Ex Parte Stebbing et al

Board of Patent Appeals and Interferences

Aug 27, 2010

10533314 (B.P.A.I. Aug. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SIMON RICHARD STEBBING,
ALEXIS J. TOFT, and STEPHEN GEORGE ELLISON
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Appeal 2009-011768
Application 10/533,314
Technology Center 1700
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Before CHUNG K. PAK, LINDA M. GAUDETTE, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-011768
Application 10/533,314

A. Introduction2
Simon Richard Stebbing, Alexis J. Toft, and Stephen George Ellison
(“Stebbing”) timely appeal under 35 U.S.C. § 134(a) from the final
rejection3 of claims 1-12. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
The subject matter on appeal relates to an aqueous slurry comprising a
metal-substituted zeolite and a particulate silica having a specified BET
surface area and pore volume. The slurries are said to have controlled
rheological properties (Spec. 1, ll. 3-4), an approximately neutral pH and to
be useful in the manufacture of paper (id. at 3, ll. 9-11). In particular, the
slurries are said to be stable against settling, but to be readily discharged
from a vessel (id. at 1, ll. 14-16), unlike prior art slurries, which are said to
be lightly gelled (id. at ll. 8-12). Accordingly, the slurries are said to be
readily transported in bulk.

2 Application 10/533,314, Stabilised Aluminosilicate Slurries,
filed 29 April 2005 as the National Stage of an international application
filed 22 October 2003, based on a British application filed 30 October 2002.
The specification is referred to as the “314 Specification,” and is cited as
“Spec.” The real party in interest is listed as Ineos Silicas Ltd. (Appeal
Brief, filed 26 January 2009 (“Br.”), 3.)
3 Office action mailed 25 June 2008 (“Final Rejection”; cited as “FR”).
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Appeal 2009-011768
Application 10/533,314

Representative Claim 1 reads:
1. An aqueous slurry comprising
(a) a crystalline aluminosilicate represented by the
empirical formula
M2/nO-Al2O3-xSiO2-yH2O
wherein
M represents a first metal moiety, said first metal
having a valency of n,
x indicates the ratio of molecules of silica to
molecules of alumina and
y indicates the ratio of molecules of water to
molecules of alumina,
(b) a salt of a second metal selected from the group
consisting of Group III metals, metallic elements of
Group IV, magnesium, titanium, chromium, iron, nickel,
copper, zinc, zirconium and silver, said salt of a second
metal being present in an amount which is sufficient to
replace from about 2.0 to about 40 per cent by weight of
the first metal moiety,
and
(c) particulate silica having a BET surface area greater
than 500 m2/g and a pore volume, as measured by
nitrogen manometry of less than 2.1 cm3/g.
(Br., Claims App. A-1, indentation and paragraphing added.)
The Examiner has maintained the following ground of rejection:4
Claims 1-12 stand rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Araya,5 Swift,6 and Aldcroft.7

4 Examiner’s Answer mailed 12 March 2009. (“Ans.”)
5 Abraham Araya, Zeolite Compositions and Their Use, WO 01/94512 A1
(13 December 2001).
3
Appeal 2009-011768
Application 10/533,314

B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
We observe first that Stebbing presents arguments only for the
patentability of claim 1, the sole independent claim. All claims therefore
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii)(2010).
Stebbing argues that the Examiner “misapplied” Swift and Aldcroft in
a failed attempt to demonstrate that it would have been obvious to add
particulate silicates having the required BET surface area and pore volume
to the zeolite compositions taught by Araya. (Br. 10-15.) The difference
between the claimed invention—an aqueous slurry—and the invention
described by Swift, which Stebbing characterizes as a detergent composition
comprising solid agglomerates (id. at 10, 3d. para., last sentence) highlights,
in Stebbing’s view, the hindsight character of the Examiner’s rejection.
There is, according to Stebbing, no motivation in Swift to modify the
viscosity of concentrated liquid aqueous aluminosilicate slurries, which is
the problem solved by the claimed invention. (Id. at 13, last two paras.)
Similarly, Stebbing argues, Aldcroft does not teach that “the silica
mentioned therein would have any effect on the viscosity of concentrated
zeolite slurries.” (Id. at 14, 3d full para.) Stebbing notes that “the powder

6 Ronald A. Swift and Eugene J. Pancheri, Detergent Composition
Containing Optimum Levels of Amine Oxide and Linear Alkylbenzene
Sulfonate Surfactants for Improved Solubility in Cold Temperature
Laundering Solutions, U.S. Patent 5,478,500 (1995).
7 Derek Aldcroft et al., Granular Compositions, WO 00/12669 (9 March
2000).
4
Appeal 2009-011768
Application 10/533,314

granules of Aldcroft are ultimately intended to be dispersed in water as part
of a washing composition.” (Id.) But, Stebbing continues, “such a
composition would be a very dilute slurry, and so of no relevance to the
present invention.” (Id.)
Stebbing overlooks two critical points. First, claim 1 (indeed, each of
the claims) is not limited to slurries of any particular dilution. Thus, claim 1
reads on any aqueous slurry that contains at least the recited components.
Due to the transitional term “comprising,” additional components may also
be present. Second, each reference—Araya (assigned to Ineos Silicas Ltd.,
the real party in interest in this appeal), Swift, and Aldcroft—is concerned
with aqueous slurries of zeolite-based detergents as an ultimate (or, perhaps
more accurately, a penultimate) use of the respective disclosed invention.
(See, e.g., the abstracts of each document.)
The reason for combining the teachings need not be the same as the
reason Applicants combine the critical ingredients. In re Beattie, 974 F.2d
1309, 1312 (Fed. Cir. 1992) (“[a]s long as some motivation or suggestion to
combine the references is provided by the prior art taken as a whole, the law
does not require that the references be combined for the reasons
contemplated by the inventor.”) Here, the common ultimate use as an
aqueous detergent composition provides a proper motivation to combine the
teachings of the references. Thus, as the Examiner argues, a person having
ordinary skill in the art would have expected, reasonably, to be able to
prepare detergents based on the zeolites taught by Araya, using the process
taught by Swift, in which the silicas taught by Aldcroft are used as a flow
aid in the final step of mixing and coating the dried agglomerates of
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Appeal 2009-011768
Application 10/533,314

surfactants and powders. In use, the detergent composition taught by each
reference is added to water, forming a slurry, since not all of the components
are soluble in water. Thus, the ultimate slurry would have been prima facie
obvious in view of the references. Stebbing has not shown harmful error in
the Examiner’s reasoning.
The evidence of the “surprising and unexpected result” of storage
stability and reduced viscosity shown in Table 2 of the 314 Specification
(Br. 11-12) is not commensurate in scope with the claimed subject matter,
which, as noted supra, is not limited as to the degree of dilution of the
slurry. Accordingly, the prima facie case of obviousness has not been
rebutted.
C. Order
We AFFIRM the rejection of claims 1-12 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of Araya, Swift, and
Aldcroft.
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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