Ex Parte Hernandez

Patent Trial and Appeal Board

Dec 18, 2014

11330447 (P.T.A.B. Dec. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ENRIQUE HERNANDEZ
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Appeal 2013-003025
Application 11/330,447
Technology Center 1700
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Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2013-003025
Application 11/330,447

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–5, 7–13, and 28–39. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellant claims a method for forming a detergent solution
containing an alkali metal silicate with a degree of polymerization regulated
using pH. Spec. 1. Claims 1 and 28, which are the sole independent claims,
are illustrative (key limitations in dispute italicized):
1. A method for forming a detergent solution in which the
degree of polymerization of an alkali metal silicate in the
detergent solution is regulated during detergent formation and
use, the method comprising:
forming a detergent solution of an alkali metal silicate;
regulating the pH of the detergent solution to be
approximately a selected pH, wherein the selected pH is at least
about 11; and
limiting polymerization of the alkali metal silicate in the
detergent solution to a desired degree of polymerization using
the selected pH, wherein the detergent solution retains at least
the desired degree of polymerization during use.

28. A method for regulating the degree of polymerization of an
alkali metal silicate, the method comprising:
forming a solution of an alkali metal silicate;
regulating the pH of the solution to be approximately a
selected pH, wherein the selected pH is at least about 11; and
limiting polymerization of the alkali metal silicate to a
desired degree of polymerization using the selected pH.
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Application 11/330,447

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The References1
Shaver US 3,471,253 Oct. 7, 1969
Deabriges US 4,336,235 June 22, 1982
Ahmed US 2006/0089285 A1 Apr. 27, 2006
Manning, Jr. US 2009/0311136 A1 Dec. 17, 2009

The Rejections2
The claims stand rejected under 35 U.S.C. § 102 as follows: claims
28–30, 32–37, and 39 as anticipated by Shaver; claims 28–37 and 39 as
anticipated by Deabriges; claims 1–5, 7–13, and 28–39 as anticipated by
Manning; and claims 1–5, 7–11, 13, 28–37, and 39 as anticipated by Ahmed.
Ans. 5–9; Action 5, 8, and 9.

1 Additional references identified in the non-final Office Action dated April
26, 2012 (“Action”), from which this appeal is taken, are not included
because the Examiner has withdrawn the rejections based on those
references as cumulative. Ans. 4.
2 Claims 1 and 28 were rejected under 35 U.S.C. §112, first paragraph, as
not enabled for “regulating” the pH and “limiting” polymerization (Action
3) and under 35 U.S.C. § 112, second paragraph, as indefinite for the same
terms (id. at 4). In the Answer, the Examiner does not include the Section
112 rejections among the grounds of rejection applicable to the appealed
claims (Ans. 5–9), nor does the Examiner address Appellant’s arguments
concerning Section 112 in the Response to Argument section of the Answer
(id. at 9–12). Therefore, we understand the Section 112 rejections to be
withdrawn as well. We agree with Appellant that claims 1 and 28 “refer to a
specific factor, the pH, being used to limit the degree of polymerization.”
Br. 3. Other factors besides pH can affect polymerization, but those factors
are not required or precluded by the claims. See id. at 3–4. In sum, we
agree with Appellant that the terms “regulating the pH” and “limiting
polymerization” as used in claims 1 and 28 are not one and the same thing
(see id. at 4) and that the claims satisfy Section 112.
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Application 11/330,447

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OPINION
We reverse the Section 102 rejections of anticipation by Shaver and
Deabriges. We affirm the Section 102 rejections of anticipation by Manning
and Ahmed. We need to address only the independent claims (1 and 28).

Anticipation by Shaver
The Examiner finds that “Shaver teaches a 70 wt% concentrated
sodium hydroxide solution added to a sodium silicate solution to obtain a
sodium metasilicate solution that has a Na2O:SiO2 molar ratio of 1:1 (col. 4,
example 1). The examiner notes that this highly caustic solution will result
in a pH within the range claimed.” Action 5. The Examiner also finds “as a
metasilicate is formed which has a ratio of 1:1, clearly the polymerization
has been limited to achieve this ratio.” Id.
Appellant contends that the Examiner “has provided no rationale or
evidence as to why a caustic solution must necessarily have a pH of at least
about 11.” Br. 5. Appellant also argues that the Examiner has not shown
that Shaver teaches controlling polymerization using pH. Id. at 6. Appellant
explains that Shaver is concerned with solubility of sodium metasilicate in
the solution because if it is not soluble, then it precipitates. Id. Appellant
cites the Specification as support for the statement that the degree of
polymerization may affect precipitation, but it is not the only factor. Id.
(citing Spec. 5, ll. 7–9.) Similarly, Appellant argues that the molar ratios of
component parts in a solution cannot anticipate limiting polymerization
using a selected pH because a variety of factors may affect the degree of
polymerization, therefore Shaver does not inherently disclose using the
claimed pH to limit polymerization as required by claim 28.
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Application 11/330,447

