Hamilton Sundstrand Corporation

Patent Trials and Appeals BoardDec 13, 2021

2021001874 (P.T.A.B. Dec. 13, 2021)

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. 15/697,765 09/07/2017 Carol L. Metselaar 98933US01; 67036-899PUS1 9960 26096 7590 12/13/2021 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 EXAMINER ANDERSON, JAMES D ART UNIT PAPER NUMBER 1629 NOTIFICATION DATE DELIVERY MODE 12/13/2021 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): cgolaw@yahoo.com ptodocket@cgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CAROL L. METSELAAR, BARBARA M. PEYTON, and JOHN W. STEELE1 Appeal 2021-001874 Application 15/697,765 Technology Center 1600 Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and JOHN E. SCHNEIDER, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a biocide, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant identifies the real party in interest as Hamilton Sundstrand Corporation. Appeal Br. 1. “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appeal 2021-001874 Application 15/697,765 2 STATEMENT OF THE CASE The Specification describes an “aqueous biocide [that] includes an aqueous solution that has a silver complex. A ‘complex’ is a molecular entity that has a loose bonding association between two or more component entities. Here, the entities are a silver atom and an organic compound.” Spec. ¶ 23. “The aqueous solution, which may also be considered to be a base or stock solution, has a low pH. . . . Even diluted forms of the base aqueous solution at 5ppm and 0.5ppm have pH from 2 to 3.” Id. ¶ 24. “The stock aqueous solution with such low pH may be damaging to metallic alloys,” such as stainless steel and nickel-based alloys. Id. ¶ 25. “In order to render the base aqueous solution useable in coolant systems and the like, particularly those that utilize metal alloys, a pH buffer is added . . . in an amount that is effective to increase the pH into a range from approximately 6 to approximately 10.” Id. ¶ 26. Claims 1 and 21–25 are on appeal. Claim 1, reproduced below, is illustrative: 1. A biocide composed of: an aqueous solution containing biocidal silver atoms that are in a silver dihydrogen citrate complex, and a pH buffer including sodium carbonate and sodium bicarbonate, wherein the aqueous solution has a concentration of the biocidal silver atoms of 0.5 to 30 parts-per-million, a pH of 6- 10, and but for the pH buffer the aqueous solution has a pH of 2-3, the aqueous solution being in contact with a metallic alloy which is subject to corrosion at the pH of 2-3. Appeal 2021-001874 Application 15/697,765 3 OPINION Claims 1 and 21–25 stand rejected under 35 U.S.C. § 103 as obvious based on Arata ’6052 and Arata ’438.3 Final Action4 5. The Examiner finds that Arata ’605 “teaches an anhydrous concentrate comprising silver dihydrogen citrate,” which is “combined with an aqueous diluent to arrive at an aqueous anhydrous silver dihydrogen citrate composition.” Id. at 6. The Examiner also finds that Arata ’605 teaches that “an antimicrobially effective concentration of silver ion ranges from about 0.075 ppm to about 2,500 ppm, especially about 0.1 to about 1,000 ppm.” Ans. 5. The Examiner finds that Arata ’605 “teaches the use of the compositions on stainless steel, [and thus] meets the requirements of the metallic alloy recited in instant claims 1 and 23.” Final Action 6. The Examiner finds that Arata ’605 does not teach the pH buffer recited in claim 1, but Arata ’438 “discloses aqueous compositions comprising silver dihydrogen citrate in an amount from 5 ppm to 30 ppm” that “are pH neutral so as to provide a non-toxic, environmentally friendly, aqueous disinfectant.” Id. The Examiner finds that Arata ’438 exemplifies aqueous solutions containing a silver and citric acid complex having pHs of 6.0 and 7.0. Id. at 7. The Examiner concludes that it would have been obvious to “arriv[e] at the instantly claimed compositions in view of the teachings of ’605 and ’438” because “[b]oth ’605 and ’438 teach compositions comprising silver dihydrogen citrate which are suitable for cleaning hard surfaces [and] 2 US 2005/0245605 A1, published Nov. 3, 2005. 3 US 7,435,438 B1, issued Oct. 14, 2008. 4 Office Action mailed March 4, 2020. Appeal 2021-001874 Application 15/697,765 4 ’605 explicitly teaches the treatment of stainless steel, meeting the express requirements of a metallic alloy which is subject to corrosion at the pH of 2-3.” Final Action 7. The Examiner also concludes, [r]egarding the pH of the compositions, ’438 teaches adjusting the pH of the composition to about 6.0, and ’438 explicitly teaches the use of the buffer combination of sodium carbonate and sodium bicarbonate, as well as teaching the instantly claimed concentration of silver. The ordinarily skilled artisan would find ample motivation in the prior art to adjust the pH of the composition, particularly in view of ’438. Id. We agree with, and adopt, the Examiner’s reasoning and conclusion that the biocide of claim 1 would have been obvious to a person of ordinary skill in the art based on Arata ’605 and Arata ’438. Appellant argues that “the rejection fails to state a reason for modifying ’605.” Appeal Br. 3. Appellant argues that, although the Examiner finds that Arata ’438 would have provided ample motivation to adjust the pH of Arata ’605’s composition, “the rejection never states what the alleged ‘motivation’ is.” Id. The Examiner responds that the requisite motivation is expressly stated in Arata ’438, who teaches the aqueous compositions are pH neutral so as to provide a non-toxic, environmentally friendly, aqueous disinfectant. . . . See col. 6, lines 22-32. Thus, the requisite motivation to adjust the pH of an aqueous solution of silver dihydrogen citrate to a pH of about 6-7 is explicit in the cited art - so as to provide a non-toxic, environmentally friendly, aqueous disinfectant. Ans. 13–14. We agree with the Examiner’s reasoning. Appellant also argues that “[c]laim 1 recites, ‘but for the pH buffer the aqueous solution has a pH of 2-3,’” and “’438 merely teaches adjusting the Appeal 2021-001874 Application 15/697,765 5 pH of a disinfectant to increase shelf-life and therefore gives no indication of an aqueous solution that would ‘but for the pH buffer,’ have a pH of 2-3 as claimed.” Appeal Br. 2–3. This argument is also unpersuasive. As the Examiner has pointed out, “Appellants are arguing that a property the claimed solution has before the claimed and required buffer is added distinguishes the claimed solution from the prior art.” Ans. 10. But “Appellants are not claiming the aqueous solution before addition of a buffer.” Id. at 12. We agree with the Examiner. Claim language defining what a claimed composition would be but for the addition of a required component is analogous to defining a product by the method by which it is made; in either case, “it is the product itself which must be new and unobvious.” In re Pilkington, 411 F.2d 1345, 1348 (CCPA 1969). “If the product . . . is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). By extension, if the claimed composition is the same as or obvious from a composition of the prior art, the claim is unpatentable even if the prior art composition was made from a different starting composition. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 21–25 103 Arata ’605, Arata ’438 1, 21–25 Appeal 2021-001874 Application 15/697,765 6 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED