Ex Parte McClung

Board of Patent Appeals and Interferences

Nov 28, 2011

11056773 (B.P.A.I. Nov. 28, 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.
11/056,773 02/11/2005 James E. McClung 21609-002US2 6735
75589 7590 11/28/2011
Matheson Keys Garsson & Kordzik PLLC
7004 Bee Cave Rd.
Bldg. 1, Suite 110
Austin, TX 78746
EXAMINER
DELCOTTO, GREGORY R
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
11/28/2011 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 JAMES E. MCCLUNG
________________

Appeal 2011-000184
Application 11/056,773
Technology Center 1700
________________

Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

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Appellant appeals under 35 U.S.C. § 134 from the Examiner's decision
rejecting claims 1-20, 28-31, 35, 45-49, and 52-55. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.

Appellant claims a process of treating a contaminant in an agricultural
system with a composition comprising hydrogen peroxide, glycolic acid, and low
solids water wherein the composition has a pH of at least about 1.9 and at most
about 3.8.
Representative claim 1 reads as follows:
1. A process comprising:
(a) selecting a composition made by a process comprising
contacting hydrogen peroxide, glycolic acid, and low solids water
wherein
(i) water is present in an amount that prevents an
uncontrollable reaction between the hydrogen peroxide and glycolic
acid,
(ii) the low solids water comprises less than about 10
ppm dissolved solids and
(iii) the composition has a pH of at least about 1.9 and at
most about 3.8;
(b) utilizing the composition in an agricultural system, wherein
the composition contacts contaminant in the agricultural system; and
(c) treating at least some of the contaminant in the agricultural
system due to the contact of the composition and the contaminant,
wherein the agricultural system is selected from the group consisting
of (i) an agricultural growing process and (ii) a system comprising a
holding area, wherein the contaminant is treated at least in part in the
holding area.
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The references set forth below are relied upon by the Examiner as evidence
of obviousness:
Lokkesmoe et al. US 5,674,538 Oct. 7, 1997
Oakes et al. US 5,858,117 Jan. 12, 1999
Hei et al. US 2003/0078876 A1 May 8, 2003

Under 35 U.S.C. § 103(a), the Examiner rejects:
claims 1-20, 28-31, 35, 45-49, and 52-55 (i.e., all appealed claims) as
unpatentable over Lokkesmoe in view of Oakes; and
claims 1-20, 28-31, 35, 45-49, 52, and 54 as unpatentable over Hei in view
of Oakes.

We will sustain each of these rejections for the reasons given in the Answer
and below.

