Ex Parte 6,080,330 et al

Patent Trial and Appeal Board

May 30, 2014

90011713 (P.T.A.B. May. 30, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/010,381 01/23/2009 6,080,330 UNUI132158 9295
1009 7590 05/30/2014
KING & SCHICKLI, PLLC
247 NORTH BROADWAY
LEXINGTON, KY 40507
EXAMINER
XU, LING X
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
05/30/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/011,454 01/21/2011 6,080,330 UNUI136134 5298
1009 7590 05/30/2014
KING & SCHICKLI, PLLC
247 NORTH BROADWAY
LEXINGTON, KY 40507
EXAMINER
XU, LING X
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
05/30/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/011,713 05/26/2011 6,080,330 UNUI136516 6831
1009 7590 05/30/2014
KING & SCHICKLI, PLLC
247 NORTH BROADWAY
LEXINGTON, KY 40507
EXAMINER
XU, LING X
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
05/30/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex Parte Natural Alternatives, LLC.

Appeal 2013-009547
Reexamination Control Nos. 90/010,381; 90/011,454; and 90/011,713
Patent 6,080,330
Technology Center 3900
____________

Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2013-009547
Reexamination Controls 90/010,381; 90/011,454; 90/011,713
Patent 6,080,330

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Patent Owner Natural Alternatives, LLC (hereinafter “Patent Owner”)
appeals under 35 U.S.C. §§ 134(b) and 306 the Examiner’s decision to reject
claims 1-23 and 25-55.1 We have jurisdiction under 35 U.S.C. §§ 134(b)
and 306. We affirm the Examiner’s decision to reject claims 1-23 and 25-
55.

STATEMENT OF THE CASE
United States Patent 6,080,330 (hereinafter “the ‘330 Patent”), which
is the subject of the current merged ex parte reexamination proceedings,
issued to Todd Bloomer on June 27, 2000, based on Application 09/333,180
filed June 14, 1999. All three reexamination proceedings were ordered
based on third-party requests for reexamination filed by Univar USA Inc.
Although not stated in the Appeal Brief, we understand that the ‘330 Patent
is (or has been) the subject of litigation styled Natural Alternatives, LLC,
and Todd Bloomer v. Univar USA Inc., Case No. 5:08-cv-473 (E.D. Ky.).
See Request for Reexamination, filed January 9, 2009 in 90/010,381, at 2.
The ‘330 Patent is related to United States Patent 6,416,684 (hereinafter “the
‘684 Patent”), which is the subject of Reexamination Control 95/001,136
and is currently undergoing reexamination. (App. Br. 4.)
The ‘330 Patent relates to a mixture containing desugared sugar beet
molasses (hereinafter “DSBM”), which is used for removing and/or
preventing ice or snow buildup. (Col. 4, ll. 22-49.) The compositions

1 See Patent Owner’s Appeal Brief (filed December 17, 2012) (hereinafter
“App. Br.”) at 1.
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combine DSBM with either alcohols or salts to create the anti-freezing
compound. (Col. 4, ll. 5-21.)
Claims 1 and 6, which are illustrative of the claimed subject matter
read as follows:
1. A composition for deicing and inhibiting the
formation of ice and snow on surfaces comprising from 25-99%
by volume of desugared sugar beet molasses having 60-75%
suspended solids and 1-75% by volume of a component
selected from the group consisting of sodium formate, calcium
magnesium acetate, potassium acetate, ethylene glycol, di-
ethylene glycol, magnesium chloride, calcium chloride, sodium
chloride, potassium chloride and mixtures thereof.
6. A composition for deicing or inhibiting the formation
of ice and snow on surfaces comprising a mixture of desugared
sugar beet molasses and rock salt including from 8-10 gallons
of desugared beet molasses per ton of tock salt.
(App. Br., Claims App’x 53-54.)

