ECOLAB USA INC.

Patent Trials and Appeals Board

May 19, 2021

2020002787 (P.T.A.B. May. 19, 2021)

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.
13/863,001 04/15/2013 Steven J. Lange P10610US00 -
PT10042US01
2745
124330 7590 05/19/2021
McKee, Voorhees & Sease P.L.C. ATTN: Ecolab Inc
801 Grand Avenue
Suite 3200
Des Moines, IA 50309
EXAMINER
LOVE, TREVOR M
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
05/19/2021 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):
michelle.woods@ipmvs.com
patatty@ipmvs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte STEVEN J. LANGE, JUNZHONG LI, XIN SUN,
ALLISON BREWSTER, and RICHARD STAUB1
________________

Appeal 2020-002787
Application 13/863,001
Technology Center 1600
________________

Before ULRIKE W. JENKS, JOHN G. NEW, and RYAN H. FLAX,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 We use the term “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.142. Appellant identifies Ecolab USA Inc. as the real party-
in-interest. App. Br. 1. Oral argument was heard on February 2, 2021, and
a transcript of the hearing is part of the record.
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Application 13/863,001

2
SUMMARY
Appellant has filed a Request for Rehearing (hereinafter the
“Request”) under 37 C.F.R. § 41.52(a)(1) seeking reconsideration of our
Decision of February 22, 2021 (the “Decision”). The Decision affirmed the
Examiner’s rejection of claims 1–14.
In the Request, Appellant contends that the Board misapprehended or
overlooked whether Dada or Baum is the closest prior art. Request 1 (citing
In re Merchant, 575 F.2d 865, 865 (C.C.P.A. 1978); MPEP § 716.02(e)).
Request 5.
As an initial matter, we remind Appellant that a Request for
Rehearing is not an opportunity to re-litigate the merits of the appeal, to
repeat prior arguments made on appeal, or to introduce new arguments not
made in the appeal.2 Rather, a Request for Rehearing must “state with
particularity the points believed to have been misapprehended or overlooked
by the Board.” 37 C.F.R. § 41.52(a)(1). Furthermore, this decision on the
request for rehearing is deemed to incorporate our earlier Decision reflecting
its decision for appeal. Id.
Bearing these limitations in mind, we turn to an analysis of
Appellant’s arguments.
Appellant argues that the Board misapprehended or overlooked
consideration of whether Dada is the closest prior art under MPEP

2 New arguments may be introduced, however: (1) based upon a recent
relevant decision of either the Board or a Federal Court; (2) responding to
a new ground of rejection designated pursuant to §41.50(b); and (3)
arguing that the Board’s decision contains an undesignated new ground of
rejection are permitted. See 37 C.F.R. § 41.52(a)(2)–(4)
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Application 13/863,001

3
§ 716.02(e). Request 2. According to Appellant, the Board’s analysis and
conclusion on this issue focused on whether it was appropriate for the
Examiner to change positions as to which reference is the closest prior art.
Id. (citing Decision 10, 16-17). Appellant argues that the ability of the
Examiner to change positions with respect to the closest prior art is
immaterial; to the contrary, Appellant contends, the Examiner erred in
treating Dada as the closest prior art. Id. (citing, e.g., App. Br. 13–14; Reply
Br. 2–3).
Appellant further contends that the Decision overlooks the test set
forth by MPEP § 716.02(e). Request 2–3. Appellant asserts that, instead of
applying the closest prior art test, the Decision states that: “Appellant
misapprehends the burden on this issue” and then shifts to an analysis of the
obviousness rejection and Li declaration. Id. at 3. Appellant contends that,
rather than properly considering Baum as the closest prior art as dictated by
MPEP § 716.02(e), both the Board and the Examiner instead focus on an
improper comparison of the declaration evidence with the proposed
obviousness combination. Id.
We are not persuaded by Appellant’s argument. We agree with
Appellant to the extent that the Examiner’s apparent shift from regarding
Baum as the primary reference to considering Dada as the primary reference
is not error on the part of the Examiner. See Decision 10 (citing In re
Ruschig, 379 F.2d 990, 992–993 (C.C.P.A. 1967).
However, we do not agree with Appellant that the Examiner’s
selection of Dada over Baum as the closest prior art constitutes reversible
error. The Examiner’s justification for choosing Dada over Baum as the
closest prior art is made explicit in both the Final Action and the Examiner’s
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Application 13/863,001

