Ex Parte 7588696 et alDownload PDFPatent Trial and Appeal BoardJun 9, 201790010860 (P.T.A.B. Jun. 9, 2017) Copy Citation 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. 90/010,860 03/31/2010 7588696 14144/3 7093 53175 7590 06/09/2017 CARGILL, INCORPORATED P.O. Box 5624 MINNEAPOLIS, MN 55440-5624 EXAMINER KUGEL, TIMOTHY J ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 06/09/2017 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 CARGILL, INC., Patent Owner and Appellant ____________ Appeal 2017-007170 Reexamination Control 90/010,860 Patent 7,588,696 B2 Technology Center 3900 ____________ Before MARK NAGUMO, RICHARD M. LEBOVITZ, and JEFFREY B. ROBERTSON, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-007170 Reexamination Control 90/010,810 Patent 7,588,696 B2 2 Cargill, Inc., the owner of the patent under reexamination (hereinafter the “’696 Patentâ€), appeals under 35 U.S.C. §§ 134(b) and 306 from the final rejection of claims 1, 4, 7, 18, and 21–32 (Appeal Brief filed December 4, 2014, hereinafter “App. Br.,†at 2; Final Office Action mailed June 4, 2014). We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We AFFIRM. STATEMENT OF THE CASE The ’696 Patent issued to Robert Scott Koefod on September 15, 2009 from Application 11/303,260 filed on December 15, 2005. This reexamination proceeding arose from a third-party request for ex parte reexamination filed by G. Peter Nichols of the law firm Brinks, Hofer, Gilson & Lione (Request for Ex Parte Reexamination filed February 12, 2010). The ’696 Patent states that the invention involves salt-based formulations having anti-microbial activity in connection with water softening and other applications to remove or exchange ions in a solution. (Col. 1, ll. 20–26.) Claim 1 on appeal reads as follows: 1. An antimicrobial water softening composition, comprising: about 100–25,000 ppm of at least one surfactant selected from the group consisting of sodium lauryl sulfate, linear alkylbenzene sulfonates, alcohol sulfates, alpha-olefin sulfonates, alcohol ethoxylates, nonylphenyl ethoxylates, alkylpolyglucosides, fatty alkanoamides, fatty amine oxides, sodium dioctylsulfosuccinate, dodecylbenzene sulfonic Appeal 2017-007170 Reexamination Control 90/010,810 Patent 7,588,696 B2 3 acid and salts thereof, the sodium salt of sulfonated oleic acid, sodium dodecylbenzene sulfonate, dodecyldiphenyloxide disulfonic acid and salts thereof; about 0.3–25 weight percent (wt. %) of at least one acid selected from the group consisting of citric, acetic, propionic, lactic, benzoic, ascorbic, isoascorbic, sorbic, phosphoric, hydrochloric, nitric, malic, tartaric, adipic, succinic, glutaric, salicylic, and sulfuric acids and sodium bisulfate; and about 75–99.7 wt. % of at least one inorganic salt selected from the group consisting of sodium chloride and potassium chloride. (Claims App’x, App. Br. 21.) REJECTION The Examiner rejected claims 1, 4, 7, 18, and 21–32 under 35 U.S.C. § 103(a) as obvious over Waatti I (U.S. Patent No. 6,331,261 B1, issued December 18, 2001 to Kurt J. Waatti and Eugene J. Kuhajek). (Examiner’s Answer mailed February 12, 2015, hereinafter “Ans.,†2–4.) ISSUES The Examiner found that Waatti I discloses a water softener salt formulation including an alkali metal chloride salt and a surfactant and monosodium citrate (MSC) or monopotassium chloride (MPC), which the Examiner characterizes as a “‘summary embodiment’†of Waatti I. (Ans. 2.) The Examiner found that the “‘summary embodiment’†of Waatti I is silent as to the presence of an acid as recited in rejected claim 1, but found that Waatti I discloses an embodiment including deionized water, sodium chloride, and citric acid. (Ans. 2, citing Waatti, Ex. 1.) The Examiner concluded that it would have been obvious to have replaced the MSC of the Appeal 2017-007170 Reexamination Control 90/010,810 Patent 7,588,696 B2 4 “‘summary embodiment’†with the citric acid of Example 1 because the citric acid removed more iron from the fouled cation exchange resin than the MSC additive. (Ans. 2, citing Waatti I, Ex. 1, Table I.) Appellant advances three principal arguments in this appeal: (1) Waatti I discloses a composition including sodium chloride and citric acid, but not in combination with a surfactant, such that replacement of the MSC disclosed in the composition of Waatti I with citric acid would render the modified composition unsatisfactory for its intended purpose due to the resulting decrease in pH (App. Br. 12–16); (2) Waatti I teaches away from the claimed invention because of the discussion of Waatti II (U.S. Patent No. 4,540,715 issued September 10, 1985 to Kurt J. Waatti and Daniel R. Border), which discloses that citric acid can accelerate damage to metal or plastic materials found within a water softener (App. Br. 17); and (3) The claimed compositions show unexpected results in the form of an unexpected improvement in antibacterial properties over similar compositions without a surfactant, which are the compositions of the closest prior art (App. Br. 17–19). Thus, the principal issues in this appeal are: (1) Does the evidence of record support Appellant’s position that the modification of Waatti I proposed by the Examiner would render the composition of Waatti I unsuitable for its intended purpose? Appeal 2017-007170 Reexamination Control 