Ex Parte Taylor

Patent Trial and Appeal Board

Feb 11, 2015

13067574 (P.T.A.B. Feb. 11, 2015)

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.
13/067,574 06/09/2011 Lawnie H. Taylor Lawine H. Taylor 3718
94264 7590 02/12/2015
THE LAW FIRM OF
ANDREA HENCE EVANS, LLC
14625 BALTIMORE AVE
#853
LAUREL, MD 20707
EXAMINER
BOYER, CHARLES I
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
02/12/2015 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 LAWNIE H. TAYLOR1
________________

Appeal 2014-0088852, 3
Application 13/067,574
Technology Center 1700
________________

Before CATHERINE Q. TIMM, MARK NAGUMO, and
GEORGE C. BEST, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Lawnie H. Taylor (“Taylor”) timely appeals under 35 U.S.C. § 134(a)
from the final rejection4 of claims 1, 3–29, 62, and 63, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6. We affirm.

1 The real party in interest is listed as Lawnie H. Taylor, President,
L.H. Taylor Associates Inc. (Appeal Brief, filed 21 March 2014, (“Br.”), 3.)
2 Heard 7 January 2015. The transcript is cited as “Tr.”
3 At the Oral Argument, Taylor was represented by Andrea H. Evans, Esq.
The record indicates that Taylor previously had proceeded pro se.
4 Office Action mailed 4 December 2013 (“Final Rejection”; cited as “FR”).
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OPINION
A. Introduction
Taylor timely seeks broadening reissue under 35 U.S.C. § 2515 of
U.S. Patent No. 7,582,597 B1, Products, methods and equipment for
removing stains from fabrics.6 The error to be corrected is, in Taylor’s
words, that “[f]our (4) independent claims are constructed incorrectly as

5 When Taylor filed his reissue application, the most relevant parts of
35 U.S.C. § 251 read:
Whenever any patent is, through error without any
deceptive intention, deemed wholly or partly inoperative or
invalid, by reason of a defective specification or drawing, or by
reason of the patentee claiming more or less than he had a right
to claim in the patent, the Director shall, on the surrender of
such patent and the payment of the fee required by law, reissue
the patent for the invention disclosed in the original patent, and
in accordance with a new and amended application, for the
unexpired part of the term of the original patent. No new matter
shall be introduced into the application for reissue.
* * * * *
No reissued patent shall be granted enlarging the scope of
the claims of the original patent unless applied for within two
years from the grant of the original patent.
35 U.S.C. § 251 (2011) (subsequently amended, effective 16 September
2011).
6 U.S. Patent No. 7,582,597 issued 1 September 2009 (the “ʼ597 patent”),
based on application, 12/382,136, filed 9 March 2009, a continuation of
11/505,445, filed 17 August 2006 (see In re Taylor, 445 Fed. Appx. 343
(Fed. Cir. 2011) (non-precedential), affirming 2011 WL 126907 (BPAI)),
now abandoned, which is a continuation of 10/612,016, filed 3 July 2003,
now U.S. Patent No. 7,109,157, which is a continuation-in-part of
10/373,787, filed 27 February 2003, now U.S. Patent No. 6,946,435, which
claims benefit of 60/423,978 filed 6 November 2002.
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‘consisting of’ claims. These claims are broadened by amending them from
‘consisting of’ claims to ‘comprising’ claims.”7
The subject matter on appeal relates to aqueous bleach products
(claims 19–29 and 63) and processes for making them (claims 1, 3–18,
and 62). More particularly, Taylor seeks to perfect patent protection related
to the discovery that the damaging effects of hypochlorite-containing
solutions (hereinafter, “bleach,” or “NaOCl”8) on soft fabrics such as cotton
may be reduced by adding an alkali metal hydroxide solution (“NaOH”9) in
a relative “weight concentration ratio” (“WCR”) of NaOCl to NaOH ranging
between 30:1 and 1:1.
Claim 19 is representative of the dispositive issues and reads:
An aqueous hypochlorite salt bleach product for cleaning a
soft fabric article,
the solution of said product formulated with
a weight concentration ratio of alkali-metal hydroxide over
alkali-metal hypochlorite-salt,
said weight concentration ratio correlating to the quality
of fabric safety of the product solution selected within the
range of damaging to abated damage to cotton-safe,
wherein the product solution comprises,
(a) an effective amount of hypochlorite salt, for cleaning a
soft fabric article[,]

