Ex Parte Spindler

Board of Patent Appeals and Interferences

Jul 29, 2009

10607227 (B.P.A.I. Jul. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM E. SPINDLER
____________

Appeal 2009-002089
Application 10/607,227
Technology Center 1700
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Decided1: July 29, 2009
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
PETER F. KRATZ, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 37-80. We have jurisdiction pursuant to

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-002089
Application 10/607,227

35 U.S.C. § 6.
Appellant’s claimed invention is directed to a method of cleaning and
disinfecting a surface or an item of equipment. Appellant’s method
includes, among other things: (1) providing a specified cleaning kit
including two containers each of which consists essentially of specified
components; (2) providing a dry form cleaning composition consisting
essentially of a peroxide; or (3) providing a dry form cleaning composition
consisting essentially of a peroxide and an alkaline component.
Claims 37, 57, and 71 are illustrative and reproduced below:
37. A method of cleaning and disinfecting a surface or an item of
equipment, comprising the steps of:

providing a cleaning kit comprising:

a first container consisting essentially of a peroxide; and

a second container consisting essentially of an alkaline
component; and

applying the peroxide and the alkaline components of the first and
second containers to at least one of the surface and the item of equipment to
clean and disinfect the surface or item of equipment.

57. A method of cleaning and disinfecting a surface or an item of
equipment, comprising the steps of:

providing a cleaning composition in dry form, the cleaning
composition consisting essentially of a peroxide and an alkaline component;
and

applying the cleaning composition in dry form to at least one of the
surface and the item of equipment to clean and disinfect the surface or item
of equipment.
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71. A method of cleaning and disinfecting a surface or an item of
equipment, comprising the steps of:

providing a cleaning composition in dry form, the cleaning
composition consisting essentially of a peroxide; and

applying the cleaning composition in dry form to at least one of the
surface and the item of equipment to clean and disinfect the surface or item
of equipment.

The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Arbogast 5,739,327 Apr. 14, 1998
Rees 5,743,514 Apr. 28, 1998
Thompson 6,391,840 B1 May 21, 2002
Appellant presents rebuttal evidence in the form of a Declaration
under 37 C.F.R. § 1.132 by William E. Spindler, the named inventor of the
subject Application and the identified Real Party in Interest (see App. Br. 3
and the attached Evidence Appendix). Two Exhibits accompany the
Declaration.
The Examiner maintains the following grounds of rejection2:
Claims 37-51, 53-66, 68-77, and 79 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Arbogast. Claims 37-47, and 53-55 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by Rees. Claims 37-
51, and 53-56 stand rejected under 35 U.S.C. § 102(b) as being anticipated
by Thompson. Claims 52, 67, 78, and 80 stand rejected under 35 U.S.C.

2 Rejections under the first and second paragraphs of 35 U.S.C. § 112 that
were previously asserted by the Examiner are now withdrawn (Ans. 2).
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§ 103(a) as being unpatentable over Arbogast. Claim 52 stands rejected
under 35 U.S.C. § 103(a) as being unpatentable over Thompson.
We affirm the stated rejections. Our reasoning follows.

Anticipation Rejections
Appellant argues the anticipatorily rejected claims together as a group
with respect to the Examiner’s separate anticipation rejections over Rees and
Thompson. Accordingly, we select independent claim 37 as the
representative claim in deciding this appeal with respect to the anticipation
rejections over Rees and Thompson.
Appellant mentions independent claims 37, 57, and 71 in arguing
against the Examiner’s anticipation rejection over Arbogast (App. Br. 9-11).
However, Appellant generally argues the claims rejected over Arbogast
together as a group (id.). Consequently, we shall also focus on claim 37 as a
representative claim in considering the Examiner’s anticipation rejection
over Arbogast. We note that independent claims 57 and 71 have been
considered separately, as representative claims for themselves and the
rejected claims which depend thereon and with respect to the latter
anticipation rejection, to the extent that claims 57 and 71 have been
separately argued.
The Examiner urges that the “consisting essentially of” transitional
phrase employed in claims 37, 57, and 71 does not exclude the nitrile bleach
activator of Arbogast (Ans. 3-4). Similarly, the Examiner asserts that the
claim phrase, “consisting essentially of” in claim 37 does not exclude the
lactones of Rees and the imines or oxazirdines of Thompson (Ans. 5 and 6).
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Application 10/607,227

Appellant, on the other hand, argues that the aforementioned
components of the applied references are excluded from the first and second
containers of method claim 37 by the “consisting essentially of” transitional
phrase as recited in independent method claim 37 (App. Br. 8-14; Spindler
Decl., item Nos. 3-14). Similarly, Appellant argues that the nitrile of
Arbogast is excluded from the provided dry form cleaning composition of
remaining independent claims 57 and 71 (App. Br. 8-11; Spindler Decl.,
item Nos. 4-8).

