Ex Parte Shoaf et al

Board of Patent Appeals and Interferences

May 9, 2011

10738960 (B.P.A.I. May. 9, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/738,960 12/17/2003 V. Scott Shoaf KCX-811 (20165) 7842
22827 7590 05/09/2011
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
DELCOTTO, GREGORY R
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
05/09/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte V. SCOTT SHOAF and RALPH SOLARSKI
____________________

Appeal 2010-000587
Application 10/738,960
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1, 3, and 5-35. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention relates to a foamable hand cleanser with
industrial strength, i.e., sufficient strength to remove grease, grime and other
hard-to-remove substances (Spec. 1:23-33). Claim 1 is illustrative:
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1. A foamable, industrial strength hand cleanser comprising:
a cleaning solvent comprising d-limonene, the cleaning
solvent being present in an amount suitable for use as a
foamable hand cleanser;
at least two foaming agents present in the hand cleanser
in amounts suitable for use as a foamable hand cleanser and
sufficient for the foamable hand cleanser to form a lather when
aerated, said foaming agents comprising an anionic surfactant
and an amphoteric surfactant, said amphoteric surfactant
present in an amount from about 6% to about 8% by weight;
water present in an amount of at least about 20% by
weight; and
at least one emulsifier present in the amount sufficient to
promote the formation and stabilization of an emulsion between
the cleaning solvent, the foaming agent, and the water.
The Examiner relies upon the following evidence:
First Named Inventor Document No. Issue or Pub. Date
Monson
Duvel
Lu
Jorgensen
US 5,902,225
US 5,945,093
US 6,110,295
US 6,518,228 B1
May 11, 1999
Aug. 31, 1999
Aug. 29, 2000
Feb. 11, 2003
Gonzalez
Seitz Jr. (Seitz)
Cardola
US 2002/0053356 A1
US 2003/0125224 A1
WO 00/12661
May 9, 2002
Jul. 3, 2003
Mar. 9, 2000
The Examiner maintains, and Appellants seek review of, the
following rejections:
1. The rejection of claims 1, 3, 5-19, and 27-29 under 35 U.S.C. § 103(a)
as unpatentable over Gonzalez;
2. The rejection of claims 1, 3, 5-24, and 26-33 under 35 U.S.C. § 103(a)
as unpatentable over Seitz in view of Cardola;
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3. The rejection of claims 1, 3, 10, 12, 14, 18, 19, and 22 under
35 U.S.C. § 103(a) as unpatentable over Lu;
4. The rejection of claims 25 and 34 under 35 U.S.C. § 103(a) as
unpatentable over Seitz in view of Duvel;
5. The rejection of claim 35 under 35 U.S.C. § 103(a) as unpatentable
over Seitz in view of Monson and Jorgensen.
For each rejection, Appellants focus their arguments on particular
claim limitations common to independent claims 1, 14, and 29 (see Br. 5-11)
and do not raise any additional issues directed to the dependent claims (see
generally Br. 11-12). Therefore, we decide this Appeal on the basis of
representative independent claim 1 for each of the rejections. See 37 C.F.R.
§ 41.37(c)(1)(vii).
We adopt the Examiner’s findings in the Answer as our own and add
any additional findings of fact appearing below for emphasis.
II. FIRST REJECTION - GONZALEZ
A. ISSUE ON APPEAL
A first issue on appeal arising from the contentions of Appellants and
the Examiner is: does the evidence support the Appellants’ view that the
Examiner erred in concluding that a foamable composition, as recited in
claim 1, would have been obvious to one of ordinary skill in the art based on
the teachings of Gonzalez? We answer this question in the negative.
B. DISCUSSION
Appellants contend that Gonzalez teaches away from a foamable
composition because Gonzalez teaches that using nonionic surfactants
causes an advantageous foaming loss that enhances the scrubbing effect of
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brine and that the terpenes in liquid compositions based on surfactants have
effective suds-suppression (Br. 5) (citing Gonzalez, ¶¶ [0053] and [00133]).
We cannot agree with Appellants for the reasons cogently stated by
the Examiner.
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)).
Both claim 1 and Appellants’ Specification are silent as to any degree
of foaming or lathering necessary to constitute a “foamable hand cleanser”
(see generally claim 1 and Spec.). The Examiner correctly interpreted the
term “foamable” broadly (Ans. 12), and we agree with the Examiner’s
reasoning that the composition would include components sufficiently
similar to those claimed such that the composition would necessarily foam to
some degree (Ans. 11). See In re Papesch, 315 F.2d 381, 391 (CCPA 1963)
(“a compound and all of its properties are inseparable”). Appellants have
not advanced any convincing arguments to the contrary.
Disclosed examples and preferred embodiments do not constitute a
teaching away from a broader disclosure. In re Susi, 440 F.2d 442, 446 n.3
(CCPA 1971); see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(“The prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed.”).
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Gonzalez teaches a composition containing “at least one surfactant
selected from the group consisting of anionic surfactant, non-ionic
surfactant, amphoteric surfactant and mixtures thereof” (Gonzalez, ¶ [0049]
and claim 11). Gonzalez also states that “[t]he cleaning composition also
can contain non-ionic surfactants” (Gonzalez, ¶ [0129]) (emphasis added).
