Ex parte VOS

Board of Patent Appeals and Interferences

Nov 16, 1998

08090073 (B.P.A.I. Nov. 16, 1998)

Application for patent filed July 19, 1993. Applicant claims the benefit of the1
filing date of PCT/US92/00250, filed January 21, 1992 and European Patent Application
91-870011.3, filed January 22, 1991. The real party in interest appears to be The
Procter & Gamble Co.
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte EDDY VOS

_____________
Appeal No. 95-4089
Application 08/090,0731
______________
ON BRIEF
_______________
Before: WILLIAM F. SMITH, Administrative Patent Judge, and
FRED E. McKELVEY, Senior Administrative Patent Judge, and
RICHARD E. SCHAFER, Administrative Patent Judge.
McKELVEY, Senior Administrative Patent Judge.
Appeal No. 95-4089
Application 08/090,073
- 2 -
Decision on appeal under 35 U.S.C. § 134
The appeal is from a decision of the Primary Examiner
rejecting claims 1-12 and 15. We vacate the rejection made by
the examiner and enter new grounds of rejection pursuant to
37 CFR § 1.196(b).
A. Findings of fact
The record supports the following findings by a
preponderance of the evidence.
The invention
1. Applicant has discovered a cleaning composition
for removal of limescale on limescale-containing bathroom-type
stains (specification, page 2, second paragraph).
2. Prior to applicant's discovery, cleaning
compositions are said to have contained phosphoric acid. But
the use of phosphoric acid is said to have "become subject to
discussions, in relation to environmental questions"
(specification, page 1, last paragraph). Consistent with
applicant's point of view, is Cook, U.S. Patent 5,008,030
Appeal No. 95-4089
Application 08/090,073
Cook is prior art under 35 U.S.C. § 102(e).2
Applicant submitted no declaration under 37 CFR § 1.132 to establish that3
experimental work described in the specification was actually conducted. However, the
specification says experimental work was conduced. We decide the appeal on the basis
that the data described in the specification is based on actual experiments.
- 3 -
(1991), which tells us that certain "prior art compositions2
incorporate phosphate acids and consequently have associated
problems concerning environmental safety" (col. 3, lines 20-
23).
3. Applicant's cleaning compositions "comprise from
4% to 25% by weight of the total composition of maleic acid"
(specification, page 3, third paragraph).
4. Applicant's cleaning compositions also "comprise
a nonionic surfactant system" (page 4, first full paragraph).
Apparently, nonionic surfactant systems are "more desirable"
because anionic and cationic surfactants are said to
"adversely affect the limescale removing capacity of maleic
acid" (specification, page 4, second full paragraph). The
nonionic surfactant comprise from 1% to 15% by weight of the
cleaning composition (id.).
5. There is data described in the specification,
which is apparently based on actual experimentation. The3
data is said to show that (1) a cleaning composition
Appeal No. 95-4089
Application 08/090,073
- 4 -
containing at least maleic acid and a nonionic surfactant made
by ethoxylating an undefined C -C alcohol performs better on8 12
a soap scum covered marble block (0.86 grams of marble block
dissolved) than (2) a cleaning composition containing at least
maleic acid and an anionic surfactant identified as coconut
alkyl sulfate (only 0.60 grams of marble block dissolved)
(specification, page 6, LSR/soap scum covered marble column
for Compositions B and C).
The claims
6. Claim 1 is the broadest claim on appeal and
reads (indentation and paragraph numbering added):
An aqueous cleaning composition for hard surfaces
comprising
[1] from 1% to 15% by weight of the total
composition of a nonionic surfactant or
mixtures thereof,
[2] from 4% to 25% by weight of the total
composition of maleic acid,
[3] said composition having a pH of from 1.0 to
4.0.
7. Claim 6 reads as follows:
Appeal No. 95-4089
Application 08/090,073
Thomas is prior art under 35 U.S.C. § 102(e).4
Heit is prior art under 35 U.S.C. § 102(b).5
- 5 -
A composition according to Claim 1 which is substantially
free of anionic or cationic surfactant.
