Ex parte Baum

Board of Patent Appeals and Interferences

Mar 30, 2001

08330597 (B.P.A.I. Mar. 30, 2001)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte BURTON M. BAUM
_____________
Appeal No. 1997-3170
Application No. 08/330,597
______________
ON BRIEF
_______________
Before PAK, WALTZ, and JEFFREY T. SMITH, Administrative Patent
Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1, 7 through 14,
29 and 35 through 49, which are all of the claims pending in
the above-identified application.
Claims 1 and 29 are representative of the subject matter
on appeal and read as follows:
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Application No. 08/330,597
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1. A food grade liquid rinse aid composition,
suitable for dilution to form an aqueous rinse, the
composition consisting essentially of:
(a) about 5 to 50 wt-% of a sorbitan fatty acid
mono ester containing greater than about 15 moles of
alkylene oxide per mole of sorbitan;
(b) about 0.2 to 25 wt-% of a defoamer
composition selected from the group consisting of an
alkali metal or alkaline earth metal salt of a fatty
acid, a silicone, a fatty acid ester of glycerol,
and mixtures thereof; and
(c) about 10 to 95 wt-% of an aqueous diluent;
wherein the rinse aid composition is formulated from
the above components approved as food additives and
displays adequate sheeting properties during the
rinse cycle of mechanical warewashing, at a
concentration of at least about 50 parts of the nonionic
surface active agent per million parts of the rinse.
29. A cast solid food grade rinse aid composition,
suitable for dilution to form an aqueous rinse, the
composition consisting essentially of:
(a) about 5 to 50 wt-% of a sorbitan fatty acid
mono ester containing greater than about 15 moles of
alkylene oxide per mole of sorbitan;
(b) about 0.2 to 25 wt-% of a defoamer
composition selected from the group consisting of an
alkali metal or alkaline earth metal salt of a fatty
acid, a silicone, a fatty acid ester of glycerol,
and mixtures thereof; and
(c) about 10 to 95 wt-% of an aqueous diluent;
wherein the rinse aid composition is formulated from the
above components approved as food additives and
displays adequate sheeting properties during the
Appeal No. 1997-3170
Application No. 08/330,597
Our reference to this published Japanese Patent1
Application is to the corresponding English translation of
record.
3
rinse cycle of mechanical warewashing, at a
concentration of at least about 50 parts of the nonionic
surface active agent per million parts of the rinse.
In support of his rejections, the examiner relies on
the following prior art references:
Chun et al. (Chun) 5,133,892 Jul. 28,
1992
Corring 5,160,448 Nov. 3,
1992
Gandolfo et al. (Gandolfo) EP 0 008 830 A1 Mar. 19, 1980
(Published European Patent Application)
Suzuki et al. (Suzuki) 62-288697 Dec. 15,
1987 (Published Japanese Kokai Patent Application)1
The appealed claims stand rejected as follows:
1) Claims 1, 9, 10, 29 and 35 through 49 under 35
U.S.C.
§ 103 as unpatentable over the disclosure of Corring;
2) Claims 29, 35 through 38 and 47 through 49 under 35
U.S.C. § 103 as unpatentable over the disclosure of Chun;
3) Claims 1, 7 through 14, 29 and 35 through 49 under
Appeal No. 1997-3170
Application No. 08/330,597
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35 U.S.C. § 103 as unpatentable over the combined disclosures
of either Corring or Chun, and Gandolfo; and
4) Claims 1, 7 through 14, 29 and 35 through 49 under
35 U.S.C. § 103 as unpatentable over the combined disclosures
of Suzuki and Gandolfo.
We have carefully reviewed the claims, specification, and
applied prior art, including all of the arguments advanced by
both the examiner and appellant in support of their respective
positions. This review leads us to conclude that the
examiner’s § 103 rejections are not well founded.
Accordingly, we will not sustain the examiner’s § 103
rejections for essentially those reasons set forth in the
Brief. We add the following primarily for emphasis and
completeness.
The claimed subject matter is directed to a food grade
rinse aid composition in solid and liquid form. See claims 1
and 29. The food grade rinse composition consists essentially
of a particular sorbitan fatty acid mono ester, a particular
defoamer, and an aqueous diluent. Id. This composition must
be capable of displaying adequate sheeting properties during
the rinse cycle of mechanical warewashing.
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Contrary to the examiner’s assertion at pages 7 and 9 of
the Answer, the preambular limitation “rinse aid” recited in
claims 1 and 29 is not merely an intended use of the
invention. When the preambular limitation “rinse aid” is read
in light of pages 6-9 of the specification, it gives life and
meaning to the invention as claimed. See, e.g., In re
Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1673-74 (Fed.
Cir. 1994); Gerber Garment Technology, Inc. v. Lectra Sys.,
Inc., 916 F.2d 683, 688, 16 USPQ2d 1436, 1441 (Fed. Cir.
1990); Corning Glass Works v. Sumitomo Elect.
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U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed.
Cir. 1989). According to the specification (pages 7 and 8):
For the purposes of this invention, the term
“aqueous rinse” is directed to aqueous compositions
containing concentrations, typically less than 1000
ppm of active sheeting agent materials and compatible
defoamers and other additives, that are directly
applied to the dishware to obtain rinsing. The term
