Ex Parte 6262013 et al

Patent Trial and Appeal Board

Sep 8, 2016

90013369 (P.T.A.B. Sep. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
90/013,369
117274 7590
Turner Boyd LLP
702 Marshall Street
Suite 640
FILING DATE
10/13/2014
09/08/2016
Redwood City, CA 94063
FIRST NAMED INVENTOR
6262013
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5719.118309 1241
EXAMINER
JOHNSON,JERRYD
ART UNIT PAPER NUMBER
3991
MAILDATE DELIVERY MODE
09/08/2016 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 APPEALS BOARD
Exparte ECOLAB INC.,
Patent Owner and Appellant
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Technology Center 3900
Before CHUNG K. PAK, RICHARD M. LEBOVITZ, and
RAEL YNN P. GUEST, Administrative Patent Judges.
GUEST, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF CASE
Ecolab Inc. (hereinafter "Patent Owner"), the real party in interest1 of
Patent 6,262,013 Bl (hereinafter the "'013 patent"), appeals under 35 U.S.C.
§§ 134(b) and 306 from the Examiner's decision to reject claims 1-24 and
26-31. Patent Owner's Reply Brief 2, filed February 11, 2016 (hereinafter
"Reply Br."). We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM and ENTER A NEW GROUND OF REJECTION with
respect to claim 25.
1 See Appellant's Appeal Brief filed October 29, 2015 (hereinafter "App.
Br.") at 2.
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This reexamination proceeding arose from a third-party request for ex
parte reexamination filed by Patrick J. Smith of the law firm Greer, Bums &
Crain, Ltd. Request for Ex parte Reexamination, filed October 13, 2014.
According to the '013 patent, "[t]he laundry chemical compositions
and laundry processes of the invention provide for the use of a fabric
sanitizing/sour material that can be used in laundry processes following an
alkaline detergent." '013 patent, col. 2, 11. 58---61.
Representative claims 1 and 15 on appeal reads as follows (with
claims 1 and 15 being original patent claims):
1. A laundry process that provides cleaned, sanitized
and pH neutralized laundry items, the process comprising:
(a) contacting soiled laundry items with an alkaline
detergent to form a treated laundry item; and
(b) contacting the treated laundry item with a peracid
composition comprising hydrogen peroxide, an organic
carboxylic acid, and a resulting organic peracid, wherein said
composition neutralizes and sanitizes the laundry item.
15. A laundry process, substantially free of a
permanganate component, that cleans and sanitizes laundry
items, the process comprising:
(a) contacting a soiled laundry item with about 1 to 300
ounces of a laundry detergent chemical per hundred pounds of
fabric laundry item, said laundry detergent comprising a source
of alkalinity, and an anionic or nonionic surfactant in an
aqueous medium, to remove soil to produce a treated laundry
item; and
(b) contacting the treated laundry item with about 1 to 10
ounces of an aqueous peracid composition per hundred pounds
of laundry item, said peracid composition comprising hydrogen
peroxide, an organic acid and the resulting organic peracid.
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Claims App'x, App. Br. 65 and 67.
The Examiner maintains the following rejections, which are appealed
by the Patent Owner.
1. Claims 1-14 and 24 are rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Oakes (US 5,200,189, issued April 6, 1993 to
Thomas R. Oakes, et al.).
2. Claims 15-23 and 26-31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Oakes.
3. Claims 30 and 31 are rejected under 35 U.S.C. § 112, first paragraph,
because the claim language "the peracid composition is substantially
free of other carboxylic acids and other peracids" lacks written
descriptive support.
4. Claims 29-31 are rejected under 35 U.S.C. § 112, second paragraph,
because the phrase "freely water soluble" in claim 29 and the phrase
"substantially free of other carboxylic acids and other peracids" in
claims 30 and 31 are indefinite.
See Examiner Final Office Action, mailed July 15, 2015 (hereinafter
"Final") and Examiner's Answer 2, mailed December 11, 2015 (hereinafter
"Ans.") (withdrawing certain rejections from the Final).
An oral hearing was held on June 15, 2016. A transcript of the oral
hearing was entered into the record on July 1, 2016.
II. OAKES
The Examiner finds that Oakes describes a peroxyacid antimicrobial
concentrate and diluted end use composition having a pH of about 2 to 8.
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Final 6. The Examiner finds that the peracid component can be produced by
mixing a hydrogen peroxide (H202) solution with a desired amount of acid,
preferably acetic acid. Id.
Oakes is primarily directed to an improvement in biocide activity by
using a composition comprising both a C1 to C4 peroxycarboxylic acid and a
C6 to C1s peroxyacid over "using these components separately." Oakes,
Abstract. However, Oakes describes this improvement by comparing these
combinations to conventional peracetic acid compositions comprising only
peracetic acid derived from acetic acid and hydrogen peroxide in water.
Oakes, col. 10, Table III, Example 6 and Table IV, Table V, Example 11 (col.
11, 11. 14--50) and Table IX, Table X, Examples 12 and 13 (col. 14, 11. 8-12)
and Table XI, and Table XVI, Example 22 (col. 16, 11. 15-16) and Table
XVII.
Oakes teaches "the concentrate composition can be injected into the
wash or rinse water of a laundry machine and contacted with contaminated
fabric for a time sufficient to sanitize the fabric. Excess solution can then be
removed by rinsing or centrifuging the fabric." Oakes, col. 8, col. 11-15.
1. Anticipation
The Examiner acknowledges that, although washing with a detergent
prior to sanitation is described generally in Oakes (Oakes, col. 7, 11. 31-37),
Oakes does not expressly describe a process in which laundry wash water
includes a detergent, particularly an alkaline detergent. The Examiner finds
that "[b ]ecause alkaline detergents are typically used in industrial and
commercial laundry processes, commercially available and extremely well
known, one having ordinary skill in the art would have immediately
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envisioned the use of Oakes sanitizing composition in a commercial or
industrial alkaline laundry process." Ans. 6; see Final 14.
Patent Owner argues that the Examiner made no finding that an
alkaline detergent was inherent in the teachings of Oakes or in laundry
processes in general. App. Br. 18.
"To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently." In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). "A single reference must
describe the claimed invention with sufficient precision and detail to
establish that the subject matter existed in the prior art." Verve, LLC v.
Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002).
In some situations, a teaching of a small genus may be considered to
describe a particular species within the genus with sufficient specificity to
anticipate. See In re Schaumann, 572 F.2d 312, 316-17 (CCPA 1978)
(holding that the printed publication "embraces a very limited number of
compounds closely related to one another in structure," therefore providing
"a description of those compounds just as surely as if they were identified in
the reference by name."); In re Petering, 301F.2d676, 681-82 (CCPA
1962) (A pattern of described preferences disclosed in the reference in
connection with a broader description constituted a definite and limited class
of compounds, such that one of ordinary skill in the art would at once
envisage each member of the class "as fully as if he had drawn each
structural formula or had written each name."). We cannot agree with the
Examiner that the present generic description of a laundry process is such a
situation. Indeed, Patent Owner directs us to the testimony provided by the
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Fast declaration,2 which states that "not all laundry washing agents are
alkaline." Fast Deel. i-f 11. The Examiner did not provide sufficient
evidence of the breadth of the genus of laundry processes to show that the
selection of an alkaline detergent would have immediately been envisaged
upon Oakes. Thus, the Examiner did not establish that the particular step of
"contacting soiled laundry items with an alkaline detergent" is not described
in Oakes with sufficient specificity for a finding of anticipation.
Thus, we look to the alternative rejection under 35 U.S.C. § 103(a).
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
("[D]ifferences between the prior art reference and a claimed invention,
however slight, invoke the question of obviousness, not anticipation.").
B. Obviousness
Claim 1
The Examiner alternatively determined that "contacting soiled laundry
items with an alkaline detergent" would have been obvious to one of
ordinary skill in the art at the time of the invention in the laundry process
described in Oakes because it is conventional in the art to use an alkaline
2 The Declaration of Jonathan Fast under 37 C.F.R. § 1.132, dated and
entered into the record on June 3, 2015 (hereinafter "Fast Declaration" or
"Fast Deel."). Dr. Fast testifies to having experiences as the principal
chemist at the Ecolab Global Laundry Anchor team, which includes product
development specifically related to the use of peracids for bleaching and
disinfections of institutional or industrial laundry. Fast Deel. i-f 4. Dr. Past's
testifies that his work with Ecolab began after receiving his Ph.D. in 2008.
Id. Dr. Fast does not indicate any experience in materials used in the
laundry industry in 1999, the earliest filing date claimed for the '013 patent.
Id. Thus, while Dr. Fast is qualified to testify as to laundry processes in
general, we have no basis for which to find Dr. Fast particularly qualified to
testify as to the state of the art at the time of the invention.
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detergent for washing laundry, as admitted in the 'O 13 patent. Final 8. The
Examiner also determined that using the peracid composition to sanitize the
laundry, as described in Oakes, in the obvious laundry process using an
alkaline detergent, would necessarily, and thus inherently, neutralize the
alkalinity of the laundry items, as required by the rejected claims, due to the
lower pH of the peracids. Final 12-13.
Patent Owner does not dispute that the step of "contacting soiled
laundry items with an alkaline detergent" would have been obvious to one of
ordinary skill in the art at the time of the invention. Indeed, the Examiner
cites to portions of the 'O 13 patent describing the conventional nature of
using an alkaline laundry detergent. Final 8 (citing '013 patent, col. 7, 11.