8. Claim 7 reads as follows:
A composition according to Claim 1 which is substantially
free of phosphoric acid.
The examiner's rejection
9. The examiner has rejected all the claims as
being unpatentable under 35 U.S.C. § 103 over Thomas, U.S.
Patent 5,039,441 (1991) and Heit, U.S. Patent 3,277,0084
(1966).5
Thomas
10. Thomas describes cleaning compositions having a
pH of 1 to 4 (col. 8, lines 36-37).
11. The compositions are said to be useful for
cleaning bathtubs and other bathroom surfaces (col. 2, line
13).
12. The Thomas compositions contain:
Appeal No. 95-4089
Application 08/090,073
- 6 -
a. a surfactant inter alia selected from the
group consisting of anionic, nonionic or cationic surfactants
or mixtures thereof (col 2, lines 34-38);
b. phosphoric acid (col. 4, lines 9-11); and
c. a carboxylic acid (col. 3, line 52 through
col. 4, line 8).
13. With respect to the carboxylic acid, Thomas says
the following (col. 3, line 54 through col. 4, line 4)
(discussion with respect to the number of carbon atoms and
emphasis added):
Various *** carboxylic acids can perform *** [the]
function [of lowering the pH to 1 to 4] but those which
have been found *** [effective] to remove soap scum and
lime scale from bathroom surfaces best, while still not
destabilizing the emulsion, are polycarboxylic acids, and
of these the dicarboxylic acids are preferred. Of the
dicarboxylic acids group, which includes those of 2 to 10
carbon atoms, from oxalic acid [2 carbon atoms] through
sebacic acid [10 carbon atoms], [each of] suberic [8
carbon atoms], azelaic [9 carbon atoms] and sebacic acids
[10 carbon atoms] are of lower solubilities and therefore
are not as useful in the present emulsions as other
dibasic [i.e., dicarboxylic] aliphatic fatty acids, all
of which are preferably saturated and straight chained.
Oxalic [2 carbon atoms] and malonic acids [3 carbon
Appeal No. 95-4089
Application 08/090,073
- 7 -
atoms], although useful as reducing agents too, may be
too strong for delicate hard surface cleanings.
Preferred such dibasic acids are those of the middle
portion of the 2 to 10 carbon atom acid range, succinic
[4 carbon atoms], glutaric [5 carbon atoms], adipic [6
carbon atoms] and pimelic acids [7 carbon atoms],
especially the first three thereof, which fortunately are
available commercially in mixture.
14. The saturated dicarboxylic acids mentioned in
Finding 13 have the general formula:
HOOC)(CH ) )COOH,2 n
where n varies from 0 (oxalic acid) to 8 (sebacic acid).
Hence, the formula for glutaric acid [5 carbon atoms] is:
HOOC)(CH ) )COOH.2 3
See Wertheim, Organic Chemistry, page 249 (2d ed. 1948).
Heit
15. Heit describes composition which contains maleic
acid which are said to be useful for removing scale from the
jacket side of a glass-lined jacketed equipment (col. 1,
lines 13-14). "Scale" includes "mineral and organic solids"
deposited on glass surfaces from contact with water (col. 1,
lines 21-23).
Appeal No. 95-4089
Application 08/090,073
- 8 -
16. According to Heit, maleic acid "may be used
alone or with inhibitors or in combination with other cleaning
agents" (col. 1, lines 60-62).
17. An object of Heit's invention is to provide a
composition useful for cleaning glass-coated metal objects
(col. 1, lines 44-46). Cleaning the glass would include
removing mineral and other deposits.
18. Further according to Heit, "maleic acid is
preferred *** by reason of its low cost, abundant supply and
low equivalent weight" (col. 2, lines 59-62).
The examiner's rationale
19. According to the examiner, maleic acid falls
within the scope of the carboxylic acids described by Thomas.
20. The examiner notes that Thomas differs from the
claimed invention in that it does not describe the use of
maleic acid.
21. Heit, however, says that maleic acid is useful
for removing scale from the glass side of a glass-lined metal
equipment.
