Ex Parte Unhoch et al

Patent Trial and Appeal Board

Mar 13, 2018

13689099 (P.T.A.B. Mar. 13, 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.
13/689,099 11/29/2012 Michael J. UNHOCH 419A-103407-US 8427
12596 7590 03/15/2018
LUCAS & MERCANTI, LLP
30 BROAD STREET
21st FLOOR
NEW YORK, NY 10004
EXAMINER
NGUYEN, JOHN P
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
03/15/2018 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):
info@lmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. UNHOCH and MIRTHA-SOFIA URIBE1
Appeal 2017-002831
Application 13/689,099
Technology Center 1600
Before RICHARD M. LEBOVITZ, DEBORAH KATZ, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a method of controlling algae in a body of recirculating or
stagnant water. The Examiner’s rejection of claims 15—20 under 35 U.S.C.
§ 103 is appealed.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Specification states:
Algae have always been a nuisance organism in swimming pools
and spas that is difficult to prevent and remediate. Algae cause
1 Appellants identify the Real Party in Interest as “Arch Chemicals, Inc.”
Br. 1.
2 Claims 1—14 stand withdrawn from consideration. Final Action 1.
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Application 13/689,099
the pool to become cloudy and green colored, pool surfaces to
become discolored and slippery and not visually appealing to
potential users or observers. While many treatments have been
proposed to address algal contamination, the challenge has
always been to find a stable and effective treatment to prevent
algae from appearing.
Spec. 1 6. “There are many different algaecides for treatment of water. Zinc
compounds and zinc salts may be used as an effective preventative treatment
for algae contamination, but should be used sparingly.” Id. 17. Further:
Many different chelating agents are commonly used in
swimming pools to control staining and scale formation without
regard to the algae preventative treatments being employed.
However, the chelating agent may also adversely affect the zinc
compound or zinc salts used as the algaecide. That is, the
chelating agent may serve to bind the active zinc. Therefore, it
is important to use the right chelating agent to control staining
and scale formation without affecting the algae treatment.
Id. 1 8. Also, “[separately, sodium hexametaphosphate (SHMP) has many
uses in swimming pools and recreational water systems. SHMP is used as a
water softener and a pH modifier, and is compatible with many sanitizers
(e.g., chlorine or chlorine sources) commonly used to clarify and disinfect or
sanitize pool water.” Id. 19.
Independent claim 15, reproduced below, is representative:
15. A method of controlling algae in a body of recirculating or
stagnant water, comprising the steps of:
a) providing a body of recirculating or stagnant water
containing algae; and
b) adding to said body of recirculating or stagnant water
an effective amount of a composition comprising a phosphorus-
containing compound being sodium hexametaphosphate, and
one or more water soluble zinc salts,
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wherein the phosphorus-containing compound is present
in an amount effective to enhance algaestatic activity of the water
soluble zinc salts and is a compound not readily hydrolyzable to
an orthophosphate, the amount effective is at least about 2 ppm
for the phosphorus-containing compound, and the weight ratio of
zinc ion from the water soluble zinc salts to the phosphorus-
containing compound is from about 2:1 to about 1:5.
Br. 10 (Claims App’x).
The following rejection is appealed:
Claims 15—20 stand rejected under 35 U.S.C. § 103(a) over
Wojtowicz3 and Sher.4 Final Action 9—10.
FINDINGS OF FACT
We adopt the Examiner’s findings of fact as set forth in the Final
Action and Answer. Final Action 3—8; Answer 2—8. We note the following
to highlight certain evidence.
FF1. Wojtowicz discloses:
Compositions consisting essentially of calcium hypochlorite and
a water soluble zinc salt, the compositions containing from about
40 percent to about 99 percent by weight of calcium
hypochlorite, provide controlled release of the components for
continuous and effective sanitation and algae control to waters
treated for use in swimming pools and spas.
Wojtowicz Abstract, id. at 1:48—52, 2:18—23; see also Final Action 3—
8 and Answer 2—8 (discussing Wojtowicz).
FF2. Wojtowicz discloses:
Suitable amounts of the composition are those which provide the
water with a concentration of zinc in the range of from about 0.2
to about 10 parts per million, preferably from about 1 to about 8
3 US 5,164,109 (issued Nov. 17, 1992) (“Wojtowicz”).
4 US 2005/0247637 A1 (pub. Nov. 10, 2008) (“Sher”).
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parts per million, and more preferably, from about 2 to about 6
parts per million.
Wojtowicz 2:41—46; see also Final Action 3—8 and Answer 2—8
(discussing Wojtowicz).