53-56); see also Fast Deel. i-f 11 ("Many laundry detergents are alkaline
because of the nature of many sorts of common laundry soils. High alkaline
detergents are especially common in commercial laundries due to typically
higher soil levels compared to consumer laundry."). Patent Owner also does
not dispute that Oakes teaches "contacting the treated laundry item with a
peracid composition" and that performing this step results in sanitizing the
laundry.
Rather, Patent Owner contends that the Examiner erred in finding that
the step of "contacting the treated laundry item with a peracid composition"
would inherently neutralize the laundry items along with sanitizing. App.
Br. 27-28. Initially, Patent Owner argues that "[t]he Examiner cannot rely
on the alleged inherent result of a combination (as opposed to an inherent
result in a single reference) to meet the 'neutralize and sanitize' limitation,
especially where that limitation is responsible for a principal advantage of
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the invention." App. Br. 32-33 (citing, e.g., In re Rijckaert, 9 F.3d 1531,
1534 (Fed. Cir. 1993) and In re Newell, 891 F.2d 899, 901 (Fed. Cir. 1989)).
Patent Owner argues that it is erroneous to apply an inherency position "only
after the combination that the Examiner makes any claim to inherency,
without a showing of the obviousness of the 'neutralize and sanitize' claim
language." Id. at 29.
We disagree that the Examiner erred in his reasoning. The claims are
directed to a laundry process comprising two steps: ( 1) contacting laundry
with an alkaline detergent and (2) contacting the laundry with a peracid
composition. Patent Owner does not dispute that these steps would have
been obvious to one of ordinary skill in the art at the time of the invention
and that performing the steps would result in sanitizing the laundry items, as
taught by Oakes. Patentability cannot rest on the fact that performing
obvious steps for the reasons taught by the prior art lead to additionally
claimed results that were not recognized in the art, namely the neutralization
of the laundry items. To hold otherwise, would allow the obvious steps to
be patented over and over again merely by claiming different results from
performing identical steps.
Our reviewing court has recognized that inherency may supply a
missing claim limitation in an obviousness analysis. See, e.g., Alcon
Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1369 (Fed. Cir. 2012) (finding
a claimed result inherent in the otherwise obvious method of applying a
known composition in a human eye); In re Kao, 639 F.3d 1057, 1070 (Fed.
Cir. 2011); In re Kubin, 561F.3d1351, 1357 (Fed. Cir. 2009) (finding that a
recited binding property was inherent where the prior art taught that the
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protein itself was obvious in view of the prior art); In re Napier, 55 F.3d
610, 613 (Fed. Cir. 1995) ("The inherent teaching of a prior art reference ...
arises both in the context of anticipation and obviousness.").
With the exception of Rijckaert, the cases cited by Patent Owner have
one thing in common: they lacked evidence to support a finding that the
particularly recited process steps, or the particularly recited components of
an apparatus or composition, in the claims were obvious in the first
instance. 3 Without such evidence, it cannot also be asserted that additionally
recited results of a process would have been inherent. Rijckaert is inapposite
for a different reason. Although the rejection in Rijckaert was an
obviousness rejection, the Court found insufficient evidence or a reasonable
basis to find that the missing feature of the claim was inherent, or obvious,
based on the teachings of the primary reference. Rijckaert, 9 F.3d at 1534.
These cases do not suggest that inherent results of a process cannot be
considered in an obviousness analysis where there is a sound basis for
determining that the process steps are obvious and there is a sound basis for
the inherency finding. PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F .3d
1186, 1195-96 (Fed. Cir. 2014) ("[I]n order to rely on inherency to establish
the existence of a claim limitation in the prior art in an obviousness
3 For example, in In re Spormann, 3 63 F .2d 444 (Fed. Cir. 1966), the Court
found that the prior art lacked evidence of a spray drying step, as recited in
the claims, and thus it was error to find the effect of a reduced production of
sulfate was inherent. Spormann, 363 F.2d at 447-8. In Adams, the
Examiner did not show that a reason for combining the references was
known in the art at the time of the invention, in the first instance, despite the
fact that the claimed results of the combination were inherent. In re Adams,
356 F.2d 996, 1002 (CCPA 1966); see also Newell, 891 F.2d at 901.
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analysis-the limitation at issue necessarily must be present, or the natural
result of the combination of elements explicitly disclosed by the prior art.");
In re Oelrich, 666 F.2d 578, 581(CCPA1981) ("If ... the disclosure is
sufficient to show that the natural result flowing from the operation as
taught would result in the performance of the questioned function, it seems
to be well settled that the disclosure should be regarded as sufficient.");
Ansonia Brass & Copper Co. v. Elec. Supply Co., 144 U.S. 11, 18 (1892)
("[N]othing is better settled in this court than that the application of an old
process to a new and analogous purpose does not involve invention, even if
the new result had not before been contemplated."). See also In re Skoner,
517 F .2d 94 7, 950 (CCP A 197 5) ("Appellants have chosen to describe their
invention in terms of certain physical characteristics .... Merely choosing
to describe their invention in this manner does not render patentable their
method.").
