Ex Parte McClung

Board of Patent Appeals and Interferences

Dec 8, 2011

11056659 (B.P.A.I. Dec. 8, 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.
11/056,659 02/11/2005 James E. McClung 21609-002US4 5075
75589 7590 12/08/2011
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
12/08/2011 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 2010-010049
Application 11/056,659
Technology Center 1700
____________

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

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

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Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-20, 28-31, 35, and 45-67, the only claims pending in the
Application2.3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The invention “relates to a method of utilizing a composition effective in
reducing the concentration of a contaminant in paper producing systems and/or a
pulp producing systems [sic]. The composition is made by a process of contacting
hydrogen peroxide, glycolic acid, and water in a controlled reaction.” (App. Br. 2
(citations omitted).) Representative claim 1 is reproduced below from the Claims
Appendix to the Appeal Brief (App. Br. 43):
1. A process comprising:
(a) selecting a composition made by a process comprising
contacting hydrogen peroxide, glycolic acid, and water wherein said
water is present in an amount that prevents an uncontrollable reaction
between the hydrogen peroxide and glycolic acid, wherein the
composition has a pH of at least about 1.9 and at most about 3.8;

(b) utilizing the composition in a system selected from the
group consisting of paper producing systems, pulp producing systems,

1 Final Office Action mailed Jun. 27, 2008 (“Final”).
2 The Application is a division of SN 10/333,101, filed Jul. 14, 2003, and claims
benefit of Provisional Application 60/223,064 (“the ‘064 Provisional
Application”), filed Aug. 4, 2000 (attached as Exhibit B to Appendix C of the
Appeal Brief). (See Amended Specification filed Feb. 11, 2005.) An appeal in
SN 10/333,101 (Appeal 2010-006805) was decided by this panel on Nov. 17,
2011. The present Application is related to SN 11/056,773, a division of SN
10/333,101. An appeal in SN 11/056,773 (Appeal 2011-000184) was decided by
this panel on Nov. 28, 2011. The present Application is also related to
SN 11/056,853, a division of SN 10/333,101. A notice of appeal was filed in
SN 11/056,853 (Appeal 2010-006202) on Jan. 12, 2009.
3 Appeal Brief filed May 27, 2009, as supplemented on Apr. 5, 2010 (“App. Br.”).
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and combinations thereof, wherein the composition contacts
contaminant in the system; and

(c) treating at least some of the contaminant in the system
due to the contact of the composition and the contaminant.

The appealed claims stand rejected as follows:
1. claims 1-20, 28-31, 35, 45-59, and 62-67 under 35 U.S.C. § 103(a) as
unpatentable over Lokkesmoe4 in view of Schneider5 or Sanderson6 (Ans.7 3-6);
2. claims 1-20, 28-31, 35, 45-59, and 62-658 under 35 U.S.C. § 103(a) as
unpatentable over Hei9 in view of Schneider or Sanderson (Ans. 6-8);
3. claims 60 and 61 under 35 U.S.C. § 103(a) as unpatentable over Lokkesmoe
in view of Schneider or Sanderson, and further in view of Oakes10 (Ans. 8-9); and
4. claims 60 and 61 under 35 U.S.C. § 103(a) as unpatentable over Hei in view
of Schneider or Sanderson and further in view of Oakes (Ans. 8-9).
We vacate the rejections based on Schneider, such that these rejections are
set aside and no longer exist.11

4 US 5,674,538 issued Oct. 7, 1997.
5 US 2002/0102246 A1 published Aug. 1, 2002.
6 US 4,541,944 issued Sep. 17, 1985.
7 Examiner’s Answer mailed Sep. 4, 2009.
8 Appellant includes claims 66 and 67 in this ground of rejection. (App. Br. 4, 32.)
We view this as in inadvertent error since neither the Final Office Action (Final 6)
nor the Answer (Ans. 6) includes these claims in the rejection over Hei. (But see
Ans. 3 (“The appellant’s statement of the grounds of rejection to be reviewed on
appeal is correct”).)
9 US 2003/0087786 A1 issued May 8, 2003.
10 US 5,858,117 issued Jan. 12, 1999.
11 All rejections are based on Schneider or Sanderson in the alternative. These
references are primarily relied on for the limited purpose of teaching the use of a
similar composition and its equivalence in cleaning paper mills and food
processing equipment. (See FF 5 infra p. 7.) We view Sanderson as more relevant
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ISSUES
Appellant relies on the same arguments in traversing the merits of the
rejections based on Lokkesmoe (grounds 1 and 3) and Hei (grounds 2 and 4). (See
App. Br. 36-37.) Appellant’s arguments are primarily directed to limitations
common to independent claims 1 and 35. (See generally, Id. at 5-14.) Appellant
also contends various dependent claims are separately patentable. (See Id. at 14-18
(as to dependent claims 2-11 and 17-20), id. at 21 (as to dependent claims 62 and
64), id. at 22 (as to claims 63, 65, 66, and 67); cf. id. at 18-21 (relying on
limitations in claims 1 and 35 in support of patentability of dependent claims 12-
16, 28-31, and 45-59) and id. at 37-42 (traversing the rejections of claims 60 and
61(grounds 3 and 4) on the basis that Oakes does not cure the deficiencies of the
primary references).)12 With respect to the rejections based on Hei (grounds 2 and
4), Appellant raises an additional issue, which we consider prior to addressing
Appellant’s arguments on the merits:
Issue 1: Did the Examiner reversibly err in relying on Hei, because Hei is
not § 102 prior art?
We answer this question in the negative, determining that Hei is available as
prior art.