7 Reissue Application Declaration by the Inventor (PTO/SB/51), 1,
(9 June 2011).
8 We use this abbreviation for the preferred embodiment (Spec. 2, ll. 13-15)
purely as a convenient reference for the chemically oriented reader, although
only dependent claim 10 and the corresponding subordinate claims are so
limited.
9 See n.8.
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(b) a quantity of an alkali-metal hydroxide as determined
by (a) and (c),
(c) the weight concentration ratio 1:30 to 1:1[.]
(Claims App., Br. 21; some indentation, paragraphing, and emphasis added.)
The Examiner maintains the following grounds of rejection:10, 11
A. Claims 1, 3–29, 62, and 63 stand rejected under
35 U.S.C. § 102(b) in view of Scialla.12
B. Claims 1, 3–29, 62, and 63 stand rejected under
35 U.S.C. § 102(a) in view of Agostini.13
C. Claims 1, 3–29, 62, and 63 stand rejected under
35 U.S.C. § 102(a) in view of Grande.14
Briefly, the Examiner finds that each reference discloses specific examples
of aqueous fabric-treating compositions comprising sodium hydroxide and
sodium hypochlorite that meet all limitations recited in the claims.

10 Examiner’s Answer mailed 9 July 2014 (“Ans.”).
11 In the Final Rejection, the Examiner maintained numerous (19 by
Appellant’s count; Br. 8, l. 3) rejections for anticipation over prior art.
In each rejection, the Examiner found that a specific composition in the
reference met the limitations of all of the claims. (FR 12–21.) The
Examiner explains that the withdrawn rejections are considered “cumulative
to, or less pertinent than the references above.” (Ans. 4, ll. 16–17.)
12 Stefano Scialla and Giuseppe Trigiante, Hypochlorite bleaching
compositions, U.S. Patent No. 6,120,555 (2000).
13 Andrea Agostini and Oreste Todini, Bleaching compositions, U.S. Patent
No. 6,416,687 B1 (9 July 2002), based on an international application
accorded a § 371(c)(1), (2), (4) date of 22 February 1999.
14 Giovanni Grande and Oreste Todini, Stable colored thickened bleaching
compositions, U.S. Patent No. 6,448,215 B1 (10 September 2002), based on
an application accorded a § 371(c) date of 14 July 2000.
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B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Initially, we find that Taylor has not raised arguments for the
patentability of any claim separate from any other. We find further that
Taylor has not raised arguments against the Examiner’s specific findings of
fact regarding any of the applied references, including the three references
over which rejections have been maintained. Rather, in both the principal
Brief and in the Reply,15 Taylor raises generalized arguments relating to the
weight concentration ratio, abbreviated as “WCR,” and whether the prior art
recognized the existence or significance of the WCR. (Br. 10–17;
Reply 2-7.) “In summary,” Taylor argues, “the WCR . . . is not anticipated
because it is not found described, either expressly or inherently, in the
examiner’s cited prior art references.” (Reply 7, ll. 2–5 (citation omitted).)
Accordingly, all of Taylor’s arguments may be addressed by considering the
limitations recited in claim 19, with which all other claims stand or fall.
At the heart of the present dispute are the meaning of the term
“WCR,” and the meaning and weight to be given to the “correlating”
recitation in claim 19, “said weight concentration ratio correlating to the
quality of fabric safety of the product solution selected within the range of
damaging to abated damage to cotton-safe” (Claims App., Br. 21; emphasis
added).16

