Ex Parte 7,854,980 B2 et al

Patent Trials and Appeals Board

Jul 30, 2015

95000674 - (D) (P.T.A.B. Jul. 30, 2015)

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.
95/000,674 06/30/2012 7,854,980 B2 65461/836828 1888
23643 7590 07/30/2015
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
TORRES VELAZQUEZ, NORCA LIZ
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
07/30/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ROCKWOOL INTERNATIONAL A/S
Appellant and Requester
v.

Patent of
KNAUF INSULATION LLC and
KNAUF INSULATION SPRL
Jointly, Patent Owner and Respondent
____________

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Patent 7,854,980 B2
Technology Center 3900
____________

Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
RAE LYNN GUEST, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal by the Requester from the Patent Examiner’s
favorable decision on the patentability of claims 1–20 in the above-identified inter
partes reexamination of United States Patent 7,854,980 B2. This is also a decision
on the cross-appeal by the Patent Owner from the Patent Examiner’s decision to
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reject claims 21–26. The Board’s jurisdiction for this appeal is under 35 U.S.C.
§§ 6(b), 134, and 315 (pre-AIA). We affirm.

BACKGROUND
The patent in dispute in this appeal is United States Patent 7,854,980 B2
(“the ’980 patent”) which issued December 21, 2010. Since filing the Patent
Owner Appeal Brief (April 8, 2014; “PO Appeal Br.”), an assignment was filed
assigning the ’980 patent to Knauf Insulation LLC and Knauf Insulation SPRL
(recorded assignment at Reel 034783/Frame 0898; recorded January 21, 2015),
collectively “Knauf Insulation.” Knauf Insulation (“Patent Owner”) is the
Respondent and Cross-Appellant in this proceeding.
A request for inter partes reexamination of the ’980 patent was filed June
30, 2012, by Rockwool International A/S (“Requester”) under 35 U.S.C. §§ 311–
318 and 37 C.F.R. §§ 1.902–1.997 (pre-AIA). Requester is also the Appellant and
Cross-Respondent in this proceeding.
In the Right of Notice of Appeal (“RAN”), the Examiner indicated that
claims 1–20 are patentable and claims 21–29 are rejected. In the Examiner’s
Answer entered August 15, 2014 (“Ans.”), the Examiner indicated that an
Amendment filed March 6, 2014, which included a cancellation of claims 27–29,
has been entered. Therefore, the Examiner’s decision to reject claims 21–26 is
appealed by the Patent Owner and the subject of the Cross-Appeal.
Requester appeals (“the Appeal”) the Examiner’s determination favorable to
the patentability of claims 1–20. Third Party Requester Appeal Brief (“TPR
Appeal Br.”). Specifically, Requester appeals the Examiner’s non-adoption of
Grounds A–Z and AA–MM. TPR Appeal Br. 6–9. Each of these grounds of
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rejection involves the Wallace1 and Agyei-Aye2 publications. The publications
were brought to the Examiner’s attention in Comments by the Requester on
December 19, 2012. The Examiner did not consider Requester’s discussion of
these references as proposed grounds of rejection because “TPR merely [in the
Comments] discusses how the newly added limitations are disclosed in the newly
cited prior art, but does not specifically assert any new ground of rejection, nor
point to the pertinency of [sic, or] manner of how the combination of the newly
cited prior art applies to each claim it is asserted against.” RAN 5–6.
In the Comments, Requester expressly identified independent claims 1, 11,
and 20 as having been amended with specific ratios and stated “several of the prior
art references on which the [Examiner’s Office] Action is based—at least Keritsis,3
Husemoen,4 Nigam,5 Helbing ’302,6 and Worthington7—disclose a range of molar
ratios that overlap[s] with the claimed range.” Comments 3. Thus, it is clear from
this comment that Requester considered the prior art rejections already of record to
be inclusive of a conclusion that the newly recited ratios would have been obvious

