Ex Parte Coffey et alDownload PDFPatent Trial and Appeal BoardMar 23, 201512237674 (P.T.A.B. Mar. 23, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PETER HORLACHER, JURGEN GIERKE, FRANZ TIMMERMANN, WOLFGANG ALBIEZ and ALOIS HOFMANN ____________ Appeal 2013-005872 Application 12/237,674 1 Technology Center 1700 ____________ Before PETER F. KRATZ, ROMULO H. DELMENDO, and RICHARD M. LEBOVITZ, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL This appeal involves claims directed to methods of reducing algal populations. The Examiner has rejected the claims as obvious under 35 U.S.C. § 103 and indefinite under 35 U.S.C § 112, ¶ 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants appeal from the Examiner’s final rejection of claims 1 and 5–21. The claims stand rejected as follows: 1 Hereinafter, “the ’674 application.” Appeal 2013-005872 Application 12/237,674 2 Claims 1, 5–9, 14, 15, 20 and 21 under 35 U.S.C. § 103(a) in view of U.S. Patent Application Publication 2003/0156981 (“Mills”; Final Office Action (“Final Rej’n”) dated March 28, 2012 at page 2). Claims 10–13 and 16–19 under 35 U.S.C. § 103(a) in view of Mills and U.S. Patent 6,120,698 (“Rounds”; Final Office Action dated March 28, 2012 at page 3). Claims 1 and 5–21 under 35 U.S.C. § 112, ¶ 2 (Examiner's Answer dated February 15, 2013 at page 3). SECTION 103 REJECTIONS Independent claim 1 is directed to a method of reducing an algal population in a body of water. The claim involves providing lanthanide salt and silver in quantities “sufficient to reduce phosphate concentrations in the body of water to a concentration of from about 200 ppb to about 2500 ppb.” The Examiner found that Mills disclosed tablets of lanthanide to treat algae in water as claimed. Final Rej’n 2. With respect to silver, the Examiner acknowledged that Mills does not describe silver in its tablets, but found that Mill discloses that silver had been used to control algal populations, albeit not as effective as lanthanide. Id. The Examiner concluded “it would have been obvious to one having ordinary skill in the art to add silver as it does indeed help to control algal populations and does not react with chlorine adversely.” Id. Appellants contend that Mills disparages the use of silver to control algal populations, which constitutes “a substantial teaching away from the use of silver.” Appeal Br. 10. Appellants argue that “the Office Action did not provide a prima facie case of obvious by providing a rational Appeal 2013-005872 Application 12/237,674 3 underpinning for the inclusion of the inferior staining silver reagent in a tablet composition that was deemed by Mills to overcome the very shortcomings in the use of silver.” Id. at 11. Appellants further urge that the proposed modification would make the combination “unsatisfactory for its intended purpose” because the addition of silver would cause staining which the lanthanide was designed to avoid. Id. As found by the Examiner, Mills teaches in its background section that silver had been used to mitigate algal growth in pools. Specifically, Mills discloses that chlorine is used in pools to control bacterial growth, but at concentrations “below about 5 ppm, chlorine is not considered to be effective in controlling algal growth in pools.” Mills ¶¶ 8, 9. For this reason, Mills teaches that pool owner may “add algaecide products (which are typically organic compounds, such as quaternary amines) to suppress algal growth.” Id. at 9. However, Mills teaches that such compounds adversely react with chlorine. Id. As an alternative, Mills discloses: Whilst inorganic algaecides (usually silver or copper compounds, such as copper sulphate) are sometimes included in tablets containing chlorinated compounds and are generally immune from adverse chlorine reactions, they are not very effective and pool owners need to continue scrubbing and filtering to control algae, albeit at a marginally lower level of intensity. Moreover, silver and copper compounds can introduce problems like staining. Id. Although silver “can introduce problems like staining” and is described by Mills as “not very effective” in algal control, silver was still considered useful to mitigate algae in pools. Mills ¶ 9. The ’674 application also acknowledges that silver ions are used to purify pool and spa water. ’674 application 1:15–20. The statement by Mills that silver is “not very Appeal 2013-005872 Application 12/237,674 4 effective” at algal control is not saying it does not work or not to use it. Simply because a product is described as “inferior” in some respects does not by itself constitute a teaching away from using the “inferior” product. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “[J]ust because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). Appellants urge that there would have been no reason to combine silver with lanthanide because lanthanide alone was effective. Appeal Br. 11. They ask what would have motivated one of ordinary skill in the art to add “the inferior silver reagent” to lanthanide. Id. First, the preponderance of the evidence supports the finding that silver had been used to control algae and purify pool and spa waters. Mills ¶ 9; ’674 application 1:15–20. Thus, providing silver to reduce algal populations as claimed is using silver for its known and expected properties. While it was said to cause staining and not be entirely effective at algae control, silver was still utilized at the time of the invention to mitigate algae problems in bodies of water. Second, as to the reason to have combined silver and lanthanide, it seems apparent that using the two compounds together would have been obvious to one of ordinary skill in the art because each which were known to reduce algal content in water. See In re Kerkhoven, 626 F.2s 846, 850 (CCPA 1980) (“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose.”) Appeal 2013-005872 Application 12/237,674 5 Contrary