Ex Parte Powers

Board of Patent Appeals and Interferences

Nov 21, 2008

10677582 (B.P.A.I. Nov. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS POWERS
____________

Appeal 2008-4531
Application 10/677,582
Technology Center 1700
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Decided: November 21, 2008
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Before TERRY J. OWENS, PETER F. KRATZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-8. Claims 11-22, which are all of the other pending
claims, stand withdrawn from consideration by the Examiner. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims an oxygen absorbing composition which, the
Appellant indicates, is useful for limiting oxygen exposure to packaged
Appeal 2008-4531
Application 10/677,582

goods such as food, pharmaceuticals and paint (Spec. 2:3-8). Claim 1 is
illustrative:
1. An oxygen absorbing composition comprising:
10-20 wt% water;
a solution comprising:
the water;
a humectant salt; and
an electrolyte salt;
the solution characterized by a water activity below 0.6;

a water binding carrier mixed with said humectant salt and electrolyte
salt solution; and at least one oxygen reducing agent blended with said
mixture.1,2

The References
McKedy (McKedy ‘375) 5,262,375 Nov. 16, 1993
McKedy (McKedy ‘690) 6,248,690 B1 Jun. 19, 2001
Waterman 2003/0042166 A1 Mar. 6, 2003
Saari 6,921,026 B2 Jul. 26, 2005
(filed Feb. 5, 2002)
The Rejections
Claims 1-8 stand rejected under: 1) 35 U.S.C. § 102(e) over Saari,
2) 35 U.S.C. § 103(a) over Saari, 3) 35 U.S.C. § 102(b) over McKedy ‘375,

1 The Appellant states that the humectant salt “may be the same as the
electrolyte salt” (Spec. 3:9-10).
2 The Appellant states: “Water activity Aw (or equilibrium relative humidity
(ERH)) measures the vapor pressure generated by the moisture present in a
hygroscopic product (%ERH = Aw x 100). Water activity reflects the active
part of moisture content or the part which, under normal circumstances, can
be exchanged between the substance and its environment” (Spec. 6:8-12).
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4) 35 U.S.C. § 103 over McKedy ‘375, 5) 35 U.S.C. § 102(b) over
McKedy ‘690, 6) 35 U.S.C. § 103 over McKedy ‘690, and
7) 35 U.S.C. § 103 over Waterman.
OPINION
We reverse the rejections under 35 U.S.C. §§ 102(e) and 102(b) and
the rejection under 35 U.S.C. § 103(a) over Waterman, and affirm the
rejections under 35 U.S.C. § 103(a) over Saari, over McKedy ‘375 and over
McKedy ‘690.
The Appellant does not argue the claims separately (Br. 2-13).
Therefore, with respect to the affirmed rejections we address only one claim,
i.e., claim 1, which is the sole independent claim. See
37 C.F.R. § 41.37(c)(1)(vii) (2007). Also, we need to address only the sole
independent claim regarding the reversed rejections.
Rejection under 35 U.S.C. § 102(e) over Saari
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that Saari anticipates the invention claimed in the Appellant’s
claim 1?
Findings of Fact
Saari discloses a food package humidity control device (abstract)
comprising a polymeric pouch containing “a saturated aqueous solution of a
solute such as an edible salt or a sugar or another soluble compound that
inherently creates a desired relative humidity in the air space adjacent to the
humidity control device” (col. 3, ll. 27-31, 36). The solution includes an
oxygen scavenging material, which preferably is reduced powered iron, and
a gel forming thickener such soluble gums, a protein gel or an inorganic
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Application 10/677,582