1 United States Patent No. 2,215,825, issued on Sept. 24, 1940, to Benjamin F.
Wallace and Burgess P. Wallace.
2 Kwasi Agyei-Aye et al., “The role of the anion in the reaction of reducing sugars
with ammonium salts,” 337 CARBOHYDRATE RESEARCH 2273-2277 (2002).
3 United States Patent No. 4,506,684, issued on March 26, 1985, to Gus D.
Keritsis.
4 United States Patent No. 6,878,800 B2, issued on Apr. 12, 2005, to Thor
Husemoen et al.
5 United States Patent No. 6,171,444 B1, issued on Jan. 9, 2001, to Asutosh
Nigam.
6 World Intellectual Property Organization Publication No. 2006/044302 A1,
published on April 27, 2006, to Clarence H. Helbing.
7 United States Patent No. 3,513,001, issued on May 19, 1970, to John Edward
Worthington and James Seward Woodhead.
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to one of ordinary skill in the art. Requester cited Wallace and Agyei-Aye “as
additional prior art showing the claimed ratio of the number of moles of the
tricarboxylic acid to the number of moles of the monosaccharide is about 1:4,
about 1:5, or about 1:6.” Id. at 4. Requester asserted that the claimed ratios would
have been obvious in view of Wallace and Agyei-Aye. Id. at 4–6. It is evident
from these statements, and the further discussion in Requester’s Comments, that
Requester was proposing a rejection based on the already cited publications
combined with newly cited Wallace and Agyei-Aye. As both parties have briefed
the merits of applying the prior art identified in Requester’s Comments, we shall
address Requester’s Appeal below.
An oral hearing was held June 17, 2015. A transcript of the hearing will be
entered into the record in due course.
There are several related district court litigations and PTO proceedings listed
in Patent Owner’s Appeal Brief at pages 2–3. The district court litigations were
said to be dismissed. Id. However, there are ex parte and inter partes
reexamination proceedings said to be still pending. Id. Two related inter partes
reexaminations appealed to the Patent Trial and Appeal Board have been decided:
Appeal 2015-001256 (Application 95/000,675) involving US 7,772,347 B2 and
Appeal 2015-001313 (Application 95/000,672) involving US 7,888,445 B2.
The claimed subject matter of the ’980 patent is directed to a mineral fiber
insulating material which comprises a binder product made from curing and drying
an aqueous solution of a carbohydrate, an amine, and a polycarboxylic acid. The
patent says that the binder may comprise a product from a Maillard reaction and
melanoidins. ’980 patent, col 2. 2, ll. 54–56; col. 3, ll. 5–6. As explained by
Requester:
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[A]pplying heat to a binder mixture that includes
polycarboxylic acids, ammonia (or salts thereof), and a reducing sugar
carbohydrate [“carbohydrate”] initiates a Maillard reaction between
the reactants and cures the binder (while disposed on the fibers),
thereby forming a collection of fibers bound by a cured,
formaldehyde-free binder containing melanoidin products cross-
linked with the polycarboxylic acids.
TPR Appeal Br. 15 (citing Husemoen, 2:25–32, 3:45–47; 4:20–31; 9:35–49;
11:11–13.).
There are two groups of claims at issue. The first group includes claims 1–
20, which recite the limitation that the ratio of the number of moles of the
polycarboxylic acid to the number of moles of the carbohydrate is about 1:5, about
1:6, and about 1:7. The second group of claims, claims 21–26, are not limited by
this ratio.
Claims 1 and 26 are representative and read as follows:
1. A mineral fiber insulating material comprising mineral fibers
and less than about 15% by weight of an organic binder, wherein
a) the organic binder is a formaldehyde free thermoset product
of drying and curing an aqueous solution having a pH of greater than
5 when applied to the mineral fibers and consisting essentially of a
monomeric tricarboxylic acid, a reducing sugar monosaccharide, and
ammonia, wherein the ratio of the number of moles of the
tricarboxylic acid to the number of moles of the monosaccharide is
about 1:4, about 1:5, or about 1:6,
b) the mineral fiber insulating material has a recovered
thickness of at least about 95% as determined according to Annex A
of British standard BS EN 823: 1995,
c) the mineral fiber insulating material has an ordinary parting
strength of at least about 95 g/g,
d) the mineral fiber insulating material has a weathered parting
strength of at least about 75 g/g, and
e) the mineral fiber insulating material is packaged, and
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f) the thermoset product includes melanoidins cross-linked with
the monomeric tricarboxylic acid.

