Ex Parte Weuthen et al

Board of Patent Appeals and Interferences

Feb 28, 2006

10111863 (B.P.A.I. Feb. 28, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MANFRED WEUTHEN and KARL HEINZ SCHMID
__________

Appeal No. 2005-1588
Application No. 10/111,863
__________

ON BRIEF
__________

Before ELLIS, MILLS, and GRIMES, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. §134 from the examiner's final
rejection of claims 8-15, which are all of the claims pending in this application.
Claims 8 and 14 are illustrative of the claims on appeal and read as follow:
8. A process for making solid sugar surfactants comprising:
(a) providing a glycose component;
(b) acetalizing the glycose component with a fatty alcohol to form a
technical mixture containing excess fatty alcohol and alkyl and/or alkenyl
oligoglycoside; and
(c) contacting the technical mixture with an extractant to form a solid phase
containing the extractant, a predominant part of alkyl and/or alkenyl
oligoglycoside and a small amount of fatty alcohol, and a liquid phase containing
a predominant part of the fatty alcohol.

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14. The process of claim 8 wherein the solid phase is size-reduced and
ground to a desired particle size.

The prior art references cited by the examiner are:

Hill et al. (Hill) 5,576,425 Nov. 19, 1996
Joshi et al. (Joshi) 5,043,091 Aug. 27, 1991

Grounds of Rejection
Claims 8-15 stand rejected under 35 U.S.C. §103(a), over Hill in view of Joshi.
Claims 8-15 stand rejected under 35 U.S.C. §112, second paragraph, as
indefinite.
We reverse these rejections.
DISCUSSION

Obviousness
Claims 8-15 stand rejected under 35 U.S.C. 103(a), over Hill in view of Joshi.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established when the teachings from the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary skill in the art. In re Bell, 991 F.2d
781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993). An obviousness analysis requires
that the prior art both suggest the claimed subject matter and reveal a reasonable
expectation of success to one reasonably skilled in the art. In re Vaeck, 947 F.2d 488,
493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). With this as background, we analyze
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the prior art applied by the examiner in the rejection of the claims on appeal.
The examiner takes the position (Answer, pages 4-5) that Hill teaches steps (a)
and (b) of instant Claim 1. However, the examiner recognizes that “the instant
claims differ from the process of the Hill et al patent by setting forth step (c) that
involves contacting the product of steps (a) and (b) with an extractant.”
To make up for this deficiency of Hill the examiner relies on Joshi.

According to the examiner (Answer, pages 4-5)

The Joshi et al patent teaches a preparation of detergent laundry
bars based on alkyl polysaccharide nonionic surfactants with alkyl
benzene sulfonate anionic surfactant, detergent builder and filler.
The Joshi et al patent teaches processing of the laundry bars by pre-
blending the alkyl polysaccharide nonionic surfactant and a fatty
alcohol sulfate cosurfactant prior to feeding the mixture to the mixer
and plodder (see abstract). This pre-blending procedure of the Joshi
et al patent embraces step (b) of the instant claims, which comprises
an excess of fatty alcohol. See column 4, lines 20 and 21 wherein
the composition thereof contains up to 25% of alkyl polysaccharide
nonionic surfactant which embraces the subject matter of the instant
claims which indicate 20 to 70% of the solid phase containing alkyl
oligoglycoside. See column 7, 4th and 5th paragraphs whereby the
Joshi et al patent discloses builder salts such as phosphates, sodium
carbonate, sodium silicate, borax, sodium bicarbonate and zeolites
which embraces the extractants set forth in the instant claims. Joshi
et al also discloses adjuvants that may be employed with the
detergent bar such as carrageenan, alginates, and starches (see
column 9, lines), which embrace the use of a polysaccharide as the
extractant in the instantly claimed invention. At column 10, line 38 to
column II, line 24, the Joshi et al patent discloses a detail processing
of the laundry bars that suggests size-reducing and grounding of the
product, which embraces the size-reducing and grounding steps set
forth in the claimed invention. ....
It would have been obvious to one of ordinary skill in the art at
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the time the invention was made, subsequent to the acetalization of
the glycose component with a fatty alcohol as set forth in the Hill et al
patent, to mixed the product thereof with other components to
prepare solid sugar surfactants such as a detergent laundry bar, in
view of the recognition in the art, as evidenced by the Joshi et al
patent, that use of such components are able to improve the
properties of the surfactants in order to provide a more stable and
commercially effective product.