4
Answer. For example, the Examiner finds that “Dada teaches at least C6–12
peracids, and therefore, Dada teaches at least ‘short’ and ‘mid’ in
Applicant's newly created categories. Further, Baum teaches about 6, which
includes at least C7 and C8 which overlap with Applicant’s newly created
category of ‘mid.’” Final Act. 9. Furthermore, the Examiner explains that:
While Baum provides motivation for capping of the EO-PO
copolymers of Holland, particularly when combining said
copolymer with hydrogen peroxide and percarboxylic acid as in
Dada. The Dada reference is the foundational aspect that
teaches a stabilized formulation comprising C6-C12 peracids (see
entire document, for instance, [0027]), hydrogen peroxide, and
peroxycarboxylic acid.

Ans. 5 (emphasis added). The Examiner has thus provided reasonable
justification for selecting Dada as the closest prior art.
Moreover, Appellant’s argument that Baum is the closest prior art
rests primarily upon Appellant’s contention that Baum is closer than Dada,
because Baum employs the same standard industry test (Germicidal and
Detergent Sanitizer Test, 960.09 and applicable subparagraphs); as does the
Specification (Baum Ex. 2; Spec. 10). See, e.g., App. Br. 14 (emphasis
added):
Applicant has been clear in providing arguments as to why direct
comparison data was provided to differentiate from Baum as
opposed to either Holland or Dada, namely, that the Baum [sic]
is the closest art under the MPEP test and beneficially Baum
employed the exact same test method as one employed in the
present application thereby permitting a direct comparison.

Appellant’s claims are directed to a composition of matter, and the
fact that the claimed compositions and the compositions of Baum happen to
have been tested by the same industry standard assay in the Examples of
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Application 13/863,001

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both, seems dubious ground indeed from which to assert that Baum is the
closest prior art, compared to the structural criteria employed by the
Examiner.
Furthermore, Appellant repeatedly argues that the Examiner and the
Board have failed to apply the “test” recited in § 716.02(e) of the MPEP.
See, e.g., Request 3 (“The Board, like the Examiner, fails to apply the closest
prior art test dictated by MPEP § 716.02(e)”). We are unaware of any such
“test” for determining which reference constitutes the closest prior art.
Section 716.02(e) of the MPEP requires that “[a]n affidavit or declaration
under 37 CFR 1.132 must compare the claimed subject matter with the
closest prior art to be effective to rebut a prima facie case of obviousness,”
but, notably, it does not set forth any “test” for determining what reference
is, in fact, the closest prior art.
Finally, even were we to agree with Appellant that Baum is indeed the
closest prior art, we reject as meritless Appellant’s contention that the Board
failed to compare Appellant’s evidence of allegedly unexpected results with
Baum. In point of fact, the Decision dedicates seven pages (pp. 10–16),
including quotations from the transcript taken at oral argument, directly
comparing the results taught by Baum, with results obtained by Appellant’s
expert, Dr. Li, which demonstrate the allegedly unexpected properties of the
claimed composition. After an extensive comparison of the teachings of
Baum and the Li Declaration, the Board was not persuaded by Dr. Li’s
opinion, concluding that: “We are not persuaded that the difference in
antimicrobial activity by a factor of 3 or 4 between a C2 and a C8 peracid
constitutes the difference in kind, rather than in degree, requisite to establish
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Application 13/863,001

6
a persuasive demonstration of unexpected results.” Decision 16 (citing Iron
Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004)).
In short, we considered Appellant’s assertion that the antimicrobial
properties of the claimed composition were unexpected when compared to
those of Baum (Appellant’s asserted closest prior art), and we rejected
Appellant’s argument. We discern no omission or misapprehension in the
Decision in this respect, and we consequently deny Appellant’s requested
relief.

DECISION
We have considered Appellant’s Request, but we deny the requested
relief with respect to making any changes to the Decision.

DENIED

Outcome of Decision on Rehearing:

Claims 35 U.S.C
§
Reference(s)/Basis Denied Granted
1–14 103 Dada, Holland,
Baum
1–14

Final Outcome of Appeal after Rehearing:

Claims 35 U.S.C.
§
Reference(s)/ Basis Affirmed Reversed
1–14 103 Dada, Holland,
Baum
1–14