BASF SEDownload PDFPatent Trials and Appeals BoardMar 31, 20212020003107 (P.T.A.B. Mar. 31, 2021) 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. 15/544,065 07/17/2017 Stephen F. GROSS PF77087US02/065384.00458 9500 123223 7590 03/31/2021 Faegre Drinker Biddle & Reath LLP (WM) Attn: Intellectual Property Group One Logan Square, Suite 2000 Philadelphia, PA 19103-6996 EXAMINER DELCOTTO, GREGORY R ART UNIT PAPER NUMBER 1761 NOTIFICATION DATE DELIVERY MODE 03/31/2021 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): DBRIPDocket@faegredrinker.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN F. GROSS Appeal 2020-003107 Application 15/544,065 Technology Center 1700 Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and JEFFREY R. SNAY, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 4–6, 8, 10, 12, 14–19, and 21–27. See Appeal Br. 2, 7–24. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part. 1 This Decision includes citations to the following documents: Specification filed July 17, 2017 (“Spec.”); Final Office Action mailed September 12, 2019 (“Final Act.”); Appeal Brief filed December 27, 2019 (“Appeal Br.”); Examiner’s Answer mailed January 22, 2020 (“Ans.”), and Reply Brief filed March 19, 2020 (“Reply Br.”). 2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as BASF SE. Appeal Br. 2. Appeal 2020-003107 Application 15/544,065 2 CLAIMED SUBJECT MATTER Appellant states the invention relates to a cleaning composition useful for dishwashing and including alkoxylated polyethylenimine and a surfactant actives component. Spec. ¶ 2. Claim 19, reproduced below, is the only independent claim on appeal and is illustrative of the claimed subject matter (Appeal Br. 26 (Claims App.)): 19. A cleaning composition for dishwashing, said cleaning composition comprising: an alkoxylated polyethylenimine in an amount of from 0.1 to 5 wt.%; and a surfactant actives component consisting essentially of; an anionic surfactant in an amount of from 5 to 20 wt.%, a betaine in an amount of from 0.1 to 7 wt.%, and a nonionic surfactant in an amount of from 1 to 20 wt.%; with the proviso that the total wt.% of said anionic surfactant, said betaine, and said nonionic surfactant is in an amount of at least 20 wt.%; and wherein said cleaning composition is free of an alcohol; wherein said cleaning composition is free of an amine oxide; and wherein each wt.% is based on a total weight of said cleaning composition. Appeal 2020-003107 Application 15/544,065 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Murphy et al. (“Murphy”) US 2012/0231989 A1 Sept. 13, 2012 Woo et al. (“Woo”) US 2013/0247941 A1 Sept. 26, 2013 Hardy US 2013/0267451 A1 Oct. 10, 2013 Coore-Mans et al. (“WO’645”) WO 2007/135645 A2 Nov. 29, 2007 REJECTIONS 1. Claims 4–6, 8, 10–12, 14, 15, 18, 19, 23–25, and 27 are rejected under 35 U.S.C. § 103 as unpatentable over WO’645. Final Act. 5. 2. Claims 16, 17, 21, and 22 are rejected under 35 U.S.C. § 103 as unpatentable over WO’645 and Hardy. Final Act. 7. 3. Claim 26 is rejected under 35 U.S.C. § 103 as unpatentable over WO’645 and Hardy or Murphy. Final Act. 8. 4. Claims 4–6, 8, 10–12, 14–19, and 21–27 are rejected under 35 U.S.C. § 103 as unpatentable over Murphy and WO’645 or Woo. Final Act. 8. OPINION Appellant presents separate arguments with respect to claims 16, 17, 19, and 21–27. See Appeal Br. 7–24. We select claims 16, 19, 23, and 25– 27 as representative for disposition of this appeal. 37 C.F.R. § 41.37(c)(1)(iv) (2019). Appeal 2020-003107 Application 15/544,065 4 Rejection 1 The Examiner’s Rejection In rejecting claim 19 as unpatentable over WO’645, the Examiner found WO’645 discloses liquid detergent compositions including 0.1% to about 10% by weight of alkoxylated polyethyleneimine polymer. Final Act. 5. The Examiner found that WO’645 discloses the composition includes from about 30% to 80% of an aqueous liquid carrier in which other essential and optional components are dissolved, dispersed, or suspended. Id. at 5. The Examiner found that although WO’645 may comprise amine oxide, WO’645 discloses amine oxides are not required, because amine oxides are listed under the heading of optional surfactants for use in the composition. Id. at 5–6 (citing WO’645 7, l. 25 – 8, l. 6). The Examiner found WO’645 discloses amphoteric surfactants including amido propyl betaines in amounts preferably from about 0.5% to about 10% by weight. Id. at 6 (citing WO’645 12, ll. 1–30). The Examiner found WO’645 does not disclose with