Ex Parte Enomoto et al

Board of Patent Appeals and Interferences

Jul 25, 2007

10258067 (B.P.A.I. Jul. 25, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte TAKASHI ENOMOTO, IKUO YAMAMOTO,
NORIHITO OTSUKI, TERUYUKI FUKUDA,
and KAYO KUSUMI
______________

Appeal 2007-1888
Application 10/258,067
Technology Center 1700
_______________

Decided: July 25, 2007
_______________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and
CHARLES F. WARREN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting for at least the second time claims 1 and 3
through 22 in the Office action mailed July 1, 2005. 35 U.S.C. §§ 6 and
134(a) (2002); 37 C.F.R. § 41.31(a) (2005).
We affirm the decision of the Primary Examiner.
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Application 10/258,067
Claims 1 and 11 illustrate Appellants’ invention of a method of
preparing a treated textile and a water- and oil-repellent agent for use in the
method, and are representative of the claims on appeal:
1. A method of preparing a treated textile, comprising steps of:
(1) preparing a treatment liquid comprising a water- and oil-repellent
agent,
(2) adjusting pH of the treatment liquid to at most 7,
(3) applying the treatment liquid to a textile,
(4) subsequent to applying the treatment liquid, treating the textile
with steam, and
(5) washing the textile with water and dehydrating the textile,
wherein the water- and oil-repellent agent comprises at least one
fluorine-containing compound selected from the group consisting of a
fluorine-containing polymer and a fluorine-containing low molecular weight
compound, and the water- and oil-repellent agent or the treatment liquid
contains an organic salt which is a metal salt of an organic acid, provided
that if the organic acid is a carboxylic acid, the organic acid is at least one
selected from the group consisting of formic acid, acetic acid, oxalic acid,
phthalic acid, citric acid, propionic acid and butyric acid, and if the organic
acid is acetic acid, the metal salt of acetic acid is sodium acetate.
11. A water- and oil-repellent agent for use in a method of treating a
textile, comprising steps of:
(1) preparing a treatment liquid comprising a water- and oil-repellent
agent,
(2) adjusting pH of the treatment liquid to at most 7,
(3) applying the treatment liquid to a textile,
(4) subsequent to applying the treatment liquid, treating the textile
with steam, and
(5) washing the textile with water and dehydrating the textile,
wherein the water- and oil-repellent agent comprises at least one
fluorine-containing compound selected from the group consisting of a
fluorine-containing polymer and a fluorine-containing low molecular weight
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Application 10/258,067
compound, and the water- and oil-repellent agent or the treatment liquid
contains an organic salt which is a metal salt of an organic acid, provided
that if the organic acid is a carboxylic acid, the organic acid is at least one
selected from the group consisting of formic acid, acetic acid, oxalic acid,
phthalic acid, citric acid, propionic acid and butyric acid, and if the organic
acid is acetic acid, the metal salt of acetic acid is sodium acetate.
The Examiner relies on the evidence in these references:
Nguyen US 5,759,431 Jun. 2, 1998
Jones US 5,851,595 Dec. 22, 1998
Appellants request review of the ground of rejection of claims 1 and 3
through 22 under 35 U.S.C. § 103(a) as obvious over Nguyen in view of
Jones (Br. 9; Answer 3-6).
Appellants argue the claims as a group (Br. 10-12). Thus, we decide
this appeal based on independent claims 1 and 11. 37 C.F.R.
§ 41.37(c)(1)(vii)(2005).
The Examiner contends the teachings of Nguyen differ from the
claimed invention encompassed by the claims in that the reference does not
teach the claimed method step of treating a textile with steam subsequent to
applying thereto the treatment liquid of a stain resistant compound and a
fluorochemical (Answer 5). The Examiner finds Jones teaches a method
step of treating a textile with steam subsequent to applying thereto the
treatment liquid of a stain resistant compound and a fluorochemical to
improve exhaustion and efficiency of the method (id. 5-6 and 7). The
Examiner concludes it would have been obvious to modify the teachings of
Nguyen by using the method of Jones in applying the treatment liquid to a
textile to obtain the benefits taught by Jones (id. 6).
Appellants contend the motivation to combine Nguyen and Jones is
not found in the references as applied by the Examiner, arguing that “both
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the steam-heating step of Jones and the immersing step of Nguyen perform a
similar function, i.e., imparting stain resist properties to fiber,” and thus,
“one of ordinary skill would not have been motivated to utilize an additional
and unnecessary step, i.e., stream treatment, in the process of Nguyen” (Br.
10-12). Appellants further contend that “one of ordinary skill would not
have been motivated to replace the single immersing step of Nguyen (heated
bath) with both application (at ambient temperature) and steam treating,
[with] the two-step process of Jones” (Br. 12, original emphasis omitted;
Reply Br. 4-5).
The issue in this appeal is whether the Examiner has carried the
burden of establishing a prima facie case of obviousness by combining
Nguyen and Jones.
The plain language of method claim 1 specifies a method of treating
any manner of textile comprising at least the five stated steps, including
treating the textile in any manner with a treatment liquid comprising at least
a water- and oil-repellent agent and then further treating the treated textile
with steam. The water- and oil-repellent agent comprises at least any
fluorine-containing polymer and/or fluorine containing low molecular
weight compound, and any metal salt of any “organic acid” wherein the
carboxylic acids falling under this term are limited as stated. The plain
language of product claim 11 specifies a water- and oil-repellent agent of the
scope specified in claim 1, which has the capability to be used in any method
comprising at least the same five steps specified in claim 1. It is well settled
that the term “comprising” opens the claim to include embodiments having
