Ex Parte Pawlik et al

Patent Trial and Appeal Board

May 5, 2015

13011151 (P.T.A.B. May. 5, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
13/011,151 01/21/2011 Michael J. Pawlik 10007333A1 4098
24959 7590 05/05/2015
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
05/05/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL J. PAWLIK, THOR G. LINGENFELTER, and
NATHAN J. SILVERNAIL
____________

Appeal 2013-007444
Application 13/011,151
Technology Center 1700
____________

Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

ROESEL, Administrative Patent Judge.

DECISION ON APPEAL

Appellants
1
appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections under 35 U.S.C. § 103(a) as follows: claims 1, 3–9, and 11–22 as
unpatentable over Cheung et al. (US 7,199,094 B2, Apr. 3, 2007, “Cheung”),
Perry et al. (US 2009/0197786 A1, Aug. 6, 2009, “Perry”), and Libutti et al.
(US 6,514,350 B1, Feb. 4, 2003), and claim 10 as unpatentable over Cheung,

1
According to Appellants, the Real Party in Interest is PPG Industries Ohio,
Inc. Br. 1.
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2
Perry, Libutti, and Feng et al. (US 2006/0076299 A1, Apr. 13, 2006,
“Feng”).
2
Ans. 3–6; Br. 2–3. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The claimed subject matter relates to a method for removing rust from
a ferrous metal-containing surface, such as the steel surface of storage tanks,
ships, and bridges. Br. 18, 20 (claims 1, 18); Spec. ¶¶ 1–3.
Claims 1 and 18 are representative of the subject matter on appeal and
are set forth below:
1. A method for removing rust from a ferrous metal-
containing surface comprising contacting the surface with a
composition comprising:
(a) a carboxylic acid in an amount of greater than 15
percent by weight based on the total weight of the composition;
(b) a synthetic hectorite clay; and
(c) water.

18. A method for removing rust from a ferrous metal-
containing surface comprising spray applying a composition
onto at least a portion of the ferrous metal-containing surface,
the composition comprising:
(a) a carboxylic acid in an amount of greater than 15
percent by weight based on the total weight of the composition;
(b) a synthetic hectorite clay; and
(c) water,
wherein (i) the ferrous metal-containing surface is
oriented substantially vertically, and (ii) the composition has a

2
The rejection of claim 8 under 35 U.S.C. § 112, fourth paragraph, is
withdrawn. Ans. 6–7.
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low shear viscosity of at least 1,000 Pas and a high shear
viscosity of no more than 0.50 Pas.
Br. 18, 20 (Claims Appendix).