Here, the Examiner's reasoning that the steps recited in the claim
would have been obvious is based on findings that the steps are conventional
in the prior art. Moreover, the Examiner has shown that the skilled artisan
would have combined the step for the purpose, taught by Oakes, of
sanitizing laundry. The Examiner has also provided a sound basis, discussed
in further detail below, that neutralization of the laundry items was an
inherent result of carrying out the suggested steps.
Accordingly, Patent Owner contends that the inherency reasoning of
the Examiner is flawed because "[i]t could just as well be that the laundry
items are already neutral when the compositions of Oakes I are used for
sanitizing, because the items have already been soured according to the
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standard prior art process." App. Br. 22. In other words, if the laundry
items are soured prior to treatment with the peracid composition, subsequent
treatment with the peracid would not neutralize the laundry. However, we
are not persuaded that the skilled artisan would have used a souring agent
before a sanitizing step in a conventional laundry process.
Patent Owner's Appeal Brief generally describes a conventional
laundry process in which the laundry items are (1) washed, then (2)
sanitized, and then (3) soured or softened. App. Br. 5 (citing three
references (note 4) from the Evidence Appendix, namely Exhibits 5, 8, and
10). The reason for conventionally processing laundry in this order is
because conventional sanitizing materials, namely chlorine bleach (sodium
hypochlorite ), are also highly alkaline and will create noxious gas in
combination with lower pH materials. Fast Deel. i-f 25. Thus, in a
conventional laundry process, souring (neutralizing) the laundry items would
not have occurred until after a sanitizing step.
Patent Owner points out that Oakes teaches that "at a low pH, (e.g.
preferably less than 5) C6-C1s peroxyacids such as peroxyfatty acids are very
potent biocides" and argues that this teaching of a low pH suggests
achieving an acidic laundry item, and not a neutral laundry item. App. Br.
23 (quoting Oakes, col. 2, 11. 3-10). Although all of the peracetic acid
concentrations taught by Oakes have a low pH, we disagree that Oakes
teaches that the peracetic acid composition must be used in a low pH
environment. For example, Oakes teaches that the peracid concentrate can
be added to a laundry wash water, which conventionally would not have had
an acidic pH prior to the addition of the peracid composition.
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These peracetic acid compositions are substantially identical to those
described in the '013 patent and are provided in a pre-concentrate within the
preferred ranges of about 10% to about 20% peracetic acid, as described in
the 'O 13 patent and as recited in claim 28. Thus, the concentrated peracetic
acid compositions of Oakes, which is taught to be added to the wash or rinse
water of a laundry process, have the same strength as the peracids used in
the 'O 13 patent.
Oakes expressly teaches that peracetic acid composition, which do not
have an additional fatty acid component, are "generally not effective" in
concentrations less than 100 ppm peracetic acid (col. 10, 1. 68---col. 11, 1. 4)
and that, "to obtain acceptable activity (greater than or equal to 5 log
reduction) using only peracetic acid, the peracetic acid must be tested over
100 ppm active." Id., col. 13, 11. 40-45. Examples 11, 12, and 13
demonstrate that the use of a peracetic acid, acetic acid, and hydrogen
peroxide composition at concentrations greater than 100 ppm achieve good
biocidal activity. Oakes, Example 11 (col. 11, 11. 14--50) and Table IX; see
also Examples 12 and 13 (col. 14, 11. 8-12) and Table XI.
Further, Oakes teaches that the potency of the biocide is affected by
concentration, temperature, and exposure or contact time with contaminated
items. See, e.g., Oakes, col. 6, 11. 49-52 (teaching that peracid
concentrations can be adjusted depending on the temperature and exposure
time) and col. 8, 11. 4--15 (teaching contacting laundry "for a period of time
effective to sanitize") and 11. 23-26 (teaching achieving sterilization "by
employing higher levels [i.e., concentrations] of peracids in the use
solution"). In other words, Oakes teaches the use of at least 100 ppm of a
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peracetic acid composition to achieve biocidal activity and suggests that this
amount may be varied based on temperature and contact time to achieve
either biocidal activity or sterilization.
Oakes teaches that the concentrate composition has a pH range of
about 2 to 8, preferably 3 to 7. Oakes, Abstract, col. 1, 11. 60-63, col. 2, 11.
53-56, col. 4, 11. 13-15, col. 7, 11. 4--12, and all examples. This teaching is
consistent with the pH of the compositions of the Examples that only include
acetic and peracetic acids, in which the pH range from 2.40 to 3.93. Oakes,
col. 10, Table III, Example 6 and Table IV, Table V, Example 11 (col. 11, 11.
