Ex Parte Hoots et al

Patent Trial and Appeal Board

Dec 5, 2016

12143400 (P.T.A.B. Dec. 5, 2016)

United States Patent and Trademark Office
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.
12/143,400 06/20/2008 John E. Hoots 716175 (8102US01) 9329
124170 7590 12/07/2016
Leydig, Voit & Mayer, Ltd. (Ecolab/Nalco)
Two Prudential Plaza, Suite 4900
180 N. Stetson Ave.
Chicago, IL 60601-6731
EXAMINER
KINGAN, TIMOTHY G
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
12/07/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
chgpatent @ ley dig. com
ecolab_PAIR @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN E. HOOTS, PHILLIP E. BUREMAN, and
CRAIG W. MYERS1
Appeal 2015-006822
Application 12/143,400
Technology Center 1700
Before LINDA M. GAUDETTE, CHRISTOPHER L. OGDEN, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—3, 5—7, 9—15, 17, and 18. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to methods of monitoring and/or
controlling additive composition dosages in fuel ethanol. E.g., Spec. 11;
1 According to the Appellants, the real party in interest is Nalco Company,
which is wholly owned by Ecolab, Inc. App. Br. 1.
Appeal 2015-006822
Application 12/143,400
Claim 1. Claim 1 is reproduced below from page 18 (Claims Appendix) of
the Appeal Brief:
1. A method of regulating concentration of a corrosion inhibitor
component in fuel ethanol, the method comprising:
(a) providing treated fuel ethanol comprising fuel ethanol, a
corrosion inhibitor component, and an inert fluorescent
tracer component at a known ratio with the corrosion
inhibitor component and selected from rhodamine or a
rhodamine derivative;
(b) measuring the fluorescent signal of the inert fluorescent
tracer component in the treated fuel ethanol;
(c) determining the concentration of the corrosion inhibitor
component in the treated fuel ethanol based upon the
measured fluorescent signal of the inert fluorescent tracer
component;
(d) if the determined concentration of the corrosion inhibitor
component is greater than an optimum concentration range
of the corrosion inhibitor component, diluting the treated
fuel ethanol by metering additional fuel ethanol into the
treated fuel ethanol in a volume sufficient to bring the
concentration of the corrosion inhibitor component in the
treated fuel ethanol into the optimum concentration range;
(e) if the determined concentration of the corrosion inhibitor
component is less than an optimum concentration range of
the corrosion inhibitor component, metering additional
corrosion inhibitor component and the inert fluorescent
tracer component at the known ratio with the corrosion
inhibitor component into the treated fuel ethanol in an
amount sufficient to bring the concentration of the corrosion
inhibitor component in the treated fuel ethanol into the
optimum concentration range; and
(f) optionally repeating one or more of steps (b) to (e) until the
determined concentration of the corrosion inhibitor
component in the treated fuel ethanol is within the optimum
concentration range,
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Application 12/143,400
wherein the method is operated over a network comprising at
least one sensor, controller, digital storage medium, and/or
communication means.
REJECTIONS ON APPEAL
1. Claims 1—7 and 10-15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over DEH Ethanol Standard 18/2004 Report2 in view of Young
et al. (US 2009/0260454 Al, published Oct. 22, 2009), Perilstein (US
4,426,208, issued Jan. 17, 1984), Christensen et al. (US 4,406,811, issued
Sept. 27, 1983), Hoots et al. (US 4,783,314, issued Nov. 8, 1988), McCoy et
al. (US 5,702,684, issued Dec. 30, 1997), and Clarke et al. (US 5,225,679,
issued July 6, 1993).
2. Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over DEH 2004 in view of Young, Perilstein, Christensen,
Hoots, McCoy, and Clarke, further in view of Resch-Genger et al. (US
2006/0214112 Al, published Sept. 28, 2006).
ANALYSIS
The Appellants argue the claims as a group. We select claim 1 as
representative of the rejected claims. The remaining claims on appeal will
stand or fall with claim 1.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner’s
2 Consistent with the nomenclature of the Examiner and the Appellants, we
refer to this reference as “DEH 2004.” The Examiner does not identify a
prior art date for DEH 2004. However, because the Appellants do not
challenge the prior art status of DEH 2004, we accept it as prior art.