22. The examiner therefore reasons that a person
having ordinary skill in the art would have found it obvious
Appeal No. 95-4089
Application 08/090,073
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to use the maleic acid of Heit as the carboxylic acid
component of the cleaning composition of Thomas.
Applicant's rationale
23. According to applicant, the invention is "a
selection invention" [whatever that might be] over Thomas.
24. Applicant says that Thomas "does not teach
maleic acid" (Appeal Brief, page 2). To the extent that
applicant means that Thomas does not explicitly describe the
use of maleic acid, applicant is correct.
25. Moreover according to applicant, Thomas "teaches
away from [the use of] unsaturated acids such as maleic
[acid]" based on Thomas' expressed preference for saturated
acids (Appeal Brief, page 2).
26. Apparently on the basis of experimental data
described in the specification, applicant says that "nonionic
detergent surfactants in combination with maleic acid are
clearly superior limescale and soap scum removing compositions
over other detergent surfactants in combination with maleic
acid" (Appeal Brief, page 2). Applicant accordingly argues
that the claimed invention would not have been obvious to a
person having ordinary skill in the art.
Appeal No. 95-4089
Application 08/090,073
Bechstedt is prior art under 35 U.S.C. § 102(b).6
- 10 -
Additional prior art
27. During the course of our review of the record in
this case, two prior art documents have come to our attention.
Bechstedt
28. Mentioned in the specification of the
application on appeal is German Patent Document DE 33 40 033.
29. According to the specification, the German
Patent Document "describes a composition for the removal of
limestone traces on laundry; these composition contain maleic
acid and nonionic surfactants, as well as high amounts of
phosphoric acids and urea" (specification, page 2).
30. Bechstedt, U.S. Patent 4,539,123 (1985), is6
believed to be an English language equivalent of the German
Patent Document.
31. Bechstedt describes a composition for softening
fabrics stiffened by washing in hard water (col. 1, lines 7-
9).
32. The composition is described as being made from:
Appeal No. 95-4089
Application 08/090,073
Should there be further prosecution of the application, applicant can (1) make7
the compositions described in each of Examples 1 through 8 of Bechstedt, (2) measure the
pH and (3) report the results to the examiner in a declaration under 37 CFR § 1.132.
- 11 -
a. 5 to 10 parts by weight of maleic acid;
b. 20 to 45 parts by weight of phosphoric
acid;
c. 10 to 25 parts of urea; and
d. 1 to 10 parts of a nonionic surfactant.
33. Bechstedt does not tell us the pH of his
cleaning composition. But the amounts of base (urea) and acid
(maleic acid and phosphoric acid) described as being present
in the composition are such that it would appear that there is
more acid than base.
34. For example, we calculate that in Example 1
there are 0.43 moles of maleic acid (50/116); 1.43 moles of
phosphoric acid ((165 x 0.85)/98); and 0.86 moles of urea
(62.5/72). Hence, it is entirely plausible that the
composition of Bechstedt has a low pH in the range of 1-4.7
Cook
35. The most relevant reference we have discovered
is a reference cited by an examiner who conducted a PCT search
Appeal No. 95-4089
Application 08/090,073
As noted earlier, Cook is prior art under 35 U.S.C. § 102(e).8
- 12 -
in connection with an earlier PCT application filed by
applicants. The reference is Cook, U.S. Patent 5,008,030
(1991).8
36. We are at a loss to understand why the examiner
did not cite and apply Cook.
37. Cook describes "all-purpose liquid cleaning
compositions for use on hard surfaces" (col. 1, lines 7-8)
which are said to be "effective in removing soap scum ***
[from] hard surfaces being cleaned" (col. 1, lines 9-11). The
compositions are said to be "particularly suitable for
cleaning hard surfaces such as *** glass and ceramic tile"
(col. 3, lines 55-58). 38. According to Cook, his
"compositions exhibit improved efficacy in removing soap scum
and mineral deposits and, therefore, have particular utility
in the cleaning of bathrooms and kitchens" (col. 3, lines 61-
64).