to the subject matter on appeal (see FF 7 infra p. 7.). See The Manual of Patent
Examining Procedure (MPEP) § 706.02 (8th Ed. rev. 6, Sep. 2007) (“Merely
cumulative rejections, i.e., those which would clearly fall if the primary rejection
were not sustained, should be avoided.”).
12 We note that most of Appellant’s arguments in support of patentability of the
dependent claims are nothing more than reiterations of claim limitations combined
with unembellished assertions of nonobviousness. As such, they are not truly
arguments in support of separate patentability. See 37 C.F.R. § 41.37(c)(1)(vii)
(“A statement which merely points out what a claim recites will not be considered
an argument for separate patentability of the claim.”).
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We next consider Appellant’s arguments on the merits, which raise the
following issues with respect to the Examiner’s prima facie case:
Issue 2: Did the Examiner reversibly err in finding that the applied prior art
teaches or suggests a process of treating contaminant in a system which includes a
step of selecting a composition of hydrogen peroxide, glycolic acid, and water
having “a pH of at least about 1.9 and at most about 3.8” as recited in independent
claims 1 and 35, or “at most about 3.5” as recited in dependent claims 62 and 64?
Issue 3: Did the Examiner reversibly err in finding that one of ordinary skill
in the art would have had a reasonable expectation of success in using, and would
have been motivated to use the compositions of Lokkesmoe and Hei in a paper
and/or pulp producing system based on the teachings of Sanderson?
Issue 4: Did the Examiner reversibly err in finding that the applied prior art
teaches or suggests a process of treating contaminant in a system which includes a
step of selecting a composition of hydrogen peroxide, glycolic acid, and low solids
water which includes (1) hydrogen peroxide and glycolic acid in the specific
weight ratios recited in claims 2-6, 10, and 18-20, (2) water present in the specific
amounts recited in claims 8, 9, 11, and 17, and (3) contacting the composition with
isopropyl alcohol as recited in claim 7?
Issue 5: Did the Examiner reversibly err in finding that the applied prior art
teaches or suggests a process of treating contaminant in a system which includes a
step of selecting a composition that “consists essentially of” (claims 63 and 65) or
“consists of” (claims 66 and 67) a mixture prepared by contacting hydrogen
peroxide, glycolic acid, and water?
We answer each of the foregoing questions in the negative for the reasons
explained in the Answer and below, concluding that the Examiner established a
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prima facie case of obviousness. Accordingly, we also consider Appellant’s
evidence of secondary considerations, which raise the following issue:
Issue 6: Did the Examiner reversibly err in concluding that a preponderance
of the evidence, taking into account Appellant’s evidence of unexpected results
and long-felt need, weighs in favor of obviousness?
We likewise answer this question in the negative for the reasons explained in
the Answer and below and, therefore, are not persuaded of reversible error in the
Examiner’s obviousness determination as to appealed claims 1-20, 28-31, 35, and
45-67.
FINDINGS OF FACT (“FF”)
1. The Examiner finds Lokkesmoe discloses using a composition as
claimed in claims 1 and 35 in a process for preventing microbial growth in
“aqueous streams used in any number of applications.” (Ans. 3-4.) Lokkesmoe
discloses the composition may include additional ingredients, including alcohols.
(Lokkesmoe col. 7, ll. 14-19.)
2. The Examiner finds Hei discloses a method of using a composition as
claimed in claims 1 and 35 “to reduce a population of one or more microorganisms
on an object such as on a surface or in a fluid,” including industrial process
streams. (Ans. 6.) Hei discloses the composition may include isopropanol as a
solvent or co-solvent. (Hei ¶¶ [0054-0055].)
3. Each of the appealed independent claims (claims 1 and 35) recites a
process step in which the composition is used in a system selected from the group
consisting of “paper producing systems, pulp producing systems, and combinations
thereof.” The Examiner concedes Lokkesmoe (Ans. 4) and Hei (id. at 7) do not
teach or suggest processes which include this step.
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4. The Examiner finds Sanderson discloses peroxygen compounds and
generation of organic peroxyacids from activators, and the use of compositions
containing these activators and compositions for cleaning, bleaching or
disinfecting. (Id. at 4 (citing Sanderson col. 1, ll. 5-15).) The compositions may
contain alcohols such as isopropanol. (Id. (citing col. 14, ll. 1-15).) The Examiner
finds Sanderson also discloses the use of the compositions for
disinfecting/sanitizing aqueous media such as recirculating water systems or
effluents from food-processing industries, paper mills, and sewage stations, etc.
(Id. at 4-5 (citing col. 17, l. 50-col. 18, l. 20).)
5. The Examiner determines (id. at 5, 7):
[i]t would have been obvious to one of ordinary skill in the art, at the
time the invention was made, to use the composition as taught by
[Lokkesmoe or Hei] to clean paper or pulp producing systems, with a
reasonable expectation of success, because Schneider et al or
Sanderson teach the use of a similar composition and its equivalence
in cleaning paper mills, food processing equipment, CIP systems, etc.,
and further, [Lokkesmoe and Hei] teach cleaning aqueous systems in
food streams, various other aqueous systems, and CIP systems in
general.

