Ex Parte Scheuing et al

Board of Patent Appeals and Interferences

Mar 11, 2008

10150363 (B.P.A.I. Mar. 11, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID R. SCHEUING, ARAM GARABEDIAN, JR., SARA
MORALES, PAUL PAPPALARDO and MALCOLM DELEO CASTRO
____________

Appeal 2008-1197
Application 10/150,363
Technology Center 1700
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Decided: March 11, 2008
____________

Before EDWARD C. KIMLIN, THOMAS A. WALTZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20, 22, 23, 25-35, 37-40, 42-46, and 48-50, which are
the only claims pending in this application. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

Appeal 2008-1197
Application 10/150,363

I. BACKGROUND
The invention relates to a cleaning composition and a method of
cleaning household surfaces. Independent claim 1 is illustrative1:
1. An aqueous liquid cleaning composition for hard household surfaces,
which can modify the surface to yield a water contact angle of less than 10
degrees that comprises:
(a) a water-soluble or water-dispersible copolymer having:
(i) a first monomer that has a permanent cationic charge or that is
capable of forming a cationic charge on protonation wherein the first
monomer is selected from the group consisting of acrylamide, N, N-
dimethylacrylamide, methacrylamide, N, N-dimethylmethacrylamide, N, N-
di-isopropylacrylamide, dialkylaminopropylmethacrylate,
dialkylaminopropylacrylate, dialkylaminoethylmethacrylamide,
dialkylaminoethylacrylamide, dialkylaminopropylmethacrylamide,
dialkylaminopropylacrylamide, N-alkyl, N-vinylimidazolium, N-alkyl, N-
vinylpyrrolidonium, trialkylammoniumethylmethacrylate,
trialkylammoniumethylacrylate, trialkylammoniumpropylmethacrylate,
trialkylammoniumpropylacrylate, trialkylammoniumethylmethacrylamide,
trialkylammoniumethylacrylamide,
trialkylammoniumpropylmethacrylamide,
trialkylammoniumpropylacrylamide, diquaternary derivatives of
methacrylamide and mixtures thereof; and
(ii) at least one of a second monomer that is acidic and that is
capable of forming an anionic charge in the composition wherein the second
monomer is selected from the group consisting of acrylic acid, methacrylic
acid, maleic anhydride, succinic anhydride, vinylsulfonate, styrene sulfonic
acid, sulfoethylacrylate, and mixtures thereof; or a third monomer that has
an uncharged hydrophilic group, wherein the third monomer is selected from
the group consisting of vinyl alcohol, vinyl acetate, hydroxyethylacrylate,
alcohol ethoxylate esters, alkylpolyglycoside esters, polyethylene glycol
esters of acrylic, methacrylic acid, and mixtures thereof;
(b) optionally, an organic solvent; and

1 Independent method claim 20 is not reproduced herein, however, note that
“at least 1nm” (emphasis provided) in clause (c) of claim 20 appears to be
an inadvertent mistake. Original dependent claim 24 (now canceled) recited
“less than 1nm” (emphasis provided).
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(c) optionally, an adjuvant.

The Examiner relies upon the following prior art as evidence of
unpatentability:
Jeschke2 WO 97/36046 June 12, 1997
Claims 1-20, 22, 23, 25-35, 37-40, 42-46, and 48-50 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Jeschke.
Appellants do not separately argue with any reasonable specificity any
of the individual claims rejected under 35 U.S.C. § 102 over Jeschke (App.
Br. 5-8; Reply Br. 5-10). Therefore, we select independent claim 1 to decide
this issue on appeal.