14--50) and Table IX, Table X, Examples 12 and 13 (col. 14, 11. 8-12) and
Table XI, and Table XVI, Example 22 (col. 16, 11. 15-16) and Table XVII.
Because the pH of the peracetic acid composition taught by Oakes is low
and Oakes teaches using the peracid composition in an amount greater than
100 ppm, a range which includes very large amounts of peracid, the
Examiner has a reasonable belief that such amounts of peracid would
inherently neutralize the pH of alkaline wash water (i.e., water to which an
alkaline detergent has been added to clean laundry), and thus neutralize the
laundry items therein. 4
4 We agree with Patent Owner that the claim language "said composition
neutralizes ... the laundry item" does not mean a single acid-base
interaction on the surface of a laundry item. App. Br. 13; Reply Br. 3.
Rather, the pH of the surface of a laundry item as a whole is reasonably
characterized by the pH of the surrounding wash water as it flow in and
among the laundry items. We also agree with the Examiner, that there is no
particular resulting pH requirement in the claims and no specific
requirement that the pH of the resulting laundry item be "to levels where
skin irritation does not occur," namely a pH of 5 to 7. See App. Br. 15; Ans.
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Accordingly, Patent Owner's argument that Oakes does not teach the
relative concentrations of acid and base components in the laundry solution
or the strengths of the acids and bases involved, in order to find that
neutralization necessarily occurs, is not persuasive. App. Br. 23-24.
The '013 patent does not provide any guidance as to what relative
concentrations of peracid that would be sufficient to neutralize the base
components of conventional alkaline detergents. We note that claims 15, 24,
and 26 recite "contacting the treated laundry item with about 1 to 10 ounces
of an aqueous peracid composition per hundred pounds of laundry item."
However, this description is not meaningful as a description of an amount of
peracid because the claims are not limited to any particular peracid
concentration in the peracid composition.5 Additionally, the amount of
composition is recited per amount of laundry items rather than to an amount
of detergent, or specifically to an amount of "base components in the
laundry solution," which Patent Owner contends is critical to neutralization.
The Examiner has a reasonable belief, based on sound scientific
principle that, at the pH and concentration taught by Oakes, the peracetic
acid composition would neutralize the wash water in a conventional laundry
process in addition to sanitizing. Therefore, where the claimed and prior art
processes are identical or substantially identical, the PTO can require a
Patent Owner to prove that the prior art process does not necessarily result in
3--4. Thus, sufficient acid-base interactions must be present in the wash
water to change the overall pH of the wash water from an alkaline pH in the
presence of an alkaline detergent to something closer to a pH of 7.
5 We interpret this claim language below addressing arguments specific to
claim 15.
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the characteristics of his claimed process. In re Best, 562 F.2d 1252, 1255
(CCPA 1977); Ansonia Brass, 144 U.S. at 18. We find sufficient evidence
to shift the burden to Patent Owner to show, in fact, that adding greater than
100 ppm of a peracid of a peracid composition to a conventional wash water,
having detergents in conventional amounts, would not neutralize, as well as
sanitize, laundry items therein. See Best, 562 F.2d at 1255; Skoner, 517 F.2d
at 950.
Moreover, the '013 patent explains that it was conventional in the art
to use "[s]our materials [that] contain acid components that neutralize
alkaline residues on the fabric." '013 patent, col. 1, 11. 39--40. Dr. Fast
testifies that acetic acid was a known souring agent. See Fast Deel. i-f 37.
Thus, at the time of the invention, it would have been obvious to use Oakes
peracid composition as a souring agent because Oakes teaches that the
composition has a low pH and includes acetic acid. "[I]f a technique has
been used to improve one device [or process], and a person of ordinary skill
in the art would recognize that it would improve similar devices [or
processes] in the same way, using the technique is obvious unless its actual
application is beyond his or her skill." KSR Int'! v. Teleflex Inc., 550 U.S.
398, 417 (2007). The use of Oakes peracid composition to neutralize
laundry items would have been no more than the predictable use a
composition comprising an acid according to the acid's established function
as a souring agent. See id. at 41 7 (The question to be asked is "whether the
improvement is more than the predictable use of prior art elements according
to their established functions.").
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The weight of the evidence taken as a whole supports the Examiner's
conclusion that claim 1 is obviousness in view of Oakes.
Claims 15 and 26
Claim 15 recites using the alkaline detergent and the peracid
composition in specific concentrations in ounces per 100 pounds of laundry
item. Claim 26 depends from claim 1 and further recites the peracid
composition concentration limitation of claim 15.
