Ex Parte Brady

Patent Trial and Appeal Board

Nov 30, 2016

13152334 (P.T.A.B. Nov. 30, 2016)

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.
13/152,334 06/03/2011 Jean Marie BRADY 69993 6676
21898 7590 12/02/2016
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
TATESURE, VINCENT
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN MARIE BRADY
Appeal 2015-007161
Application 13/152,334
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1 through 11. We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Appellant’s invention is generally directed to an aqueous binder
composition. App. Br. 3. Claim 1 illustrates the subject matter on appeal
and is reproduced below:
1. An aqueous binder composition which is substantially
free of nitrogen-containing Maillard reactants comprising
one or more polymeric polyacid comprising
copolymerized hypophosphite or its salts, the polymeric
polyacid having a weight average molecular weight of from
1,000 to 500,000,
Appeal 2015-007161
Application 13/152,334
a carbohydrate component comprising a monosaccharide
and/or disaccharide and one or more oligosaccharides having
three or more saccharide groups, and a formula weight of up to
5,000, and
from 0.5 to 30 wt.%, based on total binder solids, of one
or more bleaching agent,
wherein the ratio of OH groups in the carbohydrate
component to carboxylic acid groups in the polymeric polyacid
is from 10.0:1 to 0.2:1.
App. Br. 8, Claims Appendix (spacing added).
Appellant (see generally App. Br.) requests review of the Examiner’s
rejection of claims 1-11 under 35 U.S.C. § 103(a) as unpatentable over
O’Brien-Bemini et al., (US 7,026,390 B2, issued April 11, 2006, hereinafter
“O’Brien-Bemini”) and Hansen et al., (US 2006/0111480 Al, published May
25, 2006, hereinafter “Hansen”) in the Final Office Action entered July 31,
2014 (“Final Act.”):
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s rejection under 35 U.S.C. § 103(a)
of claims 1-11. We add the following.1
To prevail in an appeal to this Board, an Appellant must adequately
explain or identify reversible error in the Examiner’s rejections. See
37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356,
1365-66 (Fed. Cir. 2011) (explaining that even if the examiner had failed to
make a prima facie case, it has long been the Board’s practice to require an
appellant to identify the alleged error in the examiner’s rejections); In re
1 Appellant argues claims 1-11 together. See generally Appeal Brief.
Therefore, we select claim 1 as representative, and claims 2-11 will stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
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Application 13/152,334
Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010), quoting Shinseki v.
Sanders, 556 U.S. 396, 409 (2009) (“the burden of showing that the error is
harmful normally falls upon the party attacking the agency’s
determination.”).
The Examiner finds in essence that the combined disclosures of
O’Brien-Bemini and Hansen would have suggested the aqueous binder
composition recited in claim 1 to one of ordinary skill in the art at the time
of the invention, thus rendering the claimed method obvious within the
meaning of 35 U.S.C. § 103(a). Final Act. 6.
Appellant argues that O’Brien-Bemini fails to disclose a binder
composition comprising a carbohydrate having a monosaccharide and/or
disaccharide and one or more oligosaccharides having three or more
saccharide groups with a molecular weight of up to 5,000 as required by
claim 1. App. Br. 5. However, Appellant’s arguments are unpersuasive of
reversible error because they are based on O’Brien-Bemini alone, and do not
take into account what the combined disclosures of the applied prior art
would have suggested to one of ordinary skill in the art at the time of the
invention.
The Examiner correctly finds that O’Brien-Bemini discloses an
aqueous binder composition comprising a hypophosphite-terminated
polyacrylic acid; a phosphoms-containing catalyst, such as sodium
hypophosphite, corresponding to the bleaching agent recited in claim 1
according to Appellant’s Specification;2 and an extender. Final Act. 3—4;
O’Brien-Bemini Abstract; col. 4,11. 51-54; col. 5,11. 49-62; col. 6,11. 35-
36. O’Brien-Bemini discloses that suitable extenders include
2 Spec. 8,11. 25-26.
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Application 13/152,334
polysaccharides, and further discloses that preferred polysaccharides include
starch and pectin, and have a weight average molecular weight of less than
5,000. O’Brien-Bemini col. 6,11. 42—47, 55-62.
