Ex Parte Serobian et al

Patent Trial and Appeal Board

Jun 28, 2016

12472227 (P.T.A.B. Jun. 28, 2016)

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.
12/472,227 05/26/2009 Ashot K. Serobian 0007248USU/3315 7276
27623 7590 06/28/2016
OHLANDT, GREELEY, RUGGIERO & PERLE, LLP
ONE LANDMARK SQUARE, 10TH FLOOR
STAMFORD, CT 06901
EXAMINER
VALDEZ, DEVE E
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
06/28/2016 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 ASHOT K. SEROBIAN, JIM ACKERMAN,
KURT KNIPMEYER, BHASKAR RAMACHANDRAN, and
RANDY GOODWIN1
____________________

Appeal 2014-001985
Application 12/472,227
Technology Center 1700
____________________

Before TERRY J. OWENS, CATHERINE Q. TIMM, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1–4, 10–13, 15, 16, 18–21, 24–26, 29, 30, 32, 34–38, 40, 41–44, 46–
54, and 56–65. We have jurisdiction under 35 U.S.C. § 6(b).

1 Appellants identify the real party in interest as The Armor All/STP
Products Company. Appeal Br. July 22, 2013.
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Application 12/472,227

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We AFFIRM-IN-PART.2
The claims are directed to an automotive protectant composition, a
method of protecting a surface using the composition, a method of cleaning
and protecting a surface using the composition, and a kit containing the
composition. Claim 30 is illustrative of the composition:
30. A protectant composition comprising:
(a) a mixture of nonionic and anionic surfactants;
wherein the anionic surfactant comprises a sulfonate surfactant
and the nonionic surfactant comprises an alcohol ethoxylate;
and wherein the ratio of the nonionic surfactant to the anionic
surfactant is about 1:1 to about 3:2;
(b) at least about 5% by weight of a silicone;
(c) about 0.05% to 0.3% by weight of a rheology modifier; and
(d) about 65% to 95% by weight of water.
Claims Appendix, Br. 27–28.
The Examiner maintains the following rejections:
A. The rejection of claims 1–4, 21, 25, 26, 30, 32, 35–38, 41–44, 47–
54, and 60–64 under 35 U.S.C. § 103(a) as obvious over
Serobian;3,4 and
B. The rejection of claims 10–13, 15, 16, 18–20, 24, 29, 34, 40, 46,
56–59, and 65 under 35 U.S.C. § 103(a) as obvious over Serobian
in view of Kinschka.5

2 In our opinion below, we refer to the Final Office Action mailed January
22, 2013 (Final), the Appeal Brief filed July 22, 2013 (Br.), and the
Examiner’s Answer mailed September 30, 2013 (Ans.).
3 Serobian et al., US 2005/0250668 A1 published November 10, 2005.
4 The Examiner lists two grounds of rejection, Final 3 and 7, but because
both rely upon Serobian alone, we list them as one.
5 Knischka et al., US 2008/0280070 A1, published November 13, 2008.
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OPINION
Rejection A
Appellants do not argue any claim separately. We select claim 30 as
representative for deciding the issues on appeal.6
The first issue for all the claims rejected over Serobian alone is: Have
Appellants identified a reversible error in the Examiner’s determination that
Serobian would have suggested a silicone dispersion containing the
components of claim 30 including a sulfonate anionic surfactant and an
alcohol ethoxylate nonionic surfactant at a concentration within the about
1:1 to about 3:2 ratio of the claims?
Appellants have not identified such an error.
As found by the Examiner, Serobian teaches aqueous dispersions of
silicone fluids for cleaning, preserving, protecting, and otherwise treating a
variety of surfaces. Serobian ¶ 2.
Serobian teaches preparing the dispersions using rheologically
modifying water soluble and/or water dispersible polymers. Serobian ¶¶ 2,
10. As pointed out by Appellants, Serobian states that the aqueous
dispersion can be prepared without the need for emulsifiers such as
surfactants. Br. 10; see Serobian ¶¶ 2, 10.
Serobian expressly teaches including surfactants as cleaning agents or
cleaning aid adjuvants. Serobian ¶ 72. Serobian suggests using surfactant