In return, appellants argue the examiner has failed to establish a prima facie
case of obviousness. Brief, pages 4-5. We agree. In rejecting claims under 35 U.S.C.
§ 103, the examiner bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). A prima facie case of obviousness is established when the teachings from the
prior art itself would appear to have suggested the claimed subject matter to a person of
ordinary skill in the art. In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir.
1993). An obviousness analysis requires that the prior art both suggest the claimed
subject matter and reveal a reasonable expectation of success to one reasonably skilled
in the art. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
In our view, the examiner has failed to indicate a legally significant reason,
suggestion or motivation to combine the cited references, and thus failed to establish a
prima facie case of obviousness. In particular, while we acknowledge that the Hill
process for the production of alkyglycosides by acetalization of higher aliphatic primary
alcohols with glycoses teaches steps (a) and (b) of claim 8, the examiner has failed to
sufficiently indicate why one of ordinary skill in the art would have been motivated to
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add the detergent builder of Joshi at the particular point in time in the specific process
for the direct production of alkyl glucosides taught by Hill, or that such a “detergent
builder” would have been recognized by one of ordinary skill in the art to serve the
function of being a chemical extractant for the alkylglycoside in the claimed process.
Appellants further argue (Brief, pages 4-5) that

the Joshi reference has nothing whatsoever to do with the claimed
process of making solid-form sugar surfactants. In Joshi, various laundry
detergent constituents are mixed together and formed into a ready-to-use
laundry detergent bar. The phosphates, silicates, etc. disclosed by Joshi
are not employed as extractants for the purpose of extracting solid-form
sugar surfactants from a mixture of glucose acetalized with excess fatty
alcohol.
****
Nowhere within the four corners of the Joshi reference is a process for
making solid sugar surfactants taught, disclosed, motivated, mentioned
or even alluded to.

In this case, we do not find that the examiner has drawn a legally sufficient nexus
between the steps of the method of preparing an alkyl polysaccharide detergent laundry
bar described by Joshi and the process for the production of alkyglycosides by
acetalization of higher aliphatic primary alcohols with glycoses of Hill. The examiner
has not indicated how the step (c) as claimed, i.e., “contacting the technical mixture with
an extractant to form a solid phase containing the extractant, a predominant part of alkyl
and/or alkenyl oligoglycoside and a small amount of fatty alcohol, and a liquid phase
containing a predominant part of the fatty alcohol” is taught by Joshi. Rather, it appears
that the examiner has chosen only so much of the cited references as will support a
given position to the exclusion of other parts necessary to the full appreciation of what
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such reference fairly suggests to one skilled in the art. We remind the examiner that “it
is impermissible within the framework of section 103 to pick and choose from any one
reference only so much of it as will support a given position to the exclusion of other
parts necessary to the full appreciation of what such reference fairly suggests to one
skilled in the art.” In re Wesslau, 353 F.2d 238, 241, 147 USPQ 391, 393 (CCPA 1965);
see also In re Mercer, 515 F.2d 1161, 1165-66, 185 USPQ 774, 778 (CCPA 1975).
In view of the above, we do not find the examiner has established a prima facie
case of obviousness on the evidence before us and we reverse the rejection of claims
8-15 over Hill in view of Joshi.

