In Re Taylor , 445 F. App'x 343 ( 2011 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
(Serial No. 11/505,445)
IN RE LAWNIE H. TAYLOR
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2011-1275
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Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
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Decided: October 6, 2011
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LAWNIE H. TAYLOR, LHTaylor Associates, Inc., of
Germantown, Maryland, pro se.
RAYMOND T. CHEN, Solicitor, United States Patent
and Trademark Office, of Alexandria, Virginia, for appel-
lee. With him on the brief were BRIAN T. RACILLA, and
FRANCES M. LYNCH, Associate Solicitors.
__________________________
Before LINN, PROST, and REYNA, Circuit Judges.
2 IN RE TAYLOR
PER CURIAM.
Appellant Lawnie H. Taylor (“Taylor”) appeals a deci-
sion by the Board of Patent Appeals and Interferences
(“Board”) affirming the examiner’s rejection of multiple
claims in U.S. Patent Application No. 11/505,445 (“’445
Application”). Ex parte Taylor, No. 2011-000971 (B.P.A.I.
Jan. 13, 2011) (“Board Decision”). For the reasons dis-
cussed below, this court affirms the Board’s decision
holding that all claims of the ’445 Application are unpat-
entable.
I. BACKGROUND
On August, 17 2006, Taylor filed the ’445 Application
with the United States Patent and Trademark Office
(“PTO”) for an invention titled “Methods and Equipment
for Removing Stains from Fabrics.” Claims 172-185, 198-
207, 235-246, and 274-286 relate to a method for prepar-
ing a cleaning solution, wherein the cleaning solution
“consists of” a hypochlorite salt (commonly known as
bleach), alkali metal hydroxide, and one or more addi-
tives. The purpose of the alkali metal hydroxide is to
“retard[] the damaging effect of the [bleach] on soft fabric
(such as cotton fabric).” ’445 Application at 5. Claim 198
is the broadest representative claim:
198. A method for producing a product that re-
duces the damaging effect on a soft fabric article,
comprising:
providing a cleaning solution containing a hy-
pocholorite salt, an alkali metal hydroxide and an
additive,
wherein the weight concentration ratio of the
alkali metal hydroxide over the hypochlorite salt
in the cleaning solution is no less than 1:12.2,
IN RE TAYLOR 3
wherein the cleaning solution consists of the
hypochlorite salt, the alkali metal hydroxide and
the additive, and
wherein said additive consists of at least one
member of the group consisting of chelating
agents, phosphorus-containing salts, surfactants
and abrasive agents,
whereby said alkali metal hydroxide in said
cleaning solution reduces the damaging effect of
said hypochlorite salt on a soft fiber article.
’445 Application, Amendment of Sept. 24, 2009 at 7-8, J.A.
445-46 (emphasis added) (“9.24.09 Amendment”). Claims
308-322 recite a “kit” comprising the cleaning solution
described above and instructions for its use. Id. at 469-
74.
On December 15, 2009, after several rounds of prose-
cution and requests for continued examination, the exam-
iner, under 35 U.S.C. §§ 102 and 103, rejected all of the
claims not previously withdrawn. The examiner also
rejected certain claims under 35 U.S.C. § 112, para. 2,
stating that “[t]he claims are confusing because they
attempt to use the transitional language ‘consisting of,’
yet allow for additional components to be present in the
composition.” ’445 Application, Second Final Office Action
(Dec. 15, 2009), J.A. 510. The Board reversed the § 112
rejection, holding that “one of ordinary skill in th[e] art
would understand that the cleaning solution required by
the claimed invention consists of a hypochlorite salt, an
alkali metal hydroxide, and an additive that is at least
one member of the group consisting of chelating agents,
phosphorous-containing salts, surfactants and abrasive
agents.” Board Decision at 8. The Board affirmed the
rejections under §§ 102 and 103. Id. at 16. Taylor ap-
4 IN RE TAYLOR
peals, and this court has jurisdiction pursuant to 35
U.S.C. § 141 and 28 U.S.C. § 1295(a)(4)(A).