The § 103 Rejection based on Lokkesmoe and Oakes

The Examiner concludes, inter alia, that it would have been obvious to use
deionized water as the water used in Lokkesmoe's contaminant-treating processes
and compositions in view of Oakes, that it would have been obvious to formulate
these compositions at a pH of about 3.8, and that it would have been obvious to use
the compositions for treating contaminants in agricultural systems such as a
growing process and a holding area, thereby satisfying the low solids water, pH,
and agricultural system limitations of the rejected claims (Ans. 3-5).
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Appellant argues that there is no motivation to combine Lokkesmoe and
Oakes so as to use deionized water as the water used in Lokkesmoe's processes and
compositions (App. Br. 12-14).
We agree with the Examiner that Appellant's argument is unpersuasive (Ans.
para. bridging 10-11). The record reflects that using deionized water yields no
more than predictable results, thereby supporting the Examiner's obviousness
conclusion. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-16 (2007). This
conclusion is further supported by the fact that Lokkesmoe expressly discloses
using deionized water in formulating the TABLE 18 compositions of Working
Example 9 including the composition containing the hydrogen peroxide and
glycolic acid ingredients of the rejected claims (col. 15, ll. 27 et seq.; we note that
Appellant repeatedly cites the TABLE 18 disclosure (see, e.g., App. Br. para.
bridging 15-16, 17, 20)).
Appellant also argues that Lokkesmoe would not have suggested the claimed
pH of about 3.8 and that Lokkesmoe teaches away from such a pH by disclosing
examples which have pHs of 3.92 and above (App. Br. 11-12).
We find no convincing merit in the contention that Lokkesmoe's disclosures
of examples having pHs of 3.92 and above teach away from a pH of about 3.8.
This is because we find nothing, and Appellant points to nothing, in these
disclosures which suggests that a pH of about 3.8 is unlikely to produce the
objective desired by Appellant and by Lokkesmoe. See Syntex (U.S.A.) LLC v.
Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) ("Under the proper legal
standard, a reference will teach away when it suggests that the developments
flowing from its disclosures are unlikely to produce the objective of the applicant's
invention."). Indeed, Appellant's contention is undermined by the Specification
disclosure of acceptable pHs as high as about 4.5 (Spec. 11:15-17), thereby
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indicating that the claimed pH of about 3.8 yields no more than predictable results.
In short, the record supports the Examiner's conclusion that a pH of about 3.8
would have been obvious over the teachings of Lokkesmoe.
Appellant argues that Lokkesmoe contains no teaching or suggestion of
treating in agricultural systems as claimed (App. Br. 10-11).
We agree with the Examiner that the agricultural system limitations of the
appealed claims, when given their broadest reasonable interpretation consistent
with the Specification, encompass the fruit and vegetable processing systems of
Lokkesmoe (Ans. para. bridging 3-4, para. bridging 8-9). The Examiner's position
is well supported by the Specification which broadly defines the claim term
"system" as referring to "any method, process, apparatus, components, and the like
and combinations thereof related in any way or manner to the disclosed type of
system" (Spec. 12:18-20). In any event, we also agree with the Examiner that
Lokkesmoe's disclosure of treating contaminants in systems for processing fruits
and vegetables would have suggested treating contaminants in agricultural systems
where fruits and vegetables are processed such as the claimed agricultural growing
processes and agricultural holding areas (Ans. para. bridging 3-4, 5, para. bridging
8-9).
Appellant argues that the applied prior art contains no teaching or suggestion
of the "consisting essentially of" and "consisting of" limitations of dependent
claims 52-55 which limit the recited composition to hydrogen peroxide, glycolic
acid, and low solids water (App. Br. 18-19).
However, Lokkesmoe teaches producing the desired compositions by
combining hydrogen peroxide, carboxylic acid (e.g., glycolic acid), and water in
the amounts claimed by Appellant (col. 7, l. 50 to col. 8, l. 55). Appellant fails to
explain with any reasonable specificity why the "consisting essentially of" and
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"consisting of" limitations would not be satisfied by the composition immediately
formed by combining hydrogen peroxide, glycolic acid, and water in accordance
with the teachings of Lokkesmoe.1
Finally, Appellant states that the applied prior art contains no teaching or
suggestion of many other claim limitations such as the ratios and percentages
recited in the dependent claims (App. Br. 14-18).
These statements are nothing more than reiterations of claim limitations
combined with unembellished assertions of nonobviousness which fail to
meaningfully identify error in the rejection. For example, Appellant states that the
water percentage limitations of dependent claims 8, 9, 11 and 17 would not have
been obvious over the TABLE 18 disclosure of Lokkesmoe (id. at 16-17).
However, Appellant fails to explain why the water amounts broadly disclosed by
Lokkesmoe (col. 7, ll. 45-60; cited by the Examiner (Ans. para. bridging 3-4)) do
not teach or would not have suggested the water percentages of these dependent
claims. Such unembellished assertions of nonobviousness reveal no harmful error
in the Examiner's findings of fact or conclusions of law.
For the reasons stated above and in the Answer, the Examiner has
established a prima facie case of obviousness for the subject matter defined by the
argued claims under rejection.
Appellant argues that "Applicant has provided objective evidence
establishing the claimed invention has unexpected advantages and improved
properties over the prior art" (App. Br. 20). Specifically, Appellant identifies as
such evidence Attachments 1-5 of the McClung Declaration (dated September 6,
2007) under 37 C.F.R. § 1.132 (id. at 20-25).
                                                            
