Ex Parte Tibbetts et al

Patent Trial and Appeal Board

Sep 14, 2017

14484897 (P.T.A.B. Sep. 14, 2017)

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2 Claims 15—26, 31, and 32 are currently withdrawn from consideration and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,
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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;
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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
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“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.
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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
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‘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.
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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.
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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)
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(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
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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
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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
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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.
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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.
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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.
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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
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