sufficient specificity, a composition having a specific pH containing an alkoxylated polyethyleneimine, an anionic surfactant, a betaine, a nonionic surfactant, water, and the other requisite components of the composition in the specific amounts as recited by the instant claims, but nevertheless determined that it would have been obvious to have formulated such a composition in view of the teachings in WO’645. Id. at 6–7. Appellant’s Arguments Appellant argues that WO’645 does not disclose betaines, and as a result, does not disclose betaines present in 0.1 to 7% by weight as claimed. Appeal Br. 11. Appellant argues that the amine oxide surfactant in WO’645 Appeal 2020-003107 Application 15/544,065 5 is not an optional component, and as such, WO’645 teaches away from excluding amine oxides, which are specifically excluded from claim 19. Id. Similarly, Appellant argues that WO’645 teaches away from excluding alcohol, whereas claim 19 specifically excludes alcohol. Id. at 11–12. Issue Did the Examiner err in determining that claim 19 would have been obvious over WO’645? Discussion We are not persuaded by Appellant’s arguments. As to Appellant’s argument that WO’645 does not disclose betaines, this argument is without merit as WO’645 expressly discloses amphoteric detergent surfactants including amido propyl betaines may be added to the composition in amounts of 0.01% to about 20%, preferably 0.5 to about 10% by weight, which encompasses the percentages recited in claim 19. WO’645 12. We are also not persuaded by Appellant’s argument that WO’645 requires the presence of amine oxide, and as such, teaches away from claim 19, which recites the composition is “free of an amine oxide.” WO’645 discloses that the composition may contain “[o]ptional surfactants,” where the optional surfactants contain amine oxides. WO’645 7–8, 11–12. Moreover, claim 1 of WO’645 does not recite the presence of amine oxides in the composition. WO’645 18. The presence of amine oxide is not recited until claim 7 of WO’645, which depends from claim 1. WO’645 19. Accordingly, while WO’645 may provide examples of suitable compositions including amine oxide as pointed out by Appellant (WO’645 16 (Table 1)), Appeal 2020-003107 Application 15/544,065 6 WO’645 is not limited by this disclosure. See Merck & Co., Inc v. Biocraft Labs., Inc., 874 F.2d 804, 807–08 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). The disclosure of a reference is not limited to what is disclosed in the examples. In re Heck, 699 F.2d 1331, 1332–33 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)). Thus, WO’645 does not require the presence of amine oxides as argued by Appellant, and as a result, the Examiner’s reasoning that it would have been obvious to have formulated a composition free of amine oxide in view of WO’645 is sufficiently supported by the record. Similarly, we are not persuaded by Appellant’s argument that WO’645 requires the presence of alcohol due to the inclusion of ethanol in the example compositions. WO’645 discloses that the aqueous liquid carrier “may contain other materials” such as solvents, such that additional solvents are not required. WO’645 7. Moreover, even if another solvent is added to the composition, WO’645 discloses other solvents besides alcohols, for example, ethers, amines, and hydrocarbons (WO’645 12), such that the recitation in claim 18 that the composition is free of alcohol would still be met. As a result, we affirm the Examiner’s decision to reject claim 19 as obvious over WO’645. Rejection 2 – Claims 16, 17, 21, and 223 Claim 16 depends from claim 19, and further recites that the cleaning composition contains lactic acid. The Examiner found that WO’645 does 3 We address Appellant’s arguments with respect to claims 23, 25, and 27, also subject to Rejection 1 below, because even though these claims are Appeal 2020-003107 Application 15/544,065 7 not teach the use of lactic acid, but found that Hardy discloses self- preserving dishwashing liquids with pH in the range of 2.5 to 5, where acids such as lactic acid, may be used to provide a pH that provides antibacterial properties. Final Act. 7 (citing Hardy ¶¶ 24–25). The Examiner determined it would have been obvious to have used lactic acid in the composition of WO’645 to provide antibacterial protection and pH adjustment, where WO’645 discloses pH buffers in general. Id. at 7–8. Appellant contends that Hardy does not cure the deficiencies of WO’645 and that Hardy teaches away from the amounts of