6. Appealed claim 7 recites (App. Br. 44):
The process according to claim 1 further comprising contacting with
isopropyl alcohol.

7. The Examiner determines (Ans. 5, 7):
[i]t would have been obvious to one of ordinary skill in the art, at the
time the invention was made, to use isopropyl alcohol in the
composition taught by [Lokkesmoe or Hei] with a reasonable
expectation of success, because Sanderson teaches the use of
isopropanol in a similar cleaning composition and further,
[Lokkesmoe and Hei] teach the use of various adjuvant ingredients
which would encompass isopropyl alcohol.

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8. Appellant contends “Hei is not prior art to any of the pending claims
of the Application.” (App. Br. 32.) Appellant relies on the Supplemental
Declaration of the inventor, James McClung13 under 37 C.F.R. § 1.13114 to
establish the invention recited in each of the appealed claims was reduced to
practice before Hei’s filing date of July 13, 2001. (See generally, App. Br. 32-36.)
9. Mr. McClung testified that “[b]efore July 13, 2001, the invention, as
claimed by Claims 1-20, 28-31, 35, and 45-67, was actually reduced to practice.”
(§ 131 Dec. ¶ 5; see also, ¶¶ 6-12.) Mr. McClung is “the CFO of Progressive
Global Technologies, Inc. (‘PGT’), to which [he has] exclusively licensed the
Application.” (Id. at ¶ 1.)
10. According to Mr. McClung, “compositions of hydrogen peroxide,
glycolic acid, and low solids water . . . disclosed and taught” “[i]n the ‘064
Provisional Application” “fall within the limitations expressed in the present
claims of the Application.” (Id. at ¶ 16.)
11. The ‘064 Provisional Application discloses a method for preparing a
compound containing hydrogen peroxide containing hydroxy acetic acid in an