Accordingly, the non-ionic surfactants are optional. We agree with the
Examiner that “Gonzalez teaches numerous embodiments of the
composition including embodiments containing both anionic and amphoteric
surfactants” (Ans. 11). In particular, Gonzalez teaches compositions that do
not contain non-ionic surfactants. Such embodiments would reasonably be
expected to foam when aerated since they would not have the “loss of
foaming” function of the non-ionic surfactants.
Appellants identify the terpene, d-limonene, as the “suds-suppression”
component (Br. 5; Gonzalez ¶ [0053]). Appellants do not dispute the
Examiner’s finding that Gonzalez suggests the same terpene in the same
amount as the composition claimed. Thus, the same degree of “suds-
suppression,” i.e., the same degree of foaming, would reasonably be
expected in both the compositions of Gonzalez and the claimed composition.
When a claimed product appears to be substantially identical to a
product disclosed by the prior art, the burden is on the Applicants to prove
that the product of the prior art does not necessarily or inherently possess
characteristics or properties attributed to the claimed product. In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA
1977). Appellants have not met their burden to establish that the
substantially identical compositions taught by Gonzalez, have different
properties than the claimed invention.
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The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness under the law.
III. SECOND REJECTION - SEITZ IN VIEW OF CARDOLA
A. ISSUE ON APPEAL
A second issue on appeal arising from the contentions of Appellants
and the Examiner is: does the evidence support the Appellants’ view that
the Examiner erred in concluding that a foamable hand cleanser having
“about 6% to about 8% by weight” of amphoteric surfactant would have
been obvious to one of ordinary skill in the art based on the teachings of
Seitz? We answer this question in the negative.
B. DISCUSSION
Appellants contend that Seitz’s teaching of an optional component
concentration range of “from 0% to about 5%, by weight” does not teach or
suggest an amphoteric surfactant concentration range of “about 6% to about
8% by weight” (Br. 8; see Seitz, ¶ [0117]-[0118]).
Appellants also contend that Seitz teaches away from the claimed
range because the purpose of adding the amphoteric surfactant in Seitz is not
as a foaming agent but rather as an agent to affect active ingredient
saturation (Br. 9; see Seitz, ¶ [0060]). According to Appellants, Example 4
of Seitz shows that 90% saturation can be achieved with concentrations of
amphoteric surfactants as low as 1.75% (Br. 9; see Seitz, ¶ [0214]), and, in
the presently claimed invention, emulsifiers, not amphoteric surfactants,
perform this saturation function (Br. 9).
Again, we cannot agree with Appellants for the reasons cogently
stated by the Examiner.
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It is reasonable to consider the lower range of claim 1 as exceeding
6% and the upper range of the prior art exceeding 5% by virtue of prefacing
the percentages using the term “about.” Indeed, the claim 1 term “about”
permits some tolerance. See In re Ayers, 154 F.2d 182, 185 (CCPA 1946)
(holding that claim term “at least about 10%” was anticipated by prior art
citing “about 8%”). Under these circumstances, the record before us reflects
that the lower limit of the range defined by claim 1 is not clearly
distinguishable from the upper limit disclosed by Seitz.
The Examiner is correct that one of ordinary skill would expect
similar properties where the endpoints of the ranges are as such
indiscernible. In re Woodruff, 919 F.2d 1575, 1577 (Fed. Cir. 1990)
(claimed invention with range of “more than 5%” rendered prima facie
obvious by reference teaching “roughly contiguous” range of “5%”);
Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985)
(holding that a prima facie case of obviousness exists even when the
“proportions [of metal content in alloys are] so close that prima facie one
skilled in the art would have expected them to have the same properties”).
Thus, the Examiner has sufficiently established a prima facie case that the
claimed range would have been obvious to one of ordinary skill in the art.
A composition using an amphoteric surfactant in the concentration
range recited in the claims may exhibit unexpected properties. However, in
such a situation, the burden shifts to the Appellants to present a showing of
criticality of the range for unexpected beneficial results. See In re Boesch,
617 F.2d 272, 276 (CCPA 1980); see also In re Woodruff, 919 F.2d at 1578;
In re Aller, 220 F.2d 454, 456 (CCPA 1955). Appellants present no
convincing evidence of unexpected results on this record. To the contrary,
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Appellants’ Specification describes no property distinction between the
preferred range of “about 6% to about 8%” and the broader disclosed ranges
of “about 5% to about 10% by weight” or “about 2% to about 15% by
weight” (Spec. 6:3-9).
We further agree with the Examiner that Seitz’s disclosure of 1.75%
by weight amphoteric surfactant in Example 4 is of no moment. Disclosed
examples and preferred embodiments do not constitute a teaching away from
a broader disclosure or non-preferred embodiments. In re Susi, 440 F.2d at
446 n.3.
Also, we agree with the Examiner that Appellants’ allegations that the
amphoteric surfactant in the teachings of Seitz serves a different purpose do