The Examiner finds that "it would have been obvious to one having
ordinary skill in the art to determine the amount of detergent and peracid
composition, including the instantly claimed amounts, necessary to clean
and sanitize the treated fabric based on the condition of the fabric to be
treated." Final 8.
Patent Owner argues that the Examiner's findings regarding the
concentrations of detergent and peracid are conclusory and erroneous
without a specific finding that the amounts are result effective variables that
can be optimized. App. Br. 35-37.
"'During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification."' In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir.
2010) (quoting In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007)). Nevertheless, our reviewing court has repeatedly
"instructed that any such construction [must] be 'consistent with the
specification, ... and that claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art."'
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Id. at 1260. Thus, in interpreting the scope of this claim language, we first
look to the '013 Patent.
Patent Owner's Appeal Brief cites to column 4, lines 4--9 of the '013
patent as written descriptive support for the specifically recited
concentration ranges. However, this section of the 'O 13 patent merely
describes the composition generally. See '013 patent, col. 4, 11. 2-9. When
asked about written descriptive support at the oral hearing, the response was
as follows:
JUDGE GUEST: Can you point to somewhere in your
specification where you are talking about concentrations?
MR. SMITH: Concentrations in what form?
JUDGE GUEST: In the specification, concentrations
that would be suitable to neutralize, concentrations that might
not be suitable to neutralize.
MR. SMITH: I don't think I can off the top of my head.
Sorry, Your Honor.
JUDGE GUEST: Doesn't that put us at a position where
we would have to be able to determine and we are incapable of
doing so without any specific teaching?
MR. SMITH: I think there are concentrations suggested
in the specification. For example, the one to 10 grams per 100
pounds of laundry.
JUDGE GUEST: Where is that in your specification? I
only see that in the claims.
MR. SMITH: Well, claim 15 I think is original.
JUDGE GUEST: It's an original claim?
MR. SMITH: I think it is.
JUDGE GUEST: Because I was having a hard time
determining what a laundry - - what pounds of laundry item is,
because is that wet, is it dry?
MR. SMITH: I don't actually know the answer to that off
the top of my head.
JUDGE GUEST: Yeah, it is very difficult to assess that
in terms of what is going on in the prior art.
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MR. SMITH: It is possible a person of ordinary skill in
the art knows that.
Oral Hearing Transcript, 32:3-33:6.
Moreover, it is unclear ifthe phrase "1to10 ounces" is a weight
measurement or a volumetric measurement (i.e., fluid ounces) given that it
reflects the amount of an aqueous composition. Were claim 15 limited to a
composition having a particular peracid concentration, which it is not, the
weight and volume distinction would affect the amount of peracid added to a
laundry process.
Because the claim does not require any particular amount of peracid
added to the laundry, only a particular amount of a composition, we interpret
claim 15 broadly, such that the peracid composition may have any peracid
concentration such that adding 1 to 10 ounces of that composition is
sufficient to neutralize and sanitize 100 pounds of laundry. Oakes teaches
that any amount of peracid in a peracid composition greater than l 00 ppm is
sufficient to sanitize, which does not exclude using very high concentrations
of peracid. Moreover, we agree with the Examiner that the skilled artisan
would have been capable of adjusting the dilution of the pre-concentrates
described in Oakes to achieve any desirable peracid concentration in 1 to 10
ounces of the composition. See In re Aller, 220 F.2d 454, 456 (CCPA 1955)
("where the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation."); Haynes Int'! v. Jessop Steel Co., 8 F.3d 1573, 1577 n.3
(Fed. Cir. 1993) ("[When] the difference between the claimed invention and
the prior art is the range or value of a particular variable, then a prima facie
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rejection is properly established when the difference in range or value is
minor.).
Accordingly, we are not persuaded that the Examiner erred in
rejecting claims 15 and 26 as obvious in view of Oakes.
Claims 27 and 28
Claims 27 and 28 recite particular concentration ranges for hydrogen
peroxide, peracid, and acid in the peracid composition of claim 1 at
equilibrium. Patent Owner argues that the findings of the Examiner do not
show where Oakes describes the amounts recited in the claims. App. Br.
38--40.
The Examiner found that "Oakes teaches an antimicrobial concentrate
comprising acetic acid and that also comprises peracetic acid and hydrogen
peroxide in amounts which encompass the instantly claimed amounts and
which concentrate forms an equilibrium mixture." Ans. 10. The Examiner
further finds that "an equilibrium mixture comprising about 20 to 60 wt. %
acetic acid, about 5 to 30 wt.% hydrogen peroxide and about 5 to 30 wt.%
peroxyacetic acid and is further evidence that the equilibrium composition of
Oakes containing 0.1to25 wt.% of peracetic acid and about 1 to 50 wt.%
hydrogen peroxide would contain acetic acid in the instantly claimed
amount." Ans. 11.
The Examiner's finding are supported by the teachings of Oakes.
