Corkill, In re

• Decision Date: 27 August 1985
• Docket Number: 84-1684,Nos. 84-1683,s. 84-1683
• Parties: In re John M. CORKILL, et al. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1496

771 F.2d 1496

226 U.S.P.Q. 1005

In re John M. CORKILL, et al.

Appeal Nos. 84-1683, 84-1684.

United States Court of Appeals, Federal Circuit.

Aug. 27, 1985.

Thomas H. O'Flaherty, Proctor & Gamble Co., Cincinnati, Ohio, for appellants.

With him on brief was Robert B. Aylor, Proctor & Gamble Co., Cincinnati, Ohio.

Harris A. Pitlick, Associate Sol., U.S. Patent and Trademark Office, Arlington, Va., for appellee. With him on brief were Joseph F. Nakamura, Sol., and John W. Dewhirst, Associate Sol., Washington, D.C.

Before SMITH, NEWMAN and BISSELL, Circuit Judges.

PAULINE NEWMAN, Circuit Judge.

These consolidated appeals are from the decisions of the Patent and Trademark Office (PTO) Board of Appeals (the Board) sustaining the examiner's rejection of claims 2-11, 13-28, 35-42, 49-58, 60-62, 64-74, and 77-79 in patent application Serial No. 450,266 as unpatentable for obviousness under 35 U.S.C. Sec. 103; and the rejection of claims 1, 3-11, 16, 18, 19 and 21-28 in Serial No. 036,615 as unpatentable under 35 U.S.C. Secs. 103 and 112. Serial No. 036,615 is a continuation of Serial No. 450,266, and differs only in the claimed particle size ranges. Both are the invention of John M. Corkill, Bryan L. Madison, and Michael E. Burns (hereinafter collectively Corkill) and are entitled "Detergent Compositions". We affirm in part and reverse in part.

OPINION

In both the '266 and '615 patent applications, Corkill claims the combination of certain zeolites with known detergents, to produce detergent compositions. Some of Corkill's claims require as an additional component "an auxiliary detergent builder salt".

The Board in a first set of appeals affirmed the rejections of the claims of both applications under section 103 but, except as discussed for the '615 application, reversed the rejections under section 112. Further prosecution ensued, and in a second appeal the Board affirmed the rejections of all claims. The principal references relied on by the Board were U.S. Patent 3,661,789 to Corey et al. and U.S. Patent 2,882,243 to Milton, although a large number of additional references were cited during the course of an extended prosecution.

The Sec. 103 Rejection

We consider first the section 103 rejections as applied to those claims of both applications that are not restricted to the presence of an "auxiliary builder" in the composition. Claim 79 of the '266 application is typical:

79. A detergent composition capable of rapidly reducing the free polyvalent metal ion content of an aqueous solution, comprising:

(a) from about 5% to about 95% by weight of a water-insoluble crystalline aluminosilicate ion exchange material of the formula

Naz [ (AlO2 )z . (SiO2 )y ] X H2 O

wherein z and y are integers of at least 6; the molar ratio of z to y is in the range from 1.0 to about 0.5, and x is an integer from about 15 to 264; said aluminosilicate ion exchange material having a particle size diameter from about 0.1 micron to about 10 microns; a calcium ion exchange capacity on an anhydrous basis of at least about 200 milligrams equivalent of CaCO3 hardness/gram; and a calcium ion exchange rate on an anhydrous basis of at least about 2 grains/gallon/minute gram; and

(b) from about 5% to about 95% by weight of a water-soluble organic surface-active agent selected from the group consisting of anionic, nonionic, ampholytic and zwitterionic surface-active agents and mixtures thereof.

The core of the board's decision is that it would have been obvious to use known hydrated zeolites with known detergents to reduce water hardness, in view of Corey's teaching of the use of hydrated zeolites with known detergents and bleach to reduce water hardness, and Milton's teaching of zeolites having the same composition and properties as the zeolites in Corkill's claims. Other references were also relied on, but we agree with the PTO that a prima facie case is made by the teachings and suggestions of these two references.

