Ex Parte Felipe et al

Patent Trials and Appeals BoardJun 24, 2019

14319668 - (D) (P.T.A.B. Jun. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/319,668 06/30/2014 Mary Jane Legaspi Felipe 87884 7590 06/26/2019 Mossman, Kumar and Tyler, PC P.O. Box 421239 Houston, TX 77242 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 ATTORNEY DOCKET NO. CONFIRMATION NO. IND4-57574-US 1774 EXAMINER OYER, ANDREW J ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 06/26/2019 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): docket@mktlaw.com tthigpen@mktlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARY JANE LEGASPI FELIPE, CORINA SANDU, DAVID N. FULMER, and BING BING GUO Appeal2018-007828 Application 14/319,668 Technology Center 1700 Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicant 1 ("Appellant") appeals under 35 U.S.C. Â§ 134(a) from the Primary Examiner's final decision to reject claims 1, 5-8, 12-15, and 18-20. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 The Applicant is "BAKER HUGHES INCORPORATED" (Application Data Sheet filed June 30, 2014, 5), which is also identified as the real party in interest (Appeal Brief filed March 12, 2018 ("Appeal Br."), 3). 2 Appeal Br. 6--21; Reply Brief filed July 27, 2018 ("Reply Br."), 3-5; Final Office Action entered September 20, 2017 ("Final Act."), 2-8; Examiner's Answer entered June 1, 2018 ("Ans."), 4--10. Appeal2018-007828 Application 14/319,668 I. BACKGROUND The subject matter on appeal relates to methods for treating aqueous systems to decrease corrosion and/or scale deposition and to treated aqueous systems prepared from such methods (Specification filed June 30, 2014 ("Spec."), ,r 1 ). Representative claim 1 is reproduced from the Claims Appendix to the Appeal Brief, as follows: 1. A method comprising: adding a corrosion inhibitor consisting of at least one hydroxycarboxylic acid and at least one Zn (II) metal salt to an aqueous system in an effective amount to decrease corrosion as compared to an otherwise identical aqueous system absent the corrosion inhibitor; wherein adding the at least one hydroxycarboxylic acid and the at least one Zn (II) metal salt occurs at the same time or different times; and wherein the at least one hydroxycarboxylic acid is selected from the group consisting of saccharic acid, mucic acid, and salts thereof, and combinations thereof (Appeal Br. 22 (emphases added)). II. REJECTIONS ON APPEAL The claims on appeal stand rejected under 35 U.S.C. Â§ 103 3 as follows: A. Claims 1, 5-8, 12, 15, and 18 as unpatentable over Applied Chemicals Pty. Ltd. (GB 1 434 804, published May 5, 1976; "'804 Patent") in view of Smith et al. (US 2012/0119152 Al, published May 17, 2012; "Smith"); and 3 As the Examiner indicates (Final Act. 2), the subject application, which was filed June 30, 2014, is subject to the statutory provisions of the AIA. 2 Appeal2018-007828 Application 14/319,668 B. Claim 13, 14, 19, and 20 as unpatentable over the '804 Patent, Smith, and Gill et al. (US 2005/0150520 Al, published July 14, 2005; "Gill"). (Ans. 4--10; Final Act. 2-8). III. DISCUSSION The Appellant provides common arguments for all rejections and claims on appeal, focusing on independent claims 1, 14, 15, and 20 collectively (Appeal Br. 6-21 ). Therefore, consistent with the provisions of 37 C.F.R. Â§ 4I.37(c)(l)(iv), we confine our discussion to claim 1, and that discussion controls our decision as to all claims on appeal. The Examiner finds that the '804 Patent describes a method for preventing corrosion in cooling water systems in which a mixture of an aliphatic hydroxycarboxylic acid ( e.g., gluconic acid), or a water soluble salt thereof, and a water soluble Zn salt of another acid is added to the water (Ans. 4). The Examiner acknowledges that the '804 Patent does not specifically disclose, e.g., saccharic acid as an aliphatic hydroxycarboxylic acid that may be used (id.). The Examiner finds, however, that Smith teaches glucaric acid (i.e., saccharic acid) and gluconic acid, among other hydroxycarboxylic acids, may be used as corrosion inhibitors (id.). Based on these findings, the Examiner concludes that "it would have been obvious to a person having ordinary skill in the art to use the glucaric acid of Smith in place of the gluconate (i.e., gluconic acid) of [the] '804 [Patent] because Smith teaches that glucaric and gluconic acids are both hydroxycarboxylic acid compounds for use as a corrosion inhibitor" (id.). The Appellant contends that a prima facie case of obviousness has not been established because "[t]he [']804 Patent merely teaches the use of a 3 Appeal2018-007828 Application 14/319,668 zinc salt with gluconic acid and/or its salt and the combination of a zinc salt with hydroxycarboxylic acids and their salts in general to reduce corrosion" (Appeal Br. 15), while "Smith only discloses the benefits of using a corrosion inhibiting composition of a glucarate or gluconate with an oxoacid anion salt" (id.). In the Appellant's view, the "consisting of' language in claim 1 excludes Smith's oxoacid anion salt (id. at 16). The Appellant argues further that the 37 C.F.R. Â§ 1.132 Declaration of Inventor Mary Jane Legaspi Felipe filed November 29, 2017 ("Felipe Declaration" or "Felipe Deel.") provides evidence of unexpected results (id. at 16-20). The Appellant's arguments fail to identify reversible error in the Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). As the Examiner finds (Ans. 4), the '804 Patent discloses a method for forming an aqueous corrosion-inhibiting system by adding a mixture of an aliphatic hydroxycarboxylic acid ( e.g., gluconic acid) or a water-soluble salt thereof and a water soluble zinc salt of another acid to water, wherein the mixture provides superior anti-corrosion properties to the resulting aqueous solution ('804 Patent, 1, 1. 73-2, 1. 