GENERAL ELECTRIC COMPANY

Patent Trials and Appeals Board

Dec 23, 2020

2019005246 (P.T.A.B. Dec. 23, 2020)

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-US-2/GEGRC-191 7920
161194 7590 12/23/2020
Dority & Manning, P.A. and Global Research Center
Post Office Box 1449
Greenville, SC 29602
EXAMINER
LEE, DOUGLAS
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
12/23/2020 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):
usdocketing@dority-manning.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 2019-005246
Application 14/484,897
Technology Center 1700
BEFORE BEVERLY A. FRANKLIN, RAE LYNN P. GUEST,
N. WHITNEY WILSON, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claim 30. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37
C.F.R.§ 1.42(a). Appellant identifies the real party in interest as General
Electric Company (GE). Appeal Br. 2.
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Application 14/484,897

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CLAIMED SUBJECT MATTER
Claim 30 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
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
6 percent and about 50 percent by volume of the reagent
composition;

an amine compound within a range between about
6 percent and 40 percent by volume of the reagent
composition; and

dipropylene glycol monoethyl ether within a range
between about 15 percent and about 20 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 6.5, and
wherein the cleaning solution is used to clean a component of the
turbine engine.

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Luminox, Low-Foaming Neutral Cleaner, Luminox Technical Bulletin,
http://www.alconox.com, 1–2 (2006)

THE REJECTION
Claim 30 is rejected under 35 U.S.C. § 103 as being unpatentable over
Luminox, as evidenced by Applicant's Specification and the Luminox
Technical Bulletin dated 2006.
OPINION
Claim 30 is the only claim pending and under consideration in this
appeal.
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented in this Appeal and both the Examiner’s and Appellant’s
arguments, we are not persuaded that Appellant identifies reversible error.
Thus, we affirm the Examiner’s rejection for the reasons expressed in the
Final Office Action and the Answer, and add the following for emphasis.
We refer to the Examiner’s position as set forth on pages 3–7 of the
Answer. Therein, the Examiner relies upon the publically available cleaning
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composition named Luminox® (hereafter “Luminox”, which is a registered
trademark of Alconox, Inc. of White Plains, N.Y., which is disclosed in
Appellant’s Specification in ¶ 36, and is further evidenced by the
Examiner’s reliance upon a Luminox Technical Bulletin. Ans. 3. The
Examiner provides a comparison of the components and percentages of the
components between the applied art and the claims on page 5 of the Answer,
reproduced below.

Regarding the claim limitation in the last 4 lines of claim 30 wherein
the reagent composition is diluted with water “by a factor of up to about 40”,
it is the Examiner’s position that Luminox meets this limitation because
the claim recites “up to about 40” states the upper limit of dilution, but does
not set a lower limit. The Examiner refers to page 1 of the Luminox
Technical Bulletin as evidence that it was known that Luminox could
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be diluted. The Examiner also finds that Luminox discloses a pH value of
6.6 and refers to the on page 2 of the Luminox Technical Bulletin in this
regard. The Examiner concludes that a prima facie case of obviousness
exists where the claimed ranges or amounts do not overlap with the prior art,
but are merely close.2 Ans. 3.
Appellant argues that the rejection fails to present any reason why one
skilled in the art would have modified the commercially available Luminox
composition to arrive at the subject matter of claim 30. Appeal Br. 4.
Appellant argues that because no prima facie case of obviousness has been
made, Appellants are not required to provide any evidence of unexpected
results or “criticality.” Appeal Br. 4.
Appellant also argues that simply alleging that the ranges “are merely
close” but “do not overlap” does not establish a prima facie case
of obviousness. Appellant submits that some articulated reasoning with
rational underpinning as to why one of ordinary skill in the art would have
modified/combined the prior art to arrive at the subject matter of claim 30 is
required. Appeal Br. 5.

2 As an aside, the Examiner states that it appears that Appellant arbitrarily
claims an upper limit of DPGME 20%, a lower limit of acidic component of
6%, a lower limit of 6% of amine compound, and an upper pH limit of 6.5,
stating that these limits are conveniently selected just outside of the
Luminox composition. Ans. 4. On page 5 of the Reply Brief, Appellant
states that the disclosure of Luminox is one embodiment among others
disclosed in the Specification, and the subject matter of claim 30 is among
the other embodiments.