The Corey patent contains the following text:

[T]he detergents can be used in combination with the water-soluble soaps and water conditioners. The term "water conditioner" ... designates those compounds which sequester, or inactivate water hardness and aid in cleaning ... Illustrative of the inorganic water conditioners useful in the present invention are the zeolites (hydrated silicates of aluminum and either sodium or calcium or both), sodium carbonate, sodium phosphate, sodium acid phosphate, tetrasodium pyrophosphate, sodium tripolyphosphate, trisodium phosphate, sodium metaphosphate, sodium hexametaphosphate, and sodium tetraphosphate. While the sodium salts of the inorganic compounds are preferred, the other alkali metal salts such as the potassium and lithium salts may be used. (column 4, lines 32-57)

Corkill criticizes the Corey disclosure as "filler", and charges that Corey copied this disclosure from the text of some other patent. Corkill also asserts that Corey does not show that zeolites inactivate water hardness at a rate sufficiently rapid to enable zeolites to be used as replacements for phosphates in detergent compositions. Corkill argues that Corey "merely acknowledges the known art that suggested natural zeolites such as clays ... or, possibly, amorphous (non-crystalline) zeolites as detergent builders or extenders", and that Corey contains no suggestion to use synthetic crystalline zeolites. Corkill also argues that Corey's reference to calcium zeolites, necessarily inoperative to absorb calcium, shows the inadequacy of Corey as a reliable reference.

The PTO discounts the "filler" argument, correctly in our view, for Corey's plain teaching of zeolites as sequestering agents in detergent compositions exists, whether or not Corey viewed it as "filler". The Solicitor states that the reference to calcium is an obvious mistake, an issue we need not reach, for the Solicitor correctly observes that Corey states that the sodium salts are preferred, and the sodium salts are the subject of Corkill's claims.

The PTO admits, as it must, that Corey does not state whether his hydrated zeolites are naturally occurring or synthetic, but the PTO takes issue with Corkill's argument that Corey necessarily excluded the synthetic zeolites, observing that synthetic zeolites were well known--viz. those disclosed in Milton ten years prior to Corey's filing date. Corkill, bearing the burden of coming forward, did not have persuasive support for his argument that Corey must be limited to the naturally occurring zeolites. We must agree with the PTO that Corey's plain teaching is not limited to natural zeolites.

The PTO completed the foundation of its prima facie case with the Milton reference, which shows hydrated and dehydrated zeolite A. The PTO points out that the claimed limitations to Corkill's zeolites relating to hydration, particle size, and sequestering action, are all properties of Milton's zeolites.

Corkill argues that Milton did not recognize that sufficiently rapid sequestration could be obtained. The Milton data show hydrated sodium zeolite A (a zeolite preferred by Corkill) exchanging calcium ions over a period of several days, but Milton also states:

The rate of exchange of sodium zeolite A can under some conditions be quite rapid. For instance, when sodium zeolite A was put into a solution 0.1 molar in calcium ions, 47% of the sodium ions were replaced in a two minute contact time at 25?C and in 7 1/2 minutes the exchange was 59% complete. Under these conditions of solution concentration about 60% was the maximum exchange available. (column 8, lines 8-15)

The Solicitor also points to the table at the bottom of column 2 of Milton, as showing replacement of 93% of sodium by calcium in hydrated sodium zeolite A. Although Corkill criticizes these data as derived from solutions more concentrated than are found in laundry use, this does not mean that the teaching can be ignored. Further, Corkill's "recitation, in a claim to a composition, of a particular property said to be possessed by the recited composition, be that property newly-discovered or not, does not necessarily change the scope of the subject matter otherwise defined by that claim". In re Wilder, 429 F.2d 447, 450, 57 CCPA 1314, 1317, 166 USPQ 545, 548 (1970).

With respect to the hydration of the zeolites, the Solicitor observed that Corey teaches the use of hydrated zeolites as sequestering agents in detergent compositions, that Milton shows hydrated zeolite A, and that appellant had not shown any criticality in the degree of hydration. Claim 79 spans a range of 15 to 264 molecules of water of hydration when z and y are at least 6, a range commensurate with Milton's disclosure. In response, appellant submitted evidence, by the Madison declaration, that a hydrated zeolite that has been dried and rehydrated is less effective as a detergent builder than one which has not gone through this process. Granting that this has been shown--the PTO has challenged the significance of the data--this is not Corkill's claimed invention. Corey teaches that hydrated zeolites are sequestering agents, and Madison does not negate this point.

Corkill argues that the prior art does not teach the importance of particle size in detergent applications, to which the PTO responds that Milton's zeolites are disclosed in precisely appellant's particle size range:

Most of the crystals have a size in the range 0.1 micron to 10 microns, but smaller and larger crystals can occur covering the size range of 0.01 micron to 100 microns. (column 4, lines 63-66)

and that Corkill has merely used Milton's zeolites in Corey's compositions for the purpose taught by Corey. The Board discounted Corkill's attempted showing that Milton's zeolites are not produced in the size ranges described in Milton; the Cilley declaration states that the particle sizes of Milton's zeolites are "greatly in excess" of Corkill's upper limit, which is the same upper limit described by Milton. If...