anionic surfactant active components recited in the claims. Appeal Br. 15–16. We are not persuaded by Appellant’s argument, because, as the Examiner points out, WO’645 is relied on for the amounts of anionic surfactant, whereas Hardy is relied on for pH adjustment of the composition using lactic acid to provide antibacterial protection. Ans. 13–14; see Hardy ¶¶ 24, 25. In this regard, WO’645 discloses that the liquid detergent compositions “may have any suitable pH” and that “[t]he pH of the composition can be adjusted using pH modifying ingredients known in the art.” WO’645 7. Appellant does not present a sufficient argument that the use of lactic acid in order to adjust pH as disclosed in Hardy requires the presence of the particular amounts of anionic surfactant in the composition disclosed in Hardy. listed as part of Rejection 1, they depend either directly or indirectly from claims 16 (subject to Rejection 2) or claim 26 (subject to Rejection 3). Thus, we find it logical to address Appellant’s argument regarding claim 16, prior to addressing claims 23 and 25, and Appellant’s arguments with respect to claim 26 prior to addressing Appellant’s arguments with respect to claim 27. Appeal 2020-003107 Application 15/544,065 8 Accordingly, we affirm the Examiner’s rejection of claims 16, 17, 21, and 22. Claims 23–27 Claim 23 depends from claim 22, and further recites the composition comprises water in an amount of from 70 to 80 wt.% based on a total weight of the cleaning composition. Appellant acknowledges that WO’645 discloses the aqueous liquid carrier may be present in about 30% to about 80% of the composition (Appeal Br. 16–17 (quoting WO’645 7)), but argues that WO’645 discloses a preferred range of water that is between 45% to 65%, which is lower than the amount recited in claim 23. Id. We are not persuaded by this argument, because, as discussed above, a prior art reference may be relied on for all that it contains, and the claimed range is encompassed by the range disclosed in WO’645. In re Peterson, 315 F.3d 1325, 1330 (Fed Cir. 2003) (“We therefore conclude that a prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. That is not to say that the claimed composition having a narrower range is unpatentable. Rather, the existence of overlapping or encompassing ranges shifts the burden to the applicant to show that his invention would not have been obvious.”) Accordingly, we affirm the Examiner’s rejection of claims 23 and 24. Appeal 2020-003107 Application 15/544,065 9 Claim 25 (Rejection 1) Claim 25 depends from claim 23, and further recites specific amounts for certain components of the composition. Appeal Br. 28 (Claims App.). Appellant contends generally that the specific amounts are not taught by the applied references, that there would be too much manipulation required to selectively choose each ingredient, and that the data in the Specification show unexpected results. Appeal Br. 18. We are not persuaded by Appellant’s arguments as such arguments do not provide sufficient detail in disputing the Examiner’s findings (Final Act. 5–7) and as such, amount to statements merely pointing out what the claim recites. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 26 (Rejection 3) Claim 26 depends from claim 25 and recites “wherein the composition has a pH of 3.” Appellant contends WO’645 teaches away from using a pH of 3 by further disclosing the pH of the composition is preferably between 4 and 14 and 6 and 13. Appeal Br. 19 (citing WO’645 7). We are not persuaded by this argument. WO’645 clearly discloses “[t]he liquid detergent composition may have any suitable pH.” WO’645 7. WO’645 does not criticize pH below 4. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed. . . .”). Moreover, Appellant does not address the Appeal 2020-003107 Application 15/544,065 10 Examiner’s rationale in the rejection, which relies on Hardy or Murphy for the use of pH lower than 3. See Final Act. 7–9. Accordingly, we affirm the Examiner’s rejection of claim 26. Claim 27 (Rejection 1) Claim 27 depends from claim 26, and recites a particular alkoxylated polyethyleneimine, which is an ethoxylated polyethyleneimine having 20 ethylene oxide units. Appeal Br. 29 (Claims App.). The Examiner found that WO ’645 discloses an alkoxylated polyethyleneimine polymer including a polyethyleneimine backbone having a molecular weight of 400–10000 and an average of about 1 to about 30 alkoxy moieties per modification. Final Act. 5. In view of these teachings, the