Ex Parte MURAMOTO et al

Patent Trial and Appeal Board

Aug 2, 2018

14327822 (P.T.A.B. Aug. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/327,822 07/10/2014
23683 7590 08/06/2018
MOLEX,LLC
2222 WELLINGTON COURT
LISLE, IL 60532
FIRST NAMED INVENTOR
Megumi MURAMOTO
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
B3-235 US 7916
EXAMINER
LIU, TRACY
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
08/06/2018 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):
patents@molex.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MEGUMI MEGUMI MURAMOTO
andKOUSUKE TAKETOMI 1
Appeal2017-008335
Application 14/327 ,822
Technology Center 1600
Before TONI R. SCHEINER, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to acidic electrolyzed water and
methods of making it. The Examiner rejected the claims as obvious under 35
U.S.C. § 103. Appellants appeal the rejection pursuant to 35 U.S.C. § 134.
We have jurisdiction under 35 U.S.C. § 6(b). The rejection is affirmed.
STATEMENT OF THE CASE
Claims 1-20, which are all the pending claims, stand finally rejected
by the Examiner under 35 U.S.C. § 103 as obvious in view of Ikeda et al.
(U.S. Pat. Appl. Publ. No. 2008/0008621 Al, published Jan. 10, 2008)
1 The Appeal Brief ("Appeal Br.") 2 lists MOLEX, LLC, as the real party in
interest.
Appeal2017-008335
Application 14/327,822
("Ikeda") and Masaharu et al. (Japanese Pat. Appl. JP2000157977 (A),
published Jun. 13, 2000) ("Masaharu"). Final Office Action ("Final Act.")
3.
There are two independent claims on appeal, claims 1 and 13. Claim
1 is directed to "Acidic electrolyzed water" and claim 13 is a directed to a
method of making it. Appellants stated that the rejected claims stand or fall
together. Appeal Br. 6. Appellants selected claim 1 as the "exemplary
member of the group" for their arguments. Id. at 7. Claim 1 is reproduced
below:
1. Acidic electrolyzed water having an effective chlorine
concentration of 15 ppm or more, osmotic pressure from 235
mOsm to 435 mOsm, and a chlorine-based electrolyte content
of 0.1 mass% or less in terms of sodium chloride.
The Specification teaches that the acidic electrolyzed water is
"a cleanser and a disinfectant containing acidic electrolyzed water
which has disinfecting power for a long period of time, and which
reduces the burden on living tissue." Spec ,r 5.
REJECTION
Claim 1 is directed to acidic electrolyzed water. The water is recited
in the claim to have the following characteristics:
( 1) "effective chlorine concentration of 15 ppm or more" which is
equivalent to 0.0015% or more of chlorine;
(2) "osmotic pressure from 235 mOsm to 435 mOsm"; and
(3) "chlorine-based electrolyte content of 0.1 mass% or less in terms
of sodium chloride."
2
Appeal2017-008335
Application 14/327,822
The Examiner found that Ikeda describes electrolyzed water
comprising (1) chlorine overlapping with the claimed concentration ( claim 1
comprises 15 ppm or more of chlorine; Ikeda comprises 0.0001-12% which
is equivalent to 1-120,000 ppm) and having (3) a sodium chloride content of
equal to or less than 0.2% which overlaps with the claimed content of 0.1 %
or less of chlorine. 2 Final Act. 3.
Ikeda, as found by the Examiner, does not teach (2) the osmolality of
its composition as required by claim 1. Id. However, the Examiner found
that Masaharu describes electrolyzed water for disinfecting cellular material,
such as skin or a wound, which comprises (1) an effective chlorine
concentration that overlaps with the claimed range of rejected claim 1. Id. at
4. The Examiner further found that Masaharu discloses its water "has an
osmotic pressure of 128-322 mOsm," which also overlaps with the claimed
range of 235--435 mOsm. Id. The Examiner found that Masaharu teaches
that "osmotic pressure is critical in preventing the denaturation of a cell."
Id.
The Examiner concluded that it would have been obvious to one of
ordinary skill in the art to have adjusted the sterilizing composition of Ikeda
to have an osmotic pressure from 128-322 mOsm "motivated by the desire
to have the sterilizing composition be effective for sterilizing skin and
wounds" because Masaharu teaches "sterilizing compositions with such
osmotic pressure would not denature cells and has sterilizing properties."
Final Act. 4.
2 A sodium chloride content of 0.2% would be roughly equal to 0.1 %
chlorine when the sodium chloride dissociates into sodium and chloride ions.
3
Appeal2017-008335
Application 14/327,822
Appellants state that Masaharu "teaches an electrolyzed water
composition containing 0.4% to 1 % sodium chloride," two to five times the
amount of sodium chloride found in Ikeda's composition (Ikeda 5,
dependent claim 7, reciting "equal to or less than 0.2% sodium chloride").
Appeal Br. 6. Appellant contends that there would have been no motivation
to modify Ikeda to have a higher concentration of sodium chloride as taught
by Masaharu. Id. Furthermore, Appellants contend that Masaharu teaches
away from the claimed combination because the sodium chloride in
Masaharu is much higher than in Ikeda. Appeal Br. 7; Reply Br. 2. Rather,
Appellants contend that "the combination of Ikeda and Masaharu is
improper because the Examiner relied upon on information gleaned solely
from Appellants' specification as a basis for her arguments." Appeal Br. 7.
Appellants also contend that neither publication teaches how to
achieve the claimed "limitation of the osmotic pressure in the range of 235
