Ex Parte Fung et al

Board of Patent Appeals and Interferences

Jul 17, 2007

11058147 (B.P.A.I. Jul. 17, 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is not binding precedent of the Board.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 KENT K. FUNG,
DENNIS B. JENKINS, WENDY L. PING,
DANIEL E. WHEELER, and RAMESH HERNLEM
__________

Appeal 2007-2028
Application 11/058,1471
Technology Center 3600
__________

Decided: July 17, 2007
__________

Before ERIC GRIMES, NANCY J. LINCK, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to animal
litter compositions. The Examiner has rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Application Serial No. 10/215,174 is also on appeal before the Board as
Appeal No. 2007-2814.
Appeal 2007-2028
Application 11/058,147

BACKGROUND
“A major problem with the absorbent materials [used in pet litter
boxes] is that after a relatively short period of time, the . . . soiled absorbent
emits objectionable odors . . .” (Specification 1). When the odors “become
intolerable, the homeowner discards the absorbent material. The homeowner
then washes the litter box and refills it with fresh absorbent material. These
activities are, however, unpleasant, time-consuming and expensive” (id.).
The Specification discloses “a low cost, litter composition that
substantially reduces the emanation of offensive odors . . .” (id. at 3). In one
embodiment the litter comprises “substantially particulate silica gel material
with a particle size distribution between 1-2 mm and up to 2% of a material
selected from the group consisting of a fixing agent, a colorant agent, an
anti-bacterial agent, a fragrance, a supplemental absorbent material, an odor-
controlling/inhibiting active, and mixtures thereof” (id.).
DISCUSSION
1. CLAIMS
Claims 1-20 are pending and on appeal. Claims 1 and 19 are
representative and read as follows:
1. An animal litter comprising:
a substantially particulate silica gel material with a
particle size distribution between 0.15-2 mm.

19. An animal litter comprising:
a substantially particulate silica gel material with a
particle size distribution between .15-2 mm; and
up to 1% of a material selected from the group consisting
of a fixing agent, a colorant agent, an anti-bacterial agent, an
odor controlling agent, a fragrance and mixtures thereof.

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2. PRIOR ART
The Examiner relies on the following references:
Benjamin US 4,517,919 May 21, 1985
Stanislowski US 5,018,482 May 28, 1991
Cowan US 5,207,830 May 4, 1993
Ito US 5,526,771 Jun. 18, 1996

3. OBVIOUSNESS -- CLAIMS 1-6, 14, 17, and 18
Claims 1-6, 14, 17, and 18 stand rejected under 35 U.S.C. § 103 as
obvious in view of Benjamin (Answer 3).
The Examiner cites Benjamin as disclosing “an animal litter
comprising a particulate silica gel material” (Final Rejection 2). The
Examiner states that one of ordinary skill in the art would have considered it
obvious to use a particle size distribution “between 0.15-2 mm . . . in the
litter of Benjamin et al., since it has been held that where routine testing and
general experimental conditions are present, discovering the optimum or
workable value/ranges until the desired effect is achieved involves only
routine skill in the art” (id.). The Examiner also points out that, at column 6,
line 8, Benjamin “appears to teach a value, i.e. 1mm, within the range as
claimed by Appellant” (Answer 4).
“[W]here there is a range disclosed in the prior art, and the claimed
invention falls within that range, there is a presumption of obviousness.”
Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322, 73
USPQ2d 1225, 1228 (Fed. Cir. 2004). Overlapping ranges also support a
prima facie case of obviousness. See In re Geisler, 116 F.3d 1465, 1469, 43
USPQ2d 1362, 1365 (Fed. Cir. 1997).
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In the instant case Benjamin discloses a “flexible absorbent pad useful
as a liner in animal litter boxes” (Benjamin, col. 1, ll. 61-62). Benjamin
discloses that the pad comprises “a mixture of hydrophilic fibers and
discrete particles of a water-insoluble hydrogel . . . such as silica gels” (id.
at col. 5, ll. 11-30, emphasis added). Regarding the size of the particles to
be used in the flexible absorbent pad, Benjamin discloses that “[p]referred
for use herein are particles having an (weight) average particle size of from
about 50 microns to about 1 mm (id. at col. 5, l. 64, through col. 6, l. 8).
Thus, the range of particle sizes preferred in Benjamin’s flexible
absorbent structure overlaps with the size ranges recited in the rejected
claims. We therefore agree with the Examiner that the claims recite a size
range that would have been prima facie obvious in light of Benjamin.
Appellants argue that the particles discussed by Benjamin at column
5, lines 25-30, and column 6, lines 5-8, are not components of a particulate
litter composition, but are instead ingredients in an absorbent structure
comprised of hydrophilic fibers and discrete silica gel particles (Br. 11-12;2
Reply Br. 11-14). Appellants argue that the flexible absorbent structure is
distinguishable from litter because Benjamin discloses that it can be cut into
pads, or used as a liner at the bottom of a litter box and covered with litter
(Br. 12).
We do not find these arguments persuasive. It is well settled that
“claims in an application are to be given their broadest reasonable
interpretation consistent with the specification and that claim language
should be read in light of the specification as it would be interpreted by one

