Ex Parte Jones

Board of Patent Appeals and Interferences

Jun 22, 2010

10627945 (B.P.A.I. Jun. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DENNIS J. JONES, JR.
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Appeal 2009-008353
Application 10/627,945
Technology Center 1700
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Decided: June 22, 2010
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Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 45, 47-53, and 70-82 (Final Office Action
(“Final”), mailed May 17, 2007, 1), the only claims pending in the
application. (Appeal Brief (“App. Br.”), filed Jan. 2, 2008, 2.) We have
jurisdiction under 35 U.S.C. § 6(b).
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We AFFIRM.
The Examiner maintains (Examiner’s Answer (“Ans.”), mailed Dec.
2, 2008, 3-6), and Appellant requests review of (App. Br. 3), the following
grounds of rejection:
1. Claims 45, 47-50, and 52 under 35 U.S.C. § 103(a) as
unpatentable over De Lathauwer (US 5,738,688, issued Apr. 14, 1998);
2. Claims 45 and 47 under 35 U.S.C. § 103(a) as unpatentable
over Gamblin (US 4,482,646, issued Jun. 27, 1989);
3. Claims 45 and 47 under 35 U.S.C. § 103(a) as unpatentable
over Fekete (US 4,094,701, issued Jun. 13, 1978);
4. Claims 51, 53, 70-76, and 78-82 under 35 U.S.C. § 103(a) as
unpatentable over De Lathauwer in view of Jones (US 5,520,962, issued
May 28, 1996); and
5. Claim 77 under 35 U.S.C. § 103(a) as unpatentable over De
Lathauwer in view of Jones1 and further in view of Gurley (US 5,403,362,
issued Apr. 4, 1995).
The invention is directed to methods and compositions for treating
fibers such as carpet yarns. (Specification (“Spec.”) 1:10-11.) Independent
claims 45, 70 and 80, and dependent claim 72, are illustrative of the
invention and are reproduced below from the Claims Appendix to the
Appeal Brief:
45. An aqueous treating composition comprising tannic acid having
a gallic acid content of less than about 1.0 parts by weight (pbw), wherein

1 The Examiner failed to include Jones in the statement of the ground of
rejection. We view this as harmless error since it is clear from the
discussion of the rejection that Jones is also relied upon. (See Final 4-5;
Ans. 5-6; Br. 11 (acknowledging error).)
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the tannic acid is present in the aqueous treating composition at up to about
0.5 pbw, based on a total weight of the aqueous treating composition.

70. A two-part aqueous treatment comprising:
a. a first aqueous treating composition comprising tannic acid; and
b. a separate second topical treating composition comprising a
fluorochemical.

72. The aqueous treatment of claim 70, wherein the tannic acid has
a gallic acid content of less than about 1.0 part by weight, based on a total
weight of the aqueous treating composition.

80. A fiber, yarn or carpet comprising tannic acid and a topically
applied fluorochemical.

ISSUES
Appellant traverses the rejections of claims 45, 47-53, and 72 on the
basis that the Examiner erred in determining it would have been a matter of
routine optimization to adjust the amount of gallic acid present in the
primary references to achieve a composition as claimed.2 Appellant also
argues the evidence of record shows superior results obtained from the gallic
acid content recited in claims 45, 47-53, and 72, relying on the Declaration
under 37 C.F.R. § 1.132 of Dennis J. Jones, Jr. (Br., Evidence App.), which