Examiner determined WO’645 clearly suggests the ethoxylated polyalkyleneimine recited in claim 27. Ans. 16. Appellant contends the claimed ethoxylated polyethyleneimine has a weight average molecular weight of 11,000 g/mol, whereas the polyethyleneimines exemplified by WO’645 (formulas I and II) have a much lower molecular weight and have a different structure than the recited ethoxylated polyethyleneimine, and that the alkoxy groups of the structure in claim 27 must be ethoxy whereas WO’645 discloses ethoxy, 1,2-propoxy, 1,3-propoxy, butoxy, and combinations thereof. Appeal Br. 21–24; Reply Br. 2–8. We are persuaded by Appellant’s arguments. Although WO’645 discloses the backbone of the polyethyleneimine has a molecular weight range of 400–10000 and example structures where the backbone has a weight average molecular weight of 600 or 5000 (WO’645 2–4), which Appeal 2020-003107 Application 15/544,065 11 includes the weight average molecular weight of the polyethyleneimine backbone for the recited ethoxylated polyethyleneimine of 600 g/mol (see Spec. ¶ 17), we agree with Appellant that WO’645 discloses lower amounts of alkoxylation leading to overall lower degrees of alkoxy substitution for the substituted polyethyleneimines in WO’645 than the structure recited in claim 27. That is, WO’645 discloses a lower degree of ethoxylation of 5 to 15 and n in formula (I) having an average of 5–10 and m in formula (II) having an average of 7. WO’645 3–4; see also 5–7 (Ex. 1–4). As a result, we are of the view that the Examiner has not provided a sufficient rationale that WO’645 suggests the ethoxylated polyethyleneimine recited in claim 27. In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994) (“The fact that a claimed compound may be encompassed by a disclosed generic formula does not by itself render that compound obvious.”) Therefore, we reverse the Examiner’s decision to reject claim 27. Rejection 4 The Examiner’s Rejection In rejecting claim 19 as unpatentable over Murphy and WO’645 or Woo, the Examiner found Murphy discloses dishwashing liquids with enhanced cleaning ability having a number of the components recited in claim 19. Final Act. 8–9. The Examiner found Murphy does not disclose an alkoxylated polyethyleneimine, or a composition having a specific pH containing such a component along with the other components recited in claim 19 in the specific amounts recited therein. Id. at 9. The Examiner relied on WO’645 for its teachings as discussed above with respect to Rejection 1. Id. at 9. The Examiner found Woo discloses a dishwashing Appeal 2020-003107 Application 15/544,065 12 liquid with a malodor control component. Id. at 10. The Examiner found Woo discloses the composition may contain surfactants, as well as an alkoxylated polyethyleneimine polymer in amounts from 0.01 to 10% by weight as a cleaning polymer. Id. The Examiner determined, inter alia, that it would have been obvious to have used an alkoxylated polyethyleneimine in the compositions taught by Murphy because WO’645 or Woo discloses that alkoxylated polyethyleneimine enhances cleaning in similar compositions and Murphy discloses optional ingredients, which would encompass cleaning polymers. Id. Appellant’s Arguments Appellant reiterates the arguments made with respect to WO’645 in conjunction with Rejection 1 as discussed above to argue the Examiner is selectively picking and choosing from WO’645. Appeal Br. 13. Appellant argues Woo discloses the same alkoxylated polyalkyleneimine as in WO’645, and as such, similar to WO’645, the Examiner is selectively picking and choosing from Woo. Id. at 13–14. Appellant argues also that the data disclosed in the Specification rebuts the Examiner’s prima facie case of obviousness, because it shows that compositions including alkoxylated polyalkyleneimines have superior cleaning performance relative to cleaning compositions that do not use alkoxylated polyethyleneimines, demonstrating unexpected results. Id. at 14. Issue Did the Examiner err in determining that claim 19 would have been obvious over the combination of Murphy WO’645, and Woo? Appeal 2020-003107 Application 15/544,065 13 Discussion We are not persuaded by Appellant’s arguments. Although Appellant argues generally that the Examiner is selectively picking and choosing from Woo (Appeal Br. 13–14), Appellant does not provide a sufficient argument to demonstrate error in the Examiner’s position. Woo expressly discloses the use of alkoxylated polyethyleneimine polymers as a “Cleaning