Ex Parte Tibbetts et alDownload PDFPatent Trial and Appeal BoardSep 14, 201714484897 (P.T.A.B. Sep. 14, 2017) Copy Citation 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. 14/484,897 09/12/2014 Nicole Jessica Tibbetts 271435-2 7920 6147 7590 09/18/2017 GENERAL ELECTRIC COMPANY GPO/GLOBAL RESEARCH 901 Main Avenue 3rd Floor Norwalk, CT 06851 EXAMINER LEE, DOUGLAS ART UNIT PAPER NUMBER 1714 NOTIFICATION DATE DELIVERY MODE 09/18/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): haeckl@ge.com gpo.mail@ge.com Lori.e.rooney @ ge.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NICOLE JESSICA TIBBETTS, LAWRENCE BERNARD KOOL, BERNARD PATRICK BEWLAY, DENISE ANNE ANDERSON, NATHAN DAVID MCLEAN, ERIC JOHN TELFEYAN, and VICTORIA MAY HANSEN Appeal 2017-001867 Application 14/484,8971 Technology Center 1700 Before BEVERLY A. FRANKLIN, RAE LYNN P. GUEST, and JENNIFER R. GUPTA, Administrative Patent Judges. GUEST, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1—3, 5—7, 9, 14, 27—30, 33, and 342 under 35 U.S.C. § 112(a) and under 35 U.S.C. § 103 as being unpatentable over Feng.3 See 1 Appellants identify the real party in interest as General Electric Company. Appellants’ Appeal Brief 2, filed September 21, 2015 (hereinafter “Br.”). 2 Claims 15—26, 31, and 32 are currently withdrawn from consideration and claims 4, 8 and 10-13 have been cancelled. Final Act. 2. 3 WO 2006/131689 Al, published December 14, 2006 and naming James Feng et al as inventors (hereinafter “Feng”). Appeal 2017-001867 Application 14/484,897 generally Examiner’s Final Office Action, dated March 19, 2015 (“Final Act.”); Examiner’s Answer, dated July 26, 2016 (“Ans.”). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appellants’ invention is directed to systems and methods of cleaning turbine engines using a reagent composition that selectively dissolves constituents of foreign material therefrom, particularly secondary reaction products of accumulated mineral dust, namely calcia-, magnesia-, alumina-, and silica-based (CMAS) reaction products. Spec. Tflf 2—3. The invention is an improvement over mechanical removal and HXAF6 acid solution removal techniques. Id. 14. The present invention limits damage to the underlying turbine components. Id. 122. Independent claims 1, 30, and 34 are exemplary of the subject matter on appeal and are reproduced below (with some indentations added for clarity and emphasis added to relevant portions of each claim): 1. A cleaning solution for a turbine engine, said cleaning solution comprising: a reagent composition comprising: water within a range between about 25 percent and about 70 percent by volume of the reagent composition; an acidic component within a range between about 0.1 percent and about 50 percent by volume of the reagent composition; an amine compound within a range between about 1 percent and 40 percent by volume of the reagent composition, wherein said reagent composition is diluted with water by a factor of up to about 40, thereby forming said cleaning solution; and a surfactant within a range between about 1 percent and about 7 percent by volume of the reagent composition, wherein the surfactant is an amine reacted with acrylic acid, 2 Appeal 2017-001867 Application 14/484,897 the cleaning solution has a pH value in the range between 2.5 and 7.0, the cleaning solution is used to clean a component of the turbine engine, said reagent composition is configured to selectively dissolve at least one of oxide-based, chloride-based, sulfate- based, and carbon-based constituents of a foreign material; and said reagent composition is substantially unreactive with metallic materials and with a non-metallic material selected from the group consisting of rare earth element ceramic oxides, ceramic matrix composites and polymeric matrix composites. 30. A cleaning solution for a turbine engine, said cleaning solution comprising: a reagent composition comprising: water within a range between about 25 percent and about 70 percent by volume of the reagent composition; an acidic component within a range between about 0.1 percent and about 50 percent by volume of the reagent composition; an amine compound within a range between about 1 percent and 40 percent by volume of the reagent composition; and dipropylene glycol monoethyl ether within a range between about 15 percent and about 30 percent by volume of the reagent composition, wherein said reagent composition is diluted with water by a factor of up to about 40 to form the cleaning solution, wherein the cleaning solution has a pH value in the range between 2.5 and 7.0, and wherein the cleaning solution is used to clean a component of the turbine engine. 