39. Cook, like applicant, seeks to eliminate the use
of phosphoric acid apparently based on environmental concerns
(col. 3, lines 20-22).
Appeal No. 95-4089
Application 08/090,073
- 13 -
40. The Cook compositions contain (col. 3,
lines 40-52; emphasis added):
a. 0.5 to 4% by weight of a nonionic
surfactant;
b. at least 0.1% by weight of a disinfectant
compound;
c. 3 to 7% by weight of an organic acid
selected from the group consisting of a
lower aliphatic monocarboxylic acid,
dicarboxylic acid and mixtures thereof; and
d. optionally, 0 to 2% of an acid stable
cationic or anionic soil releasing agent.
41. The nonionic surfactants include those made from
C -C alcohols ethoxylated with 6 ethoxyethylene radicals9 11
(col. 5, line 30).
42. According to Cook (col. 6, lines 27-53)
(discussion with respect to the number of carbon atoms and
emphasis added):
The liquid cleaner of the present invention cleans
soap scum soil and removes mineral deposits through the
action of both the nonionic surfactant system and,
additionally, at least one organic acid selected from the
Appeal No. 95-4089
Application 08/090,073
Hydroxyacetic acid also has a free hydroxy group. The formula for hydroxyacetic9
acid is HO)CH )COOH.2
One product would appear to be a composition sold under the designation DAGS. 10
DAGS is further described in footnote 1 of Example 1 of Cook.
- 14 -
group consisting of lower aliphatic monocarboxylic acids
and dicarboxylic acids in an amount of about 3-7% by
weight of the [cleaning] compositions. Representative
members of the aliphatic acid include C -C alkyl and1 6
alkenyl monobasic [i.e., monocarboxylic] acids and
dibasic [i.e., dicarboxylic] acids such as glutaric acid
[dicarboxylic acid with 5 carbon atoms], succinic acid
[dicarboxylic acid with 4 carbon atoms], propionic acid
[monocarboxylic acid with 3 carbon atoms], adipic acid
[dicarboxylic acid with 6 carbon atoms], hydroxyacetic
acid [monocarboxylic acid with 2 carbon atoms ] and9
mixtures thereof. Glutaric acid [dicarboxylic acid with
5 carbon atoms] is preferred, however, a mixture of the
*** [dicarboxylic] acids, adipic, glutaric and succinic
acids is easily available commercially ***. The ratio[10]
of the acids in the foregoing mixture is adjusted to
maximize water solubility of the mixture by employing
glutaric acid, the most water-soluble of these three
saturated aliphatic dibasic acids, as the major
component. The organic acids provide moderate acidity to
the cleaning compositions and thereby [are said to]
enhance cleaning performance, particularly removal of
soap scum from tiles and other hard surfaces, with very
Appeal No. 95-4089
Application 08/090,073
See, e.g., Example 2, Formula B containing MDAEM.11
See,, e.g., Example 1 and Example 2, Formula A, which do not have either an12
anionic or cationic surfactant.
- 15 -
little damage to the grout between the tiles and with
reduced irritation to the skin of the user.
43. The Cook compositions are described as having a
pH of generally 2-4 (col. 3, lines 52-53).
44. Cook provides examples with and without11 12
cationic and/or anionic surfactants.
45. Cook differs from the subject matter of claim 1
in that Cook does not describe the use of maleic acid as one
of the acids which can be used as the "lower aliphatic ***
dicarboxylic acids" (col. 6, lines 31-32).
46. Cook further differs from the subject matter of
claims 9 and 10 in that Cook does not describe a composition
having a pH of 1.2.
Level of ordinary skill in the art
47. A person having ordinary skill in the art would
have appreciated the concern explicitly addressed by Cook that
the acid component should be readily soluble in water given
Appeal No. 95-4089
Application 08/090,073
See, e.g., Wertheim, Organic Chemistry, page 249, Table 22 (2d ed. 1948); Kirk-13
Othmer, Encyclopedia of Chemical Technology, Vol. 14, page 772 (3d ed. 1981); and
Stephen et al., Solubilities of Inorganic and Organic Compounds, Vol 1, Part 1, pages
387-389, 392-394, 412 and 451 (1063) (Copy of Stephen attached as an Appendix to this
opinion).
