Ex Parte Bacchiocchi et alDownload PDFPatent Trial and Appeal BoardFeb 9, 201613438149 (P.T.A.B. Feb. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/438,149 04/03/2012 Luigi Bacchiocchi 34238 7590 02/11/2016 ARTHUR G, SCHAIER CARMODY TORRANCE SANDAK & HENNESSEY LLP 195 CHURCH STREET P.O. BOX 1950 NEW HAVEN, CT 06509-1950 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. 2156-687A 1040 EXAMINER WALES, CHRISTINA H ART UNIT PAPER NUMBER 1766 NOTIFICATION DATE DELIVERY MODE 02/11/2016 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): patents@carmodylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LUIGI BACCHIOCCHI and GIANLUCA POZZI Appeal2014-009666 Application 13/438,149 Technology Center 1700 Before JEFFREY T. SMITH, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 14-16, 18-23, and 25-28. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. Appellants' invention is best illustrated by independent claim 14, reproduced below (emphasis added): Appeal2014-009666 Application 13/438,149 14. A process for recycling scrap polyethylene terephthalate, the process including the steps of sorting the scrap polyethylene terephthalate to remove other materials, granulating or shredding the scrap polyethylene terephthalate to produce polyethylene terephthalate flakes, and washing the polyethylene terephthalate flakes to remove contaminants, wherein the wash step comprises the steps of: contacting the polyethylene terephthalate flakes with a wash solution comprising: a) an alkali hydroxide; and b) about 1 to 3 g/L of an additive, the additive compnsmg: i) 45 to 65 percent by weight of at least one non-ionic surfactant; ii) 2 to 10 percent by weight of at least one cationic surfactant; iii) 2 to 10 percent by weight of a hydrotrope selected from the group consisting of benzene sulfonates, naphthalene sulfonates, short chain (C1- C11) alkyl benzene sulfonates, medium chain (C6---C11) alkyl sulfonates, medium chain (C6---C11) alkyl sulfates, alkylpolyglucosides, alkylpolysaccharides, medium chain (C6-C10) alkyl 2 Appeal2014-009666 Application 13/438,149 dimethyl amine oxides, alkyl diphenyloxide disulfonates, and phosphate esters; iv) 25 to 40 percent by weight water; and v) optionally an organic solvent; and thereafter rinsing and drying the polyethylene terephthalate flakes. The Examiner maintains the following rejections: (a) claims 14, 15, 18, 21-23, 25, 27, and 28 rejected under 35 U.S.C. § 103(a) as unpatentable over Cornell (Cornell, D.D. "PET Plastic Recycling: Technology and Quality" PMSE Preprints. 2011). Yamaguchi (JP 2002-320932 A, published November 5, 2002), Klinger (US 4,443,363, issued April 17, 1984), Cantor (Cantor, K.M.; Watts, P. "Plastics Materials" in Applied Plastics Engineering Handbook - Processing and Materials. Elsevier. Ed. by Myer Kutz. 2011) and Johansson (Johansson, I.; Strandberg, C.; Karlsson, B.; Karlsson, G.; Hammarstrand, K., Environmentally benign nonionic surfactant systems for use in highly alkaline media 116 PROGR. COLLOID POLYM SCI. 26-32 (2000)); (b) claim 16 rejected under 35 U.S.C. § 103(a) as unpatentable over Cornell, Yamaguchi, Klinger, Cantor, Johansson, and Kosior (WO 01/21373 Al, published March 21, 2001 ); (c) claims 19 and 20 rejected under 35 U.S.C. § 103(a) as unpatentable over Cornell, Yamaguchi, Klinger, Cantor, Johansson, and Kegel (Kegel, M. "Recycling of multilayer and barrier coated PET containers" from Annual Technical Conference- Society of Plastics Engineers. 59th. p.2715-2717. 