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composition ingredients and process steps in addition to those specified.
See, e.g., Exxon Chem. Pats., Inc. v. Lubrizol Corp.,
64 F.3d 1553, 1555, 35 USPQ2d 1801, 1802 (Fed. Cir. 1995); In re Baxter,
656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981).
We find Nguyen would have disclosed to one of ordinary skill in this
art a stain resistant and water- and oil- repellent agent containing
composition comprising a sulphated or sulphonated surfactant for
application to textiles, wherein the composition can contain, among other
things, polymers and copolymers of methacrylic acid (Nguyen, e.g., col. 3,
l. 1, to col. 4, l. 14); partially sulphonated novolak resins (id., e.g., col. 4,
ll. 15-60); anionic or nonionic fluorochemicals (id., e.g., col. 7, l. 51, to
col. 8, l. 12); sodium metal salts of organic sulfate acids and organic sulfonic
acids (id., e.g., col. 4, l. 61, to col. 5, l. 51, and Example 2); and divalent
metal salts of organic acids, including acetates and formats (id., e.g., col. 7,
ll. 8-20). We find Nguyen would not have specified any particular method
of applying the composition to a textile, and illustrates a method of applying
the composition to a textile and optionally drying the treated textile with
heat which can cure the fluorochemicals (id., e.g., col. 2, ll. 30-44, col. 8, ll.
19-33, col. 11, ll. 17-29, col. 13, ll. 44-66, and
col. 14, ll. 19-54). We find no disclosure in Nguyen specifying the
composition must be heated prior to applying the composition it to the
textile.
We find Jones would have disclosed to one of ordinary skill in this art
a method of treating a carpet textile with a stain resistant and water- and oil-
repellent agent containing composition, wherein the method comprises at
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least the five steps specified in appealed claims 1 and 11, including treating
the carpet textile in any manner with the composition and then further
treating the treated textile with steam (Jones, e.g., col. 3, ll. 35-46, col. 4,
l. 48, to col. 5, l. 38, col. 8, ll. 33-43, and col. 9, ll. 8-21). We find Jones
discloses a stain resistant and water- and oil- repellent composition useful in
the method that can contain, among other things, polymers and copolymers
of methacrylic acid (id., e.g., col. 3, l. 48, to col. 4, l. 19, and col. 4,
ll. 33-42); sulphonated novolak resins (id., e.g., col. 4, ll. 20-28); and anionic
or nonionic fluorochemicals (id., e.g., col. 3, ll. 13-34). Jones discloses that
the heat treatment of the treated textile, which can be accomplished with
steam, improves exhaustion of the fluorochemical onto the fiber which
improves method efficiency and can cure or fix the fluorocarbon to the
textile (id., e.g., col. 5, ll. 12-28).
We find Nguyen and Jones would have disclosed the same anionic or
nonionic fluorochemicals, methacrylic polymers, and sulphonated novolak
resins in the treatment compositions (Nguyen, e.g., col. 7, l. 58, to col. 8,
l. 3, and col. 4, ll. 11-14 and 30-35; Jones, e.g., col. 3, ll. 13-28, and col. 4,
ll. 3-8, 20-28, and 33-42).
We determine the combined teachings of Nguyen and Jones, the scope
of which we determined above, provide convincing evidence supporting the
Examiner’s case that the claimed invention encompassed by method claim 1
and product claim 11, as we interpreted this claim above, would have been
prima facie obviousness of to one of ordinary skill in the textile treatment
arts familiar with the application of compositions comprising water- and oil-
repellent agents. The textile treatment compositions disclosed by Nguyen
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Application 10/258,067
fall within the compositions encompassed by claims 1 and 11 and the
methods of applying such compositions disclosed by Jones fall within the
methods encompassed by claims 1 and 11.
Indeed, contrary to Appellants’ contentions, one of ordinary skill in
this art would have recognized that Nguyen’s compositions can be used in
Jones’ methods in view of the commonality of ingredients between
Nguyen’s compositions and the compositions used by Jones to illustrate the
methods disclosed, and the methods of both references apply heat to the
treated textile subsequent to treatment. Thus, as the Examiner contends, this
person would have been motivated to combine Nguyen and Jones leading to
the application of Nguyen’s compositions to textiles via Jones’ methods to
obtain the benefits conferred by the process when using such compositions.
Accordingly, one of ordinary skill in this art routinely following the
combined teachings of Nguyen and Jones would have reasonably arrived at
the claimed methods and products encompassed by claims 1 and 11,
including all of the limitations thereof arranged as required therein, without
recourse to Appellants’ specification. See, e.g., In re Dow Chem. Co.,
837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988) (“The consistent
criterion for determination of obviousness is whether the prior art would
have suggested to one of ordinary skill in the art that [the claimed process]
should be carried out and would have a reasonable likelihood of success,
viewed in light of the prior art.” (citations omitted)); In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981) (“The test for obviousness is
not whether . . . the claimed invention must be expressly suggested in any
one or all of the references. Rather, the test is what the combined teachings
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of the references would have suggested to those of ordinary skill in the
art.”); In re Siebentritt, 372 F.2d 566, 567-68, 152 USPQ 618, 619 (CCPA
1967) (express suggestion to interchange methods which achieve the same
or similar results is not necessary to establish obviousness).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Nguyen and Jones with Appellants’ countervailing
evidence of and argument for nonobviousness and conclude that the claimed
invention encompassed by appealed claims 1 and 3 through 22 would have
been obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision 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)(1)(iv) (2006).
AFFIRMED

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