Ex Parte Laser et al

Patent Trial and Appeal Board

Aug 31, 2016

13323160 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/323, 160 12/12/2011 Harold Laser
23368 7590 09/02/2016
DINSMORE & SHOHL LLP
FIFTH THIRD CENTER, ONE SOUTH MAIN STREET
SUITE 1300
DAYTON, OH 45402-2023
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
DBC 0002 PA/69607.111 4314
EXAMINER
DELCOTTO, GREGORYR
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
daytonipdocket@dinsmore.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAROLD LASER, BRANDON E. MAHLER, and
ROBERT E. EBBELER
Appeal2015-003187
Application 13/323,160
Technology Center 1700
Before GEORGE C. BEST, N. WHITNEY WILSON and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-19, 26-29, 34--38, 40, and 42. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 In our decision below, we refer to the Specification dated December 12,
2011 (Spec.), the Final Office Action appealed from, mailed January 28,
2014 (Final Act.), the Appeal Brief filed July 28, 2014 (Appeal Br.), the
Examiner's Answer mailed October 30, 2014 (Ans.), and the Reply Brief
filed December 30, 2014 (Reply Br.).
2 Appellants identify the real party in interest as DuBois Chemicals, Inc., the
assignee of the instant application. Appeal Br. 1.
Appeal2015-003187
Application 13/323,160
STATEMENT OF CASE
The claims are directed to cleaning compositions, specifically solvent
blends, for removing polymeric contaminants from papermaking surfaces.
Spec. i-f 3. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A cleaning composition for removing polymeric soils
compnsmg:
at least one surfactant;
at least one amine; and
a solvent blend comprising at least one aromatic alcohol,
at least one dibasic ester, and at least one terpene solvent.
Claims Appendix at Appeal Brief filed August 21, 2014, 2.
REJECTIONS
The Examiner made the following rejections:
A. Claims 1, 3-14, 16, 18, 19, 26-29, 34--38, 40, and42 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hei. 3 Final Act. 4.
B. Claims 2 and 15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hei in further view of Doyel. 4
Id. at 6.
C. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hei in further view of Trivedi. 5 Id. at 7.
OPINION
The Examiner rejects independent claims 1 and 34, and claims
depending therefrom, under 35 U.S.C. § 103(a) as being unpatentable over
3 Hei et al., US 2007/0087952 Al, published April 19, 2007.
4 Doyel et al., US 6,060,439, issued May 9, 2000.
5 Trivedi et al., WO 2009/137096 Al, published November 12, 2009.
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Application 13/323,160
Hei. Final Act. 4. The Examiner finds that Hei teaches a stripper/cleaner
composition used to clean floor finishes. Id. The Examiner further finds
that Hei teaches a composition that includes an organic amine, optionally
includes a surfactant and a solvent blend. Id. at 4--5. The Examiner
acknowledges that "Hei et al do[ es] not teach, with sufficient specificity, a
composition containing a surfactant, an amine, a solvent blend, and the other
requisite components of the composition in the specific amounts as recited
by the instant claims." Id. at 5. The Examiner also finds, of relevance to
claim 34 (and claim 40), that
Hei et al would suggest solvent blends having the same Hansen
Solubility Factor for polymeric soils as recited by instant claims
34 and 40 because Hei et al teaches solvents and blends of
solvents (e.g., benzyl alcohol, limonene, dimethyl adipate) which
are the same and used in the same amounts as the solvents and
blends of solvents as recited by the instant claims.
Id. at 5.
Claim 1
Appellants argue, in relevant part, that the solvent blend of claim 1 is
not taught or suggested by Hei. Appeal Br. 6. Appellants urge that
Hei provides a voluminous list of solvents, but provides no
teaching or suggestion for the claimed solvent blend comprising
at least one aromatic alcohol, at least one dibasic ester, and at
least one terpene solvent. While Hei mentions benzyl alcohol,
limonene, and dibasic ester in its exhaustive list of components,
Hei provides no clear suggestion to select these three specific
solvents or utilize these three solvents in combination.
Id. (emphasis added). Furthermore, Appellants contend that Hei does not
recognize that the claimed solvent blend is particularly effective to solubize
the polymeric soil, or "stickies." Id. As a result, there is no rationale to
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create the claimed solvent blend having three specific components. Id.
Appellants continue that it is the claimed three-component solvent blend that
is critical to achieving the "improvements in solubilizing efficacy." Id. at 7.
Without this necessary guidance, "the person of ordinary skill in the art is
required to randomly select three specific solvents from the voluminous list
of Hei without knowing which of the many possible choices is likely to be
successful .... " Id. at 8.
The Examiner answers and finds that
Hei et al clearly teach[ es] that suitable solvents for use in the
composition include mixtures ofbenzyl alcohol, limonene, and
dibasic esters such as dimethyl adipate in amounts from 20%,
to 90%, by weight, wherein this is the same solvent mixture as
recited by the instant claims (See paras. 20-21 of Hei et al).
Ans. 7. And, the Examiner concludes that
it would have been obvious to one of ordinary skill in the art, at
the time the invention was made, to formulate a composition