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rejections. Accordingly, we affirm the rejections for reasons set forth below,
in the Final Action, and in the Examiner’s Answer. See generally Final Act.
2-17; Ans. 2-19.
The Examiner finds that the combination of DEH 2004, Young, and
Perilstein “establish that corrosion inhibitors are added to fuel ethanols in
specific amounts, and that it is desirable or even essential that the amounts
of such inhibitors be verified by testing.” Ans. 13; see also Ans. 6—7. The
Examiner acknowledges that DEH 2004, Young, and Perilstein “do not
teach the use of tracers together with the corrosion inhibitors for the purpose
of regulating/measuring.” Id. at 7. The Examiner finds that “Christensen
teaches the importance of preventing corrosion of metal surfaces coming in
contact with water and the use of aryltriazoles [corrosion inhibitors] together
with tracer ions which may be measured in determining the dosage levels of
the corrosion inhibitors.” Id. (internal citations omitted).
The Examiner acknowledges that the tracer of Christensen is not
fluorescent, as required by claim 1, but finds that Hoots teaches the addition
of a fluorescent tracer (2-naphthalenesulfonic acid) to treating agents such as
corrosion inhibitors to determine the concentrations of treating agents. Id. at
8.
The Examiner acknowledges that the fluorescent tracer of Hoots is not
rhodamine or a rhodamine derivative, as required by claim 1, but finds that
McCoy teaches fluorescent tracers including 2-naphthalenesulfonic acid and
rhodamine. Id. at 10.
The Examiner relies on Clarke for the teaching of “a control scheme
for . . . operating the method over a network,” as recited by claim 1. Id. at
10-11.
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The Examiner concludes that, in view of the combined prior art, it
would have been obvious to monitor the amount of corrosion inhibitor in
fuel ethanol through the use of a rhodamine-based fluorescent tracer, and to
adjust the concentration of the corrosion inhibitor to maintain the desired
concentration. See id. at 6—11.
The Appellants argue that “DEH 2004 does not recognize any
problem associated with inaccurate, imprecise, or even variable additive
concentration in fuel ethanol supplies — indeed, this problem is nowhere
recognized in the other cited prior art — as it must be to support an
obviousness rejection.” App. Br. 6. The Appellants reiterate the argument
throughout the Appeal Brief. See, e.g., id. at 7, 10, 13, 15.
That argument does not persuade us of reversible error in the
Examiner’s rejection. Cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007) (stating that it is error to look “only to the problem the patentee was
trying to solve”); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc.,
424 F.3d 1293, 1323 (Fed. Cir. 2005) (“One of ordinary skill in the art need
not see the identical problem addressed in a prior art reference to be
motivated to apply its teachings.”). The Appellants do not persuasively
dispute that DEH 2004 teaches adding a specific amount of corrosion
inhibitor to fuel ethanol. See, e.g., DEH 2004 at 18. Nor do the Appellants
persuasively dispute that DEH 2004 supports the common sense proposition
that a corrosion inhibitor should be added to fuel in an amount sufficient to
provide corrosion protection. See id. at 24 (“The [Renewable Fuels
Association, which is the national trade organization for the U.S. fuel
ethanol industry,] recommends that corrosion inhibitors be added to fuel
grade ethanol at a treat rate sufficient to provide corrosion protection . . . .”);
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see also id. at 21. Thus, notwithstanding the fact that DEH 2004 references
a “nominal concentration of 86 mg/liter” (emphasis added), see App. Br. 7,
we agree with the Examiner that a person of ordinary skill in the art, through
the use of only ordinary creativity, would have understood that corrosion
inhibitors should be present in an amount that provides corrosion protection.