“sheeting agent” refers to the individual component
or components of the rinse agent that causes the
aqueous rinse to sheet. The term “rinse agent” reflects
the concentrate[d] material which is diluted with an
aqueous diluent to form the aqueous rinse. The term
“ware[,]” “table ware[,]” “kitchen ware” or “dishware”
refers to various types of articles used in the
preparation, serving and consumption of foodstuffs
including pots, pans, baking dishes, processing
equipment, trays, pitchers, bowls, plates, saucers,
cups, glasses, forks, knives, spoons, spatulas,
grills, griddles, burners, and the like. The term
“rinsing” or “sheeting” relates to the capacity of
the aqueous rinse when in contact with ware to form
substantially continuous thin sheets of the aqueous
rinse which drain[s] evenly from the ware leaving little
or no spotting upon evaporation of the water.
Thus, we interpret the term “[a] food grade . . . rinse aid
composition” as including only those components which are
useful for “aqueous” rinsing of dishware, kitchenware, or
table ware. In other words, it precludes the presence of
dishwashing detergents since they cannot be used during the
rinse cycle of mechanical warewashing. This interpretation is
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Application No. 08/330,597
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also supported by the applied prior art references, namely
Chun and Suzuki, which distinguish rinse aids from dishwashing
detergents.
Having interpreted the claims on appeal as indicated
above, we agree with appellant that none of the applied prior
art references teaches or would have suggested the claimed
food grade rinse aid composition. As argued by appellant
(Brief, page 10), Chun does not teach or suggest adding a
defoamer to its rinse aid composition. There is no evidence
that the rinse aid composition described in Chun needs a
defoamer, much less the claimed defoamer.
As also argued by appellant (Brief, pages 11 and 12),
Corring is not directed to the claimed food grade rinse aid
composition. Rather, it is directed to a cleaning composition
containing components which are precluded by the claims on
appeal. The examiner, however, has not explained why it would
have been obvious to remove those components and the
corresponding functions from the cleaning composition
described in Corring.
As further argued by appellant (Brief, pages 15 and 16),
Suzuki does not teach, nor would have suggested, a rinse aid
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composition having a combination of the claimed sorbitan fatty
acid mono ester and the claimed defoamer. There is no dispute
that Suzuki describes a rinse aid composition having the
claimed sorbitan fatty acid mono ester. However, the examiner
has not referred to any evidence establishing the desirability
of adding the claimed defoamer in the rinse aid composition of
the type described in Suzuki.
Although the examiner relies on Gandolfo to demonstrate
obviousness of adding the claimed defoamer in the composition
of the type described in Chun, Corring, or Suzuki, Gandolfo
teaches adding such defoamer to detergents containing
particular ingredients which suffer from foaming problems.
Nowhere does Gandolfo teach that the rinse aid composition of
the type described in Chun or Suzuki requires any defoamer,
much less the claimed defoamer. The examiner simply has not
supplied any evidence that the rinse aid composition of the
type described in Chun or Suzuki suffers from foaming
problems.
In view of the foregoing, we reverse the examiner’s
decision rejecting all of the appealed claims under 35 U.S.C.
§ 103.
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Application No. 08/330,597
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OTHER ISSUES
We note that Suzuki teaches a rinse aid composition
containing certain surface active agents in addition to the
claimed sorbitan fatty acid mono ester. See page 5. It is
not clear whether these surface active agents are known to
function as defoamers. Although the specification discloses
some of these surface active agents as defoaming agents (pages
14 and 15), there is no evidence that one of ordinary skill in
the art knew that such surface active agents also function as
defoaming agents. Upon return of this application, the
examiner is to determine the known functions of the surface
active agents described in Suzuki and, based on that
determination, reassess the collective teachings of Suzuki and
Gandolfo to ascertain whether they affect the patentability of
the claimed subject matter.
We also note that the terms “the nonionic surface active
agent[s]” and “the rinse,” recited in claims 1 and 29 do not
have any antecedent basis. It is difficult to determine
whether they refer to the “sorbitan fatty acid mono ester” and
the “rinse aid composition,” respectively or something else.
Upon return of this application, both the examiner and
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appellant are advised to clarify the language involved.
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CONCLUSION
For the reasons indicated supra, we are constrained to
reverse the examiner’s decision rejecting all of the appealed
claims under 35 U.S.C. § 103 over the applied prior art and
return this application to the examiner for appropriate action
consistent with the above instructions.
REVERSED and REMANDED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
CKP:hh
Appeal No. 1997-3170
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P.O. Box 2903
Minneapolis, MN 55402-0903