Ex Parte Labib

Board of Patent Appeals and Interferences

Apr 30, 2002

08974148 (B.P.A.I. Apr. 30, 2002)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte MOHAMED E. LABIB
_______________
Appeal No. 2000-1006
Application No. 08/974,148
_______________
HEARD: March 20, 2002
_______________
Before GARRIS, KRATZ, and POTEATE, Administrative Patent Judges.
POTEATE, Administrative Patent Judge.
This is an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1-8 and 10-12, which are
all of the claims remaining in the application. Claim 9 was
cancelled in an amendment received October 12, 1998, Paper
No. 16.
Claims 1, 4, 6 and 10 are representative of the subject
matter on appeal and are reproduced below:
Appeal No. 2000-1006
Application 08/974,148
1 It appears that the word “and” should be “or.” Should
appellant elect to continue prosecution in this case, it is
recommended that claim 1 be amended to make this correction.
2
1. A method of cleaning solid surfaces to remove
adherent water insoluble organic materials that do not ionize in
water therefrom comprising
a) treating said solid surfaces with an aqueous
solution consisting essentially of
i) an oxidant in an amount sufficient to convert
the water insoluble organic materials to an ionized form having a
positive or negative charge, which charge is the same charge as
that of the solid surfaces;
ii) a pH adjusting agent in an amount sufficient
to provide a pH greater than the isoelectric point of said solid
surfaces for acid-type water insoluble organic materials, and1 a
pH less than the isoelectric point for basic-type water insoluble
organic materials but in an amount insufficient to cause damage
to said solid surfaces.
4. A method according to claim 1 wherein the pH
adjustment agent is hydrogen chloride.
6. A method according to claim 1 wherein the aqueous
solution further includes a surfactant.
10. A method according to claim 6 wherein the aqueous
solution further includes a defoaming agent.
The prior art relied upon by the examiner is:
Dell et al. (Dell) 3,293,148 Dec. 20, 1966
Wilkins et al. (Wilkins) 5,215,675 June 1, 1993
Jackson 5,269,850 Dec. 14, 1993
Sugihara et al. (Sugihara) 5,302,311 Apr. 12, 1994
Appeal No. 2000-1006
Application 08/974,148
2 The stated rejection as it appears in both the Final Rejection
and Appeal Brief does not include claim 7 (claim 7 depends from
claim 6). However, the Final Rejection and Examiner’s Answer
both indicate that claims 1-8, inclusive, stand rejected under 35
U.S.C. § 103. Moreover, the Appeal Brief states that “[c]laims
1-8 and 10-12 will be considered together and discussed together
in this appeal.” Further, we find no evidence of record that the
examiner indicated, or that appellant understood that claim 7 was
allowed, withdrawn from consideration, or otherwise cancelled.
Accordingly, we conclude that the examiner inadvertently omitted
claim 7 from the statement of rejection and that appellant has
not been harmed by this oversight.
3
GROUNDS OF REJECTION
Claim 12 was rejected under 35 U.S.C. § 112, first
paragraph, in the Final Rejection mailed April 8, 1999, Paper
No. 19. This rejection was overcome by an amendment under
37 CFR § 1.116, received June 7, 1999, Paper No. 20. Appeal
Brief, page 2. The claims currently stand rejected as follows:
I. Claims 1-3, 11 and 12 stand rejected under
35 U.S.C. § 103 as unpatentable over Jackson;
II. Claims 4 and 5 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Jackson and further in view of
Sugihara;
III. Claims 6-82 stand rejected under 35 U.S.C. § 103
as unpatentable over Jackson and further in view of Wilkins; and
Appeal No. 2000-1006
Application 08/974,148
4
IV. Claim 10 stands rejected under 35 U.S.C. § 103 as
unpatentable over Jackson in view of Wilkins and further in view
of Dell.
We affirm as to all four grounds of rejection.
BACKGROUND
It is known in the art to utilize organic solvents
for removing organic residues from inorganic surfaces.