The Examiner relies on Young and Perilstein to support the
proposition that, if a particular amount of corrosion inhibitor is needed (i.e.,
an amount sufficient to provide corrosion protection), measuring and
documenting the amount of corrosion inhibitor in the fuel ethanol is
desirable to ensure that the needed amount is present. See Ans. 7. Young
teaches a method of “[measuring the amount of corrosion inhibitor added to
a non-aqueous, non-conductive liquid, such as ethanol, gasoline, or blends of
gasoline and ethanol” by monitoring the flow of corrosion inhibitor through
a pipe used to feed the inhibitor into ethanol. See Young || 3, 15. As the
Examiner explains, “Perilstein teaches the need for a corrosion inhibitor in
stored and transported commercial ethanol owing to the corrosive effects of
water in the ethanol.” Ans. 7; see also Perilstein at 1:30-39. Perilstein also
teaches that “it is important that the corrosion inhibitor be effective in very
small quantities to avoid any adverse effects, such as adding to the gum
component of the fuel, etc., as well as to minimize cost.” Perilstein at 2:1—4.
Thus, even if no individual reference expressly recognizes the
problem of imprecise addition of corrosion inhibitors to fuel ethanol, we
agree with the Examiner that the combination of prior art, considered as a
whole, reasonably teaches or suggests to a person of ordinary skill in the art
(1) that precise amounts of corrosion inhibitor in fuel ethanol are desirable,
i.e., an amount sufficient to inhibit corrosion but without excess that may
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increase undesirable deposits (gum) or increase cost, and (2) that measuring
the quantity of corrosion inhibitor in fuel ethanol is desirable in order to
confirm that the correct amount of inhibitor is present in the ethanol. See
KSR, 550 U.S. at 418—19 (“[T]he [obviousness] 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.”); In re Keller, 642 F.2d
413, 426 (CCPA 1981) (“[0]ne cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references.”).
The Appellants’ argument that “Young is directed to measuring the
amount of corrosion inhibitor in a conduit prior to the addition of the
corrosion inhibitor into the non-aqueous liquid,” see App. Br. 8 (emphasis
in original), is not persuasive. The Examiner finds, and the Appellants do
not persuasively dispute, that a person of ordinary skill in the art seeking to
provide corrosion inhibition in ethanol would have been motivated to
“verif[y]” the amount of corrosion inhibitor in the ethanol. See Ans. 13.
The Examiner relies on Young to support the proposition that it would have
been obvious to add precise amounts of inhibitor to the ethanol; the
Examiner relies on other references, discussed in more detail below, for
teaching methods of measuring (i.e., verifying) the amount of corrosion
inhibitor after addition to the ethanol. See Ans. 7—9. The Appellants’
arguments concerning Young do not persuade us of reversible error. See
Keller, 642 F.2d at 426.
For similar reasons, the Appellants’ arguments concerning Perilstein
are not persuasive. The Appellants argue that “Perilstein does not analyze
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the amount of corrosion inhibitor (or its concentration) in the treated liquid
(i.e., the liquid after the corrosion inhibitor has been added).” App. Br. 8
(emphasis in original). The Examiner, however, relies on Perilstein for the
proposition that a person of ordinary skill in the art would have known that
addition of corrosion inhibitor to ethanol beyond the minimal amount
necessary to provide corrosion inhibition is undesirable because of increased
cost and potential formation of gum deposits due to excess inhibitor. Ans. 7.
Regardless of when Perilstein itself analyzes the amount of corrosion
inhibitor, the Appellants do not persuasively refute the Examiner’s finding
that a person of ordinary skill in the art would have been motivated to verify
the amount of inhibitor in the ethanol, as evidenced by other references. See
Keller, 642 F.2d at 426.
Turning to the other references relied on by the Examiner, and to the
issue of the use of tracers to monitor inhibitor concentration after it has been
added to a liquid, the Examiner primarily relies on Christensen and Hoots.
As the Examiner explains, “Christensen teaches the importance of
preventing corrosion of metal surfaces coming in contact with water and the
use of aryltriazoles together with tracer ions which may be measured in
determining the dosage levels of the corrosion inhibitors.” Ans. 7 (internal
citations omitted); see also Christensen at Abstract, 1:9-13, 2:33—34, 5:48—
65.
