ECOLAB USA INC.Download PDFPatent Trials and Appeals BoardFeb 22, 20212020002787 (P.T.A.B. Feb. 22, 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. 13/863,001 04/15/2013 Steven J. Lange P10610US00 - PT10042US01 2745 124330 7590 02/22/2021 McKee, Voorhees & Sease P.L.C. ATTN: Ecolab Inc 801 Grand Avenue Suite 3200 Des Moines, IA 50309 EXAMINER LOVE, TREVOR M ART UNIT PAPER NUMBER 1611 NOTIFICATION DATE DELIVERY MODE 02/22/2021 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): michelle.woods@ipmvs.com patatty@ipmvs.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte STEVEN J. LANGE, JUNZHONG LI, XIN SUN, ALLISON BREWSTER, and RICHARD STAUB1 ________________ Appeal 2020-002787 Application 13/863,001 Technology Center 1600 ________________ Before ULRIKE W. JENKS, JOHN G. NEW, and RYAN H. FLAX, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 We use the term “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.142. Appellant identifies Ecolab USA Inc. as the real party- in-interest. App. Br. 1. Oral argument was heard on February 2, 2021, and a transcript of the hearing will be made a part of the record. Appeal 2020-002787 Application 13/863,001 2 SUMMARY Appellant files this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–14 as unpatentable under 35 U.S.C. § 103 as being obvious over the combination of Dada et al. (US 2010/0021558 A1, January 28, 2010) (“Dada”), Holland (US 5,152,933, October 6, 1992) (“Holland”), and Baum et al. (US 6,302,968 B1, October 16, 2001) (“Baum”).2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. NATURE OF THE CLAIMED INVENTION Appellant’s claimed invention is directed to a concentrated liquid sanitizing and rinse composition containing peroxycarboxylic acid(s) and compatible rinse aid surfactants in a single liquid concentrate. Spec. Abstr. REPRESENTATIVE CLAIM Independent claim 1 is representative of the claims on appeal and recites: 1. A sanitizing rinse additive composition comprising: a C7-C22 peroxycarboxylic acid; 2 Claim 1 was also rejected by the Examiner as being unpatentable under 35 U.S.C. § 112(d) as being of improper form. Final Act. 3. Appellant amended the claim subsequent to the Final Office Action, and the Examiner withdrew the rejection. See Ans. 3. Appeal 2020-002787 Application 13/863,001 3 from about 0.1 wt-% to about 80 wt-% of a C7-C22 carboxylic acid; from about 25 wt-% to about 90 wt-% hydrogen peroxide; from about 10 wt-% to about 50 wt-% of a nonionic defoaming surfactant and a nonionic wetting surfactant, wherein the nonionic defoaming surfactant is an alkyl-ethylene oxide-propylene oxide copolymer; the nonionic wetting surfactant is an alkyl-ethylene oxide- propylene oxide copolymer or alcohol ethoxylate; wherein the alkyl-ethylene oxide propylene oxide copolymer has a single hydroxyl functional group per molecule according to the following structure alkyl-(EO)m(PO)n-POH, wherein m is an integer in the range from 1 to 20 and n is an integer in the range from 1 to 20; wherein the composition is a low odor concentrate having less than about 2 wt-% of the peroxycarboxylic acid; wherein the composition when diluted from about 0.01 % weight/volume to about 2% weight/volume provides at least a 5 log reduction in pathogenic organisms at a temperature of at least about 100°F; and wherein the diluted composition has a pH of about 5 or greater. App. Br. 29. ISSUES AND ANALYSES We adopt the Examiner’s findings, reasoning, and conclusion that the claims on appeal are prima facie obvious over the combined cited prior art. See Final Act. 4–9; Ans. 4–11. We address the arguments raised by Appellant below. Appeal 2020-002787 Application 13/863,001 4 Issue 1 Appellant argues that the Examiner erred in allegedly improperly dismissing the direct comparison data of the carbon chain length taught by Baum and the claimed carbon chain length. App. Br. 13. Analysis The Examiner finds that Dada teaches stabilized formulations comprising peroxycarboxylic acids (or “peracids”3), in which the peracid can be a C6–C12 peracid, including caprylic acid (octanoic acid)-based peracid (i.e., peroxyoctanoic acid), and further teaches the peroxycarboxylic acid in an amount of 0.05–5%. Final Act. 4 (citing Dada, e.g., ¶¶ 12, 27). The Examiner also finds that Dada teaches that, in referring to the peroxycarboxylic acid, Dada is referring to the use of both the carboxylic acid and its counterpart peroxycarboxylic acid. Id. (citing Dada, e.g., ¶ 39). The Examiner finds that the compositions taught by Dada comprise the carboxylic acid (and its peroxycarboxylic acid counterpart) in combination with hydrogen peroxide. Final Act. 5. The Examiner finds that the hydrogen peroxide is present in amounts of 20%–70%, but can also be used in lower amounts of 5%–20%. Id. (citing Dada, e.g., ¶ 38). The Examiner finds that Dada teaches carboxylic acid:hydrogen peroxide ratio of 1:1.5. Id. (citing Dada, e.g., ¶ 39). The Examiner further finds that the Dada compositions also comprise phosphoric acids and dipicolinic acid (DPA) as 3 The claim