Specification, page 1, lines 8-11. In processes which utilize
organic solvents, an organic residue is contacted with a quantity
of organic solvent until all of the residue has dissolved. Id.
at lines 14-16. Organic residues may result from, e.g., the
processing of organic chemicals, pharmaceuticals and foodstuffs
which adhere to surfaces such as metal, ceramic, glass or
polymers. Id. at lines 8-11 and 17-19. In recent years,
environmental considerations have made the use of organic
solvents less desirable and economically feasible. Id., page 1,
line 23 - page 2, line 10. Thus, there has been an effort to
develop water-based cleaning solutions for removal of organic
residues. See id., page 2, lines 16-19. While certain organic
materials are water soluble and, therefore, removable with water-
Appeal No. 2000-1006
Application 08/974,148
5
based solutions, most organic materials are insoluble in water
and cannot be removed by simply washing them in water. Id. at
lines 11-15.
According to appellant, the present invention provides
a method of cleaning solid surfaces to remove adherent water
insoluble organic materials that do not ionize in water using a
water-based cleaning solution. Specification, page 2, lines 21-
25; claim 1. The aqueous cleaning solution consists essentially
of an oxidant and a pH adjusting agent. The oxidant is added in
an amount sufficient to convert the water insoluble organic
materials to an ionized form having a charge which is the same
charge as that of the solid surface. Claim 1. According to
appellant, this causes the organic residue to be repelled from
the surface being cleaned. Specification, page 5, lines 1-5.
The pH adjusting agent is added in an amount sufficient to
provide a pH either greater than or less than the isoelectric
point (“IEP”) of the solid surface, depending on whether the
insoluble organic material is an acid type, or a basic type,
respectively. Claim 1. The reason for this is explained in the
Specification as follows:
Appeal No. 2000-1006
Application 08/974,148
6
The pH level of the cleaning solution must be
such that the electrostatic charge sign of
the surface to be cleaned remains the same
during cleaning. The dissociation of surface
hydroxides on the substrate in an aqueous
solution takes place at the isoelectric
point, when the surface has zero charge.
Page 6, lines 4-9.
DISCUSSION
The initial burden of presenting a prima facie case of
obviousness rests on the examiner. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In determining
whether an invention is obvious, the examiner must consider:
(1) the scope and content of the prior art;
(2) the differences between the prior art and the
claimed invention;
(3) the level of ordinary skill in the art; and
(4) any objective considerations of nonobviousness that
may be present.
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 466-67
(1966).
Appeal No. 2000-1006
Application 08/974,148
7
I. Claims 1-3, 11 and 12
The examiner maintains that claims 1-3, 11 and 12 are
unpatentable over Jackson for the following reasons:
Jackson disclose[s] (see col. 1 line 20
through col. 4 line 61) a method of cleaning
solid surfaces by removing adherent water
insoluble organic contaminants substantially
as claimed. The claims differ from Jackson
by reciting that the oxidant and pH adjusting
agent are in specific amounts. It is
submitted that the amounts of hydrogen
peroxide and alkaline material added in
Jackson are considered patentably indis-
tinguishable from those used in the instant
method. It is further submitted that the
amounts of hydrogen peroxide added in Jackson
would appear to convert at least some of the
organic contaminants to an ionized form as
in the instant method. It would have been
obvious to one skilled in the art to modify
the method of Jackson by utilizing the
recited amounts of oxidant and pH adjustment
agent, to aid in cleaning the solid surfaces.
The specific pH, temperature, and hydrogen
peroxide concentration utilized, would have
been an obvious matter of process optimiza-
tion to one skilled in the art, depending on
the specific surface treated and results
desired, absent a sufficient showing of
unexpected results.
Final Rejection, Paper No. 19, mailed April 8, 1999, pages 2-3,
paragraph 3.
Appellant argues that Jackson is directed to removing
solder flux which is not a “water-insoluble organic material” as
Appeal No. 2000-1006
Application 08/974,148
8
defined by appellant. Appeal Brief, Paper No. 24, received
September 2, 1999, pages 4-5. As correctly observed by the
examiner, Jackson indicates that his composition is effective for
removing not only rosins and other flux materials, but also
organic compounds such as oil, grease, lubricants, plasticizers,
etc. Jackson, column 4, lines 34-44. One of ordinary skill in
the art would have reasonably understood such materials as
including “water-insoluble organic materials” as found by the
examiner. Also, Jackson suggests the removal of “water-
insoluble” organic materials by referring to the removed
contaminants as “suspended material”. See Jackson, column 3,
lines 34-35; column 4, lines 26-30. See also, column 1, line 46
- column 2, line 6 (alluding to the fact that aqueous cleaners
are typically not effective as electronic component defluxing
solvents and that there is a need for a solvent which removes
organic flux residues and other organic materials without
creating a negative environmental impact).