26. A mineral fiber insulating material, comprising: mineral
fibers and less than about 15% by weight of an organic thermoset
binder disposed upon the mineral fibers, wherein:
(a) the organic thermoset binder is a formaldehyde free product
of curing an aqueous solution, consisting essentially of dextrose and
an ammonium salt of citric acid wherein (i) the solution has a pH of
greater than 5 when applied to the fibers and (ii) the binder includes
melanoidins produced by a Maillard reaction which occurs during
curing,
(b) the mineral fiber insulating material has a recovered
thickness of at least about 95% as determined according to Annex A
of British standard BS EN 823 1995,
(c) the mineral fiber insulation material has an ordinary parting
strength of at least about 95 g/g,
(d) the mineral fiber insulating material has a weathered parting
strength of at least about 75g/g, and
(e) the mineral fiber insulating material is packaged.

APPEAL
Independent claims 1, 11, and 20 each recite “the ratio of the number of
moles of the tricarboxylic acid to the number of moles of the monosaccharide is
about 1:4, about 1:5, or about 1:6.” In the Comments filed on December 12, 2012,
Requester stated that the calculated molar ratio in Wallace is “about 1:1.6 to
1:2.26” and the calculated molar ratio in Agyei-Aye is 1:1. Comments 5.
Requester argued that the claimed ratios would have been obvious in view of
Wallace and Agyei-Aye, but did not provide an adequate persuasive explanation as
to why the skilled worker would have varied the non-overlapping ratios in Wallace
and Agyei-Aye to have arrived at the claimed ratios of “about 1:4, about 1:5, or
about 1:6.” Id. at 5-6.
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In Requester’s Appeal Brief, Requester also argues that Wallace and Agyei-
Aye are unnecessary because the claimed molar ratios are inherently found in
Husemoen “based on the substantially identical physical properties of the resulting
products.” TPR Appeal Br. 11. Summarizing the identity in reactants and process
steps, Requester argues the evidence “clearly demonstrate[s] that ‘the claimed and
prior art products are identical or substantially identical in structure or
composition, or are produced by identical or substantially identical processes,’ [In
re Best, 562 F.2d 1252, 1255 (CCPA 1977)] so as to establish a prima facie case of
obviousness.” Id. at 16.
The weight of the evidence of record does not support Requester’s
contention that the claimed ratio would have been obvious to one of ordinary skill
in the art.
First, as discussed above, Requester did not adequately explain what reason
the skilled worker would have had to deviate from the ratios in Wallace and Agyei-
Aye. Neither reference expressly teaches a ratio; rather, the ratios are calculated
from working examples. Requester argues that the claimed ratios overlap or lie
inside the prior art values, which would make them prima facie obvious under
pertinent case law, but the single calculated ratios of Wallace and Agyei-Aye do
not actually overlap or describe a range that subsumes the claimed ratio.
Comments 6.
Requester also creates a range based on individual ratios calculated in
Wallace and Agyei-Aye. Id. However, the upper end of this “range” is based on
values from Wallace that Requester admitted to be incorrect. Id. at 5. Moreover,
even if this value is correctly calculated, Requester did not provide a persuasive
explanation as to why the skilled worker would have combined Wallace, which
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involves core binders for metal casting, with Agyei-Aye, which describes Maillard
reaction products as colorants and flavors in foods and tobacco (at 2273), to create
a meaningful range.
Second, while the evidence is sufficient to establish that Husemoen’s
process produces melanoidins, Requester did not establish that the reactants in
Husemoen’s would necessarily be present in the claimed “ratio of the number of
moles of the tricarboxylic acid to the number of moles of the monosaccharide is
about 1:4, about 1:5, or about 1:6.” For example, the ’980 patent does not describe
the claimed ratios as the only possible ratios that would produce melanoidin.
Furthermore, Husemoen does not even disclose an explicit amount of the
monosaccharide. Requester did not explain how, in the absence of a stated amount
of monosaccharide, Husemoen’s product would inherently and necessarily possess
the claimed ratio.
Helbing ’302 was also cited for making the claimed ratios obvious.
Comments 15. However, Requester did not identify the ratio of reactants in
Helbing ’302 nor provide an explanation as to how Helbing ’302’s teaching would
have given an ordinary skilled worker a reason to have utilized the claimed ratio of
“about 1:4, about 1:5, or about 1:6.”
In sum, there is insufficient persuasive evidence of record to support
Requester’s contention that claims 1–20 would have been obvious to one of
ordinary skill in the art.

CROSS-APPEAL
Patent Owner lists 14 grounds of rejection for claims 21–26. PO Appeal Br.
7–8. Rejections A–G and K involve Helbing ’302 for its teaching of Maillard
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reactants. Rejections H–J and L–N involve Husemoen for the same teaching.
Hansen8 is also cited in several of the rejections for substantially the same
teachings as Husemoen, and thus it has not been considered separately.