II. DISCUSSION
A. Standard of Review
Anticipation is a question of fact. In re Schreiber, 128
F.3d 1437, 1477 (Fed. Cir. 1997). This court affirms the
Board’s factual determinations if they are supported by
substantial evidence—“such relevant evidence as a rea-
sonable mind might accept as adequate to support a
conclusion.” In re Jolley, 308 F.3d 1317, 1329 (Fed. Cir.
2002) (citation omitted). This court reviews the Board’s
interpretation of disputed claim language to determine
whether it is “reasonable.” In re Morris, 127 F.3d 1048,
1054-55 (Fed. Cir. 1997).
B. “Consisting of” Argument
Taylor’s primary argument on appeal is that the use
of the transitional phrase “consisting of” renders the
claims patentable over the prior art references, which use
the transitional phrase “comprising” (to claim hypochlo-
rite salt and alkali metal hydroxide cleaning solutions,
methods for producing the same, and a related “kit”).
According to Taylor, the examiner erred in rejecting the
claims because the examiner incorrectly stated that
“consisting of means those things listed and absolutely no
others.” Appellant Br. 14 (citing ’445 Application, Advi-
sory Action (Apr. 15, 2010), J.A. 596) (emphasis added).
Taylor relies on Conoco, Inc. v. Energy & Environmental
International, L.C., 460 F.3d 1349 (Fed. Cir. 2006), No-
rian Corp. v. Stryker Corp., 363 F.3d 1321 (Fed. Cir.
2004), and In re Gray, 53 F.2d 520 (CCPA 1931) for the
proposition that the transitional phrase “consisting of” is
not absolutely restrictive, and thus his claims should
IN RE TAYLOR 5
“allow[] unspecified additives that are unrelated to the
invention in addition to the listed components.” Appel-
lant Br. 13. Taylor also challenges the validity of MPEP
§ 2111.03, which reads in relevant part: “The transitional
phrase ‘consisting of’ excludes any element, step or ingre-
dient not specified in the claim” (citing In re Gray, 53 F.2d
520 (CCPA 1931) and Ex Parte Davis, 80 U.S.P.Q. 448
(B.P.A.I. 1948)). Taylor contends that MPEP § 2111.03 is
invalid because it “absolutely restricts” “consisting of”
claims to the recited elements “although such interpreta-
tion ha[s] been invalidated by case law.” Appellant Br. 5.
Taylor does not address how his proposed definition of
“consisting of” would render his claims patentable over
the prior art. Taylor does argue, however, that his bleach
technology is novel because “the concentrations of the two
essential ingredients of bleach are related intentionally by
a ratio, a step unknown in the cited references.” Id. at 27.
The Solicitor counters that the Board properly con-
strued the claims to hold that “cleaning solutions com-
posed of NaOCl [(sodium hypochlorite or bleach]), NaOH
[(sodium hydroxide)], and one or more additional ingredi-
ents from the claimed group of additives (e.g., surfactants
or chelating agents) may anticipate the inventions recited
in claims 172 and 198.” Appellee Br. 19. The Solicitor
argues that MPEP § 2111.03 is entirely consistent with
case law because “it recites exceptions to the rule of
absolute exclusion.” Id. at 36; MPEP § 2111.03 (stating
that, in Davis, 80 U.S.P.Q. at 450, “‘consisting of’ [is]
defined as ‘closing the claim to the inclusion of materials
other than those recited except for impurities ordinarily
associated therewith’” (emphasis added) and recognizing
that, in Norian, 363 F.3d at 1331-32, this court “h[eld]
that a bone repair kit ‘consisting of’ claimed chemicals
was infringed by a bone repair kit including a spatula in
addition to the claimed chemicals because the presence of
the spatula was unrelated to the claimed invention” (em-
phasis added)). Under the Board’s claim construction, the
6 IN RE TAYLOR
Solicitor contends that the cited references teach each and
every element of Taylor’s proposed claims, including the
“weight concentration ratio of the alkali metal hydroxide
over the hypochlorite salt” being “no less than 1:12.5.”
Appellee Br. 21.
