Ex Parte Hei et al

Board of Patent Appeals and Interferences

Sep 11, 2007

10097232 (B.P.A.I. Sep. 11, 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today is not binding precedent of the Board.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 ROBERT D.P. HEI, STEPHAN M. HUBIG,
and MATTHEW J. FINLEY
____________

Appeal 2006-3208
Application 10/097,232
Technology Center 1600
____________

Decided: September 11, 2007
____________

Before DONALD E. ADAMS, LORA M. GREEN, and NANCY J. LINCK,
Administrative Patent Judges.
LINCK, Administrative Patent Judge.

DECISION ON APPEAL
This is a 35 U.S.C. § 134 appeal in the above-referenced case.1
We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b).

1 The application was filed March 12, 2002. The real party in interest is
Ecolab Inc.
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Application 10/097,232

STATEMENT OF THE CASE
The field of the invention is lubricants, more specifically
antimicrobial lubricants.
Prior art conveyor lubricants “permit high-speed operation of the
conveyor” but “some conveyor lubricants can promote the growth of
microbes, leading to possibly unhealthy conditions on the conveyor line or
in the filled containers” (Specification (hereafter “Spec.”) 1). Appellants
add a singlet oxygen-generating agent to prior art conveyor lubricants to
address this problem. Singlet oxygen is generated in situ by a generating
agent, preferably a photochemical generator, such as a dye (Spec. 4-6).
Appellants’ examples are made by adding a photo-activator dye (Toluidine
Blue) to a “commercial aqueous lubricant” such as MICROGLIDE™ or
KX-5120™ beverage container lubricant, both products of Ecolab Inc. (id.
at 17-23).
The claimed subject matter is reflected in independent claim 1:
1. An antimicrobial beverage conveyor lubricant
composition comprising a singlet oxygen-generating agent
and sufficient lubricant to provide a lubricant coating having
a coefficient of friction less than about 0. 14 and permitting
high-speed movement of blow-molded polyethylene
terephthalate containers along a beverage conveyor.
The Examiner has rejected claims 1-19 and 59-65 under 35 U.S.C.
§ 103(a) over the following references:
Goodrich, Jr, et al. U.S. 6,277,337 B1 Aug. 21, 20012
Li et al. U.S. 6,207,622 B1 Mar. 27, 2001
Alder et al. U.S. 4,990,232 Feb. 5, 1991

2 The listed dates are issue dates.
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We further rely on the Safety Data Sheet for an aqueous
DICOLUBE™ Conveyor belt lubricant, sold by Johnson Diversey
(MSDS1999) and identified by Appellants (Spec. 9) (hereafter “DICOLUBE
MSDS”) (copy attached).

OBVIOUSNESS UNDER § 103(a)
The § 103(a) Issue: Claim 1
According to the Examiner:
One of ordinary skill in the art would be motivated to make a
lubricant composition containing glycerol as lubricant
because Li disclosed that glycerol is a lubricant . . . . Alder
was relied upon for the disclosure that dyes or
photosensitizers are used for generation of singlet oxygen . . .
. One of ordinary skill would expect to obtain enhanced
antimicrobial action of a lubricant composition containing
glycerol, because Goodrich disclosed that glycerol is an
enhancer of the photochemical action that generates singlet
oxygen for inactivation of microorganisms . . . .
(Answer3 4-5.)
Further, according to the Examiner: “As [an] antimicrobial
composition is the subject matter of the invention, no patentable weight was
given to “. . . permitting high speed movement of blow molded polyethylene
terephthalate containers along a beverage conveyor.” (Answer 5.)
Appellants contend:
Goodrich, Jr. et al. describe[] a blood purification
system [and] use a photosensitive singlet oxygen generation
mechanism to inactivate microorganisms . . . in blood,
constituents derived from blood components or peritoneal

3 Citations to “Answer” are to the Examiner’s Answer (mailed May 17,
2006) in response to the appeal brief filed July 6, 2005.
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solutions . . . , without destroying the biological activity of
proteins, blood or blood constituents . . . .
Goodrich, Jr. et al. nowhere discuss[] lubricants,
lubrication or beverage conveyors. A person having ordinary
skill in the art of beverage conveyor lubrication would have
no reason ever to consult Goodrich, Jr. et al., which involves
blood treatment, a field entirely unrelated to beverage
conveyor lubrication.
(Br.4 13-14; see also Reply5 4-5.)
The Appellants further contend the Examiner “has improperly refused
to consider all words in the claim when judging patentability” by not giving
weight to the claim limitation “permitting high speed movement of blow
molded polyethylene terephthalate containers along a beverage conveyor.”
(Reply 8.)
We agree with Appellants that the Examiner’s findings relating the
Goodrich reference, and his failure to consider functional claim language
require us to reverse the Examiner’s § 103 ground of rejection. While
functional claim language can be satisfied inherently if a prior art
composition is capable of performing the function, the language cannot be
ignored. See, e.g., In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997)
(agreeing with the Board that the functional claim limitation was inherently
met by the prior art).
However, given the record before us, we conclude the teachings of the
cited references are sufficient to support a § 103(a) rejection, in view of the
level of skill and knowledge in the art, as disclosed in Appellants’ and Li’s

4 Citations to “Br.” are to the Appeal Brief (received July 6, 2005).
5 Citations to “Reply” are to the Supplemental Reply Brief (filed July 17,
2006).

