Ex Parte Wunch et al

Patent Trial and Appeal Board

Dec 6, 2016

13019586 (P.T.A.B. Dec. 6, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/019,586 02/02/2011 Kenneth G. Wunch OIL4-50264-US 1745
87884 7590 12/08/2016
Mossman, Kumar and Tyler, PC
P.O. Box 421239
Houston, TX 77242
EXAMINER
RAMACHANDRAN, UMAMAHESWARI
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
12/08/2016 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):
docket @ mktlaw .u s .com
tthigpen@mktlaw.us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH G. WUNCH and JOSEPH E. PENKALA
Appeal 2014-008031
Application 13/019,586
Technology Center 1600
Before DEMETRA J. MILLS, ERIC B. GRIMES, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
WE AFFIRM.
Appeal 2014-008031
Application 13/019,586
STATEMENT OF CASE
The following claims are representative.1
1. A process for mitigating the occurrence of biofouling comprising
introducing a cinnamaldehyde additive, a conventional biocide, and
an inert synergistic component into an industrial water system as a
biocide.
6. The process of Claim 1 wherein the industrial water system is
selected from water systems used in the field of exploration for and
production of oil and gas selected from the group consisting of:
aqueous drilling fluids;
fluids used for secondary and tertiary recovery; and
fracture fluids.
Appellants elected tetrakis hydroxymethyl phosphonium sulfate
(THPS) as the conventional biocide and sodium nitrite as the inert
synergistic component. Office Action mailed Sept. 13, 2013, page 2.
Cited References
Melo, Biofouling in Water Systems, Exp. Thermal and Fluid Sci. 14, pp
375-381 (1997).
1 An election of species requirement was made in this application and
Appellants elected THPS as the conventional biocide and sodium nitrite as
the inert synergistic component. Ans. 2.
Hansen
Emerson
Jones
Simpson
US 4,728,452
US 5,738,861
US 6,784,168 B1
US 2006/0006121 A1
Mar. 1, 1988
Apr. 14, 1998
Aug. 21,2004
Jan. 12, 2006
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Appeal 2014-008031
Application 13/019,586
Grounds of Rejection
1. Claims 1,5, and 11—13 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Emerson in view of Simpson and Hansen.
2. Claims 1,5, and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Melo in view of Emerson.
3. Claims 6, 11, and 12 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Melo in view of Emerson, Jones, and
Hansen.
FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Final Action at
pages 2-9.
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSRInt! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Rejection 1 - Emerson, Simpson and Hansen
When the examiner has required the applicant to elect a single
chemical species for examination, the issue on appeal is the patentability of
the single elected species. It is appropriate to limit discussion to that single
issue and take no position respecting the patentability of the broader generic
claims, including the remaining, non-elected species. See Ex parte Ohsaka,
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Appeal 2014-008031
Application 13/019,586
2 USPQ2d 1461 (Bd. Pat. App. Int. 1987). We limit our discussion in the
decision to the elected species and take no position with respect to broader,
generic claims in the application. Appellants do not argue individual claims
separately, therefore we limit our discussion to representative claim 1.
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellants’ arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
obviousness, which has not been rebutted by Appellants.
Appellants argue that the Examiner has engaged in hindsight
reconstruction of Appellants’ invention. App. Br. 15. We are not
persuaded. The Examiner has provided evidence in the prior art (Final Act.
3—4) and a rationale stemming from the prior art (Final Act. 5), providing a
reason to combine the cited references. Appellants do not otherwise contest
the Examiner’s prima facie case of obviousness in the Brief.
Appellants argue that “the examiner has refused to acknowledge the
evidence of synergism present in the application.” App. Br. 15. We are not
persuaded. The Examiner acknowledges in the Answer that
Applicants have shown synergy of cinnamaldehyde (25, 50 ppm)
with THPS (250 ppm) (see Table 1, page 15 of the specification).
However Applicants claim three components, a cinnamaldehyde
additive, a conventional biocide and an inert synergistic component in
a process to mitigate biofouling. Appellants[] have not demonstrated
any synergism with all the three components as claimed. Applicants
have not shown any data with any of the inert synergistic component
with cinnamaldehyde and/or a conventional biocide let alone the
elected species, sodium nitrite. Claim 1 is broad with respect to
cinnamaldehyde additive compounds, a conventional biocide and
inert synergistic component.
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Appeal 2014-008031
Application 13/019,586
Ans. 5-6. The Examiner further argues that “Applicant's Specification does
not demonstrate synergism of the agents as in the claims and gives little
guidance to as to what amounts of the inert synergistic component act
synergistically when added to cinnamaldehyde and a conventional biocide.”
Ans. 6.
Evidence of secondary considerations must be reasonably