The Prior Art relevant to the issues on Appeal is:

Daly US 5,639,319 Jun. 17, 1997

Crofoot US 1,581,179 Apr. 20, 1926

Zdzislaw (PL 164018 B1, published Nov. 7, 1990)

Public Works (Winter is Hell, Public Works, July 1997, pgs. 53-54.)

Public Sector Consultants (The Use of Selected Deicing Materials on
Michigan Roads: Environmental and Economic Impacts, Prepared by
Public Sector Consultants, Inc., for MDOT, December 1993.)

Bulk Density Chart (website listing bulk densities of various
materials,
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http://replay.web.archive.org/20021011113247/http://www.mpd-
inc.com/material.htm, accessed May 12, 2011.)

CRC Handbook (Handbook of Chemistry and Physics, 53rd Ed., The
Chemical Rubber Co., Cleveland, OH. 1973, pgs. D-196 & C-258.)

THE REJECTIONS
The claims stand rejected by the Examiner over eighteen different
grounds of rejection.
1. Claim 54 under 35 U.S.C. § 305 as enlarging the scope of the
claims under reexamination.
2. Claim 54 under 35 U.S.C. § 112, 2nd paragraph as being indefinite.
3. Claim 6 under 35 U.S.C. § 102(b) as being anticipated by Public
Works as evidenced by Public Sector Consultants.
4. Claim 7 under 35 U.S.C. § 102(b) as being anticipated by Daly as
evidenced by Bulk Density Chart.
5. Claim 9 under 35 U.S.C. § 103(a) over Daly as evidenced by Bulk
Density, in view of Crofoot.
6. Claims 1, 3, 47, and 53 under 35 U.S.C. § 103(a) over Daly as
evidenced by Bulk Density Chart.
7. Claim 2 under 35 U.S.C. § 103(a) over Daly as evidenced by Bulk
Density, in view of Crofoot.
8. Claims 4, 22, and 29 under 35 U.S.C. § 103(a) over Daly as
evidenced by Bulk Density, in view Patent Owner’s Admitted
Prior Art.
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9. Claims 7, 8, 10, 16, 18-20, 23, 25, 26, 28, 31-37, 52, 54 and 55
under 35 U.S.C. § 103(a) over Public Works as evidenced by
Public Sector Consultants and Bulk Density Chart.
10. Claims 9 and 17 under 35 U.S.C. § 103(a) over Public Works as
evidenced by Public Sector Consultants and Bulk Density Chart, in
view of Crofoot.
11. Claims 27 and 42-44 under 35 U.S.C. § 103(a) over Public Works
as evidenced by Public Sector Consultants and Bulk Density Chart,
in view of Public Sector Consultants.
12. Claims 1, 3, 4, 11-15, 21, 22, 29, 30, 45, 48, 51, and 53 under 35
U.S.C. § 103(a) over Public Works as evidenced by Public Sector
Consultants and Bulk Density Chart, in view of Daly and Patent
Owner’s Admitted Prior Art.
13. Claim 2 under 35 U.S.C. § 103(a) over Public Works as evidenced
by Public Sector Consultants, Bulk Density Chart, Daly, and Patent
Owner’s Admitted Prior Art, in view of Crofoot.
14. Claims 5, 46, 47, 49, and 50 under 35 U.S.C. § 103(a) over Public
Works as evidenced by Public Sector Consultants, Bulk Density
Chart, Daly, and Patent Owner’s Admitted Prior Art, in view of
Public Sector Consultants.
15. Claims 7, 16, 17, 19, 20, 28, 32-35, 42-44, 54, and 55 under 35
U.S.C. § 103(a) over Zdzislaw as evidenced by Daly and Bulk
Density Chart.
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16. Claims 6, 8-10, 18, 23, 25-27, 31, 36, 37, and 52 under 35 U.S.C.
§ 103(a) over Zdzislaw as evidenced by Daly and Bulk Density
Chart, in view of Public Sector Consultants and Public Works.
17. Claims 1, 2, 4, 15, 21, 22, 29, 38-41, and 53 under 35 U.S.C.
§ 103(a) over Zdzislaw as evidenced by Daly, Bulk Density Chart,
and Patent Owner’s Admitted Prior Art.
18. Claims 3, 5, 11-14, 30 and 45-51 under 35 U.S.C. § 103(a) over
Zdzislaw as evidenced by Daly, Bulk Density Chart, and Patent
Owner’s Admitted Prior Art, in view of Public Sector Consultants
and Public Works.

