Board Maintains Obviousness Rejection Despite Examiner’s Hindsight Picking and Choosing of Claim Elements From a Large Genus of Disclosed Elements

September 14, 2011 – Blog Post

In Ex parte Toussaint (Appeal 2011-000073; U.S. Application 11/735,189; Decided September 7, 2011), the issue before the Board of Patent Appeals and Interferences was whether the Examiner erred in concluding that the claimed cleaning composition was unpatentable under 35 U.S.C. § 103(a) over the disclosure of Boone (WO 2006/097666).

The invention is directed to a cleaning composition consisting of: 0.5-3.5 wt. % of a linear alkyl benzene sulfonate; 0.5-6 wt. % of a C9-11 alcohol having 8 ethoxylates; 0.3-2 wt. % of hydrogen peroxide; 0.3-2 wt. % of lactic acid; water; optional cocoamidopropyl betaine; optional ethanol; optional propylene glycol n-butyl ether; an optional dye; an optional opacifier; an optional thickener; an optional fragrance; and optional caustic soda, wherein the cleaning composition has a pH of about 3-4.

Boone described a cleaning composition comprising: 0.01-20 wt. % of an anionic surfactant (e.g., alkyl benzene sulfonate, sodium lauryl sulfate); 0.01-20 wt. % of an optional nonionic surfactant (e.g., a C9-11 alcohol having 8 ethoxylates); 0.01-10 wt. % of an oxidizer (e.g., hydrogen peroxide); 0.05-20 wt. % of an acid (e.g., lactic acid); water; an alginate-based suspended inclusion; a thickener; an optional organic solvent; and an optional aesthetic or functional constituent, wherein the cleaning composition has a pH of less than 6, preferably 1-4. Boone exemplified a preferred cleaning composition comprising: 2.0 wt. % of sodium lauryl sulfate; 1.5-1.33 wt. % of hydrogen peroxide; 2.0 wt. % of lactic acid; water; alginate beads; and a thickener, wherein the cleaning composition has a pH of 2.45-3.01.

The Examiner asserted that it would have been prima facie obvious for a skilled artisan to arrive at the specific combination of the claimed materials in the claimed amounts recited in the cleaning composition of the claimed invention based on the disclosure of Boone through routine experimentation/optimization with a reasonable expectation of success.

The Appellant argued that Boone fails to disclose or provide a skilled artisan with sufficient motivation and guidance to arrive at the specific combination of the claimed materials in the claimed amounts recited in the cleaning composition of the present invention without the need for picking and choosing from among a large number of variables disclosed in Boone.

The Board agreed with the Examiner that a prima facie case of obviousness exists where, as in this case, the claimed concentration ranges overlap or lie inside the ranges disclosed in the cited reference, and cited In re Wertheim, 541 F.2d 257 (CCPA 1976) and In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).

In affirming the obviousness rejection, the Board also relied on KSR International Co. v. Teleflex Inc., 550 U.S. 398, 416-421 (2007), and reasoned that a skilled artisan would have been capable of selecting from among the art recognized equivalents described in Boone the specific combination of the materials recited in the claimed cleaning composition in order to achieve an optimal cleaning property, and that such a combination is obvious when it does no more than yield predictable results.

The Board noted that the Appellant did not provide any evidence demonstrating unexpected results as to the specific combination of the claimed materials or criticality as to the claimed amounts recited in the claimed cleaning composition, and cited In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (“even though applicant’s modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art, unless the claimed ranges ‘produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art.’”) (quoting In re Aller, 220 F.2d 454, 456 (CCPA 1955)).

The Appellant also argued that the transitional phrase “consisting of” as recited in the claimed cleaning composition excludes the requisite alginate-based suspended inclusion taught to be “a necessary constituent” of the cleaning composition described in Boone.

The Board stated that “[d]espite Boone’s description of the suspended inclusions as ‘necessary,’ we are not persuaded that the exclusion of the suspended inclusions would not have been an obvious modification to one of ordinary skill in the art” who desires an equivalent and economical and/or simplified cleaning composition without the suspended inclusions and their function as an attractive attribute or a visual indicator to the consumer, and cited In re Thompson, 545 F.2d 1290, 1294 (CCPA 1976) (eliminating the cost of the preliminary step of wax impregnation would have been sufficient motivation), and In re Kuhle, 256 F.2d 553, 555 (CCPA 1975) (deleting elements in the cited reference, thereby deleting their function, was an obvious expedient).

The Board’s decision emphasizes the importance of presenting secondary considerations (e.g., evidence demonstrating superior properties or unexpected results as to the specific combination of the claimed materials and/or criticality as to the claimed amounts recited in the composition of the claimed invention) in an attempt to rebut a case of obviousness.