Ex Parte Brown et al

Patent Trial and Appeal Board

Feb 22, 2018

13430417 (P.T.A.B. Feb. 22, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/430,417 03/26/2012 Geoffrey A. Brown 41524 7589
144982 7590 02/26/2018
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
SAVAGE, MATTHEW O
ART UNIT PAPER NUMBER
1773
NOTIFICATION DATE DELIVERY MODE
02/26/2018 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 @ hovey williams, com
amalik @hovey williams .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEOFFREY A. BROWN, KRISTOPHER SHELITE, and
JERRY POE
Appeal 2017-001952
Application 13/430,417
Technology Center 1700
Before CATHERINE Q. TIMM, N. WHITNEY WILSON, and
MONTE T. SQUIRE, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants1 timely filed a Request for Rehearing under 37 C.F.R.
§ 41.52 (“Request”)2 of our Decision entered on October 2, 2017 in
connection with the above-captioned appeal (“Decision”). Requests for
Rehearing are limited to matters overlooked or misapprehended by the Panel
in rendering the original decision. See 37 C.F.R. § 41.52.
1 Appellants identify the real party in interest as Compass Minerals America,
Inc. (Appeal Br. 4).
2 Request for Rehearing filed December 4, 2017.
Appeal 2017-001952
Application 13/430,417
In the Decision, we affirmed (1) the rejection of claims 1, 4-7, 9-12,
14-16, 32, and 35-38 under 35 U.S.C. § 103(a) as unpatentable over Kunin3
in view of Matsukawa4; and (2) the rejection of claims 17 and 39 under
35 U.S.C. § 103(a) as unpatentable over Kunin in view of Matsukawa, and
further in view of Johnson.5 We reversed (1) the rejection of claims 1, 4-7,
9-12, 14-16, 32, and 35-38 under 35 U.S.C. § 103(a) as unpatentable over
Kunin in view of Koefod6; and (2) the rejection of claims 17 and 39 under
35 U.S.C. § 103(a) as unpatentable over Kunin in view of Koefod, and
further in view of Johnson.
ISSUES RAISED IN REQUEST
Appellants raise three specific issues, contending that (1) “the Board
misapprehended the well-known fact that potassium acetate is a non-scaling
salt, and the Examiner implicitly accepted this fact without rebuttal”; and (2)
“the Board overlooked the substantial evidence provided in the present
application in Mr. Brown’s declaration”; and (3) “the Board misapprehended
the evidentiary value of the objective indicia of nonobviousness” (Request 2,
3,4).
3 Kunin et al., US 6,340,712 Bl, issued January 22, 2002.
4 Matsukawa, JP 60-255147, published December 16, 1985. Like
Appellants and the Examiner, we refer to the translation of record.
5 Johnson, US 5,232,953, issued August 3, 1993. The Examiner identifies
Johnson as US 5,232,952. However, US 5,232,952 is to Matsuda et al., and
cannot be the patent the Examiner has reference to as it contains only 4
columns and the Examiner refers to column 8 of Johnson.
6 Koefod, US 2006/0157415 Al, published July 20, 2006.
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Appeal 2017-001952
Application 13/430,417
DISCUSSION
Issue (1). In their Appeal Brief, Appellants argued that a person of
ordinary skill in the art would have had no reason to substitute potassium
sulfate for the potassium acetate used by Kunin because potassium sulfate
was known to create scaling problems, while potassium acetate was known
not to do so (Appeal Br. 12-13). In the Decision, we found this argument
unpersuasive at least in part because Kunin does not provide support for the
proposition that potassium sulfate creates scaling problems (Decision 5).
Appellants now contend that it was not necessary for Kunin to expressly
teach that potassium acetate does not scale “because this is a well-known
and accepted fact in the art” as evidenced by the fact that the Examiner did
not challenge this assertion (Request 2).
This argument is not sufficient to cause us to change our decision. In
particular, Appellants still have not pointed to persuasive evidence in Kunin
that potassium sulfate would not be useful in the Kunin process. Perhaps
even more importantly, however, regardless of whether a person of skill in
the art would have been aware of the possible scaling problems with
potassium sulfate, Appellants have not pointed to evidence to overcome the
disclosure in Matsukawa that both potassium sulfate and potassium acetate
(amongst a larger number of potassium salts) can be used for regenerating an
ion exchange material. Matsukawa does not distinguish between potassium
acetate and potassium sulfate (Matsukawa 1) and, therefore, a person of skill
in the art would have believed they could be substituted for one another, for
example in the method of Kunin.
Issue (2). Appellants contend that we overlooked the evidence set
forth in Mr. Brown’s Declaration which, according to Appellants, served to
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Appeal 2017-001952
Application 13/430,417
show why a person of skill in the art would not have combined the teachings
of Kunin and Matsukawa in the manner necessary for the rejection. While it
was not perfectly clear in the Decision, this evidence was considered and
determined to not, on balance, lead to reversal of the rejection. The thrust of
the Brown Declaration explains why a person of skill in the art would not
have wanted to use the oxidizers disclosed by Matsukawa (Brown Decl.,
4-8). However, the rejection is based on the uncontested disclosure in
Matsukawa that both potassium acetate and potassium sulfate can be used in
ion exchange regeneration applications.
Matsukawa does not distinguish between potassium acetate and
potassium sulfate and, therefore, a person of skill in the art would have
believed they could be substituted for one another. As stated in the
Decision, a conclusion of obviousness may be supported by a showing that
the claims are directed to a process already known in the prior art (i.e.,
Kunin’s process) that is altered by the mere substitution of one element for
another known in the field (i.e., potassium sulfate for potassium acetate as
shown in Matsukawa), and such modification yields a predictable result.
KSR Inti. Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (citing United
States v. Adams, 383 U.S. 39, 40 (1966)). Moreover, as discussed in the
Decision, Kunin discloses the use of potassium acetate with the chelating
agent (Kunin 2:20-30), and substituting potassium sulfate for potassium
acetate would not remove the chelating agent. Thus, even if a person of skill
in the art were to have believed that potassium sulfate induces increased
scaling problems as compared to potassium acetate, the person of skill in the
art would have understood that Kunin, as modified by Matsukawa, would
address those problems.
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Appeal 2017-001952
Application 13/430,417
Issue 3. Appellants contend that, in light of the Federal Circuit’s
decision in Leo Pharmaceutical Products v. Rea, 726 F.3d 1346 (Fed. Cir.
2013), we did not give sufficient weight to the fact that Kunin and
Matsukawa “existed together for a decade prior to the filing date” of the
application currently on appeal (Request 5). However, the holding in Leo
was not solely based on the age of the various references cited in the
rejection at issue in that case. Instead, there were a variety of other factors
which weighed against of finding of obviousness, including particular
statements in the art that the claimed invention would not have been
successful and significant evidence of commercial success. Leo, 726 F.3d at
1353-59. In this instance, however, the only objective evidence provided by
Appellants was the co-existence of the cited art for a number of years prior
to the filing date of the application in question.
When considered in conjunction with the disclosure of the cited
references, the preponderance of the evidence supports the obviousness
rejection of claims 1, 4-7, 9-12, 14-16, 32, and 35-38 over Kunin in view
of Matsukawa; and the rejection of claims 17 and 39 over Kunin in view of
Matsukawa, and further in view of Johnson.
CONCLUSION
The subject Request has been granted to the extent that the Decision
has been reconsidered, but is otherwise denied with respect to making
changes therein.
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)(iv).
DENIED
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