Ex Parte Roselle et al

Board of Patent Appeals and Interferences

Dec 26, 2002

09446202 (B.P.A.I. Dec. 26, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BRIAN J. ROSELLE, THOMAS E. WARD
and DAVID K. ROLLINS
____________
Appeal No. 2003-0234
Application No. 09/446,202
____________
ON BRIEF
____________
Before OWENS, PAWLIKOWSKI, and POTEATE, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1-21,
which are all of the claims in the application.
THE INVENTION
The appellants claim a composition which is useful for
treating food to reduce the level of microorganisms on the
surface thereof, and claim a method for treating food using the
composition. Claim 1, directed toward the method, is
illustrative:
Appeal No. 2003-0234
Application No. 09/446,202
1 In the event of further prosecution, the examiner and the appellants
should address whether there is adequate antecedent basis for “said base-
stable anionic surfactant” in claim 14.
Page 2
1. A method for treating food to reduce the level of
microorganisms on the surface of said food and make it safe to
eat, said method comprising treatment occurring just prior to
consumption, comprising the step of contacting the surface of
said food with an aqueous dilute treatment composition comprising
toxicologically-acceptable basic buffer to provide a pH of
greater than about 10.5 and, optionally, toxicologically-
acceptable detergent surfactant, for a period of time in excess
of about one half of a minute, the composition being essentially
free of any material that adversely affects safety or
palatability, so that said food does not need to be rinsed before
consumption.
THE REFERENCES
Murch et al. (Murch ‘295) 5,498,295 Mar. 12, 1996
Murch et al. (Murch ‘678) 5,849,678 Dec. 15, 1998
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 1-13 and 15-21 over Murch ‘295, and claim 14 over
Murch ‘295 in view of Murch ‘678.1
OPINION
We affirm the aforementioned rejections. Because the
examiner does not rely upon Murch ‘678 in the final rejection, we
denominate the affirmance of the rejection of claim 14 as
involving a new ground of rejection. Under the provisions of
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Application No. 09/446,202
Page 3
37 CFR § 1.196(b) we enter a new ground of rejection of all of
the claims.
The appellants state that claims 1 and 7 stand or fall
together, as do claims 12, 13, 15-19 and 21, and that each of
claims 2-6, 8-11, 14 and 20 stands or falls separately (brief,
page 3). The appellants, however, do not separately argue
claims 3 and 9. These claims therefore stand or fall with the
claim from which they depend, i.e., respectively, claims 2 and 8.
We limit our discussion of the claims in the first two groups to
one claim in each group, i.e., claims 1 and 12, and we discuss
claims 2, 4-6, 8, 10, 11, 14 and 20 to the extent justified by
the appellants’ arguments. See In re Ochiai, 71 F.3d 1565, 1566
n.2, 37 USPQ2d 1127, 1129 n.2 (Fed. Cir. 1995); 37 CFR
§ 1.192(c)(7)(1997).
Claim 1
Murch ‘295 discloses a method for removing dirt and other
unwanted residues from produce intended for ingestion by humans
or lower animals (col. 1, lines 9-14). The teaching that the
composition with which the produce is contacted does not need a
preservative to prevent the growth of fungi, bacteria, or the
like (col. 9, lines 44-56) indicates that the composition reduces
the level of microorganisms on the produce surface. The teaching
Appeal No. 2003-0234
Application No. 09/446,202
Page 4
that the method is carried out by individual consumers (col. 6,
lines 27-32) indicates that the uses of the method include
treatment of produce just prior to consumption. The surface of
the produce is contacted with an aqueous dilute treatment
composition which can comprise a toxicologically-acceptable basic
buffer to provide a pH which is preferably about 11.5 and
preferably is not greater than about 12.5 (col. 4, lines 63-64;
col. 5, lines 28-49; col. 6, lines 62-67; col. 9, lines 35-38).
The disclosure that light scrubbing may be required (col. 12,
lines 4-5 and 31), and a disclosure regarding the produce being
not completely rinsed (col. 4, lines 17-22), indicate that the
composition can remain in contact with the produce for a length
of time required to scrub the produce, and also from the time the
composition is applied to the produce until the produce is
consumed. These times reasonably appear to include times of at
least about have a minute. Also, the teaching that the typical
use of the method involves treating individual items of produce
which would make preparation of a bath of the composition
wasteful (col. 11, lines 1-3) would have fairly suggested, to one
of ordinary skill in the art, using a bath when multiple items
are to be treated. It reasonably appears that the contact times
of the composition with the produce, from the time the produce is
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Application No. 09/446,202
Page 5
placed into the bath until the composition is rinsed off of the
produce or the produce is consumed, would include times of at
least about half a minute. The teaching that the components of
the composition are toxicologically acceptable, i.e., “any
residues from the ingredients of the compositions which may
remain on the fruits or vegetables cleansed therewith are safe
for ingestion by humans and lower animals” (col. 6, lines 64-67),
indicates that the produce does not need to be rinsed before
consumption.