mOsm to 435 mOsm ... where a chlorine-based electrolyte content of 0.1
mass% or less in terms of sodium chloride is required." Appeal Br. 6.
DISCUSSION
The only difference between Ikeda and the claimed electrolyzed water
composition of claim 1 is that Ikeda does not teach the recited osmolality.
To make up for this deficiency, the Examiner cited Masaharu. Final Act. 4.
Masaharu teaches overlapping chlorine concentrations, 3 but as indicated by
the Examiner, the sodium chloride content of Masaharu is two to five times
3 Masaharu teaches a chloride concentration of 1-150 ppm; claim 1
comprises 15 ppm or more; Ikeda comprises 0.0001-12% which is
equivalent to 1-120,000 ppm.
4
Appeal2017-008335
Application 14/327,822
higher than Ikeda and as required by the claims. Appellants contend that
this difference is a teaching away from the claimed invention and is using
information gleaned from its Specification. Appeal Br. 6-7.
We do not agree with this argument.
Ikeda describes a sodium chloride content of equal to or less 0.1 %
(see fn. 2) that overlaps with the recited limitation of less than 0.1 % in the
claims. Final Act. 3; Ikeda 5 (dependent claim 7). Appellants' did not
dispute the Examiner's finding with regard to this limitation. The issue is
whether adjusting the undisclosed osmolality of Ikeda's electrolyzed water
composition to the osmolality of Masaharu's composition would have
directed one of ordinary skill in the art to use Masaharu's higher sodium
chloride content. Appellants' state that Masaharu' s higher sodium chloride
content teaches away from (3) the sodium chloride content of the claimed
composition, but Appellants provide no objective evidence or reasoning to
support the argument. Appeal Br. 7. Appellants also state that there "is no
motivation to modify Ikeda to have a higher concentration of sodium
chloride, as taught by Masaharu" (id.), but the rejection is not based on
raising Ikeda's sodium chloride content, but rather on adjusting Ikeda's
composition to have the osmolality of Masaharu's. Final Act. 4.
We have not been directed by Appellants to disclosure in Masaharu
that its sodium chloride content is critical or necessary to achieve the
osmolality disclosed in it. While Masaharu discloses the sodium chloride
concentration is 0.4 to 1.0% (Masaharu 57 (Abstract)), neither Masaharu's
claims nor disclosure require it.
Specifically, claim 1 of Masaharu is directed to an electrolytic water
having an osmotic pressure of 128-322 mOsm "in electrolytic water
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Appeal2017-008335
Application 14/327,822
generated by electrolyzing electrolytic water which contained an osmotic
adjustment substance." Thus, the content or osmotic adjustment substance is
not limited to sodium chloride. Dependent claim 4 of Masaharu recites that
the "osmotic adjustment substance is sodium chloride" and claim 5, which
depends from claim 4, recites "aforementioned sodium chloride
concentration to 0.4 to 1.0%." Masaharu at paragraph 6-10 contains the
same disclosure. Thus, while Masaharu describes a content of 0.4 to 1.0% in
specific embodiments of the claims, broader embodiments not so limited are
also disclosed.
Furthermore, contrary to Appellants' argument that the cited
publications do not teach how to achieve the claimed osmolality (Appeal Br.
6), Masaharu provides explicit guidance on how to do so. Masaharu
discloses that, while electrolytes such as sodium chloride are "preferable" as
osmotic adjustment substances, "protein, ... sugars, such as glucose and
hyaluronic acid, and albumin, amino acid, etc." can also serve as an
"osmotic adjustment substance." Masaharu ,r 14 (translation). Masaharu
discloses that the desired osmotic pressure may be achieved by "mix[ing]
water with at least one of the pH adjusters, such as chloride, acetic acid,
sodium acetate, phosphoric acid lNa, phosphoric acid 2Na, ascorbic acid,
succinic acid, citrate, malic acid, tartaric acid, and maleic acid, is a solution
of 128 - 3 lOmOsm." Id. at ,r 13. Accordingly, one of ordinary skill in the art
would have understood, upon reading Masaharu, that the osmolality of an
acidic electrolyzed water could be adjusted to the desired value using
osmotic adjustment substances other than the sodium chloride.
The Examiner did not glean information from Appellants'
Specification in combining Ikeda and Masaharu - as argued by Appellants.
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Appeal2017-008335
Application 14/327,822
Appeal Br. 7, 8. As discussed above, Ikeda describes electrolyzed water
comprising two of the three limitations of claim 1, namely (1) chlorine
overlapping with the claimed concentration and (3) sodium chloride content
of from 0.2% which meets the claimed content of 0.1 % chlorine. Final Act.
3. Appellants have not disputed these findings and we have determined that
these findings are supported by Ikeda's disclosure as cited by the Examiner.
Ikeda discloses that the sodium chloride content is effective at this
concentration as a sterilizing solution. Ikeda ,r,r 6, 22. Thus, there would
have been reason to utilize this sodium chloride concentration since it was
known to be effective in electrolyzed water used for sterilization purposes
and to have used other solutes to adjust the osmolality as taught by
Masaharu (see, e.g., ,r,r 13, 14).
For the foregoing reasons, we affirm the rejection of claim 1. Claims
2-20 fall with claim 1.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
7