REJECTIONS BASED ON HUSEMOEN
The Examiner found that Husemoen describes applying binders to mineral
fibers comprising curing an aqueous solution of the binder having a pH of greater
than 5. RAN 36. The Examiner found that the binder described in Husemoen is
formed with reactants which are the same as those claimed, including an amine,
citric acid (tricarboxylic acid), and glucose syrup (carbohydrate). Id. Based on the
teachings in Husemoen of the same reactants as recited in the claims, the Examiner
found a reaction product would be formed that includes melanoidin products cross-
linked with the polycarboxylic acid (citric acid) as required by the claims. Id.
With respect to the specific features of the mineral fiber insulating material, the
Examiner further cited various additional publications, including Knauf,9 Keller,10
Garcia,11 Espiard,12 and Horres.13

8 United States Patent No. 6,730,730 B1, issued on May 4, 2004, to Erling Hansen
et al.
9 Knauf Insulation GmbH, AMBER BLANKET INSULATION (2006).
10 United States Patent Application Publication No. 2007/0184740 Al, published
Aug. 9, 2007, to Horst Keller et al.
11 United States Patent Application Publication No. 2006/0099870 Al, published
May 11, 2006, to Ruben Gregory Garcia et al.
12 United States Patent Application Publication No. 2006/0005580 Al, published
Jan. 12, 2006, to Phillppe Espiard and Bruno Mahieuxe.
13 United States Patent No. 7,514,027 B2, issued on Apr. 7, 2009, to Johannes
Horres and Joachim Mellem.
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Patent Owner contends that the “primary” teachings of Husemoen are not
related to Maillard chemistry “but, rather, are directed to a process whereby an
amine and an anhydride are mixed and heated together in the absence of water and
then a second anhydride is added to form a polyamide binder. See, e.g.,
Husemoen, col. 1, ll. 36–52.” PO Appeal Br. 15. Patent Owner argues that the
Examiner did not provide “any support” for the assertion that melanoidin would be
formed in Husemoen’s reaction. Id.
In response to Requester’s arguments that melanoidins would necessarily
form during Husemoen’s reaction because of the presence of the same reactants
recited in the claims, Patent Owner argues that there is no teaching that the amines
in Husemoen would react with sugar (dextrose) as in a Maillard reaction, but only
a teaching of alkanolamines reacting with one or more anhydrides. PO Rebuttal
Br. 5. Patent Owner further argues:
Requester’s criticism fails to recognize that it is the Office’s (and,
hence, the Requester’s) responsibility to come forward with evidence
proving an allegedly inherent disclosure. See In [sic, Ex parte] re
Levy, 17 U.S.P.Q.2d [1461,] 1464 [(BPAI 1990)]. The burden is on
Requester to prove – not on Patent Owner to disprove – that
Husemoen inherently teaches an organic thermoset binder that
includes melanoidins produced by a Maillard reaction.
PO Rebuttal Br. 6.

Legal principles
It is undisputed that Husemoen does not disclose the production of
melanoidins. Rather, the rejection is based on “inherency,” a theory invoked when
a publication does not expressly describe a limitation in a claim, but the claim
limitation would necessarily result by following the guidance in the publication.
“[T]he concept of inherency must be limited when applied to obviousness, and is
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present only when the limitation at issue is the ‘natural result’ of the combination
of prior art elements.” PAR Pharmaceutical v. TWI Pharmaceuticals, Inc., 773
F.3d 1186, 1195 (Fed. Cir. 2014) (citing In re Oelrich, 666 F.2d 578, 581 (CCPA
1981)). The “limitation at issue necessarily must be present, or the natural result of
the combination of elements explicitly disclosed by the prior art.” Id. at 1196.
As to the weight of evidence necessary for the Office to establish inherency,
Patent Owner incorrectly cited Ex parte Levy for requiring the PTO “to come
forward with evidence proving an allegedly inherent disclosure.” PO Rebuttal Br.
6 (emphasis added). Rather, the Board in Levy held that “[i]n relying upon the
theory of inherency, the examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.” Levy,
17 USPQ.2d at 1464 (emphasis added). The Board’s holding in Levy is fully
consistent with court of appeals case law. For instance, in In re Swinehart, 439
F.2d 210, 212–13 (CCPA 1971)(emphasis added), the court stated when
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the claimed
subject matter may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the
characteristic relied on.
The court in In re Best, 562 F.2d 1252, 1255 (CCPA 1977), held:
Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially
identical processes, the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the
characteristics of his claimed product. . . . Whether the rejection is
based on “inherency” under 35 U.S.C. § 102, on “prima facie
obviousness” under 35 U.S.C. § 103, jointly or alternatively, the
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burden of proof is the same, and its fairness is evidenced by the PTO’s
inability to manufacture products or to obtain and compare prior art
products.
In sum, the Examiner has the initial burden of providing factual, technical
reasoning, or a reason to believe that Husemoen’s process necessarily results in the
production of melanoidins. Once this burden is met, the burden shifts to Patent
Owner to prove that Husemoen’s process does not possess the claimed
characteristic. The initial issue is therefore the sufficiency of the Examiner’s
evidence in adopting the Requester’s proposed rejections. We address this below.