- 16 -
Cook's suggestion that glutaric acid is used to "maximize
water solubility" of a mixture of acids (col. 6, line 42).
48. Cook's solubility concerns are mirrored by
Thomas. Thomas says (col. 3, lines 62-63) that "suberic,
azelaic and sebacic acids are of lower solubilities and
therefore are not as useful ***."
49. In addition, a person having ordinary skill in
the art would have been able to determine from standard texts
the solubility of acids falling within the scope of those
described by Cook as "lower aliphatic monocarboxylic acids and
dicarboxylic acids ***."
50. Based on standard texts, a person having
ordinary skill in the art would have appreciated the
solubility in water of various acids to be the following:13
a. Malonic acid [3 carbon atoms] 138 parts in
100 parts of water at 16EC.
b. Succinic acid [4 carbon atoms] 6.8 parts in
100 parts of water at 20EC.
Appeal No. 95-4089
Application 08/090,073
- 17 -
c. Glutaric acid [5 carbon atoms] 63.9 parts
in 100 parts of water at 20EC.
d. Adipic acid [6 carbon atoms] 1.44 parts in
100 parts of water at 15EC.
e. Maleic acid [4 carbon atoms and a double
bond] 44.1 parts in 100 parts of water at
25EC.
51. Propionic acid [also known as propanoic acid],
explicitly described by Cook (col. 6, line 36) is "completely
water-soluble" (Wertheim, page 163; see also Stephen, supra
n.13 at 389).
52. A person having ordinary skill in the art would
have understood the Cook language "lower aliphatic *** acids"
(col.6, line 31) to mean saturated and unsaturated acids
having 1 to 6 carbon atoms. See, e.g., Kirk-Othmer,
Encyclopedia of Chemical Technology, Vol. 7, page 614 (3d ed.
1979), which describes dicarboxylic acids having the formula:
HOOC)(CH ) )COOH2 n
as "saturated, linear aliphatic *** dicarboxylic acids ***."
Kirk-Othmer describes maleic acid as an unsaturated aliphatic
dicarboxylic acid. Hence, an "aliphatic dicarboxylic acid"
Appeal No. 95-4089
Application 08/090,073
Wertheim, page 263.14
- 18 -
includes acids with and without unsaturated bonds. Maleic
acid is a cis-isomer form of a dicarboxylic acid having a
double bond:14
HOOC)CH4CH)COOH.
53. A person having ordinary skill in the art would
recognize that maleic acid has long been a readily available
commercial product, often sold in the form of maleic anhydride
(which upon mixing with water turns to maleic acid). See
Heit, col. 2, line 59-61; Kirk-Othmer, Vol. 14, page 784.
54. A person having ordinary skill in the art would
have recognized that the pH of an acid-containing cleaning
composition could be in the range of 1 to 4 (Thomas, col. 8,
lines 36-37).
55. A person having ordinary skill in the art would
have recognized that the pH can be adjusted "to produce the
desired pH in the emulsion, for greatest functional
effectiveness, with safety" (Thomas, col. 4, lines 6-8).
56. Cook also reveals what a person having ordinary
skill in the art would have appreciated with respect to
adjustment of the pH (Cook, col. 7, lines 5-13):
Appeal No. 95-4089
Application 08/090,073
- 19 -
The pH of the acidic liquid detergent composition is
adjusted to maximize the antimicrobial effect of the
disinfecting agent while maintaining effective cleaning
of soap scum and oily soils. Generally, the pH is from
about 2-4, preferably about 2.5-3. In addition to
providing efficient cleaning, this pH range is less
damaging to the cleaned surface and less irritating to
the skin than the commercially available acidic cleaners.
B. Discussion
1. Introduction
We start our analysis of the patentability of claims 1-12
and 15 over the prior art with two new grounds of rejection
pursuant to 37 CFR § 1.196(b).
