Ex Parte Brown et alDownload PDFPatent Trials and Appeals BoardMay 28, 201913133282 - (D) (P.T.A.B. May. 28, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/133,282 157817 7590 Pilloff & Passino LLP 1940 Duke Street Suite 200 10/27/2011 05/30/2019 Alexandria, VA 22314 FIRST NAMED INVENTOR Alan Graham Brown 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. 226-002 (21086) 1852 EXAMINER ANTHONY, JOSEPH DAVID ART UNIT PAPER NUMBER 1761 NOTIFICATION DATE DELIVERY MODE 05/30/2019 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): mail@pilloffpassino.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALAN GRAHAM BROWN, CARLOS ALBERTO MARI, RODNEY JAMES CONNELL, and MATTHEW CHARLES RYAN 1 Appeal2017-009508 Application 13/133,282 Technology Center 1700 Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and JEFFREY R. SNAY, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants request our review under 35 U.S.C. § 134(a) of the Examiner's decision rejecting claims 8-16, 18, and 19. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). 1 Appellants identify ITW Australia Pty. Ltd., as the real party in interest. App. Br. 2 Appeal2017-009508 Application 13/133,282 STATEMENT OF THE CASE Claim 8 is illustrative of Appellants' subject matter on appeal and is set forth below: 8. A liquid formulation, comprising: a cationic and/or zwitterionic surfactant, wherein the formulation is adapted for use to treat stone dust particles to thus adapt the particles for application to coal mine surfaces so as to at least one of suppress or prevent coal dust explosion. The Examiner relies on the following prior art references as evidence of unpatentability: Corbett Adamy Roman McNamara Walker Roe UK 1,422,937 US 2008/0274936 Al US 2008/0241271 Al US 2006/0088486 Al US 2004/0058878 Al us 5,256,444 Jan.28, 1976 Nov. 6, 2008 Oct. 2, 2008 Apr. 27, 2006 Mar. 25, 2004 Oct. 26, 1993 THE REJECTIONS 1. Claim 18 is rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite. 2. Claims 8, 10-13 and 18 are rejected under pre-AIA 35 U.S.C. § I02(b) as being anticipated by Walker. 3. Claims 9 and 19 are rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Walker. 4. Claims 8, 11, 14--16 and 18 are rejected under pre-AIA 35 U.S.C. § I02(e) as being anticipated by Adamy. 5. Claims 8, 11, 14--16 and 18 are rejected under pre-AIA 35 U.S.C. § I02(b) as being anticipated by McNamara. 2 Appeal2017-009508 Application 13/133,282 6. Claims 8-11, 13, 18, and 19 are rejected under pre-AIA 35 U.S.C. § 102(e) as being anticipated by Roman. 7. Claims 8, 11, 13-16 and 18 are rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Roe. 8. Claims 8, 11, 13-16 and 18 are rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Corbett. ANALYSIS For purposes of this appeal, we address separately argued claims, and the remaining claims stand or fall with the argued claims, consistent with 37 C.F.R. § 4I.37(c)(l)(iv) (2017). Upon consideration of the evidence and each of the respective positions set forth in the record2, we find that the preponderance of evidence supports the Examiner's findings and conclusion that the subject matter of Appellants' claims is unpatentable over the applied art regarding the prior art rejections (not including claim 18). We also affirm the 35 U.S.C. § 112(b), second paragraph, rejection of claim 18. Accordingly, we sustain each of the Examiner's rejections on appeal essentially for the reasons set forth in the Final Office Action and in the Answer, and affirm, with the following emphasis. Rejection 1 Turning first to the Examiner's rejection of claim 18 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, we agree with the Examiner that because of the conflicting use of the transitional phrases "comprising" and 2 This evidence includes the Appeal Brief, the Reply Brief, and the Supplemental Appeal Brief filed by Appellants, as well as the Final Office Action and the Answer, all which have been reviewed in their entirety. 