BASF SE

Patent Trials and Appeals Board

Mar 31, 2021

2020003107 (P.T.A.B. Mar. 31, 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.
15/544,065 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.
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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.
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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).
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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
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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)),
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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
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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.
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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.

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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
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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
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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
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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?
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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.,
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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
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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.

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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