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The Examiner’s response to Appellant’s arguments is set forth on
pages 4–6 of the Answer. Therein, the Examiner refers to several case law
citations in support of the position that a prima facie case has been made
since component elements of Appellant’s claim 30 and of the composition
Luminox are the same, and the range of each component either overlap or
approach so closely the range of quantities recited in the claim. Ans. 4–6.
The Examiner also states that Appellant’s claim 30 composition
recites that the acid component is “about 6%”, and the amine compound is
“about 6%”, and Luminox has an acid component that is “about 5%”, and an
amine compound that is “about 5%.” The Examiner refers to In re
Woodruff, 919 F.2d 1575 (Fed. Cir. 1990) (the prior art taught carbon
monoxide concentrations of “about l-5%”, while the claim was limited to
“more than 5%.” The court held that “about l-5%” allowed for
concentrations slightly above 5% thus the ranges overlapped) in support of a
prima facie case. Ans. 5. The Examiner states that because both
Appellant’s claim 30 composition and the prior art composition Luminox
use the term “about”, the term “about 6%” allows for concentrations slightly
below 6%, and the term “about 5%” allows for concentrations slightly above
5%. Ans. 5–6. The Examiner concludes that as in In re Woodruff, a prima
facie case of obviousness has been made between Appellant’s claimed
composition and the prior art composition Luminox. Ans. 6.
In reply, Appellant argues that the Examiner acknowledges on page 5
of the Answer that there are three components of claim 30 (DPGME, the
acidic component, and the amine compound) that are not within the prior
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art Luminox reagent, not to mention the difference between the pH of claim
30 versus the pH of the Luminox reagent. Reply Br. 2.
However, in taking this position, Appellant overlooks the aspect of the
Examiner’s position that use of the term “about” in both the claim and the
prior art allows for values slightly above or slightly below the recited value
and the Examiner’s reference to In re Woodruff , 919 F.2d 1575 (Fed. Cir.
1990). Ans. 5–6. Hence, the position taken by the Examiner is that the
claim ranges for the acid and amine components are within the prior art.
With regard to the claimed pH range versus the prior art, it is the Examiner’s
position that a prima facie case of obviousness exists where the claimed
ranges or amounts do not overlap with the prior art but are merely close and
refers to Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783
(Fed. Cir. 1985) (holding as proper a rejection of a claim directed to an alloy
of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance
titanium” as obvious over a reference disclosing alloys of 0.75% nickel,
0.25% molybdenum, balance titanium and 0.94% nickel, 0.31%
molybdenum, balance titanium because “[t]he proportions are so close that
prima facie one skilled in the art would have expected them to have the
same properties.”). Ans. 4.
Appellant argues that the Examiner’s conclusion (Ans. 6) that “the
proportions are so close (if not overlapping) that it is prima facie that one
skilled in the art would have expected them to have the same properties” is
speculative and a red herring. Reply Br. 2–3. Applicant argues that one
skilled in the art would understand that the composition of claim 30 and the
Luminox composition do not have the same properties. Appellant states that
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the composition of claim 30 requires a pH of from 2.5 to 6.5, which is lower
than the pH of Luminox of 6.6. Reply Br. 3. Appellant refers to the
Specification for teaching that “a decrease in cleaning effectiveness . . . was
noted when the pH was increased.” Spec. ¶ 54. Reply Br. 3.
Appellant submits that therefore one skilled in the art would readily
recognize, upon consideration of the aforementioned Specification teaching
that the properties of the composition change as the pH level is varied.
Reply Br. 3. Appellant submits that the Specification teaches exactly the
opposite of the Examiner’s assertion: that the properties of the compositions
are different at various pH levels. Reply Br. 3.
Paragraph 54 in Appellant’s Specification discloses:
[0054] Attempts were made to understand the correlation (if any)
between cleaning solution pH level and cleaning effectiveness. It was
not possible to categorize the effect of the pH level on cleaning
effectiveness across the entire range of pH levels (~2.5 to 11+) of the
cleaning reagents that were tested because the effect of the pH was
comingled with the effect of the elemental compositions of the
various reagents. The two effects could not be decoupled. However,
when looking at a single reagent within a narrower range, a decrease
in the cleaning effectiveness from 78% to 62% was noted when the
pH was increased from about 3.5 to 5.5.
We cannot agree entirely with Appellant’s interpretation of paragraph
54 of the Specification (that this paragraph teaches that “a decrease in
cleaning effectiveness . . . was noted when the pH was increased” as
Appellant states on page 3 of the Reply Brief). As shown above, paragraph
54 of the Specification indicates that it was not possible to categorize the
effect of the pH level on cleaning effectiveness across the entire range of pH
levels because the effect of the pH was comingled with the effect of the
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elemental compositions of the various reagents. Only when looking at a
single reagent within a narrower range, a decrease in the cleaning
effectiveness from 78% to 62% was noted when the pH was increased from
about 3.5 to 5.5.3 Hence, we are not persuaded by this line of argument.4
In view of the above, we agree with the Examiner that a prima facie
case has been met. Applicants can rebut a prima facie case of obviousness
by showing the criticality of the range. “The law is replete with cases in
which the difference between the claimed invention and the prior art is some
range or other variable within the claims . . . In such a situation, the
applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range.” In re Woodruff at 1578. In the instant case, such a showing
is absent.
In view of the above, we affirm the rejection.

3 It is noted that even if there is criticality in this range, the range recited in
claim 30 extends to a pH of 6.5, which is closer to the pH of 6.6 of the prior
art than to the upper limit of 5.5 of the assertedly preferred pH range.
4 Appellant also argues that case law cited by the Examiner (Ans. 4–5)
relies on the expectation that the compositions would have the same
properties. Appellant submits that because the property of the composition
changes at various pH levels, none of the case law cited by the Examiner
applies to the present application. Reply Br. 3. Appellant instead relies
upon the case of In re Stepan, 868 F.3d 1342 for the reasons set forth on
pages 3–5 of the Reply Brief. We likewise are unpersuaded by this line of
argument in view of the teachings of paragraph 54 of the Specification as
discussed herein.

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CONCLUSION
We affirm the Examiner’s decision.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
30 103 Luminox 30
Overall
Outcome
30

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED