Ex Parte Dyer et al

Board of Patent Appeals and Interferences

Mar 17, 2009

10896087 (B.P.A.I. Mar. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFF R. DYER,
ROBERT E. EBBELER, and VIKRAM ASHER
____________

Appeal 2009-1632
Application 10/896,087
Technology Center 1700
____________

Decided:1 March 17, 2009
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Before EDWARD C. KIMLIN, TERRY J. OWENS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-8 and 12-

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-1632
Application 10/896,087

19. Claims 9 and 10 have been withdrawn from consideration, and claim 11
has been allowed. We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:
1. A method of cleaning paper making equipment comprising
circulating a chlorine free detergent dissolved in water through said
equipment, said detergent consisting essentially of a base, a
metalsilicate, a phosphate sequesterant, a non-foaming nonionic
surfactant, and at least one additional sequesting agent selected from
the group consisting of a gluconate, a glucoheptonate, EDTA and
NTA, a peroxy compound, and tetraacetylenediamine in an amount
effective to activate said peroxy composition to form a bleaching
agent and optionally a detergent polymer.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 2-3):
Ouzounis 5,507,971 Apr. 16, 1996
Schmitt 6,001,790 Dec. 14, 1999
Johansen 2002/0028754 A1 Mar. 07, 2002
Cooper 2003/0203827 A1 Oct. 30, 2003
McClung 2004/0033923 A1 Feb. 19, 2004
Appellants’ claimed invention is directed to a method of cleaning
paper making equipment. The method entails circulating a chlorine free
detergent that consists of the ingredients recited in claim 1. Also, the
method recited in claim 12 uses a detergent that “is substantially free of
enzymes”.
Appealed claims 12-19 stand rejected under 35 U.S.C. § 112, first and
second paragraphs. Claims 1, 3, 5, 7, 8, 12, 14, 16, 18, and 19 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Johansen in view of
Cooper, Schmitt, and McClung. Claims 2, 4, 6, 13, 15, and 17 stand rejected
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under 35 U.S.C. § 103(a) as being unpatentable over the stated combination
of references further in view of Ouzounis.
Appellants present separate arguments only for claims 1 and 12.
Accordingly, the remaining claims on appeal stand or fall together with the
claims upon which they depend.
We have thoroughly reviewed each of Appellants’ arguments for
patentability, as well as the Declaration evidence relied upon in support
thereof. However, we find that the Examiner’s rejections are well founded
and in accord with current patent jurisprudence. Accordingly, we will
sustain the Examiner’s rejections for the reasons set forth in the Answer,
which we incorporate herein, and we add the following for emphasis only.
We consider first the Examiner’s rejections under § 112, first and
second paragraphs. We concur with the Examiner that the claim 12
language “substantially free of enzymes” lacks original descriptive support
in the Specification as filed and is indefinite within the meaning of § 112,
second paragraph. Although Appellants’ Specification exemplifies
compositions that are free of enzymes, and there may be original descriptive
support for a claim that recites a composition that is free of enzymes; we
agree with the Examiner that the issue on appeal is the meaning attributed to
the language “substantially free of enzymes”. Appellants have not defined
on this record a range for the amount of enzymes that qualifies as
“substantially free of enzymes”. This lack of definition or guidance for the
claim language in the present Specification is significant for at least two
reasons. First, allowed claim 11 recites a detergent “consisting of” the
recited ingredients to the exclusion of enzymes, indicating that Appellants
contemplate the inclusion of enzymes in compositions within the scope of
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claim 12 that are “substantially free of enzymes”. Secondly, as emphasized
by the Examiner, Johansen, the primary reference in the § 103 rejections,
discloses that enzymes may be present in the composition in an amount of
only 0.01 ppm [0037]. Consequently, since Johansen discloses detergent
compositions comprising very minor amounts of enzymes and Appellants
contemplate detergent compositions having amounts of enzymes greater
than 0%, it is incumbent upon Appellants to define an upper limit for the
amount of enzymes in the claimed compositions such that one of ordinary
skill in the art might reasonably understand the metes and bounds of the
claimed invention. The Declaration of one of the present inventors, Robert
E. Ebbeler, is silent with respect to how one of ordinary skill in the art would
interpret the claimed compositions that are “substantially free of enzymes”.
We now turn to the § 103 rejections of claims 1, 3, 5, 7, 8, 12, 14, 16,
18, and 19 over Johansen in view of Cooper, Schmitt, and McClung.