The Examiner also correctly finds that Hansen discloses an aqueous
binder composition comprising the reaction product of an alkanolamine with
a carboxylic anhydride, and a carbohydrate. Final Act. 5; Hansen 9-11.
Hansen discloses that suitable carbohydrates include starch and pectin, and
discloses that the preferred carbohydrate is a commercially available glucose
syrup that includes dextrose (a monosaccharide), maltose (a disaccharide),
maltotriose (a trisaccharide), and higher sugars. Hansen 33, 35.
We agree with the Examiner that the combined disclosures of
O’Brien-Bemini and Hansen would have suggested to one of ordinary skill
in the art at the time of the invention that the carbohydrate component of
Hansen’s aqueous binder composition, such as the preferred carbohydrate
including dextrose (a monosaccharide), maltose (a disaccharide), maltotriose
(a trisaccharide), and higher sugars, would have been suitable for use as the
polysaccharide extender in O’Brien-Bemini’s aqueous binder composition.
Final Act. 6. As discussed above, both references disclose aqueous binder
compositions that include a polysaccharide or carbohydrate, and O’Brien-
Bemini discloses that suitable polysaccharides include starch and pectin,
while Hansen also discloses that suitable carbohydrates include starch and
pectin. Implicit in the disclosure of common suitable carbohydrates in both
references is an indication that the carbohydrate components are
interchangeable, and one of ordinary skill in the art therefore reasonably
would have understood that the carbohydrate component disclosed in
Hansen would be suitable for use as the polysaccharide in O’Brien-Bemini’s
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Application 13/152,334
aqueous binder. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(iquoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976) (“[W]hen a
patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.”); In re Font,
675 F.2d 297, 301 (CCPA 1982) (“Express suggestion to substitute one
equivalent for another need not be present to render such substitution
obvious.”).
Appellant further argues that O’Brien-Bemini and Hansen do not
disclose or suggest a binder composition that is substantially free of
nitrogen-containing Maillard reactants as recited in claim 1 because
O’Brien-Bemini “directs one to use ammonia” in the binder composition,
while Hansen discloses reaction of an alkanolamine with a carboxylic
anhydride to produce a component of the binder composition, and discloses
addition of a base to the binder to neutralize unreacted acid. App. Br. 4.
Appellant contends that Hansen discloses numerous suitable alkanolamines,
which include triethanolamine, and also discloses numerous suitable
nitrogen-containing bases, which also include triethanolamine, but does not
suggest selecting triethanolamine, which is not a Maillard reactant, from
among those listed as suitable for both uses. App. Br. 4-5. Appellant
contends that the combined disclosures of O’Brien-Bemini and Hansen
therefore fail to provide one of ordinary skill in the art with a reasonable
expectation of successfully arriving at the aqueous binder composition of
their invention that is substantially free of nitrogen-containing Maillard
reactants. App. Br. 5.
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However, O’Brien-Bemini discloses that the binders “may optionally
contain conventional additives such as . . . pH adjusters ... In particular, pH
adjusters, such as ammonium hydroxide may be used to raise the pH.”
O’Brien-Bemini col. 7,11. 11-17. O’Brien-Bemini therefore does not
require the inclusion of an ammonium hydroxide base in the binder
composition, and makes clear that inclusion of a pH adjuster is optional.
Similarly, Hansen discloses that a base may be added to the binder
composition to improve its water solubility and dilutability and at least
partially neutralize unreacted acid, and discloses that examples of suitable
bases include ammonia and organic amines. Hansen 30. Thus, Hansen
does not require the binder composition to include ammonia or an organic
amine. Rather, Hansen’s use of “may” indicates that addition of a base to
the binder is optional, and if a base is included, ammonia and organic amines
are merely examples of suitable bases. In addition, Hansen does not indicate
that the binder composition comprises an alkanolamine, but instead discloses
that the binder includes the reaction product of an alkanolamine with a
carboxylic anhydride. Hansen 9-11.