I. REJECTION UNDER 35 U.S.C. § 305
The Examiner rejected claim 54 under 35 U.S.C. § 305 as enlarging
the scope of the patent under reexamination. (Ans. 2.) The Examiner’s
position is that claim 54 improperly enlarges the scope of the original patent
claims, because it recites a method of removing snow or ice from a surface
and fails to recite an anti-skid agent, whereas original claim 8, which is also
directed to a method of removing snow or ice from a surface, recites an anti-
skid agent. (Ans. 2.)
Patent Owner argues that when compared to original claim 7; claim
54 does not enlarge the scope of the previous claims, because claim 7 also
does not include an anti-skid agent. (App. Br. 18-19.) Although claim 7
relates to a method of preventing accumulation, not a method of removal,
Patent Owner contends that spreading the same composition on ice and snow
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would both remove the ice and snow and prevent the further accumulation
thereof. (Id.)
Accordingly, the issue with respect to the rejection under 35 U.S.C.
§ 305 is whether claim 54 should be compared to claim 7 or claim 8 in order
to determine whether it enlarges the scope of the original Patent claims.
We are persuaded by Patent Owner’s argument that claim 54 is
properly compared to original claim 7, and when compared to original claim
7, claim 54 does not enlarge the scope of the previous claims, because claim
7 relates to a method of preventing accumulation, not a method of removal.
(App. Br. 18-19.) That is, although claim 7 expressly recites a method of
preventing the accumulation of ice or snow on a surface, the actual step of
spreading recited in claim 7 is the same spreading step recited in claim 54.
We agree with Patent Owner, that when spread on a surface containing
accumulated ice or snow, the composition would inherently act to prevent
further accumulation of ice or snow on the surface. (App. Br. 18.)
Accordingly, we reverse the rejection of claim 54 under 35 U.S.C. § 305.

II. REJECTION UNDER 35 U.S.C. § 112, 2nd PARAGRAPH
The Examiner rejected claim 54 because the preamble recites “ice or
snow formed” whereas in the body of the claim recites “ice and snow
formed.” (Ans. 3.) Patent Owner asserts that the discrepancy is a result of a
typographical error. (App. Br. 21.)
We are of the opinion that one of ordinary skill in the art would have
understood the scope of claim 54. That is, the method step recited in claim
54 is spreading a composition on a surface. We do not agree that one of
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ordinary skill in the art would be confused by the inconsistency in the claim
noted by the Examiner. In addition, claim 54 is consistent with claims, 8, 9
and 55 which also interchangeably use “ice and snow” with “ice or snow.”
(App. Br., Claims App’x 53-66.) Accordingly, we reverse the rejection of
claim 54 under 35 U.S.C. § 112, 2nd paragraph.