2001); and (d) claims 14, 15, 18-23, and 25-28 rejected under 35 U.S.C. § 103(a) as unpatentable over Cornell, Yamaguchi, the Sodium Hydroxide webpage (Wikipedia "Uses" in "Sodium Hydroxide"; from 9/18/2011. Website: 3 Appeal2014-009666 Application 13/438,149 http://en.wikipedia.org/wiki/sodium_hydroxide. Accessed 8/13/13), Burt (US 2006/0172912 Al, published August 3, 2006) and Johansson. Appellants do not argue any claim separate from the other in each Rejections (a) and (d). See Appeal Brief, generally. In addition, Appellants rely on the same arguments presented for Rejection (a) in addressing Rejections (b) and (c). Id. at 5. Accordingly, we select independent claim 14 as representative of the subject matter before us on appeal in our discussion of Rejections (a) and (d). Claims 15, 16, 18-23, 25, 27, and 28, as rejected in Rejections (b }---( d), will stand or fall with independent claim 14. OPINION Prior Art Rejections (Rejection (a)-(c))1 \Ve have reviewed each of Appellants' arguments for patentability. However, we are in agreement with the Examiner that the claimed subject matter of claim 14 is unpatentable. Accordingly, we sustain the Examiner's prior art rejection for the reasons explained in the Answer, and we add the following primarily for emphasis. 1 Appellants' arguments focus on the alleged differences between the prior art wash solution, as taught by the combined disclosures of Klinger and Johansson, and the claimed wash solution. A discussion of Cornell, Yamaguchi, and Cantor is unnecessary for disposition of these rejections. The Examiner relied upon this prior art to meet the claimed method steps, which Appellants do not contest. Ans. 2--4; see Appeal Brief, generally. 4 Appeal2014-009666 Application 13/438,149 Independent claim 14 requires a wash solution of an alkali hydroxide and an additive comprising at least one non-ionic surfactant, at least one cationic surfactant and a hydrotrope. The Examiner found Klinger discloses a wash solution used for cleaning hard surfaces comprising an alkali hydroxide, a non-ionic surfactant, and a cationic surfactant. Ans. 3--42; Klinger col. 1, 11. 5-15, col. 2, 11. 50-55, col. 3, 11. 10--40, col. 5, 11. 5-10, 54---64, col. 6, 11. 35--42. The Examiner found Klinger does not disclose the use of a hydrotrope in the wash solution. Ans. 3. The Examiner found Johansson discloses as known to use a wash solution comprising a hydrotrope and a non-ionic surfactant in an alkali hydroxide solution also to clean oily soil from hard surfaces. Ans. 3--4; Johansson 26-28, 32. The Examiner concluded it would have been obvious to one of ordinary skill in the art to add the Johansson's hydrotrope to the alkali hydroxide wash solution of Klinger in view of Johansson's teachings. Ans. 4. Appellants argue a skilled artisan would view the hydrotrope of Johansson as a substitute for the cationic surfactant of Klinger, rather than as a supplement to Klinger' s composition, because Johansson discloses making greener nonionic cleaning systems using an environmentally friendly hydrotope (alkyl glucoside) in place of the more effective ammonium surfactants, such as those used by Klinger, that are not benign to the environment. Br. 4; Johansson 27, 32; Klinger col. 3, 11. 24--39. 2 We refer to the Examiner's Answer for a statement of the rejections on appeal. Appellants have not indicated in the Reply Brief that the rejections reproduced in the Examiner's Answer are not reflective of the rejections presented in prior office actions. See Reply Brief, generally. 5 Appeal2014-009666 Application 13/438,149 We are unpersuaded by this argument and agree with the Examiner's determination that the combined teachings of Klinger and Johansson would have led one skilled in the art to the wash solution described in the subject matter of independent claim 14. As noted by the Examiner, both Klinger and Johansson disclose wash solutions for cleaning hard surfaces, which Klinger discloses as including plastic surfaces. Ans. 3--4; Klinger col. 1, 11. 5-15, col. 6, 11. 35--42; Johansson 26. Thus, the Examiner's determination that it would have been obvious to use Johansson's hydrotrope in Klinger's wash solution, so as to combine Klinger's non-ionic surfactant, and cationic surfactant with Johansson's hydrotope, is reasonable given all these components are known to efficiently aid in cleaning hard surfaces. Ans. 4; Ans. 11; Klinger col. 6, 11. 