Oakes expressly describes a peracetic acid composition comprising:
(a) 50% by weight of a peracetic acid pre-concentrate solution
comprising 10.42% peracetic acid, 34% acetic acid, 10% H202 and
45.58% water;
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(b) 22% by weight acetic acid; and
( c) 28% water.
Oakes, col. 10, Table III, Example 6. We note that the peracetic acid pre-
concentrate solution in this example is a peracid composition that falls
squarely within the ranges recited in claims 27 and 28. Additionally,
Example 11 is directed to a peracetic acid composition comprising between
10.95% peracetic acid and 12.53% peracetic acid (as the acid reaches
maximum peracid formation over "about 12 days") that was made from 49%
wt. acetic acid and 40% by weight of a 3 5% H202 solution (or 14 % H202
and 26% water), and 11 % by weight additives (a chelating agent and a
coupling agent). Id., col. 11, 11. 40-61 and col. 13, 11. 15-30 and 40-45.
Examples 12 and 13 (col. 14, 11. 8-12) and Table XI describe peracid
concentrations of 7.02% wt. and 6.25% wt., respectively, each made from
35% H202 and 35% acetic acid (col. 13, 1. 60 to col. 14, 1. 7, Table X)).
Each of these examples recites peracetic acid compositions having the
peracetic acid component at equilibrium within the ranges recited in claims
27 and 28.
Moreover, the composition upon dilution with water and acetic acid
also falls within the scope of claim 27. Specifically, the diluted composition
comprises:
(a) 39% acetic acid-which is 22% + 17% (or 34% of the 50%
peracetic acid pre-concentrate solution) (see col. 10, 11. 1-3);
(b) 5% H202 - which is 10% of the 50% peracetic acid pre-concentrate
solution;
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( c) 5.21 % peracetic acid- which is 10.42% of the 50% peracetic acid
pre-concentrate solution (see col. 10, 11. 1-3); and
(d) 50.79% water-which is 28% + 22.79 (or 45.58% of the 50%
peracetic acid pre-concentrate solution).
Moreover, the reaction forming peracetic acid is known in the art, as
described in Oakes. Accordingly the skilled artisan would have been
capable of performing the reaction using any amount of hydrogen peroxide
and acetic acid, such that any desired amounts of peracetic acid and residual
acetic acid and hydrogen peroxide are provided at equilibrium using the
conventional law of mass action.
Accordingly, we are not persuaded that the Examiner erred in
rejecting claims 27 and 28 as being obvious in view of Oakes.
Claims 3 0 and 31
Claims 30 and 31 recite that the peracid composition is substantially
free of other carboxylic acids and peracids.
Patent Owner contends that Oakes teaching, regarding the additional
use of long chain carboxylic acids and percarboxylic acids, "fails to meet the
limitations of claims 30 and 31" and that "Oakes disparages peracetic acid
alone as having lower biocidal activity." App. Br. 41.
The Examiner finds that "Oakes teaches that acceptable activity
(greater than or equal to 5 log reduction) is provided with only peracetic acid
in a concentration of greater than 100 ppm active." Final 9 (citing Oakes,
col. 13, 11. 40-45). We find no error in the Examiner's finding that the prior
art teaches that it was conventional to use a composition comprising acetic
acid and peracetic acid, with no other carboxylic acids or percarboxylic
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acids, for sanitizing in concentrations greater than 100 ppm active. Id.
Patent Owner has shown no error in this finding. While Oakes teaches that
lower peracid concentrations can be used with a composition that includes
both peracetic acid and other percarboxylic acids, Oakes does not teach or
suggest that the peracetic acid compositions described therein, without the
additional percarboxylic acids, cannot be used for sanitizing at the higher
concentrations expressly taught therein for that purpose. In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994) ("A known or obvious composition does not
become patentable simply because it has been described as somewhat
inferior to some other product for the same use."); In re Mouttet, 686 F.3d
1322, 1334 (Fed. Cir. 2012) ("[J]ust because better alternatives exist in the
prior art does not mean that an inferior combination is inapt for obviousness
purposes.").
Accordingly, we are not persuaded that the Examiner erred in
rejecting claims 30 and 31 as being obvious in view of Oakes.
IV. 112 REJECTIONS
Claims 3 0 and 31
The Examiner rejects claims 30 and 31 as being unpatentable under
35 U.S.C. § 112, first paragraph as lacking written descriptive support in the
original specification for a peracid composition that is "substantially free of
other carboxylic acids and other peracids," i.e., other than acetic acid and
peracetic acid. Final 4.
Patent Owner points to language in the '013 Patent indicating that the
composition may contain "one or more carboxylic acids and one or more
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percarboxylic acids" (col. 3, 1. 67 to col. 4, 1. 1) and to working examples
that are acetic acid and peracetic acid only compositions. App. Br. 61---62.
