Ecolab USA Inc.

Patent Trials and Appeals Board

Apr 14, 2021

2020006236 (P.T.A.B. Apr. 14, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/223,129 07/29/2016 Peter J. Fernholz 00163.3149USU1 1369
92160 7590 04/14/2021
Merchant & Gould Ecolab
P.O. Box 2903
Minneapolis, MN 55402
EXAMINER
MARKOFF, ALEXANDER
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
04/14/2021 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):
USPTO92160@merchantgould.com
ecolab_PAIR@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER J. FERNHOLZ, CHRISTOPHER NAGEL,
ERIC SCHMIDT, and ANTHONY W. ERICKSON
____________

Appeal 2020-006236
Application 15/223,129
Technology Center 1700
____________

Before LINDA M. GAUDETTE, DONNA M. PRAISS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision twice rejecting claims 1, 2, 4–11, 13–19, and 23. An
oral hearing was held on April 5, 2021.2 We have jurisdiction under
35 U.S.C. § 6(a).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies “Ecolab USA Inc.” as the real party
in interest. Appeal Br. 2.
2 A written transcript of the oral hearing will be entered into the record when
available.
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Application 15/223,129

2
The invention “relates to clean-in-place methods and systems, and to
compositions for use in clean-in-place methods. In particular, the present
disclosure relates to clean-in-place methods that include applying a first and
second cleaning composition to the surface being cleaned.” Spec. 1. Claim
1, reproduced from the Claims Appendix to the Appeal Brief, illustrates the
invention:
1. A method for cleaning equipment in place, the
method comprising:

(a) applying to at least a portion of the equipment a first
cleaning solution from a first supply tank through a first set of
nozzles;

(b) applying to at least a portion of the equipment a
second cleaning solution from a second supply tank through a
second set of nozzles; and

(c) repeating step (a) and step (b) for two or more times;

wherein the equipment is selected from a dryer, a tank,
an evaporator, a heat exchanger, a pipe, a separator, a
homogenizer, a pasteurizer, a cooling tower, an oven, or a belt.

Appellant requests review of the Examiner’s rejection of claims 1, 2,
4–11, 13–19, and 23 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over
Fernholz (US 2006/0042665 A1, published March 2, 2006) and Kiekens (US
2010/0101737 A1, published April 29, 2010). Appeal Br. 1, 5; Non-Final
Act. 3.3

3 The Examiner further relies on the reference to Herdt, US 2006/0046945
A1 (published March 2, 2006), as incorporated by reference in Fernholz
because it is the US publication of Fernholz’s parent Application No.
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3
Appellant presents arguments for three groups of claims: Group I
including claims 1, 2, 14–19, and 23, Group II including claims 4–8, and
Group III including claims 9 and 10. See generally Appeal Br. In addition,
Appellant presents separate arguments for each of claims 11 and 13. Id. We
select claims 1, 4, and 9 as representative of the subject matter claimed.
Claims 2, 5–8, and 10 stand or fall with these claims. We address the
arguments for claims 11 and 13 separately.

OPINION
After review of the respective positions of Appellant and the
Examiner, we affirm the Examiner’s rejection of claims 1, 2, 4–11, 13–19,
and 23 under 35 U.S.C. § 103(a) for essentially the reasons the Examiner
presents. We add the following for emphasis.
Claim 1
Claim 1 recites a method for cleaning in place (CIP) by using two sets
of nozzles to apply first and second cleaning solutions to the equipment
being cleaned.
The Examiner finds that Fernholz teaches a clean in place method that
differs from the subject matter of claim 1 in that Fernholz uses a spray head
to apply the cleaning solutions but does not disclose applying cleaning
solutions through multiple sets of nozzles. Non-Final Act. 3–4; Ans. 5–6.
The Examiner finds Kiekens teaches it is well known to apply cleaning
solutions in spray dryer installations with multiple sets of nozzles. Non-
Final Act. 4; Kiekens Figures 5A, 5B, 6, 7. The Examiner determines it