polymer (col. 3, ll. 31-47; col. 6, ll. 27-30; col. 8, ll. 20-21, 45-48). The
solute may be salts or a combination of salts used to obtain virtually any
relative humidity in the food’s environment (col. 3, ll. 13-14; col. 5, ll. 5-6).
Two of the exemplified salts are calcium chloride and lithium chloride (two
of the Appellant’s humectant salts; Spec. 8:11-12) which produce/maintain,
respectively, 29% and 11% relative humidity in the food’s environment
(col. 3, ll. 13-14; col. 4, ll. 66-67). The preferred solute solubility is 25 to
80%, and the maximum solute solubility is 90% (col. 8, ll. 1-6).
Analysis
The Examiner has the initial burden of establishing a prima facie case
of anticipation by pointing out where all of the claim limitations appear,
either expressly or inherently, in a single reference. See In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990).
The Appellant argues that Saari does not disclose a composition
having 10-29% water and a water activity below 0.6 in combination with the
other components required by claim 1 (Br. 3).
When Saari’s solute solubility is in the maximum 80-90% range
(col. 8, ll. 1-6), the solution contains 10-20% water as required by the
Appellant’s claim 1. Saari’s calcium chloride and lithium chloride, each of
which can correspond to the Appellant’s humectant salt and electrolyte salt,
produce/maintain, respectively, 29% and 11% relative humidity in the food’s
environment, which is within the water activity range of below 0.6 required
by the Appellant’s claim 1. Saari’s thickening agent (col. 3, ll. 32-34, 43-
46) corresponds to the Appellant’s water binding carrier mixed with the salt
solution, and Saari’s reduced powered iron oxygen scavenger (col. 8, ll. 45-
48) is the Appellant’s preferred oxygen reducing agent (Spec. 8:7-8).
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For the Appellant’s claimed invention to be anticipated, the reference
must lead one of ordinary skill in the art to a composition which falls within
the scope of the claim “without any need for picking, choosing, and
combining various disclosures not directly related to each other by the
teachings of the cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA
1972). The Examiner points out what Saari discloses (Ans. 3-4), but does
not point out where Saari discloses a composition that meets all of the above
claim requirements. Thus, the record indicates that the Examiner relied
upon the prohibited picking and choosing to show anticipation.
Conclusion of Law
The Appellant has shown reversible error in the Examiner’s
determination that Saari anticipates the invention claimed in the Appellant’s
claim 1.
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that Saari would have rendered the invention claimed in the
Appellant’s claim 1 prima facie obvious to one of ordinary skill in the art?
Analysis
The Appellant argues that Saari does not disclose a composition
having a water activity below 0.7 (Br. 4; Reply Br. 2).
The Appellant states that the water activity is the equilibrium relative
humidity (Spec. 6:8-10). The 29% and 11% humidity level in the food’s
environment produced and maintained by, respectively, Saari’s calcium
chloride and lithium chloride (col. 4, l. 66 – col. 5, l. 2), is the equilibrium
relative humidity and, therefore, corresponds to the Appellant’s water
activity.
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The Appellant argues that Saari’s salts do not meet the requirements
of the Appellant’s humectant salt and electrolytic salt (Br. 4).
Saari’s calcium chloride and lithium chloride (col. 4, ll. 66-67; col. 5,
l. 2) are among the Appellant’s humectant salts (Spec. 11-13), and the
Appellant states that the humectant salt and the electrolyte salt can be the
same salt (Spec. 3:9-10).3 Hence, Saari’s calcium chloride and lithium
chloride meet the requirements of the Appellant’s humectant salt and
electrolyte salt.
Conclusion of Law
The Appellant has not shown reversible error in the Examiner’s
determination that Saari would have rendered the invention claimed in the
Appellant’s claim 1 prima facie obvious to one of ordinary skill in the art.
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that McKedy ‘375 and McKedy ‘690 anticipate the invention
claimed in the Appellant’s claim 1?
Findings of Fact
McKedy ‘375 discloses an oxygen absorbing composition for
refrigerated food (col. 1, ll. 6-20). The composition includes particulate
annealed electrolytically reduced iron (col. 2, ll. 59-60) (electrolytic iron
powder is one of the Appellant’s oxygen reducing agents (Spec. 8:5-8)), a
salt which can be calcium chloride (col. 3, ll. 27-29) (one of the Appellant’s
humectant salts (Spec. 8:11-12)), and a water attracting and supplying
component which can be silica gel (col. 3, ll. 40-45) (one of the Appellant’s
water binding carriers (Spec. 8:9-10)). McKedy teaches that “[t]he salt can

3 The Appellant lists only humectant salts, not electrolyte salts (Spec. 8).
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Application 10/677,582