2. New ground of rejection based on Bechstedt
Claims 1-6 and 7-12 are rejected as anticipated under
35 U.S.C. § 102(b) by Bechstedt.
Bechstedt reads on claim 1 as follows:
An aqueous (col. 2, line 35) cleaning composition
for hard surfaces comprising from 1% to 15% by
weight of the total composition of a nonionic
surfactant or mixtures thereof (col. 2, lines 39-
Appeal No. 95-4089
Application 08/090,073
- 20 -
42), from 4% to 25% by weight of the total
composition of maleic acid (col. 2, lines 32-33),
said composition having a pH of from 1.0 to 4.0.
Bechstedt does not explicitly describe a pH for his
compositions. However, as noted in our Finding 34, there is a
plausible basis for finding that the pH of the Bechstedt
compositions is probably in the range of 1 to 4. Under the
circumstances, including the fact that the Patent and
Trademark Office has no laboratory in which to make
compositions and test their pH, the burden is reasonably
shifted to applicant to show that the compositions of
Bechstedt do not have a pH in the range of 1 to 4. Compare In
re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Cir. 1990); In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)
(where the claimed and prior art products are identical or
substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his
claimed product).
Appeal No. 95-4089
Application 08/090,073
- 21 -
We have not overlooked the preamble language "cleaning
composition for hard surfaces ***." Given that the Bechstedt
composition contains all the ingredients called for by the
claims, the Bechstedt composition would necessarily function
to clean hard surfaces.
The limitations of claims 2-4 are likewise described by
Bechstedt. See the citations in claim 1 reproduced above.
Claim 5 reads on Bechstedt as follows:
A composition according to Claim 4 wherein the
nonionic surfactant is a condensation product of
ethylene oxide (col. 3, line 2) with an alcohol
(col. 2, line 68), said alcohol having a straight
alkyl chain comprising from 6 to about 22 carbon
atoms (col. 3, lines 1-2), said condensation product
having a degree of ethoxylation of from 5 to 12
(col. 3, lines 3-4).
With respect to claim 6, Bechstedt describes compositions
which do not contain an anionic or cationic surfactant.
Since the Bechstedt compositions contain phosphoric acid,
claim 7 has not been rejected as being anticipated by
Bechstedt. We do not understand why the limitation of claim 7
does not appear in claim 1 given that one of applicant's
Appeal No. 95-4089
Application 08/090,073
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purposes was to develop cleaning compositions without
phosphoric acid.
With respect to claims 8-10, see the discussion above
dealing with claim 1.
With respect to claims 11-12, see Bechstedt, col. 3, line
1, describing alcohols with 12 carbon atoms and col. 3, line 3
describing 5-10 mols of ethylene oxide. While 6 is not
described per se, the number of possibilities is so small that
each of 6, 7, 8 and 9 is described within the meaning of
35 U.S.C. § 102(b) by the description of the range 5-10.
Compare In re Schaumann, 572 F.2d 312, 316, 197 USPQ 5, 9
(CCPA 1978), reaffirming In re Petering, 301 F.2d 676, 133
USPQ 275 (CCPA 1962) (description of genus of 20 compounds
held to describe all 20 compounds). Moreover, it should be
noted that Bechstedt describes ethoxylation of nonyl phenol
with 6 mols of ethylene oxide (col. 3, lines 30-32).
3. New ground of rejection based on Cook
Claims 1-12 and 15 are rejected under 35 U.S.C. § 103 as
unpatentable over Cook when considered in light of the level
of ordinary skill in the art as set out in Findings 47 through
56.
Appeal No. 95-4089
Application 08/090,073
- 23 -
Cook differs from the subject matter of claim 1 in that
Cook does not describe the use of maleic acid as one of the
acids which can be used as one of the "lower aliphatic ***
dicarboxylic acids" (col. 6, lines 31-32) (Finding 45). In
our opinion, the subject matter of claim 1 as a whole would
have been obvious notwithstanding the noted difference.