13 Executed Mar. 18, 2008 (“§ 131 Dec.”) (App. Br. Appendix C.)
14 37 C.F.R. § 1.131 reads, in relevant part:

(a) When any claim of an application . . . is rejected, the
inventor of the subject matter of the rejected claim . . . may submit an
appropriate oath or declaration to establish invention of the subject
matter of the rejected claim prior to the effective date of the reference
. . . on which the rejection is based. . . .
* * *
(b) The showing of facts shall be such, in character and weight,
as to establish reduction to practice prior to the effective date of the
reference. . . . Original exhibits of drawings or records, or
photocopies thereof, must accompany and form part of the affidavit or
declaration or their absence must be satisfactorily explained.
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aqueous solution wherein “a solution of 35% hydrogen peroxide, such percent
ranging from 8% to 36%, is mixed into a stabilizing amount (up to 80%) of de-
ionized or reverse osmosis treated water” and “an effective amount of hydroxy
acetic acid (glycolic acid) ranging from 0.75% to 10%, is incorporated into the
mixture.” (App. Br. Appendix C, Exhibit B15 p. 3.)
12. Mr. McClung testified that Exhibit A to the § 131 Dec. is a redacted
letter regarding the ‘064 Provisional Application sent by PGT to an attorney, Ross
Garsson, prior to July 13, 2001. (See § 131 Dec. ¶17.) A redacted attachment to
the letter describes “[u]sing an appropriate amount by volume of water treated by
reverse osmosis and/or de-ionization process to provide for zero dissolved solids[,]
. . . 35% stabilized hydrogen peroxide[, and g]lycolic acid (hydroxyacetic acid) in a
variable percentage for desired effect,” and states that the composition has been
tested in “Paper & Pulp [applications] as a descalant and biocide.” (App. Br.
Appendix C, Exhibit A attachment.)
13. Mr. McClung testified that Exhibits C and D to the § 131 Dec. are
unsolicited letters from third parties, Packaging Corporation of America (“PCA”)
and Colwell, regarding their use or testing of a composition referred to as “Clean
Rinse” 16 which “was a composition that fell within the scope of the hydrogen
peroxide/glycolic acid/water composition utilized within the pending claims of the
Application.” (§ 131 Dec. ¶¶ 18-20.) Mr. McClung states that these letters were
received before July 13, 2001. (Id. at ¶ 21.)
14. Appellant argues that even if Hei is prior art, a prima facie case of
obviousness has not been established as to appealed independent claims 1 and 35

15 See § 131 Dec. ¶ 14 (“Exhibit B is a true and correct copy of the ‘064
Provisional Patent Application, which was printed from the USPTO website.”)
16 Mr. McClung testified that “Oxy-Pro” is the trademark under which the Clean
Rinse product was later sold by PGT. (§ 131 Dec. ¶ 18.)
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because the Examiner has not identified a teaching or suggestion of a process
which includes a step of selecting a composition of hydrogen peroxide, glycolic
acid, and low solids water having a pH of at least about 1.9 and at most about 3.8,
and one of ordinary skill in the art would not have been motivated to combine, nor
had a reasonable expectation of success in combining Hei with Schneider or
Sanderson. (App. Br. 36.)
15. Claims 1 and 35 recite a preferred pH range of 1.9 to 3.8. (Spec.
11:16-17.) The Specification states that the composition “generally has a pH of at
least about 1.5 and at most about 4.5, preferably at least about 1.7 and at most
about 4.” (Id. at 11:15-16.)
16. Lokkesmoe discloses working examples of compositions in which the
pH is 3.92 or greater (App. Br. 10 (citing Lokkesmoe Tables 2-5)), which is within
the range indicated as acceptable for the composition of the invention. (See FF 15
supra.) Hei discloses “[t]he pH of the use solution is from about 3 to about 7
depending on the other components” (Ans. 6 (citing Hei ¶ [0105])), which overlaps
with the pH ranges recited in appealed claims 1, 35, 62, and 64.
17. Appellant contends that even if a prima facie case of obviousness has
been established, a preponderance of the evidence, when taking into account the
evidence of secondary considerations, weighs in favor of non-obviousness. (See
App. Br. 24-25.) Appellant relies on the Declaration of James McClung17 under 37
C.F.R. § 1.132. (See generally, App. Br. 23-31.)
18. Mr. McClung’s testimony in the § 132 Dec. is limited to statements
that seven attachments thereto are true and correct copies of : (1) a redacted
independent analysis by Sandia National Laboratories of the Oxy-Pro product, “a
composition that fell within the scope of the hydrogen peroxide/glycolic acid/water