3 Appeal2017-009508 Application 13/133,282 "consisting of', claim 18 is indefinite. Ans. 13. Although we agree with Appellant that claim 18 was not indefinite when it was dependent on claim 8, that was because the dependency would have been read to modify "comprising" to read "consisting of." Amending claim 18 to contain the full recitation of claim 8 does not have the same effect as simply changing "comprising" to "consisting of." As the metes and bounds of claim 18 is unclear and indefinite to the extent that it is impossible to ascertain the propriety of the grounds of art rejection of these claims. See In re Wilson, 424 F.2d 1382, 1385 (CCP A 1970); In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). Where claims do not particularly point out and distinctly claim the invention as required by the second paragraph of 35 U.S.C. § 112, a§ 103 rejection of the claims can be reversed as impermissibly involving speculative assumptions as to the meaning of the claims. Steele, F.2d at 862-63. Because claim 18 fails to particularly point out and distinctly claim Appellants' invention as required by the second paragraph of 35 U.S.C. § 112, the§ 103 rejections of this claim necessarily involves speculative assumptions as to the meaning of the claims. Under these circumstances, we must reverse each of the § 103 rejections involving claim 18. However, we emphasize that our reversal of these rejections is because the claim is indefinite; hence, a decision has not been made based on the technical merits of the obviousness rejection respecting claim 18. In view of the above, we affirm Rejection 1, but reverse all prior art rejections of claim 18. Rejection 2 Rejection 2 involves the rejection of claims 8, 10-13 and 18 as being anticipated by Walker. The dispositive issue in Rejection 2 is claim interpretation. The Examiner interprets the aspect of claim 8 involving the "adapted for use to treat stone dust 4 Appeal2017-009508 Application 13/133,282 particles" and "thus adapt the particles for application to coal mine surfaces" as intended use terminology. Ans. 68. The Examiner thus understands claim 8 to encompass a liquid formulation comprising a cationic and/or zwitterionic surfactant. This is a reasonable interpretation because the "mere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable." In re Zierden, 411 F.2d 1325, 1328 (CCPA 1969). This is because a claim to a composition is directed to the composition itself and must be distinguished from the prior art on the basis of the structure and chemical components of the composition. See PIN/NIP, Inc. v. Platte Chem. Co., 304 F.3d 1235, 1244 (Fed. Cir. 2002) ("The term 'composition' in chemistry is well- established. It generally refers to mixtures of substances."). Once the ingredients of a composition are mixed, it does not matter whether it is used to treat stone dust, applied to some other surface, or is simply sitting in a container; it is still the same composition. Any composition having the required ingredients will meet the requirements of the claim. Thus, Appellants' arguments as set forth throughout the record related to this issue are unpersuasive. See generally the Appeal Brief, Reply Brief, and the Supplemental Appeal Brief. We thus affirm Rejection 2, with the exception of claim 18 (see our discussion of claim 18 with regard to Rejection 1, supra.). Rejection 3 Rejection 3 is an obviousness rejection of claims 9 and 19 over Walker. Appellants rely upon similar arguments relied upon for Rejection 2. Appeal Br. 146-150. Hence, we affirm Rejection 3 for similar reasons discussed with regard to Rejection 2. Rejection 4 5 Appeal2017-009508 Application 13/133,282 Rejection 4 involves an anticipation rejection of claims 8, 11, 14--16 and 18 as being anticipated by Adamy. Beginning on page 30 of the Appeal Brief, Appellants separately argue claims 8, 14, 15, 16, and 18. In a similar manner (as in Rejection 2), claim interpretation is dispositive for Rejection 4, and for the reasons discussed in Rejection 2, a reasonable interpretation of claim 8 is that it encompasses a liquid formulation comprising a cationic and/ or zwitterionic surfactant. The Examiner makes sufficient findings in the record that Adamy discloses such a formulation. Ans. 9-10. Rejection 4 also involves a rejection of claims 14, 15, and 16 (as compared with Rejection 2, which does not). These claims include the language "coal mining dusting agent". Appellant argues that Adamy does not mention a coal mining dusting agent and therefore does not anticipate these claims. Appeal Br. 31. On the other hand, the Examiner, in a similar manner as with claim 8, understands claim 14 to encompass a composition comprising a cationic and/or zwitterionic surfactant. Appellants use the composition as a coal mining dusting agent (hence it is referred to as "a coal mining dusting agent" in claim 14), but this does not change the fact that it is a composition comprising a cationic and/or zwitterionic surfactant. 