containing a surfactant, an amine, a solvent blend, and the other
requisite components of the composition in the specific amounts
as recited by the instant claims, with a reasonable expectation of
success and similar results with respect to other disclosed
components, because the broad teachings of Hei et al suggest a
composition containing a surfactant, an amine, a solvent blend,
and the other requisite components of the composition in the
specific amounts as recited by the instant claims.
Final Act. 5-6.
The test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). To sustain a rejection based on
obviousness grounds, "there must be some articulated reasoning with some
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Application 13/323,160
rational underpinning to support the legal conclusion of obviousness." In re
Kahn, 441F.3d977, 988 (Fed. Cir. 2006). "Even when obviousness is
based on a single prior art reference, there must be a showing of a suggestion
or motivation to modify the teachings of that reference." In re Kotzab, 217
F.3d 1365, 1370 (Fed. Cir. 2000).
Here, while the Examiner finds each of the requisite components
taught in Hei, the Examiner fails to identify any reason for the skilled artisan
to modify the teachings of Hei to include the claimed solvent blend,
"comprising at least one aromatic alcohol, at least one dibasic ester, and at
least one terpene solvent.". While the Examiner recognizes that "there must
be motivation to make the claimed invention" (Ans. 8), the Examiner's
articulated reason-i.e., that "the broad teachings of Hei et al suggest a
composition containing a surfactant, an amine, a solvent blend, and the other
requisite components of the composition" (Appeal Br. 5---6}-falls short of
explaining why the skilled artisan would have reason to create the three-
component solvent blend of claim 1. Kotzab, 217 F.3d 1370; In re Kahn,
441F.3d977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness."). On this record, we cannot sustain the
Examiner's rejection of claim 1, as well as claims depending from claim 1.
Claim 34
Appellants also argue that the Examiner improperly relies upon
inherency to find that a Hansen Solubility Factor of less than 4, as recited in
claims 34 (and 40), is present in Hei. Appeal Br. 8. Appellants contend that
the Examiner has failed to show that the claimed Hansen Solubility Factor is
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necessarily present in Hei. Id. at 9. Specifically, Appellants argue that
"[h ]ere, the person of ordinary skill in the art must create a hypothetical
formulation by randomly picking three specific solvents ... without any
guidance whatsoever ... [and] no appreciation of the synergistic
combination of the three solvents recited in the present claims." Id. And,
without this appreciation, "it cannot be asserted that the results of Hei's
hypothetical combination would yield the claimed Hansen Solubility
Factor." Id. Appellants also urge that not only is the "identical
composition" not shown in Hei, but Hei provides no guidance on how much
of each component should be used. Reply Br. 3. And because "the Hansen
Solubility Factor is dependent in part on solvent wt.%, ... the recitation of
Hansen Solubility Factor for solvent blends implicitly involves the
consideration of wt. % of each solvent in the blend. Consequently, Hei
clearly fails to teach an identical solvent blend which necessarily achieves
the claimed Hansen Solubility Factor below 4 .... " Id.
The Examiner reiterates his position that because Hei teaches solvents
that are the same and in the same amounts as the solvent blends of the
instant invention, the Hansen Solubility Factor would necessarily be met.
Ans. 7.
Again, we agree with Appellants and find that the Examiner has failed
to establish that Hansen Solubility Factor of less than 4 will necessarily
follow from Hei. The Examiner contends that Hei teaches the same solvent
blends in the same amounts as recited by the instant claims. Id. (emphasis
added). But, the Examiner points to no teaching in Hei discussing the
importance of having a Hansen Solubility Factor as claimed. Nor does the
Examiner direct attention to any teaching in Hei recognizing that solvent
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blends having hydrogen bonding and polar properties similar to the
compositions being solubilized is desirable. Spec. i-f 20. Moreover, the
Examiner concedes that "Hei et al do[es] not teach, with sufficient
specificity, a composition containing a surfactant, an amine, a solvent blend,
and the other requisite components of the composition in the specific
amounts as recited by the instant claims." Final Act. 5 (emphasis added).
And, as Appellants explain, "the solvent blend and the amounts (wt0/o) of
the solvent blend are necessary to calculate the Hansen Solubility Factor."
Reply Br. 3. Thus, because Hei does not teach about Hansen Solubility
Factor nor suggests a solvent blend in a weight percent that would achieve a
Hansen Solubility Factor as claimed, the Examiner has not adequately
supported the rejection. Without more, we cannot sustain the Examiner's
rejection of claim 34 (and claim 40).
CONCLUSION
The Examiner erred in rejecting claims 1-19, 26-29, 34--38, 40, and
42 under 35 U.S.C. § 103(a) as being unpatentable over Hei (among others).
DECISION
For the above reasons, the Examiner's rejection of claims 1-19, 26-
29, 34--38, 40, and 42 is reversed.
REVERSED
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