90/010,810 Patent 7,588,696 B2 5 (2) Does Waatti I, by virtue of referring to Waatti II, teach away from the proposed combination in view of the disclosed effect of citric acid on metal and plastic? (3) Does the ’696 Patent present sufficient evidence of unexpected results commensurate in scope with the claims to outweigh the evidence in favor of obviousness? DISCUSSION Appellant does not argue any of the claims separately.1 Accordingly, we select claim 1 as representative of the claims on appeal. See 37 C.F.R. § 41.37(c)(1)(iv). Unsuitable for Intended Purpose Appellant argues that Waatti I discloses an operating pH of 3.5 or higher such that modifying Waatti I where citric acid is used instead of MSC would result in a pH that is lower than 3.5 thus rendering Waatti I unsuitable for its intended purpose. (App. Br. 13–15.) Appellant contends that there would be no reasonable expectation of success in keeping the “‘synergistic’ effect†of the combination of sodium citrate and salt disclosed in Waatti I because acids and salts have different structures and physical properties and 1 Appellant’s argument in the Reply Brief filed April 13, 2015 regarding claims 4, 7, 22, 23, 26, 27, 30, and 31 was not set forth in the Appeal Brief, and has not been considered, Appellant not presenting any showing of good cause as to why such argument could not have been presented in the Appeal Brief. 37 C.F.R. § 41.41(b)(2). Regarding claims 18, 28, and 32, contrary to Appellant’s argument, those claims do recite a “food-grade scent†as they depend from claims reciting such limitation. Appeal 2017-007170 Reexamination Control 90/010,810 Patent 7,588,696 B2 6 the object of Waatti I is to provide a sequestering agent more effective in iron removal than sodium citrate. (App. Br. 15–16.) We are not persuaded by Appellant’s arguments. Appellant does not direct our attention to evidence of record to support the position that the addition of citric acid would necessarily reduce the pH to below 3.5. Indeed, the ’696 Patent provides evidence that even with the addition of citric acid within the claimed amounts, the pH is within the preferred operating range of 3.5 to 4.5 disclosed in Waatti I. (’696 Patent col. 9, Table 4, see entry with 0.3% citric acid; Waatti I, col. 3, ll. 21–23.) Appellant also did not establish that the surfactants of Waatti I would necessarily be ineffective at a pH below 3.5.2 Even if the pH was lower than the pKa of the surfactant as argued by Appellant (id., 15), Appellants have not provided adequate evidence that this difference would render the surfactant ineffective. In addition, we agree with the Examiner that Waatti I does not contain disclosure that would indicate one of ordinary skill in the art would lack a reasonable expectation of success in using citric acid with surfactant to reduce or eliminate iron from the resin bed. (Ans. 6–7.) Waatti I expressly suggests the addition of surfactant to its compositions comprising salt and citrates for restoring resin beds that are extremely fouled. (Col. 3, ll. 27–63.) Waati I also teaches that citric acid has been used to regenerate columns 2 As correctly observed by the Examiner (Ans. 5), Appellant’s citation to C. Huang and J.E. Van Benschoten. “Effect of pH on Adsorption of Sulfonated Surfactants to a Sandy Soil.†Environmental Engineering Science, 17(3), 2000, p. 159–168 (App. Br. 15) is not properly of record prior to the Appeal and has not been considered. 37 C.F.R. § 41.33(d)(2). Appeal 2017-007170 Reexamination Control 90/010,810 Patent 7,588,696 B2 7 fouled by iron. (Col. 1, ll. 64–65; col. 2, ll. 2–3.) While Waatti I focuses on providing a more effective sequestering agent than sodium citrate such as monosodium citrate (col. 2, ll. 26–28), a prior art reference is available for all it teaches. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.†In re Heck, 699 F.2d 1331, 1332–33 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)). Thus, although citrates may be disclosed as an improvement, Waati I still teaches that citric acid was a known agent to address the problem of iron fouling in a water softening resin. Here, we agree with the Examiner that Waatti I discloses the combination of inorganic salt and citric acid in Example 1, and further informs one of ordinary skill in the art that surfactants may be additionally added for heavily fouled resin beds. (Waatti I, col. 3, ll. 28–63, col. 4, ll. 18–45.) Accordingly, we are not persuaded by Appellant’s argument that one of ordinary skill in the art would have lacked a reasonable expectation of success in using citric acid in the manner applied by the Examiner, in combination with a surfactant and inorganic salt. Teaching Away Appellant contends that Waatti II, cited in the background of Waatti I teaches away from the using citric acid in a water softener composition, because it “tend[s] to cause acid fumes in the water softener†and also Appeal 2017-007170 Reexamination Control 90/010,810 Patent 7,588,696 B2 8 “accelerate[s] deterioration of the metal or plastic parts therein.