Ex Parte English et al

Board of Patent Appeals and Interferences

May 13, 2011

11818103 (B.P.A.I. May. 13, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/818,103 06/13/2007 Jack Wesley English III 10457M 8693
27752 7590 05/16/2011
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
ASDJODI, MOHAMMAD REZA
ART UNIT PAPER NUMBER
1763
MAIL DATE DELIVERY MODE
05/16/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JACK WESLEY ENGLISH III,
EVA SCHNEIDERMAN, and SHARI JOY SOPER
__________

Appeal 2010-009331
Application 11/818,103
Technology Center 1700
__________

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

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a process for
manufacturing a liquid detergent composition. The Examiner rejected the
claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
Claims 1-21 are pending and on appeal (App. Br. 2). Claim 1 is
representative and reads as follows:
1. A process for manufacturing a liquid detergent
composition comprising methyl ester sulfonate, wherein said
process comprises at least one feed composition that is mixed
with a bulk composition to create a resulting mixture, wherein
said process operates within the following parameters:
a) the pH of a methyl ester sulfonate feed
composition is from about 5 to about 9 and the
temperature is from about 20°C to about 100°C;
b) the methyl ester sulfonates feed composition is
added to a bulk composition, with mixing;
c) the pH of the bulk composition, just before the
methyl ester sulfonate feed composition is added
to the bulk composition, is from about 5 to about 9
and the temperature is from about 20°C to about
100°C;
d) the pH of the resulting mixture is from about 5 to
about 9 and the temperature of the resulting
mixture is maintained between from about 20°C to
about 100°C.

The sole rejection before us for review is the Examiner‟s rejection of
claims 1-21 under 35 U.S.C. § 103(a) as obvious over Sajic
1
(Ans. 3-5).
OBVIOUSNESS
The Examiner finds that Sajic teaches or suggests processes of
preparing liquid detergent compositions that include all of the claimed
process parameters, except the pH range of 6-8 in claim 3, the sub-steps
recited in claim 19, and an explicit mention of claim 21‟s reduction in disalt
formation (id.). The Examiner nonetheless concludes that those features

1
U.S. Patent No. 5,637,758 (filed June 7, 1995).
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would have been obvious to an ordinary artisan, contending that pH was a
parameter known to be optimized in such processes, that selection of a
particular order of known steps in a known process is generally considered
obvious absent new or unexpected results, and that Sajic‟s process used a pH
range overlapping that described by Appellants as reducing disalt formation
(see id.).
Appellants contend that Sajic fails to teach or suggest the following
features of claim 1: (a) a methyl ester sulfonate feed composition within the
pH range of 5 to 9 and temperature of 20 to 100º C, and (b) a bulk
composition within those pH and temperature ranges, and (c) wherein when
the two compositions are mixed, the resulting mixture is also within the
claimed ranges (see App. Br. 8). Appellants further argue:
Sajic et al. fail to teach or suggest the pH and
temperature parameters of a methyl ester sulfonate feed
composition and/or a bulk composition during the
manufacturing process at values as recited in the claims to
avoid disalt formation. Sajic et al. only teach pH and
temperature adjustment after the resulting liquid detergent
composition has been mixed (i. e., the methyl ester sulfonate
feed composition and bulk composition are combined).

(Id. at 9.)
Specifically, Appellants contend, “only one formula of Sajic et al.
discloses initial and adjusted pH values for a clear detergent product that
contains methyl ester sulfonate (Formula 3 of Example 3)” (id.). However,
Appellants urge, because the final pre-adjustment pH of Formula 3 is outside
the range recited in Appellants‟ claim 1, at least one or the other of the
methyl ester sulfonate feed or bulk composition used to make the final
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detergent product must necessarily have been outside that range required by
claim 1:
After manufacturing Formula 3, the initial pH of the mixed
detergent product is 4.3 before adjustment to 6.7. Accordingly,
the pH of Formula 3 of Sajic et al. is well below a range of
about 5 to about 9. Because Formula 3 has a pH outside a
range of about 5 to about 9, at least one of the constituents used
to manufacture Formula 3 must also have a pH outside a range
of about 5 to about 9. Thus, the process of manufacturing
Formula 3 of Sajic et al. must employ a methyl ester sulfonate
feed composition that has a pH value outside of the range of
about 5 to about 9 and/or a bulk composition that has a pH
value outside of the range of about 5 to about 9.

(Id.)
Appellants further contend that because detergent formulas 1 and 2 of
Sajic do not contain methyl ester sulfonate, the Examiner is incorrect in
considering the teachings regarding those compositions relevant to
Appellants‟ claimed processes (Reply Br. 2). Moreover, Appellants note,
Sajic is “directed towards compositions that are clear in both the
concentrated form and at the high dilution required for use” whereas Sajic‟s
“Formulation 1 is noted to be hazy in appearance when diluted in water”
unlike Formulations 2 and 3 (id.). Accordingly, Appellants reason, an
ordinary artisan reading Sajic “would consider formulation 1 to be a less
preferred embodiment when considered along with formulations 2 and 3”
(id. at 3).
As the Supreme Court pointed out in KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 428 (2007):
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
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the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.