term “peroxycarboxylic acid” and the terms “peracid” and “percarboxylic acid” are used interchangeably in the art and in this decision. Appeal 2020-002787 Application 13/863,001 5 stabilizing agents and are useful for laundry. Id. (citing Dada, e.g., ¶¶ 52, 55, 58, 77). The Examiner finds that Dada does not teach the claimed surfactant and alcohol ethoxylate. Final Act. 5. The Examiner finds, however, that Holland teaches a co-surfactant with detergency boosting properties. Id. The Examiner finds that Holland teaches that its composition comprises an ethylene oxide/propylene oxide block copolymer and ethoxylated alcohols. Id. (citing Holland, e.g., Abstr.). The Examiner finds that Holland teaches that its copolymers comprise 30-50% ethylene oxide, and that the molecular weight of the propylene oxide hydrophobe ranges from about 950 to about 4000. Id. (citing Holland, e.g., claim 1). The Examiner finds that Holland teaches that the copolymer is present in an amount of 2–9%, and that the ethoxylated alcohol is present in an amount of 3–9%. Id. The Examiner further finds that Baum teaches that capping with an alkyl improves the compatibility of nonionic surfactants with hydrogen peroxide and percarboxylic acid when formulated into a single composition. Final Act. 5 (citing Baum, e.g., col. 9, ll. 49–56). The Examiner finds that Baum also teaches that nonionic surfactants are known to be blocks of ethylene oxide and propylene oxide with the ethylene oxide repeated 1–10 times and the propylene oxide repeated 1–20 times. Id. (citing Baum, e.g., col. 9, ll. 18–48). The Examiner concludes that it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to use a nonionic surfactant with a structure of alkyl EO1-10-PO1-20-POH in combination with the peroxycarboxylic acid compositions of Dada. Final Act. 6. The Examiner reasons that a skilled artisan would have been Appeal 2020-002787 Application 13/863,001 6 motivated to combine the references, because Dada teaches the use of nonionic surfactants, wherein Holland teaches useful combinations of nonionic surfactants comprising EO and PO blocks and Baum teaches particularly useful capping of EO-PO copolymers when combining said copolymer with hydrogen peroxide and percarboxylic acid, as taught by Dada. Id. The Examiner also concludes that it would have been obvious to one of ordinary skill in the art to utilize a co-surfactant system of an ethylene oxide/propylene oxide copolymer in combination with an ethoxylated alcohol, as taught by Holland, in the percarboxylic acids compositions of Dada. Final Act. 6. The Examiner concludes that a skilled artisan would have been motivated to do so, because Holland teaches that its co-surfactant system is particularly useful for its detergency-boosting properties. Id. The Examiner reasons that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the references, because both Holland and Dada are expressly directed to cleansing compositions. Id. Appellant argues that, throughout the prosecution history of the claims on appeal, Appellant provided multiple arguments explaining the differing properties of the claimed invention and the cited prior art, as well as issues concerning the stability of both antimicrobial efficacy and wetting properties when combining a nonionic surfactant with limited hydroxyl end groups with a C7–C22 peracid compositions. App. Br. 13. Appellant asserts that the Examiner, in response, cited Baum (and not Dada or Holland) as teaching the claimed nonionic surfactant and combination of nonionic surfactants with peroxycarboxylic acid. Id. at 13–14 (citing Non-Final Action, December 10, 2018 at 8–9). Appellant argues that it has consistently Appeal 2020-002787 Application 13/863,001 7 asserted direct comparison data to differentiate from Baum from the claimed compositions (as opposed to either Holland or Dada), because Baum is the closest prior art under the MPEP test, and because Baum employed exactly the same test method as one employed in the present application, thereby permitting a direct comparison. Id. at 14. Appellant also disputes the Examiner’s finding that the Declaration of Dr. Junzhong Li4, filed November 15, 2018 (the “Li Declaration”) shows that “the prior art provides express motivation for utilizing at least a C6 carboxylic acid/peroxycarboxylic acid, and provides good and sufficient motivation to utilize at least up to C12 if not higher.” App. Br. 15 (citing Non-Final Act. 8). Appellant argues that the Li Declaration provides evidence of direct comparative data utilizing the same testing procedure employed in Baum. Id. Specifically, argues Appellant, the biocidal efficacy of a C7–C22 peroxycarboxylic acid, such as peroxyoctanoic acid (POOA, a C8 peracid), was tested under AOAC Official Method 960.09, with the results found in Table 2 of Appellant’s Specification, the same method used in Working Example 2 of Baum, with the exception that Baum used peroxyacetic acid (POAA) a short-chain C2 peracid within Baum’s disclosed C1–C6 range. Id. Appellant points to the Li Declaration’s