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The Examiner responds by maintaining “it is irrefutable that the
highly alkaline solution of Shaver will have a pH well above 11” without
support or analysis why the caustic solution of Shaver is necessarily at least
about pH 11. See Ans. 9.
We agree with Appellant that the Examiner has not established by a
preponderance of evidence that Shaver discloses either expressly or
inherently a pH of at least about 11. Therefore, we reverse the rejection of
claims 28–30, 32–37, and 39 as anticipated by Shaver.
Anticipation by Deabriges
The Examiner finds that Deabriges teaches “a sodium hydroxide
solution and sodium carbonate added to sodium silicate to obtain a sodium
silicate that has a SiO2:Na2O molar ratio in the 1.7-2.6 range (col. 2, lines
26-40). The examiner notes that this highly caustic solution will result in a
pH within the range claimed.” Action 8.
The Appellant argues that the Examiner has not shown how a specific
pH may be calculated from the disclosure of Deabriges. Br. 13. Appellant
also argues that although molar ratio is a factor that may affect
polymerization of an alkali metal silicate, it has not been shown that the
caustic soda that Deabriges uses to dissolve a silicon source (quartz) is also
used to limit polymerization using a selected pH. Id.
The Examiner responds “it is irrefutable that the highly alkaline
solution of Deabriges will have a pH well above 11” without support or
further explanation how the pH range of Deabriges is determined. See Ans.
10. The Examiner also responds that because Deabriges produces a sodium
silicate with a preferred reduced degree of polymerization according to table
1 in the Specification, all of the “claim limitations are satisfied.” Id.
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Application 11/330,447

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We agree with Appellant that it has not been established by a
preponderance of evidence that Deabriges’ caustic solution has a pH that is
at least about 11. Without a determination that the pH condition required by
claim 28 is met by Deabriges, the molar ratio of the sodium silicate product
cannot be said to inherently be the result of limiting polymerization using
the pH required by the claim. Therefore, we reverse the rejection of claims
28–37 and 39 as anticipated by Deabriges.
Anticipation by Manning
The Examiner finds that Manning teaches “an antibacterial cleaning
composition comprising a surfactant, enzymes, sodium silicate, sodium
hydroxide, and the balance water wherein the composition has a pH of
13.5.” Action 9 (citing Manning ¶ 93, Ex. VII.) The Examiner further finds
that a metasilicate would be formed inherently by the process of Manning
because it teaches a detergent and silicate and the claimed pH conditions.
Id.
Appellant contends that because pH is not the only factor that controls
the degree of polymerization, a metasilicate is not necessarily formed in
Manning’s process as required by claims 1 and 28. Br. 16. Regarding claim
1, Appellant further argues that the selected pH in the detergent does not
indicate “retention of a desired degree of polymerization of an alkali metal
silicate during use of the detergent solution.” Id. at 17.
The Examiner responds that the claims at issue specifically require pH
as the factor limiting polymerization and do not require the presence or
absence of any other condition that would limit polymerization. Ans. 10–11.
We are persuaded that the preponderance of the evidence supports the
Examiner’s finding of anticipation by Manning because the claimed
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components and conditions required by the claims are present in Manning’s
process for forming a detergent solution with a pH of at least about 11.
Anticipation by Ahmed
The Examiner finds that Ahmed teaches “a detergent composition
comprising a bleach, potassium silicate, potassium hydroxide, and the
balance water wherein the composition has a pH of 13.97.” Action 10
(citing Ahmed ¶ 58, Table 18.) As in the rejection based on Manning, the
Examiner further finds that a metasilicate would be formed inherently by the
process of Manning because it teaches a detergent and silicate and the
claimed pH conditions. Id.
Appellant contends that because pH is not the only factor that controls
the degree of polymerization, a metasilicate is not necessarily formed in
Manning’s process as required by claims 1 and 28. Br. 17. Regarding claim
1, Appellant further argues that the selected pH in the detergent does not
indicate “retention of a desired degree of polymerization of an alkali metal
silicate during use of the detergent solution.” Id. at 18.
The Examiner responds that the claims at issue specifically require pH
as the factor limiting polymerization which is present in the Ahmed process.
Ans. 11–12.
We are persuaded that the preponderance of the evidence supports the
Examiner’s finding of anticipation by Ahmed because the claimed
components and conditions required by the claims are present in Ahmed’s
process for forming a detergent solution with a pH of at least about 11.

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Application 11/330,447

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DECISION/ORDER
The rejections under 35 U.S.C. § 102 of claims 28–30, 32–37, and 39
as anticipated by Shaver and claims 28–37 and 39 as anticipated by
Deabriges are reversed. The rejections under 35 U.S.C. § 102 of claims 1–5,
7–13, and 28–39 as anticipated by Manning and claims 1–5, 7–11, 13, 28–
37, and 39 as anticipated by Ahmed are affirmed.
It is ordered that the 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).

AFFIRMED

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