The appellants argue that Murch ‘295 does not disclose or
suggest either a contact time of at least half a minute or a
relation between time and disinfectancy (brief, page 4). For the
reasons given above, Murch ‘295 would have fairly suggested, to
one of ordinary skill in the art, a contact time of at least
about half a minute. For a prima facie case of obviousness to be
established, it is not necessary for Murch ‘295 to have suggested
to one of ordinary skill in the art a contact time of at least
about half a minute for the purpose of solving the problem solved
by the appellants. See In re Kemps, 97 F.3d 1427, 1430, 40
USPQ2d 1309, 1311 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309,
1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992); In re Dillon, 919
Appeal No. 2003-0234
Application No. 09/446,202
Page 6
F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc),
cert. denied, 500 U.S. 904 (1991).
Claims 2 and 8
The appellants argue that Murch ‘295 does not disclose or
suggest dilute treatment solutions comprising low levels of
anionic surfactant (brief, page 5). The appellants’ claims 2
and 8 require less than about 0.5 wt% of toxicologically-
acceptable base-stable anionic detergent surfactant. The
composition of Murch ‘295 can contain a toxicologically-
acceptable base-stable anionic detergent surfactant, the
disclosed amount being typically up to 0.2 wt% (col. 8, lines 48-
52; col. 6, lines 62-67).
Claims 4-6, 10 and 11
The appellants argue that Murch ‘295 does not disclose or
suggest a composition comprising less than about 0.1% of
toxicologically-acceptable base-stable sodium and/or potassium
alkyl sulfate and/or C8-14 soap to reduce the viscosity of the
solution to less than about 10 cp (claims 4 and 10) or less than
about 5 cp (claims 5, 6 and 11) (brief, page 5). Murch ‘295
discloses that the composition can contain about 0.01 to about
15 wt% C8-18 fatty acid soap (col. 2, lines 63-65; col. 7,
lines 21-61) and that the levels and identities of the
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Application No. 09/446,202
Page 7
ingredients are adjusted to provide products having the desired
viscosities (col. 9, lines 22-23). The exemplified viscosity
range begins at about 5 (col. 9, line 24). Because this is an
exemplified range, this disclosure would have fairly suggested,
to one of ordinary skill in the art, that viscosities slightly
below this range would be suitable.
Claim 12
The appellants argue that Murch ‘295 does not disclose or
suggest compositions containing orthophosphate (brief, page 5).
The appellants’ claim 12, however, does not require the presence
of orthophosphate. The claim merely requires that when
orthophosphate is present, it is present in an amount from
about 3 to about 60 wt% of phosphoric acid equivalent.
Claim 14
The appellants argue that Murch ‘295 does not disclose or
suggest compositions comprising calcium ion sequestrant which is
sodium and/or potassium tripolyphosphate and/or ethylenediamine-
tetraacetate (brief, page 5). The teaching in Murch ‘295 that
the composition can contain an organic polycarboxylic acid or
salt thereof as a sequestrant/builder (col. 8, lines 57-63) would
have led one of ordinary skill in the art to use polycarboxylic
acid salts which were known to be suitable as a sequestrant/
Appeal No. 2003-0234
Application No. 09/446,202
Page 8
builder in the type of composition disclosed by Murch ‘295. Two
such polycarboxylic acid salts are sodium ethylenediamine-
tetraacetate and potassium ethylenediaminetetraacetate as
disclosed by Murch ‘678 (col. 8, lines 56-59).
Claim 20
The appellants argue that Murch ‘295 does not disclose or
suggest a composition comprising a toxicologically-acceptable
suds suppressor (brief, page 5). The teaching in Murch ‘295 that
it is desirable that the composition is low sudsing (col. 2,
lines 42-43) would have fairly suggested, to one of ordinary
skill in the art, including in the composition a conventional
suds suppressor such as a toxicologically-acceptable silicone
which, as indicated by the appellants (specification, page 10),
was commercially available.
