14605539 - (D) (P.T.A.B. Jul. 18, 2019)

David E. Bunch et al.

Patent Trials and Appeals BoardJul 18, 2019

14605539 - (D) (P.T.A.B. Jul. 18, 2019)

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. 14/605,539 01/26/2015 David E. Bunch 38170.0260 6236 57600 7590 07/18/2019 HOLLAND & HART 222 South Main Street, Suite 2200 P.O. Box 11583 Salt Lake City, UT 84110 EXAMINER CHICKOS, SARAH J ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 07/18/2019 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): PATENTDOCKET@HOLLANDHART.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID E. BUNCH, FRANK W. GAY II, AUTUMN BLUM, and ANTOINE NKAMENI ____________ Appeal 2019-002868 Application 14/605,539 Technology Center 1600 ____________ Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and MICHAEL A. VALEK, Administrative Patent Judges. VALEK, Administrative Patent Judge. DECISION ON APPEAL Appellants1 submit this appeal under 35 U.S.C. § 134(a) involving claims to a method of making a magnesium chloride bath salt. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify the real party in interest as Nutraceutical Corporation. App. Br. 1. Herein we refer to the Final Office Action mailed Feb. 8, 2018 (“Final Act.”), Appeal Brief filed July 30, 2018 (“App. Br.”), Examiner’s Answer mailed Dec. 31, 2018 (“Ans.”), and Reply Brief filed Feb. 28, 2019 (“Reply Br.”). Appeal 2019-002868 Application 14/605,539 2 STATEMENT OF THE CASE Claims 1–15 and 22–26 are on appeal and can be found in the Claims Appendix of the Appeal Brief. Claim 1 is representative of the claims on appeal. It reads as follows: 1. A method of making a bath salt comprising: mixing granular magnesium chloride material and a starch material to form an intermediate mixture; and mixing a colorant and the intermediate mixture to form the bath salt; wherein the colorant uniformly coats the magnesium chloride material; and wherein the bath salt is a free flowing solid. Appellants seek review of Examiner’s rejection of claims 1–15 and 22–26 under 35 U.S.C. § 103 as unpatentable over Caroselli2 and CN ’092.3 The question is: Does the preponderance of evidence of record support Examiner’s conclusion that the cited prior art renders obvious the claimed methods? Analysis Examiner found that Caroselli teaches a method for making a magnesium chloride bath salt with a colorant, but “teach[es] mixing everything together” at the same time rather than mixing the magnesium chloride with starch to form an intermediate mixture that is then mixed with a colorant, as claimed. See Ans. 6; Final Act. 5. According to Examiner, “[t]his deficiency is made up for with the teachings of CN [’092].” Final 2 Robert Caroselli et al., US 5,602,178, issued Feb. 11, 1997 (“Caroselli”). 3 Tinglan Zhang et al., CN 102451092, published May 16, 2012 (Nov. 2018 English translation) (“CN ’092”). Appeal 2019-002868 Application 14/605,539 3 Act. 5. Specifically, Examiner determines that the following passage from CN ’092 teaches that starch (referred to in CN ’092 as a “filler”) is mixed with sodium chloride to form an intermediate material that is then mixed with a colorant (i.e., a “pigment”): A. The pigment is dissolved in 1:10 time its weight of water at 20~50°C; the solution is added into the alkaline substance, mixed evenly by stirring thereby obtaining a material 1; B. The essence and adhesive agent are added into material 1 and mixed thoroughly, and then the mixture is sifted through a 20-mesh sieve thereby obtaining a material 2; C. The filler and sodium chloride are sifted through a 20- mesh sifter, respectively, added into the material 2 and mixed evenly by stirring thereby obtaining a material 3. CN ’092 ¶¶ 40–42 (emphasis added).4 According to Examiner, the italicized language above “implie[s] that the starch and sodium chloride are sieved as a mixture separately from Material 2 (contains the pigment) and then mixed with Material 2.” Ans. 6. Appellants disagree with Examiner’s interpretation of CN ’092. They argue that CN ’092 teaches “mixing the starch, sodium chloride, and Material 2 all at the same time.” App. Br. 4. Appellants contend the translation attached to Examiner’s Answer “bolsters” their “argument that