34. A cleaning solution for a turbine engine, said cleaning solution comprising: a reagent composition comprising: water within a range between about 25 percent and about 70 percent by volume of the reagent composition; 3 Appeal 2017-001867 Application 14/484,897 an acidic component within a range between about 0.1 percent and about 50 percent by volume of the reagent composition; an amine compound within a range between about 1 percent and 40 percent by volume of the reagent composition; and a surfactant, wherein the surfactant is an amine reacted with acrylic acid, wherein said reagent composition is diluted with water by a factor of up [to] about 32 to about 40 to form the cleaning solution, the surfactant is within a range between about. 003 percent and about 1.56 percent by volume of the cleaning solution, the cleaning solution has a pH value in the range between 2.5 and 7.0, and the cleaning solution is used to clean a component of the turbine engine. Supplemental Appeal Brief 5—10, filed January 5, 2016, Claim App’x. Unless otherwise indicated, we adopt the Examiner’s findings in the Answer as our own and add any additional findings of fact appearing below for emphasis. II. Written Description Claims 1, 33, and 34 stand rejected under 35 U.S.C. § 112(a) as lacking written descriptive support for the following phrases: “wherein the surfactant is an amine reacted with acrylic acid” (claims 1 and 34); “the reagent composition is diluted with water by a factor of about 18 to 70, and does not contain sulfur in an amount exceeding about 100 ppm, does not contain chlorine in an amount exceeding about 20 ppm, and does not contain sodium, potassium or phosphorous in an amount exceeding 10 ppm” (claim 33); and 4 Appeal 2017-001867 Application 14/484,897 “wherein said reagent composition is diluted with water by a factor of up about 32 to about 40 to form the cleaning solution, the surfactant is within a range between about 0.003 percent and about 1.56 percent by volume of the cleaning solution, the cleaning solution has a pH value in the range between 2.5 and 7.0” (claim 34). “The purpose of the written description requirement is to prevent an applicant from later asserting that he invented that which he did not; the applicant for a patent is therefore required to ‘recount his invention in such detail that his future claims can be determined to be encompassed within his original creation.’” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (quoting Vas—Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)). “the surfactant is an amine reacted with acrylic acid” Appellants contend that paragraph 34 of the Specification discloses acrylic acid as an exemplary acidic component that is reacted with an amine. Br. 5. Paragraph 34 recites and exemplary embodiment including, inter alia, an acidic component and an amine component and states: It is believed, without being bound by any particular theory, that the acidic component is a primary driver that facilitates selective dissolution of the oxide-based, chloride-based, sulfate- based, and carbon-based constituents of the foreign material. Exemplary acidic components include, but are not limited to, citric acid, glycolic acid, poly acrylic acid, and combinations thereof. It is also believed, without being bound by any particular theory, that the amine component acts as a surfactant that facilitates reducing the surface tension between the cleaning solution and the foreign material. Exemplary amine components include, but are not limited to, monoisopropanol amine and triethanol amine. 5 Appeal 2017-001867 Application 14/484,897 Spec. 134. We agree with the Examiner (see Ans. 11) that the Specification describes only an amine component as a surfactant and describes the acidic component is a separate component that is the primary driver of the selective dissolution. The Specification does not describe a reaction between the acidic component and the amine component and does not describe a reaction product thereof being used as a surfactant. Accordingly, the Specification lacks written descriptive support for this recited limitation of claims 1 and 34. “said reagent composition is diluted with water by a factor of about 18 to 70” Appellants contend that claim 33 is supported by paragraph 35 of the Specification (Br. 5), which states that “[t]he dilution is based on Federal Aviation Administration (FAA) guidelines” that “provide acceptable elemental thresholds for compositions introduced into a turbine engine. As such, the reagent composition described herein is diluted by a factor of up to about 40 based on the formulation used to clean turbine engine 10.” Spec. 135. To the Appeal Brief, Appellants attached a copy of the Aerospace Material Specification as set forth in SAE AMS 1551 A, which is said to conform to the FAA guidelines. Id. We agree with the Examiner (Ans. 12) that mere reference to the FAA guidelines is not sufficient to incorporate into the written description the entire breadth of the FAA guidelines. See 37 C.F.R. § 1.57(b) (“an incorporation by reference must be set forth in the specification and must: (1) Express a clear intent to incorporate by reference by using the root words 6 Appeal 2017-001867 Application 14/484,897 ‘incorporat(e)’ and ‘reference’ (e.g., ‘incorporate by reference’)”); 