not resolve the issue raised, since Seitz’s surfactant need not serve
Appellants’ purpose or solve Appellants’ problem in order to be an obvious
addition in the claimed range. In re Lintner, 458 F.2d 1013, 1016 (CCPA
1972) (“The fact that appellant uses sugar for a different purpose does not
alter the conclusion that its use in a prior art composition would be prima
facie obvious from the purpose disclosed in the references.”).
The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness under the law.
We note that Appellants’ arguments do not reach the Examiner
application of the teachings of Cardola (see Ans. 6-7).
IV. THIRD REJECTION - LU
A. ISSUE ON APPEAL
A third issue on appeal arising from the contentions of Appellants and
the Examiner is: does the evidence support the Appellants’ view that the
Examiner erred in concluding that a foamable hand cleanser would have
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been obvious to one of ordinary skill in the art based on the teachings of Lu?
We answer this question in the negative.
B. DISCUSSION
Appellants contend that Lu does not teach or suggest a foaming
composition but rather teaches a “blooming” composition in which water
changes from clear to milky white or cloudy (Br. 10; see Lu, col. 1, ll. 17-
20). Appellants further contend that Lu teaches away from a composition
suitable for use as a hand cleanser because Lu teaches a tendency to act as an
irritant to the skin (Br. 10-11; see Lu, col. 12, ll. 27-32).
The Examiner contends that Lu necessarily teaches a composition
capable of being foamed when aerated and capable of being used as a hand
cleanser because “Lu et al suggest compositions containing the same
components in the same amounts as recited by the instant claims” (Ans. 15
and 16). We agree with the Examiner. Appellants have not contested the
Examiner’s finding that Lu suggests the same components in the same
amounts as claimed (see generally Br. 10-11). Thus, one of ordinary skill in
the art would expect Lu’s compositions and the claimed compositions to
have the same properties. See In re Papesch, 315 F.2d at 391.
The “blooming” effect pointed out by Appellants appears to be no
more than a change in transparency/opaqueness and/or color of the water to
which the composition is added upon dilution (see Lu, col. 1, ll. 15-22).
Appellants’ arguments are unconvincing that this effect upon dilution would
in any way limit the compositions ability to foam when aerated. Without
any evidence to contrary provided by Appellants, we are convinced that
substantially identical compositions would perform similarly when aerated.
See In re Spada, 911 F.2d at 708; In re Best, 562 F.2d at 1255.
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Moreover, we find nothing in the teachings of Lu direct one of
ordinary skill in the art away from a foaming composition. To the contrary,
we note that Lu teaches the inclusion of “foaming agents” and “further
surfactants including anionic, cationic, non-ionic, amphoteric, and
zwitterionic surfactants, especially those useful in providing further
detersive effects” as optional conventional additives (Lu, col. 13, ll. 57-64).
Thus, it is reasonable to conclude that a composition of Lu is capable of
foaming when aerated.
Likewise, we are convinced that substantially identical compositions
would be equally suitable for use as a hand cleanser. See In re Spada, 911
F.2d at 708; In re Best, 562 F.2d at 1255. Lu does not expressly teach away
from using the composition as a hand cleanser. Rather, Lu is directed to a
general cleaning composition (Lu, col. 1, ll. 7-8). Although the composition
may “find particular use in hard surface cleaning and/or disinfecting
applications” (Lu, col. 1, ll. 10-11), Lu clearly suggests that the composition
may be used for alternative cleaning applications.
Lu states that the disclosed compositions have low toxicity
“notwithstanding the amount of the individual volatile organic constituents
which they contain, and their individual tendencies to act as irritants to the
eyes, skin and mucous tissues” (Lu, col. 12, ll. 27-32) (emphasis added). In
other words, despite the fact that the compositions may contain volatile
organic constituents, which individually have tendencies to irritate the skin,
the composition as a whole has low levels of toxicity. There is nothing in
the teachings of Lu to suggest that the compositions themselves have a
tendency to irritate the skin. Thus, we are not convinced that any volatile
organic constituents that may be included in the compositions taught by Lu
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are present in a type or amount that would specifically limit the
composition’s ability to function as a hand cleanser, particularly any more so
than Appellants’ claimed composition having the same constituents.
The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness under the law.
V. REMAINING REJECTIONS
Although rejected separately, Appellants present no arguments with
respect to dependent claims 25, 34, and 35 above and beyond those
addressed above (Br. 11-12). We need not further address the remaining
rejections as Appellants have presented no additional issues for our review.
VI. CONCLUSION
On the record before us and for the reasons discussed above, we
sustain the rejections maintained by the Examiner.
VII. DECISION
We affirm the Examiner’s decision.
VIII. 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).
AFFIRMED

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