1 We recognize mixing such ingredients will ultimately produce at least some
peroxyglycolic acid. However, prior to formation of the peroxyglycolic acid, the
composition would consist of hydrogen peroxide, glycolic acid, and water only.
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As correctly indicated by the Examiner (Ans. para. bridging 11-12), the
burden of showing unexpected results rests on the person who asserts them by
establishing that the difference between the claimed invention and the closest prior
art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972); Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (BPAI 1992). Further, the
showing of unexpected results must be commensurate in scope with the claims.
See In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003). Finally, unexpected
results must be established by factual evidence, and attorney statements are
insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465,
1470-71 (Fed. Cir. 1997).
These principles of law lead us to agree with the Examiner (Ans. 11-13) that
Appellant has failed to carry the burden of showing that the results in
Attachments 1-5 of the § 1.132 McClung Declaration evince differences between
the claimed invention and Lokkesmoe (i.e., the closest prior art) which are
unexpected and commensurate in scope with the rejected claims.
For example, Attachment 1 is described in the Declaration merely as a report
which analyzed a product known as Oxy-Pro which product "was a composition
that fell within the scope of the hydrogen peroxide/glycolic acid/water composition
utilized within the pending claims of the Application" (Decl. para. 2). The
Declaration does not state, or explain why, the results shown in Attachment 1 are
unexpected and does not state, or explain why, the Oxy-Pro product is
commensurate in scope with the rejected claims. According to the Appeal Brief,
Figure 16 of Attachment 1 shows results which are unexpected and contrary to the
teachings of Lokkesmoe by displaying "prominent peaks at 75 and 133,
corresponding to glycolic acid and its ester, but no peak is marked in the region of
92, which is the molecular weight of peroxyglycolic acid" (App. Br. 20).
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However, this commentary in the Appeal Brief is simply a non-evidential attorney
statement. No corresponding statement is made in the Declaration, and no factual
evidence is identified in support of this statement.
The Declaration characterizes Attachment 2 as "a graph showing tubercular
rate of kill test of the Oxy-Pro product and a Comparator product" (Decl. para. 3).
However, the Declaration: does not state, or explain why, the results of this test are
unexpected; does not state, or explain why, the tested Oxy-Pro product is
commensurate in scope with the rejected claims; and does not state, or explain
why, the tested Comparator product is representative of the closest prior art (i.e.,
Lokkesmoe). The Appeal Brief contains statements directed to these deficiencies
(App. Br. 22-24) (e.g., "Attachment 2 is commensurate in scope with the claims"
(id. at para. bridging 23-24)). Once again, these are attorney statements and
accordingly are insufficient to establish unexpected results.
Attachments 3-5 of the Declaration are similarly deficient. The Examiner
accurately describes these attachments as merely showing certain physical
properties (Ans. para. bridging 12-13). The discussions in the Appeal Brief
regarding Attachments 3-5 (App. Br. 24-25) are attorney statements which do not
correspond to statements made in the Declaration. Again, the Declaration does not
state or explain why unexpected results are shown by these Attachments (see Decl.
paras. 4-6).
For the reasons stated above and in the Answer, we determine that the
§ 1.132 McClung Declaration does not provide persuasive evidence of unexpected
results. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir.
2004) ("The Board has broad discretion as to the weight to give to declarations
offered in the course of prosecution."). See also Sud-Chemie, Inc. v. Multisorb
Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) ("[E]vidence of unexpected
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results and other secondary considerations will not necessarily overcome a strong
prima facie showing of obviousness"). On this record, a preponderance of the
evidence weighs in favor of obviousness.
Additionally, Appellant argues that the claimed invention enjoys commercial
success as well as industry praise and relies on the Second McClung Declaration
(dated April 28, 2008) under 37 C.F.R. § 1.132 in support of this argument (App.
Br. 25-28).
Secondary considerations of nonobviousness, such as commercial success
and industry praise, must be considered when present. Geo. M. Martin Co. v.
Alliance Mach. Sys. Int'l LLC, 618 F.3d 1294, 1304 (Fed. Cir. 2010). The
commercial success of a product is relevant to the nonobviousness of a claim only
insofar as the success of the product is due to the claimed invention. Id. Industry
praise must also be linked to the claimed invention. Id. at1305. Further, objective
evidence of nonobviousness, including commercial success and industry praise,
must be commensurate in scope with the claims. Asyst Techs., Inc. v. Emtrak, Inc.,
544 F.3d 1310, 1316 (Fed. Cir. 2008) (reh’g and reh’g en banc den’d).
Like the Examiner (Ans. 13-14), we consider the Second McClung
Declaration as insufficient to show that the asserted secondary considerations are
present or that such considerations are due to and commensurate in scope with the
claimed invention.
For example, the evidence of commercial success appears to be limited to
Declarant McClung's statement that "[t]o date, Sitos Pellas has purchased over
10,000 gallons of PGT’s Oxy-Pro composition" (Sec. Decl. para. 11). However,
no basis has been provided for assessing whether this 10,000 gallon purchase
represents commercial success. Similarly, the evidence of industry praise appears
to be limited to Declarant McClung's unsupported statement that "Sitos Pellas
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indicated to PGT that the Oxy-Pro composition performed far superior than any
other product and that PGT’s Oxy-Pro composition had unexpected success in
these uses" (id. at para. 10). That is, McClung merely states that Sitos Pellas
"indicated" praise without providing any specific factual evidence of the praise
itself. In the absence of such evidence, it is impossible to assess whether (and in
what context) Sitos Pellas may have expressed objective praise for the claimed
invention.
Further, the Oxy-Pro product discussed in the Second McClung Declaration
is characterized only as "a composition that falls within the scope of the hydrogen
peroxide/glycolic acid/water composition utilized within the pending claims of the
Application" (id. at para. 4). In view of this limited characterization, it is not
possible to assess whether the Oxy-Pro product is commensurate in scope with the
appealed claims and concomitantly whether any commercial success or industry
praise generated by Oxy-Pro is due to the claimed invention.
Under the circumstances outlined above and in the Answer, it is our
determination that the § 1.132 Second McClung Declaration does not persuasively
evince commercial success or industry praise. In any case, even substantial
evidence of commercial success and industry praise, given a strong prima facie
obviousness showing, may be inadequate to overcome a final conclusion of
obviousness. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007).
We sustain, therefore, the § 103 rejection of claims 1-20, 28-31, 35, 45-49,
and 52-55 (i.e., all appealed claims) as unpatentable over Lokkesmoe and Oakes.