37 C.F.R. § 1.57(h)(“A mere reference to material does not convey an intent to incorporate the material by reference.”). The Specification describes only dilution “by a factor of up to about 40” as being consistent with the FAA guidelines. Spec. 135. This description is not sufficient to show that the inventors had possession of the broader dilution range “by a factor of about 18 to 70,” as recited in claim 33. Moreover, Appellants have not provided any evidence that the allegedly incorporated FAA guidelines indeed supports the claim language. Appellants did not incorporate the attached SAE AMS 1551A document into the written description, and Appellants do not direct us to where in the SAE AMS 1551A document the FAA guidelines are either referenced or described. Nor have Appellants presented any evidence of the exact disclosure of the FAA guidelines sufficient to establish written descriptive support of the claimed language. recited maximum concentrations for sulfur, chlorine, sodium, potassium or phosphorous Further, Appellants have not shown where written descriptive support can be found in the Specification for the maximum concentrations of sulfur, chlorine, sodium, potassium, or phosphorous in the composition, which is also not described in 135 of the Specification. See Br. 5. “the surfactant is within a range between about 0.003 percent and about 1.56 percent by volume of the cleaning solution ” Appellants further contend that claim 34 is supported by paragraphs 38-41 of the Specification. Br. 5. 7 Appeal 2017-001867 Application 14/484,897 We agree with the Examiner (Ans. 13) that these paragraphs do not provide written descriptive support for the limitations of claim 34. In particular, Appellants have not shown written descriptive support for the ranges of the surfactant between about 0.003 percent and about 1.56 percent by volume of the cleaning solution, as recited in claim 34. At best, the Specification describes a minimum range of 1 to 5 percent by volume for the amine component. See Spec. ]Hf 36, 39. III. Obviousness Appellants present arguments with respect to only claims 1, 30, and 34. Br. 3 and 5—10. Thus, the claims not separately argued stand or fall with claim 1. Claim 1 The Examiner finds that Feng teaches a cleaning composition including all of the recited components of claim 1 in encompassing or overlapping concentration ranges. Ans. 3^4. Indeed, the differences between the components of the composition of claim 1 and the prior art composition are limited to small changes in concentrations of the various components. The chart below reflects the concentration differences. 8 Appeal 2017-001867 Application 14/484,897 Limitation Claimed amount Feng’s claim 2 amount (32:15—24) water About 25 to about 70 Balance (about 42—99) acidic About 0.1 to about 50 0.1-10 amine About 1 to about 40 1-8 additional surfactant About 1 to about 7 up to about 20 (10:13—19:15) pH 2.5-7 7 or less other “comprising” language encompasses these other components 0.1—10 solvent 0.00001—10 chloride salt 0—20 optional constituents The Examiner finds that because “a cleaning solution with the same components and close and/or overlapping ranges is taught” the substantially identical properties of the claimed composition were “inherent or at least reasonably expected.” Ans. 4—5. Appellants contend that the Examiner has not reasonably shown that the cleaning composition of Feng “selectively dissolves” foreign material while being “substantially unreactive” with metallic materials and at least one of the specifically recited non-metallic materials. Br. 6. Specifically, Appellants argue that the Examiner has not established identity between the claimed components and the teachings of Feng to shift the burden to Appellants to show that the properties are not inherent. Br. 6, 8,9. We find that the Examiner has sufficiently established that the claimed and prior art compositions are close enough to expect substantially identical properties. The claims are directed to a product, namely a composition. Thus, while features of the composition may be recited functionally, i.e., by what they are capable of doing, the composition itself must be distinguished from the prior art in terms of its components, rather than its function. In re Schreiber, 128 F.3d 1473, 1477—78 (Fed. Cir. 1997) 9 Appeal 2017-001867 Application 14/484,897 (The absence of a disclosure in a prior art reference relating to function did not defeat the Board's finding of anticipation regarding the claimed product because the functional limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212—13 (CCPA 1971); In re Danly, 263 F.2d 844, 847 (CCPA 1959). Although “[a] patent applicant is free to recite features of an apparatus either structurally or functionally [,] ... choosing to define an element functionally, i.e., by what it does, carries with it a risk.” Schreiber, 128 F.3d at 1478. “[Wjhere the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” In re Ludtke, 441 F.2d 660, 664 (CCPA 1971) (quoting Swinehart, 439 F.2d at 213). This is true whether the claimed composition is expressly taught by a prior art reference or otherwise would have been obvious to the skilled artisan based on the teachings of a prior art reference. Because all of the components of claim 1 are present and in amounts very close to the recited amounts in the claims, the Examiner has provided substantial identity between the claimed composition and the prior art composition that the skilled artisan would have expected the properties to be substantially identical. See In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (“This is not a case where the Board relied on an unknown property of prior art for a teaching. Rather, Maloney's express teachings render the claimed controlled release oxymorphone formulation obvious, and the claimed ‘food effect’ adds nothing of patentable consequence.”). This is especially true in 10 Appeal 2017-001867 Application 14/484,897 the present case because the amine component and the acidic component taught by Feng fall squarely within the claimed ranges and the water element has a substantial overlap in concentration range. Thus, the skilled artisan selecting a water concentration anywhere within this broadly overlapping range would necessarily have the features of the described invention. Thus, the burden shifts to Appellants to show that the distinguishing ranges of water are critical to the specific properties of the invention. In other words, Appellants must show that water concentrations between 70 and 99 percent do not have the properties claimed. We are not persuaded that Appellants have met this burden merely by pointing to teaching in Feng that suggest its composition reacts with metallic materials, namely by teaching (1) that free acids in Feng’s composition react with fatty acid metal salts within soap scum stains, releasing the metal ions and freeing the fatty acid and (2) that the composition must be enclosed in aerosol containers with corrosion resistant coatings or linings that are resistant to the effects of acidic formulations, because such containers are typically metal. Br. 6—9 (citing Feng 5:24—28 and 24:20—25). We agree with the Examiner (Ans. 16) that the claims only call for the composition to be “substantially unreactive.” Accordingly, even though some reactivity with metallic surfaces may be acceptable, Feng is specifically directed to a cleaning composition having “particularly good cleaning of metal or metallic surfaces.” Feng, 3:7—11, 23:23—24 (“including . . . polished, chromed, burnished or so called ‘brushed’ or matte metal surfaces”), 24:2—5 (“such metals include aluminum, copper, steel, stainless steel, brass, metal alloys which may include one or more of the former metals, as well as chromed metal and non-metal substrates which 11 Appeal 2017-001867 Application 14/484,897 have a metal or metallized surface.”). According to Feng, the addition of the inorganic chloride salt is particularly useful for “improved cleaning of metal surfaces, particularly copper surfaces.” Feng, 9:10—12. Feng teaches the removal of discoloration caused by “metal oxidation of treated metal surfaces.” Feng, 23:30. Thus, even without an express teaching to that effect, it is reasonable to find that Feng’s composition is substantially unreactive with metallic surfaces. In addition, Feng’s teaching, regarding using the composition to clean “glazed and unglazed tile, brick, porcelain, ceramics as well as stone including marble, granite, and other stones surfaces; glass; metals; plastics e.g. polyester, vinyl; fiberglass, Formica®, Corian® and other hard surfaces,” suggests that the composition will also be substantially unreactive with the ceramic and polymeric matrix composites recited in claim 1. The teaching in Feng of reacting with “fatty acid metal salts” is not an express teaching of reacting with metal. To the contrary, Feng teaches that the metal ions are “released” from the fatty acid soap scum and “sequestered” by the acids, but there is no teaching that the cleaning composition reacts with underlying metallic substrates. Similarly, Feng teaches using aerosol containers “known to be resistant to the effects of acidic formulations” but says nothing about reacting with metal surfaces of aerosol containers, as suggested by Appellants. We agree with the Examiner (see Ans. 16—17) that this teaching is specifically directed to compositions “formulated so that they may be useful in conjunction with an ‘aerosol’ type product” (Feng, 24:20-22), which is not necessarily the formula recited in claim 2 of Feng and relied 12 Appeal 2017-001867 Application 14/484,897 upon by the Examiner, but rather a compressed formula further comprising a propellant. Feng 34:25—28. Accordingly, we affirm the rejection of claim 1 as representative of the claims on appeal that are not separately argued. Claim 30 The Examiner finds that Feng teaches using dipropylene glycol methyl ether within a range between about 