III. REJECTIONS UNDER 35 U.S.C. § 102
A. REJECTION OF CLAIM 6
The Examiner rejected claim 6 under 35 U.S.C. § 102(b) as being
anticipated by Public Works as evidenced by Public Sector Consultants.
(Ans. 4.) Specifically, the Examiner found that Public Works discloses a
mixture of DSBM and salts in a ratio of 8 gallons of DSBM per ton of salts
as recited in claim 6. Id. Patent Owner argues that Public Works fails to
anticipate the claimed ratio of eight gallons of DSBM per ton of rock salt
because the ton of material in Public Works is a combination of 25% road
salt and 75% crushed cinders, and as a result, the claimed ratio is not met.
(App. Br. 24.)
Thus, the issue is whether Public Works discloses the ratio of DSBM
to rock salt recited in the claim.
We agree with Patent Owner that Public Works fails to disclose the
recited ratio. Public Works discloses using eight gallons of Ice Ban (DSBM)
per ton of a salt mix. (Public Works 54.) The salt mix, however, is only
25% salt (Public Works 54) and therefore would not meet the claimed ratio.
Public Works also discloses several other examples of using eight gallons of
Ice Ban per ton of mix, but none of these examples explicitly teaches that the
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mix is pure salt. (Public Works 53-54.) Thus, Public Works does not
disclose an embodiment having the ratio of DSBM to rock salt recited in
claim 6. As such, Public Works does not anticipate claim 6.

B. REJECTION OF CLAIM 7
The Examiner rejected claim 7 under 35 U.S.C. § 102(b) as
anticipated by Daly as evidenced by Bulk Density Chart. As discussed
above, claim 7 recites a method of preventing the accumulation of ice or
snow on a surface, the method comprising spreading a composition of
DSBM and another component spread on the surface. The Examiner found
that because Daly discloses that DSBM remains in a fluid state and does not
freeze at temperatures as low as -30 ºF, DSBM has the property of
preventing the accumulation of ice on a surface. (Ans. 4.)
Patent Owner argues that Daly discloses a tire filled with a liquid
ballast material and not a method for the prevention of ice or snow
accumulation by spreading a composition on a surface. (App. Br. 27.)
Thus, the issue with respect to this rejection is whether Daly discloses
the method recited in claim 7.
We agree with Patent Owner’s argument that Daly fails to teach the
prevention of ice or snow accumulation. (App. Br. 27.) Daly discloses
using DSBM as tire ballast. (Col. 2, ln. 18 to col. 3, ln. 15.) Although Daly
discloses that DSBM remains fluid below freezing (col. 2, ll. 55-57), as
discussed above, Daly only discloses that DSBM is used to fill a tire, and
does not disclose a step of preventing accumulation of ice or snow on the
tire. (See App. Br. 27.) Thus, Daly does not anticipate claim 7.
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IV. REJECTIONS UNDER 35 U.S.C. § 103(a)
The Examiner rejected the claims as obvious over Zdzislaw in
combination with several other prior art references. (Ans. 24-34.) We
address the points argued by Patent Owner with respect to the claims
separately argued below.

A. REJECTION OF CLAIMS 1-5, 7, 11-17, 19-22, 28-30, 32-35, 38-41,
45-51, and 53
Claim 1, which is representative, recites a composition for deicing and
inhibiting the formation of ice and snow on surfaces comprising from 25-
99% by volume of DSBM and 1-75% by volume of a component, which
may be a polyhydroxide alcohol.
The Examiner found that Zdzislaw discloses a DSBM composition
that is used to prevent freezing of bulk materials, the composition further
including polyhydroxide alcohols and water, the amounts of which are
disclosed in terms of mass. (Ans. 24-26, 31.) The Examiner converted
Zdzislaw’s amounts based on mass into amounts based on volume using
Daly and Bulk Density Chart for the purposes of providing the density
values of each component. (Ans. 25-26.) In this regard, Daly teaches that
the DSBM disclosed therein weighs between 8-11.6 lbs. /gallon compared to
11.7 lbs. /gallon for regular molasses. (Col. 2, ll. 40-43.) The Examiner
employed the 11.6 lbs. /gallon value to convert the values disclosed in
Zdzislaw to 4-47% DSBM and 11-85% alcohol by volume. (Ex. Ans. 25-
26.) The Examiner then stated that these values overlap the range of 25-
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99% DSBM mixed with 1-75% alcohol recited in claim 1. (Ans. 26.) The
Examiner also stated that the characteristics of the DSBM composition
disclosed in Zdzislaw could be adjusted according to the properties of the
bulk material and weather conditions and that Examples I-III in Zdzislaw
show that characteristics of the composition such as viscosity, freezing
temperature, and appearance are affected by the ratio of DSBM to alcohol.
(Ans. 26, citing Zdzislaw, p. 4, 1st paragraph.) The Examiner’s position is
that it would have been obvious to alter the DSBM and alcohol amounts of
Zdzislaw to optimize the desired properties of a given batch of the product.
(Ans. 26.)
Patent Owner argues that Daly cannot be used to provide the density
of the DSBM disclosed in Zdzislaw because Daly does not disclose the same
type of DSBM as Zdzislaw. (App. Br. 41-43, 44.)
The dispositive issue pertaining to the combination of Zdzislaw, Daly,
and the Bulk Density Chart is whether it would have been obvious, in view
of this prior art, to one of ordinary skill in the art to have employed the
amounts of the DSBM and polyhydroxide alcohol recited in claim 1.
We are not persuaded by Patent Owner’s argument. Zdzislaw
discloses using DSBM, made from a centrifuge process, as an anti-freezing
liquid. (Zdzislaw 2.) 2 Specifically, Zdzislaw discloses spraying a mixture
of polyhydroxide alcohols (10-85 parts by mass), DSBM (5-55 parts by
mass), water (10-60 parts by mass), and additives (0-10 parts by mass) on
bulk materials to prevent freezing during storage and transportation.