ISSUE ON APPEAL
The issue is whether the Appellants have shown that the Examiner
reversibly erred in rejecting claims 1-20, 22, 23, 25-35, 37-40, 42-46, and
48-50 as anticipated by Jeschke.
For the reasons that follow, we determine that the Examiner has
established a prima facie case of anticipation of these claims based on
Jeschke.
OPINION
Findings of Fact
We determine the following Factual Findings (FF) from the record in this
appeal:

2 We follow the convention used by Appellants in their Brief, referring to
columns and lines of Jeschke’s US equivalent 6,251,849.
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Application 10/150,363

1. Jeschke describes all the components listed in Appellant’s
independent claim 1. Specifically, Jeschke describes an aqueous liquid
cleaning composition for hard surfaces which includes a cationic polymer
containing monomer units that include methyacrylamidopropyl trimethyl
ammonium (i.e., a trialkylammoniumpropylmethacrylamide), as exemplified
in both polymers b and c (col. 6, ll. 14-19)3. A chloride anion may be used
on this monomer (abstract; col. 6, ll. 14-19). The polymer of Jeschke may
also include other monomer units; preferred monomer units include acrylic
acid and methacrylic acid (col. 2; ll. 43-44).
2. In accordance with Appellants’ claim 1, the cationic monomer may
be trialkylammoniumpropylmethacrylamide (see also Example 3, polymer
D4, Spec. 29:10-11). In accordance with Appellants’ Specification, the
counterion of the cationic monomer can be chloride (Spec. 7:2-4), and
Appellants’ most preferred acid monomers include acrylic acid and
methacrylic acid (Spec. 8:8-9; see also claim 1).
3. The cationic monomers of Jeschke comprise at least 40 mol%,
more preferably more than 50 mol%, of the polymer (abstract; col. 2, ll. 25-
27).
4. According to Appellant’s Specification, Appellants’ cationic
monomer may be 3 to 80 mol%, and preferably 10 to 60 mol%, of the
copolymer (Spec. 5:15-20).
5. The polymer of Jeschke may be used in amounts of .01 to 10% by
weight, preferably .05 to 2% by weight of the cleaning composition (col. 2,
ll. 45-48).

3 All column and line references are to the US equivalent 6,251,849.
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6. Appellants’ polymer may be used in preferable amounts of 0.5 to
10% by weight, most preferably 1 to 5% by weight of the cleaning
composition (Spec. 6:6-8).
7. Jeschke describes that the polymer is a soil release compound
added to cleaning compositions for hard surfaces (col. 1, ll. 5-10). These
polymers are deposited on the surface and modify the surface properties
(col. 1, ll. 10-33). The polymers do not form a permanent film (that is, they
form a temporary film) (col. 1, ll. 33-36). Jeschke states that consumers
would regard as favorable a polymer with high stability against removal
(col. 1, ll. 36-43).
8. Appellants’ Specification teaches that the hard surface adsorbs the
copolymers such that a thickness of a monolayer, or less, modifies the
properties of the surface, and results in a small water contact angle of less
than 10 degrees (Spec. 20:1-23).
9. Jeschke describes that tests to demonstrate the soil release effect of
the cleaning solutions containing various polymers were carried out on PVC
(i.e., polyvinyl chloride), a plastic surface (col. 7, ll. 4-7, 43-50).
10. Appellants’ Specification describes tests on “enamel coupons”
(Spec. 20:16-23) and “glossy black tile coupons” (Spec. 21:1-3). Appellants
also describe tests using germanium, a material Appellants describe as
having a surface energy similar to “glass, porcelain, ceramic tile, steel and
aluminum” (Spec. 22:15-20).

Principles of Law
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
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art reference.” Verdegaal Bros., Inc v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
Further, where patentability rests upon a property (or function) of the
claimed invention not disclosed within the art, the PTO often has no
reasonable method of determining whether there is, in fact, a patentable
difference between the prior art and the claimed invention. Therefore, where
the claimed and prior art products are identical or substantially identical, the
PTO can require an applicant to prove that the prior art products do not
necessarily possess the characteristics of his claimed product. In re Best,
562 F.2d 1252, 1255, (CCPA 1977); see also In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990).