Findings of Fact
The numbered paragraphs (“Hu” for Husemoen) summarize the relevant
findings.
Hu1. Husemoen teaches “a process for providing a binder for mineral
fibers, i.e. man made vitreous fibers, for example glass, slag or stone wool, a
binder obtainable via such a process, and a mineral wool product comprising such
a binder.” Husemoen, col. 1, ll. 7–11. The claims are directed to the same general
material, i.e., “mineral fibers and less than about 15% by weight of an organic
thermoset binder disposed upon the mineral fibers.” Claims 21–26.
Hu2. The binder claimed in the ’980 patent (claim 21) consists essentially
of a carbohydrate (reducing sugar in claims 24 and 25; dextrose in claim 26),
amine (ammonia in claims 22 and 26), and a polycarboxylic acid (ammonium salt
of citric acid in claim 26). The following findings of fact establish that all three
components are described in Husemoen:
Hu3. Husemoen’s process has two parts: the first part is described in Hu4
below and the second part is described starting in Hu5.
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Hu4. Husemoen teaches a first step in its process comprising “mixing
together under reaction conditions, an amine and an anhydride, whereby water is
added thereto only after the anhydride has substantially dissolved in and/or reacted
with the amine, and the reaction is thus terminated.” Husemoen, col. 1, ll. 40–43.
The amine can be diethanolamine (DEA). Id. at col. 3, ll. 20–21.
Hu5. A subsequent second step carried out in Husemoen is described as
follows:
A second anhydride is preferably added to the reaction mixture
whereby the water is preferably added to the reaction mixture
immediately before or together with the second anhydride, or when
substantially all of the second anhydride is dissolved in and/or reacted
with the mixture of the first anhydride and the amine.
Husemoen, col. 1, ll. 44–49.

Polycarboxylic acid
Hu6. When water is added to the first and/or second anhydrides, Husemoen
teaches that polycarboxylic acid is formed (see Hu7, Hu8 infra; Requester Resp’t
Br. 8–9).
Hu7. “The first and second anhydrides are chosen to provide reaction
products with a large number of unreacted polycarboxylic acid groups, which is
preferable for water solubility.” Husemoen, col. 4, ll. 32–35.
Hu8. “A resin according to the present invention but made with water
addition from the start has more than 50% unreacted monomers of diethanolamine
and polycarboxylic acids (anhydrides reacted with water).” Husemoen, col. 2, ll.
64–67.

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Carbohydrate
Hu9. Husemoen teaches that the reaction mixture can comprise additives.
Husemoen, col. 3, l. 27–30. Among the list of additives are mono-, di- and
polysaccharides, such as sucrose and glucose syrup, which are carbohydrates
within the scope of the claimed subject matter. Id. at col. 3, ll. 40–42; claim 16;
Requester Resp’t Br. 8 (“Step C”), 10.

Amine
Hu10. Husemoen discloses that a base, such as ammonia, is added to the
pre-reacted resin mixture. Husemoen, 3:60–67; 4:20–28; 10:42–44; claims 23–24;
Requester Resp’t Br. 9.
Hu11. Husemoen specifically teaches:
In order to improve the water solubility of the binder a base
might be added up to a pH of about 8, whereby a pH of between about
6–8 is preferred, more preferred being a pH of about 7. The base can
be mixed with a polyacrylic acid and added to the resin after the resin
reaction is stopped by water addition. The base thus need first be
added after the resin is prepared. The base may be mixed with a
carboxylic acid group containing polymer before addition. Suitable
bases could be NH3, DEA, TEA, or alkali hydroxides.
Husemoen, 4:20–28.
In the examples, ammonium hydroxide is listed. Id. at col. 10, ll. 43–44.