2With respect to the first three grounds of rejection, Appellant has not
presented separate arguments in support of patentability of any particular
dependent claim or claim grouping (see Br. 4-8). Therefore, we decide the
patentability of all claims subject to these rejections on the basis of
independent claim 45. With respect to the fourth ground of rejection, we
separately consider the patentability of claim 72, as well as claims 51 and 53
(which depend from claim 45), on the basis of the same arguments made in
connection with the first three grounds of rejection (see Br. 8-10 (arguing the
gallic acid content limitation in claims 45 and 72)). The remaining claims
subject to the fourth ground of rejection stand or fall with independent claim
70 (see Br. 9-10). (See also, Br. 3 § (6).)
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includes a discussion of the test results in the Specification. With respect to
claims 70-82 (see fourth and fifth grounds of rejection), Appellant relies on
the Jones Declaration to show superior results obtained from the
combination of tannic acid and a fluorochemical. Appellant contends that
the aforementioned superior results weigh in favor of non-obviousness as to
the appealed claims.
Appellant’s arguments present the following issues for our review:
1. Did the Examiner err in finding that one of ordinary skill in the
art at the time of the invention would have recognized that adjustment of
gallic acid content within tannic acid could achieve a recognized result such
that it would have been obvious to have optimized the gallic acid content of
the tannic acids in the primary references to achieve the gallic acid content
recited in claims 45 and 72?
2. Did the Examiner err in finding that the Jones Declaration fails
to establish superior results obtained from the gallic acid content recited in
claims 45 and 72, and in concluding that the weight of the evidence, taking
into account the Jones Declaration, weighs in favor of obviousness?
3. Did the Examiner err in finding that the Jones Declaration fails
to establish superior results in the combination of tannic acid and a
fluorochemical recited in claims 70 and 77, and in concluding that the
weight of the evidence, taking into account the Jones Declaration, weighs in
favor of obviousness?
We answer the foregoing questions in the negative for the reasons
stated in the Examiner’s Answer, which we expand upon below.
FINDINGS OF FACT (“FF”)
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We adopt the Examiner’s findings in the Answer and Final. We rely,
in particular, on the following findings in our discussion of the above-noted
issues:
1. De Lathauwer discloses a process to improve the resistance to
stains on fibers (col. 1, ll. 7-8) by treating the substrate with a solution
containing 1 to 6 weight % active component, consisting of 10 to 90% tannic
acid component (col. 2, ll. 20-24).
2. De Lathauwer discloses that “[t]he term ‘tannic acid’ . . . should
be understood in a broad sense, and covers products containing tannic acid”
(col. 2, ll. 44-47). De Lathauwer indicates that “any commercial tannic acid
can be used” (col. 2, ll. 66-67).
3. Fekete discloses the use of tannic acid in a cleaning solution
inhibits etching of a tin surface. (Col. 2, ll. 16-20.)
4. Gamblin discloses that both tannic acid and gallic acid are
known insolubilizing agents (also known as mordants) which render dyes
water insoluble (col. 2, ll. 19-23.)
5. One of ordinary skill in the art at the time of the invention
would have been aware that tannic acid is a mixture of compounds
consisting of a glucose-chain substituted with gallic acid. (See De
Lathauwer, col. 2, ll. 48-51; cf. Jones Dec. ¶¶ 5-7.) One of ordinary skill in
the art at the time of the invention would have been aware that gallic acid is
acquired by the hydrolysis of tannic acid; it would have been within the level
of skill of the ordinary artisan to arrive at the gallic acid content of a
commercial tannic acid. (Ans. 6; cf. Jones Dec. ¶¶ 5-7.)