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Specifications. Thus, pursuant to 37 C.F.R. § 41.50(b), we enter a new
ground of rejection under § 103(a).
With respect to claim 1, we frame the § 103 issue: Would it have
been obvious to one of ordinary skill in the art at the time Appellants’
claimed invention was made to combine the prior art conveyor lubricants,
identified by Appellants and Li, with Goodrich’s oxygen-generating agents,
i.e., photosensitizers, to destroy microorganisms?

Findings of Fact:6 Conveyor Lubricants
1. Prior art, commercial, conveyor lubricants “permit high-speed
operation of the conveyor” (Li, col. 1, ll. 14-20; Spec. 1 (“Background”)).
2. “Preferred commercially available lubricants include aqueous
lubricants and lubricant concentrates available under the LUBODRIVE, KX-
5120 and MICROGLIDE trademarks from Ecolab [and] available under the
DICOLUBE or STAR TRACK trademarks from Diversey Lever . . . ; oleic
acid, corn oil, mineral oils available under the BACCHUS trademark from
Vulcon Oil and Chemical Products . . . ; the EVERGLIDETM and
ULTRAGLIDETM series of micronized wax powders,” and others (Spec. 9-
10).
3. Li discloses lubricants in the form of aqueous liquids (e.g., col. 7,
ll. 48-51; see also Spec. 9 (describing commercial aqueous lubricants), and
in the form of nonaqueous liquids (see Br. 17 (“compositions of Li . . .
appear to be compositions primarily containing liquids other than water”);
see also Li, col. 3, ll. 1-67 & Spec. 9 (describing prior art non-aqueous
lubricants)).

6 Findings of Fact are abbreviated “FF” or “FFs”.
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4. Commercial lubricants in the form of powders were also available
at the time the invention was made (Spec. 9-10 (“Preferred commercially
available lubricants include . . . the EVERGLIDE™ and ULTRAGLIDE™
series of micronized wax powders . . . available from Shamrock
Technologies Inc; and the . . . series of micronized waxes” and “micronized
fluorocarbon available from Micro Powders Inc.”)).
5. Li’s “lubricant compositions preferably have a coefficient of
friction (COF) that is less than about 0.14, more preferably less than about
0.1” (col. 4, ll. 40-44).
6. Li’s “lubricant composition can . . . be applied to a wide variety of
containers including beverage containers,” and the containers “can be made
of a wide variety of materials including . . . PET” (polyethylene
terephthalate) (col. 4, ll. 52-59).
7. Surfactants “often are employed in conveyor lubricants” (Li, col. 4,
ll. 15-18); and antimicrobials may be added to the lubricants (Li, col. 4, ll.
24-32).
8. In fact, Li discloses and claims compositions containing
surfactants, such as sorbitan esters (col. 3, ll. 10-13; col. 10, ll. 45-47).
9. Li is using a “phase-separating mixture of a hydrophilic lubricating
material and an oleophilic lubricating material,” the reference discourages
the use of certain surfactants to help avoid “[f]ormation of an unstable
mixture and promotion of early phase separation” (claim 6; col. 4, ll. 15-18);
however, such a teaching would not discourage the skilled artisan from
using surfactants generally, particularly in other conveyor lubricants (FFs 5,
6).
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10. Li discloses a solid conveyor lubricant composition deposited on
a bottle in Fig. 1 (identical to Appellants’ Fig. 1) (Li, col. 2, ll. 15-19; col. 2,
ll. 55-58).
11. Li teaches the “lubricant coating should be sufficiently thick to
provide the desired degree of lubrication, and sufficiently thin to permit
economical operation and to discourage drip formation” (col. 5, ll. 45-48).
12. Li further teaches: “The lubricant coating thickness preferably is
maintained at at least about 0.0001 mm, more preferably about 0.001 to
about 2 mm, and most preferably about 0.005 to about 0.5 mm” (col. 5, ll.
48-51); these ranges are identical to those sought by Appellants (Spec. 11-
12).
Findings of Fact: Singlet Oxygen-Generating Agents
13. Goodrich discloses the value of photosensitizers “for inactivation
of microorganisms in fluids or on surfaces,” including “food preparation
surfaces” (Abstract).
14. Goodrich recognizes that some photosensitizers use “singlet
oxygen-dependent mechanisms” (col. 5, ll. 46-47).
15. Goodrich’s photosensitizers include many of those disclosed and
claimed by Appellants, for example, “methylene blue, acridine, toluidines
[and] coumarins” (col. 5, ll. 36-40).
16. Alder discloses additional dyes which are “[s]uitable sensitizers
for producing singlet oxygen,” including xanthene dyes, thiazines
(methylene blue), porphyrins (tetraphenylporphyrin), eosine and
benzophenones (col. 5, ll. 44-54).