15 Reply Brief, filed 6 August 2013 (“Reply”).
16 The corresponding recitation in claim 1, which is drawn to a process of
making such a composition, reads, “the weight concentration ratio value
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We begin with the legal issue of claim interpretation, “the logical
starting point of the analysis.” Titanium Metals Corp. v. Banner, 778 F.2d
775, 782 (Fed. Cir. 1985).
The plain language of claim 19 requires an aqueous solution of alkali-
metal hydroxide and alkali-metal hypochlorite salt in a weight concentration
ratio of metal hydroxide to hypochlorite between 1:30 and 1:1. Although a
formal definition of the term “weight concentration ratio” appears to be
absent from the Specification, the ordinary meaning of the words is
consistent with the definition provided by Taylor,17 namely,
WCR = Wt % sodium hydroxide over Wt % sodium hypochlorite,
which may be rendered as
WCR = [NaOH]/[NaOCl],
where the square brackets indicate concentration by weight.
The Examiner finds that Scialla, in Example 5 (Scialla, col. 8, Table at
ll. 15–24), and Agostini, in Examples V and XII (Agostini, col. 10, Table at
ll. 19–43), describe aqueous solutions useful for bleaching fabrics
comprising 1.4 wt% sodium hydroxide and 2.5 wt% sodium hypochlorite.
(FR 14, ll. 10–15, and 17, ll. 1–11.) Similarly, the Examiner finds that
Grande (Grande, Table at col 19, ll. 40–67) describes aqueous fabric
bleaching compositions comprising 1.2 wt% sodium hydroxide and 3.5 wt%
sodium hypochlorite. (Id. at 19, ll. 40–44.) The Examiner summarizes these

correlating to a fabric effect selected in the range of damaging-to-abated
damage-to-cotton safe.” (Claims App., Br. 19.)
17 Amended After-Final Response filed 16 January 2014; we have inverted
the ratio defined in this Response to follow the ratio of components recited
in the claim.
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findings in the following words, “[e]ach and every reference contains
amounts of sodium hydroxide and sodium hypochlorite that overlap [more
precisely, fall within] the ratio range claimed by applicant.” (FR 11, ll. 2–3;
Ans. 6, ll. 9–10.)
At oral argument, Mr. Taylor urged that the ratios of weight
concentrations calculated by the Examiner are not the same as the weight
concentration ratio defined by the claims (Tr. 24, ll. 20–23), because the
ratio recited in the claims is based on the protective effect provided by the
WCR to the fabric during the treatment (id. at 25, ll. 2–11). Taylor urges
that this protective effect is an “additional property” of the composition that
“go[es] hand[-]in[-]hand” with the relative amounts of hypochlorite and
hydroxide. (Id. at 26, ll. 5–9.) This discovery that forms the basis of the
claims, Taylor argues, is one that changes the fabric-damaging
characteristics of bleach. The claimed composition, according to Taylor, is
distinguished from the prior art because no other ingredients (such as the
buffering agents present in each reference) are required.
The roles of recitations of properties and functional limitations in
claims to compositions of matter have been raised repeatedly throughout the
history of utility patents in this country. The predecessor to our reviewing
court explained that “every limitation positively recited in a claim must be
given effect in order to determine what subject matter that claim defines.”
In re Wilder, 429 F.2d 447, 450 (CCPA 1970). “However,” the court
continued, “recitation, in a claim to a composition, of a particular property
said to be possessed by the recited composition, be that property newly-
discovered or not, does not necessarily change the scope of the subject
matter otherwise defined by that claim.” (Id.) On the facts of that case, the
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court held that Wilder’s claims “define nothing other than rubber
compositions containing particular rubbers combined with particular
antidegradant compounds.” (Id.)
In this case, reading the claim as a whole, in light of the supporting
disclosure, we hold that the correlation recitation is merely the definition of
a property of the composition, and that the composition is defined by the
weight concentration ratio of sodium hydroxide to sodium hypochlorite.
First, the composition is bounded by the transitional phrase, “comprising,”
which “permits the inclusion of other steps, elements, or materials.” In re
Baxter, 656 F.2d 679, 686 (CCPA 1981). Second, the intended use, “for
cleaning a soft fabric article,” recited in the preamble, has the effect of
excluding compositions that can be shown to be unsuitable for that use. But
all of the applied references describe compositions for treating fabrics, and
Taylor has not come forward with evidence and argument that these
references are not suited for such use. Third, the reasons a formulator
selects components and relative amounts of components of a composition of
matter are generally immaterial to the critical question, i.e., do the appealed
claims “read on or encompass” a fabric cleaning composition “already
known by reason of the disclosure” of the prior art references? Titanium
Metals, 778 F.2d at 781. In other words, it doesn’t matter why a prior
artisan made a solution comprising 1.4 wt% sodium hydroxide and 2.4 wt%
sodium hydroxide: if that composition otherwise meets all the limitations
that define the claimed composition, it anticipates. Taylor has not come
forward with credible evidence or a plausible explanation of why the reasons
for selecting the relative amounts of NaOH and NaOCl would make a
difference regarding the identity of the ultimate composition.
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Taylor’s other arguments are not persuasive of harmful error in the
appealed rejections.
Taylor’s arguments based on inherency and overlapping ranges
(Br. 11, l. 1 to 14, l. 2) are inapposite to the present case, as the Examiner
relies on particular examples having a ratio of weight percent concentrations
of NaOH and NaOCl that falls within the range of 1:30 to 1:1, not on the
prior art disclosure of a range of such concentrations, as evidence of
anticipation. As the Federal Circuit explained, “[i]t is . . . an elementary
principle of patent law that when, as by a recitation of ranges or otherwise, a
claim covers several compositions, the claim is ‘anticipated’ if one of them
is in the prior art.” Titanium Metals, 778 F.2d at 782.
Taylor does not dispute the accuracy of the Examiner’s findings.
Rather, Taylor urges that the Examiner “elects to cherry pick values from the
references to ‘calculate’ ratios on behalf of the prior art.” (Id. at 14,
ll. 9-10.) We do not find this an accurate or fair characterization of the
Examiner’s analysis, which relies on particular examples of bleaching
solutions reported in these patent references. Moreover, the other examples
in these references all fall in the WCR range of 1:30 to 1:1 weight
concentration ratios of [NaOH]/[NaOCl].18 Similarly, Taylor’s arguments
that the Examiner erred by calculating the WCR of NaOH and NaOCl
because this amounted to using his discovery against him are without merit.
As the Examiner explained (FR 11, ll. 17–19; Ans. 6, ll. 15–17), that
calculation amounts to no more than determining whether the prior art