2 Appeal Brief filed July 26, 2006.
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of ordinary skill in the art.” In re Sneed, 710 F.2d 1544, 1548, 218 USPQ
385, 388 (Fed. Cir. 1983) (citation omitted). We agree with the Examiner
that, when given its broadest reasonable interpretation in light of the
specification, claim 1 encompasses the flexible absorbent pad suggested by
Benjamin.
Specifically, claim 1 recites a litter composition “comprising . . . a
substantially particulate silica gel material with a particle size distribution
between 0.15-2 mm.” As discussed above, Benjamin discloses that the
flexible absorbent pad comprises “a mixture of hydrophilic fibers and
discrete particles of a water-insoluble hydrogel . . . such as silica gels” (id.
at col. 5, ll. 11-30, emphasis added). We agree with the Examiner that, by
disclosing that the flexible structure may contain discrete particles of a
hydrogel such as silica gel, Benjamin meets the limitation in claim 1, that the
litter contains “substantially particulate silica gel material.”
Appellants argue that “one of ordinary skill would not find a
motivation to modify the absorbent pad taught in Benjamin to make the
particulate silica gel animal litter material claimed by Appellants” (Br. 12).
Rather, Appellants argue, Benjamin teaches away from modifying the
flexible absorbent pad to make a particulate litter composition because
Benjamin teaches that the pad may be used as a litter box liner when covered
with conventional litter (id. at 12-14). Appellants argue that modifying the
flexible pad to make a litter composition would defeat the pad’s disclosed
intended purpose (id. at 14-15), and therefore only through hindsight would
one of ordinary skill have been motivated to modify Benjamin’s absorbent
flexible pad (id. at 16-17).
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We do not find Appellants’ arguments persuasive. The rejected
claims do not recite a particulate animal litter composition. Rather, claim 1
recites an animal litter “comprising . . . a substantially particulate silica gel
material with a particle size distribution between 0.15-2 mm” (emphasis
added). For the reasons discussed above, one of ordinary skill need only
have followed the reference’s explicit teachings to arrive at a composition
encompassed by claim 1.
We note that claim 1’s preamble states that the composition is “[a]n
animal litter.” However, it is well settled that an “intended use or purpose
usually will not limit the scope of the claim because such statements usually
do no more than define a context in which the invention operates.”
Boehringer Ingelheim Vetmedica v. Schering-Plough Corp., 320 F.3d 1339,
1345, 65 USPQ2d 1961, 1965 (Fed. Cir. 2003). Thus, a prior art product
capable of performing a claimed intended use will meet the intended use
limitation, even if the prior art does not disclose that the product was
actually put to the intended use. See In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
In the instant case, Benjamin discloses that “[i]f the pads are to be
used as the sol[i]d absorbent material in the litter box, an appropriate amount
of bacteriostat is from about 25 ppm to about 500 ppm by weight of the
absorbent pad” (Benjamin col. 4, ll. 44-47). This statement makes it clear
that Benjamin’s flexible absorbent pad can be used in the intended manner
as a material for absorbing animal waste in an animal litter box. Moreover,
by disclosing that porous absorbent material such as cloth can be used as
litter (Specification 1:30-32), Appellants’ own Specification demonstrates
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that the term “litter” is not limited to particulate materials typical of
commercial cat litter. Thus, Benjamin’s absorbent pad is encompassed by
the term “animal litter,” when claim 1 is given its broadest reasonable
interpretation in light of the Specification.
Appellants argue that Benjamin does not “disclose, teach or suggest”
the claimed particle size distribution (Br. 15). Rather, Appellants argue,
“[t]he disclosed examples of hydrogels to be used as a component of a litter
box pad include silica gels,” whereas the “[a]bsorbent solid materials
suitable for use as animal litters having particle sizes ranging from 2.5 to 13
mm are disclosed in Benjamin” (id. at 15-16). Appellants argue that they
have demonstrated that the claimed range of particle sizes is critical to the
invention (Reply Br. 10-11, 14-15.)
We are not persuaded by these arguments. We agree with Appellants
that Benjamin discloses two discrete products. (See Benjamin, col. 1, ll. 60-
62 (“This invention relates to a solid absorbent material useful as an animal
litter, and to a flexible absorbent pad useful as a liner in animal litter
boxes.”).) We also agree that Benjamin discloses that, in the “animal litter”
material, “[p]article sizes typically range . . . from about 0.25 cm to about
1.3 cm” (id. at col. 3, ll. 18-27).
However, as discussed above, Benjamin also discloses that the
flexible absorbent pad contains discrete particles which may be silica gel,
and that preferred particles have a size of about 50 microns to about 1 mm
(id. at col. 6, ll. 5-8). Thus, Benjamin suggests a silica gel particle-
containing composition useful as litter material that contains particles having
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a size range that overlaps with the claimed range. We therefore agree with
the Examiner that Benjamin suggests the claimed size range.
To summarize, because Benjamin suggests a composition having the
claimed particles in the claimed particle size range, we agree with the
Examiner that one of ordinary skill would have considered claim 1 obvious
over Benjamin. We therefore affirm the Examiner’s obviousness rejection
of claim 1 over Benjamin. “[C]laims 2-18 stand or fall with claim 1” (Br.
10).3 We therefore affirm the rejection of claims 1-6, 14, 17, and 18.
4. OBVIOUSNESS -- CLAIMS 7-9, 11-13, 19, and 20
Claims 7-9, 11-13, 19, and 20 stand rejected under 35 U.S.C. § 103 as
obvious over Benjamin and Cowan (Answer 3). The Examiner reasons that
“[i]t would have been obvious to one having ordinary skill in the art at the
time the invention was made to employ a colorant agent as taught by Cowan
et al. in the litter of Benjamin et al. in order to enhance the appearance of the
litter composition” (Final Rejection 4). The Examiner urges that the amount
of coloring agent recited in the claims would have been obvious “since it has
been held that where routine testing and general experimental conditions are
present, discovering the optimum or workable value/ranges until the desired
effect is achieved involves only routine skill in the art” (id.).
Appellants argue that claim 19 is distinguishable over Benjamin and
Cowan because “one of ordinary skill in the art would not be motivated to