FF3. Wojtowicz discloses “the preferred water soluble zinc
salt is zinc sulfate and hydrates thereof,” and more specifically, “zinc
sulfate monohydrate.” Wojtowicz 2:66—68, 5:40 (Example 1); see
also Final Action 3—8 and Answer 2—8 (discussing Wojtowicz).
FF4. Wojtowicz discloses:
Additives which may be included in the novel
compositions of the present invention are those, for example,
which prevent scaling in pool feeders which use compressed
forms of the enhanced calcium hypochlorite compositions.
Wojtowicz 4:8—12, id. 4:13—49; see also Final Action 3—8 and Answer
2—8 (discussing Wojtowicz).
FF5. Sher discloses “a method that reduces limestone scale
deposit on surfaces and in heating elements, especially, for drinking
water in foodservice vending and dispensing machines without
affecting the water quality,” and states that “[sjcaling is one of the
most serious problems caused by water hardness.” Sher Abstract, 12;
see also Final Action 3—8 and Answer 2—8 (discussing Sher).
FF6. Sher discloses:
Inorganic scale inhibitors are also commonly used to treat
water against scaling. Among all inhibitors of scale formation
allowed for drinking water, polyphosphates seem to work the
best. One of the advantages of using polyphosphates is their
lower effective concentration (usually 1-10 ppm) as compared
to
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sequesters. In addition, polyphosphates are the cheapest anti­
scaling agents.
Sher 111 (emphasis added); see also Final Action 3—8 and Answer 2—
8 (discussing Sher).
FF7. Sher discloses:
Various metals, such as zinc, copper, or brass have been
employed, in general, to treat water, but typically for other
reasons, such as for reduction of levels of contaminants
(chlorine, nitrates, hydrosulfide, etc.) in water and/or for
bacteristatic/bactericidal functions.
Sher 113; see also Final Action 3—8 and Answer 2—8 (discussing
Sher).
FF8. Sher discloses combining scale-mitigating SHMP with
zinc in a metal-to-polyphosphate ratio of 95:5 to 5:95, for example a
composition that can provide “zinc in an amount effective to deliver
of 0.2 to 20 ppm in water and the polyphosphates being present in an
amount effective to release 1 to 10 ppm in water.” Sher || 17—18, 21,
30-35, claim 6; see also Final Action 3—8 and Answer 2—8 (discussing
Sher).
FF9. Sher discloses:
Preferably, the method is carried out to enable a release of
metal ions in water in a controlled manner. The release of metal
ions is in the order of 0.1 to 50 ppm. In a preferred solution, the
metal particulate comprises zinc in an amount effective to deliver
of from 0.2 to 20 ppm of zinc ions in water, preferably 0.5 to 8
ppm of zinc ions, most preferably 1 to 5 ppm of zinc ions.
Sher 131; see also Final Action 3—8 and Answer 2—8 (discussing
Sher); cf. Spec. 133 (confirming that water soluble zinc compounds,
such as zinc sulfate monohydrate provide a source of zinc ions).
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FF10. Sher discloses, “[t]he preferred concentration of
polyphosphates released in water is 1 to 10 ppm, and the most
preferable concentration is 2 to 4 ppm.” Sher 132; see also Final
Action 3—8 and Answer 2—8 (discussing Sher).
FF11. Sher discloses that the combination of zinc and
polyphosphate water treatment components mitigated the formation of
scale compared to compositions of zinc (or copper) or polyphosphates
used individually and “[i]t was surprisingly found that the metal
particulate [zinc ions] and polyphosphates [preferably SHMP] in
combination provided a synergetic effect on the control and reduction
of limestone scaling as compared to metal particulate or
polyphosphates used alone.” Sher || 45—60, 21 (Examples 1—3); see
also Final Action 3—8 and Answer 2—8 (discussing Sher).
DISCUSSION
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “[T]he analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id. at
418. “[T]he discovery of an optimum value of a variable in a known process
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is normally obvious.” In re Antonie, 559 F.2d 618, 620 (CCPA 1977).
Exceptions to this rule include (1) the results of optimizing a variable were
unexpectedly good and (2) the parameter optimized was not recognized in
the prior art as one that would affect the results. Id. That the prior art
“discloses a multitude of effective combinations does not render any
particular formulation less obvious[, which] is especially true [when] the
claimed composition is used for the identical purpose taught by the prior
art.” Merck & Co v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
“In determining whether the subject matter of a patent claim is obvious,
neither the particular motivation nor the avowed purpose of the patentee
controls. What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR, 550 U.S. at 419.
