Ex parte Brown et al.

Board of Patent Appeals and Interferences

Oct 19, 2001

08860941 (B.P.A.I. Oct. 19, 2001)

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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and is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte CAROLYN JAYNE BROWN, JONATHAN RICHARD CLARE,
and JOHAN JULIAAN SERAFIN WAUBEN
________________
Appeal No. 2000-0018
Application No. 08/860,941
________________
ON BRIEF
________________
Before GARRIS, PAK, and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 1-3, 5-8, 10-15 and 20-22, which are all of the claims
remaining in the application.
Appeal No. 2000-0018
Application No. 08/860,941
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THE INVENTION
The appellants claim a detergent composition comprising a
small particle size zeolite, an amylase enzyme and a specified
alkoxylated nonionic surfactant. Claim 1 is illustrative:
1. A detergent composition comprising:
(a) a zeolite builder having a particle size, expressed
as a d value, of less than 1.0 micrometers;50
(b) an amylase enzyme; and
(C) an alkoxylated nonionic surfactant having a
hydrophilic lipophilic balance value of less than 9.5 selected
from the group consisting of alkoxylated adducts of fatty
alcohols containing an average of less than 5 alkylene oxide
groups per molecule.
THE REFERENCES
Watson et al. (Watson) 5,565,145 Oct. 15,
1996
(effective filing date May 25,
1994)
Kasturi et al. (Kasturi) 5,707,950 Jan. 13,
1998
(effective filing date Nov. 18,
1994)
Chapple 0 552 053 Jul. 21,
1993
(European patent application)
Svendsen WO 94/02597 Feb. 3,
1994
(PCT application)
Appeal No. 2000-0018
Application No. 08/860,941
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THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as
follows: claims 1-3, 5, 7, 8, 10-15 and 20-22 over Watson in
view of Kasturi and over these references further in view of
Chapple; and claim 6 over Watson in view of Kasturi, Chapple
and Svendsen.
OPINION
We affirm the aforementioned rejections.
The appellants state that the claims stand or fall in
three groups: 1) claims 1-3, 5, 7, 8, 10-14 and 20-22, 2)
claim 15, and 3) claim 6 (brief, page 3). We therefore limit
our discussion to claims 6, 15 and one claim from the other
group, i.e., claim 1. See In re Ochiai, 71 F.3d 1565, 1566
n.2, 37 USPQ2d 1127, 1129 n.2 (Fed. Cir. 1995); 37 CFR
§ 1.192(c)(7)(1997).
Rejections of claim 1 over Watson in view of Kasturi
and over these references further in view of Chapple
Watson discloses a detergent composition which can
contain 1) a builder which can be zeolite MAP (col. 9, line
35) which, the appellants acknowledge (specification, page 1),
was known in the art to preferably have a particle size,
Appeal No. 2000-0018
Application No. 08/860,941
It is axiomatic that our consideration of the prior art1
must, of necessity, include consideration of the admitted
prior art. See In re Hedges, 783 F.2d 1038, 1039-40, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Davis, 305 F.2d 501, 503, 134
USPQ 256, 258 (CCPA 1962).
The appellants further acknowledge that it was known in2
the art to use zeolite MAP in combination with an enzyme
(specification, page 2).
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expressed as a d value, of less than 1.0 micrometers, 2) an50 1
enzyme which can be an amylase enzyme (col. 10, line 58), and2
3) a surfactant which can be a conventional nonionic
surfactant such as a C -C alkyl ethoxylate (col. 8, lines 10-12 18
11).
Watson does not disclose that the C -C alkyl ethoxylate12 18
can have less than 5 alkylene oxide groups per molecule and a
hydrophilic lipophilic balance value of less than 9.5.
However, the teaching that the composition can contain a
conventional C -C alkyl ethoxylate surfactant would have12 18
fairly suggested, to one of ordinary skill in the art, using
any C -C alkyl ethoxylate known to be suitable for use in a12 18
detergent composition, such as the condensation product of a
C -C linear alcohol with 3.0 moles of ethylene oxide, having12 13
a hydrophilic lipophilic balance value of 8-11, preferably 8-
Appeal No. 2000-0018
Application No. 08/860,941
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10, disclosed by Kasturi (col. 6, lines 12-13 and 22-24).