6 Although Appellants discuss the rejection of claims 60–64 separately, the
issues are the same as those presented for the rejection of claim 30.
Compare Br. 10–14 with Br. 18–21.
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classes selected from a list including anionic and nonionic surfactants as
well as mixtures of surfactants of the various classes. Serobian ¶ 76. As
found by the Examiner, Serobian expressly discloses sulfonate surfactants as
useful anionic surfactants and ethoxylated alcohols as useful nonionic
surfactants. Final 3; Serobian ¶¶ 77, 83.
Appellants contend that Serobian’s teaching that surfactants need not
be used to form the dispersion is a teaching away from using the surfactants.
Br. 10. Appellants further contend that the great number of possible
surfactants and combinations of surfactants taught by Serobian is a teaching
away from Appellants’ invention. Br. 10–11.
Appellants’ teaching away arguments are not persuasive. Although
Serobian discloses that surfactants are not required to prepare the dispersion,
Serobian expressly discloses including the surfactants recited in claim 30 for
their cleaning properties. Rather than teaching away from including
surfactants, Serobian expressly teaches including them.
Nor does the number of disclosed surfactants teach away from using
the surfactants of Appellants’ claim 30. Serobian expressly discloses the
surfactants of the claim. Such a disclosure is not a teaching away. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (mere disclosure of
alternatives is not a teaching away); Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a
multitude of effective combinations does not render any particular
formulation less obvious. This is especially true because the claimed
composition is used for the identical purpose taught by the prior art.”); In re
Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (affirming obviousness
rejection of claims in light of prior art teaching that “hydrated zeolites will
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Application 12/472,227

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work” in detergent formulations, even though “the inventors selected the
zeolites of the claims from among ‘thousands’ of compounds”).
Appellants point out that Serobian does not disclose specific
concentrations of nonionic and anionic surfactants within the ratio of
nonionic to anionic of about 1:1 to about 3:2. Br. 13. But arriving at the
workable or optimal concentrations would have been a matter of routine
experimentation. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“where
the general conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine
experimentation.”).
Appellants also rely upon Declarations by Dr. Serobian, one of the
named inventors of the prior art reference and the application on appeal, as
evidence against the obviousness of the surfactant mixture of the claim. Br.
11–14. According to Appellants, the Declaratory evidence shows that
automotive protectant compositions having a specific combination of an
anionic surfactant and a nonionic surfactant in the ratio of the claim have
superior uniform application and spreadability properties. Br. 11. But we
agree with the Examiner that the data is not commensurate in scope with the
claim. Ans. 12. “Establishing that one (or a small number of) species gives
unexpected results is inadequate proof, for ‘it is the view of this court that
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support.’” In re Greenfield, 571
F.2d at 1189 (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)).
Appellants compare one composition containing 1 weight percent nonionic
and anionic surfactants with a weight ratio of 3:2, a ratio toward the top of
the claimed range. Appellants have not established that other ratios would
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achieve an unexpected result. Claim 30 does not limit the concentration of
the mixture of surfactants to 1 weight percent. Appellants have not
established that other surfactant mixture concentrations would achieve
unexpected results. Appellants only identify the class of anionic surfactant
(alkane sulfonate) and nonionic surfactant (alcohol ethoxylate), Supp. Decl.
Exhibit 1, but has not established that all the claimed sulfonate and alcohol
ethoxylate combinations achieve an unexpected result.
The totality of the evidence supports the Examiner’s conclusion of
obviousness.

Rejection B
Claims 10–13, 15, 16, 18–20, 24, 29, 34, 40, 46, 56, and 59,
additionally require sodium benzoate. The Examiner adds Knischka as
evidence to support a conclusion that it would have been obvious to add
sodium benzoate to the composition of Serobian.7
We agree with Appellants that the Examiner has failed to provide
adequate evidence supporting the obviousness of adding sodium benzoate to
the composition of Serobian. Br. 16.
The Examiner attempts to tie the teachings of Serobian to those of
Knischka together through a teaching in Serobian of including
polycarboxylic acids in the silicon dispersion. Final 6, citing Serobian ¶ 68.
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to use the sodium

7 It is not clear why the Examiner includes claims 57 and 65 in Rejection B.
Claims 57 and 65 do not require sodium benzoate.
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benzoate of Knischka with the composition of Serobian because “sodium
benzoate is a well-known polycarboxylic acid.” Final 6.
The Examiner’s reasoning is faulty because Serobian’s
polycarboxylate is for a different use than Kinschka’s sodium benzoate.
Serobian seeks to use water soluble and water dispersible polyacylate
polymers and copolymers (polycarboxylates) as rheology modifiers for
stabilizing a fine dispersion of silicon oil in water. Serobian ¶¶ 45, 68.
Kinschka teaches using sodium benzoate as a nucleating agent in a powder
coating composition. Kinschka ¶¶ 1, 150, 188. The Examiner provides no
convincing evidence that the ordinary artisan would have added a nucleating
agent to Serobian’s silicon dispersion. We agree with Appellants that the
evidence does not support the Examiner’s finding of a reason to combine
Kinschka’s sodium benzoate nucleating agent with Serobian’s composition.
We do not sustain the rejection of claims 10–13, 15, 16, 18–20, 24,
29, 34, 40, 46, 56, 58, and 59 over Serobian in view of Kinschka.
Because claims 57 and 65 do not include sodium benzoate, Kinschka
is not necessary to reject those claims. For the reasons the Examiner
provided, and the reasons we state above in our review of Rejection A, we
sustain the rejection of claims 57 and 65.

DECISION
The decision of the Examiner is affirmed-in-part.

TIME PERIOD FOR RESPONSE
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).
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AFFIRMED-IN-PART