17 Executed Nov. 10, 2006 (“§ 132 Dec.”) (App. Br. Appendix A.)
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composition utilized within the pending claims of the Application,” (2) a graph
created by Microchem Labs comparing the tubercular rate of kill test of Oxy-Pro
and a Comparator product (believed to be a stabilized blend of peracetic acid,
hydrogen peroxide, and acetic acid), (3) a redacted independent report from the
Armstrong Forensic Laboratory comparing the oxidation potential of the Oxy-Pro
product with hydrogen peroxide, (4) an excerpt from an independent report by
Analytic Labs showing a comparison of Oxy-Pro versus hydrogen peroxide in an
MPN test, (5) a redacted translation of an independent test report regarding Oxy-
Pro by Centro de Control Total De Calidades, S.A., De C.V., in Mexico, (6) an
unsolicited letter from PCA and (7) an unsolicited letter from Colwell, regarding
their use or testing of a composition referred to as “Clean Rinse” (see supra FF 13
(§ 131 Dec. ¶¶ 18-20)). (§ 132 Dec ¶¶ 2-8 (identifying Attachments 1-7, as
enumerated above).)
19. Appellant contends Attachments 1-5 to the §132 Dec. provide
evidence of unexpected results as follows:
Attachment 1 shows “a difference between a glycolic acid solution and the
Oxy-Pro sample were [sic] that impurity species present in the initial glycolic acid
disappeared in the Oxy-Pro solution.” (App. Br. 23.) “[T]he fact that the analyzed
composition did not contain perglycolic acid was very unexpected in view of the
teachings of Lokkesmoe.” (Id. at 24.) “As the specific goal in Lokkesmoe was to
produce the percarboxylic acid, the fact that the present invention was found to
have not produced the percarboxylic acid emphasizes the difference between what
Lokkesmoe had disclosed and taught and the composition of the current invention.”
(Id. at 25.)
“Attachment 2 is a side-by-side comparison of (a) a composition that falls
within the scope of all claims of the current application and (b) a composition that
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is the most preferred embodiment of Lokkesmoe.” (Id. at 26.) “[T]he results of
this comparative test are that the present invention of the Application achieved a
total kill within half the time of the comparator.” (Id.)
Attachment 3 “show[s] that the compositions of the invention, which have
hydrogen peroxide contents of between 10% and less than 30%, have significantly
higher oxidation potentials than hydrogen peroxide [alone].” (Id. at 27.)
Attachment 4 evidences “a composition of the invention was a more
effective antibacterial agent than hydrogen peroxide, as shown by a much reduced
fecal coliform count.” (Id.)
Attachment 5 “show[s] that a composition of the invention is biodegradable,
non irritant, and non-toxic, as well as an effective anti-microbial. “ (Id.) The test
report “demonstrate[s] that combining a particular species of carboxylic acid
(namely glycolic acid), with hydrogen peroxide and water, produced a composition
with unexpected advantages and improved properties, which made them especially
useful for the claimed processes.” (Id. at 27-28.)
20. Appellant contends Attachments 6 and 7 to the § 132 Dec., as well as
Examples II and III of the Specification, provide evidence of a long-felt, but
unresolved need as follows:
“Attachment 6 is an unsolicited letter from PCA confirming that PCA had
requested assistance from several chemical companies to develop a product which
would remove or allow removal of the glue residue, and the attempts by these
chemical companies were unsuccessful.” (Id. at 30.) Attachments 6 and 7 “are
representative testimonials . . . from individuals representing companies in the
paper/pulp producing industry regarding the superiority of the claimed invention.”
(Id. at 31.)
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Example II of the Specification describes a long-felt, but unresolved need
for a composition to reduce the concentration of calcium and/or starch glues and
substances from corrugating equipment used in manufacturing corrugated boxes.
(Id. at 28.) Example III of the Specification describes a long-felt, but unresolved
need for a composition to remove organic substances and mineral residues from
anilox rolls used in flexography. (Id. at 29.)
OPINION
Issue 1: Did the Examiner reversibly err in relying on Hei, because Hei is not
§ 102 prior art?

A party seeking to antedate a reference based on reduction to practice
must present evidence of the actual reduction to practice of the
invention prior to the effective date of the reference. 37 C.F.R.
§ 1.131(b). An inventor cannot rely on uncorroborated testimony to
establish a prior invention date. Id. It has long been the case that an
inventor’s allegations of earlier invention alone are insufficient—an
alleged date of invention must be corroborated. Medichem S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1170 (Fed. Cir. 2006); Woodland Trust
v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998).
“[E]vidence is assigned probative value and collectively weighed to
determine whether reduction to practice has been achieved.”
Medichem, 437 F.3d at 1170. “Sufficiency of corroboration is
determined by using a ‘rule of reason’ analysis, under which all
pertinent evidence is examined when determining the credibility of an
inventor’s testimony.” Id.

In re NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir. 2011).
Like the Examiner (see generally, Ans. 12-14), we find Mr. McClung’s
§ 131 Dec. insufficient to establish an actual reduction to practice of the claimed
invention prior to the filing date of the Hei reference. It is not apparent that testing
of the composition described in the letter to Ron Garsson reflects testing of the
claimed composition. (See FF 12.) Moreover, this letter represents
uncorroborated testimony by Mr. McClung that the composition was tested in a
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process as claimed prior to the effective filing date of Hei, which is insufficient to
establish an actual reduction to practice. See In re NTP, Inc., 654 F.3d at 1291.
Exhibits C and D to the § 131 Dec. provide evidence of testing of a composition
which, according to Mr. McClung, falls within the scope of the appealed claims.
(FF 13.) However, there is no evidence to corroborate Mr. McClung’s testimony.
Accordingly, we determine the Examiner did not err in relying on Hei as
prior art against the rejected claims.
Issue 2: Did the Examiner reversibly err in finding that the applied prior art
teaches or suggests a process of treating contaminant in a system which includes a
step of selecting a composition of hydrogen peroxide, glycolic acid, and water
having “a pH of at least about 1.9 and at most about 3.8” as recited in
independent claims 1 and 35, or “at most about 3.5” as recited in dependent
claims 62 and 64?