Appellant further argues, essentially, that appellant’s
system for removing insoluble organic materials is performed by a
Appeal No. 2000-1006
Application 08/974,148
3 “Jackson has no understanding of the role played by IEP versus
pH, or even of the role of pH versus IEP of the surface. Nor
does Jackson teach the role for hydrogen peroxide required by and
taught by applicant.” Appeal Brief, page 7 (emphasis added).
9
different mechanism than that which is utilized by Jackson.3
Specifically, appellant distinguishes the present invention from
that of Jackson as follows:
Jackson uses a high pH solution of at least
10.5, and he states that the rosin reacts
with the alkali to form a water soluble soap.
Applicant is removing insoluble organic
materials that do not react with either
alkali or acid to form soluble products.
Instead, applicant, using hydrogen peroxide,
ionizes such inorganic [sic, organic]
materials to [sic] as to give them a charge,
either positive or negative depending on the
nature of the surface. When the organic
material and the surface it is adhered to
have the same charge, they repel each other,
loosening the bonds between them and allowing
the organic material to be removed.
Appeal Brief, page 6.
In deciding patentability issues under 35 U.S.C. § 103,
“[a]nalysis begins with a key legal question -- what is the
invention claimed?” Panduit Corp. v. Dennison, 810 F.2d 1561,
1567-68, 1 USPQ2d 1593, 1597 (Fed. Cir.), cert. denied, 481 U.S.
1052 (1987). Again, as correctly observed by the examiner, claim
1 merely requires that the oxidant is present in an amount
Appeal No. 2000-1006
Application 08/974,148
10
sufficient to convert the water insoluble organic material to an
ionized form but does not “exclude the formation of water soluble
reaction products after treating the surface with the aqueous
solution.” Examiner’s Answer, page 4. Moreover, Jackson teaches
that the formation of soaps “is probably due to ionization of
flux acids by basic solutions.” Jackson, column 3, lines 45-47
(emphasis added). Although Jackson does not specifically state
that the organic materials are converted to an ionized form
having a charge which is the same charge as that of the solid
surface, Jackson does disclose the removal of flux acids from
substrates which may comprise a metal such as aluminum (see id.
at lines 2-3; column 4, lines 45-54; Example 2) which has an
isoelectric point of 9.0 (see Specification, page 4) at a pH of
at least 10.5 (Jackson, column 3, lines 47-50).
Thus, Jackson teaches a method of cleaning a solid
surface to remove insoluble organic materials by treating the
solid surface with an oxidant in an amount sufficient to convert
the water insoluble organic material to an ionized form having a
charge which is the same as that of the solid surface, a pH
adjusting agent being added in an amount sufficient to provide a
pH greater than the isoelectric point of the solid surface for an
Appeal No. 2000-1006
Application 08/974,148
11
acid type water insoluble organic material. Accordingly, we find
that the examiner has established a prima facie case of
obviousness with respect to claims 1-3, 11 and 12.
We recognize that a prima facie case of obviousness may
be rebutted if the appellant (1) establishes unexpected
properties in the claimed composition, or (2) shows that the art,
in any material respect, teaches away from the claimed invention.
In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA
1974). Appellant urges that Jackson “teaches away from the use
of any pH below about 10.5.” Appeal Brief, page 7. This
argument fails to overcome the examiner’s prima facie showing of
obviousness since the claims are not limited to pH values below
about 10.5. In fact, claim 12 (which depends from claim 1)
expressly requires “a high pH up to 10.5.” Accordingly, the
rejection of claims 1-3, 11 and 12 is affirmed.