This court agrees with the Solicitor. Taylor’s argu-
ment that the examiner misinterpreted the transitional
phrase “consisting of” does not help him. Taylor misun-
derstands the nature of the examiner’s statement that
“consisting of means those things listed and absolutely no
others.” ’445 Application, Advisory Action (Apr. 15, 2010),
J.A. 596. This statement was made in the context of a
discussion relevant to the examiner’s § 112 rejection, not
the §§ 102 and 103 rejections, evidenced by his statement
immediately thereafter that “[y]ou cannot have a consist-
ing of claim that allows for multiple, even potentially
limitless additives . . . . To have a consisting of claim that
may have all kinds of additives is both confusing and
improper.” Id. As discussed in Part I, the Board reversed
the examiner’s § 112 rejection, holding that one of ordi-
nary skill in the art would understand the proper scope of
the claim to be a cleaning solution that “consists of a
hypochlorite salt, an alkali metal hydroxide, and an
additive that is at least one member of the group consist-
ing of chelating agents, phosphorous-containing salts,
surfactants and abrasive agents.” Board Decision at 8.
The Solicitor is correct that the Board properly con-
strued the “consisting of” claims to require one or more of
the stated additives. The pertinent claim limitations
recite a “cleaning solution [that] consists of the hypochlo-
rite salt, the alkali metal hydroxide and the additive,” and
further require that “said additive consists of at least one
member of the group consisting of chelating agents, phos-
phorus-containing salts, surfactants and abrasive agents.”
9.24.09 Amendment at 7-8 (emphases added). Although
Taylor is correct that the term “consisting of” is not a term
IN RE TAYLOR 7
of absolute exclusion, see Conoco, 460 F.3d at 1359 (“Al-
though ‘consisting of’ is a term of restriction, the restric-
tion is not absolute.”), neither the Board nor the MPEP
§ 2111.03 misconstrues this rule. As the Solicitor pointed
out, MPEP § 2111.03 recognizes the case law exceptions
to the rule of absolute exclusion, and the Board properly
held that they do not apply in this case. Unlike in Davis,
Norian, or Conoco, the claimed additive in Taylor’s appli-
cation is neither an “impurity,” Davis, 80 U.S.P.Q. at 450
and Conoco, 460 F.3d at 1360, nor an element that is
“unrelated to the claimed invention,” Norian, 363 F.3d at
1331-32 (holding that a spatula added to a kit was “not a
part of the [chemical] invention that [wa]s described”). In
contrast to those cases, here, Taylor deliberately included
the additive element during prosecution as a part of the
claimed solution, and he cannot now disclaim the additive
based on his use of the transitional phrase “consisting of”
versus “comprising.”
Based on this claim construction, substantial evidence
supports the Board’s decision that the cited references
disclose each and every element of the disputed claim
limitations: the cited references disclose bleach and
hydroxide solutions of the claimed ratio, wherein one or
more of the claimed additives are present. Accordingly,
this court affirms the Board’s decision.
B. Proposed Amendments
On appeal to this court, Taylor seeks entry of pro-
posed amendments of May 17, 2010 (filed after the exam-
iner’s first final rejection) to expand the claimed
“additives” to include additives “unrelated” to the inven-
tion. In an advisory action, the examiner declined to
enter these amendments because “they raise[d] new
issues.” ’445 Application, Advisory Action (June 23,
2010), J.A. 634. In that action, the examiner informed
Taylor that “the expansion of the Markush group for the
8 IN RE TAYLOR
additives [would] require further consideration and
search,” and then informed Taylor: “Applicant may appeal
this rejection to the [Board] [referring, however, to the
final rejection of the claims, not the non-entry of the
amendments].” Id. at 635. On appeal, the Board consid-
ered only the claims submitted on September 24, 2009.
Board Decision at 2 n.2. (explaining that non-entry of
amendments is petitionable only to the Director of the
PTO under 37 C.F.R. § 1.181 and not by way of appeal to
the Board). Taylor argues to this court that he “lost the
opportunity to timely pursue the correct procedure”
because “he misunderstood the language of the Exam-
iner’s Advisory Action.” Appellant Reply Br. 10. Not-
withstanding the asserted lack of clarity of the examiner’s
statement in the advisory action, this court does not have
jurisdiction to address proposed amendments not consid-
ered by the Board. Taylor must petition the non-entry of
amendments through the proper PTO procedures, i.e.,
petitioning to the Director under 37 C.F.R. § 1.181.
III. CONCLUSION
For the foregoing reasons, this court affirms the
Board’s decision.
AFFIRMED