Conclusion
For the above reasons we conclude that the inventions
claimed in the appellants’ claims 1-21 would have been obvious to
one of ordinary skill in the art within the meaning of 35 U.S.C.
§ 103.
New ground of rejection
Claims 1-21 are rejected under 35 U.S.C. § 103 as being
unpatentable over Murch ‘678.
Appeal No. 2003-0234
Application No. 09/446,202
2 “By ‘toxicologically-acceptable’ is meant that any residues from the
ingredients of the compositions which may remain on the fruits or vegetables
cleansed therewith are safe for ingestion by humans and/or lower animals”
(col. 6, lines 59-61).
3 It reasonably appears that the composition which is essentially free
of any material that is not toxicologically acceptable does not need to be
rinsed before consumption.
Page 9
Claim 1: Murch ‘678 discloses a method for treating food by
an individual consumer, i.e., just prior to consumption, to
reduce the level of microorganisms on the surface of the food and
thereby make the food safe to eat (col. 11, lines 25-29). The
food is treated with an aqueous dilute treatment composition
which 1) can contain a toxicologically acceptable basic buffer,
2) has a pH of 9.5 or greater, preferably more than about 11, and
more preferably about 11.5 to about 12.5, and 3) preferably is
essentially free of any material that is not toxicologically
acceptable (col. 3, lines 4-7, 18-21 and 25-30).2,3 The treatment
time for obtaining good kill of microorganisms is at least about
1 minute, preferably at least 5 minutes, and for some
microorganisms, 10 minutes (col. 10, line 61 - col. 11, line 2).
Murch ‘678 teaches that longer treatment times give better
antimicrobial benefits, and at high concentrations and at pHs
equal to or above 11.5, antibacterial efficacy is achieved
quickly (col. 11, lines 2-7). Hence, Murch ‘678 would have
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Application No. 09/446,202
Page 10
fairly suggested, to one of ordinary skill in the art, use of a
basic buffer to provide a pH greater than about 10.5.
Claims 2-4: Murch ‘678 teaches that the composition can
contain typically up to 0.2 wt% of salts of dodecylbenzene
sulfonate, which is a base stable anionic surfactant (col. 8,
lines 48-52). The exemplified viscosity is as low as 2 cp
(col. 9, lines 23-25). The buffer can be potassium carbonate or
sodium bicarbonate to provide a pH of preferably not greater than
about 12.5 (col. 9, lines 1-18 and 34-37). The aqueous carrier
can be water or water/ethanol (col. 3, lines 18-21).
Claims 5 and 6: The composition includes about 0.01 to about
15 wt% of a C8 to C18 fatty acid soap (col. 2, line 60; col. 7,
lines 14-41), and the exemplified viscosity is as low as 2 cp
(col. 9, lines 23-25).
Claim 7: The composition can be a concentrate (col. 4,
lines 10-13), even to the point of being a nonaqueous liquid or
solid (col. 5, lines 10-11), which would have fairly suggested,
to one of ordinary skill in the art, dilution by a large amount
such that the concentrate is used in an amount such as about 0.1
to about 5% by weight of the dilute aqueous treatment
composition.
Appeal No. 2003-0234
Application No. 09/446,202
4 The orthophosphate in element (b) need not be present.
Page 11
Claims 8 and 9: Murch ‘678 teaches that the composition can
contain typically up to 0.2 wt% of salts of dodecylbenzene
sulfonate, a base stable anionic surfactant (col. 8, lines 48-
52). The buffer can be potassium carbonate or sodium bicarbonate
to provide a pH of preferably not greater than about 12.5
(col. 9, lines 1-18 and 34-37). The aqueous carrier can be water
or water/ethanol (col. 3, lines 18-21). Hence, Murch ‘678 would
have fairly suggested, to one of ordinary skill in the art, the
compositions claimed in the appellants’ claims 8 and 9.
Claims 10 and 11: The composition includes about 0.01 to
about 15 wt% of a C8 to C18 soap (col. 2, line 60; col. 7,
lines 14-41), and the exemplified viscosity is as low as 2 cp
(col. 9, lines 23-25).
Claims 12 and 19: Murch ‘678 discloses a food-treating
composition which can contain about 0.1 to about 4 wt% of a
toxicologically acceptable nonionic surfactant (col. 2, lines 61-
65), and can contain a buffer to provide a pH of no more than
about 12.5 (col. 9, lines 1-37).4 The composition can be a
concentrate (col. 4, lines 10-13), even to the point of being a
non-aqueous liquid or solid (col. 5, lines 10-11), which would
Appeal No. 2003-0234
Application No. 09/446,202
5 The appellants’ sequestrants include sodium and/or potassium
ethylenediaminetetraacetate (specification, page 8).