Claim Indefiniteness
Claims 8-15 stand rejected under 35 U.S.C. §112, second paragraph, as
indefinite.
Definiteness is determined from the perspective of a person of skill in the
relevant art. See Union Pacific Resources Co. v. Chesapeake Energy Corp., 236 F.3d
684, 692, 57 USPQ2d 1293, 1297 (Fed. Cir. 2001) (“The definiteness inquiry focuses on
whether those skilled in the art would understand the scope of the claim when the claim
is read in light of the rest of the specification.); Miles Laboratories Inc. v. Shandon Inc.,
997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir. 1993) (“The test for definiteness
is whether one skilled in the art would understand the bounds of the claim when read in
light of the specification.”). On the other hand, a claim is definite if “one skilled in the
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art would understand the bounds of the claim when read in light of the specification.”
Personalized Media Communications, LLC v. ITC, 161 F.3d 696, 705 (Fed. Cir. 1998).
The examiner finds the term "small amount" in the phrase "small amount of fatty
alcohol" in Claim 8, line 8 to be a relative term, which renders the claim indefinite. The
examiner argues the term "small amount" is not defined by the claim, the specification
does not provide a standard for ascertaining the requisite degree, and one of ordinary
skill in the art would not be reasonably apprised of the scope of the invention. Answer,
page 3. The term "desired particle size" in claim 14 is also argued by the examiner to
be relative term, which renders the claim indefinite. The examiner argues the term
"desired particle size" is not defined by the claim, the specification does not provide a
standard for ascertaining the requisite degree, and one of ordinary skill in the art would
not be reasonably apprised of the scope of the invention. Id.
In the present case we do not find the phrases “small amount” or “desired particle
size” would have been indefinite to one of ordinary skill in the art upon review of

the specification at the time of its filing. In step (c) of claim 8, the phrase “small
amount of fatty alcohol” (in the solid phase), in our view, should be read in conjunction
with the claim limitation, the “predominant part” of the fatty alcohol (in the liquid phase)
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in that step. Thus, it would reasonably appear that a greater quantity1 of the “excess
fatty alcohol” of step (b) remains in the liquid phase and a “small amount” of fatty
alcohol is found in the solid phase after the technical mixture is contacted with an
extractant (step (c)). For example, Example 1 of the specification describes a solid
product filter cake with 15.3% of fatty alcohol (compare, “small amount” in step (c)).
Specification, pages 8-9. In our view the percentage discussed in the example, coupled
with the claim relationship of the “predominant part” of fatty alcohol in the liquid phase to
the “small amount” of fatty alcohol in the solid phase provide one of ordinary skill in the
art with an understanding as to what a “small amount” of fatty alcohol in the solid phase
means for purposes understanding the metes and bounds of the claim. Thus, in our
view one skilled in the art would have reasonably understood the metes and bounds of
the claim when read in light of the specification.

1 Predominate is defined as, “To be of greater power, importance or quantity.”
Webster’s II New Riverside Dictionary, Anne H. Soukhanov, pub., The Riverside
Publishing Co., Boston, Massachusetts, p. 927 (1994).
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We also find that one of ordinary skill in the art would likely attribute the ordinary
meaning to the phrase in claim 14, “ground to a ‘desired particle size”’, in view of the
Example 1 language “the filter cake was ground”. The term “ground” is a general term
meaning “to crush, pulverize or powder by friction ...”2 and connotes no particular
particle size. Thus, claim 14 requires a grinding step with the resulting particle size
when the grinding is stopped being, by definition, the “desired” particle size. In addition,
desired uses of the product would also have provided one of ordinary skill in the art with
a reasonable understanding of an appropriate “desired” size to grind the filter cake.
In view of the above, we do not find the examiner has presented sufficient
evidence or argument to establish a prima facie case of claim indefiniteness. The
rejection of the claims for indefiniteness is reversed.

CONCLUSION
Therefore, we reverse the rejections of the claims for obviousness and claim
indefiniteness.

2 Webster’s II New Riverside Dictionary, Anne H. Soukhanov, pub., The
Riverside Publishing Co., Boston, Massachusettes, pp. 549, 551 (1994).
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
REVERSED

)
JOAN ELLIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
DEMETRA J. MILLS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ERIC GRIMES )
Administrative Patent Judge )

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