Appellant argues Lokkesmoe would not have suggested the claimed pH of
about 3.8 (FF 14) and that Lokkesmoe teaches away from such a pH by disclosing
examples which have pHs of 3.92 and above. (App. Br. 10; see also, id. at 36
(“Hei [] and Sanderson do not teach or suggest (alone or in combination) the pH
limitation.”); id. at 21 (arguing Lokkesmoe and Sanderson do not teach or suggest
a pH of “at least about 1.9 and at most about 3.5” as recited in claims 62 and 64).)
“[A] reference will teach away if it suggests that the line of development
flowing from the reference’s disclosure is unlikely to be productive of the result
sought.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). In In re Peterson, 315
F.3d 1325, 1329 (Fed. Cir. 2003), the Federal Circuit stated:
In cases involving overlapping ranges, we and our
predecessor court have consistently held that even a slight
overlap in range establishes a prima facie case of
obviousness. . . . We have also held that a prima facie case
of obviousness exists when the claimed range and the prior
art range do not overlap but are close enough such that one
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skilled in the art would have expected them to have the
same properties. Titanium Metals Corp. v. Banner, 778
F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).

We agree with the Examiner (Ans. 10) that one of ordinary skill in the art
would have had a reasonable expectation of success in formulating the composition
of Lokkesmoe at a pH of “about 3.8” based on Lokkesmoe’s teaching of
compositions having a pH of 3.92 (FF 16). Appellant has not directed us to any
evidence which suggests that one of ordinary skill in the art would not have
reasonably expected similar properties in Lokkesmoe’s composition where pH was
adjusted to “about 3.8” or “about 3.5” rather than 3.92. Indeed, Appellant’s
position is undermined by the Specification disclosure of acceptable pHs as high as
about 4.5 (FF 15, 16), thereby indicating that a pH of “about 3.8” yields no more
than predictable results. As noted above, Hei discloses a pH in a range which
overlaps the claimed ranges (FF 16), clearly establishing a prima facie case of
obviousness.
Issue 3: Did the Examiner reversibly err in finding that one of ordinary skill in the
art would have had a reasonable expectation of success in using, and would have
been motivated to use the compositions of Lokkesmoe and Hei in a paper and/or
pulp producing system based on the teachings of Sanderson?

Appellant argues the composition of Sanderson is significantly different
from Lokkesmoe’s and Hei’s and there is no reason to expect that the compositions
of the primary references could be successfully used in the applications taught by
Sanderson. (App. Br. 12-14, 36.)18
A reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been expected to

18 “[U]nlike Lokkesmoe, the ‘solutions’ of Sanderson include an organic solvent,
and their precise structure is unknown.” (Id. at 13.)
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draw therefrom. See, e.g., In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992);
In re Preda, 401 F.2d 825, 826-27 (CCPA 1968). In this respect, skill is presumed
on the part of one of ordinary skill in the art. See, e.g., In re Sovish, 769 F.2d 738,
742-43 (Fed. Cir. 1985); see also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421
(2007) (“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.”). “[I]f a technique has been used to improve one device, and a person
of ordinary skill in the art would recognize that it would improve similar devices in
the same way, using the technique is obvious unless its actual application is
beyond his or her skill.” Id. at 417.
While Lokkesmoe and Hei are primarily concerned with disinfecting food-
processing systems, Sanderson clearly evidences that compositions containing
peroxygen compounds for use in disinfecting/sanitizing aqueous media in food-
processing industries can also be used to disinfect/sanitize aqueous media in paper
mills. Appellant has not persuasively explained why one of ordinary skill in the art
would not have reasonably expected Lokkesmoe’s or Hei’s compositions to be
useful in cleaning paper and pulp processing systems given Sanderson’s teaching.
Issue 4: Did the Examiner reversibly err in finding that the applied prior art
teaches or suggests a process of treating contaminant in a system which includes a
step of selecting a composition of hydrogen peroxide, glycolic acid, and low solids
water which includes (1) hydrogen peroxide and glycolic acid in the specific
weight ratios or amounts recited in claims 2-6, 10, and 18-20, (2) water present in
the specific amounts recited in claims 8, 9, 11, and 17, and (3) contacting the
composition with isopropyl alcohol as recited in claim 7?