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ANALYSIS
Issue 1
Appellant argues “there is simply no disclosure in any of the cited
references that evidences a recognition of any relationship whatsoever
between gallic acid content and effectiveness of stain resistance.” (Br. 6.)
The record before us establishes that tannic acid and gallic acid are useful
for improving stain resistance. In particular, the Examiner finds that “[t]he
prior art of record teaches that tannic acid is effective in treating/dyeing
textiles or fabrics, which provides the skilled artisan sufficient motivation to
recognize the effectiveness of tannic acid and its content of gallic acid in
textile treating/dyeing compositions” (Ans. 7; see also, Final 6 (noting that
gallic acid is acquired by the hydrolysis of tannic acid and that the prior art’s
indication “that any commercially available tannic acid can be used is a
reasonable assumption that tannic acids of a range of gallic acid contents
could be employed in a beneficial or synergistic manner”); Gamblin, col. 2,
ll. 19-23 (evidencing tannic acid and gallic acid are known insolubilizing
agents)).
The rationale for determining the optimal parameters for prior art
result effective variables “flows from the ‘normal desire of scientists or
artisans to improve upon what is already generally known.’” Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007) (quoting In re Peterson,
315 F.3d 1325, 1330 (Fed. Cir. 2003)). When patentability is predicated
upon a change in a condition of a prior art composition, such as a change in
concentration or the like, the burden is on Appellant to establish with
objective evidence that the change is critical, i.e. it leads to a new
unexpected result. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
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In our view, the Examiner provided a reasonable basis for concluding
that it would have been obvious to have optimized the gallic acid content of
the tannic acids used in the De Lathauwer, Gamblin, and Fekete
compositions. The prior art explicitly discloses that tannic acids are useful
in cleaning compositions and in improving stain resistance of fiber. (FF 1-
5.) There is a known correspondence between tannic acid and gallic acid,
i.e., they are both insolubilizing agents and gallic acid is acquired by the
hydrolysis of tannic acid (see Ans. 3-4 and 6 (last para.); FF 4-5). Because
the Examiner properly established a prima facie case of obviousness as to
claims 45, 47-53, and 72, the burden was shifted to Appellant to establish,
with objective evidence that the claimed gallic acid content (recited in
claims 45 and 72) is critical, i.e. it leads to a new unexpected result.
Issue 2
To establish unexpected results in the use of the gallic acid content
recited in claims 45 and 72, Appellant relies on the Jones Declaration.
The Board is entitled to weigh declarations expressing opinions as to
fact and conclude that the lack of factual corroboration warrants discounting
the opinions expressed in the declarations. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004).
We are in agreement with the Examiner’s reasons for concluding that
this Declaration fails to provide evidence of criticality in Appellant’s
claimed gallic acid content, i.e., it is not apparent that a comparison was
made with the closest prior art. (See Final 5; Ans. 8.) We also find the
Jones Declaration lacks persuasive merit because: (1) Mr. Jones is the sole
inventor of the present invention and not a disinterested party (Jones Dec. ¶
1), see In re Bulina, 362 F.2d 555, 559 (CCPA 1966) (“[A]n affidavit by an
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applicant or co-applicant as to the advantages of his invention is less
persuasive than one made by a disinterested person.”); and (2) the Caustic 10
test fails to include samples of tannic acids having a gallic acid content just
outside the upper limit of the claimed range and, therefore, fails to establish
criticality in the recited upper limit of gallic acid (see Jones Dec. ¶¶ 16-23
(gallic acid content of the comparative sample closest to the upper limit of
the claimed range is 2.87%); Br. 8, ll. 3-5 (discussing comparison
evidence)).
Issue 3
To establish unexpected results in the combination of tannic acid and
a fluorochemical as recited in claims 70 and 77, Appellant relies on the
Jones Declaration which states that “unexpectedly superior stain resistance .
. . is achieved when applying a two-part aqueous treatment” (Jones Dec. ¶
25). (Br. 10-11.) As pointed out by the Examiner, this evidence is not
commensurate in scope with the claims because the “claims are directed to a
composition and the order of addition or combination bears no relevance.”
(Ans. 7.)
Moreover, Appellant has not shown that any difference between the
results obtained through the claimed invention and those of the prior art
would have been unexpected by one skilled in the art at the time of the
invention. See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973). The
mere allegation that “unexpectedly superior stain resistance” is achieved
(Jones Dec. ¶ 25) does not suffice. See In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d at 1368.

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In sum, Appellant has not persuaded us the Examiner erred in
concluding that the evidence of record, taking into account Appellant’s
evidence of unexpected results, weighs in favor of obviousness as to the
appealed claims.
CONCLUSION
Appellant has not persuaded us of error in the Examiner’s obviousness
determination. Therefore, we sustain all five grounds of rejection. The
decision of the Examiner rejecting claims 45, 47-53, and 70-82 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

PL Initial:
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