to Appellants’ contention, we are not aware of any legal principles that would require an expectation for the combination to be necessarily an improvement over lanthanide alone. Appeal Br. 11. Nonetheless, Mills teaches that both silver and lanthanide were algaecide agents, so it is not unreasonable for one of ordinary skill in the art to have believed that, when combined, they would work better than each alone. See Answer 4. The concept of using a combination of chemicals to treat water was not new. Mills teaches combining lanthanide with other algaecides: We showed that problematic algal growth in swimming pools was closely related to phosphate concentration in the pool water, phosphate being an important nutrient for algae. We also showed that particulate lanthanides could be used to sequester phosphate from the pool water and so reduce the algae problem. Since phosphates are important nutrients for algae in the pool environment, the lack of phosphate nutrient limits algal growth and weakens the algae that are present, increasing their sensitivity to the mildly algaecidal activity of dilute sanitizers such as chlorine. Thus, the addition of a lanthanide to tablets or granules capable of maintaining recommended concentrations of chlorine in a pool can effect the control of both bacterial and algal growth in normal pools . . . Furthermore, because of the weakened nutritional state of the algae in the pool, the addition of a mild copper-based algaecide to the tablet will have an enhanced impact on algae in the pool. Mills 14 (emphasis added). Thus, Mills gives reason to combine lanthanide with another algaecide, especially a copper based algaecide. The application also acknowledges that purification of pool and spa water “is typically carried out by one or more of several different methods.” Application 1:15–16. Appeal 2013-005872 Application 12/237,674 6 Consequently, the preponderance of evidence supports the Examiner’s determination of the obviousness of providing silver and lanthanide to treat algal populations in a body of water. Appellants contend “there would have been no expectation that silver would perform at better than expected levels as an algistat as indicated in the present Application at page 16, lines 8-14.” Appeal Br. 11. The referenced passage from the ’674 application reads as follows: According to some embodiments of the present invention, combining copper ions and/or silver ions with lanthanide ions from lanthanide compounds, preferably lanthanum chloride and cerium chloride, has been observed to improve the role of copper and silver as an algicide/algistat; beyond their expected performance. In other words, early data has been obtained that suggests that the use of lanthanide compounds (to reduce the phosphate levels) in combination with copper and/or silver, seems to increase the performance of copper and/or silver as an algicide/algistat. Superior results can be a basis to establish nonobviousness. In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995). Generally, such results must be shown to be “unexpected” to one of ordinary skill in the art. Id. “Mere improvement in properties does not always suffice to show unexpected results.” Id. “[H]owever, . . . when an applicant demonstrates substantially improved results, . . . and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary.” Id. Neither of these conditions been met here. There is no attestment that the mentioned results would have been unexpected to one of ordinary skill in the art. Rather, the statement appears to be conclusory with Appeal 2013-005872 Application 12/237,674 7 no supporting data to buttress it. 2 Moreover, as indicated in the passage from Mills quoted above, it would have been reasonably expected that lanthanide would enhance the activity of an added algaecide. Consequently, when all the evidence is considered in the entirety, we are of the opinion that the Examiner’s determination the claim 1 would have been obvious to one of ordinary skill in the art based on Mills is supported by a preponderance of the evidence. The rejection of claim 1 is therefore affirmed. Claims 5–9, 14, 15, and 20, and 21 were not argued separately. We affirm the rejection of these claims for the reasons given by the Examiner. Final Rej’n 2–3. Claims 10–13, 16, 17, 18, and 19 stand rejected as obvious in view of Mills and Rounds. Appellants make the same unpersuasive arguments for these claims as they did for Mills, alone. Appeal Br. 12. Consequently, we affirm the rejection of these claims for the reasons given by the Examiner. Final Rej’n 3. SECTION 112 REJECTION The Examiner set forth a new ground of rejection under 35 U.S.C. § 112, ¶ 2 in the Answer. The Examiner found that the claim is indefinite because it “unclear how the concentration [of phosphate] can be reduced from 200 ppb to a higher concentration of 2500 ppb.” Answer 3–4. We reverse the rejection. Claims 1, 6 and 7 each contain the phrase “in a quantity sufficient to reduce phosphate concentrations in the body of 2 “However, “[i]t is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice.” In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).” Soni, 54 F.3d at 751. Appeal 2013-005872 Application 12/237,674 8 water to a concentration of from about 200 ppb to about 2500 ppb,” referring to a quantity of metal that is added to the body of water. The disputed phrase does not recite that the phosphate concentrations are reduced from about 200 ppb to about 2500 ppb, which is what the Examiner appears to argue. Rather, the phrase recites that the phosphate concentrations are reduced “to” about 200 ppb to about 2500 ppb, which represents the phosphate concentration range achieved by the addition of silver and lanthanide. We find that the phrase is definite and reverse the rejection. 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)(1)(iv). AFFIRMED JRG Copy with citationCopy as parenthetical citation