The claims require adding to recirculating or stagnant water “a
phosphorus-containing compound being sodium hexametaphosphate, and
one or more water soluble zinc salts.” The Examiner determined that the
combination of Wojtowicz and Sher teach and suggest combining a water
soluble zinc salt and SHMP in a water treatment composition. The
Examiner found that the cited prior art combination teaches the claimed
amounts, i.e., where the zinc is provided at 0.2—10 ppm, most preferably at
2—6 ppm, and the SHMP is provided at 1—10 ppm, most preferably at 2—\
ppm, such that the composition controls algae and mitigates scaling. FF1—
FF11. Zinc sulfate monohydrate at such levels was disclosed as keeping a
7,500 gallon outdoor pool free of algae. FF3; see also Wojtowicz 5:16-45
(Example 1). Wojtowicz teaches that it is advantageous to include an anti­
scaling additive in such a solution and Sher, confirming that scaling in water
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is a serious problem, teaches that polyphosphates, with SHMP being the
most preferred and also compatible with zinc for this purpose, “work the
best” as an anti-scaling additive because of “their lower effective
concentration (usually 1-10 ppm) as compared to other sequesters” and
because they “are the cheapest anti-scaling agents.” FF4, FF5—FF8, FF11.
Based on this evidence, we conclude the Examiner has established that the
prior art teaches and suggests making and using the composition of the
claimed method, having the claimed amounts of components, and that there
would have been motivation for the skilled artisan to do so, and that the
skilled artisan would have had a reasonable expectation of successfully
doing so.
Appellants argue the Examiner has improperly relied on the theory of
inherency regarding the claimed properties of the water-soluble zinc and
SHMP components used in the claimed method. Br. 3^4. Appellants argue
the Examiner erred in relying on Appellants’ Specification to support a
determination that SHMP does not convert into orthophosphate. Id. at 4—5.
Appellants also argue that they have established non-obviousness in view of
evidence of unexpected results and because the SHMP taught by Sher is not
equivalent to phosphobutane tricarboxylic acid, disclosed by Wojtowicz as
an anti-scaling additive and, so, a skilled artisan would not have made the
prior art combination. Br. 5—6. We have considered Appellants’ arguments
and supporting evidence,5 but are not persuaded.
5 Appellants submit a Declaration Under 37 C.F.R. § 1.132, signed by
Michael J. Unhoch, dated Aug. 6, 2014 (“Unhoch Deck”).
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To the extent Appellants argue the references individually, we do not
find such arguments persuasive because the rejection is over a combination
of prior art. “Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. [The references] must be read, not in isolation,
but for what [they] fairly teach [] in combination with the prior art as a
whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation
omitted).
Regarding Appellants’ inherency theory arguments, “[f]or chemical
compounds, the structure of the compound and its properties are
inseparable” considerations in the obviousness determination. See In re
Sullivan, 498 F.3d 1345, 1353 (Fed. Cir. 2007). The “discovery that a
claimed composition possesses a property not disclosed for the prior art
subject matter, does not by itself defeat aprima facie case.” In re Dillon,
919 F.2d 688, 693 (Fed. Cir. 1990). Here, the prior art combination provides
strong motivation to combine an algae-mitigating water-soluble zinc salt at
2—6 ppm with the anti-scaling additive sodium hexametaphosphate (SHMP)
at 2-4 ppm, which provides a zinc-to-SHMP ratio of 3:1 to 1:2. These
obvious components and amounts and ratio ranges thereof, as taught and
suggested by the prior art combination, fall squarely within the claimed
amounts and ratio ranges and would necessarily provide the properties and
functions recited by claim 15 in the same fashion as the claimed invention.
Further, Appellants’ Specification confirms that SHMP, as taught by Sher,
will not hydrolyze to orthophosphate. Spec. 131.
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Regarding Appellants’ argument that the Examiner improperly relied
on the Specification as evidence, we find no error in doing so. It was not
improper for the Examiner to have cited Appellants’ own statements as
evidence. The Specification states that a 2:1 zinc-to-SHMP ratio, which is
obvious in view of the prior art combination, enhances the algaestatic
activity of zinc ions. See Spec. 149. The Specification evidences the
natural, even if potentially latent, properties of the claimed components,
such as algaestatic activity and stability from hydrolyzing to orthophosphate.
Regarding Appellants’ argument that there would have been no
motivation to combine the teachings of Wojtowicz and Sher,
an implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but
when the “improvement” is technology-independent and the
combination of references results in a product or process that is
more desirable, for example because it is stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more efficient.