demonstration that, at elevated temperatures, POOA was effective against both gram-positive and - negative bacteria and, as a result, required only low levels of the peracid (12 ppm) to deliver the required antimicrobial performance, whereas Baum 4 Dr. Li is a co-inventor of the application presently before us on appeal. Appeal 2020-002787 Application 13/863,001 8 teaches that 52 ppm of POAA is required to achieve the same result. App. Br. 16 (citing Li Decl. ¶ 23 (citing Baum, col. 13, ll. 42–43, Ex. 2, claim 1)). Appellant argues, therefore, with respect to antimicrobial efficacy, that short–chain peroxycarboxylic acids, such as C2 POAA, had lower efficacy than the C8 POOA under the same test conditions. Id. Appellant therefore contends that the comparison in the Li Declaration is directed to what is actually present in the cited art, that is, a direct comparison between the POOA in the Specification and the POAA in Baum. App. Br. 16–17. Appellant argues that, because the Li Declaration describes multiple properties which differed between a C1–C6 peracid (Baum) and the claimed C7–C22 peracid, it was error for the Examiner to dismiss that evidence. Id. at 17. The Examiner responds that Baum teaches that: “Capping improves the compatibility between the nonionic [surfactants] and the oxidizers hydrogen peroxide and percarboxylic acid when formulated into a single composition.” Ans. 4 (quoting Baum, col. 9, ll. 53–56). However, the Examiner finds that, although Baum would have provided motivation for capping of the EO-PO copolymers of Holland, particularly when combining said copolymer with hydrogen peroxide and percarboxylic acid, as in Dada, the latter reference is the foundational aspect that teaches a stabilized formulation comprising C6–C12 peracids, hydrogen peroxide, and peroxycarboxylic acid. Id. at 5 (citing Dada ¶ 27). The Examiner finds that Holland would have provided motivation to utilize a co-surfactant with detergency boosting properties, specifically, the beneficial use of ethylene oxide/propylene oxide block copolymer and ethoxylated alcohols. Id. (citing Holland Abstr.). Appeal 2020-002787 Application 13/863,001 9 The Examiner reasons that it would have been obvious to use the teachings of Holland to modify the compositions of Dada, viz., to add the detergency-boosting specific ethylene oxide/propylene oxide block copolymer and ethoxylated alcohols of Holland to the C6–C12 peracids of Dada to add the. Ans. 5. The Examiner further concludes that a skilled artisan, would then have consulted Baum to ensure that the addition of the surfactant would be compatible with the composition of Dada. Id. The Examiner states that Baum, therefore, functions to show that the components can all be combined together and, further, that capping improves the compatibility of the nonionic surfactant of Holland, and the peracid and hydrogen peroxide of Dada. Id. Appellant replies that that the Examiner now asserts that Dada is the closest prior art, whereas, throughout prosecution, the Examiner consistently provided arguments suggesting that Baum was the closest prior art. Reply Br. 2. Appellant points to MPEP § 716.02(e) as stating that the method for establishing which reference is the closest prior art is “[a] comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing in mind the relative importance of particular limitations….” Id. (citing In re Merchant, 575 F.2d 865, 865 (C.C.P.A. 1978). Appellant argues that this analysis establishes that the closest prior art is Baum. Id. According to Appellant, among the most important aspects of the claimed invention are the presence of a peroxycarboxylic acid (i.e., a peracid), nonionic surfactants, and the ability to maintain efficacy and stability in light of combining the two components. Reply 2. Appellant argues that Dada teaches stable peracid compositions, but lacks the Appeal 2020-002787 Application 13/863,001 10 combination with nonionic surfactant, whereas Holland allegedly teaches compositions with surfactants, but neither teaches nor suggests peracids. Id. at 2–3. Appellant asserts that Baum is the only reference that teaches both a peracid and nonionic surfactant, and further recognizes that there are incompatibilities when combining peracids with certain nonionic surfactants. Id. at 3 (citing Baum col. 9, ll. 53–56). Appellant therefore contends that Baum is the closest prior art reference. We are not persuaded by Appellant’s arguments. As to Appellant’s argument that the Examiner previously found that Baum was the closest prior art, but now finds Dada is the closer prior art, we are not persuaded that such an alleged change in the Examiner’s position, if it indeed occurred, is somehow impermissible. “There is nothing unusual, certainly, about an examiner changing his viewpoint as to the patentability of claims as the prosecution of a case progresses, and, so long as the rules of Patent Office practice are duly complied with, an applicant has no legal ground for complaint because of such change in view.” In re Ruschig, 