Id. at 421.
The Court also advised that, in determining whether the prior art
supplied a reason for practicing the claimed subject matter, the analysis
“need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id. at
418; see also id. at 421 (“A person of ordinary skill is . . . a person of
ordinary creativity, not an automaton.”).
Appellants‟ arguments do not persuade us that the Examiner erred in
concluding that an ordinary artisan would have considered the claimed
process prima facie obvious in view of Sajic.
Appellants‟ claim 1 is directed to a process for manufacturing a
methyl ester sulfonate-containing liquid detergent composition by mixing a
methyl ester sulfonate-containing feed composition with a bulk composition.
Claim 1 requires the pH of the methyl ester sulfonate feed composition, as
well as the bulk composition, and resulting mixture, to be from about 5 to
about 9. Claim 1 also requires the temperature of each of the feed, bulk, and
final mixture to be from about 20°C to about 100°C.
Sajic discloses that when a divalent cation is included in detergent
compositions having specific ratios of alpha-sulfonated alkyl esters of fatty
acids and auxiliary surfactants, “the composition demonstrates surprisingly
improved cleaning and grease cutting at dilute concentrations. Moreover,
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such compositions are unexpectedly clear at both high and low water
dilution even when they comprise divalent salts of various anionic
surfactants without a traditional hydrotope” (Sajic, col. 2, l. through col. 3, l.
2).
The “mono-salt of an alpha-sulfonated methyl ester of a fatty acid
having from 8-20 carbon atoms” is among the surfactants included in Sajic‟s
detergents (id. at col. 3, ll. 5-7). Sajic further discloses that its liquid product
formulations have a pH “most preferably from about 6.0 to 7.0. Techniques
for controlling pH at recommended usage levels include the use of buffer,
alkali, acids, etc., and are well known to those skilled in the art” (id. at col.
9, ll. 4-7).
Sajic explains that its liquid compositions are prepared by forming
two initial compositions, (1) a “surfactant paste” that contains the surfactant
component of the composition, the paste ideally being “pumpable at room or
elevated temperatures” and (2) “[s]eparately in a large mixing vessel . . .
three quarters of the water of the formulated product, one half of the alcohol
of the formulated product, and any required hydrotopes (e.g., xylene,
cumene, toluene sulfonates)” (id. at col. 18, ll. 56-64).
Sajic further discloses that its detergent-improving divalent cation,
which may be magnesium, can be added to the surfactant paste, and the “pH
of the magnesium-containing surfactant paste is then adjusted by using an
additional amount of an MgO, Mg(OH)2, NaOH or KOH solution” (id. at
col. 19, ll. 10-12), after which the ingredients are mixed to prepare the final
product:
The mixture is mixed until a homogenous, clear solution
product is obtained. Additional water, alcohol, and any desired
additional hydrotropes (added as a solution) may then be added
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to trim the solution product viscosity to the desired level,
normally from 50-1000 cps, and ideally between 200 and 700
cps, as measured by a Brookfield viscometer at 70º F. The pH
of the solution product is then adjusted with either citric acid or
NaOH to a level of 6.0 to 7.0 for formulas containing
ammonium ions, and 7.5 ± 1.5 for formulas substantially free
from ammonium ions.

(Id. at col. 19, ll. 14-25.)
Regarding temperature, Sajic discloses that in preparing its
Formulation 3, the mixture was heated to 140-150 º F. and then cooled to 90º
F. (id. at col. 19, ll. 35-48), which is undisputedly within Appellants‟
claimed range of 20 to 100 º C. Sajic discloses that the heating step used to
prepare Formulation 3 “is required to prepare a clear formulation. In certain
embodiments, there is no need for heating the mixture” (id. at col. 20, ll. 1-
3).
Given Sajic‟s teaching that its final liquid detergent product
preferably has a pH of 6 to 7, we conclude that an ordinary artisan practicing
Sajic‟s invention, being a person of ordinary creativity, would have
considered it obvious to ensure that the components combined to prepare
that composition were also within that preferred pH range.
We acknowledge that the pH of Sajic‟s Formulation 3 was 4.3 after
mixing (see id. at col. 20, l. 33), thus suggesting that one or the other of the
mixed components was outside Appellants‟ claimed range of about 5 to 9.
It is well settled, however, that “in a section 103 inquiry, „the fact that a
specific [embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.‟” Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA
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1976)); see also In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“All the
disclosures in a reference must be evaluated, including nonpreferred
embodiments, and a reference is not limited to the disclosure of specific
working examples.” (citations omitted)).
Thus, it may be true that Sajic contains an example of a methyl ester
sulfonate-containing liquid detergent composition, Formulation 3, in which
the pH is adjusted to the preferred range after final mixing (see Sajic, col.
19, ll. 45-48). However, Sajic also more generally suggests that the
surfactant paste, which contains the methyl ester sulfonate, can be pH-
adjusted prior to final mixing (see id. at col. 19, ll. 10-12 (“The pH of the
magnesium-containing surfactant paste is then adjusted by using an
additional amount of an MgO, Mg(OH)2, NaOH or KOH solution.”)).
Given these teachings, we are not persuaded that an ordinary artisan,
advised by Sajic that its final product preferably had a pH of 6 to 7, would
have failed to consider it obvious to ensure that, before mixing, the two
components ultimately combined to make the final product were also within
the desired pH range. We are therefore also not persuaded that the Examiner
erred in concluding that an ordinary artisan would have considered a process
having the parameters recited in claim 1 prima facie obvious.
As Appellants point to no unexpected results or other secondary
considerations that might rebut the Examiner‟s prima facie case, we affirm
the Examiner‟s obviousness rejection of claim 1 over Sajic. Claims 2-21 fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

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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).

AFFIRMED

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