PRINCIPAL ISSUE
Has Appellant identified reversible error in the Examiner’s rejections
by the presented rebuttal evidence and argument directed to the exclusionary
meaning that Appellant urges should have been ascribed to the transitional
term “consisting essentially of” as this term is employed in the rejected
independent claims?

PRINCIPLES OF LAW
On appeal to this Board, Appellant must show that the Examiner erred
in finally rejecting the claims. Cf. In re Kahn, 441 F.3d 977, 985-86 (Fed.
Cir. 2006); see also 37 C.F.R. § 41.37(c)(1)(vii).
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Pending claim terms are given their broadest reasonable construction
as they would be understood by one of ordinary skill in the art when read in
light of the Specification. “When the applicant states [in his or her
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specification] the meaning that the claim terms are intended to have, the
claims are examined with that meaning . . . .” In re Zletz, 893 F.2d 319, 321
(Fed. Cir. 1989).
The “phrase ‘consisting essentially of’ limits the scope of a claim to
the specified ingredients and those that do not materially affect the basic and
novel characteristic(s) of a composition.” In re Herz, 537 F.2d 549, 551-52
(CCPA 1976) (emphasis added); see also PPG Indus., Inc. v. Guardian
Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998) (“By using the term
‘consisting essentially of,’ the drafter signals that the invention necessarily
includes the listed ingredients and is open to unlisted ingredients that do not
materially affect the basic and novel properties of the invention”).
It is appropriate that Appellant bears the burden of establishing that
the basic and novel characteristics of their claimed invention would be
materially affected by, or at least reasonably expected to be materially
affected by, any component or step of an applied reference that is argued to
be excluded by a “consisting essentially of” transitional phrase used in the
claims. See In re De Lajarte, 337 F.2d 870, 873-74 (CCPA 1964); Ex parte
Hoffman, 12 USPQ2d 1061, 1063-64 (BPAI 1989).

FINDINGS OF FACT
Arbogast
The Examiner has found that Arbogast “teach[es] a method of
cleaning hard surfaces comprising a first chamber comprising hydrogen
peroxide and a second chamber comprising an alkaline solution” (Ans. 3;
Arbogast, col. 9, ll. 15-65). In this regard, Arbogast discloses a dual
chamber delivery system for cleaning hard surfaces wherein an oxygen
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Application 10/607,227

source (hydrogen peroxide) and a nitrile activator are present together with
other components in one container and an alkaline solution is placed in the
other chamber (col. 9, ll. 17-42). Arbogast further discloses that the nitrile
compound can be used with solid filler and “carried by or encapsulated in”
“solid matrix” form (col. 9, l. 63- col. 10, l. 2).
Arbogast discloses nitrile compounds of specified formulas are used
as activators together with a peroxygen source (hydrogen peroxide) to form
peroxyimidic intermediates (peroxyimidic acids) (col. 5, ll. 30-40).
Also, Arbogast discloses the activators can be incorporated “into a
liquid or [a] solid matrix for use in liquid or solid detergent bleaches by
dissolving into an appropriate solvent or surfactant or by dispersing onto a
substrate material.” (col. 7, l. 63 –col. 8, l. 6, col. 8, ll. 55-65).

Rees
Rees discloses specified lactones as bleaching enhancers, which are
disclosed as being used together with peroxide in one container and alkaline
material in another container in a method of cleaning materials, such as hard
surfaces (col. 2, l. 30- col. 3, l. 52).

