11235397 (B.P.A.I. Jan. 28, 2011)

Ex Parte Cassidy et al

Board of Patent Appeals and InterferencesJan 28, 2011

11235397 (B.P.A.I. Jan. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _______________ Ex parte JUANITA M. CASSIDY, CHAD E. KISER, JIM L. LANE, and KEITH A. FROST ______________ Appeal 2009-009182 Application 11/235,397 Technology Center 1700 _______________ Before BRADLEY R. GARRIS, CHARLES F. WARREN, and TERRY J. OWENS, Administrative Patent Judges. WARREN, Administrative Patent Judge. DECISION ON APPEAL1 Applicants appeal to the Board from the decision of the Primary Examiner finally rejecting claims 1-20 in the Office Action mailed May 18, 2007. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2008). 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-009182 Application 11/235,397 We reverse the decision of the Primary Examiner. Claim 14 illustrates Appellants’ invention of a method of inhibiting corrosion of a metal surface, and is representative of the claims on appeal: 14. A method of inhibiting corrosion of a metal surface comprising: providing a corrosion inhibitor composition, the corrosion inhibitor composition comprising a group 15 metal source and a cinnamaldehyde compound; contacting the metal surface with the corrosion inhibitor composition; and allowing the corrosion inhibitor composition to interact with the metal surface so as to inhibit corrosion of the metal surface. Appellants request review of the grounds of rejection advanced on appeal by the Examiner: claim 19 under 35 U.S.C. § 112, second paragraph; claims 1-3, 6, 8-11, and 13-20 under 35 U.S.C. § 102(b) over Walker (US 5,591,381); and under 35 U.S.C. § 103(a), claim 4 over Walker and Costain (US 3,876,371), claims 5 and 7 in view of Walker and Brezinski (US 5,697,443), and claim 12 in view of Walker and Noerenberg (US 2005/0256313 A1). Br. 7;2 Ans. 3, 5, 6, and 7. Opinion I. Claim 19: § 112, second paragraph Appellants submit that the Examiner erred in determining that claim 19, dependent on representative independent method claim 14, is indefinite on the basis that the claim language specifying that the corrosion inhibitor composition is “substantially free of a quaternary ammonium compound” and “substantially free of a Mannich condensation compound,” when 2 We considered the Appeal Brief filed July 23, 2008. 2 Appeal 2009-009182 Application 11/235,397 considered in light of the Specification, does not “specifically set forth a specific amount of each of” the compounds and the Specification does not set forth “any criteria by which one of ordinary skill might determine . . . permissible amounts.” Ans. 3; Br. 8-9. Appellants contend that the claim language is definite “when read in light of the specification and the common meaning of the terms.” Br. 8. Appellants argue that it is disclosed in the Specification that “‘the corrosion inhibitors of the present invention do not require the presence of quaternary ammonium compounds or ‘Mannich’ condensation compounds.’” Br. 8-9, quoting Spec. ¶ 0013. The Examiner responds that while the Specification “discloses that neither of these compounds are required, the phrase ‘substantially free of’ is not limited to such a complete absence” thereof, and the Specification does not set forth a specific amount. Ans. 8. We interpret claim language by giving the terms the broadest reasonable construction in light of the Specification. In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010), and cases cited therein; In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997). Claim 19 is an original claim, and the Specification does not provide a definition or some standard of measuring the term of degree “substantially free.” The Specification does disclose that the subject compounds are not required, as Appellants point out. Thus, in light of the Specification, we interpret the subject claim language as specifying that the claimed corrosion composition can be “largely” to entirely free of quaternary ammonium and of Mannich condensation compounds, using the ordinary meaning of “substantially.” See, e.g., York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 3 Appeal 2009-009182 Application 11/235,397 1568, 1572-73 (Fed. Cir. 1996) (“In this case, the patent discloses no novel use of claim words. Ordinarily, therefore, ‘substantially’ means ‘considerable in . . . extent,’ American Heritage Dictionary Second College Edition 1213 (2d ed. 1982), or ‘largely but not wholly that which is specified,’ Webster’s Ninth New Collegiate Dictionary 1176 (9th ed. 1983).”). Thus, we agree with Appellants’ position. We are of the opinion that the subject claim language as interpreted is reasonably definite to one skilled in the art within the meaning of 35 U.S.C. § 112, second paragraph. Accordingly, we reverse the ground of rejection of claim 19 under this statutory provision. II. Claim 14: § 102(b) Appellants submit that the Examiner erred in finding that Walker anticipates the claimed method encompassed by representative claim 14. Br. 9-10; Ans. 3-5. Appellants argue that the claimed method comprises at least the three specific compounds, which include a cinnamaldehyde compound. Appellants argue that while Walker describes a corrosion inhibiting composition which includes a condensation reaction product of several reactants that can include cinnamaldehyde as an aldehyde reactant, Walker does not disclose a corrosion inhibiting composition that includes a cinnamaldehyde compound which falls within claim 14. Br. 9-10. The Examiner responds that Appellants have “presented no evidence that, at the time of contact of the composition of Walker, . . . the composition contains only condensation reaction produce and no longer contains any – even a single molecule – of the reactant compounds.” Ans. 8. In other words, 4 Appeal 2009-009182 Application 11/235,397 “the reactants are [not] so completely consumed as to be completely absent from the coating composition when it is applied to the substrate.” Ans. 8-9. On this record, we agree with Appellants. We find that Walker discloses forming a condensation reaction product with at least three reactants, of which one is an aldehyde that can be, among other things, cinnamaldehyde. Walker col. 3, l. 16 to col. 4, l. 11. In an embodiment that does not include cinnamaldehyde as a reactant, Walker describes the synthesis and recovery of a condensation reaction product, and then combines the recovered product with other ingredients to form a corrosion inhibition composition which is then applied to a metal surface. Walker col. 9, ll. 17-64. The Examiner has the initial burden of establishing a case of anticipation of the claimed invention over a reference, after which the burden shifts to Appellants to patentably distinguish the claimed invention over the reference. See, e.g., In re Spada, 911 F.2d 705, 707 n.3 (Fed. Cir. 1990). Here, Walker does not explicitly describe a corrosion inhibition composition that contains a condensation reaction product synthesized from, among other things, cinnamaldehyde. The Examiner has not carried the burden of establishing with evidence or scientific explanation that the method disclosed by Walker to synthesize and recover a condensation reaction product derived from, among other things, cinnamaldehyde, would necessarily leave any amount of cinnamaldehyde in the recovered product. Thus, the burden has not shifted to Appellants to establish otherwise. Accordingly, in the absence of a case of anticipation, we reverse the rejection of claims 1-3, 6, 8-11, and 13-20 under 35 U.S.C. § 102(b) 5 Appeal 2009-009182 Application 11/235,397 III. Claims 4, 5, 7, and 12: § 103(a) Appellants submit that the Examiner erred in concluding that the dependent claims were obvious over Walker and the other applied references because, among other things, Walker does not teach the claimed corrosion inhibitor compositions falling within independent method claim 1, which encompasses the same corrosion inhibitor compositions encompassed by independent method claim 14, and the teachings in the other applied references do not supply this difference. Br. 10-12. We agree with Appellants. We find that none of the other applied references teach a corrosion inhibitor composition which contains a cinnamaldehyde compound that, on this record, is missing from Walker’s corrosion inhibitor compositions as we found above, and the Examiner does not otherwise explain the difference. Ans., e.g., 8-9. Accordingly, in the absence of a case of obviousness, we reverse the grounds of rejection of claims 4, 5, 7, and 12 under 35 U.S.C. § 103(a). The Primary Examiner’s decision is reversed. REVERSED tc ROBERT A. KENT P.O. BOX 1431 DUNCAN, OK 73536 6