ECOLAB USA INC.

Patent Trials and Appeals Board

Feb 22, 2021

2020002787 (P.T.A.B. Feb. 22, 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.
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.
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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.
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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.
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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.
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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
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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
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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.
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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.).
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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
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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
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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:
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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
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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.

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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.

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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
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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).
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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).
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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.
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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
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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
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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
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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.

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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
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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).
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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
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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