Accordingly, the combined disclosures of O’Brien-Bemini and
Hansen reasonably would have suggested an aqueous binder composition
that is substantially free of nitrogen-containing Maillard reactants, and one
of ordinary skill in the art would have had a reasonable expectation of
successfully producing such a binder in view of the state of the art at the
time of the invention. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (“That the ’813 patent discloses a multitude of
effective combinations does not render any particular formulation less
obvious. This is especially tme because the claimed composition is used for
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Application 13/152,334
the identical purpose.”); In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)
(“Obviousness does not require absolute predictability of success ... all that
is required is a reasonable expectation of success.”) (emphasis omitted,
citing In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988)).
Appellant further argues that results obtained for Examples 1, 2, 4,
4A, 4B, 4C, 4D, 6, 7, and 8-23 shown in Tables 2, 3, 5, 6, and 7 of the
Specification demonstrate that binder compositions of the invention cure to
yield superior low color density, which Appellant asserts would have been
surprising. App. Br. 5-6. However, Appellant’s contention of unexpected
results is not well-founded.
Appellant bears the burden of showing that the claimed invention
imparts unexpected results that are reasonably commensurate with the scope
of protection sought by the claims on appeal. In re Klosak, 455 F.2d 1077,
1080 (CCPA 1972) (“the burden of showing unexpected results rests on he
who asserts them”); In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (to
show unexpected results, applicant must establish: “(1) that there actually is
a difference between the results obtained through the claimed invention and
those of the prior art,. . . and (2) that the difference actually obtained would
not have been expected by one skilled in the art at the time of invention”)
(citation omitted).
Appellant does not direct us to any statement in the Specification
attesting to the unexpected nature of the results obtained for Examples 1, 2,
4, 4A, 4B, 4C, 4D, 6, 7, and 8-23 shown in Tables 2, 3, 5, 6, and 7, or to any
other persuasive evidence or averment evincing that these results would
have been unexpected by one of ordinary skill in the art at the time of the
invention. App. Br. 5-6. Absent such evidence or averment, Appellant
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Application 13/152,334
cannot meet his burden. See, e.g., In re Geisler, 116 F.3d 1465, 1471 (Fed.
Cir. 1997) (“Geisler made no such assertion [that results were unexpected]
in his application. Nor did Geisler submit any such statement through other
evidentiary submissions, such as an affidavit or declaration under Rule 132 .
. . Instead, the only reference to unexpected results was a statement by
Geisler’s counsel. . . that Geisler’s results were ‘surprising.’”).
Appellant also does not persuasively explain why the limited showing
drawn to binder compositions containing only two different polymeric acid
components (polyacrylic acid made with either 10% or 20% sodium
hypophospite) and two different carbohydrate components (com symp
having a dextrose equivalent value of either 42.5 or 63.8), and including a
single bleaching agent (sodium hypophosphite) is reasonably commensurate
with the scope of the claimed binder compositions, which are not limited to
including only these particular components. App. Br. 5-6. In re Grasselli,
713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035
(CCPA 1980).
Although Appellant argues that it “is reasonable to expect” that larger
carbohydrate components and higher MW polymeric polyacids “would work
as well” or “better” than those used in the relied-upon Examples (App. Br.
6), this unsupported argument highlights the apparent predictability of the
relied-upon results presented in the Specification, and fails to demonstrate
that the results are commensurate in scope with the claimed subject matter,
or that they would have been unexpected. Appellant’s arguments to that
effect cannot take the place of evidence. In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978);
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
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Accordingly, the evidence of obviousness outweighs Appellant’s
showing of non-obviousness, and we accordingly sustain the Examiner’s
rejection of claims 1-11 under 35 U.S.C. § 103(a).
ORDER
For the reasons set forth above and in the Answer, the decision of the
Examiner is affirmed.
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)(1).
AFFIRMED
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