) only requires
neutralizing alkali (Transcript 17:9–15, 17:22–18:6), we note that step (d) at
least uses the same term “sour” as used in claim 26. Where the invention is
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disclosed to “relate[] to improved laundry sour compositions that provide
other desirable properties to the cleaned garments” (’013 Patent, 1:15–17),
particularly sanitization provided by an oxidant peracid component (id. at
2:58–3:9), it is not sufficiently clear that the sour soft step (d) only requires
softening such that step (d) could not also reasonably be the antecedent for
the “sanitizing laundry sour” of claim 26.
Regarding Patent Owner’s request to “hold this formalistic issue for
an eventual remand to the Examiner” because it “can easily be corrected on
remand” (Reply Br. 8), we are apprised of no authority constraining us from
reaching the merits of the rejection.
Accordingly, we sustain the rejection of claim 26 as indefinite.
Obviousness – Oakes in view of Tibbitts and Lozo
The Examiner relies on Oakes for its disclosure of a peroxyacid
antimicrobial concentrate and diluted end use composition comprising C1 to
C4 peroxycarboxylic acid derived from a C1 to C4 carboxylic acid by
reacting the carboxylic acid with hydrogen peroxide, including peroxyacetic
acid derived from acetic acid reacted with hydrogen peroxide. Final Act. 8
(citing Oakes, 3:62–4:5, 4:18–21). As to the recited concentrations of
hydrogen peroxide, acetic acid, and peroxyacetic acid in the peracid
composition, the Examiner determines that the amounts of hydrogen
peroxide and acetic acid are result effective variables as to the amount of
peroxyacetic acid formed at equilibrium (id. at 15 (citing Board Dec. 21))
and, in noting the amount of peracetic acid can be increased to obtain the
required sanitizing effect, that the amount of peroxyacetic acid is a result
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effective variable as to the disinfecting or sterilizing results (id. at 16 (citing
Oakes, 13:40–45)).
Further, as highlighted by the Examiner, Oakes teaches use of an
antimicrobial concentrate comprising 0.1 to 25 wt. % of a C1 to C4
peroxycarboxylic acid, which can be peroxyacetic acid, and about 1 to 50
wt. % hydrogen peroxide, in an equilibrium mixture.9 Ans. 4; see also Final
Act. 15; Oakes, col. 4, ll. 2, 5–11, 26–28. The Examiner further determines
that “it would be expected that the concentration of acetic acid in the
equilibrium concentrate of Oak[e]s would also encompass the claimed
amount.” Ans. 4–5. In effect, because the concentrations of acetic acid,
hydrogen peroxide, and peroxyacetic acid at equilibrium are defined by an
equilibrium constant, it is reasonably expected that the concentration of
acetic acid at equilibrium would be that according to the claims when the
concentrations of peroxyacetic acid and hydrogen peroxide are
concentrations according to the claims. Oakes’ Example 6, cited in the prior
Board Decision, and relied on by the Examiner, discloses a peracid
composition with concentrations falling squarely within the recited ranges—
10.42% peracetic acid, 34% acetic acid, 10% H2O2, and 45.58% water.
Oakes 10:15–19; Board Dec. 19–20; Ans. 5.
The Examiner also relies on Oakes for its teaching that generally the
“cleaning is accomplished with a different material such as a formulated

9 The Examiner also finds that “Oakes teaches that it was conventional to
use a composition comprising acetic acid and peracetic acid, with no other
carboxylic acids or percarboxylic acids” (Final Act. 16) and concludes “that
a composition that is substantially free of other carboxylic acids, and other
peracids is obvious in view of [Oakes]” (id.). Patent Owner does not contest
either determination. See generally App. Br.; Reply Br.
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detergent” and that “[a]fter this cleaning step, the sanitizing composition . . .
[is] introduced . . . at a use solution concentration.” Final Act. 9 (citing
Oakes, 7:31–38). The Examiner finds that “the concentrated [sanitizing]
composition can be injected into the wash or rinse water of a laundry
machine and contacted with contaminated fabric for a time sufficient to
sanitize the fabric” at a “temperature[] in the range of about 4º to 60º C” and
that “[e]xcess solution can then be removed by rinsing . . . the fabric.” Id.
(citing Oakes, 8:4–15).
As to the use of an alkaline detergent, the Examiner finds that alkaline
detergent was conventional and that it would have been obvious to one of
ordinary skill in the art at the time the invention was made to use an alkaline
detergent composition in a laundry process as taught by Oakes.10 Id. at 9–
10; see also Board Dec. 6–7.