0.1—10%, which is outside of the range recited in the claims of between about 15—30% by volume. Ans. 8. Nonetheless, the Examiner determines that the ranges “are close enough that one skilled in the art would have expected them to have the same properties.” Id. (citing the Manual of Patent Examining Procedures (MPEP) § 2144.05(1)). The Examiner found that the concentration range recited in the claim is subject to dilution by up to a factor of 40, such that “the volume percentages of the components in the cleaning solution would be reduced accordingly.” Ans. 19. Appellants cite to In re Patel, 566 Fed. Appx. 1005 (Fed. Cir. 2014) (non-precedential and In re Sebek, 465 F.2d 904, 907 (CCPA 1972) in support of the proposition that it is Examiner error to determine “obviousness solely because the claimed range and the prior art range approach one another.” Br. 10 (quoting Patel, 566 Fed. Appx. at 1010) (emphasis in the original). Appellants further argue that the difference between the claims range and the range recited in Feng are meaningful in that “the lowest claimed percentage of dipropylene glycol monoethyl ether of claim 30 is 50% more than the highest level of that constituent disclosed by Feng.” Br. 10. 13 Appeal 2017-001867 Application 14/484,897 The Examiner is correct (Ans. 18) that 15% is not the lowest amount falling within the scope of the claim because the claim recites an lower limit of “about 15,” which includes somewhat less than precisely 15% “without resulting in a change in the basic function to which it is related.” See Spec. 120.4 Likewise, Feng’s upper limit is not expressly limited to 10% because Feng states and upper limit of “about 10%,” which includes somewhat more than precisely 10%. Thus, amounts that are encompassed by the claims and amounts taught by the prior art are closer than Appellants assert. See Patel, 566 Fed. Appx. at 1010 (“[A] rejection based on ranges approaching each other might well be appropriate where there is a teaching in the prior art that the end points of the prior art range are approximate, or can be flexibly appliedP) (emphasis added). Nonetheless, we agree with the Appellants that the Examiner has not sufficiently shown that the skilled artisan would have recognized sufficient identity between the end points of the non-overlapping ranges to conclude that the ranges “are close enough that one skilled in the art would have expected them to have the same properties.” Nor has the Examiner explained how further dilution would result in a concentration of dipropylene glycol monoethyl ether between about 15—30% by volume when the starting concentration is only about 0.1—10%. Such a conclusion is untenable. Accordingly, we do not sustain the Examiner’s rejection of claim 30. 4 This standard is set forth in the Specification as the scope of the term “about.” However, since the Specification describes no function provided by the addition of dipropylene glycol monoethyl ether to a cleaning solution, we are not able to appraise whether or not a change in concentration affects the function of the dipropylene glycol monoethyl ether. 14 Appeal 2017-001867 Application 14/484,897 Claim 34 The Examiner finds that “[bjecause Feng discloses the inclusion of both an acrylic acid and [an] amine compound, Feng is read as disclosing a surfactant that is an amine reacted with acrylic acid to the same extent that Applicant has disclosed a surfactant that is an amine reacted with acrylic acid.” Ans. 10. Yet, Appellants contend that “there is no disclosure or suggestion by Feng et al. of a cleaning solution including a surfactant including an amine reacted with acrylic acid.” Br. 11. We agree with the Examiner’s reasoning. Appellants’ argument is little more than stating what the claim states and arguing that the feature is not present, without addressing the Examiner’s finding. Such general and conclusory statements are not considered arguments for separate patentability of these claims. See 37 C.F.R. § 41.37(c)(l)(vii); See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board had reasonably interpreted 37 C.F.R. § 41.37(c)(l)(vii) as requiring “more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art”). IV. CONCFUSION On the record before us and for the reasons discussed above, we sustain the rejections of claims 1—3, 5—7, 9, 14, 27—29, 33, and 34 by the Examiner. We do not sustain the rejection of claim 30 maintained by the Examiner. 15 Appeal 2017-001867 Application 14/484,897 V. ORDER We affirm the following Examiner’s rejections: claims 1, 33, and 34 rejected under 35 U.S.C. § 112(a) or 35 U.S.C. §112 (pre-AIA), first paragraph, as failing to comply with the written description requirement and claims 1—3, 5—7, 9, 14, 27—29, 33, and 34 rejected under 35 U.S.C. §103 as being unpatentable over Feng. We reverse the rejection of claim 30 under 35 U.S.C. §103 as being unpatentable over Feng. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 16 Copy with citationCopy as parenthetical citation