Appellants do not dispute the Examiner’s factual determination that
Johansen, like Appellants, discloses a method for cleaning and disinfecting
the hard surfaces of a paper pulp processing plant [0159] with a detergent
composition comprising an organic solvent, surfactants, detergent builders,
such as silicates, a hydrogen peroxide source as a bleaching source, an
activator, etc. Appellants argue that Johansen forms hypohalous acids for
disinfecting paper making equipment and “discloses forming a composition
in situ that applicants are trying to avoid” (App. Br. 8, last para.).
Appellants maintain that Johansen “suggests using a chlorine containing
cleaner, whereas claims 1 and 12 recite the use of a chlorine free cleaner”
(id.) However, Appellants have not refuted the Examiner’s finding that
Johansen does “not require the use of haloperoxidase enzymes and teach that
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many different enzymes may be used in the composition including proteases,
lipases, cutinases, amylases, carbohydrases, etc.” (Ans. 11, penultimate para.
citing paras. 29-37 of Johansen). Appellants have not explained why it
would have been non-obvious for one of ordinary skill in the art to use a
chlorine-free detergent composition in view of the Johansen disclosure.
We do not agree with Appellants that the language of claim 1,
“consists essentially of”, excludes the presence of enzymes in the claimed
cleaning composition. As pointed out by the Examiner, Appellants have not
demonstrated on this record that the presence of an enzyme, particularly in
an amount of only 0.01 ppm, would significantly or materially affect the
basic nature of cleaning compositions within the scope of the appealed
claims, i.e., the compositions would no longer qualify as cleaning
compositions. Furthermore, since Johansen discloses that “the antimicrobial
activity of a non-enzymatic biocidal compound is improved when it is
combined with an enzymatic component” ([0005]), we are convinced that it
would have been obvious for one of ordinary skill in the art to eliminate the
enzymatic component from the detergent composition of Johansen with the
reasonable expectation of reduced anti-microbial activity. It is well settled
that the omission of a feature disclosed by the prior art along with its
attendant function is a matter of obviousness for one of ordinary skill in the
art. In re Thompson, 545 F.2d 1290, 1294 (CCPA 1976); In re Kuhle, 526
F.2d 553, 555(CCPA 1975). Indeed, it would seem that the compositions
embraced by allowed claim 11, which are free of enzymes, would have been
obvious to one of ordinary skill in the art.
Likewise, for essentially the same reasoning, we find that the
detergent compositions encompassed by appealed claim 12, which are
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“substantially free of enzymes”, would have been obvious to one of ordinary
skill in the art based on the applied prior art. We perceive nothing non-
obvious in formulating a detergent composition without enzymes if a
reduction in biocidal activity is satisfactory or desired. Moreover,
Appellants have not established a meaningful, patentable distinction between
detergent compositions for cleaning paper making equipment comprising as
little as 0.01 ppm enzymes, as disclosed by Johansen, and such detergent
compositions within the scope of claim 12 that are “substantially free of
enzymes”.
Also, Appellants have not persuaded us that the Examiner has erred in
citing Cooper, McClung, and Schmitt for the obviousness of using
metasilicates and various builders in the detergent compositions of Johansen
and for circulating the cleaning composition through the paper making
equipment for a specific time.
Appellants rely upon the Ebbeler Declaration to support their
argument that “the fact that a composition is effective as a microbiocide
would never suggest that it would be effective to actually clean the paper
making equipment” (App. Br. 9, first para.). The Declaration, however,
focuses only upon the Johansen composition as a biocide and states that
“biocides are not known to remove latex buildup, organic soils, dyes, inks,
natural pulp extractives, or hot melts” (Decl. para. 8). However, the
Declaration does not address the clear teaching of Johansen that the biocides
may be included in detergent compositions for cleaning paper pulp
processing plants. The Declaration gives no reason why detergent
compositions fairly taught by Johansen would not be effective in cleaning
paper making equipment, and no objective evidence is proffered comparing
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the cleaning activity of compositions within the scope of the appealed claims
and those fairly taught by Johansen.
As a final point, we note that Appellants advance no separate,
substantive argument against the Examiner’s § 103 rejection which includes
the Ouzounis reference.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 35 U.S.C. § 1.136(a) (2008).

AFFIRMED

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