Thompson
Thompson discloses bleach activators, such as imine activators or
oxaziridine activators, which are used together with a peroxygen bleach
compound, such as hydrogen peroxide, in one container, and alkaline
material in another container for use in a method of cleaning a surface by
application of these materials thereto (col. 3, ll. 30-55, col. 4, l. 5-15, col. 4,
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l. 30 - col. 5, l. 5, col. 5, ll. 39-57, col. 6, ll. 1-11, col. 8, ll. 55-62, col. 12, ll.
7-14, col. 12, ll. 44-54, and Examples 4 and 5).
In so doing, Thompson discloses that peroxygen compounds include
organic or inorganic peracids and persalts, such as perborates, in addition to
hydrogen peroxide (col. 5, ll. 39-50).

Specification
Appellant’s Specification discloses that:
The invention comprises, in yet another form thereof, a
method of cleaning a surface in a food processing environment,
including the steps of: providing a cleaning compound
consisting essentially of peroxide and an alkaline reactant, the
alkaline reactant being selected to raise the pH of the cleaning
compound into the alkaline range; and applying the cleaning
compound to the surface.
An advantage of the present invention is that surfaces in
a food processing environment may be effectively cleaned
without substantial corrosive effects.

Spec. 3.
Appellant’s Specification describes a variety of chemical additives
that can be employed with the peroxide cleaning compound including
“chelants, coupling agents, oxygen-stable dyes, and/or oxygen stable
surfactants” (Spec. 4-5).
Appellant’s Specification does not explicitly describe adding nitrile
activators, lactones, or any other bleach activator, such as imines or
oxaziridines to the cleaning composition or cleaning method described
therein (see generally Spec.). However, the Specification provides that
“[t]he cleaning compound generally includes a peroxide (peroxygen
compound) and an alkaline reactant” (Spec. 3, ll. 22-23).
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Declaration Under 37 C.F.R. § 1.132 by William E. Spindler
Mr. Spindler opines that the nitrile activators of Arbogast react with
the active oxygen source thereof (a peroxide) to form a peroxyimidic acid
whereas Appellant’s claims 37, 57, and 71 lack bleaching activators, such as
nitrile (Decl. ¶¶ 6-8).
Mr. Spindler opines that lactones of Rees are used to enhance the
bleaching rate of hydrogen peroxide by formation of peroxyacid in a neutral
or alkaline environment whereas Appellant’s claim 37 does not include a
lactone (Decl. ¶¶ 9-11).
Mr. Spindler opines that the bleach activators in the compositions of
Thompson react with peroxide under alkaline conditions to yield peracid as
the bleaching species unlike the cleaning composition of Appellant’s claim
37, which does not include bleach activators that generate peracid (Decl. ¶¶
12-14).
Exhibit I (a web page from www. Scienceinthebox.com), which is
attached to the Declaration of Mr. Spindler, identifies several classes of
bleaches known to be useful in laundry processes including hydrogen
peroxide and peracids, which acids are disclosed as working similarly to
hydrogen peroxide and which acids can be formed with bleach activators
(Exhibit I, p. 2).
Exhibit II (Sang-Hoon Lim et al., Performance of a new cationic
bleach activator on a hydrogen peroxide bleaching system (2004)) discloses
that bleach activators enhance the potential oxidizing characteristics of
hydrogen peroxide (Exhibit II, p. 1).
Mr. Spindler does not explicitly identify the basic and novel
characteristics of the claimed process as relating to cleaning and disinfecting
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based on oxygen release by peroxide (Decl. ¶¶ 8, 11, and 14). Mr. Spindler
does not explicitly opine as to whether the peracids alleged to be employed
by Arbogast, Rees, and Thompson for cleaning surfaces represent
compounds that are peroxide compounds and/or whether these peracids
release oxygen to clean and disinfect (see generally Decl.). Mr. Spindler
does not explicitly opine as to whether the inclusion of bleach activators that
form peracids, as employed by Arbogast, Rees, and Thompson, may be used
as effective cleaners for surfaces in a food processing environment without
substantial corrosive effects (see generally Decl.).