Because the desire to enhance commercial opportunities by
improving a product or process is universal—and even common-
sensical— . . . there exists in these situations a motivation to
combine prior art references even absent any hint of suggestion
in the references themselves. In such situations, the proper
question is whether the ordinary artisan possesses knowledge
and skills rendering him capable of combining the prior art
references.
Dystar Textilfarben Gmbh & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006). Here, the prior art explicitly urges the
combination of a zinc ion producer (e.g., soluble zinc salts) with SHMP, but,
moreover, the use of SHMP is especially urged by Sher because it is
disclosed to be the most preferred of the preferred class of efficiently
effective and inexpensive anti-scaling agents. Whether SHMP is a direct,
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equivalent replacement for the anti-scaling examples taught by Wojtowicz,
e.g., sodium or potassium salt phosphonobutane polycarboxylic acid, is not
determinative; however, we conclude the evidence shows that each of the
anti-scaling additives taught by the two references would have been an
effective anti-scaling additive to pair with zinc. FF4, FF6, FF11; see also
Wojtowicz 4:8-49 (discussing various anti-scaling additives), and Sher
10, 11, 17—21 (discussing various anti-scaling additives and techniques
and the synergistic result of pairing zinc and polyphosphates).
Regarding Appellants’ arguments alluding to unexpected results,
“[m]ere improvement in properties does not always suffice to show
unexpected results. In our view, however, when an applicant demonstrates
substantially improved results . . . and states that the results were
unexpected, this should suffice to establish unexpected results in the absence
of evidence to the contrary.” In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995)
(emphasis in original). “Normally, it is to be expected that a [nominal
compositional] change [e.g.,] in temperature, or in concentration, or in both,
would be an unpatentable modification. Under some circumstances,
however, changes such as these may impart patentability to a process if the
particular ranges claimed produce a new and unexpected result which is
different in kind and not merely in degree from the results of the prior art.
Such ranges are termed ‘critical’ ranges, and the applicant has the burden of
proving such criticality.” In reAller, 220 F.2d 454, 456 (CCPA 1955)
(citations omitted and emphasis added).
Regarding Appellants’ declaration evidence, Mr. Unhoch states that
the data in the Specification demonstrates the phosphononbutane
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tricarboxylic acid (“PBTC”) of Wojtowicz and the SHMP of Sher are not
equivalent and that this non-equivalency was surprising. (Unhoch Decl.
7—15.) We are not persuaded by Mr. Unhoch’s statements because the
Examiner’s rejection is not based on the equivalency of SHMP and PBTC.
Instead, the rejection is based on the teaching and suggestion in
Wojtowicz to use an anti-scaling agent with zinc and the teaching and
suggestion in Sher that SHMP is a known, most preferable anti-scaling
agent, especially useful in formulations with zinc. See, e.g., FF4, FF6, FF8—
F11. Even if the two anti-scaling agents are not equivalent or, more
accurately, do not produce identical results, SHMP is a known, effective
anti-scaling agent and, thus, using it for its known purpose would have been
obvious. Mr. Unhoch may state that the “non-equivalency” of SHMP and
PBTC “is considered surprising and that the claimed SHMP outperformed
other phosphate-based chelators (see Ans. 7—8); however, Appellants have
not demonstrated that such results differ by kind rather than merely by
degree as compared to the prior art. See In re Aller, 220 V.2d at 456. Even
“[sjynergism, in and of itself, is not conclusive of unobviousness in that
synergism might be expected.” In re Kollman, 595 F.2d 48, 55 n.6 (CCPA
1979). Moreover, as discussed above, there was strong motivation to
combine the soluble zinc salts (i.e., a zinc ion provider) with SHMP in the
amounts and ratios claimed, for the purpose of the claimed invention, based
on the disclosures of the prior art. Once such an obvious formulation is
made and used as intended, the results are necessarily a part of such a
method. “Mere recognition of latent properties in the prior art does not
render nonobvious an otherwise known invention.” In re Baxter Travenol
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Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Here, it was known that a zinc
and SHMP formulation should be used in water, as claimed, to effectively
and inexpensively mitigate algae and scaling. Moreover, a synergistic
relationship between a zinc ion producing component, such as a soluble zinc
salt, and a polyphosphate, such as SMHP, was known and expected based on
Sher. See, e.g., Sher 121.
For the reasons set forth above, we are not persuaded by Appellants’
arguments and evidence. We conclude the Examiner has established that the
claims would have been obvious over the cited prior art combination and
that Appellants have not shown error in the Examiner’s determinations.
Therefore, we affirm the rejection.
SUMMARY
The obviousness rejection 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)(l)(iv).
AFFIRMED
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