3 The Reply Brief provides a separate heading and argument for every
appealed claim (Reply Br. 10-22), but Appellants’ failure to argue the claims
separately in the Appeal Brief “constitute[s] a waiver of any argument that
the Board must consider the patentability of any grouped claim separately.”
37 C.F.R. § 41.37(c)(1)(vii).
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use the teachings of Cowan to modify the color of the absorbent pad-like
structure, which, as previously discussed, is intended to be covered by
conventional litter material in order to enhance its appearance” (Br. 18).
Appellants argue that the Examiner’s assertion that determining the suitable
amount of pigment or dye for use would have been routine amounts to an
improper “obvious to try” rationale (id. at 18-19). Appellants argue that
because silica gel is yellow, one of ordinary skill in the art would not have
been motivated to change the color of Benjamin’s absorbent, since its
ultimate destination was a litter box (Reply Br. 17).
We are not persuaded by these arguments. The Supreme Court
recently rejected the idea that “obvious to try” is a per se improper standard
of obviousness. KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397 (“The same
constricted analysis led the Court of Appeals to conclude, in error, that a
patent claim cannot be proved obvious merely by showing that the
combination of elements was ‘obvious to try.’”). Emphasizing a flexible
approach to the obviousness analysis, the Court noted that “[a] person of
ordinary skill is . . . a person of ordinary creativity, not an automaton.” Id.
Thus, the analysis under 35 U.S.C. § 103 “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 1741, 82 USPQ2d at 1396.
In our view, one of ordinary skill, being one of ordinary creativity,
would have recognized that it was desirable to have litter compositions and
accessories with attractive appearances (e.g., for marketing purposes), even
if they were ultimately to be covered by other materials. We therefore agree
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with the Examiner that one of ordinary skill, recognizing from Cowan that
dyes and pigments are conventionally used in litter compositions, would
have considered it obvious to enhance the appearance of Benjamin’s
particle-containing absorbent pad by applying dyes or pigments to it. Also,
Benjamin’s statement that “[i]f the pads are to be used as the sol[i]d
absorbent material in the litter box, an appropriate amount of bacteriostat is
from about 25 ppm to about 500 ppm by weight of the absorbent pad”
(Benjamin col. 4, ll. 44-47), suggests that the absorbent pad could be used by
itself uncovered in a litter box, which would also have suggested making it
attractive by adding color to it.
Also, because Benjamin discloses that the absorbent pad could contain
as much as 98 % fiber material in addition to silica gel (Benjamin, col. 5, ll.
11-15), we do not agree that the yellow color of silica gel would have
dissuaded one of ordinary skill from coloring Benjamin’s pad. Thus, we
agree with the Examiner that one of ordinary skill would have considered
claim 19 obvious over Benjamin and Cowan.
Appellants argue that claim 20 uses the transitional phrase “consisting
essentially of” to recite the claimed composition (Br. 20). Appellants argue
that Benjamin’s composition has hydrophilic fibers, and that Cowan’s
compositions may contain other ingredients in addition to the ingredients
recited in claim 20, and that these references therefore do not suggest the
claimed composition (id.).
We do not find these arguments persuasive. “By using the term
‘consisting essentially of,’ the drafter signals that the invention necessarily
includes the listed ingredients and is open to unlisted ingredients that do not
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materially affect the basic and novel properties of the invention.” PPG
Indus. Inc. v. Guardian Indus. Corp, 156 F.3d 1351, 1354, 48 USPQ2d
1351, 1353-54 (Fed. Cir. 1998). Moreover, Appellants bear the burden of
establishing that the ingredients present in the prior art composition are
excluded by the “consisting essentially of” claim language. In re De
Lajarte, 337 F.2d 870, 874, 143 USPQ 256, 258 (CCPA 1964).
In the instant case Appellants do not provide, and we do not see, any
