Cargill, IncorporatedDownload PDFPatent Trials and Appeals BoardDec 18, 20202020006385 (P.T.A.B. Dec. 18, 2020) 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. 15/604,033 05/24/2017 Timothy A. Murphy 4361.0411US2 9769 139867 7590 12/18/2020 CARGILL, INCORPORATED / SLW P.O. Box 5624 Minneapolis, MN 55440-5624 EXAMINER HINES, LATOSHA D ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 12/18/2020 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): patent_docketing@cargill.com slw@blackhillsip.com uspto@slwip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY A. MURPHY and JAMES THOMAS GROCE Appeal 2020-006385 Application 15/604,033 Technology Center 1700 Before JEFFREY T. SMITH, JAMES C. HOUSEL, and N. WHITNEY WILSON, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 2–8, 10, 12, 16, 17, and 21–39.1 See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Cargill, Incorporated as the real party in interest. Appeal Br. 2. Appeal 2020-006385 Application 15/604,033 2 CLAIMED SUBJECT MATTER The claims are directed to a wax compositions and the effect of metals on burn rates. Claim 2, reproduced below, is illustrative of the claimed subject matter: 2. A candle comprising a wick in a candle wax composition, the candle wax composition comprising: a hydrogenated natural oil composition having a melting point of 49 °C to 57 °C, wherein the hydrogenated natural oil composition is one or more triacylglycerols, wherein the one or more triacylglycerols have a fatty acid composition of from 14 wt% to 25 wt% Cl6:0 fatty acids, from 45 wt% to 60 wt% Cl8:l fatty acids, and from 20 wt% to 30 wt% Cl8:0 fatty acids, the hydrogenated natural oil composition is at least 50 wt% of the wax composition, the wax composition has a nickel content of less than 0.5 ppm, and every triacylglycerol in the wax composition contains exactly one glycerol and exactly three carboxylic acid groups, each of which is esterified to the glycerol. Appeal Br. 33, Claims App. Appeal 2020-006385 Application 15/604,033 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Kopp US 4,857,237 Aug. 15, 1989 Murphy US 6,503,285 B1 Jan. 7, 2003 Uptain US 2010/0132250 A1 June 3, 2010 Tao US 8,137,418 B2 Mar. 20, 2012 BFR Lead, nickel and allergenic scents in candles to be restricted, BFR opinion No. 004/2014 www.bfr.bund.de, hereinafter “BFR” Nov. 11, 2013 REJECTIONS Claims 2–7, 10, 12, 16, 17, 21, and 23–29 are rejected under 35 U.S.C. § 103 as unpatentable over Murphy, Uptain, and BFR. Final Act. 3. Claims 8, 22, and 30–39 are rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Murphy, Uptain, BFR, and further in view of Tao. Final Act. 8. OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged Appeal 2020-006385 Application 15/604,033 4 error in the examiner’s rejections.”) (citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)). The dispositive issue for this appeal is: Did the Examiner err in utilizing the teachings of the BFR reference in rejecting the appealed claims? Appellant argues BFR is the only reference relied upon for providing motivation to utilize a low nickel concentration. Appellant contends BFR, published November 11, 2013, is not available as “prior art” because it was published later than the priority date of the present application of February 17, 2013. Appeal Br. 13. As evidence of obviousness of the subject matter recited in the appealed claims 2–8, 10, 12, 16, 17, and 21–39 under 35 U.S.C. § 103, the Examiner relies upon the disclosure of the combination of Murphy and Uptain, as evidenced or explained by BFR.2 Final Act. 3, 8. The Examiner finds Murphy discloses candles formed from triacylglycerol-based wax that differs from the claimed invention by failing to state the wax composition has a nickel content of less than 0.5 ppm. Final Act. 3–4. The Examiner finds Uptain discloses a process for making candles from wax wherein the wax is formed from the hydrogenation natural oils and the hydrogenation catalyst is removed from the hydrogenated product utilizing filtration techniques. Final Act. 4–5; Uptain ¶¶ 83, 85. The Examiner cites BFR to establish the detrimental effects of including nickel in candle compositions. The Examiner specifically states: The BFR opinion No. 004/2014 [teaches] inhalation of nickel may cause cancer. For this reason, nickel should be reduced in candles to the lowest level technically achievable. From the health perspective a 2 The Examiner cited Tao to address the additional limitations of dependent claims 8, 22, and 30–39. Appeal 2020-006385 Application 15/604,033 5 quantity of 0.6 nano grams (ng) of nickel per gram of candle should not be exceeded. Final Act. 4. The only reference relied upon by the Examiner for stating a reason to obtain a low nickel concentration is BFR. The Examiner in the Answer states “the BFR reference is not considered prior art but rather as an ‘evidence by’ which gives further fact that inhalation of nickel may cause cancer. For this reason, nickel should be reduced in candles to the lowest level technically achievable.” Ans. 18. In certain narrow circumstances later-issued patents and publications may be used to show the state of the art or facts existing on the date of the application in question. For example, a later publication may be used to show that, as of an application’s filing date, undue experimentation would have been required, In re Corneil, 347 F.2d 563, 568 (CCPA 1965), that a parameter absent from the claims was or was not critical; In re Rainer, 305 F.2d 505, 507 n.3 (CCPA 1962), that a statement in the [S]pecification was inaccurate; In re Marzocchi, 439 F.2d 220, 223 n.4 (CCPA 1971), that, at the time of the invention, the invention was inoperative or lacked utility; In re Langer, 503 F.2d 1380, 1391 (CCPA 1974); or that characteristics or properties of prior art products were known, In re Wilson, 311 F.2d 266, 268–69 (CCPA 1962). Here, the Examiner reversibly erred in the reliance on BFR, a later filed publication, to show the motivation for lowering the nickel content in candles to the lowest possible level. Final Act. 4. The Examiner has not asserted that Murphy, Uptain, and Tao provide motivation to lower nickel Appeal 2020-006385 Application 15/604,033 6 content in candles to less than 0.5 ppm as required by the independent claims 2, 22, 30, and 31. The Examiner finds Uptain discloses a candle and process for making a candle wherein the wax of the composition is derived from hydrogenated natural oil waxes. The Examiner finds Uptain discloses the hydrogenation catalyst may be removed from the hydrogenated product using known techniques, such as by filtration with a plate and frame filter. Final Act. 4–5; Uptain ¶ 85. The Examiner concludes: Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to bleach and filter the hydrogenated oils of Murphy as taught by the filtration process of Uptain. The motivation to do so is, in order to remove the metal content (i.e. nickel) of the hydrogenated oils (see paragraphs 0033 and 0085 of Uptain and paragraphs 0134 and Examples) and have a wax composition with a metal content of zero. Final Act. 5. The Examiner’s conclusion of obviousness is not supported by evidence. The Examiner has not directed us to evidence as the basis for the inclusion of a “bleaching” step in addition to a filtration process. Appellant presents the declaration of the inventor Timothy A Murphy, signed February 26, 2019 (Declaration 1) as evidence that filtration alone would not yield a nickel content of less than 0.5 ppm as required by the claimed invention. The Murphy declaration specifically states “merely removing the solid catalyst, e.g., by the filtration described in Uptain, does not remove these soluble or colloidal forms of nickel and therefore is not sufficient to achieve a nickel content of less than 0.5 ppm.” Declaration 1 ¶ 7. Appeal 2020-006385 Application 15/604,033 7 The Examiner has not directed us to evidence that rebuts the statements of this declaration. For these reasons we do not sustain the Examiner’s obviousness rejections. DECISION The Examiner’s decision to reject claims 2–8, 10, 12, 16–17, and 21– 39 is reversed. Appeal 2020-006385 Application 15/604,033 8 SUMMARY CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2–7, 10, 12, 16, 17, 21, 23–29 103 Murphy, Uptain, BFR 2–7, 10, 12, 16, 17, 21, 23–29 8, 22, 30–39 103 Murphy, Uptain, BFR, Tao 8, 22, 30–39 Overall Outcome 2–8, 10, 12, 16, 17, 21– 39 REVERSED Copy with citationCopy as parenthetical citation