Ex Parte Durrant

Board of Patent Appeals and Interferences

Jun 27, 2011

11188066 (B.P.A.I. Jun. 27, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte EDWARD E. DURRANT
__________

Appeal 2010-009376
Application 11/188,066
Technology Center 1700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and
FRANCISCO C. PRATS, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2010-009376
Application 11/188,066

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STATEMENT OF CASE
The following claims are representative.
1. A new use of an aqueous composition for cleaning and neutralizing
a surface comprising an acidic finish, the aqueous composition comprising a
surfactant, a buffering agent comprising triethanolamine, said aqueous
composition having a pH of from about 7 to about 9, wherein the new use
consisting of:
applying the aqueous composition to a surface including an acidic
finish;
etching the surface;
removing the aqueous composition from the surface;
applying a new finish to the etched surface.

12. A method of cleaning and neutralizing a surface having an acidic
finish, consisting of the steps:
applying an aqueous composition to a surface, wherein the aqueous
composition includes:
a surfactant;
a buffering agent comprising triethanolamine; and
said aqueous composition having [sic, having a pH] of from
about 7 to about 9;
etching the surface; and
removing the aqueous composition from the surface without applying
any additional compositions, wherein the surface is neutralized on
completion of this step.

18. The method of claim 12, wherein the aqueous composition,
excluding the surfactant, comprises between 0.1-1.0 volume percent
buffering agent.

20. The method of claim 12, wherein the step of etching the surface
comprises use of a surface-working apparatus.

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Application 11/188,066

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Cited References

Murphy US 3,972,839 Aug. 3, 1976
Holman et al. US 6,444,134 B1 Sept. 3, 2002
Olson et al. US 2003/0032571 A1 Feb. 13, 2003

Grounds of Rejection
1. Claims 1, 3, 4, 6, 10, and 11 are rejected under 35 U.S.C. § 103(a) for
obviousness over Holman in view of Murphy.
2. Claims 12, 16, 18, and 20 are rejected under 35 U.S.C. § 103(a) for
obviousness over Olson and Holman in view of Murphy.

FINDINGS OF FACT
The Examiner‟s findings of fact are set forth in the Answer at pages 3-
7.

Discussion
1. Claims 1, 3, 4, 6, 10, and 11 are rejected under 35 U.S.C. § 103(a) for
obviousness over Holman in view of Murphy.

ISSUE
The Examiner concludes
Holman et al. do not teach their buffering agents containing
triethanolamine. However Murphy teaches a surface finish
cleaning composition comprising triethanolamine; [C.1, L.10-
20 & C.4, L.5-45]. Murphy and Holman et al, are analogous art
because they are from the same field of endeavour, that of
surface cleaning and stripping compositions. At the time of
invention, it would have been obvious to a person of ordinary
skill in the art to add the triethanolamine of Murphy to Holman
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et al.'s composition. The motivation would have been to provide
a synergetic combination of ingredients which in turn will
enhance the removing ability, and speed, of composition as
evidenced by Murphy; [1: 27-35].

(Ans. 4.)

Appellant argues that Holman teaches away from the invention
because the claimed invention does not include an additional rinsing step.
The issue is: Does the cited prior art support the Examiner‟s rejection
of the claims for obviousness?

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

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ANALYSIS
Appellant argues that Holman teaches away from the invention
because the claimed invention does not include an additional rinsing step.
The method of claim 1 consists of 4 steps:
1. applying the aqueous composition to a surface including an acidic
finish;
2. etching the surface;
3. removing the aqueous composition from the surface; and
4. applying a new finish to the etched surface.
We are persuaded by Appellant’s argument. “[C]losed transition
phrases such as „consisting of‟ are understood to exclude any . . . steps . . .
not specified in the claim.” AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d
1239, 1245 (Fed. Cir. 2001).
Holman discloses in column 6, ll. 19-32, steps of depositing a
cleaning solution on the floor to be refinished, removing the cleaning
solution with a mop or towels, and then applying a rinsing agent, drying, and
applying a finish to the floor. Thus, the method of Holman includes the
claimed steps, but also includes a rinsing step which is not permitted in the
claimed method by virtue of its “consisting of” transition term. The
Examiner has not adequately explained why Holman would have made
obvious a method limited to the claimed steps. Murphy does not overcome
the deficiencies of Holman, and therefore the obviousness rejection is
reversed.