The detergent composition recited in the appellants’
claim 1, therefore, would have been prima facie obvious to one
of ordinary skill in the art over the combined teachings of
Watson and Kasturi. The composition recited in this claim
also would have been prima facie obvious to one of ordinary
skill in the art over these references further in view of
Chapple, which the examiner relies upon (answer, page 5) for
evidence that zeolite MAP can have the particle size recited
in the appellants’ claim 1 (page 4, line 8).
Moreover, Kasturi teaches that the detergent composition
can contain an amylase enzyme such as Termamyl (col. 12, line®
15; col. 12, line 66 - col. 13, line 1), which is an amalyse
enzyme which can be used in the appellants’ composition
(specification, page 6), and can contain zeolite MAP (col. 14,
lines 35-36). Thus, Kasturi itself would have fairly
suggested, to one of ordinary skill in the art, the detergent
composition recited in the appellants’ claim 1.
The appellants argue that Watson, Kasturi and Chapple are
not directed toward solving the problem confronted by the
Appeal No. 2000-0018
Application No. 08/860,941
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appellants, namely, white residue formation when a small size
zeolite is used in a detergent composition (brief, pages 5 and
7-9). This argument is not persuasive because to establish a
prima facie case of obviousness, references need not be
combined for the purpose of solving the problem solved by the
appellants. See In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d
1309, 1311 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309,
1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992); In re Dillon, 919
F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en
banc), cert. denied, 500 U.S. 904 (1991); In re Lintner, 458
F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Use of
Kasturi’s surfactant in Watson’s detergent composition would
have been prima facie obvious to one of ordinary skill in the
art for the reason given above.
The appellants argue that Watson, Kasturi and Chapple are
not combinable because they are not directed toward the same
problem (brief, pages 5 and 8-9). Watson and Kasturi would
have been combined by one of ordinary skill in the art for the
reason given above, and Chapple was relied upon by the
examiner merely for a disclosure of a property of zeolite MAP.
Appeal No. 2000-0018
Application No. 08/860,941
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Hence, we are not convinced by the appellants’ argument.
The appellants argue that each of Watson and Chapple does
not disclose every element of the claimed invention (brief,
pages 6 and 9-10; reply brief, page 5). The deficiency in
this argument is that the appellants are attacking the
references individually when the rejection is based on a
combination of references. See In re Keller, 642 F.2d 413,
426, 208 USPQ 871, 882 (CCPA 1981); In re Young, 403 F.2d 754,
757-58, 159 USPQ 725, 728 (CCPA 1968). Watson in combination
with the other applied references, as discussed above, would
have fairly suggested the composition recited in the
appellants’ claim 1 to one of ordinary skill in the art.
The appellants argue that Kasturi does not disclose the
claimed invention in an example (brief, pages 6-7). Kasturi,
however, is not limited to its examples. See In re
Fracalossi, 681 F.2d 792, 794 n.1, 215 USPQ 569, 570 n.1 (CCPA
1982); In re Mills, 470 F.2d 649, 651, 176 USPQ 196, 198 (CCPA
1972). Instead, all disclosures in the reference must be
evaluated for what they would have fairly suggested to one of
ordinary skill in the art. See In re Boe, 355 F.2d 961, 965,
Appeal No. 2000-0018
Application No. 08/860,941
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148 USPQ 507, 510 (CCPA 1966). As discussed above, the
disclosure of Kasturi as a whole would have fairly suggested
the composition recited in the appellants’ claim 1 to one of
ordinary skill in the art.
For the above reasons we conclude that the prima facie
case of obviousness of the composition recited in the
appellants’ claim 1 has not been effectively rebutted by the
appellants. Accordingly, we affirm the rejections of this
claim.
Rejections of claim 15 over Watson in view of Kasturi
and over these references further in view of Chapple
Claim 15, which depends from claim 1, recites that the
composition is in liquid form and has a pH of from 6.5 to
10.5.