3 The Examiner makes sufficient findings in the record that Adamy discloses such a composition. Ans. 9-10. Claim 15 additionally recites that the agent of claim 14 is in the form of a slurry. Appellants argue that Adamy does not mention a slurry. Appeal Br. 33. 3 "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp.v. Banner, 778 F.2d 775,227 USPQ 773 (Fed. Cir. 1985). In the instant case, Appellants have not provided such a showing. 6 Appeal2017-009508 Application 13/133,282 However, the Examiner relies in part on Examples 5-7 of Adamy wherein it is disclosed that "dispersions" (slurries) are made. Adamy, para. 62. Adamy also refers to "slurries" in para. 36. In view of the above, we affirm Rejection 4, with the exception of claim 18 (see our discussion of claim 18 with regard to Rejection 1, supra.). Rejection 5 Claims 8, 11, 14--16 and 18 are rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by McNamara. Beginning on page 53 of the Appeal Brief, Appellants separately argue claims 8, 14, 15, 16, and 18. Rejection 5 involves an anticipation rejection of claims 8, 11, 14--16 and 18 as being anticipated by McNamara (same claims as in Rejection 4). Appellants present similar arguments presented for Rejection 4. 4 Appeal Br. 40-61. See also the Reply Brief and Supplemental Appeal Brief. We thus affirm Rejection 5 for the same reasons that we affirm Rejection 4, and note that the Examiner makes sufficient findings in the record that McNamara encompasses Appellants' formulation. Ans. 10. In view of the above, Rejection 5 is affirmed, with the exception of claim 18 (see our discussion of claim 18 with regard to Rejection 1, supra.). 4 In arguing against claim 15, Appellants again argue that a "slurry" is not mentioned in McNamara. App. Br. 55. However, the Examiner (on page 10 of the Answer) refers to certain ingredients of the composition of McNamara that include a liquid and a solid (i.e., liquid mixture/slurry). 7 Appeal2017-009508 Application 13/133,282 Rejection 6 Claims 8-11, 13, 18, and 19 are rejected under pre-AIA 35 U.S.C. § 102(e) as being anticipated by Roman. Appellants argue claims 8, 13, and 18 separately. Appeal Br. 80-102. Rejection 6 involves the rejection of claims 8, 11, 14--16 and 18 as being anticipated by Roman. In a similar manner (as in Rejection 2), claim interpretation is dispositive for Rejection 6, and for the reasons discussed in Rejection 2, a reasonable interpretation of claim 8 is that it encompasses a liquid formulation comprising a cationic and/or zwitterionic surfactant. The Examiner makes sufficient findings in the record that Roman discloses such a formulation. Ans. 11-12. With regard to claim 13, on page 64 of the Appeal Brief, Appellants argue that Roman does not disclose the feature of claim 13. Claim 13 depends upon claim 8 and recites that the formulation ( of claim 8) is in the form of an aqueous solution. On page 11 of the Answer, the Examiner makes findings regarding the components of the liquid composition disclosed in Roman, including having water as a component (aqueous composition). The Examiner thus makes sufficient findings in the record that Roman discloses an aqueous solution. In view of the above, Rejection 6 is affirmed, with the exception of claim 18 (see our discussion of claim 18 with regard to Rejection 1, supra.). Rejection 7 Claims 8, 11, 13-16 and 18 are rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Roe. Beginning on page 103 of the Appeal Brief, Appellants separately argue claims 8, 11, 14, 15, 16, and 18. With regard to claim 8, in a similar manner (as in Rejection 2), claim interpretation is dispositive for Rejection 7, and for the reasons discussed in Rejection 2, a reasonable interpretation of claim 8 is that it encompasses a liquid 8 Appeal2017-009508 Application 13/133,282 formulation