379 F.2d 990, 992–993 (C.C.P.A. 1967). Appellant has presented no colorable argument that the Examiner has failed to comply with the practices of the USPTO, with the possible exception that the Examiner has allegedly incorrectly designated Dada as the closest prior art reference, as specified in MPEP § 716.02(e), which we address below. We therefore conclude that, if the Examiner changed his position during prosecution, there was nothing in such a change of position that would constitute reversible error on the part of the Examiner. None of Appellant’s claims on appeal recite a requisite level of antimicrobial activity or stability of the claimed compositions. Appellant Appeal 2020-002787 Application 13/863,001 11 therefore appears to argue that the data presented in the Li Declaration are indicative of unexpected results when compared to the prior art, which Appellant and Dr. Li contend is Baum. Turning to the comparison between the claimed composition and the Example provided in Baum, Dr. Li states that: We also found that the antimicrobial efficacy of the short chain peroxycarboxylic acids is much lower than that of POOA. For example, under the same test conditions (120oF, 500 ppm hard water, 30 second contact time), 52 ppm POAA was required to achieve the efficacy needed to pass AOAC Official Method 960.09 (Germicidal and Detergent Sanitizing Action of Disinfectants test). (See Baum, et al. Working Example 2). In contrast, only 12 ppm of POOA was needed to pass the same test as seen in Table 2 above. (See also Specification p. 47). Thus, we found that the claimed peracids, C7–C22, provided a significant improvement over the periacids employed by Baum. Li Dec. ¶ 23. We are not persuaded by Dr. Li’s interpretation of the data presented in Baum and the Specification. The Table of Baum presenting the results of the Germicidal and Detergent Sanitizing Action of Disinfectants, Official Methods of Analysis of the Association of Official Analytical Chemists, paragraph 960.09, is reproduced below: Appeal 2020-002787 Application 13/863,001 12 See Baum col. 13, ll. 20–39. Table 2 of the Specification is reproduced below: As an initial matter, and contra Dr. Li, the only temperature at which a direct comparison can be made is at 140oF: Baum does not disclose testing at 120oF in this Table. At 140oF, Baum shows a greater than 5 Log10 Appeal 2020-002787 Application 13/863,001 13 kill of POAA against S. aureus and E. coli at 35 ppm5, whereas Table 2 of the Specification demonstrates the same level of antimicrobial activity at concentrations of both 8 and 12 ppm of POOA. Consequently, at 140oF (the only temperature at which a direct comparison can be made), POOA shows a 3–4 times greater lethality compared to POAA. At oral argument, held on February 2, 2021, counsel for Appellant was questioned upon the origin of the numbers set forth by Dr. Li in his Declaration: JUDGE NEW: Okay. Now, Dr. Li says there’s a comparison between 120 degrees in Table 2 and 120 degrees at the same conditions on the table in column 13, but I don't see 120 degrees in Baum; I see 130 degrees. MR. KENNEDY: I think I can help with that. So the table in Baum that is in column 13 provides the base formulation that is being used in some of the testing in Baum. But it’s specifically Baum Working Example 2, which is in column 15 and 16, is where the results and the test parameters of that earlier formulation are. And so if you look at column 16, roughly lines 23, it says Table 2 Results. Test, temperature, this is line 25, 120 degrees Fahrenheit times 30 seconds. So that's where the 120 degrees has come in from, is Working Example 2, which is testing the formulation of things and the base parameters -- JUDGE NEW: Excuse me, Mr. Kennedy, the Table 2 results are showing me something very different though. It’s not showing me the 960.09 test formulated the same way Table 2 is. It’s showing me percent reductions at 120 degrees at 500 parts per 5 These values are for the improved peroxyacetic acid concentrate (modified OXONIA) (right Table column) of the invention taught by Baum. See Baum col. 13, ll. 13–15. Appeal 2020-002787 Application 13/863,001 14 million for both of them, as far as I can tell. That doesn’t seem to be comparable to what we're looking at in Table 2. I mean the only real comparison I could make in the data was between that column 13 table, which shows concentrate required, which you have as greater than 5 log hill of Staph. aureus and E. coli, and Table 2 in the declaration, which shows the same test. And that seems to show perhaps a three or four-fold increase in lethality at maybe 12 or 8 parts per million, compared to what we see in the column 13 table. I can’t make a comparison between what I’m seeing in columns 15 and 16 and what I'm seeing in Table 2. MR. KENNEDY: Thank you, Your Honor. So if you go to column 15 – I’m trying to walk through the questions you asked me -- Working Example 2, it says that further analysis of the anti-microbial nature of the invention is undertaking, and it talks