3). Although the '804 Patent does not identify all aliphatic hydroxycarboxylic acid species, we find no error in the Examiner's finding that "gluconic acid is an example of an aliphatic hydroxycarboxylic acid, not the only acceptable aliphatic hydroxycarboxylic acid" that may be selected to form the mixture (Ans. 8). Consistent with the '804 Patent's disclosure, Smith teaches that "[h ]droxycarboxylic acids and hydroxycarboxylic acid salts are well recognized as corrosion inhibitors particularly effective in inhibiting metal corrosion when the metal is in contact with water or aqueous solution" (Smith, ,r 3). Smith teaches that the additional presence of about 1 % to 4 Appeal2018-007828 Application 14/319,668 about 99% by weight of an oxoacid anionic salt produces esters of the hydroxycarboxylic acid "to form stable, water soluble complexes with metal ions such as calcium and magnesium, as opposed to hydroxycarboxylic acids alone[,] which typically form water insoluble salts with many metal ions" (id. ,r,r 20, 22). Smith teaches that specific hydroxycarboxylic acids that perform as corrosion inhibitors include glucaric ( saccharic) acid and gluconic acid (id. ,r 21 ). On these facts, we agree with the Examiner that a person having ordinary skill in the art would have been prompted to substitute Smith's glucaric (saccharic) acid for the gluconic acid in the '804 Patent's aqueous composition based on a reasonable expectation that these compounds would be interchangeable as corrosion inhibitors that would be suitable for the '804 Patent's purpose, thus arriving at a method encompassed by current claim 1. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007) ("[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result."); Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364---65 (Fed. Cir. 2012) ( explaining that a "strong case of obviousness" exists where the combination of ingredients recited in the claims were based on selections from a finite number of identified, predictable solutions). Although Smith teaches that the additional presence of an oxoacid anionic salt is advantageous in certain circumstances, that disclosure does not negate Smith's teaching that hydroxycarboxylic acids, as a class of compounds, were well-known corrosion inhibitors. As explained by our reviewing court, "case law does not require that a particular combination 5 Appeal2018-007828 Application 14/319,668 must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention." In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). See also id. at 1201 ("The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives [where] such disclosure does not criticize, discredit, or otherwise discourage the solution claimed." The Appellant's argument that claim 1 's language "adding a corrosion inhibitor consisting of at least one hydroxycarboxylic acid and at least one Zn (II) metal salt" ( emphasis added) excludes Smith's oxoacid anionic salt lacks persuasive merit because it fails to consider the prior art teachings as a whole. The rejection does not rely on substituting the '804 Patent's corrosion inhibitor system with Smith's improved corrosion inhibiting system including both a hydroxycarboxylic acid and an oxoacid anionic salt but rather that glucaric ( saccharic) acid and gluconic acid are interchangeable corrosion inhibitors for the purpose disclosed in the '804 Patent. In re Keller, 642 F.2d 413,425 (CCPA 1981). Moreover, as the Examiner aptly points out (Ans. 9), the term "comprising" to define the step( s) in the claimed method opens the claim to unrecited steps, such as a prior or post addition of another corrosion inhibition-enhancing compound, such as an oxoacid anionic salt. The aqueous system claims (i.e., claims 15 and 20) also do not exclude unrecited ingredients because: (1) "comprising" is open language; and (2) "a corrosion inhibitor consisting of' or "an additive consisting of' does not preclude the presence of another corrosion inhibition-enhancing compound. Regarding the Felipe Declaration, we discern no error in the Examiner's assessment of the proffered evidence-i.e., that the showing is 6 Appeal2018-007828 Application 14/319,668 not commensurate in scope with the claims (Ans. 9-10). Specifically, the results in Figure 1 (Felipe Deel. 4) appear to compare a combination of saccharic acid and zinc against, e.g., a combination of gluconic acid and zinc. The Declarant, however, does not explain the specific details of the amounts of saccharic acid and gluconic acid used or the identity of the zinc salt, and, therefore, it is not possible to evaluate the showing in a meaningful manner. Moreover, the proffered showing does not vary the composition, such as by testing various combinations that include mucic acid in various amounts and various zinc (II) salts in various amounts, so as to demonstrate that the unexpected results are commensurate in scope with the claims. 4 For these reasons and those given by the Examiner, we uphold the Examiner's rejections. IV. SUMMARY The Examiner's rejections under 35 U.S.C. Â§ 103 are sustained. Therefore, the Examiner's final decision to reject claims 1, 5-8, 12-15, and 18-20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). 4 In the Reply Brief, the Appellant argues that "the Examiner wholly ignores the data provided in the application as filed" (Reply Br. 3). That argument is inappropriate for two reasons. First, the Appeal Brief does not rely on any "data provided in the application as filed" (Appeal Br. 6--21 ). Absent a showing of good cause, a new argument relying on such "data provided in the application as filed" is not permitted. 3 7 C.F .R. Â§ 41.41 (b )(2). Second, it is inappropriate to refer to "data provided in the application as filed" without any reasonably specific explanation as to how that data is being used as rebuttal evidence. Cf In re Borkowski, 505 F.2d 713, 718 (CCPA 1974). 7 Appeal2018-007828 Application 14/319,668 AFFIRMED 8