2 Zdzislaw contains no page or paragraph numbers. All citations are to
pages 1 through 4 of the four page English translation.
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(Zdzislaw 2, 4.) Daly teaches creating DSBM using the Steffen process
(Daly, col. 2, ll. 48-51.), in contrast to Zdzislaw’s centrifuge process. The
centrifuge process and Steffen process are both acknowledged in the ‘330
Patent as two known methods of obtaining suitable DSBM. (Col. 5, ll. 6-
43.)
Thus, although the density of the DSBM disclosed in Daly may not be
the exact density of the DSBM in Zdzislaw,3 the rejection further relied on
the concept that Zdzislaw’s composition could have been optimized to the
claimed volume percentage amounts. We agree with the Examiner that
Zdzislaw shows that the properties of the composition with respect to
appearance, freezing temperature, and viscosity can be adjusted by varying
the amounts of the components in the composition. Accordingly, we agree
with the Examiner that it would have been obvious to have optimized the
amounts of DSBM and alcohol to those falling within the recited ranges
based on the desired properties of the resulting composition.
Patent Owner also argues that the record contains sufficient evidence
of secondary considerations to overcome the prima facie case of
obviousness. (App. Br. 46-52.) We agree with the Examiner’s position that
the submitted evidence lacks a nexus with the claimed subject matter. (Ex.
Ans. 73-76.) Patent Owner submits news reports praising GEOMELT (the
commercial product of a composition alleged to fall within the scope of the

3 The ‘330 Patent teaches that both the Steffen process (Daly) and the
centrifuge process (Zdzislaw) creates suitable DSBM. (Col. 5, ll. 43-44.)
Both DSBMs are also capable of being sprayed, undiluted, from a nozzle.
(Col. 5, ll. 49-52). Thus, we are unconvinced that the densities of the two
DSBMs would be so different as to result in values outside the broad range
of DSBM recited in claim 1.
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claims). For example, the report “Beet Juice Beats Salt”4 praises a
combination of DSBM and salt because it performs better than salt alone.
However, Public Works already had disclosed that mixing Ice Ban5 with salt
performs better than salt alone. (Public Works 54.) Thus, the “Beet Juice
Beats Salt” article is indicative of a well-known fact from the art, namely
that a salt-DSBM mixture works better than salt alone and is insufficient to
establish a nexus between the claimed subject matter and the evidence
presented. See Tokai Corp. v. Easton Enters, Inc., 632 F.3d 1358, 1369
(Fed. Cir. 2011).
Likewise, Zdzislaw discloses that DSBM mixtures were used for
deicing. (Zdzislaw, p. 4.) The declarations from the licensees and from the
Patent Owner, fail to establish that the commercial success of GEOMELT is
due to the elements of the claimed mixture extending beyond the well-
known de-icing properties of DSBM mixtures. For these reasons, we find
the evidence of secondary considerations unpersuasive.