Polymer” in amounts overlapping, encompassing, and encompassed by the range recited in claim 19. Woo ¶ 67. Appellant has not sufficiently explained a deficiency in the Examiner’s rationale for including an alkoxylated polyethyleneimine cleaning polymer in Murphy, where Murphy expressly allows for additional components to be added. Murphy ¶ 100. We are also not persuaded by Appellant’s argument that the data in the Specification is sufficient to establish unexpected results of the composition of claim 19 over the compositions disclosed in Murphy. Appellant relies on the “superior cleaning performance” of Example 3 over Comparative Example 3 attributed to “the inclusion of alkoxylated PEI” to support their position. Spec. ¶¶ 95, 96 (Table II). However, as the Examiner points out (Ans. 17), such examples are not commensurate in scope with claims. Indeed, both Comparative Example 3 and Example 3 contain alcohol, which is expressly excluded by claim 19. Spec. ¶¶ 95, 96 (Table II). In addition, the difference between the composition of Example 3 and the composition of Comparative Example 3 is that the alkoxylated PEI in Example 3 replaces a portion of Diluent 1 in Comparative Example 3. Id. (Comp. Ex. 3 Diluent 1, 46.70 % by wt., Ex. 3 Diluent 1, 46.36% by wt., Appeal 2020-003107 Application 15/544,065 14 Alkoxylated PEI, 0.34 % by wt.). Thus, Example 3 contains additional cleaning component in the form of alkoxylated PEI instead of diluent. Given that as discussed above, Woo recognizes that alkoxylated PEI is a cleaning polymer, Appellant does not sufficiently explain why one of ordinary skill in the art would have considered improved cleaning performance of Example 3 to be unexpected. Ans. 18. Example 4 and Comparative Example 4, both of which contain amine oxide and also relied on by Appellant, are similarly deficient. Spec. ¶ 95 (Table II). Appellant contends also that Examples 1 and 2 show similar unexpected better results relative to Comparative Examples 1 and 2 respectively. Appeal Br. 14. However, Appellant contends only that such examples “show similar results” to Example 3. Id. Appellant does not explain why the viscosity results discussed for Examples 1 and 2 would have been unexpected. Further, it is well settled that “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) Claim 23 Claim 23 recites “[t]he cleaning composition of claim 22, further comprising water in an amount of from 70 to 80 wt.% based on a total weight of said cleaning composition.” The Examiner found Murphy discloses water is present in amounts of from 35% to about 90% by weight of the composition. Final Act. 9 (citing Murphy ¶ 91). Appellant’s arguments with respect to WO’645 (Appeal Br. 16–17) have been discussed above. Appellant acknowledges Woo discloses Appeal 2020-003107 Application 15/544,065 15 overlapping amounts of water (30% to 95% of an aqueous liquid carrier) and that Murphy discloses overlapping amounts of water, and repeats the arguments addressed above with respect to claim 19. Appeal Br. 17–18. We are not persuaded by Appellant’s arguments for the reasons addressed above with respect to claim 19 and as discussed above with respect to claim 23 in conjunction with Rejection 1. Accordingly, we affirm the Examiner’s decision to reject claim 23. Claim 25 Appellant does not set forth any particular arguments with respect to claim 25 pertaining to Rejection 4. See Appeal Br. 18. Accordingly, we affirm the Examiner’s decision to reject claim 25 (Final Act. 9–11) for similar reasons as discussed above for Rejection 1. Claim 27 For claim 27, the Examiner relies on both WO’645 and Woo for the structure recited in the claim. Final Act. 9–10 (additionally citing Woo ¶¶ 67–71 (relying on the alkoxylated polyethylene imines disclosed in WO’645)). Woo does not remedy the deficiencies identified above with respect to WO’645. Accordingly, we reverse the Examiner’s rejection of claim 27 for similar reasons as discussed above with respect to Rejection 1. Appeal 2020-003107 Application 15/544,065 16 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 4–6, 8, 10, 12, 14, 15, 18, 19, 23– 25, 27 103 WO’645 4–6, 8, 10, 12, 14, 15, 18, 19, 23– 25 27 16, 17, 21, 22 103 WO’645, Hardy 16, 17, 21, 22 26 103 WO’645, Hardy, Murphy 26 4–6, 8, 10, 12, 14–19, 21–27 103 Murphy, WO’645, Woo 4–6, 8, 10, 12, 14–19, 21–26 27 Overall Outcome 4–6, 8, 10, 12, 14–19, 21–26 27 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 IN PART Copy with citationCopy as parenthetical citation