be added to the silica gel by dissolving it in water before being added to the
silica gel” (col. 3, ll. 53-55). The Examiner finds that the water contents of
two compositions in McKedy ‘375’s Example 3 are, respectively, about 14.0
and 15.8 wt% (Ans. 6), and the Appellant does not dispute that finding.
Because the Examiner’s finding is reasonable and the Appellant has not
challenged it, we accept it as fact. See In re Kunzmann, 326 F.2d 424, 425
n.3 (CCPA 1964).
McKedy ‘690, which is a continuation-in-part of McKedy ‘375,
includes each of the McKedy ‘375 disclosures pointed out above
(McKedy ‘690 col. 3, ll. 41-42; col. 4, ll. 8-10, 24-28, 35-37; Example 3).
Analysis
The Appellant argues that McKedy ‘375 and McKedy ‘690 do not
disclose a composition having 10-29% water and a water activity below 0.6
in combination with the other components required by claim 1 (Br. 7).
The Examiner points out what McKedy ‘375 and McKedy ‘690
disclose (Ans. 5-7), but does not point out where those references disclose a
composition having each of the components required by claim 1. Hence, the
Examiner has not established a prima facie case of anticipation of the
Appellant’s claimed invention by McKedy ‘375 or McKedy ‘690.
Conclusion of Law
The Appellant has shown reversible error in the Examiner’s
determination that McKedy ‘375 and McKedy ‘690 anticipate the invention
claimed in the Appellant’s claim 1.
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that McKedy ‘375 and McKedy ‘690 would have rendered the
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invention claimed in the Appellant’s claim 1 prima facie obvious to one of
ordinary skill in the art?
Analysis
The Appellant argues that the McKedy patents use silica gel, not salt,
as the humectant (Br. 8).
The McKedy calcium chloride (McKedy ‘375, col. 3, ll. 27-29;
McKedy ‘690, col. 4, ll. 8-10) is one of the Appellant’s humectant salts
(Spec. 8:11-12). That is so regardless of whether the McKedy silica gel
functions as a humectant. See In re Papesch, 315 F.2d 381, 391 (CCPA
1963) (“From the standpoint of patent law, a compound and all of its
properties are inseparable; they are one and the same thing.”)
The Appellant argues that the McKedy patents would not have
suggested a water activity of 0.6 because their compositions are for high
humidity environments (Br. 8-9).
McKedy ‘375 (col. 3, ll. 36-50) and McKedy ‘690 (col. 4, ll. 16-32)
disclose that the humidity can be so low that there is insufficient water to
combine with the salt to form an electrolyte, in which case water must be
supplied by a water supplying component such as silica gel. Hence, the
references would have led one of ordinary skill in the art, through no more
than ordinary creativity, to provide the McKedy compositions for use in a
low humidity (low water activity) environment. See KSR Int’l. Co. v.
Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (In making the obviousness
determination one “can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ”).
The Appellant argues that the McKedy equivalents to the Appellant’s
water binding carrier bind only water, not water and salt (Reply Br. 2-3).
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The disclosures in McKedy ‘375 (col. 3, ll. 53-55) and McKedy ‘690
(col. 4, ll. 35-37) that “[t]he salt can be added to the silica gel by dissolving
it in water before being added to the silica gel” indicate that the silica gel,
which corresponds to the Appellant’s water binding carrier, binds both the
salt and the water in the solution added to it.
Conclusion of Law
The Appellant has not shown reversible error in the Examiner’s
determination that McKedy ‘375 and McKedy ‘690 would have rendered the
invention claimed in the Appellant’s claim 1 prima facie obvious to one of
ordinary skill in the art.
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that Waterman would have rendered the invention claimed in
the Appellant’s claim 1 prima facie obvious to one of ordinary skill in the
art?
Findings of Fact
Waterman discloses a pharmaceutical kit comprising a sealed oxygen
permeable container containing an oxygen sensitive drug in a solid unit
dosage form and at least one oxygen absorber (¶ 0010). The oxygen
absorber can be electrolytically reduced iron (¶ 21) (one of the Appellant’s
oxygen reducing agents (Spec. 8:5-8)) which, Waterman discloses, is water
initiated (¶ 0021). The oxygen absorber may be combined with a moisture
holding material which can be silicas (¶ 21) (one of the Appellant’s water
binding carriers (Spec. 8:9-10)), and an accelerator which may be metallic
iodide or bromide (¶ 21) (iodides are among the Appellant’s humectant salts
(Spec. 8:11-13)).4
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Application 10/677,582

Analysis
The Appellant argues that Waterman does not disclose a composition
that comprises 10-20 wt% water and is made using a solution containing a
humectant salt and an electrolyte salt and having a water activity below 0.6
(Br. 10).
Regarding the required water content, the Examiner argues that
Waterman provides a strong suggestion to include a water
absorbing/releasing carrier in the composition (Ans. 9), but the Examiner
does not provide support for that argument. The Examiner argues that the
water activity of 0.6 required by the Appellant’s claim 1 is inherently met by
Waterman’s composition (Ans. 9-10), but again the Examiner provides no
support for the argument. The Examiner’s mere speculation is not sufficient
for establishing a prima facie case of obviousness. See In re Warner, 379
F.2d 1011, 1017 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968); In re
Sporck, 301 F.2d 686, 690 (CCPA 1962).
Conclusion of Law
The Appellant has shown reversible error in the Examiner’s
determination that Waterman would have rendered the invention claimed in
the Appellant’s claim 1 prima facie obvious to one of ordinary skill in the
art.
DECISION/ORDER
The rejections of claims 1-8 under 35 U.S.C. § 102(e) over Saari,
under 35 U.S.C. § 102(b) over McKedy ‘375, under 35 U.S.C. § 102(b) over
McKedy ‘690, and under 35 U.S.C. § 103 over Waterman are reversed. The
rejections of claims 1-8 under 35 U.S.C. § 103(a) over Saari, over
McKedy ‘375, and over McKedy ‘690 are affirmed.
Appeal 2008-4531
Application 10/677,582

It is ordered that the Examiner’s decision 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).
AFFIRMED

PL INITIAL:
sld

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