B. CLAIMS 3, 5, 8-14, 18, 23, 25-27, 30 31, 36-37, 45 and 52
Claim 5 is representative of the subject matter argued by Patent
Owner and recites a composition comprising a mixture of DSBM and
chloride salt. The Examiner combines Zdzislaw with Public Sector
Consultants in order to replace the alcohol used in combination with the

4 “Beet Juice Beats Salt,” NEWSCHANNEL 3, February 27, 2008. (App.
Br. Ev. App’x E.)
5 Ice Ban is a desugared molasses product made from fermenting several
products including sugar beets and was found to be a DSBM product by the
Examiner.
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DSBM disclosed in Zdzislaw with the salt disclosed in Public Sector
Consultants. (Ans. 29-30.) The Examiner then relies on Public Works for
the appropriate amount of salt that would be used in the composition. (Id.)
Patent Owner argues that Public Sector Consultants is not a printed
publication and cannot be used as prior art. (App. Br. 44-46.) Patent Owner
further contends that Public Works does not teach mixing 13% DSBM to
87% road salt (by volume) as asserted by the Examiner. (App. Br. 36-37.)
Accordingly, the additional issues raised with respect to the rejection
of these claims are: (1) whether Public Sector Consultants was available as
a printed publication, and (2) whether Public Works discloses mixing 13%
DSBM to 87% road salt (by volume).
Issue 1
A reference may be considered a printed publication upon showing
the document is available to one of ordinary skill who exercises reasonable
diligence in locating it. In re Wyer, 655 F.2d 221, 210 (CCPA 1981).
Public Sector Consultants is a study commissioned by the Michigan
Department of Transportation. (Public Sector Consultants 1.) A press
release issued in December 1994 entitled “Road Salt: Still the Deicer of
Choice” discusses this study.6 In the final paragraph, the press release states
“[f]or a copy of the study, contact Andy Zeigler, MDOT Environmental
Section, P.O. Box 30050, Lansing, MI 48909.” (See Ans. 69.) Thus, Public
Sector Consultants was available with reasonable diligence (i.e., upon

6 See Road Salt: Still the Deicer of Choice by Kristine Bradof,
cseo.mtu.edu/community/publications/wellspring/salt_follow-up.html
(hereinafter “the press release”) entered into the record by the Examiner on
June 14, 2012.
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request) in 1994. Therefore, we find Patent Owner’s argument
unpersuasive.

Issue 2
The Examiner asserted that Public Works discloses mixing 13%
DSBM to 87% road salt (by volume). (App. Br. 36-37; Ans. 12-13.) We
agree. Public Works teaches mixing eight gallons of DSBM per ton of a
25/75% mix of road salt and crushed cinders. (Public Works 54.) The
Examiner’s position is that the ratio of 25/75% is given by mass.7 (Ex. Ans.
59.) We find the Examiner’s position is consistent with the reference,
because the 25/75 mixture is referred to by mass (i.e. a ton of the mix).
(Public Works 54.) Also, references to salt (and salt prices) in Public Works
are by mass ($200/ton). (Public Works 53-54.) As such, a person of
ordinary skill would have understood that the salt/cinder mixture was also
presented by mass. In re Preda, 401 F.2d 825, 826 (CCPA 1968).
We are also not persuaded by Patent Owner’s argument that Public
Works would not convey to one of ordinary skill in the art that a range of
ratios of DSBM to rock salt could be employed. (App. Br. 37.) Public
Works discloses two field tests using DSBM for ice/snow removal. (Public
Works 53-54.) The first field test used pure DSBM sprayed from a nozzle
and the second field test mixed DSBM with salt in the 13/87 ratio discussed
supra. (Public Works 53-54.) The Examiner’s position is that these two
embodiments teach a range for the use of DSBM with salt, from 100/0% to

