Ex Parte Law et al

Board of Patent Appeals and Interferences

Mar 6, 2009

11061239 (B.P.A.I. Mar. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID LAW, ROBERT BALL,
GREGORY W. DREWNO, and MICHAEL J. ANCHOR
____________

Appeal 2009-2141
Application 11/061,239
Technology Center 1700
____________

Decided:1 March 06, 2009
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Before EDWARD C. KIMLIN, PETER F. KRATZ,
and CATHERINE Q. TIMM, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-9, 11, 12, 14-18,

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-2141
Application 11/061,239

and 22. Claims 19-21 stand withdrawn from consideration, and claim 13 has
been allowed by the Examiner. We have jurisdiction under 35 U.S.C.
§ 6(b). Claim 1 is illustrative:
1. A composition comprising a polypropylene glycol, a
polyethylene glycol ester, an amine, and optionally an alcohol.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 2-3):
Olbrueck 4,619,711 Oct. 28, 1986
Plishka 5,629,277 May 13, 1997
Joye 6,358,901 B1 Mar. 19, 2002
Fedrigo 2003/0153477 A1 Aug. 14, 2003
Man 2005/0164902 A1 Jul. 28, 2005
Appealed claims 15-18 stand rejected under 35 U.S.C. § 112, second
paragraph. Appealed claims 1-9, 11, 12, 14 and 22 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Fedrigo in view of Plishka, Joye,
and Olbrueck. Appealed claims 1-7 and 9 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Man.
We will not sustain the Examiner’s rejection of claims 15-18 under
§ 112, second paragraph. The basis of the Examiner’s rejection is that
claims 15 and 17 require that the composition of claim 13 further comprises
a solvent and water, respectively, even though the components recited in
claim 13 add up to 100 percent. According to the Examiner, “there is no
additional room left in the composition for the components further added to
the composition as recited by instant claims 15 and 17” (Ans. 3, second
para.). However, we agree with Appellants that one of ordinary skill in the
art would readily understand, in light of the present Specification, that
claims 15-18 define a composition that comprises polypropylene glycol, a
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Appeal 2009-2141
Application 11/061,239

polyethylene glycol ester, and an amine in the recited amounts in addition to
an unspecified amount of solvent. Manifestly, the percentages by weight set
forth in claim 13 will decrease upon the addition of a solvent. That the
claims broadly define an unspecified amount of solvent does not render the
claims indefinite under § 112, second paragraph.
We will also not sustain the Examiner’s § 103 rejection of claims 1-9,
11, 12, 14 and 22 over Fedrigo in view of Plishka, Joye and Olbrueck.
Fedrigo discloses a purge solution for removing paint residue that comprises
a C4 alcohol, such as butanol, and co-solvent selected from the group
consisting of glycol ethers, acetone and polyethylene glycols (see [005]). As
acknowledged by the Examiner, Fedrigo is specific to C4 alcohols and does
not teach the use of the presently claimed polypropylene glycol and
polyethylene glycol ester. The Examiner relies upon Plishka for the
obviousness of using polypropylene glycol as a co-solvent in the
composition of Fedrigo. However, Fedrigo expressly discloses that the co-
solvent is limited to a selection of three types of compounds, none of which
include polypropylene glycol. Furthermore, as argued by Appellants,
Plishka does not teach polypropylene glycol as a solvent but, rather, as a
viscosity modifier. Also, we agree with Appellants that the paint removing
compositions of Fedrigo and Plishka are not sufficiently similar to support
the conclusion that one of ordinary skill in the art would have reasonably
expected successfully substituting polypropylene glycol for the polyethylene
glycol solvent of Fedrigo. Fedrigo provides no teaching or suggestion that
polyalkylene glycols, in general, are suitable as co-solvents in the purge
composition. On the contrary, Fedrigo’s disclosure is limited to
polyethylene glycols.
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Appeal 2009-2141
Application 11/061,239

In addition, the Examiner has not established that Fedrigo’s mere
mention of using surfactants, in general, would have suggested the use of the
polyethylene esters disclosed by Joye and Olbrueck that are used in different
compositions.
We will sustain the Examiner’s § 103 rejection of claims 1-7 and 9
over Man. There is no dispute that Man discloses a cleaning composition
that may comprise the presently claimed components, namely, a
polypropylene glycol, a polyethylene ester, and an amine. Although Man
does not exemplify a specific composition that comprises the claimed
components, we agree with the Examiner that the reference fairly teaches
that an effective cleaning composition may comprise all the recited
components. We do not understand Appellants’ argument that “the Man
reference is nonanalogous art to the present invention and the Man
reference, at most, only extends an invitation to experiment” (App. Br. 7,
penultimate para.). Appealed claims 1-7 and 9 define only a composition
without even a recitation of intended use. Consequently, we find no basis
for characterizing Man, which is directed to a cleaning composition, as non-
analogous to the subject matter of claims 1-7 and 9 which broadly define a
composition.2 Also, we note that Appellants base no argument upon
objective evidence of non-obviousness, such as unexpected results.
In conclusion, based on the foregoing, the Examiner’s rejection of
claims 15-18 under 35 U.S.C. § 112, second paragraph, is reversed, as is the
Examiner’s § 103 rejection of claims 1-9, 11, 12, 14 and 22 over Fedrigo in

2 Claims 1-7 and 9 stand or fall together since Appellants have not presented
separate arguments for any of the claims in this group of claims under
rejection.
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Appeal 2009-2141
Application 11/061,239

view of Plishka, Joye and Olbrueck. The Examiner’s § 103 rejection of
claims 1-7 and 9 over Man is affirmed. Accordingly, the Examiner’s
decision rejecting the appealed claims is Affirmed-In-Part.

No time period for taking any subsequent action in connection with
appeal may be extended. 37 C.F.R. § 1.136(a).

[AFFIRMED-IN-PART]

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