As to neutralizing and sanitizing the laundry item, the Examiner finds
that Oakes’ disclosed method of sanitizing clothing items or fabric fully
meets the limitations because the sanitizing composition contains acid
components that neutralize alkaline residues on the fabric. Final Act. 10.
As explained by the Examiner, the sanitizing composition of Oakes
containing acetic acid would be expected to neutralize alkaline residue. Id.
As to “performing a separate sour soft step” (claims 1 and 15, step d),
the Examiner relies on Tibbitts, which “relates to a commercial laundry
process that includes alkaline laundry detergent solutions,” for its disclosure

10 As in the prior appeal (see Board Dec. at 6–7), Patent Owner does not
dispute that the step of “contacting soiled laundry items with an alkaline
detergent” would have been obvious to one of ordinary skill in the art (see
generally App. Br.).
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“that after washing the laundry is subjected to repeated rinses with fresh
water and treated with a laundry sour if desired.” Id. (citing Tibbitts,
Abstract, 1:6–8, 2:27–28, 4:44–53). Further, the Examiner relies on Lozo
for its disclosure that “[o]ne of the main functions of a laundry sour is to
neutralize excess alkalinity remaining in the freshly laundered garment so as
to reduce skin irritation by the wearer of the garment.” Id. at 11; Lozo,
1:22–25. The Examiner determines that it would have been obvious to one
of ordinary skill in the art at the time of the invention to have performed an
additional neutralizing laundry sour in order to neutralize excess alkalinity,
including so as to reduce skin irritation by the wearer of the garment. Final
Act. 10–11.
Patent Owner contends that the references do not teach or render
obvious the claimed concentration limitations and that Oakes teaches away
from the claimed process.
Patent Owner contends that “nothing in the prior art discloses the
concentration ranges in amended independent claims 1, 15, and 25” because
the specific examples relied on in the Board Decision—examples 6 and 11–
13—have “values falling outside the claimed ranges.” See App. Br. 17–20.
As to example 6, which the Board and the Examiner cited for a composition
having 10.42% peracetic acid, 34% acetic acid, 10% H2O2, and 45.58%
water (Board Dec. 19–20; Ans. 5; Oakes 10:15–19), Patent Owner contends
that the cited component is not a sanitizing composition, but rather a
composition used for forming the sanitizing compositions of Oakes (App.
Br. 20; see also Transcript 4:9–14). Patent Owner provides neither evidence
nor argument that the composition having 10.42% peracetic acid, 34% acetic
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acid, 10% H2O2, and 45.58% water does not reflect the concentrations at
equilibrium. See generally App. Br.; see also Transcript 4:15–21.
Patent Owner also does not squarely address the Examiner’s
determination that the disclosed encompassing ranges of both
peroxycarboxylic acid, which can be peroxyacetic acid, and hydrogen
peroxide of an antimicrobial concentrate in an equilibrium mixture would
reasonably be expected to also include acetic acid in concentrations
according to the claims. Reply Br. 10; see also generally App. Br. Rather,
Patent Owner argues that “[i]t is not possible . . . to assume that the mere
existence of equilibrium dictates certain concentrations” because, for
example, the addition of 1 gram of each of peracetic acid, H2O2, and acetic
acid in one liter of water would yield different concentrations of the three
components than if 100 grams of each were added to the same volume.
Reply Br. 10. This argument, however, is inapposite to the Examiner’s
reasoning grounded on disclosed concentrations. Further, Patent Owner
reasonably concedes that the concentration of peracetic acid at equilibrium
with hydrogen peroxide and acetic acid is driven by the concentrations of
hydrogen peroxide and acetic acid. Transcript 11:20–24. Patent Owner fails
to further explain how the disclosed preferred antimicrobial concentrate in
Oakes, as an equilibrium mixture, which comprises 0.1 to 25 wt. % of a C1
to C4 peroxycarboxylic acid, which can be peroxyacetic acid (3:62–4:11),
and about 1 to 50 wt. % hydrogen peroxide (4:26–28), would not reasonably
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lead one of ordinary skill to a concentration of acetic acid in the preferred
antimicrobial concentrate within the scope of the claims.11
Patent Owner further contends that the Examiner’s reasoning is that if
there are overlapping ranges for two of the components, that “then by
necessity once those two components reach equilibrium, the third
component will fall within the claimed ranges” and argues “that’s not
technically accurate.” Transcript 7:6–10. This argument is unpersuasive of
error because it fails to address the rejection grounded on disclosed
concentrations of peroxyacetic acid and hydrogen peroxide at equilibrium in
the antimicrobial concentrate, which also includes acetic acid at equilibrium,
and the reasonable expectation as to the concentration of acetic acid.