We agree with Patent Owner that the Examiner erred in finding a lack
of written descriptive support in the '013 Patent. If alternative elements are
positively recited in the specification, they may be explicitly excluded in the
claims. See In re Johnson, 558 F.2d 1008, 1019 (CCPA 1977) ("[the]
specification, having described the whole, necessarily described the part
remaining."); Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1356 (Fed. Cir.
2015) ("If alternative elements are positively recited in the specification,
they may be explicitly excluded in the claims.") (quoting Manual of Patent
Examining Procedure § 2173.05(i)).
Accordingly, we find that the Examiner erred in rejecting claims 30
and 31 under 35 U.S.C. § 112, first paragraph, as lacking written descriptive
support.
Claim 29
Claim 29 depends from claims 1, 15, or 24 and further recites
"wherein the peracid is freely water soluble." The Examiner rejects claim
29 as being indefinite under 35 U.S.C. § 112, second paragraph, because
"the '013 patent does not define the temperature, concentration, or carbon
chain length at which a peracid would be considered 'freely water soluble."'
Final 5.
Patent Owner contends that a skilled artisan would have known at the
time of the invention that C1 to C4 carboxylic acids are infinitely soluble in
water and that Cs and greater carboxylic acids, in particular Cs to C1s
carboxylic acids, are not water soluble. App. Br. 62 (citing Fast Deel.
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i-fi-151-54). Patent Owner argues that the skilled artisan would "also have
known in what conditions [the percarboxylic acids] were water soluble."
Reply Br. 29.
The peracids described in the 'O 13 patent are either soluble or not in a
laundry process as recited in claim 1. While the claim does not expressly
recite the conditions at which the peracid is freely water soluble, the claim
depends from claim 1, and thus the peracid must be soluble under the
conditions of a laundry process of claim 1. The '013 Patent describes
exemplary laundry process conditions. '013 Patent, col. 3, 11. 24--30. Thus,
the claim is definite because the skilled worker would know that it includes
peracids which are soluble in a laundry process of claim 1, while excluding
those that are not.
Thus, we are persuaded that the Examiner erred in rejecting claim 29
under 35 U.S.C. § 112, second paragraph, as being indefinite.
V BOARD INITIATED NEW GROUND OF REJECTION
Claim 25 is currently not rejected by the Examiner. Claim 25 depends
from independent claim 24 and further recites that "the treated laundry item
is contacted with about 1 to 10 ounces of an aqueous peracid composition
per hundred pounds of laundry item." We find this language to be
substantially identical in scope to similar language discussed above for claim
15. The Examiner erred in failing to including claim 25 in the rejection of
claims 15-23 and 26-31under35 U.S.C. 103(a) as being unpatentable over
Oakes, for the same reasons discussed above with respect to the similar
limitation argued with respect to claim 15.
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We enter this rejection as a new ground in accordance with 37 C.F.R.
§ 41.50(b).
VI. CONCLUSION
On the record before us,
We reverse the Examiner's rejection of claims 30 and 31 under
35 U.S.C. § 112, first paragraph, as lacking written descriptive
support.
We reverse the rejection of claim 29 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
We reverse the Examiner's rejection of claims 1-14 and 24 under
35 U.S.C. § 102(b) as being anticipated by Oakes.
We affirm the rejection of claims 1-24 and 26-31 under 35 U.S.C.
§ 103(a) as being obvious over Oakes.
We enter a NEW GROUND OF REJECTION of claim 25 under
35 U.S.C. § 103(a) as being obvious over Oakes.
VI. TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to
37 C.F.R. § 41.50(b) which provides that "[a]ny decision which includes a
new ground of rejection pursuant to this paragraph shall not be considered
final for judicial review." Correspondingly, no portion of the decision is
final for purposes of judicial review.
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For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41. 50(b }---( f). The decision may become final after upon conclusion of
proceedings on remand before the Examiner. 37 C.F.R. § 41.50(e).
37 C.F.R. § 41.50(b) also provides that the Patent Owner, WITHIN
TWO MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both. It is understood that the "claims so rejected"
are the claims subject to a rejection based on new grounds under 41.50(b).
(2) Request rehearing. The owner may request that the proceeding be
reheard under§ 41.52 by the Board upon the same record. The request for
rehearing must address the new grounds and "all other grounds upon which
rehearing is sought."
AFFIRMED; NEW GROUNDS ENTERED UNDER 37 C.F.R. § 41.50(b)
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FOR PATENT OWNER:
TURNER BOYD LLP
702 Marshall Street
Suite 640
Redwood City, CA 94063
FOR THIRD-PARTY REQUESTER:
GREER, BURNS & CRAIN, LTD.
300 South Wacker Drive
Suite 2500
Chicago, IL 60606
27