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The § 103 Rejection based on Hei and Oakes

According to the Examiner:
It would have been obvious to one of ordinary skill in the art, at
the time the invention was made, to use deionized water in the
composition taught by Lokkesmoe et al [sic, Hei], with a reasonable
expectation of success, because Oakes et al teach the use of deionized
water in a similar cleaning composition and further, Hei et al teach the
use of water as a diluent in general. Additionally, note that, deionized
water would be desirable for use by one of ordinary skill in the art in
the cleaning compositions taught by Hei et al to reduce contamination
of the required components and the substrate on which the
composition will be used.
It would have been obvious to one of ordinary skill in the art, at
the time the invention was made, to clean using a process comprising
formulating a composition containing hydrogen peroxide, glycolic
acid, water, and the other requisite components of the composition
and use such a composition in an agricultural system to clean said
system as recited by the instant claims, with a reasonable expectation
of success, because the broad teachings of Hei et al in combination
with Oakes et al suggest a process comprising formulating a
composition containing hydrogen peroxide, glycolic acid, water, and
the other requisite components of the composition and using such a
composition in an agricultural system to clean said system as recited
by the instant claims.
(Ans. 7-8).
Appellant argues that Hei is not prior art because the claimed invention was
reduced to practice before Hei's filing date of July 13, 2001 (App. Br. 29). As
support for this argument, Appellant relies on the Supplemental McClung
Declaration (dated September 6, 2007) under 37 C.F.R. § 1.131 which includes
Exhibits A-D for corroborating reduction to practice (id. at 29-34). These Exhibits
constitute copies of Appellant's U.S. Provisional Patent Application No.
60/233,064 (Exhibit B), a letter with attachment to Appellant's attorney regarding
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the Provisional Application (Exhibit A), and letters from third parties regarding the
testing of compositions (Exhibits C-D).
In order to establish an actual reduction to practice, an inventor's testimony
must be corroborated by independent evidence. Cooper v. Goldfarb, 154 F.3d
1321, 1330 (Fed. Cir. 1998). A § 1.131 declaration must adequately explain what
facts or data are relied upon to show a completion of the invention prior to the
critical date. In re Borkowski, 505 F.2d 713, 719 (CCPA 1974). Vague and
general statements in the broadest terms as to what exhibits show along with the
assertion that the exhibits describe a reduction to practice amount essentially to
mere pleading, unsupported by proof or showing of facts. Id. If a reduction to
practice of the basic invention has been shown, the showing will suffice as to
claims differing from the basic invention only in details which are obvious to one
of ordinary skill in the art. In re Spiller, 500 F.2d 1170, 1178 (CCPA 1974).
The Examiner regards the § 1.131 Declarations of record as insufficient to
show actual reduction to practice of the claimed invention prior to Hei's filing date
(Ans. 14-17). According to the Examiner, the § 1.131 evidence including the
Provisional Application does not show a reduction to practice of an invention
which is commensurate in scope with the claims (e.g., with respect to claim
limitations concerning weight percentages and pH ranges) (id.). Similarly, the
Examiner criticizes the evidence as inadequate to show that the composition
referred to by Declarant McClung corresponds to the claimed invention (id.).
We agree with the Examiner that Appellant's Supplemental Declaration fails
to show the claimed invention was actually reduced to practice prior to the critical
date. For example, the Supplemental Declaration includes the statement
"[p]ertaining to present Claim 1 [i.e., the representative claim] of the Application,
before July 13, 2001, we were" (Sup. Decl. para. 6) followed by a reiteration of the
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process steps recited in the claim. Inappropriately, the Supplemental Declaration
does not explain what facts or data are relied upon to show a completion of the
specific claim 1 invention prior to the critical date. In this sense, the Supplemental
Declaration statements regarding claim 1, as well as the other referenced claims,
are uncorroborated and amount to mere pleading, unsupported by proof or showing
of facts.
In this latter regard, the Appeal Brief contains an argument that
corroboration is provided by paragraph 18 of the Supplemental Declaration.
Specifically, it is argued that "the Oxy-Pro composition (then known as 'Clean
Rinse') [which] was tested at Packaging Corporation of America [per Exhibit C]
before July 13, 2001, was the composition of Example I in the Application.
(Supplemental McClung 131 Declaration, ¶ 18)" (App. Br. 33). However, this
paragraph of the Supplemental Declaration does not state that the tested
composition "was the composition of Example I" (id.). Rather, the Declaration
merely states that "[a]n explanation of this testing [i.e., by Packaging Corporation
of America] appears in the Application, at Examples II and III (using the
composition of Example I)" (Sup. Decl. para. 18). Thus, the Supplemental
Declaration states that the Example I composition was used in Examples II and III
of the subject Application but does not state that this composition was tested prior
to the critical date as argued in the Appeal Brief.
It is appropriate to emphasize the Examiner's above criticism that the
§ 1.131 evidence fails to show reduction to practice of such claim features as
weight percentages and pH ranges and therefore is not commensurate in scope with
the claims. This criticism bears emphasis because Appellant explicitly argues that
such claim features would not have been obvious (see, e.g., App. Br. 11-12, 15-16,
34-35). As indicated previously, a reduction to practice showing is insufficient as
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to claims which differ from the reduced-to-practice invention in details not obvious
to one of ordinary skill in the art.
For the reasons expressed above and in the Answer, the § 1.131
Supplemental Declaration is inadequate to establish that Appellant's claimed
invention was reduced to practice prior to the filing date of the Hei reference.
Accordingly, this reference remains available as prior art against the rejected
claims.
Appellant states that, even if Hei is prior art, the rejected claims are not
"obvious because Hei and Oakes do not teach or suggest (alone or in combination)
the pH limitation" and "because there is no motivation to combine Hei and Oakes"
(id. at 35). However, Appellant has failed to embellish these statements with any
reasonably specific explanation in support thereof. In the absence of such
explanation, Appellant's unembellished statements are merely assertions of
nonobviousness which fail to identify harmful error in the findings of fact or
conclusions of law made by the Examiner in support of the rejection under review.
Appellant's remaining argument and evidence against this rejection (id.)
correspond to those addressed previously and are unpersuasive for the reasons
given in the Answer and above.
In light of the foregoing, we also sustain the § 103 rejection of claims 1-20,
28-31, 35, 45-49, 52, and 54 as unpatentable over Hei and Oakes.

Conclusion

The decision of the Examiner 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)(v).
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AFFIRMED
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