7 Based on the mix containing 25% salt, (i.e. 500 pounds of salt per 8 gallons
of DSBM), the Examiner determined that Public Works teaches a 13/87%
(by volume) mixture of DSBM to salt. (Ans. 12-13 and 29.)
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13/87%. (Ans. 29.) Patent Owner argues that no such range is taught or
implied. (App. Br. 37.) However, consistent with our discussion above,
Public Works provides further supporting evidence for the Examiner’s
position that it would have been obvious to optimize the ratio for the ideal
mixture of DSBM and salt. Thus, Patent Owner’s argument does not
persuade us that the Examiner’s rejection is in error.

C. CLAIM 6
Patent Owner presents two additional arguments with respect to claim
6, which relate to the obviousness rejections. First, Patent Owner argues that
Public Sector Consultants fails to establish that the term “road salt” is
synonymous with the term “rock salt” as suggested by the Examiner. (App.
Br. 23.) In this regard, Public Works teaches mixing eight gallons of DSBM
with road salt, while claim 6 recites a mixture of DSBM with rock salt.
(Public Works 54, App. Br., Claims App’x 54.) The Examiner turned to the
heading in Public Sector Consultants that states “Sodium Chloride
(Road/Rock Salt)” to support the position that road salt and rock salt are
synonyms for the same substance. (Ans. 4, Public Sector Consultants 73.)
We are of the position that the portions of Public Sector Consultants relied
on by the Examiner support the position that road salt is understood by one
of ordinary skill in the art to be rock salt. Patent Owner presents no
persuasive evidence to the contrary. Thus, we are not persuaded by Patent
Owner’s argument.
Patent Owner also reiterates the argument that Public Works does not
teach mixing eight gallons of DSBM to a ton of rock salt. (App. Br. 44.)
Appeal 2013-009547
Reexamination Controls 90/010,381; 90/011,454; 90/011,713
Patent 6,080,330

17
We agreed with Patent Owner that Public Works does not anticipate this
feature as discussed supra. The Examiner’s rejection under 35 U.S.C.
§ 103(a), however, stated that it would have been obvious to optimize the
ratio of DSBM product and rock salt. (Ans. 30.) Further, Public Works
teaches three different examples of mixing eight gallons of DSBM product
to a ton of “mix.” (Public Works 53-54.) Thus, the Examiner’s rejection is
sufficient to support a conclusion that it would have been obvious to
optimize to the recited ratio of 8 gallons per ton of rock salt, when using a
“mix” of pure rock salt.

D. OTHER REJECTIONS
Because we affirm the Examiner’s decision to reject all of the claims
subject to reexamination as obvious over Zdzislaw et al., we find it
unnecessary to reach the remaining rejections under 35 U.S.C § 103. Cf. In
re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); Beloit Corp. v. Valmet Oy,
742 F.2d 1421, 1423 (Fed. Cir. 1984) (Having decided a single dispositive
issue, the ITC was not required to review other matters decided by the
presiding officer).

DECISION
The Examiner’s decision to reject claims 1-23 and 25-55 over
Zdzislaw et al. in combination with various other references is affirmed.
However, we reverse the rejections of claim 54 under 35 U.S.C. § 305
and 35 U.S.C. § 112, 2nd paragraph.
Appeal 2013-009547
Reexamination Controls 90/010,381; 90/011,454; 90/011,713
Patent 6,080,330

18
We reverse also the rejection of claim 6 under 35 U.S.C. § 102(b) and
the rejection of claim 7 under 35 U.S.C. § 102(b).
We do not reach the remaining rejections.

AFFIRMED

Appeal 2013-009547
Reexamination Controls 90/010,381; 90/011,454; 90/011,713
Patent 6,080,330

19

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