ANALYSIS
Claims 1 and 18
The Examiner finds that Cheung teaches a method of removing rust
from a surface comprising all features of claim 1, except for the claimed
amount of acid, use of synthetic hectorite clay, and removing rust from a
ferrous metal-containing surface specifically. Ans. 3–4 (citing Cheung
Abstract, claim 1). The Examiner concludes that the claimed amount of acid
would have resulted from routine optimization of a result effective variable
in accordance with Cheung, that the use of synthetic hectorite clay would
have been obvious in view of Cheung and Perry, and that applying the
claimed method to a ferrous metal-containing surface, such as steel, would
have been obvious in view of Cheung, Perry and Libutti. Id. at 4 (citing
Perry ¶¶ 79–90 and Libutti 2:56–58). The Examiner relies on the same
reasoning to reject claim 18. Id. at 5.
Appellants argue: (i) that Cheung and Perry are non-analogous art,
(ii) that the cited art fails to teach the amount of acid recited in claims 1 and
18, (iii) that synthetic hectorite clay, as recited in claims 1 and 18, is not
equivalent to the naturally occurring clays taught by the cited art, (iv) that
the cited art does not teach or suggest a composition having the shear
viscosities recited in claim 18, and (v) that any prima facie obviousness is
rebutted by evidence of unexpected results. Br. 4–13. Upon consideration
of the evidence presented in this Appeal and each of Appellants’ arguments,
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we are not persuaded that Appellants identify reversible error and find that a
preponderance of the evidence supports unpatentability of the appealed
claims over the applied prior art. We sustain the rejection of claims 1 and 18
based on the Examiner’s findings of fact, conclusions of law, and rebuttals
to Appellants’ arguments, as expressed in the Answer. We add the
following for emphasis.
First, we are not persuaded of error in the Examiner’s conclusion that
Cheung and Perry are analogous art under the applicable legal standard. In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (“‘Two separate tests define
the scope of analogous prior art: (1) whether the art is from the same field
of endeavor, regardless of the problem addressed and, (2) if the reference is
not within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.’”).
The Examiner correctly finds that Cheung and Perry are both pertinent
to Appellants’ field of endeavor, namely cleaning a surface. Ans. 7.
Compare Cheung Abstract (hard surface cleaning compositions); Perry,
Abstract (hard surface cleaning compositions) with Spec. ¶ 1 (“The present
invention relates to . . . methods for removing rust from a ferrous metal-
containing surface.”). Appellants argue that Cheung and Perry are each
concerned with cleaning lavatory fixtures, such as toilets, rather than ferrous
metal structures such as storage tanks, ships and bridges. Br. 6–7. That
argument is not persuasive in view of the Examiner’s undisputed findings
that Cheung, like Appellants, discloses a process for removing rust from a
hard surface, and that Perry likewise discloses a hard surface cleaning
composition. Ans. 8–9; Cheung 11:40–12:6 (claim 1); Perry (Abstract).
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Second, we are not persuaded that the Examiner errs in finding that
the amount of acid is a result effective variable for pH or in concluding that
it would have been obvious to one of ordinary skill in the art to optimize the
amount of acid at 10–30 wt.%, as claimed, in order to obtain a pH of 6.0 or
less, as taught by Cheung. Ans. 3–4, 9–10. The Examiner’s finding is
supported by Cheung, which teaches an amount of acid such that the pH of
the composition is 6.0 or less. Cheung, Abstract; see also id. at 2:43–46
(“The amount of acid present in the composition . . . should be in an amount
such that the pH of the composition is less than 6 . . .”). Appellants argue
that Cheung teaches an amount of acid lower than the claimed amount of 15
percent by weight. Br. 8; see Cheung 4:30–32: (“an amount of acid from
about 0.5 to about 10% by weight based on the total weight of a
composition”). Appellants do not, however, direct us to evidence sufficient
to persuade us that Cheung’s teaching of an amount of acid such that the pH
is 6.0 or less does not encompass an amount of carboxylic acid that overlaps
the claimed amount of greater than 15 percent by weight. In this regard, we
note that Cheung teaches the same pH range as disclosed by Appellants,
compare Cheung 2:45–46 (pH is less than 6) with Spec. ¶ 27 (pH of no more
than 6.0), and many of the same carboxylic acids, compare Cheung 2:9–13
with Spec. ¶ 11 (both disclosing citric acid, acetic acid, formic acid, maleic
acid, adipic acid, lactic acid, malic acid, malonic acid, and glycolic acid).
Third, we are not persuaded of error in the Examiner’s conclusion that
it would have been obvious to one of ordinary skill in the art to prepare the
cleaning composition of Cheung using synthetic hectorite clay, as taught by
Perry. Ans. 4, 7–9. In support of that conclusion, the Examiner correctly
finds that Cheung teaches that clays, such as hectorite, can be used as a
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thickener in a cleaning composition. Ans. 8, 10; Cheung 11:47–59 (claim
1). The Examiner also correctly finds that Perry discloses thickeners in a
cleaning composition, including clays such as Laponite, a synthetic hectorite
clay. Ans. 4, 7–9, 10–11; Perry ¶¶ 79, 88, 90 (“Commercially available
clays include, for example, . . . hectorite . . . The clays herein are available
under various trade names such as . . . Laponite from Southern Clay
Products, Inc. . . .”). We note that Appellants disclose Laponite as an
example of synthetic hectorite clay suitable for use in the claimed method.
Spec. ¶¶ 14, 32, 34 (Tables 1 and 3 disclosing Laponite RD commercially
available from Southern Clay Products, Inc.).
Appellants argue that one skilled in the art would not have replaced
the naturally occurring clays taught by Cheung with synthetic hectorite clay,
as claimed, asserting that natural and synthetic clays are not functional
equivalents. Br. 9–10, 11–12 (citing Specification Examples 2A–C).
Appellants’ argument is unsupported. Appellants provide no evidence
controverting the Examiner’s finding that Cheung’s teaching of hectorite
clays suggests that either natural or synthetic hectorite could be used in the
cleaning composition. Ans. 10; Cheung 2:59–67. The Specification
examples cited by Appellants compare a composition containing Laponite
RD with compositions containing Bentonite or Kaolin. Spec. ¶ 34, Table 3.
