BPAI not persuaded by evidence that authors of reference collaborated but did not find claimed composition obvous

Takeway: The Applicant appealed an obviousness rejection of claims to a chemical cleaning composition. The Examiner relied on a secondary reference to teach adding deionized water to a base composition. The Applicant attacked the rationale for combining by asserting that actual persons of ordinary skill in the art had worked on cleaning compositions but did not use deionized water. Specifically, the Applicant introduced evidence that the inventors of the two patent references had actually collaborated to invent cleaning compositions, but did not come up with a composition that used deionized water. The Board found this evidence unpersuasive because one of the many compositions disclosed in the primary reference did in fact disclose the use of deionized water. The Board did not otherwise comment on the collaboration argument. (Ex parte McClung, BPAI 2011.)

Details:

Ex parte McClung
Appeal 2010006202; Appl. No. 11/056,853; Tech. Center 1700
Decided  Dec. 8, 2011


The patent application was directed to a chemical composition said to be "effective in treating a wide variety of contaminants, such as organic compounds, from boiler systems, chiller systems, cooling tower systems." A representative claim on appeal read:

35. A process of treating contaminant in a system comprising:
(a) selecting a composition of hydrogen peroxide, glycolic acid, and low solids water,
wherein
(i) water is present in an amount of [sic] least about 50 weight percent based on the total weight of said hydrogen peroxide, glycolic acid, and water and
at most about 99 weight percent based on the total weight of said hydrogen peroxide, glycolic acid, and water to provide a composition,
(ii) the low solids water comprises less than about 10 ppm dissolved solids, and
(iii) the composition has a pH of at least about 1.9 and at most about 3.8; and
(b) contacting said contaminant with a concentration of said composition,
wherein said concentration treats at least some of said contaminant in said system, wherein said systems is selected from the group, consisting of boiler systems, chiller systems, cooling tower systems, and combinations thereof.

The Examiner rejected process claim 35 as obvious over the combination of three references: Lokkesmoe, Oakes, and Hei. At issue on appeal was the rationale for combining Lokkesmoe and Oakes to produce the claimed composition.
 
The Examiner relied on Lokkesmoe for teaching the composition as claimed, except for the low solids water in limitation [i]. Lokkesmoe taught that the cleaning composition could include additional ingredients such as alcohols, and any number of adjuvants could be added. The Examiner found that Oakes taught limitation [i] by disclosing the use of "deionized water (i.e., low solids content water)" to dilute concentrated compositions used "as soil removing agents in the food processing industry."
With respect to the rationale for combining Lokkesmoe and Oakes, the Examiner asserted:

It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to use deionized water in the composition taught by Lokkesmoe et al, with a reasonable expectation of success, because Oakes et al. teach the use of deionized water in a similar cleaning composition and further, Lokkesmoe et al. teach the use of water as a diluent in general. Additionally, ... deionized water would be desirable for use by one of ordinary skill in the art in the cleaning compositions taught by Lokkesmoe et al. to reduce contamination of the required components and the substrate on which  the composition will be used.

On appeal, the Applicant argued several points including the rationale for combining Lokkesmoe and Oakes.
The Applicant argued that "the circumstances underlying these references themselves demonstrate it was not obvious to utilize de-ionized water" in the Lokkesmoe process ... [T]his is the rare situation where the actual evidence reveals the invention was not obvious even to the inventors of the prior art references."
 
According to the Applicant, inventors Lokkesmoe and Oakes had collaborated with one another on related technologies and it never occurred  to them to use deionized  water in aqueous solutions comprising hydrogen  peroxide and carboxylic  acids. The Applicant concluded that the failure of Lokkesmoe and Oakes to make the combination weighed against any motivation to combine the references.

As evidence of the collaboration, the Applicant noted that the Lokkesmoe and Oakes references were commonly owned and shared two common inventors (Lokkesmoe and Oakes) . Also, Lokkesmoe was filed six months after Oakes issued. Furthermore, Lokkesmoe and Oakes were the only inventors on another patent for a cleaning composition, one which also didn't use de-ionized water.

The Applicant summarized the collaboration argument as follows:

Despite Messrs. Lokkesmoe and Oakes having collaborated with one another on these technologies, Lokkesmoe, Oakes, and Lokkesmoe/Oakes demonstrate that it did not occur even to them to use de-ionized water in aqueous solutions comprising hydrogen peroxide and carboxylic acids. Messrs. Lokkesmoe and Oakes were, by definition, persons of extraordinary skill in the art of Lokkesmoe and Oakes. And, if the combination was not obvious to such persons of extraordinary skill in the art, it necessarily follows that that the combination was not obvious to a person of ordinary skill in the art. See Okijima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Thus, this is the rare situation where the actual evidence reveals the invention was not obvious even to the inventors of the prior art references.

The Board was not persuaded by the collaboration argument because it was undermined by an express disclosure in Lokkesmoe. While the Applicant maintained that the collaborating co-inventors did not contemplate using deionized water, Table 18 of Lokkesmoe disclosed the use of deionized water in an exemplary composition that also included the hydrogen  peroxide and glycolic acid ingredients of the rejected  claims. Furthermore, the Applicant was aware of this disclosure in Lokkesmoe, since the Appeal Brief had cited this very same Table 18 composition in arguing a different point, to establish that "the one example disclosed in Lokkesmoe utilizing glycolic acid, used significantly less than 50 weight percent of water."

My two cents: I don't practice in the chemical arts so I have no opinion on the technical merits of this decision. I'll have to assume the Board's interpretation of the prior art is accurate.

What drew my attention to the case was the Applicant's use of background information about the references (co-owned, same inventors, same time frame) to show collaboration, and the argument that despite such collaboration, these actual persons of skill in the art did not come up with the claimed composition. I thought this was a really creative argument.

Here, the Board wasn't persuaded by the collaboration argument, because they found other information in the references themselves that showed the collaborators had in fact used deionized water in their compositions. 
But without these additional facts, would the collaboration argument have been persuasive? Does evidence of what real POSITAs actually did in the real world matter to an obviousness analysis?

Maybe not. In another blog post about a reexam case (BPAI gives expert testimony little weight ...), I expressed my disappointment in seeing that when a patentee offered evidence from real people involved in product development, the Board didn't seem to be interested in this. Instead, in that case, as in this one, the Board focused way more on the teachings of the references than on evidence about actual persons of skill in the art.