The Examiner finds that Hoots “teaches systems for which a treating
agent is added/fed to the liquids and for which severe corrosion and/or
deposit formation may occur,” and it further teaches “measuring the active
component/treating agent in the formulation . . . with the addition of
fluorescent tracers,” which “provid[e] facile references in quantifying the
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treating agents.” Ans. 8. Indeed, Hoots broadly explains that, “[i]n a system
involving a body of liquid to which a treating agent is added, maintaining
the proper feed level for the agent is essential for optimal performance.”
Hoots at 1 \26—29. Hoots goes on to disclose a method of monitoring the
treating agent by use of a fluorescent tracer. Id. at 2:16—23. Hoots teaches a
specific embodiment in which aryltriazoles are used as corrosion inhibitors
(as in Christensen) and monitored by a 2-naphthalenesulfonic acid salt
fluorescent tracer. Id. at 6:38-44. Hoots expressly teaches applicability of
its disclosure to “a broad range of organic and inorganic liquid systems
ranging from polar solvents (such as water and alcohols) to nonpolar
hydrocarbon solvents.” Id. at 12:47—50. Thus, Hoots teaches a concept
similar to that claimed by the Appellants—use of a fluorescent tracer to
monitor concentration of a treating agent such as a corrosion inhibitor—but
does not expressly disclose fuel ethanol as the treated liquid.
The Appellants argue that Christensen is limited to aqueous systems
and is not pertinent to the other prior art references because it “does not
address issues pertaining to fuel ethanol.” See App. Br. 9. The Appellants
also argue that, “even if assumed to be pertinent (which it is not),
[Christensen] fails to recognize differences between the use of fluorescent
chemistry in aqueous and non-aqueous systems,” and that “Christensen, like
Young and Perilstein, is limited to measuring the amount of corrosion
inhibitor prior to its addition to a fluid.” Id.
Those arguments are not persuasive. Christensen is relevant because,
like several of the other references and the Appellants’ Specification, it
concerns corrosion inhibition generally and, more specifically, “monitoring
dosage levels” of corrosion inhibitors in compositions. E.g., Christensen at
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Title, 5:38—51. The fact that it specifically concerns aqueous systems rather
than ethanol does not indicate that a person of ordinary skill in the art would
not have considered it to be reasonably pertinent to problems relating to
corrosion inhibition more generally. The Appellants identify nothing in
Christensen that might have dissuaded a person of ordinary skill in the art
from using Christensen’s method with non-aqueous systems.
Hoots teaches a method similar to Christensen’s and expressly teaches
the applicability of its method to both aqueous and non-aqueous liquid
systems. See Hoots at 12:47—50. Thus, the record before us supports the
finding that a person of ordinary skill in the art, familiar with the relevant
prior art, would have had a reasonable expectation of success in combining
the teachings of Christensen with a non-aqueous system. The Appellants do
not direct our attention to any persuasive evidence to the contrary, nor do
they provide a persuasive argument that the Examiner’s proposed
combination would have been beyond the level of ordinary skill in the art.
Moreover, Christensen expressly teaches that its method “for monitoring
dosage levels” of corrosion inhibitors involves “incorporating tracer ions in
the overall compositions.'’'’ Christensen at 5:48—51 (emphasis added); see
also Ans. 15. The Appellants do not persuasively explain why a person of
ordinary skill in the art would have understood Christensen to be “limited to
measuring the amount of corrosion inhibitor prior to its addition to a fluid,”
given Christensen’s concern with the “overall compositions.” See App. Br.
9. In any event, the Appellants do not meaningfully argue that Hoots does
not disclose or otherwise render obvious monitoring the additive after its
addition to the liquid. See Ans. 4—5.
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Concerning Hoots, the Appellants argue that, “absent recognition of
the problem associated with fuel ethanol formulation, one skilled in the art
would not be motivated to use the method of Hoots in connection with the
fuel ethanol disclosed in DEH 2004.” App. Br. 10. The Appellants also
argue that “Hoots has nothing at all to do with fuel ethanol.” Id.
Those arguments do not persuade us of reversible error in the
Examiner’s rejection. As explained above, DEH 2004, Young, and
Perilstein suggest the importance of including precise amounts of corrosion
inhibitor in fuel ethanol. Hoots itself confirms the importance of
maintaining an appropriate concentration of “treating agent” added to “a
body of liquid.” See Hoots at 1:27—29. Hoots also teaches broad
applicability of its method, including to liquid systems involving alcohols.