Analysis
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has properly identified
factual findings and reasoning for establishing a prima facie case of
anticipation based on Jeschke which Appellant has not adequately rebutted
by the arguments and evidence of record.
We agree with the Examiner that Jeschke describes all the elements
listed in claim 1 (Ans. 4-6; FF 1). We determine that Jeschke describes a
cleaning composition containing a polymer including a
trialkylammoniumpropylmethacrylamide cationic monomer along with
preferred comonomers of acrylic acid or methacrylic acid as included in
claim 1 on appeal (FF 1, 2). However, Appellants contend that the claimed
subject matter “employs a copolymer that does not require the cationic
monomer of Jeschke” (App. Br. 7). We disagree.
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We determine that Appellants have not shown that the claim excludes
the cationic monomers of Jeschke. To the contrary, Appellants specifically
claim that “trialkylammoniumpropylmethacrylamide” may be included in
the copolymer (FF 2). Likewise, as the Examiner established, Jeschke
describes a trialkylammoniumpropylmethacrylamide monomer in a
copolymer (Ans. 6; FF 1, 3). That is, the copolymer of Appellants’
invention may indeed comprise the cationic monomer that Appellants allege
the claim “does not require”. Indeed, this is a preferred cationic copolymer
according to Jeschke, as described by formula I in which n is preferably 3
(col. 2, ll. 1-20). Therefore, Appellant’s argument is not well taken.
Appellants also contend that the polymer of Jeschke does not have the
claimed capability of modifying the surface (namely, the hard surface to be
cleaned) to yield a water contact angle of less than 10 degrees4. However,
the claim includes the same cationic and acid monomers as Jeschke
describes as preferred monomers, substantially the same relative mole
percentages of each monomer may be used, and the resulting copolymer is
used in substantially the same amounts and for the same purpose as the
copolymer of Jeschke (FF 1-8). It is therefore reasonable to assume that the
copolymer containing the preferred cationic and acid monomers described in
Jeschke will possess this claimed capability.
For these reasons and those stated in the Answer, we determine that
the Examiner has established that the product of the prior art (i.e., Jeschke)

4 Appellants state the low water contact angle is a “requirement” in
independent method claim 20 (Reply Br. 9). However, the issue remains the
same as for claim 1, namely, whether the copolymer described in Jeschke
inherently functions as claimed.
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reasonably appears to be substantially the same as that claimed. Thus, the
burden shifts to Appellants to prove that the claimed products are not the
same as the prior art (e.g., establish with evidence that Jeschke’s copolymer
will not inherently function as claimed in claims 1 and 20). See In re Best,
562 F.2d at 1255.
Appellants contend that the David R. Scheuing Declaration5 presents
evidence that the example “polymer b”6 of Jeschke does not have the
claimed capability of modifying the surface to yield a water contact angle of
less than 10 degrees (App. Br. 5-6; Reply Br. 9-10). This evidence is not
persuasive. In particular, Appellants admit that the surface used is a factor
in whether the claimed water contact angle will result (Reply Br. 7-8). The
surface used in the tests of Jeschke upon which Appellants base their
calculations is different than the surface used in Appellants’ tests (FF 9, 10).
Appellants have not shown that the preferred copolymer described in
Jeschke (namely, trialkylammonium propylmethacrylamide with acrylic acid
or methacrylic acid) would not have the required capability of forming a
water contact angle of less than 10 degrees when used on the same hard
surfaces.
Further, Appellants have not explained how such evidence could
establish different water contact angles, since the claim includes the same
cationic and acid monomers as Jeschke describes, substantially the same
relative mole percentages of each monomer may be used, and the resulting

5 Filed September 19, 2005 pursuant to 37 CFR § 1.132
6 Example “polymer b” does not include the preferred comonomers of acrylic
acid or methacrylic acid described in Jeschke.

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copolymer is used in substantially the same amounts and for the same
purpose as the copolymer of Jeschke (FF 1-8).
In this regard, we again emphasize that it is Appellants’ burden to
establish that the copolymer described in the prior art does not inherently
possess the capability of modifying a surface to yield a water contact angle
of less than 10 degrees. The Appellant has not met this burden in this case
for the reasons discussed above.
For the above stated reasons and those stated in the Answer, we affirm
the rejection of claims 1-20, 22, 23, 25-35, 37-40, 42-46, and 48-50 under §
102 based on Jeschke.
SUMMARY
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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