about that sanitizer test, 960.09 A-J. And so it is the same test that was being applied, and it shows the test parameters of the 120 degrees that you raised, but it’s based on the Table 13 formulations. And so I do think that the Working Example 2 is still providing the test, and Dr. Li’s example specifically talks about, in paragraph 23, the Working Example 2. JUDGE NEW: I understand that, but I don't see where in Working Example 2 you’re coming up with the numbers that you’re coming up with, which is to say specifically – or that Dr. Li’s coming up with – that – let me pull up paragraph 23 here. It says specifically that 52 parts per million of POOA was required to achieve the efficacy needed to pass the method and it is 12 parts per million of POOA, that’s the peroxyoctanoic acid needed to pass the same test. I simply don't see where you're getting those numbers from. (Simultaneous speaking.) MR. KENNEDY: So Dr. Li, I believe -- sorry, go ahead, didn’t mean to speak over you, Your Honor. Appeal 2020-002787 Application 13/863,001 15 JUDGE NEW: The Tables in the Working Example 2, I just don’t see know those numbers you’re coming up with. The closest I could come up with a difference between about eight parts per million and 33 parts per million, which is about a four- fold increase. So I simply don't know where those numbers are coming from. MR. KENNEDY: My understanding, especially with Dr. Li, was that was based on a calculation. So if you go back to column 15, it says the test substance prepared had a weight percent of 5.25 percent peroxyacetic acid. That was then prepared in a 100-milliliter substance dispensed and removed, and there’s a process of dilution here that occurs so that he calculated what the active amount of POAA was, which came out to 52 parts per million where there was efficacy, based on Working Example 2 and the concentrations. Because it is an equilibrium substance or composition, the amount, the initial amount, that's added of a particular component shifts until the equilibrium is achieved or until it's manipulated. And his calculation came out to the parts per million that he recited in his affidavit, and he did that specifically so that it would be more of a direct comparison as to the amount, the parts per million, that is provided in the specification and in the table in his affidavit related to the claimed invention. JUDGE NEW: I see. It would have been helpful if had provided those calculations because I mean we just have this unsupported assertion here that it’s 52 parts per million versus 12 parts per million. But let’s continue with this. Please go on. Hearing Transcr., February 2, 2021 at 8:22–12:6. Given that the record provides no evidence of how Dr. Li came up with the calculated figures of 52 parts per million versus 12 parts per million, our reasoning provided supra in the text stands. The only direct comparison that can be made based upon the evidence of record derives Appeal 2020-002787 Application 13/863,001 16 from Table 2 of Appellant’s Specification and the table in column 13 of Baum for tests made at 140oF. Unexpected results that are most probative of nonobviousness are those that are “different in kind and not merely in degree from the results of the prior art.” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) (citation omitted). We are not persuaded that the difference in antimicrobial activity by a factor of 3 or 4 between a C2 and a C8 peracid constitutes the difference in kind, rather than in degree, requisite to establish a persuasive demonstration of unexpected results. More importantly, and with respect to Appellant’s argument that Baum is the closest prior art reference to which we must compare the claimed compositions, we find that Appellant misapprehends the burden of persuasion on this issue. Appellant does not argue that the combined disclosures of Dada, Holland, and Baum do not teach the C8 POOA, together with the ethylene oxide/propylene oxide block copolymer and ethoxylated alcohols recited in the claims.6 In other words, there appears to be no 6 Dada expressly teaches that: Peracids having between 6–12 carbon atoms [i.e., C6–C12 peracids] that may be used in the method of this invention include peracids of monocarboxylic aliphatic acids such as caproic acid (hexanoic acid), enanthic acid (heptanoic acid), caprylic acid (octanoic acid [i.e., the basis of POOA]), pelargonic acid (nonanoic acid), capric acid (decanoic acid) and lauric acid (dodecanoic acid), as well as peracids of monocarboxylic and dicarboxylic aromatic acids such as benzoic acid, salicylic acid and phthalic acid (benzene- 1,2-dicarboxylic acid). Appeal 2020-002787 Application 13/863,001 17 dispute that the combination of the cited prior art references teaches all of the limitations of claim 1, at least with respect to the C8 peracid, POOA. The burden of persuasion therefore falls upon Appellant to demonstrate that the composition resulting from this combination of the references would not necessarily, or inherently, possess the same antimicrobial properties demonstrated in Table 2 of Appellant’s Specification: Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.… Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. In re Best, 562 F.2d 1252, 1255 (C.C.P.A. 1977). Appellant has adduced no evidence that the C8 peracid, POOA, as taught by Dada, combined with the ethylene oxide/propylene oxide block copolymer and ethoxylated alcohols of Holland and Baum, would not inherently possess the same antimicrobial properties (and stability) as demonstrated by Table 2 of Appellant’s Specification. We are therefore not persuaded by Appellant’s arguments. Dada ¶ 27 (emphasis added). Appeal 2020-002787 Application 13/863,001 18 Issue Appellant argues the Examiner erred because the combined cited prior art fails to teach or suggest the limitations of the claims on appeal. App. Br. 19. Analysis Appellant argues that the art fails to teach a stable composition comprising a C7–C22 or C8 peroxycarboxylic acid and rinse aid surfactants. App. Br. 29. Furthermore, argues Appellant, the Examiner erred in finding that the properties attributable to a C1–C6 carboxylic/peroxycarboxylic acid would apply to a C6–C12 carboxylic/peroxycarboxylic acid. Id. at 19–20. Finally, Appellant contends, the Office has ignored those “wherein” clauses that define properties of the composition in Appellant’s independent claims. Id. at 20. Appellant contends that, although Dada provides a single disclosure referencing a C6–C12 carboxylic acid, Dada neither teaches nor suggests a composition that includes a peroxycarboxylic acid, hydrogen peroxide and a nonionic defoaming and wetting surfactant, or that such a composition would be a stable composition. App. Br. 20. Appellant further asserts that, although the Examiner finds that Dada teaches the use of nonionic surfactants, providing the motivation to combine the teachings of Dada with Holland, Dada fails to teach the use of nonionic surfactants. Id. According to Appellant, it is improper for the Office to infer the existence of a stable, single-part laundry or bleaching composition including both a nonionic surfactant and a peroxycarboxylic acid composition from Dada. Id. Appeal 2020-002787 Application 13/863,001 19 Appellant next argues that, although Holland discloses the use of ethylene oxide/propylene oxide block copolymers, the reference neither teaches nor suggests using the composition together with a peroxycarboxylic acid composition in a single formulation. App. Br. 21. Moreover, argues Appellant, Holland fails to mention the stability of the surfactants in the presence of peroxycarboxylic acids and hydrogen peroxide. Id. Therefore, Appellant asserts, the suitability of the claimed surfactants for incorporation in a peroxycarboxylic acid composition is neither taught nor suggested by Dada or Holland, despite the fact, Appellant argues, that nonionic surfactants are recognized to be unstable in peracid compositions. Id. (citing Spec. 12). Appellant also contends that, although Baum teaches using a peroxycarboxylic acid composition with a surfactant, it fails to mention the stability of such combination, and is limited to C1-C6 peroxycarboxylic acids. App. Br. 22 (citing Baum col. 5, ll. 8–10). Appellant points to the Examples of Baum, arguing that they do not teach or suggest a concentrated composition combining a peracid, hydrogen peroxide, and rinse agent that is stable for a reasonable period of time. Id. (citing Baum col. 14, ll. 5– 42).Rather, Appellant argues, Baum teaches mixing of a rinse aid composition with a peroxyacetic acid composition immediately before their combined application. Id. Appellant speculates that the need to mix the composition immediately prior to use is due to instability, which is consistent with the description in Appellant’s Specification. Id. (citing Spec. 12–13). Appellant therefore contends that Baum suggests the problem of formulating peroxycarboxylic acid-containing compositions containing defoaming and wetting surfactants, and yet fails to provide a solution to the stability problem. Id. By contrast, Appellant argues, the claimed peracid Appeal 2020-002787 Application 13/863,001 20 chain length in combination with surfactants with minimized hydroxyl end groups provides improved properties resulting in an efficacious combined sanitizer and rinse aid composition. Id. (citing Spec. 52). We do not find this argument persuasive. Appellant’s argument attacks each of the references individually, contending that none of the references teaches or suggests all of the limitations in the claims on appeal. However, “one cannot show non-obviousness by attacking references individually where … the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (C.C.P.A. 1981) (citing In re Young, 403 F.2d 754, 757 (1968). Rather, The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Keller, 642 F.2d at 425. Dada teaches that C6–C12 peracids that are useful as sanitizing agents. Dada ¶¶ 27, 4. Dada further teaches the use of these peracids with surfactants and stabilizers. Id. at ¶¶ 