18 A cursory review of the now-withdrawn rejections indicates that all but a
couple—presumably those the Examiner characterized as “less pertinent”—
are clearly cumulative in this regard.
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solutions have relative amounts of NaOH and NaOCl within the scope of the
claims.
Taylor argues further that the references, unlike the invention, rely on
additives other than sodium hydroxide and sodium hypochlorite to lessen
fabric damage by the bleaching solution. (Br. 14, ll. 10–13.) This argument
is not persuasive of harmful error for several reasons. First, as already
discussed, the claims for which reissue is sought are open to additional, non-
recited components, by virtue of the transitional term “comprises,” in
contrast to the claims of the ʼ597 patent. Second, the claims require that the
WCR “correlat[e] to the quality of fabric safety” within certain bounds.
Standard definitions of the verb “correlate” require a relation, but not
necessarily a causal relation, between the things correlated. Thus, this
phrase does not serve as a functional limitation that excludes the presence of
materials that are not inconsistent with the “bleach product for cleaning a
soft fabric article” recited in the preamble to claim 19. In this regard, Taylor
has not come forward with evidence that the prior art compositions do not
meet the properties required by claim 19.
Finally, Taylor argues that “[t]he examiner has not addressed what is
meant by his calculated ratio to be inherently present as a claim limitation in
the references and required to define a natural fabric effect property
unknown to and in conflict with teachings of the references.” (Id. at
ll. 17-20; 18, ll. 22–24.) We understand Taylor to mean that because the
references did not recognize the particular WCR recited in the claims, the
references cannot meet this limitation. However, in the absence of positive
limitations on the composition of the claim, the reason for choosing amounts
of various components is irrelevant to the patentability of the claim over an
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otherwise anticipatory prior art reference. As the predecessor to the Federal
Circuit explained over thirty years ago, the “recitation of a newly discovered
function or property, inherently possessed by things in the prior art, does not
distinguish a claim drawn to those things from the prior art.” In re Oelrich,
666 F.2d 578, 581 (CCPA 1981).
In conclusion, Taylor has not demonstrated harmful error in the
rejections maintained by the Examiner.
C. Order
We affirm the rejection of claims 1, 3–29, 62, and 63.
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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