Patent Owner also contends that the Examiner has failed to establish
the obviousness of the ranges on the basis of concentrations being result
effective variables. App. Br. 20–23; Reply Br. 8–12. Patent Owner argues
that the Examiner “has not shown that the concentration (or the amount) of
hydrogen peroxide, acetic acid, or peracetic acid is a result-effective
variable” (App. Br. 21) because “the Examiner does not even identify the
intended ‘result’” (id. at 22). Patent Owner also argues that the fact the

11 While the preferred antimicrobial concentrate of Oakes also includes an
amount of a C6 to C18 peroxyacid, the disclosed range of concentrations—as
low as 0.01 wt. % (Oakes, 4:5–8)—includes amounts that reasonably would
not be consequential to the equilibrium values of hydrogen peroxide, at 5–
15%, acetic acid, at 20–40%, and peracetic acid, at 10–20%. Moreover,
Patent Owner does not proffer any cogent argument that Oakes teaches that
the amount of acetic acid at equilibrium with peracetic acid and hydrogen
peroxide is contrary to that claimed when the amounts of peracetic acid and
hydrogen peroxide meet the claim limitations. See generally App. Br.;
Reply Br.
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parameters, i.e., concentration of hydrogen peroxide, acetic acid, and
peracetic acid, are interrelated renders the Examiner’s rejection deficient
because “the Examiner has not explained why the person of ordinary skill
would have expected success, nor how the person of ordinary skill would
have held some values constant (within the claimed ranges), while changing
others to meet the claimed ranges.” Id. at 23. Patent Owner essentially
reiterates these arguments in the Reply Brief, stating that:
(1) adjusting the “amounts” of “hydrogen peroxide and acetic
acid” would not have yielded the missing peracetic acid
concentrations in Examples 6, 12 and 13 . . . , (2) the Examiner
had not shown that the amounts of hydrogen peroxide and
acetic acid were result-effective variables, (3) the Examiner did
not specify what the intended “result” for the result-effective
variable would have been, and (4) that the parameters were
interrelated, and could not necessarily be changed
independently.
Reply Br. 9. Patent Owner contends that “[i]f a person of ordinary skill
were to increase the peracetic acid concentration to increase the level of
sanitization, this could not easily be done without affecting the other
solution components” or the characteristics of the solution. Id. at 11. Patent
Owner also contends that “[t]his analysis is complicated by the fact that the
Examiner does not pick a starting point” as the different “starting points”
“would require different modifications.” Id. at 11–12.
Patent Owner fails to squarely address that the concentrations of
acetic acid and hydrogen peroxide are identified as result effective variables
for the formation of peracetic acid formed, and for sanitizing effect (Final
Act. 15–16; Ans. 5), and that the concentration of peracetic acid is identified
as a result effective variable for sanitizing effect (Final Act. 16; Ans. 4). “A
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recognition in the prior art that a property [or a result] is affected by the
variable is sufficient to find the variable result-effective.” In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). As to the contended
difficulty in holding some variables constant such that they remain within
recited ranges or the fact that the variables cannot be changed independently,
on this record, we are not persuaded of error because the fact that variables
are interrelated does not mean that optimizing the variables requires
anything greater than the effort of a routineer. See Applied Materials, 692
F.3d at 1298 (Fed. Cir. 2012) (“The mere fact that multiple result-effective
variables were combined does not necessarily render their combination
beyond the capability of a person having ordinary skill in the art.”). Patent
Owner’s contentions are not supported by any evidence of difficulties that
could not have been overcome through routine effort in optimizing the
concentrations of peracetic acid, hydrogen peroxide, and acetic acid at
equilibrium. See generally Appeal Br.; Reply Br.
Patent Owner further contends “that acetic acid is a result-effective
variable for pH” and argues that this “would have led a person of ordinary
skill . . . to maximize the amount of acid in the mixture, leading to an
optimum above the claimed maximum of 40%” because Oakes “explains
that biocidal activity . . . increases with decreasing pH.” App. Br. 22. This
argument, however, fails to establish error because a prima facie case of
obviousness does not require identifying optimal values, but only workable
values within the disclosed ranges. See In re Aller, 220 F.2d 454, 456
(CCPA 1955) (“where the general conditions of a claim are disclosed in the
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prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation.”) (Emphasis added).