Id. at 12:47—50. The Examiner’s findings and conclusions are supported by
a preponderance of the evidence, notwithstanding the fact that Hoots may
not be concerned specifically with fuel ethanol.
As noted above, while Hoots discloses fluorescent tracers, it does not
disclose a rhodamine-based tracer, as required by claim 1. The Examiner
finds that McCoy teaches “fluorescent indicators . . . including 2-napthalane
sulfonic acid [a fluorescent tracer used by Hoots] and rhodamine in the
alternative.” See Ans. 10; see also McCoy at 10:15—21 (tracers C and G).
The Examiner concludes that it would have been obvious to use rhodamine
as a fluorescent tracer.
The Appellants argue that a person of ordinary skill in the art would
not have been motivated to use rhodamine because McCoy teaches “that
Rhodamine WT is not suitable for use in its disclosure—which admittedly is
not related to fuel ethanol.” App. Br. 11.
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That argument is not persuasive of reversible error in the rejection.
Notwithstanding the fact that Rhodamine WT achieved only 63% relative
fluorescence in the tests of McCoy’s Example XI, while other fluorescent
tracers achieved better results, see McCoy at cols. 15—16, McCoy plainly
discloses Rhodamine WT as a known fluorescent tracer. McCoy also
discloses naphthalene sulfonic acid as a known fluorescent tracer, which
apparently performed even worse in some tests than Rhodamine WT. See
id. Given that Hoots discloses the use of a naphthalene sulfonic acid tracer,
and that McCoy suggests that naphthalene sulfonic acid and Rhodamine WT
are known alternative fluorescent tracers, we agree with the Examiner that a
person of ordinary skill in the art would have had a reasonable expectation
of success in substitution of Rhodamine WT for the naphthalene sulfonic
acid of Hoots, and more generally that it would have been obvious to use a
known fluorescent tracer such as Rhodamine WT in the method suggested
by the prior art combination relied upon by the Examiner. See KSR,
550 U.S. at 416—21 (use of a known element according to its established
function typically does not result in nonobvious subject matter); see also In
re O’Farrell, 853 F.2d 894, 903—904 (Fed. Cir. 1988) (“Obviousness does
not require absolute predictability of success. . . . [A]ll that is required is a
reasonable expectation of success.”).
At a minimum, use of Rhodamine WT would have been “obvious to
try” given the limited number of fluorescent tracers disclosed by the prior
art. See McCoy at cols. 15—16; see also KSR, 550 U.S. at 421 (“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 the known options within his or her technical grasp.”).
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The Appellants do not persuasively argue that it would have been beyond
the level of ordinary skill in the art to test for compatibility of Rhodamine
WT with fuel ethanol or to incorporate Rhodamine WT as a fluorescent
tracer in fuel ethanol.
In general, the Appellants’ arguments focus on the fact that the
references concerned with corrosion inhibitors in fuel ethanol do not
expressly teach monitoring the concentration of the inhibitor in the treated
liquid using fluorometric techniques, while the references that disclose
fluorometric monitoring techniques do not expressly teach the application of
those techniques to fuel ethanol. See, e.g., App. Br. 12—15. But that is not
dispositive of the obviousness issue before us because, as noted above, “a
court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” See KSR, 550 U.S. at 418—19. As
the Supreme Court has explained, “in many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like pieces of a
puzzle.” Id. at 417. On the record before us, a preponderance of the
evidence supports the Examiner’s findings and conclusions. For reasons set
forth above, a person of ordinary skill in the art would have understood the
importance of maintaining precise amounts of corrosion inhibitor in fuel
ethanol. Use of known fluorometric monitoring techniques in order to
achieve that goal would have been within the level of ordinary skill in the
art, through the use of only ordinary creativity. Cf. id. (“When a work is
available in one field of endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.”). We affirm the Examiner’s rejection.
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CONCLUSION
We AFFIRM the Examiner’s rejections of claims 1—3, 5—7, 9—15, 17,
and 18.
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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