†(App. Br. 17, quoting Waatti II, col. 2, ll. 20–24 and col. 3, ll. 61–65.) The Examiner’s position is that Waatti II discloses that citric acid is used commercially in water softening compositions and removes iron from the system. (Ans. 7, quoting Waatti II, col. 2, ll. 18–20.) The Examiner observes additionally that Waatti I, which is a later reference and does not repeat the discussion of Waatti II, does not incorporate Waatti II by reference, and further includes an embodiment showing the superiority of citric acid for iron removal. (Ans. 7, citing Final Act. 11.) The Examiner states also that the claims do not refer to metal or plastic materials. (Id.) A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). In determining whether prior art references teach away from the claimed combination, the nature of the teachings is highly relevant. Id. “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.†Id. We agree with the Examiner that Waatti I does not teach away from the use of citric acid in water softening compositions. That is, Waatti I discloses that citric acid has been commercially used in such compositions. Appeal 2017-007170 Reexamination Control 90/010,810 Patent 7,588,696 B2 9 (Col. 1, l. 65 – col. 2, l. 3.) Waatti I further evinces the effectiveness of the combination of citric acid and sodium chloride over MSC and SC, which would indicate that there is a trade-off between performance and potential side effects. (Waatti I, Ex. 1, Table 1.) In addition, the instant claims are directed to a composition and are not limited to the particular use described in Waatti II where “regular†treatment involving citric acid “can†accelerate damage to metal or plastic materials or that “tend†to cause acidic fumes. (Waatti II, col. 2, ll. 18–24, col. 3, ll. 63–66.) As discussed above, Waatti I, which was issued later than Waatti II, discloses that citric acid continues to be used in water softening treatments despite the potential undesirable side effects disclosed in Waatti II. Accordingly, we are not persuaded that Waatti I teaches away from compositions containing citric acid. Unexpected Results Appellant identifies the composition of Waatti I including sodium chloride solution and citric acid as the closest prior art. (App. Br. 17, 19.) Appellant contends that this composition is the closest prior art because Waatti I does not exemplify a composition that includes surfactant in addition to inorganic salt and acid. (Id.) We agree with Appellant that Waatti I does not expressly disclose a composition including a surfactant. Although Waatti I discloses that compositions disclosed therein may include surfactant (Waatti I, col. 3, ll. 27–63), Watti I does not exemplify one. . Appellant points to Table 5 of the ’696 Patent as support for the contention that the ’696 Patent discloses unexpected results. (App. Br. 18.) Appeal 2017-007170 Reexamination Control 90/010,810 Patent 7,588,696 B2 10 However, Appellant provides no further discussion regarding Table 5 other than reproducing it. (Id.) In particular, Appellant does not explain the numerous entries in Table 5 that show that citric acid and sodium chloride solutions were effective in killing bacteria without the presence of surfactant, where the amounts of acid and sodium chloride are within the ranges recited in the rejected claims. (’696 Patent, Table 5, Entries 3, 5, 7, 9–12.) The ’696 Patent expressly acknowledges this result, stating: “at lower acid levels, the SLS [sodium lauryl sulfate] increases the effectiveness of the mixture, but at higher acid levels, the SLS is not necessary.†(Col. 9, ll. 42– 49.) We observe that the claims encompass amounts of acid (for example, 0.3–25 weight percent in claim 1) and inorganic salt (for example, 75–99.7 weight percent in claim 1) that would include amounts rendering the surfactant unnecessary. (’696 Patent, Table 5, Entries 3, 5, 7, 9–12.) The rejected claims also recite a list of surfactants, but only one surfactant, SLS, is utilized in Table 1. As a result, Appellant has also not explained how the alleged unexpected results are commensurate in scope with the claims. See In re Kollman, 595 F.2d 48 (CCPA 1979); In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005)(“[T]he record does not show that the improved performance would result if the weight-percentages were varied within the claimed ranges. Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively, Harris needed to narrow the claims.â€). Appeal 2017-007170 Reexamination Control 90/010,810 Patent 7,588,696 B2 11 CONCLUSION On this record: the evidence of record does not support Appellant’s position that the modification of Waatti I proposed by the Examiner would render the composition of Waatti I unsuitable for its intended purpose; Waatti I, by virtue of referring to Waatti II, does not teach away from the proposed combination in view of the disclosed effect of citric acid on metal and plastic; and the ’696 Patent sufficient evidence of unexpected results commensurate in scope with the claims to outweigh the evidence in favor of obviousness. DECISION The Examiner’s decision to reject claims 1, 4, 7, 18, and 21–32 as under 35 U.S.C. § 103(a) as obvious over Waatti I 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). 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 Appeal 2017-007170 Reexamination Control 90/010,810 Patent 7,588,696 B2 12 FOR PATENT OWNER: CARGILL, INC. P.O. BOX 5624 MINNEPOLIS, MN 55440-5624 FOR THIRD-PARTY REQUESTER: BRINKS HOFER GILSON & LIONE P.O. BOX 10395 CHICAGO, IL 60610 cdc Copy with citationCopy as parenthetical citation