Appellant argues there is no motivation to modify the compositions of
Lokkesmoe or Hei such that hydrogen peroxide, glycolic acid, and/or water are
present in the explicitly claimed ratios or amounts. (App. Br. 14-16, 18.)
Appellant argues Lokkesmoe does not explicitly list isopropanol as a suitable
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adjuvant and Sanderson only lists isopropanol as one of many possible solvents.
(Id. at 17.)19
“[T]he existence of overlapping or encompassing ranges shifts the burden to
the applicant to show that his invention would not have been obvious.” In re
Peterson, 315 F.3d at 1330. As discussed in further detail below (see infra pp. 20-
21), Appellant has not produced evidence which demonstrates that the claimed
range would have been unobvious over Lokkesmoe’s and Hei’s disclosures.
Appellant has not demonstrated that optimization of the ratios of hydrogen
peroxide and glycolic acid or optimization of the amount of water present would
not have been within the capabilities of one of ordinary skill in the art. Moreover,
as further discussed in connection with Appellant’s evidence of secondary
considerations (see infra pp. 20-21), Appellant has not provided evidence which
demonstrates unexpected results are achieved by compositions having the
specifically claimed hydrogen peroxide to glycolic acid ratios or water, hydrogen
peroxide and glycolic acid contents. Appellant has not persuasively explained why
one of ordinary skill in the art would not have understood isopropyl alcohol to be
included in Lokkesmoe’s disclosure that any number of adjuvants, including
alcohols (see FF 1), may be added to the composition. Moreover, Hei expressly
teaches including isopropanol as a solvent. (FF 2.)
In sum, Appellant has not convincingly explained why the facts and reasons
relied on by the Examiner are insufficient to support a conclusion of obviousness
as to dependent claims 2-11 and 17-20.
Issue 5: Did the Examiner reversibly err in finding that the applied prior art
teaches or suggests a process of treating contaminant in a system which includes a

19Appellant does not specifically address the rejection of claim 7 in view of Hei.
(See generally, App. Br. 36-37.)
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step of selecting a composition that “consists essentially of” (claims 63 and 65) or
“consists of” (claims 66 and 67) a mixture prepared by contacting hydrogen
peroxide, glycolic acid, and water?

Appellant contends “there is no motivation to combine Lokkesmoe [] and
Sanderson to use a composition that consists essential [sic] of . . . [or] consists of a
mixture prepared by contacting hydrogen peroxide, glycolic acid, and water in a
paper producing systems [sic] and/or a pulp producing systems [sic].” 20
(App. Br. 22.) 21
In our view, Lokkesmoe clearly teaches combining only hydrogen peroxide,
a carboxylic acid, and water (col. 8, ll. 21-55). Appellant has not explained, with
any degree of specificity, why this immediately formed composition22 would not
meet the limitations recited in appealed claims 54-59.
Issue 6: Did the Examiner reversibly err in concluding that a preponderance of
the evidence, taking into account Appellant’s evidence of unexpected results and
long-felt need, weighs in favor of obviousness?

20 The term “consisting essentially of” is used in claim construction to indicate, for
example, that “the invention necessarily includes the listed ingredients and is open
to unlisted ingredients that do not materially affect the basic and novel properties
of the invention.” PPG Indus., Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354
(Fed. Cir. 1998). “‘Consisting of’ is a term of patent convention meaning that the
claimed invention contains only what is expressly set forth in the claim . . .
[however] it does not limit aspects unrelated to the invention.” Norian Corp. v.
Stryker Corp., 363 F.3d 1321, 1331 (Fed. Cir. 2004).
21Appellant does not specifically address the rejections of claims 63 and 65 in view
of Hei (see supra n.8). (See generally, App. Br. 36-37.)
22 We recognize that such mixing will ultimately produce at least some
peroxyglycolic acid. However, prior to formation of the peroxyglycolic acid, a
composition made in accordance with Lokkesmoe’s invention would “consist of”
hydrogen peroxide, glycolic acid, and water.
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19
Appellant relies on Mr. McClung’s § 132 Dec. to establish that “the claimed
invention has unexpected advantages and improved properties over the prior art.”
(App. Br. 23.) 23
As correctly noted by the Examiner (Ans. 14), Appellant has the burden of
analyzing and explaining data. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972); Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (BPAI 1992).
In general, an applicant may overcome a prima facie case of
obviousness by establishing “that [a claimed] range is critical,
generally by showing that the claimed range achieves unexpected
results relative to the prior art range.” . . . That same standard applies
when . . . the applicant seeks to optimize certain variables by selecting
narrow ranges from broader ranges disclosed in the prior art. . . . [T]he
applicant’s showing of unexpected results must be commensurate in
scope with the claimed range.
In re Peterson, 315 F.3d at 1330.24 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). Moreover,