9, 12, 52, 55, 58. Holland teaches ethylene oxide/propylene oxide block copolymers in detergent compounds. Holland Abstr., claim 1. Baum teaches the use of ethylene oxide/propylene oxide block copolymers, as taught by Holland, with peracids, including C1–C6 peracids. Baum col. 3, 17–20; col. 9, ll. 18–35; col. 10, ll. 3–12. Baum further teaches that: “Capping improves the compatibility between the nonionic and the oxidizers hydrogen peroxide and percarboxylic acid, when formulated into a single composition.” Id. at col. 9, ll. 53–56. We agree with the Examiner’s conclusion that a person of Appeal 2020-002787 Application 13/863,001 21 ordinary skill in the art would have recognized that the cited combined references teach all of the limitations of the claims on appeal. Appellant argues further that none of the references teach a stable composition of long-chain peracids and ethylene oxide/propylene oxide block copolymers. As an initial matter, the claims do not recite any limitation concerning the “stability” of the claimed compounds. Appellant’s Specification discloses that “the present composition exhibits advantageous stability of the peroxycarboxylic acid,” however, “[a]lthough the claims are interpreted in light of the specification, limitations from the specification may not be read into the claims.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Furthermore, Baum expressly teaches that “[w]hile peroxy carboxylic acids are not very stable, their stability generally increases with increasing molecular weight,” and that: The composition of the invention may also optionally comprise any number of adjuvants which are stable in an oxidizing environment, and add beneficial properties of stability, sequestration, sheeting and rinsing, etc. These adjuvants may be preformulated with the rinse aid of the invention or added to the system simultaneously, or even after, the addition of the rinse aid of the invention. Baum col. 6, ll. 41–43; col. 7, ll. 55–61. Although the claims on appeal do not recite such stabilizing adjuvants, the transitional claim term “comprising” does not exclude the addition of such compounds to the claimed compositions. See Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). We conclude that a person of ordinary skill in the art would have understood from the teachings of Baum that longer-chain (i.e., C6–C12) peracids, having Appeal 2020-002787 Application 13/863,001 22 a higher molecular weight, would tend to be more stable, and that adding a stabilizing adjuvant would further increase stability. Appellant next points to Example of the Specification, which, Appellant argues, provides evidence that a typical rinse aid surfactant was not compatible with a peroxycarboxylic acid composition. App. Br. 23. Appellant contends that the data demonstrates that a typical antifoaming surfactant was unstable (indicated by phase separation) in the presence of peroxycarboxylic acid and/or hydrogen peroxide, as well as loss of antifoaming properties. Id. (citing Spec. Tables 5, 6, 7, Fig. 1). Appellant contends that, in view of the incompatibility and stability problems involved in combining a nonionic surfactant and oxidizing sanitizer such as a peracid, none of the cited references teach the ability to formulate a single sanitizing rinse aid composition utilizing a C7–C22 carbon chain length peracid. Id. Appellant rejects the Examiner’s reasoning that “given that Dada teaches the C6-C12 would have a reason to conclude that the beneficial aspects taught in Baum would be useful for the C6-12 carboxylic acids and peroxycarboxylic acids of Dada.” App. Br. 24 (quoting Non-Final Act. 8). Appellant alleges that the Examiner’s rejection is not based upon any teachings of the art, but rather is a result of impermissible hindsight reasoning on the part of the Examiner. Id. In particular, Appellant points to the Li Declaration, in which Dr. Li states that: The significantly greater molecular weight of POOA (Mr. 160) versus the most common peracid used, i.e. peracetic acid (POAA) (Mr. 76), makes the number of POOA molecules much less than that of POAA at the same weight concentration. Thus, the greater molecular weight of POOA minimizes the oxidation capacity of the peracid. Appeal 2020-002787 Application 13/863,001 23 Id. (quoting Li Decl. ¶ 18). Appellant also notes that Dr. Li states that the peracids employed by Baum, i.e., C1–C6 peracids, have a higher water solubility than the peracids claimed, i.e., C7–C22 peracids. Id. (citing Li Decl. ¶¶ 20, 22). Appellant therefore argues that the considerations of Baum in selecting a surfactant are distinct from the considerations that would be faced by Dada, because Dada teaches longer chain peracids than Baum, with the exception of the C6 acid. Id. at 25. Appellant summarizes that the Examiner’s obviousness rejection is therefore undermined by two facts: (1) the disclosure of Baum relied upon by the Office is not applicable to the compositions of Dada; and (2) the evidence of record is that the claimed peracids provide distinct