Page 12
have fairly suggested, to one of ordinary skill in the art,
dilution by a large amount such that the concentrate is used in
an amount such as about 0.1 to about 5% by weight of the dilute
aqueous treatment composition. The components are all
toxicologically acceptable, food grade components (col. 3,
lines 28-30; col. 6, lines 56-61). Thus, Murch ‘678 would have
fairly suggested, to one of ordinary skill in the art, the
compositions claimed in the appellants’ claims 12 and 19.
Claims 13 and 14: The composition can include about 0.1 wt%
to about 15 wt% of C8 to C18 fatty acid soap (col. 2, line 60;
col. 7, lines 14-41), and a sequestrant which can be sodium
and/or potassium ethylenediaminetetraacetate5 and can be present
in an amount of about 0.2 to about 4 wt% (col. 3, lines 44-49;
col. 8, lines 56-60). The exemplified viscosity is as low
as 2 cp (col. 9, lines 23-25). The buffer can be potassium
carbonate or sodium bicarbonate to provide a pH of preferably not
greater than about 12.5 (col. 9, lines 1-18 and 34-37).
Claims 15-17 and 21: One of ordinary skill in the art would
have desired to use impure water in the Murch ‘678 composition
Appeal No. 2003-0234
Application No. 09/446,202
6 The appellants define “impure water” as “water that is impure by
reason of microorganisms being present” (specification, page 8, last two
lines).
Page 13
because of its lower cost compared to disinfected water.6 The
teaching that the composition kills microorganisms (col. 10,
line 61 - col. 11, line 32) would have indicated to one of
ordinary skill in the art that water containing microorganisms
which would be killed by the components added thereto would be
suitable for use in the composition.
Claim 18: The composition can contain an antioxidant
(col. 9, line 50 - col. 10, line 8). The antioxidants which
Murch ‘678 considers to be advantageous, i.e, tocopherols such as
vitamin E or tocopherol acetates in alkaline formulations
(col. 9, lines 61-63), are the same as those which the appellants
consider to be advantageous (specification, page 9). Hence, it
reasonably appears that one of ordinary skill in the art, when
determining the optimum amount of the Murch ‘678 antioxidant to
use, would arrive at amounts including those recited in the
appellants’ claim 18, i.e., about 0.001 to about 0.05 wt%.
Claim 20: The teaching that a low sudsing liquid solution is
desirable for cleaning fruits and vegetables so that removal of
the solution is achieved quickly and easily (col. 1, lines 41-51)
would have fairly suggested, to one of ordinary skill in the art,
Appeal No. 2003-0234
Application No. 09/446,202
7 As indicated by the appellants’ specification (page 10), such suds
suppressors were commercially available.
Page 14
including in the cleaning composition a known food grade suds
suppressor.7
DECISION
The rejections under 35 U.S.C. § 103 of claims 1-13 and 15-
21 over Murch ‘295, and claim 14 over Murch ‘295 in view of
Murch ‘678, are affirmed. Because Murch ‘678 was relied upon by
the examiner in the examiner’s answer but not in the final
rejection, we denominate the affirmance of the rejection of
claim 14 as involving a new ground of rejection. A new ground of
rejection of all of the claims has been entered under 37 CFR
§ 1.196(b).
In addition to affirming the examiner’s rejection of one or
more claims, this decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b), by final rule notice, 62 Fed. Reg.
53, 131, 53, 197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark
Office 63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, “A
new ground of rejection shall not be considered final for
purposes of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
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Application No. 09/446,202
Page 15
(b) Appellants may file a single request for
rehearing within two months from the date of the
original decision ...
37 CFR § 1.196(b) also provides that the appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (37 CFR § 1.197(c))
as to the rejected claims:

(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner....
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record....
Should the appellants elect to prosecute further before the
Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in order to
preserve the right to seek review under 35 U.S.C. § § 141 or 145
with respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before
the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the appellants elect prosecution before the examiner and
this does not result in allowance of the application, abandonment
or a second appeal, this case should be returned to the Board of
Patent Appeals and Interferences for final action on the affirmed
rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connec-
tion with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED, 37 CFR § 1.196(b)
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
BEVERLY A. PAWLIKOWSKI ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA R. POTEATE )
Administrative Patent Judge )
TJO/yrt
J.J. Camp
Appeal No. 2003-0234
Application No. 09/446,202
Page 17
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