comprising a cationic and/or zwitterionic surfactant. The Examiner makes sufficient findings in the record that Roe discloses such a formulation. Ans. 12. With regard to claim 11, on page 80 of the Appeal Brief, Appellants argue that Roe does not disclose the feature of claim 11. We disagree. Claim 11 depends upon claim 8 and recites that the formulation ( of claim 8) comprises a zwitterionic surfactant selected from cocoamine oxide, cocamidopropyl betaine, alkyl betaines, alkylaminopropioic acids, alkyliminodipropionic acids, alkylimidazoline carboxylates, sulphobetaines or combinations thereof and any combination thereof. On page 12 of the Answer, the Examiner makes findings regarding the zwitterionic surfactant disclosed in Roe. The Examiner refers to the examples as set forth in Tables II-IV of Roe. The Examiner states that Roe's coco amido sulphobetaine component is a zwitterionic surfactant and Roe supports the finding. Roe, col. 3, 11. 12-15. Coco amido sulphobetaine is in the class of "sulphobetaines" recited in claim 11. With regard to claim 14, claim 14 recites a "coal mine dusting agent comprising stone dust particles treated with a cationic and/or zwitterionic surfactant". On page 11 of the Answer, the Examiner makes findings that Roe teaches methods and compositions for controlling fugitive dust emissions by applying an aqueous, foamed solution, including a water-soluble cationic polymer, to dust, producing bulk, granular or powdered solids, and refers to Roe's Abstract in this regard. On page 14 of the Answer, the Examiner explains that the scope of what is meant by "stone dust particles" treated with a cationic and/or zwitterionic surfactant is interpreted in light of Applicant's disclosure as set forth on page 6, lines 5-14 of the Specification, which discloses: 9 Appeal2017-009508 Application 13/133,282 The stone dust particles used in the process of the present invention can be any particles that are dusted onto coal mine surfaces to inhibit flame propagation during a seismic event. The dust particles could comprise dolomite, magnesite, fly ash, silica fume, gypsum, anhydrite, non- expansive clays or fine ground mine tailings or any mixtures thereof. However, in a preferred embodiment, the stone dust particles comprise at least some particles of a carbonate compound. Preferably, the carbonate compound is calcium carbonate. Carbonate-containing particles are preferred because, upon heating, the carbonate forms carbon dioxide which acts to quench any flame in the same way as a traditional fire extinguisher. The non-carbonate dusts simply work by diluting the coal dust suspended in air. Thus, the Examiner views the dust particles of Roe that are coated with the solution of Roe as falling within the above-described particles set forth in Appellants' Specification. We agree. Claim 2 of Roe, for example, specifies that the particles can be fly ash (which is identified in Appellants' Specification as an example of stone dust particles). With regard to claim 15, the Examiner views the particles coated with the solution of Roe as a slurry because it includes a liquid and a solid. Ans. 13-14. We agree. With regard to claim 16, claim 16 requires the coal mine dusting agent of claim 14 include a "zwitterionic surfactant comprising cocoamine oxide and/or cocamidopropyl betaine". On page 11 of the Answer, the Examiner makes findings regarding the zwitterionic surfactant disclosed in Roe. The Examiner refers to the examples as set forth in Tables II-IV of Roe. The Examiner states that Roe's coco amido sulphobetaine component is a zwitterionic surfactant. Roe, col. 3, 11. 12-15. However, we agree with Appellants that the Examiner does not make a finding that these teachings meet the claim limitation of claim 16 of a zwitterionic surfactant comprising "cocoamine oxide and/or cocamidopropyl betaine". 