Ex Parte Pawlik et alDownload PDFPatent Trial and Appeal BoardMay 5, 201513011151 (P.T.A.B. May. 5, 2015) 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. 13/011,151 01/21/2011 Michael J. Pawlik 10007333A1 4098 24959 7590 05/05/2015 PPG Industries, Inc. IP Law Group One PPG Place 39th Floor Pittsburgh, PA 15272 EXAMINER LEE, REBECCA Y ART UNIT PAPER NUMBER 1734 MAIL DATE DELIVERY MODE 05/05/2015 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 MICHAEL J. PAWLIK, THOR G. LINGENFELTER, and NATHAN J. SILVERNAIL ____________ Appeal 2013-007444 Application 13/011,151 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and ELIZABETH M. ROESEL, Administrative Patent Judges. ROESEL, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner’s rejections under 35 U.S.C. § 103(a) as follows: claims 1, 3–9, and 11–22 as unpatentable over Cheung et al. (US 7,199,094 B2, Apr. 3, 2007, “Cheung”), Perry et al. (US 2009/0197786 A1, Aug. 6, 2009, “Perry”), and Libutti et al. (US 6,514,350 B1, Feb. 4, 2003), and claim 10 as unpatentable over Cheung, 1 According to Appellants, the Real Party in Interest is PPG Industries Ohio, Inc. Br. 1. Appeal 2013-007444 Application 13/011,151 2 Perry, Libutti, and Feng et al. (US 2006/0076299 A1, Apr. 13, 2006, “Feng”). 2 Ans. 3–6; Br. 2–3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE The claimed subject matter relates to a method for removing rust from a ferrous metal-containing surface, such as the steel surface of storage tanks, ships, and bridges. Br. 18, 20 (claims 1, 18); Spec. ¶¶ 1–3. Claims 1 and 18 are representative of the subject matter on appeal and are set forth below: 1. A method for removing rust from a ferrous metal- containing surface comprising contacting the surface with a composition comprising: (a) a carboxylic acid in an amount of greater than 15 percent by weight based on the total weight of the composition; (b) a synthetic hectorite clay; and (c) water. 18. A method for removing rust from a ferrous metal- containing surface comprising spray applying a composition onto at least a portion of the ferrous metal-containing surface, the composition comprising: (a) a carboxylic acid in an amount of greater than 15 percent by weight based on the total weight of the composition; (b) a synthetic hectorite clay; and (c) water, wherein (i) the ferrous metal-containing surface is oriented substantially vertically, and (ii) the composition has a 2 The rejection of claim 8 under 35 U.S.C. § 112, fourth paragraph, is withdrawn. Ans. 6–7. Appeal 2013-007444 Application 13/011,151 3 low shear viscosity of at least 1,000 Pas and a high shear viscosity of no more than 0.50 Pas. Br. 18, 20 (Claims Appendix). ANALYSIS Claims 1 and 18 The Examiner finds that Cheung teaches a method of removing rust from a surface comprising all features of claim 1, except for the claimed amount of acid, use of synthetic hectorite clay, and removing rust from a ferrous metal-containing surface specifically. Ans. 3–4 (citing Cheung Abstract, claim 1). The Examiner concludes that the claimed amount of acid would have resulted from routine optimization of a result effective variable in accordance with Cheung, that the use of synthetic hectorite clay would have been obvious in view of Cheung and Perry, and that applying the claimed method to a ferrous metal-containing surface, such as steel, would have been obvious in view of Cheung, Perry and Libutti. Id. at 4 (citing Perry ¶¶ 79–90 and Libutti 2:56–58). The Examiner relies on the same reasoning to reject claim 18. Id. at 5. Appellants argue: (i) that Cheung and Perry are non-analogous art, (ii) that the cited art fails to teach the amount of acid recited in claims 1 and 18, (iii) that synthetic hectorite clay, as recited in claims 1 and 18, is not equivalent to the naturally occurring clays taught by the cited art, (iv) that the cited art does not teach or suggest a composition having the shear viscosities recited in claim 18, and (v) that any prima facie obviousness is rebutted by evidence of unexpected results. Br. 4–13. Upon consideration of the evidence presented in this Appeal and each of Appellants’ arguments, Appeal 2013-007444 Application 13/011,151 4 we are not persuaded that Appellants identify reversible error and find that a preponderance of the evidence supports unpatentability of the appealed claims over the applied prior art. We sustain the rejection of claims 1 and 18 based on the Examiner’s findings of fact, conclusions of law, and rebuttals to Appellants’ arguments, as expressed in the Answer. We add the following for emphasis. First, we are not persuaded of error in the Examiner’s conclusion that Cheung and Perry are analogous art under the applicable legal standard. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (“‘Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.’”). The Examiner correctly finds that Cheung and Perry are both pertinent to Appellants’ field of endeavor, namely cleaning a surface. Ans. 7. Compare Cheung Abstract (hard surface cleaning compositions); Perry, Abstract (hard surface cleaning compositions) with Spec. ¶ 1 (“The present invention relates to . . . methods for removing rust from a ferrous metal- containing surface.”). Appellants argue that Cheung and Perry are each concerned with cleaning lavatory fixtures, such as toilets, rather than ferrous metal structures such as storage tanks, ships and bridges. Br. 6–7. That argument is not persuasive in view of the Examiner’s undisputed findings that Cheung, like Appellants, discloses a process for removing rust from a hard surface, and that Perry likewise discloses a hard surface cleaning composition. Ans. 8–9; Cheung 11:40–12:6 (claim 1); Perry (Abstract). Appeal 2013-007444 Application 13/011,151 5 Second, we are not persuaded that the Examiner errs in finding that the amount of acid is a result effective variable for pH or in concluding that it would have been obvious to one of ordinary skill in the art to optimize the amount of acid at 10–30 wt.%, as claimed, in order to obtain a pH of 6.0 or less, as taught by Cheung. Ans. 3–4, 9–10. The Examiner’s finding is supported by Cheung, which teaches an amount of acid such that the pH of the composition is 6.0 or less. Cheung, Abstract; see also id. at 2:43–46 (“The amount of acid present in the composition . . . should be in an amount such that the pH of the composition is less than 6 . . .”). Appellants argue that Cheung teaches an amount of acid lower than the claimed amount of 15 percent by weight. Br. 8; see Cheung 4:30–32: (“an amount of acid from about 0.5 to about 10% by weight based on the total weight of a composition”). Appellants do not, however, direct us to evidence sufficient to persuade us that Cheung’s teaching of an amount of acid such that the pH is 6.0 or less does not encompass an amount of carboxylic acid that overlaps the claimed amount of greater than 15 percent by weight. In this regard, we note that Cheung teaches the same pH range as disclosed by Appellants, compare Cheung 2:45–46 (pH is less than 6) with Spec. ¶ 27 (pH of no more than 6.0), and many of the same carboxylic acids, compare Cheung 2:9–13 with Spec. ¶ 11 (both disclosing citric acid, acetic acid, formic acid, maleic acid, adipic acid, lactic acid, malic acid, malonic acid, and glycolic acid). Third, we are not persuaded of error in the Examiner’s conclusion that it would have been obvious to one of ordinary skill in the art to prepare the cleaning composition of Cheung using synthetic hectorite clay, as taught by Perry. Ans. 4, 7–9. In support of that conclusion, the Examiner correctly finds that Cheung teaches that clays, such as hectorite, can be used as a Appeal 2013-007444 Application 13/011,151 6 thickener in a cleaning composition. Ans. 8, 10; Cheung 11:47–59 (claim 1). The Examiner also correctly finds that Perry discloses thickeners in a cleaning composition, including clays such as Laponite, a synthetic hectorite clay. Ans. 4, 7–9, 10–11; Perry ¶¶ 79, 88, 90 (“Commercially available clays include, for example, . . . hectorite . . . The clays herein are available under various trade names such as . . . Laponite from Southern Clay Products, Inc. . . .”). We note that Appellants disclose Laponite as an example of synthetic hectorite clay suitable for use in the claimed method. Spec. ¶¶ 14, 32, 34 (Tables 1 and 3 disclosing Laponite RD commercially available from Southern Clay Products, Inc.). Appellants argue that one skilled in the art would not have replaced the naturally occurring clays taught by Cheung with synthetic hectorite clay, as claimed, asserting that natural and synthetic clays are not functional equivalents. Br. 9–10, 11–12 (citing Specification Examples 2A–C). Appellants’ argument is unsupported. Appellants provide no evidence controverting the Examiner’s finding that Cheung’s teaching of hectorite clays suggests that either natural or synthetic hectorite could be used in the cleaning composition. Ans. 10; Cheung 2:59–67. The Specification examples cited by Appellants compare a composition containing Laponite RD with compositions containing Bentonite or Kaolin. Spec. ¶ 34, Table 3. Absent evidence equating Bentonite and/or Kaolin with naturally occurring hectorite, these Examples are not persuasive to support nonobviousness of using synthetic hectorite, rather than naturally occurring hectorite, in Cheung’s cleaning composition. Fourth, we are also not persuaded of error in the Examiner’s conclusion that a cleaning composition as taught by Cheung in view of Perry Appeal 2013-007444 Application 13/011,151 7 and Libutti would be expected to have the same shear viscosities as recited in claim 18. Ans. 5, 10, 12–13. The Examiner correctly reasons that, because the prior art teaches the same or substantially the same composition as claimed by Appellants, it would be expected to have the same properties as taught for Appellants’ composition, and the burden is shifted to Appellants to show otherwise. Id. See, e.g., In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.”). Appellants attempt to rebut the Examiner’s conclusion with the argument that, whereas the claimed composition has shear viscosities suitable for spray application, the cited references do not disclose or suggest spraying the composition or modifying the composition to have a viscosity suitable for spraying. Br. 10–11. Appellants’ argument is not supported by the evidence. As noted by the Examiner, Perry teaches a composition that can be sprayed. Ans. 10; Perry ¶ 164 (“The composition provided according to the invention can be desirably provided . . . in a manually operated spray- dispensing container . . . [and] dispensed via a manually operated spray pump . . .”). Fifth, we are not persuaded that Appellants’ evidence of unexpected results is sufficient to rebut prima facie evidence. Appellants direct us to paragraphs 34 and 35 of the Specification relating to Examples 2A–C. Br. 12. According to Appellants, Example 2A corresponds to the composition of claims 1 and 18 and effectively removed rust from steel panels, while similar compositions containing Bentonite and Kaolin did not. Id.; Spec. ¶¶ 34, 35. We agree with the Examiner, however, that Appellants’ Appeal 2013-007444 Application 13/011,151 8 Specification data is not commensurate in the scope with claims 1 and 18. Ans. 11. See In re Dill, 604 F.2d 1356, 1361 (CCPA 1979). As noted by the Examiner, Ans. 11, claims 1 and 18 encompass compositions containing any synthetic hectorite clay, including at least the three types identified in Appellants’ Specification. Spec. ¶ 14 (“Synthetic hectorite clays . . . include, for example, LAPONITE RD, LAPONITE RDS, and LAPONITE JS, including combinations thereof.”) The cited Examples provide data for only one of these clays, Laponite RD. Appellants provide no evidence to support their assertion that Laponite RDS and Laponite JS would demonstrate similar results. Br. 12–13. In addition, Examples 2A–C illustrate only one carboxylic acid—citric acid—within the broad range of carboxylic acids encompassed by claims 1 and 18 and only one example of the relative amounts of carboxylic acid, clay and water within the broad ranges of amounts encompassed by claims 1 and 18. Furthermore, the cited Examples do not include a composition containing naturally occurring hectorite, which is arguably the closest prior art. Cf. Cheung 2:21 (disclosing hectorite); Br. 11 (asserting that natural hectorite clays are unstable and lose viscosity under acidic conditions). See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“when unexpected results are used as evidence of non-obviousness, the results must be shown to be unexpected compared with the closest prior art”). Accordingly, on this record, we are not persuaded that Appellants’ arguments and evidence are sufficient to outweigh the evidence of obviousness provided by the Examiner. Appeal 2013-007444 Application 13/011,151 9 Claim 10 Appellants present no separate argument in support of claim 10, merely referring back to their arguments regarding claim 1 and arguing that the additional reference (Feng) cited in support of the Examiner’s rejection of claim 10 does not overcome the asserted deficiencies of Cheung, Perry, and Libutti. Br. 13. We therefore sustain the rejection of claim 10 for the same reasons as set forth above with respect to claim 1. Claims 13 and 14 To the extent that Appellants present the same arguments in support of claims 13 and 14 as are presented for claim 18, compare Br. 14–15 with id. at 10, we are not persuaded for the same reasons as set forth above. In addition, we are not persuaded by Appellants’ argument that the claimed synthetic hectorite clay composition has unexpectedly improved shear viscosities over compositions containing Bentonite or Kaolin. Br. 15 (citing Spec. ¶¶ 13, 34, 35). The data in Appellants’ Specification relating to shear viscosities of Examples 2A–C, Spec. ¶ 36 (Table 4), are not persuasive to show unexpected results for the same reasons as set forth above. Claims 16 and 17 Appellants rely on and present the same arguments in support of claims 16 and 17 as are presented for claim 1, compare Br. 15–16 with id. at 10–11, and we sustain the rejection of these claims for the same reasons as set forth above. Claims 21 and 22 To the extent that Appellants rely on the same arguments in support of claims 21 and 22 as are presented for claim 1, Br. 16–17, we are not Appeal 2013-007444 Application 13/011,151 10 persuaded for the same reasons as set forth above. We are also not persuaded of error in the Examiner’s conclusion that it would have been obvious to omit the abrasive and surfactant from Cheung’s disclosed composition, along with the attendant functions and advantages of those ingredients. Ans. 13–14. See In re Thompson, 545 F.2d 1290, 1294 (CCPA 1976) (“elimination of the wax pretreatment and its function would have been obvious to one of ordinary skill in the art”); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (“deletion of the switch member (and other elements) found in [prior art], thereby deleting their function, was an obvious expedient”). As correctly noted by the Examiner, Appellants present no argument or evidence that their claimed composition has the functions or advantages of an abrasive and surfactant without the presence of those ingredients. Remaining Claims Appellants present no separate argument in support of dependent claims 3–9, 11, 12, 15, 19, or 20, and we sustain the rejection of these claims for the same reasons as set forth above. CONCLUSION OF LAW AND DECISION The decision of the Examiner rejecting claims 1 and 3–22 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a) (1). 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