the starch and the sodium chloride are sieved separately” because “‘respectively’ is defined in three different dictionaries as ‘singly in the 4 This passage is quoted from a translation of CN ’092 dated November 2018 that was attached to Examiner’s Answer. In their brief, Appellants provide a certified translation of the same passage that differs slightly from the wording of Examiner’s translation. See App. Br. 4. As explained below, these differences do not affect our decision. We express no opinion regarding which translation is more accurate. Appeal 2019-002868 Application 14/605,539 4 order designated or mentioned,’ ‘separately in the order given,’ and ‘in precisely the order given; sequentially.’” Reply Br. 2 (quoting American Heritage Dictionary of the English Language, Fifth Ed., 2016; Collins English Dictionary – Complete and Unabridged, 12th Ed., 2014; and Random House Kernerman Webster’s College Dictionary, 2010). In addition, Appellants urge that even if CN ’092 were interpreted to teach that the starch and sodium chloride are sieved separately from Material 2, “this does not mean the starch and sodium chloride must be mixed together when they are sieved” to form an intermediate mixture. Id.; see also App. Br. 6. We find that Appellants have the better position. Even accepting that it would be obvious to use magnesium chloride in place of the sodium chloride taught in CN ’092, the above, block-quoted passage does not teach “mixing” the salt and starch “to form an intermediate mixture” that is then added to the colorant. Rather, it supports Appellants’ interpretation that the salt and starch are sieved “respectively,” that is, they are separately sieved one after the other and added to Material 2. The same is true of Appellants’ translation of CN ’092, which states for step C: “Separately sieve the [starch] and sodium chloride with a 20-mesh sieve and add them to Material 2; mix well to obtain Material 3.” App. Br. 4 (quoting CN ’092 ¶ 42). Again, the most natural reading of the text supports Appellants’ interpretation that the starch and salt are sieved separately from each other. Appellants’ interpretation is further supported by the fact that CN ’092 expressly recites when ingredients are “mixed” together to form an enumerated intermediate “material.” See CN ’092 ¶¶ 40–44 (identifying the ingredients that are “mixed” to form intermediate “material 1” through “material 4” before obtaining “a finished product” in step E). For example, Appeal 2019-002868 Application 14/605,539 5 CN ’092 states that Material 2 is formed when “essence and adhesive agent” are added to Material 1 and “mixed thoroughly.” Id. ¶ 41. Then after the filler and sodium chloride are added to Material 2, CN ’092 states that those three ingredients are “mixed evenly” to form Material 3. Id. ¶ 42. In contrast, there is no teaching that the filler and sodium chloride are “mixed” prior to the addition of Material 2. Because in all other instances, CN ’092 expressly notes when ingredients are mixed to form an intermediate material, we disagree with Examiner’s finding that the unrecited mixing of the filler and sodium chloride to form an unidentified intermediate material is “implied” from the text. See Ans. 5–6. For these reasons, we agree with Appellants that neither of the cited references teaches the “mixing” of a salt and starch material “to form an intermediate mixture,” as required by claim 1.5 Examiner has not otherwise determined that such a step would be obvious over the prior art. Accordingly, we reverse. SUMMARY We reverse the rejection of claims 1–15 and 22–26 under 35 U.S.C. § 103 as unpatentable over Caroselli and CN ’092. REVERSED 5 Appellants’ other independent claim, claim 10, requires “mixing granular magnesium chloride material and a fragrance enhancing material to form a first intermediate mixture” and then “mixing the first intermediate mixture and a starch material to form a second intermediate mixture” before “mixing the second intermediate mixture and a colorant to form the bath salt.” App. Br. 9–10. Thus, all of Appellants’ claims require the mixing of magnesium chloride and starch to form an intermediate mixture prior to the addition of a colorant.