In the same vein, Patent Owner contends that Oakes teaches away
from the claimed process and does not provide a reasonable expectation of
success in that the “sanitization according to [Oakes] functions best at pH
values well below neutral.” App. Br. 24 (citing Oakes, 2:3–13); see also
Reply Br. 12–13; Fast Declaration ¶ 66. While conceding that a
“broadening statement in [Oakes] has a maximum pH of 8.0” (App. Br. 25
(citing Oakes, 2:55–56)), Patent Owner argues that “[a] person of ordinary
skill desiring to sanitize using the [Oakes] compositions would have . . .
been led to use a pH that is substantially lower than neutral” (id.). Patent
Owner also relies on paragraphs 66 and 68–70 of the Fast Declaration as
support for the contention that “[a] person of ordinary skill that uses
[Oakes’] composition in a laundry process to effect sanitation would do so at
a low pH, not the pH values one would expect for an alkaline laundry
process.” App. Br. 25.
We are not persuaded that there is a teaching away from the claimed
process. See, e.g., DyStar Textilfarben GmbH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not read
into a reference a teaching away from a process where no such language
exists.”). Oakes explicitly discloses that a pH of up to 8.0 can be used in its
process, even if lower pH values are more effective for sanitizing effect.
The declaration evidence is likewise unpersuasive. Paragraph 66 of the Fast
Declaration does not adequately support the position that peracids would not
be used at a pH of up to 8.0 because such a pH value is not equated with “the
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high pH levels in laundry wash processes.” Fast Declaration ¶ 66.
Moreover, the Fast Declaration’s criticism that the high concentrations
required at “high pH levels” would be “expensive and difficult to achieve”
(id.) is not persuasive evidence that one of ordinary skill in the art would
have understood Oakes to teach away from the process. As explained by our
reviewing court, “just because better alternatives exist in the prior art does
not mean that an inferior combination is inapt for obviousness purposes.” In
re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (citing In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994)). Paragraphs 68 and 69 of the Fast
Declaration describe various experiments in Oakes II (U.S. Patent No.
5,437,868 (filed as a continuation-part of Oakes, Fast paragraph 68)), and
paragraph 70 concludes that “like [Oakes], Oakes II suggests that peracids
need a low pH value for effective sanitization” and that “[t]his is contrary to
the use of peracids in laundry for sanitization.” Fast Declaration ¶¶ 68–70.
These statements, however, fail to address that the workable, albeit less than
optimal sanitizing effect contended, might still be sufficient, or that one of
ordinary skill in the art would accept less than optimal sanitizing
performance in obtaining other benefits, for example, the bleaching effect
better obtained at higher pH values. See Fast Declaration ¶ 66. These
statements also fail to address other factors impacting sanitizing
performance, i.e., temperature and exposure time, highlighted by the
Examiner. Ans. 4 (citing Oakes, 6:49–52); see also Oakes 7: 67–8:2
(explaining that “[h]igher use dilution can be employed if elevated use
temperature (greater than 20º C.) or extended exposure time (greater than 30
seconds) are also employed.”), 8:65–66 (explaining that “heating may be
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desirable to further enhance [the sanitizing composition’s] antimicrobial
activity.”).
Patent Owner further contends that “a person of ordinary skill . . .
would have lacked a reasonable expectation of success (and in fact, would
have expected failure) in achieving sanitation, given the relationship
between pH and biocidal activity in [Oakes]” and that, in having been led to
use a lower pH value, would have “no reason to use a separate sour soft step
as required by the claims.” App. Br. 26; see also Reply Br. 14.
On this record, we are not persuaded that a reasonable expectation of
success was lacking, particularly where Patent Owner fails to address that
the temperature and length of treatment, as well as the amount of peracid
composition used, can be increased to improve the sanitizing effect. In re
O’Farrell, 853 F.2d 894, 903–904 (Fed. Cir. 1988) (“Obviousness does not
require absolute predictability of success. . . . all that is required is a
reasonable expectation of success.”). As explained above, the cited portions
of Oakes and the other cited evidence fail to establish that the relied on
combination would not provide sanitization. Likewise, we are directed to no
evidence that one of ordinary skill, looking to the cited evidence, would
have not had a reasonable expectation of success.
Patent Owner’s further argument that there would be no need for a
separate sour soft step falls short because Patent Owner has failed to
establish that Oakes teaches away from sanitizing laundry using its
sanitizing composition at pH values up to 8.0.
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Accordingly, on this record, we sustain the Examiner’s obviousness
rejection of claims 1–5, 10, 11, 15–20, and 25–32 over Oakes in view of
Tibbitts and Lozo.
Obviousness – Oakes in view of Tibbitts, Lozo, and DE ’335
The Examiner relies Oakes, Tibbitts, and Lozo as set forth above, and
further relies on DE ’335 “to show that neutralization would have been
obvious during a disinfection (sanitizing) and acidification (sour).” Final
Act. 13.
