Ex Parte Kokko

Board of Patent Appeals and Interferences

May 20, 2011

10650737 (B.P.A.I. May. 20, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/650,737 08/29/2003 Bruce Jerome Kokko 12288 D1 7651
31743 7590 05/23/2011
Georgia-Pacific LLC
133 Peachtree Street NE - GA030-41
ATLANTA, GA 30303
EXAMINER
CORDRAY, DENNIS R
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
05/23/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRUCE JEROME KOKKO
____________________

Appeal 2010-007220
Application 10/650,737
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to:
1. Reject claims 10-14 under 35 U.S.C. § 103(a) as obvious over U.S.
Patent No. 5,314,721 to Müller et al. in view of U.S. Patent No. 5,302,335 to
Naganawa et al. and Holmberg (Krister Holmberg, Surfactants and
Polymers in Aqueous Solution 109, 110, 199 (John Wiley & Sons 2d ed.
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2003), available at http://www3.interscience.wiley.com/cgi-
bin/booktoc?ID=104554816&CRETRY=1&SRETRY=0>.);
2. Reject claims 10-14 under 35 U.S.C. § 103(a) as obvious over
Müller as evidenced by the definition of "complex" in the ChemCool
Chemistry Dictionary (www. Chemicool.com/dictionary.html, last visited
June 30, 2008); and
3. Reject claims 10, 12 and 14 under 35 U.S.C. § 103(a) as obvious
over U.S. Patent No. 5,569,686 to Makati et al. as evidenced by the
definition of "complex" in ChemCool.
We have jurisdiction under 35 U.S.C. § 6(b).
For the well supported reasons advanced in the briefs, we REVERSE.
We add the following primarily for emphasis.
Appellant’s claims are directed to a composition “comprising a stable
complex of a hydrophobically modified polyaminamide and a nonionic
surfactant” (Claim 10).
According to the Examiner, even though neither Müller nor Makati
disclose the presence of such a complex, each teaches a composition having
the claimed components in solution together (Ans. 4 and 7). In the case of
Müller, the Examiner adds that, in some embodiments, the solution is heated
above the cloud point, the temperature Appellant discloses as the point at
which the stable complex will form (Ans. 5). It is the Examiner’s position
that since the same components are present and the disclosed steps are the
same, “the claimed product complex will form or, at least, it would have
obvious to one of ordinary skill in the art to obtain the claimed complex and
for the complex to be stable for at least some period of time.” (Ans. 5.)
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As a first matter, we agree with Appellant that the Examiner has
interpreted “stable complex” in an unreasonably broad manner. The
Examiner interprets a “stable” complex as any complex “stable for the
length of time it exists” (Ans. 8). However, this interpretation renders the
term “stable” meaningless in the context of the claim. Moreover, it is clear
from the portions of the Specification Appellant reproduces in the Brief that
“stable” has some meaning in the claim and “stable” refers to a complex that
is more than transitory, can be stored, and can be transported (Br. 13-14). It
is further clear from the definition relied upon by Appellant that the use in
the Specification conforms to the ordinary and accustomed meaning of
“stable” in the chemical arts as meaning “not readily altering in chemical
makeup or physical state ” (Br. 15-16, citing Merriam-
Webster OnLine dictionary). The evidence supports the position of
Appellant.
As a second matter, we further agree with Appellant that the Examiner
has not established either that the claimed stable complex is inherently
present in the compositions of either Müller or Makati or obvious in view of
those compositions.
With regard to obviousness, there is no dispute that neither Müller nor
Makati disclose that the claimed stable complex is present in the
compositions of those references (Ans. 4). The Examiner points to no
evidence indicating that those of ordinary skill in the art would have sought
to produce the claimed stable complex in the Müller and Makati
compositions. In fact, the Examiner does not establish that the stable
complexes were even known in the prior art. We agree with Appellant that
the Examiner’s analysis is legally insufficient to establish obviousness (Br.
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21-22). “Obviousness cannot be predicated on what is unknown.” In re
Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (quoting In re Spormann, 363
F.2d 444, 448 (CCPA 1966).
On the other hand, those of ordinary skill in the art need not recognize
that something is occurring for that something to be inherently present. See
In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002)
(quoting MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365
(Fed. Cir. 1999) (“Inherency is not necessarily coterminous with the
knowledge of those of ordinary skill in the art.”). However, the Examiner
must establish that the claimed characteristic necessarily occurs when one of
ordinary skill in the art follows the process of the prior art disclosure. “The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient to establish inherency.” Rijckaert, 9 F.3d at 1534 (quoting In
re Oelrich, 666 F.2d 578, 581-82 (CCPA 1981). To be inherent, the
property must be the “natural result flowing from” the explicit disclosure of
the prior art. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379
(Fed. Cir. 2003) (quoting Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955,
970 (Fed. Cir. 2001).
Appellant provides technical reasoning grounded upon the teachings
of Müller and Makati tending to indicate that the stable complexes of the
claimed composition would not necessarily form in the processes of the
references based upon the correct reading of those references (Br. 22-24)
and that any complex would be transitory and not stable (Br. 24-25). The
evidence supports the Appellant’s position, particularly given the number of
selections that must be made in order to arrive at a composition containing
the claimed components, the need for heating above the cloud point, the
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small concentrations involved, and the presence in the reference of other
components and reactions.
The Naganawa and Holmberg references, as applied by the Examiner,
do not overcome the deficiencies discussed above.
II. CONCLUSION
On the record before us, we do not sustain the rejections maintained
by the Examiner.
III. DECISION
The decision of the Examiner is REVERSED.

REVERSED
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