10 Appeal2017-009508 Application 13/133,282 In view of the above, we affirm Rejection 7, except with regard to claims 16 and 18. Rejection 8 Claims 8, 11, 13-16 and 18 are rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Corbett. Appellants separately argue claims 8, 11, 13, 14, 15, 16, and 18. Appeal Br. 138-145. On page 12 of the Answer, the Examiner finds that Corbett teaches dust suppression compositions and methods of use, and refers to the examples of Corbett, and to the Evaluation (pp. 2-3 of Corbett) of the compositions to control Kaolin dust, and finds these teachings anticipate the claims. With regard to claim 8, in a similar manner (as in Rejection 2), claim interpretation is dispositive for this rejection, and for the reasons discussed in Rejection 2, a reasonable interpretation of claim 8 is that it encompasses a liquid formulation comprising a cationic and/or zwitterionic surfactant. The Examiner makes sufficient findings in the record that Corbett discloses such a formulation. Ans. 12. With regard to claim 11, on page 144 of the Appeal Brief, Appellants argue that Corbett does not disclose the feature of claim 11. Claim 11 depends upon claim 8 and recites that the formulation ( of claim 8) comprises a zwitterionic surfactant selected from cocoamine oxide, cocamidopropyl betaine, alkyl betaines, alkylaminopropioic acids, alkyliminodipropionic acids, alkylimidazoline carboxylates, sulphobetaines or combinations thereof and any combination thereof. We agree with Appellants that the Examiner does not direct us to evidence in Corbett that discloses the specifically claimed zwitterionic surfactant recited in clam 11. 11 Appeal2017-009508 Application 13/133,282 With regard to claim 13, on page 145 of the Appeal Brief, Appellants argue that Roman does not disclose the feature of claim 13. Claim 13 depends upon claim 8 and recites that the formulation ( of claim 8) is in the form of an aqueous solution. On page 12 of the Answer, the Examiner makes findings regarding Corbett. Example IV, for example, includes water as a component (aqueous composition). The Examiner thus makes sufficient findings in the record that Corbett discloses an aqueous solution. With regard to claim 14, claim 14 recites a "coal mine dusting agent comprising stone dust particles treated with a cationic and/or zwitterionic surfactant". The Examiner interprets claim 14 (particularly the "stone dust particles" recitation) as discussed supra. Based upon this interpretation, the Examiner finds that Corbett anticipates claim 14. Ans. 12. The Examiner refers to the Evaluation section of Corbett and therein, at the bottom of page 2, Corbett discloses that Kaolin dust particles5 are sprayed with the composition. The Examiner thus makes sufficient findings in the record that Corbett discloses dust particles meeting the compositional requirements of claim 14 With regard to claim 15, the Examiner views the Kaolin dust particles coated with the composition of Corbett (p. 2, 11. 100-105) as a slurry because it includes a liquid and a solid mixture. We agree. With regard to claim 16, claim 16 recites that the coal mine dusting agent of claim 14, "wherein a zwitterionic surfactant is present, the zwitterionic surfactant comprising cocoamine oxide and/or cocamidopropyl betaine". We agree with Appellants that the Examiner does not make a finding that the teachings of 5 Kaolinite is a clay material and thus the Examiner views the particles as being clays described in Appellants' Specification ( discussed, supra). 12 Appeal2017-009508 Application 13/133,282 Corbett meet the claim limitation of claim 16 of a zwitterionic surfactant comprising "cocoamine oxide and/or cocamidopropyl betaine". In view of the above, we affirm Rejection 8, except with regard to claims 11, 16, and 18. DECISION Rejection 1 is affirmed. Rejection 2 is affirmed, except with regard to claim 18, for which we do not reach the merits. Rejection 3 is affirmed. Rejection 4 is affirmed, except with regard to claim 18, for which we do not reach the merits. Rejection 5 is affirmed, except with regard to claim 18, for which we do not reach the merits. Rejection 6 is affirmed, except with regard to claim 18, for which we do not reach the merits. Rejection 7 is affirmed, except with regard to claims 16 and 18. For claim 18, we do not reach the merits. Rejection 8 is affirmed, except with regard to claims 11, 16, and 18. For claim 18, we do not reach the merits. 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). See 37 C.F.R. § 1.136(a)(l )(iv). ORDER 13 Appeal2017-009508 Application 13/133,282 AFFIRMED 14 Copy with citationCopy as parenthetical citation