At the outset, we note that Cook limits the acids which
can be used to those which are "lower aliphatic" acids. While
"lower" is not defined per se, we note that Cook refers to
representative acids having 1 to 6 carbon atoms (col. 6,
line 34). Moreover, Cook specifically mentions alkenyl acids,
which would be acids having a double bond, i.e., unsaturated
as opposed to saturated acids. Important also is the emphasis
Cook places on the acid being soluble in water (col. 6, line
42). Cook emphasizes solubility in the context of describing
the use of a mixture of acids in which glutaric acid is used
to "maximize water solubility of the mixture" (col. 6, line
42). The mixture also is said to contain adipic and succinic
acids, neither of which is particularly soluble. Wertheim,
page 249, Table 2. Thomas also expresses a concern for
solubility, preferring acids which are more soluble.
Appeal No. 95-4089
Application 08/090,073
- 24 -
A person having ordinary skill in the art would have
recognized that maleic acid is more soluble in water (44.1
parts per 100 parts of water) than adipic acid (1.44 parts per
100 parts of water) or succinic acid (6.8 parts per 100 parts
of water), two acids which Cook and Thomas find suitable.
Likewise, we note that propionic acid described as suitable by
Cook is "completely water-soluble" (Wertheim, page 163).
In view of the description that the acids are "lower"
acids and the emphasis on solubility, we find that Cook
essentially describes the use of acids (1) having 6 or less
carbon atoms and (2) which are at least as soluble in water as
adipic acid (i.e., > 1.44 parts per 100 parts of water).
Maleic acid is an acid which fits well into the acids
described by Cook as being useful in his cleaning
compositions. Moreover, maleic acid is readily available,
mostly in the form of maleic anhydride which when mixed in
water is converted to maleic acid.
In rendering our decision, we have not overlooked the
Federal Circuit's holdings in In re Baird, 16 F.3d 380, 382,
29 USPQ2d 1550, 1552 (Fed. Cir. 1994) (fact that claimed
compound may be encompassed by a disclosed generic formula
Appeal No. 95-4089
Application 08/090,073
- 25 -
does not by itself render that compound obvious) and In re
Jones, 958 F.2d 347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir.
1992) (fact that claimed compound may be encompassed by an
open-ended description of a genus does not by itself render
that compound obvious). Unlike the facts in Baird and Jones,
in this case there are factors described by Cook which suggest
that maleic acid would be useful, i.e., the number of carbon
atoms in the acid and the solubility requirements set out by
Cook. Moreover, we note that Heit says that maleic acid is
useful for removing mineral deposits from glass. See Findings
15 through 17.
When the prior art and level of ordinary skill are
considered as a whole, we hold that it would have been prima
facie obvious to a person having ordinary skill in the art to
have used inter alia maleic acid as the lower aliphatic acid
called for by Cook.
Claims 9 and 10 further differ from Cook in that Cook
does not describe a pH of 1.2. In fact, Cook describes a pH
of generally 2-4, preferably a pH of 2.5 to 3 (col. 7, lines
8-9). However, Cook's pH teaching must be viewed in context.
Cook sought a pH less irritating to the skin. A pH of 2.5 to
Appeal No. 95-4089
Application 08/090,073
- 26 -
3 is less irritating to skin that a pH of 1.2. There is
nothing in Cook which says the pH cannot be 1.2 given that
Cook says the pH is "[g]enerally from about 2-4" (col. 7,
lines 8-9). Based on Thomas, one skilled in the art would
have recognized that the pH of a cleaning composition could be
as low as 1. Moreover, Thomas tells us that pH is adjusted to
achieve the "greatest functional effectiveness with safety"
(col. 4, lines 7-8). Where the user is wearing gloves,
irritation to the skin may not be as much a concern and a
lower pH would be acceptable. Accordingly, we find nothing
unobvious about the use of a pH of 1.2. Certainly nothing in
the record would establish that any unusual result is achieved
with a pH of 1.2.