23 When rebuttal evidence is provided, the prima facie case dissolves, and the
decision is made on the entirety of the evidence. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992). However, “evidence of secondary considerations does not
always overcome a strong prima facie showing of obviousness.” Asyst Techs., Inc.
v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008) (citations omitted).
24 See also, In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“The Board also
correctly reasoned that the showing of unexpected results is not commensurate in
scope with the degree of protection sought by the claimed subject matter because
the elemental composition of CMSX®-486 is at or near the midpoint of the
claimed range. While Harris’s evidence may show a slight improvement over
some alloys, the record does not show that the improved performance would result
if the weight-percentages were varied within the claimed ranges. Even assuming
that the results were unexpected, Harris needed to show results covering the scope
of the claimed range.”); In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (agreeing
with the Patent Office that there is no “adequate basis for reasonably concluding
that the great number and variety of compositions included by the claims would
behave in the same manner as the [single] tested composition.”).
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“[t]he Board has broad discretion as to the weight to give to declarations offered in
the course of prosecution.” See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1368 (Fed. Cir. 2004). Attorney arguments are not evidence. C.R. Bard, Inc. v.
Advanced Cardiovascular Sys., Inc., 911 F.2d 670, 674 n.2 (Fed. Cir. 1990).
We are in agreement with the Examiner’s assessment of the § 132 Dec. and
Attachments 1-5 as insufficient to demonstrate differences between the claimed
invention and the applied prior art which are unexpected and commensurate in
scope with the rejected claims. (See Ans. 14-16.)
The § 132 Dec. does not state that Attachments 1-5 represent comparisons
between the claimed invention and closest prior art, or provide an explanation as to
why any results therein are unexpected. (See FF 18.) Mr. McClung characterizes
the Oxy-Pro composition used in the testing as “a composition that fell within the
scope of the hydrogen peroxide/glycolic acid/water composition utilized within the
pending claims of the Application.” (§ 132 Dec. ¶ 2; see also, FF 18.) However,
there is no evidence that more than one composition was tested, i.e., the evidence
does not show unexpected results for compositions commensurate in scope with
the rejected claims. (See generally, § 132 Dec. and Attachments 1-5; FF 18.)
There is also no evidence that both a composition having a pH of about 1.9 and a
composition having a pH of about 3.8 (claims 1 and 35) would exhibit unexpected
results over the closest prior art composition. In fact, the pH of the Oxy-Pro
composition tested in Attachments 1-5 is not provided.
While the Appeal Brief contains statements which attempt to remedy the
aforementioned deficiencies (see generally, App. Br. 23-28; FF 19), e.g.,
“Attachment 2 is a side-by-side comparison of (a) a composition that falls within
the scope of all claims of the current application and (b) a composition that is the
most preferred embodiment of Lokkesmoe” (App. Br. 26), these statements are
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merely attorney argument and do not amount to evidence of unexpected results. In
fact, there is no evidence that the Comparator product described in Attachment 2
(see FF 18) is the composition used by Lokkesmoe, or represents the closest prior
art. (See § 132 Dec. ¶ 3 (“According to publicly available information, the
Comparator product was a stabilized blend of peracetic acid, hydrogen peroxide,
and acetic acid.”).)
We are also in agreement with the Examiner that Examples II and III of the
Specification, as well as Attachments 6 and 7 to the § 132 Dec. are insufficient to
demonstrate a long-felt, but unresolved need. (See Ans. 16.) This evidence relates
to use of Appellant’s composition in the packaging industry (see FF 20), and, thus,
does not evidence a need in paper and pulp processing systems.
CONCLUSION
“[E]vidence of unexpected results and other secondary considerations will
not necessarily overcome a strong prima facie showing of obviousness.” Sud-
Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009). On
this record, a preponderance of the evidence weighs in favor of obviousness.
Therefore, we sustain all four grounds of rejection.
ORDER
The Examiner’s decision to reject claims 1-20, 28-31, 35, and 45-67 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).

AFFIRMED

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