evidence that the hydrophilic fibers that would be present in a colored
version of Benjamin’s absorbent pad would affect the basic and novel
properties of the invention. To the contrary, as discussed above, the
Specification discloses that Appellants’ litter compositions may contain up
to 60% by weight of various supplemental absorbent materials similar to
those employed in Benjamin’s fibers, including paper, cellulosic webs, and
polymeric fibrous webs (Specification 11:6-21). This suggests that such
materials would not affect the basic and novel properties of the claimed
invention. We therefore agree with the Examiner that one of ordinary skill
would have considered claim 20 obvious over Benjamin and Cowan.
We affirm the rejection of claims 19 and 20. The Appeal Brief
provides no separate argument for claims 7-9 and 11-13. These claims
therefore fall with claims 19 and 20.
5. OBVIOUSNESS -- CLAIM 10
Claim 10 stands rejected under 35 U.S.C. § 103 as obvious over
Benjamin, Cowan, and Ito (Answer 3). The Examiner urges that, although
neither Benjamin nor Cowan teaches the use of the dyes of claim 10 in
coloring a litter composition, “[i]t would have been obvious to one having
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ordinary skill in the art at the time the invention was made to employ a dye
as taught by Ito in the litter of Benjamin et al. as modified by Cowan et al. in
order to enhance the appearance of the litter” (Final Rejection 5).
Appellants do not argue this ground of rejection in the Appeal Brief,
the only reference to claim 10 being that “claims 2-18 stand or fall with
claim 1” (Br. 10).
We agree with the Examiner that one of ordinary skill would have
considered claim 10 obvious over the cited references. Claim 10 requires
the claimed litter composition to have a colorant agent which may be a
quinoline dye. Ito discloses that animal litter material can be pigmented
with a number of coloring agents, including “quinoline blue . . . [and]
quinoline green” (Ito col. 3, ll. 3-10).
As discussed above, we agree with the Examiner that one of ordinary
skill, recognizing from Cowan that dyes and pigments are conventionally
used in litter compositions, would have considered it obvious to enhance the
appearance of Benjamin’s particle-containing absorbent pad by applying
dyes or pigments to it, such as the dyes disclosed by Ito. We therefore
affirm the Examiner’s obviousness rejection of claim 10.
6. OBVIOUSNESS -- CLAIMS 15 AND 16
Claims 15 and 16 stand rejected under 35 U.S.C. § 103 as obvious
over Benjamin and Stanislowski (Answer 3). The Examiner urges that “[i]t
would have been obvious to one having ordinary skill in the art at the time
the invention was made to employ an encapsulated fragrance as taught by
Stanislowski et al. in the litter of Benjamin et al. in order to provide the litter
with a pleasant odor” (Final Rejection 5).
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Appellants do not argue this ground of rejection in the Appeal Brief,
the only reference to claims 15 and 16 being that “claims 2-18 stand or fall
with claim 1” (Br. 10).
Claims 15 and 16 together require the claimed litter composition to
have an encapsulated fragrance. Stanislowski discloses that, in animal
litters, “fragrances . . . to mask odors can be used. The fragrances can be
uncoated . . . or encapsulated” (Stanislowski col. 6, ll. 23-25). We agree
with the Examiner that one of ordinary skill, recognizing that Benjamin’s
absorbent material was to be used in a litter box, would have also recognized
the desirability of including Stanislowski’s odor-masking encapsulated
fragrance in the absorbent material. We therefore affirm the obviousness
rejection of claims 15 and 16.
SUMMARY
We affirm the Examiner’s rejection of claims 1-6, 14, 17, and 18 as
obvious over Benjamin.
We affirm the Examiner’s rejection of claims 7-9, 11-13, 19, and 20
as obvious over Benjamin and Cowan.
We affirm the Examiner’s rejection of claim 10 as obvious over
Benjamin, Cowan, and Ito.
We affirm the Examiner’s rejection of claims 15 and 16 as obvious
over Benjamin and Stanislowski.

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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

Ssc

ROGER V. LEE
THE CLOROX COMPANY
P.O. BOX 24305
OAKLAND, CA 94623-1305
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