Ammonium salt of citric acid
Hu12. Requester provided technical reasoning as to why an ammonium salt
of citric acid would form. Resp’t Br. 8, 9–10. Patent Owner did not challenge this
reasoning in their Appeal or Rebuttal Briefs.

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Maillard Reaction
Hu13. On page 8 of their Respondent Brief, Requester provides technical
reasoning as to why a Maillard reaction takes place. First, Requester cites
evidence, as discussed above (Hu–Hu8), that polycarboxylic acid is formed.
Requester Resp’t Br. 8 (Steps A and B).
Hu14. Second, Requester provides evidence that polycarboxylic acid is
mixed with ammonia and a carbohydrate (Requester Resp’t Br. 8 (Step C)), the
same steps described in the ’980 patent (at col. 4, ll. 27-36).

Binder is “product of curing” (claims 21–26)
Hu15. The uncured binder mixture may be mixed with fibers, followed by
curing (i.e., heating) while the binder mixture is disposed on the fibers (Husemoen,
9:49; 11:11–13), just as required by claims 21–26.

Discussion
The evidence is sufficient to establish that melanoidins are formed. As
summarized above, Husemoen describes mixing all three of the claimed reactants
together and then curing the mixture on fibers (Hu6–Hu15), the same steps
described in the ’980 patent. Based on the identity between the reactants and
process steps, it is reasonable to conclude that at least some melanoidin would be
formed. Patent Owner has not pointed to any specific conditions or amounts of
reactants disclosed in the ’980 patent which would enable melanoidin formation
and which would distinguish the reaction that would proceed in Husemoen. Patent
Owner argues that Husemoen describes an esterification reaction (PO Rebuttal Br.
5), but neither Examiner nor Requester disputes this fact. Patent Owner has not
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shown that the esterification reaction would interfere with or hinder a Maillard
reaction, or affect the resulting melanoidin.
The claims require the binder to be “consisting essentially of a carbohydrate,
an amine, and a polycarboxylic acid.” The Examiner found that “consisting
essentially of” would exclude components that affect the basic and novel properties
of the invention. RAN 88–90. However, the Examiner found there was no clear
indication of what constitutes the basic and novel characteristics of the invention,
and, therefore, interpreted “consisting essentially of” to have the same meaning as
“comprising.” Id. at 89–90. Patent Owner did not respond in the Appeal or
Rebuttal Brief to the Examiner’s claim interpretation of the phrase. Under this
interpretation, the claimed melanoidin product, as discussed above, is
indistinguishable from the melanoidin formed in Husemoen.
Claims 21–26 have additional limitations that were not argued by Patent
Owner in this appeal, which were found by the Examiner to have been met by the
additionally cited publications. See RAN 8, 19, 28, 44, 64, etc. We have reviewed
the Examiner’s findings and conclude they are reasonable and fact-based.
For the foregoing reasons, we affirm the rejections of claims 21–26 as
obvious in view of Husemoen and the additionally cited publications. PO Appeal
Br. 7–8.

REJECTIONS BASED ON HELBING ’302
The Examiner found that Helbing ’302 describes formaldehyde-free,
thermally-curable, alkaline, aqueous binder compositions. RAN 9. The Examiner
found that Helbing teaches “use of a polyacid component such as citric acid in the
binder composition and also teaches the inclusion of an amine such as aqueous
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ammonia.” Id. Citric acid is tricarboxylic acid and, therefore, meets the
corresponding limitation of the claims. The Examiner cited Example 4 of the
publication as teaching the addition of corn syrup to the mixture, which the
Examiner found would have been understood to be another term for glucose syrup,
which is a carbohydrate. Id. The Examiner found that the inclusion of corn syrup
into the reaction mixture would indicate that melanoidin was present in Helbing
’302’s product since all the reactants recited in the claims (carbohydrate, amine,
and polycarboxylic acid) are present. Id. at 9, 11 (“HELBING provides for all the
reactants that form melanoidins.”). In addition to the Maillard reactants, the claims
further recite properties and characteristics of the mineral fiber insulating material.
The Examiner cited Knauf, Keller, Garcia, Espiard, Horres, and Beaufils14 for
teaching materials with such characteristics.
Patent Owner contends that none of the cited publications describes the
claimed “organic thermoset binder” that “includes melanoidins produced by a
Maillard reaction.” PO Appeal Br. 10. Patent Owner argues that the primary
teaching in Helbing ’302 is of polyester resins produced by an esterification
reaction pathway which is different from the reaction pathway used to make
melanoidins. Id.
As with the inherency rejections involving Husemoen, Patent Owner argues:
The possibility that a Malliard [sic] reaction might also occur, under
certain conditions, does not mean that a Malliard [sic] reaction will
necessarily occur under each of the possible conditions disclosed in
Helbing. Yet, Requester has presented no evidence (including
citation to any passages of Helbing) to support its conclusory
statements that esterification and Maillard reactions necessarily occur
in competition with one another in Helbing.