In rendering our decision, we have not overlooked the
fact that the Cook compositions optionally may contain an
anionic or cationic surfactant and that applicant's claim 6
calls for a composition substantially free of an anionic or
cationic surfactant. However, Cook expressly makes the
presence of an anionic or cationic surfactant optional and
describes examples with and without those surfactants.
Applicant has not established that a composition with maleic
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Application 08/090,073
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acid and a nonionic surfactant has unusual properties vis-à-
vis the same composition also containing an anionic or
cationic surfactant.
In rendering our decision, we have not overlooked the
"Experimental Data" described on pages 5 through 8 of
applicant's specification.
Experimental Data (a) (pages 5-7) does not compare the
closest prior art with the claimed subject matter. Compare In
re Merchant, 575 F.2d 865, 869, 197 USPQ 785, 788 (CCPA 1978)
(an applicant relying upon a comparative showing to rebut a
prima facie case of obviousness must compare claimed invention
with the closest prior art); In re DeBlauwe, 736 F.2d 699,
705, 222 USPQ 191, 196 (Fed. Cir. 1984) (same). Thus,
Composition B (with maleic acid) has not been compared to
similar compositions with the preferred dicarboxylic acids of
Cook. The comparison of Composition B to Composition C is
entitled to little, if any, weight given that Cook describes
compositions without an anionic surfactant.
Experimental Data (b) (pages 7-8) is entitled to little,
if any, weight given that neither applicant nor Cook describe
cleaning compositions made solely from maleic acid.
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Alternatively, if the "base composition" mentioned on page 7
is a cleaning composition containing ingredients other than
the acid, we have not found in the specification any cogent
description of the ingredients in the "base composition."
4. The examiner's rejection
We do not reach the examiner rejection based on Thomas
and Heit. Our rationale based on Cook and the level of
ordinary skill in the art is believed to be a stronger
rejection. If it cannot be sustained, it necessarily follows
that the examiner's rejection based on Thomas and Heit could
not be sustained. On the other hand, if our new ground of
rejection based on Cook and the level of ordinary skill in the
art is correct, there is no need to reach the examiner's
rejection based on Thomas and Heit.
Accordingly, we vacate the examiner's rejection based on
Thomas and Heit on the basis that it has become moot.
C. Decision
The examiner's rejection based on Thomas and Heit is
vacated.
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Pursuant to 37 CFR § 1.196(b), claims 1-6 and 7-12 are
rejected under 35 U.S.C. § 102(b) as anticipated by Bechstedt.
Pursuant to 37 CFR § 1.196(b), claims 1-12 and 15 are
rejected under 35 U.S.C. § 103 over Cook when taken with the
level of ordinary skill in the art as set out in Findings 47
through 56.
D. Time for taking action
This opinion contains a new ground of rejection pursuant
to Rule 196(b) (37 CFR § 1.196(b), amended effective Dec. 1,
1997). See Notice of Final Rule, 62 Fed. Reg. 53131, 53197
(Oct. 10, 1997), reprinted in 1203 Off. Gaz. Pat. & Trademark
Office 63, 122 (Oct. 21, 1997)).
Rule 196(b) provides that, "A new ground of rejection
shall not be considered final for purposes of judicial
review."
Rule 196(b) also provides that the applicant, WITHIN TWO
MONTHS FROM THE DATE OF ENTRY OF THIS DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
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(1) Submit an appropriate amendment
of the claims so rejected or a showing of
facts relating to the claims so rejected,
or both, and have the matter reconsidered
by the examiner, in which event the
application will be remanded to the
examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
VACATED
(New grounds of rejection 37 CFR § 1.196(b))
______________________________
WILLIAM F. SMITH, )
Administrative Patent Judge )
)
)
______________________________)
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Application 08/090,073
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FRED E. McKELVEY, Senior ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
______________________________)
RICHARD E. SCHAFER )
Administrative Patent Judge )
Appendix
cc (via First Class mail):
Robert B. Aylor--Patent Division
THE PROCTER & GAMBLE CO.
Sharon Woods Technical Center
11520 Reed Hartman Hwy.
Cincinnati, OH 45241-2422
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