10/928,774. Non-Final Act. 3; Ans. 3–4. Appellant does not dispute the
Examiner’s reliance on Herdt’s teachings. See generally Appeal Br.
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would have been obvious to an ordinary artisan to modify Fernholz’s
method so as to apply the cleaning solutions through multiple sets of nozzles
because it would be using a conventional way of applying cleaning solutions
for their known purpose. Non-Final Act. 4.
Appellant argues Kiekens is directed to a self-cleaning filter and the
cleaning system disclosed is designed to clean a filter, not the spray dryer
itself or any other part of the spray dryer installation. Appeal Br. 6–7.
Specifically, Appellant argues that the purpose of Kiekens’s cleaning system
is to remove powdered particles that build up on the filter. Id. at 6.
According to Appellant, the filter happens to be part of a spray dryer
installation but never is the self-cleaning filter inside of the spray dryer nor
are the components and nozzles inside of the filter ever taught as being
inside of the spray dryer. Id. In view of this, Appellant argues that the
Examiner benefitted from impermissible hindsight in combining the
teachings of the cited art to arrive at the claimed invention because Kiekens
does not teach a spray dryer with nozzles for cleaning as claimed. Id. at 5, 7.
Appellant also contends that the Examiner’s reliance on the doctrine of mere
duplication of parts is insufficient as motivation to modify Kiekens to take
the nozzles out of the filter and put them into the spray dryer. Id. at 5.
Appellant asserts this doctrine is not relevant to the current rejection because
the Examiner does not cite a reference that uses multiple supply tanks and
multiple nozzles to apply two different cleaning solutions in the industrial
equipment recited in claim 1. Id.
Appellant’s arguments do not point to reversible error in the
Examiner’s determination of obviousness.
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To establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or suggested by
the prior art or would have been obvious based on the knowledge of those of
ordinary skill in the art or the inferences and creative steps a person of
ordinary skill in the art would have employed. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).
Moreover, “the test for combining references is not what the individual
references themselves suggest but rather what the combination of disclosures
taken as a whole would suggest to one of ordinary skill in the art.” In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). It is also well established
that the obviousness inquiry does not ask “whether the references could be
physically combined[,] but whether the claimed inventions are rendered
obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d
852, 859 (Fed. Cir. 1985) (en banc); see also In re Keller, 642 F.2d 413, 425
(CCPA 1981) (stating “[t]he test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference”).
Based on the disclosures of the prior art noted above, the Examiner
has provided a reasonable basis for one skilled in the art to modify
Fernholz’s CIP process by substituting the disclosed spray head with
Kiekens’s well-known multiple sets of nozzles to apply cleaning solutions to
any equipment and reasonably expect that the modified method would be
suitable for Fernholz’s purposes of cleaning a spray dryer. In re O'Farrell,
853 F.2d 894, 904 (Fed. Cir. 1988) (“For obviousness under § 103, all that is
required is a reasonable expectation of success.”); see also KSR, 550 U.S. at
417 (explaining that patentable subject matter must “involve more than the
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simple substitution of one known element for another or the mere
application of a known technique to a piece of prior art ready for the
improvement”). Thus, Appellant fails to explain why one skilled in the art,
using no more than ordinary creativity, would not have been capable of
arriving at the claimed invention from the teachings of the cited art. See
KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”); see also In re Sovish, 769 F.2d 738,
743 (Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in
the art).
Appellant argues Kiekens does not teach or suggest the claimed
method of cleaning with two cleaning solutions through first and second
nozzles and then repeating that process. Appeal Br. 7. Appellant contends
that the purpose of the multiple tanks and nozzles, as claimed, is not merely
to have more nozzles and tanks but, instead, have a means to apply two
separate cleaning solutions to remove difficult, thermally-degraded soils
from equipment that cannot be disassembled and manually cleaned. Id. at
5–6.
We have considered Appellant’s arguments and are unpersuaded of
reversible error in the Examiner’s determination of obviousness.
With respect to the use of two cleaning solutions to clean an
equipment component, Appellant does not dispute the Examiner’s finding
that Fernholz discloses this feature. See generally Appeal Br.; Final Act. 3;
Ans. 3; Fernholz ¶¶ 12–20. Instead, Appellant appears to argue that
Fernholz does not teach the use of multiple sets of nozzles to apply two
different cleaning solutions in a manner that each cleaning solution has a
dedicated set of nozzles for its application. Appeal Br. 7. We find this
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argument unavailing for the reasons we give in our previous discussion
concerning the use of Fernholz’s multiple sets of nozzles. Further,
Appellant has not explained convincingly why one skilled in the art, using
no more than ordinary creativity, would not have been capable of modifying
Fernholz’s CIP method by dedicating a set of nozzles to each separate
cleaning solution used in the cleaning process given that Fernholz teaches
applying two different solutions separately. See KSR, 550 U.S. at 421 (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”); Sovish, 769 F.2d at 743.

Claim 4
Claim 4 recites that the second length of time in step (b) is longer than
the first length of time in step (a).
The Examiner finds Fernholz’s Example 1 teaches the length of the
pretreatment is exemplified as 5 minutes and the length of CIP cleaning is
exemplified as 30 minutes. Ans. 8–9; Fernholz ¶ 74.
We have considered Appellant’s argument (Appeal Br. 7–8) for this
claim but it does not persuade us of reversible error because it does not
address the Examiner’s finding above. Nor has Appellant filed a Reply
Brief addressing the Examiner’s finding.

Claim 9
Claim 9 recites “wherein step (a) and step (b) are repeated from 5 to
150 times.”
The Examiner finds Fernholz teaches reapplying solutions during the
process. Ans. 9; Fernholz ¶¶ 27, 64. The Examiner additionally finds
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Fernholz teaches that the number of steps for reapplying the cleaning
solutions is a result effective variable that depends on the concentration and
chemistry of the cleaning solutions used. Ans. 3–4; Fernholz ¶ 62.
Appellant argues there is no teaching in Fernholz that those steps are a
repeat of the previous steps. Appeal Br. 8.
We are also unpersuaded by this argument.
One skilled in the art would have reasonably inferred from Fernholz’s
disclosure that the disclosed number of repeating steps is associated with or
includes the cleaning steps previously applied. See In re Fritch, 972 F.2d
1260, 1264–65 (Fed. Cir. 1992) (holding that a reference stands for all of the
specific teachings thereof as well as the inferences one of ordinary skill in
the art would have reasonably been expected to draw therefrom). Moreover,
Appellant does not direct us to any objective evidence in support of the
stated argument that would lead one skilled in the art to conclude differently.

Claims 11 and 13
Claim 11 recites “the second set of nozzles comprises a high pressure
nozzle” and claim 13 recites “wherein the first and second cleaning solutions
are recirculated into the second supply tank.”
We refer to the Examiner’s Answer for the Examiner’s findings for
each of these claims. Ans. 8–9.
We have considered Appellant’s arguments (Appeal Br. 7–8) for these
claims but they do not persuade us of reversible error because they do not
address the Examiner’s findings with respect to these claims. Nor has
Appellant filed a Reply Brief addressing the Examiner’s findings.
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Application 15/223,129

9
Accordingly, we affirm the Examiner’s prior art rejection of claims 1,
2, 4–11, 13–19, and 23 under 35 U.S.C. § 103(a) for the reasons the
Examiner presents and we give above.

DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–11,
13–19, 23
103(a) Fernholz, Kiekens 1, 2, 4–11,
13–19, 23

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)(iv).

AFFIRMED