DE ’335 provides a method for disinfection of textiles in continuous
flow laundry systems. DE ’335, Abstract. DE ’335 discloses that
Continuously operated continuous flow laundry systems
normally function according to the counter-flow method,
wherein fresh water and dirty laundry are fed at opposite ends
into the continuous flow laundry system . . . and move more or
less in opposite directions through the continuous flow laundry
system.
Id. at 3, ll. 7–10. DE ’335 further characterizes the process of washing
textiles as a number of steps, distinguishing “between soaking, prewash,
main wash, rinsing and the spin cycle or wringing.” Id. at 2, ll. 3–5.
The Examiner relies on DE ’335 for disclosing the use of a mixture of
an organic peroxyacid with an organic acid, which can be produced through
mixing an aqueous H2O2 solution with the desired organic acid, for the
“neutralization (‘acidification’)” of laundry. Final Act. 13–14 (citing
DE ’335, 3, l. 29 to 4, l. 3, 5, ll. 6–16, 29–31). The Examiner further relies
on DE ’335 for teaching that a solution comprising acetic acid and peracetic
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acid is particularly preferred and for teaching that the final rinse bath should
have a pH of 6 to 7. Id.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to have used the
sanitizing compositions of Oakes in view of Tibbitts and Lozo to “neutralize
alkaline residue on laundered items” as taught by DE ’335 in order to
“provide for a laundry item with a pH that does not cause skin irritation.”
Id. at 14. The Examiner also notes that “[t]he present claims do not require
the use of a continuous flow laundry system.” Ans. 9.
Patent Owner contends that DE ’335 teaches away from the claimed
process in two ways. App. Br. 27.
First, Patent Owner contends that “DE ’335 teaches to keep the
Hydrogen Peroxide concentration ‘as low as possible’ and in any case less
than 5%.” (id. (citing DE ’335, 6, ll. 5–6, 21–24)) and “that a low
concentration of Hydrogen Peroxide is necessary to avoid high
concentrations of active oxygen in the prewash zone of continuous washers,
which could cause protein-containing contaminants to become affixed to the
laundry” (id. (citing DE ’335, 4, ll. 22–28, 5, ll. 20–25)). Patent Owner
contends this teaches away from the concentrations of hydrogen peroxide
used in the claimed method. Id.
Second, Patent Owner contends that “DE ’335 teaches that the
sanitization and neutralization should occur in the final process step . . .
because subsequent wet process steps after a sanitizing step can re-infect the
laundry.” Id. at 27–28 (citing DE ’335, 4, ll. 5–19). Patent Owner contends
this teaches away from the method of independent claims 1 and 15 because
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they “require rinsing, sour soft and extraction steps after application of the
peracid composition.” Id.
Neither argument is well-founded because the teachings cited by
Patent Owner relate to particular problems encountered in a continuous flow
laundry system in which the fresh water and dirty laundry are fed at opposite
ends and move in opposite directions. As DE’355 emphasizes, in a laundry
system that does not include liquid from later laundry process steps in earlier
process steps, the hydrogen peroxide included in the peracid composition
would not contact any article in an earlier prewash zone. See, e.g., DE ’335,
2, ll. 3–5, 3, ll. 7–10. As such, the cited concern to limit the amount of
active oxygen in a prewash zone, and preferences expressed in DE ’335 as to
the maximum amount of H2O2, do not teach away from the process as
claimed. Similarly, in a laundry system that carries out the final rinse step in
the same drum as the main wash step, the entire machine is disinfected such
that satisfactory results are obtained without use of a peracid composition in
the final process step. Id. at 4, ll. 5–12; Ans. 9. Moreover, even for
continuous flow laundry systems, DE ’335 discloses that daily disinfection
when the system is shut down can be accomplished using “compounds that
split off chlorine to the fresh water.” DE ’335, 4, ll. 16–21. We thus discern
no teaching away in DE ’335 from a laundry process that requires rinsing,
sour soft, and extraction steps after application of the peracid composition.
Accordingly, on this record, we sustain the Examiner’s obviousness
rejection of claims 1–5, 10, 11, 15–20, and 25–32 over Oakes in view of
Tibbitts, Lozo, and DE ’335.
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DECISION
The Examiner’s decision to reject claims 1–5, 10, 11, 15–20, 26, and
27 under 35 U.S.C. § 112, first paragraph is affirmed.
The Examiner’s decision to reject claim 26 under 35 U.S.C. § 112,
sixth paragraph is affirmed.
The Examiner’s decision to reject claims 1–5, 10, 11, 15–20, and 25–
32 under 35 U.S.C. § 103(a) is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED

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FOR PATENT OWNER:
SMITH BALUCH LLP
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STE 600
WASHINGTON, DC 20003

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