Ex Parte Coffey et al

Patent Trial and Appeal Board

Mar 23, 2015

12237674 (P.T.A.B. Mar. 23, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PETER HORLACHER, JURGEN GIERKE,
FRANZ TIMMERMANN, WOLFGANG ALBIEZ and ALOIS HOFMANN

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Appeal 2013-005872
Application 12/237,674
1

Technology Center 1700
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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.”
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Application 12/237,674

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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
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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
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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.”)
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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.
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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
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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.
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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