commensurate with the scope of the claims. See In re Tiffin, 448 F.2d 791,
792 (CCPA 1971); In re Hiniker, 150 F.3d 1362, 1369 (Fed. Cir. 1998). In
the present case the combination of 50 or 100 ppm of THPS with 25 ppm of
cinnamaldehyde, and the combination 50 ppm of THPS with 50 ppm of
cinnamaldehyde, did not provide synergistic results. Spec. p. 15, Table 1.
As the pending claims encompass any concentration of the recited
components, Appellants’ evidence of synergism is not commensurate with
the scope of claim 1. Moreover, Appellants claim that the inert component,
sodium nitrite, is a synergistic component used in the claimed process, but
fail to provide an example including sodium nitrite or provide an example as
to how sodium nitrite contributes to the synergistic result.
The preponderance of the evidence supports the Examiner’s finding of
obviousness and rejection 1 is affirmed for the reasons of record.
Rejection 2
We do not reach Rejection 2 as we find it to be cumulative to rejection
1.
Rejection 3 — Melo, Emerson, Jones and Hansen
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Appeal 2014-008031
Application 13/019,586
Claims 6, 11, and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Melo in view of Emerson, Jones, and Hansen. Appellants
do not argue individual claims separately, therefore we limit our discussion
to representative claim 6.
The Examiner finds that
Melo teaches biofouling of surfaces involves living matter-
either micro (e.g. bacteria, fungi, or algae) or macroorganisms and
further teaches the condition is generally experienced where aqueous
systems are present (e.g. in cooling water systems, paper mills
operations, and in water treatment plants) and also teach the surface
contaminated by bacteria is associated with biofilm formation (see p
375, Introduction, Biofilm Formation). Melo further teaches the use of
biocide ... to cope with the problem of living organisms and teaches
chlorine, glutaraldehyde and other complex organic compounds can
be used as biocides. Also, Melo teach[es] that biofilms can encourage
other fouling mechanisms - for instance, corrosion due to a change in
local pH resulting from microbial activity (see p 376, col, 2, lines 1-
2).
Final Act. 6.
The Examiner acknowledges that “Melo do[es] not explicitly teach
cinnamaldehyde additives as the biocides to be used in the industrial water
system to mitigate biofouling.” Final Act. 6. Jones is relied on for the
disclosure of “a synergistic biocide comprising a tetrakis (hydroxymethyl) -
phosphonium salt for using in treating aqueous systems to inhibit or destroy
microbial contamination (See abstract, claim 6).” Final Act. 8. Similar to
rejection 1, Emerson is relied on for the disclosure of the use of
cinnamaldehyde as a biocide and Hansen for the use of sodium nitrite to
prevent corrosion of metals in aqueous systems. Final Act. 8—9.
The Examiner concludes that
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Appeal 2014-008031
Application 13/019,586
A person of ordinary skill in the art at the time of the invention
would have found it obvious to add a conventional biocide into the
industrial water system along with another biocide such as
cinnamaldehyde because Emerson et al. teaches cinnamaldehyde as a
biocide and further teaches its usefulness in water systems and Jones
teaches tetrakis (hydroxymethyl) phosphonium sulphate is useful for
treating aqueous systems contaminated with bacterial slime and/or
bacteria and is useful for treating aerobic systems such as cooling
towers and also for anaerobic systems such as oil wells, e.g. during
second recovery. A person of ordinary skill in the art at the time of the
invention would have been motivated to use tetrakis (hydroxymethyl)
phosphonium sulphate, a biocide with another biocide such as
cinnamaldehy[d]e in expectation of success and in expectation of
achieving synergistic benefits (because both of them are biocides) and
to treat aerobic and anaerobic systems.
A person of ordinary skill in the art at the time of the invention
would have found it obvious to add sodium nitrite in the process of
mitigating the biofouling in industrial water systems from the
teachings of Hansen.
Final Act. 8—9. The Examiner finds that, “Claim 6 is addressed by Jones[’]
teaching of aerobic systems such as oil wells are contaminated with bacteria
and need to be treated.” Final Act. 9; Jones, col. 1,11. 15—20. Appellants
provide no specific arguments with respect to the Examiner’s prima facie
case of the rejection of claim 6.
Just as in rejection 1, we do not find Appellants’ evidence of
unexpected results to be commensurate with the claim scope. Rejection 3 is
affirmed for the reasons of record. Additional arguments which have not
been made are waived.
The obviousness rejections are affirmed for the reasons of record.
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Appeal 2014-008031
Application 13/019,586
CONCLUSION OF LAW
The cited references support the Examiner’s obviousness rejections,
which are affirmed for the reasons of record. All pending, rejected claims
fall. We have limited our discussion in this decision to the elected species
and take no position with respect to broader, generic scope of the claims.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136
AFFIRMED
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