II. Claims 4-5
Appellant concedes that Sugihara discloses a cleaning
solution of ammonia and hydrogen peroxide as recited in appealed
claims 4-5, but maintains that “the reference does not disclose
or suggest the method of the present invention at all.” Appeal
Appeal No. 2000-1006
Application 08/974,148
12
Brief, page 8. In particular, appellant notes that Sugihara does
not appreciate the role of IEP versus pH of the surface to be
cleaned. Id. Appellant’s arguments are unpersuasive in
attempting to overcome the obviousness rejection of claims 4 and
5 by attacking the combined teachings of the Sugihara and Jackson
references as if applied individually. See In re Young, 403 F.2d
754, 757, 159 USPQ 725, 728 (CCPA 1968).
The examiner relies on Sugihara for a teaching that it
is known to utilize ammonium hydroxide and hydrogen chloride to
aid in cleaning substrates. According to the examiner,
[i]t would have been obvious to one skilled in the art
having the references before him, to modify the method
of Jackson by utilizing the recited pH adjustment
agents in view of the teachings of Sugihara et al., to
aid in removing contaminants from the solid surfaces,
absent a sufficient showing of unexpected results.

Examiner’s Answer, page 6. Appellant has failed to present
arguments traversing the examiner’s proposed combination.
See In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562
(CCPA 1972)(As long as some motivation or suggestion to
combine the references is provided in the prior art, there
is no requirement that the references be combined for the
Appeal No. 2000-1006
Application 08/974,148
13
reasons contemplated by the inventor). Accordingly, the
rejection of claims 4 and 5 is affirmed.
III. Claims 6-8
The examiner relies on Wilkins for a teaching that
“it is known in the art to utilize non-ionic, cationic and
anionic surfactants in cleaning solutions containing
peroxide to aid in removing insoluble organic materials from
solid surfaces.” Examiner’s Answer, page 6. According to
the examiner, one of ordinary skill in the art would have
found it obvious to modify the method of Jackson by
including surfactants (i.e., to remove insoluble organic
materials from the surfaces) as recited in appealed claim 6
(and also required by claims 7 and 8 which depend
therefrom). Id. Appellant argues that Wilkins does not
adjust pH in his method and, essentially, that it would not
have been obvious to have chosen a surfactant from amongst
the list of other additives disclosed in Wilkins to achieve
the claimed invention. See Appeal Brief, page 8. We
disagree. The appellant’s nonobviousness position is
vitiated by the fact that Jackson specifically discloses
Appeal No. 2000-1006
Application 08/974,148
14
that a wetting agent may be used in the composition of the
invention, which wetting agent may be an anionic surfactant.
See column 3, line 55 - column 4, line 4. See, supra,
Lintner. See also, In re Wesslau, 353 F.2d 238, 241, 147
USPQ 391, 393 (CCPA 1965)(A reference should be considered
in its entirety for what it fairly suggests to one of
ordinary skill in the art.) Thus, Jackson alone teaches, or
at least would have suggested, use of a surfactant as
required by the claims under consideration. Accordingly,
the rejection of claims 6-8 is affirmed.
IV. Claim 10
Appellant argues that Jackson teaches away from
the use of a defoaming agent (recited in appealed claim 10)
in view of Jackson’s disclosure that bubble formation is
desirable because it imparts a scrubbing action to a
cleaning solution. Appeal Brief, page 9. As correctly
observed by the examiner, bubble formation is not excluded
from the claims on appeal. See, In re Zletz, 893 F.2d 319,
321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). The examiner
relies on Dell as disclosing that it is known in the art to
Appeal No. 2000-1006
Application 08/974,148
15
utilize anti-foaming agents for prevention of excess foaming
created during the application of cleaning solutions.
Examiner’s Answer, page 6. While appellant is correct that
Jackson does teach that “[t]he scrubbing foam enhances the
cleaning activity of the solvent” (Jackson, column 3, lines
24-25), Jackson also teaches that “excessive foaming” is
undesirable (Jackson, column 3, lines 55-66). Accordingly,
we agree that the proposed combination renders claim 10
obvious and the rejection is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
) BOARD OF
)PATENT APPEALS
PETER F. KRATZ ) AND
Administrative Patent Judge )INTERFERENCES
)
Appeal No. 2000-1006
Application 08/974,148
16
)
)
LINDA R. POTEATE )
Administrative Patent Judge )
LRP:psb
Appeal No. 2000-1006
Application 08/974,148
17
Birgit E. Morris, Esq.
16 Indian Head Road
Morristown, NJ 07960