Ex Parte 7588696 et al

Patent Trial and Appeal Board

Jun 9, 2017

90010860 (P.T.A.B. Jun. 9, 2017)

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 Patent”), 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.”).

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