Watson’s composition can be in liquid form (col. 25,
lines 46-47; col. 26, line 16) and preferably is formulated
such that, during aqueous cleaning operations, the wash water
has a pH of about 6.5 to about 12, preferably between about
7.5 and 11 (col. 26, lines 26-29). This teaching would have
fairly suggested, to one of ordinary skill in the art, making
a detergent composition based upon either the combined
Appeal No. 2000-0018
Application No. 08/860,941
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teachings of Watson and Kasturi or the combined teachings of
these references further with Chapple, such that it is in
liquid form and has a pH in the 6.5-12 range.
Kasturi discloses that his detergent composition can be
in liquid form (col. 24, line 66; col. 25, line 20) and that
the treatment solution pH is preferably 7 to 11, especially
7.5 to 10.5 (col. 20, lines 50-51). For this reason and that
given above regarding claim 1, Kasturi would have fairly
suggested the composition recited in the appellants’ claim 15
to one of ordinary skill in the art.
The appellants argue that Watson’s pH is that of the wash
water rather than the detergent (brief, page 7; reply brief,
page 4). It reasonably appears, however, that one of ordinary
skill in the art would have expected a desired wash water pH
to be obtained by use of a detergent having that pH rather
than another pH. The appellants have provided no evidence or
reasoning to the contrary.
The appellants argue that Watson discloses a pH optimum
of 5 to 9.5 for bacterial and fungal cellulase, but does not
disclose a pH optimum for amalyse (reply brief, page 4). For
a prima facie case of obviousness to be established, however,
Appeal No. 2000-0018
Application No. 08/860,941
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the optimum pH need not be disclosed. All that is required is
that the teachings from the applied prior art appear to have
suggested the claimed subject matter to one of ordinary skill
in the art. See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ
143, 147 (CCPA 1976). As discussed above, the applied prior
art would have provided one of ordinary skill in the art with
such a suggestion.
The appellants argue that although the heavy duty liquid
cleaning composition in Kasturi’s example in which the pH is
up to 7.5 (col. 26, line 13) contains an amylase enzyme and an
alkoxylated alcohol having an average of 3 ethylene oxide
groups per molecule, it does not contain a zeolite,
particularly the appellants’ small particle size zeolite
(brief, page 8). Kasturi’s disclosure as a whole, however,
including the portion which discloses that the composition can
contain zeolite MAP (col. 14, lines 35-36), would have fairly
suggested, to one of ordinary skill in the art, the
composition recited in the appellants’ claim 15.
Accordingly, we affirm the rejections of the appellants’
claim 15.
Rejection of claim 6 over Watson
Appeal No. 2000-0018
Application No. 08/860,941
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in view of Kasturi, Chapple and Svendsen
The appellants’ claim 6, which depends from claim 1,
recites that the amylase enzyme has been modified such that
its oxidative stability is enhanced.
Svendsen discloses a mutant "-amylase which exhibits
improved stability in the presence of oxidizing agents and is
well suited as a detergent additive (abstract; page 1,
lines 15-20). This disclosure would have fairly suggested, to
one of ordinary skill in the art, using this mutant "-amylase
in the detergent composition of Watson or Kasturi to obtain
the benefit of improved oxidative stability. Thus, the
composition recited in the appellants’ claim 6 would have been
prima facie obvious to one of ordinary skill in the art over
the combined teachings of Watson, Kasturi, Chapple and
Svendsen, and also over the combined teachings of Kasturi and
Svendsen.
The appellants merely argue that Svendsen does not remedy
the deficiencies in Watson, Kasturi and Chapple with respect
to the composition recited in claim 1 (brief, page 11). This
argument is not persuasive for the reasons given above
Appeal No. 2000-0018
Application No. 08/860,941
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regarding the rejections of that claim. Hence, we affirm the
rejection of claim 6.
DECISION
The rejections under 35 U.S.C. § 103 of claims 1-3, 5, 7,
8, 10-15 and 20-22 over Watson in view of Kasturi and over
these references further in view of Chapple, and claim 6 over
Watson in view of Kasturi, Chapple and Svendsen, are affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
Appeal No. 2000-0018
Application No. 08/860,941
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)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
TO/RWK
T DAVID REED
THE PROCTER & GAMBLE COMPANY
5299 SPRING GROVE AVENUE
CINCINNATI, OH 45217-1087