14 United States Patent No. 7,458,235 B2, issued on Dec. 2, 2008, to Sebastien
Beaufils et al.
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PO Rebuttal Br. 3.
Patent Owner contends that the Requester “fails to recognize that it is the
Office’s (and, hence, the Requester's) responsibility to come forward with evidence
proving an allegedly inherent disclosure.” Id. at 4.

Findings of Fact
The numbered paragraphs (“He” for Helbing ’302) summarize the relevant
findings.
He1. Helbing ’302 describes “formaldehyde-free, thermally-curable,
alkaline, aqueous binder compositions.” Abstract. Helbing ’302 teaches that the
binder compositions “may be cured to substantially water-insoluble thermoset
polyester resins, including formaldehyde-free, substantially water-insoluble
thermoset polyester resins.” Id.
He2. The binder composition is described by Helbing as for use in
manufacturing fiber products, such as fiber products composed of fiberglass and
other fibers. Helbing ’302, 3:15–18.
He3. In one embodiment, the composition, having a pH of greater than
about 7, includes: 1) one or more polyacid components having acid groups, or
anhydride or salt derivatives thereof, and 2) a plurality of polyhydroxy components
having hydroxyl groups. Helbing ’302, 3:22–27.

Polycarboxylic acid
He4. Helbing ’302 teaches that the polyacid can be a dicarboxylic acid,
tricarboxylic acid, or a polycarboxylic acid, which meets the corresponding
polycarboxylic acid limitation of the claims. Helbing ’302, 4:11–23.
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Amine
He5. Helbing ’302 teaches that in one embodiment “the polyacid
component is maleic acid neutralized with, for example, an amine such as aqueous
ammonia. In another illustrative embodiment, the polyacid component is the
ammonium salt of maleate.” Helbing ’302, 4:31 to 5:2. See also id. at 8:11–26.
He6. The polyhydroxy component in Helbing ’302 can be a mixture of
partially hydrolyzed polyvinyl acetate, such as, for example, an ELVANOL, and a
fully hydrolyzed polyvinyl acetate, such as, for example, a MOWIOL. Helbing
’302, 5:3–7.

Carbohydrate, amine, and polycarboxylic acid present in reaction
He7. The “one or more polyacid component has been found to be capable of
reacting with a plurality of polyhydroxy components, under alkaline, aqueous
conditions in the absence of a catalyst, to form a thermoset polyester resin.”
Helbing ’302, 6:23–25.
He8. Example 4 of Helbing ’302 (at 13:10–21) describes a composition of
pH of 10.49 with the following components:
He9: approximately 25.2% MOWIOL 4-98, 1.5% ELVANOL 51-05,
He10. 45.2% maleic acid, 5.6% maleinized soybean oil (a
dicarboxylic acid),
He11. 5.9% corn syrup (glucose, a carbohydrate),
He12. 14.7% ammonium sulfate (amine), and
He13. 2.0% SILQUEST A-1101 silane.

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Binder is “product of curing” (claims 21–26)
He14. Helbing ’302 teaches that this method includes “contacting fibers
with a thermally-curable, aqueous binder composition including one or more
polyacid component and a plurality of polyhydroxy components, . . . and heating
the . . . composition at an elevated temperature that is sufficient to cure the binder
composition to form a polyester.” Helbing ’302, 5:27–33.