Absent evidence equating Bentonite and/or Kaolin with naturally occurring
hectorite, these Examples are not persuasive to support nonobviousness of
using synthetic hectorite, rather than naturally occurring hectorite, in
Cheung’s cleaning composition.
Fourth, we are also not persuaded of error in the Examiner’s
conclusion that a cleaning composition as taught by Cheung in view of Perry
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and Libutti would be expected to have the same shear viscosities as recited
in claim 18. Ans. 5, 10, 12–13. The Examiner correctly reasons that,
because the prior art teaches the same or substantially the same composition
as claimed by Appellants, it would be expected to have the same properties
as taught for Appellants’ composition, and the burden is shifted to
Appellants to show otherwise. Id. See, e.g., In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.”).
Appellants attempt to rebut the Examiner’s conclusion with the
argument that, whereas the claimed composition has shear viscosities
suitable for spray application, the cited references do not disclose or suggest
spraying the composition or modifying the composition to have a viscosity
suitable for spraying. Br. 10–11. Appellants’ argument is not supported by
the evidence. As noted by the Examiner, Perry teaches a composition that
can be sprayed. Ans. 10; Perry ¶ 164 (“The composition provided according
to the invention can be desirably provided . . . in a manually operated spray-
dispensing container . . . [and] dispensed via a manually operated spray
pump . . .”).
Fifth, we are not persuaded that Appellants’ evidence of unexpected
results is sufficient to rebut prima facie evidence. Appellants direct us to
paragraphs 34 and 35 of the Specification relating to Examples 2A–C.
Br. 12. According to Appellants, Example 2A corresponds to the
composition of claims 1 and 18 and effectively removed rust from steel
panels, while similar compositions containing Bentonite and Kaolin did not.
Id.; Spec. ¶¶ 34, 35. We agree with the Examiner, however, that Appellants’
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Specification data is not commensurate in the scope with claims 1 and 18.
Ans. 11. See In re Dill, 604 F.2d 1356, 1361 (CCPA 1979). As noted by
the Examiner, Ans. 11, claims 1 and 18 encompass compositions containing
any synthetic hectorite clay, including at least the three types identified in
Appellants’ Specification. Spec. ¶ 14 (“Synthetic hectorite clays . . .
include, for example, LAPONITE RD, LAPONITE RDS, and LAPONITE
JS, including combinations thereof.”) The cited Examples provide data for
only one of these clays, Laponite RD. Appellants provide no evidence to
support their assertion that Laponite RDS and Laponite JS would
demonstrate similar results. Br. 12–13. In addition, Examples 2A–C
illustrate only one carboxylic acid—citric acid—within the broad range of
carboxylic acids encompassed by claims 1 and 18 and only one example of
the relative amounts of carboxylic acid, clay and water within the broad
ranges of amounts encompassed by claims 1 and 18. Furthermore, the cited
Examples do not include a composition containing naturally occurring
hectorite, which is arguably the closest prior art. Cf. Cheung 2:21
(disclosing hectorite); Br. 11 (asserting that natural hectorite clays are
unstable and lose viscosity under acidic conditions). See In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“when unexpected
results are used as evidence of non-obviousness, the results must be shown
to be unexpected compared with the closest prior art”).
Accordingly, on this record, we are not persuaded that Appellants’
arguments and evidence are sufficient to outweigh the evidence of
obviousness provided by the Examiner.
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Claim 10
Appellants present no separate argument in support of claim 10,
merely referring back to their arguments regarding claim 1 and arguing that
the additional reference (Feng) cited in support of the Examiner’s rejection
of claim 10 does not overcome the asserted deficiencies of Cheung, Perry,
and Libutti. Br. 13. We therefore sustain the rejection of claim 10 for the
same reasons as set forth above with respect to claim 1.
Claims 13 and 14
To the extent that Appellants present the same arguments in support
of claims 13 and 14 as are presented for claim 18, compare Br. 14–15 with
id. at 10, we are not persuaded for the same reasons as set forth above. In
addition, we are not persuaded by Appellants’ argument that the claimed
synthetic hectorite clay composition has unexpectedly improved shear
viscosities over compositions containing Bentonite or Kaolin. Br. 15 (citing
Spec. ¶¶ 13, 34, 35). The data in Appellants’ Specification relating to shear
viscosities of Examples 2A–C, Spec. ¶ 36 (Table 4), are not persuasive to
show unexpected results for the same reasons as set forth above.
Claims 16 and 17
Appellants rely on and present the same arguments in support of
claims 16 and 17 as are presented for claim 1, compare Br. 15–16 with id. at
10–11, and we sustain the rejection of these claims for the same reasons as
set forth above.
Claims 21 and 22
To the extent that Appellants rely on the same arguments in support of
claims 21 and 22 as are presented for claim 1, Br. 16–17, we are not
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persuaded for the same reasons as set forth above. We are also not
persuaded of error in the Examiner’s conclusion that it would have been
obvious to omit the abrasive and surfactant from Cheung’s disclosed
composition, along with the attendant functions and advantages of those
ingredients. Ans. 13–14. See In re Thompson, 545 F.2d 1290, 1294 (CCPA
1976) (“elimination of the wax pretreatment and its function would have
been obvious to one of ordinary skill in the art”); In re Kuhle, 526 F.2d 553,
555 (CCPA 1975) (“deletion of the switch member (and other elements)
found in [prior art], thereby deleting their function, was an obvious
expedient”). As correctly noted by the Examiner, Appellants present no
argument or evidence that their claimed composition has the functions or
advantages of an abrasive and surfactant without the presence of those
ingredients.
Remaining Claims
Appellants present no separate argument in support of dependent
claims 3–9, 11, 12, 15, 19, or 20, and we sustain the rejection of these claims
for the same reasons as set forth above.

CONCLUSION OF LAW AND DECISION
The decision of the Examiner rejecting claims 1 and 3–22 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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