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Other Findings
17. Given Goodrich’s teachings regarding the use of photosensitizers
to destroy microorganisms, and Li’s teaching that antimicrobials are a
known additional component of conveyor lubricant compositions, one of
ordinary skill in the art, faced with the problem of microorganisms in
conveyor lubricant compositions, would have been motivated to combine the
teachings of Goodrich with prior art, commercial conveyor lubricant
compositions, including those of Li (FFs 1-7, 10-15).
18. Further, the skilled artisan would have had a reasonable
expectation of success in reducing microorganisms in the prior art lubricant
compositions based on the cited prior art teachings and the level of skill in
the art (Id.).

Discussion of the § 103(a) Issue: Claim 1
Appellants’ claimed invention is a composition formed by combining
an “antimicrobial beverage conveyor lubricant” (which can be a prior art
commercial conveyor lubricant) with a “singlet oxygen-generating agent”
(claim 1). This combination must be able to provide “a lubricant coating
having a coefficient of friction less than about 0.14” and to permit “high-
speed movement of blow-molded polyethylene terephthalate containers
along a beverage conveyor” (id.). Each of these limitations is found in the
cited prior art (FFs 1-6, 10, 13-15). Thus, the issue is whether the
combination of a prior art lubricant having a coefficient of friction less than
about 0.14 and capable of permitting high-speed movement along a
conveyor, as disclosed in Li and Appellants’ Specification, with one of
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Goodrich’s microorganism-destroying photosensitizers would have been
obvious to one of ordinary skill in the art at the relevant time.
The Supreme Court has recently spoken on the “combination of
familiar elements according to known methods . . . when it does no more
than yield predictable results.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727,
1739 (2007). Relevant to the facts in this case, the Court noted, “if a
technique has been used to improve one device,” in Goodrich, using
photosensitizers for inactivating microorganism in body fluids, “and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way,” by inactivating microorganisms in
conveyor lubricants, “using the technique is obvious unless its actual
application is beyond his or her skill.” KSR Int’l, 127 S. Ct. at 1740.
Given the detailed prior art teachings regarding the use of
photosensitizers, the claimed combination would not have been beyond the
level of skill in the art. Id. at 1742 (“A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”). Thus, one skilled in the
art would have been motivated to combine the cited prior art teachings and
would have been able to do so with a reasonable likelihood of success (FFs
17 & 18). The resulting claimed combination would have been no “more
than the predictable use of prior art elements according to their established
functions.” 127 S. Ct. at 1740.
We conclude the invention of claim 1 would have been prima facie
obvious to one of ordinary skill in the art at the time the claimed invention
was made. “Granting patent protection” in the absence of any unexpected
results would “retard[] progress and may . . . deprive prior inventions of
their value or utility.” Id. at 1741.
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Patentability of the Dependent Claims
Appellants separately argue certain claims or groups of claims. We
address these arguments below:
1. CLAIMS 2-5: THE FORM OF THE COMPOSITION
Each of these claims specifies the form of the composition of claim 1:
Claim 2 requires an “aqueous liquid;” claim 3 requires a “non-aqueous
liquid;” claim 4 requires a “powder;” and claim 5, a “shaped or molded
solid.”
Li discloses aqueous and nonaqueous liquids (FF 3). Commercial
lubricants in the form of powders were also available at the time the
invention was made (FF 4). Additionally, Li discloses their conveyor
lubricant composition in the form of a solid in the shape of a portion of the
bottle of Fig. 1 (FF 8).
2. CLAIMS 6-12: SINGLET GENERATING AGENTS
Claim 6 requires a “photochemical singlet oxygen-generating agent,
clearly taught by Goodrich (FFs 13 & 14). Claims 7, 10, and 11 each
require the agent be limited to one of a list of specific dyes, including one or
more taught by Goodrich (FF 15).
Claim 12 limits the amount of the dye. Without evidence of
unexpected results due to the numerical limitations in claim 12, it would
have been within the level of skill in the art to optimize the amount of dye
used. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“Only
if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent
be obtained for the claimed critical range.” (quoting In re Antonie, 559 F.2d
618, 620, 195 USPQ 6, 8 (CCPA 1977)), quoted with approval in In re
Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
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Claim 8 requires “a xanthene dye, thiazine dye or mixture thereof;”
and claim 9 requires “acetonapthone, acetophenone, benzophenone or a