Discussion
As discussed above, the PTO does not have to prove that a recited
characteristic of the claimed invention would inherently and necessarily be
possessed by the prior art. Rather, the PTO must provide factual evidence,
technical reasoning, or a reason to believe that the prior art necessarily possesses
such characteristic, which in this case is the production of melanoidins. Once this
burden is met, the burden shifts to Patent Owner to prove that the prior art does not
possess the claimed characteristic. The initial issue is, therefore, the sufficiency of
the Examiner’s evidence in adopting the Requester’s proposed rejections.
A preponderance of the evidence establishes that all three reactants present
in a Maillard reaction – a carbohydrate (He11), an amine which is ammonia (He5,
He12), and a polycarboxylic acid (He4, He5, He10) are described by Helbing as
present in a reaction mixture. The reactants are mixed and then cured (He14) as
required by claims 21–26. Because of the identity of reactants and process steps,
there is factual basis and reason to believe that Helbing 302’s binder product would
contain melanoidins as required by the claims.
In rebuttal, Patent Owner argues that there are a number of elements in
Helbing ’302’s disclosure that “point away from a Malliard reaction occurring in
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competition with the esterification reaction taught in Helbing.” PO Rebuttal Br. 4.
Specifically, Patent Owner reasons:
The basis of Maillard chemistry is the reaction of a reducing sugar
carbonyl group with an amine or ammonia. Hydroxyl groups are not
involved in Maillard chemistry. However, each dextrose (i.e., corn
syrup) molecule of Helbing has five reactive hydroxyl groups and
only one carbonyl group. Accordingly, based on probability alone, it
is five times more likely that the dextrose molecules in Helbing will
engage in esterification chemistry than in Maillard chemistry.
Id.
Patent Owner also points that Helbing ’302 teaches the use of catalysts, and
includes the catalyst ammonium sulfate in Example 4. Id. “The addition of a
catalyst for purposes of increasing the rate of ester formation makes it even less
likely that Maillard chemistry is taking place or competing with esterification
under the conditions taught by Helbing.” Id.
Patent Owner’s argument is not adequate persuasive evidence that Maillard
reaction will not take place. The statement that it is “five times more likely that the
dextrose molecules in Helbing will engage in esterification chemistry than in
Maillard chemistry” (id.), if true, would mean that dextrose will react in Maillard
fashion less frequently than in esterification, but it will still react with an amine or
ammonia because the reactants are present. Consequently, a preponderance of the
evidence support the Examiner’s position that melanoidins will be formed in
Helbing ’302’s process.
The claims require the binder to be “consisting essentially of a carbohydrate,
an amine, and a polycarboxylic acid.” We addressed the “consisting essentially
of” limitation in the rejections based on Husemoen and found it to be non-limiting.
Under this interpretation, the claimed melanoidin product, as discussed above, is
indistinguishable from the melanoidin formed in Husemoen.
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Claims 21–26 have additional limitations that the Examiner found to be
described in the prior art. See, e.g., RAN 10, 12. Patent Owner did not address
these additional limitations. We have reviewed the Examiner’s findings and
conclude they are reasonable and fact-based, and thus adopt them herein.
For the foregoing reasons, we affirm the rejections of claims 21–26 as
obvious in view of Helbing ’302 and the additionally cited publications. PO
Appeal Br. 7–8.

TIME PERIOD FOR RESPONSE
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may
file a request for rehearing of the decision within one month of the date of: . . .
[t]he original decision of the Board under § 41.77(a).” A request for rehearing
must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the
request and additional requests for rehearing must be in accordance with 37 C.F.R.
§ 41.79(c)-(d), respectively. Under 37 C.F.R. § 41.79(e), the times for requesting
rehearing under paragraph (a) of this section, for requesting further rehearing under
paragraph (d) of this section, and for submitting comments under paragraph (c) of
this section may not be extended.
An appeal to the United States Court of Appeals for the Federal Circuit
under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an inter partes
reexamination proceeding “commenced” on or after November 2, 2002 may not be
taken “until all parties’ rights to request rehearing have been exhausted, at which
time the decision of the Board is final and appealable by any party to the appeal to
the Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 7, July
2008).
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In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable
under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See 37 C.F.R.
§§ 90.1 and 1.983.

AFFIRMED

peb
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Patent Owner:

BARNES & THORNBURG LLP
11 S. Meridian Street
Indianapolis, IN 46204

Third Party Requester:

John S. Pratt, Esq.
KILPATRICK TOWNSEND & STOCKTON LLP
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309