ANALYSIS
In light of our factual findings above, Appellant’s arguments and
Declaration evidence are not persuasive to establish that the basic and novel
characteristic of the here claimed method is the release of oxygen by a
peroxide to clean and disinfect. Rather, the Specification appears to suggest
that the basic and novel characteristics of the claimed process relate to
employing an alkaline material in addition to a peroxygen compound for
cleaning a surface while raising the pH of the cleaning materials to an
alkaline level such that corrosion is reduced (Spec. 3).
Appellant has not fairly established that the inclusion of a bleach
activator as taught by each of the anticipatorily applied references together
with a peroxide would have been expected to detrimentally impact the
asserted advantage of effective cleaning without significant corrosive effects
alleged for the claimed process (Spec. 3; see generally App. Br. and Decl.).
Indeed, Appellant’s Specification provides that “[t]he cleaning
compound generally includes a peroxide (peroxygen compound) and an
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alkaline reactant” which does not limit the active bleaching chemical to
exclude peracids, which are peroxygen compounds (Spec. 3, l. 22-23). This
is in accord with Thompson, one of the anticipatorily applied references,
which discloses that peroxygen compounds include organic or inorganic
peracids and persalts, such as perborates, in addition to hydrogen peroxide
(col. 5, ll. 39-50). Furthermore, each of the applied references employ
alkaline material (reactant) in addition to a peroxygen compound for
cleaning surfaces, as we noted above.
Given the above and for reasons set forth in the Examiner’s Answer,
Appellant’s argument and evidence do not convince us that the “consisting
essentially of” language employed in representative independent claim 37
requires exclusion of the bleach activators or enhancing compounds that are
also used by Arbogast, Thompson, or Rees. Consequently, Appellant has
not fairly established reversible error in the anticipation rejections of
representative claim 37 over the above-identified references.
Moreover and to the extent that Appellant’s additional remarks
directed at independent claims 57 and 71 present a separate argument that
the nitrile of Arbogast is required to be excluded from the cleaning
composition employed therein based on the “consisting essentially of”
transitional phrase employed, we again note that the evidence and arguments
furnished by Appellant with respect to this matter are not reasonably
persuasive. This is because the presence of activators that form a different
peroxy compound (a peracid such as peroxyimidic acid) from another
peroxide compound has not been shown to materially affect the basic and
novel aspects of the claimed invention, or shown to reasonably be expected
to behave so. In this regard, the weight of the evidence of record conveys
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that the basic and novel characteristics of the claimed subject matter,
including all of the argued independent claims, relates to the use of alkaline
material in addition to a peroxygen compound in a cleaning material used in
a surface cleaning process to reduce corrosion, not excluding peracids (or
peracid forming adjuncts) as Appellant’s basically argue.
In sum, Appellant’s burden of production is not met by the presented
Declaration of Mr. Spindler and attached Exhibits. This is because the
tendered evidence does not furnish a reasonably persuasive showing
establishing that the bleaching activators of the applied references would
have materially affected the basic and novel characteristics of the claimed
process for reasons explained above. Nor has Appellant presented any other
argument that identifies reversible error in the Examiner’s anticipation
finding.
On this record, we sustain the Examiner’s anticipation rejections.

Obviousness Rejections
As to the Examiner’s separate obviousness rejection of dependent
claims 52, 67, 78, and 80 over Arbogast and dependent claim 52 over
Thompson, we note that Appellant relies on the arguments made against the
anticipation rejection pertaining to independent claims from which these
claims depend to allegedly establish error in the Examiner’s obviousness
determinations.
Given our determination that Appellant’s arguments against the
anticipation rejections are not persuasive, we shall also sustain the
Examiner’s obviousness rejections as no reversible error has been
established therein, on this record.
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CONCLUSION
Appellant has not identified reversible error in the Examiner’s
rejections by the rebuttal evidence and argument presented urging an
exclusionary meaning for the transitional claim term “consisting essentially
of” because Appellant has not established that the inclusion of the argued for
excluded items of the applied references would have materially affected the
basic and novel characteristics of the claimed process.

ORDER
The Examiner’s decision to reject claims 37-51, 53-66, 68-77, and 79
under 35 U.S.C. § 102(b) as being anticipated by Arbogast; to reject claims
37-47, and 53-55 under 35 U.S.C. § 102(b) as being anticipated by Rees; to
reject claims 37-51, and 53-56 under 35 U.S.C. § 102(b) as being anticipated
by Thompson; to reject claims 52, 67, 78, and 80 under 35 U.S.C. § 103(a)
as being unpatentable over Arbogast; and to reject claim 52 under 35 U.S.C.
§ 103(a) as being unpatentable over Thompson is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(v).

AFFIRMED

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