mixture thereof.” In addressing these two claims, we further rely on Alder.
Alder discloses one or more of these claimed dyes, for example, xanthene
dyes and benzophenones (FF 16). Further, the skilled artisan would have
been able to identify well-known, alternative dyes capable of generating
singlet oxygen. See KSR Int’l, 127 S. Ct. at 1741 (“a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ”). Given Goodrich’s teachings regarding using
photosensitizer dyes to destroy microorganisms, the skilled artisan would
have looked to other prior art teachings relating to such dyes, for example,
Alder, and would have applied those teachings to the commercial conveyor
lubricants disclosed in Li and Appellants’ Specification.
3. CLAIMS 13-15 AND 19: CHELATING AGENTS
Claims 13-15 and 19 further limit claim 1 by requiring a chelating
agent (claim 13) in varying amounts (claims 14 &15). Claim 19 further
limits the chelating agent to “ethylene diamine tetraacetate,
tris(hydroxmethyl)aminomethane or a mixture thereof.”
DICOLUBE MSDS discloses “ethylenediamine-tetracetate” in
amounts less that 5%, as an ingredient of DICOLUBE™ Conveyor belt
lubricant (DICOLUBE MSDS 1). Without evidence of unexpected results
due to the numerical limitations in claims 13 and 14, it would have been
within the level of skill in the art to optimize the amount of chelating agent
used. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoted
supra p. 10).
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Further, one skilled in the art would have known to use a chelating
agent to aid in the removal of microorganisms, even without the teachings of
DICOLUBE MSDS. Finally, based on the DICOLUBE MSDS disclosure, it
appears to us more likely than not prior art commercial lubricants at the time
of the invention already contained such chelators. We reject any
unsupported arguments to the contrary.
4. CLAIMS 16-18: A SURFACTANT
Claims 16-18 additionally required a surfactant, with claims 17 and 18
specifying particular amounts of the surfactant. Again, based on the record
before us, it appears the use of surfactants in conveyor lubricants was well
known in the art at the time of Appellants’ invention (see FFs 7-9). Thus,
we conclude many of the commercial products identified by Li and
Appellants would have contained surfactants. As with the chelator
limitations, we reject any unsupported arguments to the contrary. Further,
with respect to claims 17 and 18, absent evidence of unexpected results due
to the recited ranges, optimization of the amount of surfactant would have
been within the skill in the art.
5. CLAIM 60: COEFFICIENT OF FRICTION
Claim 60 requires the coefficient of friction to be “less than about
0.1,” a limitation clearly disclosed in Li (FF 5).
6. CLAIMS 61-65: AMOUNT OF LUBRICANT
Claims 61-65 further limit claim 1 by requiring various amounts of
lubricant, from “at least about 0.1 wt.%” (claim 60) to “about 3 to about 50
wt.%” (claim 64). Li teaches the sought-after characteristics of a conveyor
lubricant (FFs 11 & 12). Appellants seek the same characteristics (Spec. 11-
12). Given Li’s teachings, it would have been within the skill of the art to
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optimize the amount of lubricant accordingly in order to obtain these
characteristics. Thus, again, in the absence of any evidence of unexpected
results, the invention claimed in claims 60 to 65 would have been obvious to
the skilled artisan.
Based on the above, we conclude dependent claims 2-7, 10-19, and
60-65 would have been obvious to one of ordinary skill in the art based on
the teachings of Li and Goodrich. We further conclude claims 8 and 9
would have been obvious based on Li, Goodrich, and Alder. Each of our
obviousness conclusions are further supported by Appellants’ own teachings
regarding prior art commercial conveyor lubricants.

CONCLUSION
We reverse the Examiner’s § 103(a) ground of rejection of claims 1-
19 and 60-65, all the claims on appeal.
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
under § 103(a) as follows: Claims 1-7, 10-19, and 60-65 based on Li and
Goodrich, further in view of the commercial conveyor lubricants disclosed
by Appellants; claims 8 and 9 based on Li, Goodrich, and Alder, further in
view of the commercial conveyor lubricants disclosed by Appellants.

TIME PERIODS FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (2006). 37 C.F.R. § 41.50(b) provides: "A new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."

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37 C.F.R. § 41.50(b) provides:
When the Board makes a new ground of rejection, the
appellant, within two months from the date of the decision,
must exercise one of the following two options with respect
to the new grounds of rejection to avoid termination of the
appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
record. . . . [emphasis added in part]

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).

REVERSED; 37 C.F.R. § 41.50(b)

lbg

IPLM Group, P.A.
Post Office Box 18455
Minneapolis MN 55418
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