9-1 O; Johansson 26. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose." In re Kerkhoven, 626 F .2d 846, 850 (CCPA 1980). On this record, Appellants have not provided any persuasive reasoning or credible evidence why one of ordinary skill in the art would not have predictably used a mixture of Klinger's ammonium based surfactant and Johansson's hydrotope in a wash solution, as recited in claim 14, for the cleaning of hard surfaces. Therefore, we affirm the Examiner's rejection of claims 14--16, 18- 23, 25, 27, and 28 under 35 U.S.C. § 103(a) (Rejections (a}-(c)) for the reasons presented by the Examiner and given above. 6 Appeal2014-009666 Application 13/438,149 Prior Art Rejection (Rejection (d)) After review of the respective positions provided by Appellants and the Examiner, we AFFIRM the Examiner's rejection of claims 14, 15, 18- 23, and 25-28 rejected under 35 U.S.C. § 103(a) as unpatentable over Cornell, Yamaguchi, the Sodium Hydroxide Wikipedia webpage, Burt, and Johansson for the reasons explained in the Answer, and we add the following primarily for emphasis. We refer to the Examiner's Answer for a complete statement of Rejection ( d). Ans. 7-11. Burt was relied upon by the Examiner to teach a cleaning composition for hard surfaces comprising a non-ionic surfactant, a cationic surfactant, and a hydrotope. Ans. 8; Burt i-fi-19, 13, 86. Appellants additionally argue Burt teaches away from the claimed invention because Burt clearly states that its concentrate composition can contain no more than 20% wt. water, and desirably contains less while the additive of claim 14 contains 25--40% by weight water. Br. 6; Burt Abstract i-f 14. We are unpersuaded by this argument and agree with the Examiner's determination of obviousness. Ans. 9. "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). "The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the 7 Appeal2014-009666 Application 13/438,149 benefits, both lost and gained, should be weighed against one another." Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000). As noted by the Examiner, one skilled in the art is capable of diluting a cleaning composition as needed. Ans. 9. Moreover, while Appellants argue Burt's cleaning composition concentrate has up to 20% water, Burt additionally discloses allowing the concentrate to dissolve in additional water to form a wash solution. Burt i-fi-17, 14, 21-22. Thus, Appellants have not adequately explained how this disclosure of Burt teaches away from the claimed wash solution. The Wikipedia webpage was relied upon by the Examiner to teach uses of sodium hydroxide. Ans. 8. We have considered Appellants' arguments with respect to the Wikipedia webpage. Br. 5---6. However, the Wikipedia webpage is not necessary for this rejection, as the use of sodium hydroxide as a component of a wash solution is acknowledged in Appellants' Specification as well as by Johansson. Spec. 3; Johansson 27, 30. See, e.g., Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (An applicant cannot defeat an obviousness rejection by asserting that the cited references fail to teach or suggest elements which the applicant has acknowledged are taught by the prior art), and In re Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (A statement by an applicant that certain matter is prior art is an admission that the matter is prior art for all purposes). Accordingly, we affirm the Examiner's rejection of claims 14, 15, 18- 23, and 25-28 under 35 U.S.C. § 103(a) (Rejection (d)) for the reasons presented by the Examiner and given above. 8 Appeal2014-009666 Application 13/438,149 ORDER The Examiner's prior art rejections of claims 14--16, 18-23, and 25- 28 under 35 U.S.C. § 103(a) (Rejections (a)-(d)) are affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED 9 Copy with citationCopy as parenthetical citation