sanitizing properties under the same test as the compositions disclosed by the art. App. Br. 25. Appellant therefore argues that the Examiner erroneously assumed that the teachings of Baum would be properly combinable with the teachings of Dada. Id. We are not persuaded by Appellant’s arguments. Despite Appellant’s argument to the contrary, and as we have explained, Dada teaches that the combination of peracids and surfactants was known in the prior art at the time of invention. See Dada ¶ 9. Baum teaches the use of nonionic surfactants in combination with peracids, and expressly teaches that capping “improves the compatibility” of peracids and surfactants. Baum, col. 9, ll. 49–56. Consequently, Baum teaches improved compatibility of peracids and surfactants. Moreover, we do not find the conjectures of Dr. Li (for they are unsupported by evidence) concerning the effects of the comparative molecular weights of POOA (a C8 peracid) and POAA (a C2 peracid) to be Appeal 2020-002787 Application 13/863,001 24 persuasive. Dr. Li provides no evidence that the difference between the C6 peracids of both Baum and Dada would have significantly different properties with respect to solubility and stability than the claimed C7 or C8 peracids. Rather, we agree with the Examiner that Baum’s teaching of the stability of the combined C6 peracids with the ethylene oxide/propylene oxide block surfactants (as also taught by Holland), would naturally suggest to a person of ordinary skill in the art to combine the surfactants with the C6–C12 peracids of Dada, particularly in view of Dada’s teaching that it was known in the art to combine peracids and surfactants. Finally, Appellant argues that the Examiner erred by ignoring the “wherein” clauses recited in the independent claims. App. Br. 26 (citing Non-Final Act. 7). Appellant argues that the “wherein” clause defines properties of the composition, as it indicates a particular meaning and purpose of the composition, i.e., the reduction of pathogenic organisms at a particular temperature and pH. Id. at 27. Appellant contends that claims recite and encompass the properties which are a focus of the technology. App. Br. 27. Appellant points to Example 6 of the Specification, which sets forth the demonstrated synergy between the peroxycarboxylic acid antimicrobial efficacy and temperature, wherein improved antimicrobial efficacy at elevated temperatures allows formulation of a non-acidic peroxycarboxylic acid. Id. Appellant asserts that this is further supported by Appellant’s amendment to the claims reciting the pH in the “diluted composition has a pH of about 5 or greater” (claims 1 and 10) and “from about 5 to about 9” (claim 7). Id. (citing Spec. Table 10, Ex. 6; Li Decl. ¶¶ 17 and 23). Appeal 2020-002787 Application 13/863,001 25 We do not find this argument persuasive. By the “wherein limitations,” we assume that Appellant refers to those limitations reciting functional, and not structural, properties of the claimed compositions, e.g., the limitation of claim 1 reciting: “wherein the composition when diluted from about 0.01 % weight/volume to about 2% weight/volume provides at least a 5 log reduction in pathogenic organisms at a temperature of at least about 100°F” and “wherein the diluted composition has a pH of about 5 or greater.” We therefore restrict our analysis to these claims and not the structural limitations also reciting “wherein.” We are not persuaded that the Examiner correctly determined that these “wherein limitations” are not limiting upon the claimed composition, because the limitations recite functional properties of the claimed composition under certain circumstances (i.e., a certain level of antimicrobial activity and pH). However, that does not solve Appellant’s problem. We have explained supra why we find the structural elements of the claimed composition to be obvious over the prior art. With respect to the functional “wherein” limitations: [W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Best, 562 F.2d at 1254–55 (quoting In re Swinehart, 439 F.2d 210, 212–13 (C.C.P.A. 1971)). This is equally true for anticipation and obviousness analyses. Best, 562 F.2d at 1255. Appellant makes no evidentiary showing that the prior art compositions do not possess the claimed functional Appeal 2020-002787 Application 13/863,001 26 characteristics. In other words, because the structural characteristics of the claimed invention are obvious over the teachings of the combined references, the burden devolves upon Appellant to show that such an obvious composition would not inherently possess the functional characteristics claimed for it. Because Appellant has not met this burden, as we have explained in our analysis supra, we do not find Appellant’s arguments persuasive. Consequently, we affirm the Examiner’s rejection of the claims. CONCLUSION The Examiner’s rejection of claims 1–14 under 35 U.S.C. § 103 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–14 103 Dada, Holland, Baum 1–14 Copy with citationCopy as parenthetical citation