2. Claims 12, 16, 18, and 20 are rejected under 35 U.S.C. § 103(a) for
obviousness over Olson and Holman in view of Murphy. We select claim
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12, 18 and 20 as representative of this rejection, as Appellant has not
separately argued individual claims of this rejection.
The Examiner finds that
Olson et al. teach a method of cleaning (and neutralizing) a
acidic surface (e.g. acrylates, urethane) consisting of steps of
applying an aqueous stripping composition and later removing
the composition without applying any additional composition
(Olson is also teaching an application of new surface coating,
which is a separate part); [0024]. This composition includes: a
surfactant; [0017, 0028], alkanolamine (e.g. triethanolamine);
[0017, claims 7, 22].
Olson et al. do not teach their composition containing
triethanolamine. However Murphy teaches a surface finish
cleaning composition comprising triethanolamine; [C.1, L.10-
20 & C.4, L.5-45]. Murphy and Olson et al, are analogous art
because they are from the same field of endeavour, that of
surface cleaning and stripping compositions. At the time of
invention, it would have been obvious to a person of ordinary
skill in the art to add the triethanolamine (with pKa=7.8) of
Murphy to Olson et al.'s composition. The motivation would
have been to provide a synergetic combination of ingredients
which in turn will enhance the removing ability, and speed, of
composition as evidenced by Murphy; [1: 27-35].

(Ans. 6.)

Appellant argues that the present invention includes no additional step
of rinsing and thus Olson teaches away from the claimed invention. (App.
Br. 8-9.)
The issue is: Does Olson teach away from the claimed use steps?

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ANALYSIS
Claim 12
We agree with the Examiner that Olson discloses a method that, in
combination with Murphy’s triethanolamine, meets the limitations of claim
12. Olson discloses steps of applying a coat of a stripper composition to the
floor, allowing the stripper to soften the finish (etch), and removing the
finish (and stripper composition) by a variety of techniques including
employing a rotating pad floor machine, floor mopping, wiping or wet
vacuuming. (Olson 4: [0024].) Olson additionally states that removal of the
finish will be made easier if water or a suitable detergent solution is applied,
but Olson does not require this additional step. (Id.) Then new layers of
floor finish may be applied.
Appellant argues that the present invention requires no additional step
of rinsing and thus Olson teaches away from the claimed invention. (App.
Br. 8-9.) We are not persuaded by Appellant’s argument because, as
discussed above, Olson does not require an additional rinsing step.

Claims 18 and 20
Appellant further argues that the Examiner has failed to show the
acidic finish limitation is taught in Olson. (App. Br. 17, 18, Reply Br. 5.)
We agree with the Examiner that in view of the Specification paragraph
[003], it is well known in the art that protective coatings applied to a wood
floor become acidic over time due to natural oxidation. (Ans. 5, 10.) Thus,
the Examiner has properly shifted the burden of proof to Appellant to show
that the prior art does not possess the characteristic relied upon. Appellant
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has not met this burden. We find no evidence of hindsight reasoning on the
part of the Examiner.
Appellant also argues that the previous arguments presented for
Holman, also apply to the rejection of claims 18 and 20. However, as
indicated herein Olson, discloses the claimed method steps, notwithstanding
the disclosure of Holman.
Appellant argues that since Holman is not applicable to the present
invention that the secondary reference disclosing triethanolamine is not
relevant. This argument does not address the relevant disclosure of Olson.
Appellant has failed to provide sufficient evidence to rebut the
Examiner’s prima facie case of obviousness and the rejection is affirmed.

CONCLUSION OF LAW
Rejection 1 is reversed and rejection 2 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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