Ex Parte Grünbauer

Patent Trials and Appeals BoardMar 1, 2019

14404284 - (D) (P.T.A.B. Mar. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/404,284 11/26/2014 Henri J.M. Griinbauer 24978 7590 03/05/2019 GREER, BURNS & CRAIN, LTD 300 S. WACKER DR. SUITE 2500 CHICAGO, IL 60606 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 1969.118831 8282 EXAMINER HEINCER, LIAM J ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 03/05/2019 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): ptomail@ gbclaw. net docket@gbclaw.net verify@gbclaw.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HENRI J.M. GRUNBAUER Appeal2018-003962 Application 14/404,284 Technology Center 1700 Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and SHELDON M. McGEE, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicant ("Appellant") 1 appeals under 35 U.S.C. Â§ 134(a) from the Primary Examiner's decision to reject claims 1-7, 9-17, and 19-21. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 The Appellant is the Applicant, "Stora Enso OYJ" (Application Data Sheet filed November 26, 2014, 4), which, according to the Brief, is the real party in interest (Appeal Brief filed October 12, 2017 ("Appeal Br."), 1). 2 Appeal Br. 9-22; Reply Brief filed February 26, 2018 ("Reply Br."), 2-5; Non-Final Office Action entered May 10, 2017 ("Non-Final Act."), 2-9; Examiner's Answer entered December 26, 2017 ("Ans."), 3-12. Appeal2018-003962 Application 14/404,284 I. BACKGROUND The subject matter on appeal relates to a composition in the form a dispersion and methods associated with its manufacture and use, such as in making polyurethane and polyisocyanurate foams for thermal insulation (Specification filed November 26, 2014 ("Spec.") at 1, 11. 1-18). Representative claim 1 is reproduced from the Claims Appendix ("Claims App'x") to the Appeal Brief, with key limitations emphasized, as follows: 1. A composition in the form of a dispersion, comprising: one or more dispersants, wherein said one or more dispersants have a solubility parameter of from about 18 to about 30 MPaYo and a viscosity of from about 15 mPas to about 20,000 mPas; and, lignin, wherein said lignin has an average particle size of from about 100 nm to about 2000 nm. (Claims App'x A-1.) II. REJECTIONS ON APPEAL On appeal, the Examiner maintains several rejections, which are listed as follows: A. Claims 1--4, 9, 11, 12, 19, and 20 under 35 U.S.C. Â§ 102(b) (pre-AIA) as anticipated by Ton-That et al. 3 ("Ton-That"); B. Claim 5 under 35 U.S.C. Â§ 103(a) (pre-AIA) as unpatentable over Ton-That in view of Reimann et al. 4 ("Reimann"); C. Claims 6, 7, and 10 under 35 U.S.C. Â§ 103(a) as unpatentable 3 Ton-That et al., DEVELOPMENT OF LIGNO-POLYOL FOR THE PRODUCTION OF POLYURETHANES, National Research Council Canada (2010). 4 Reimann et al., KRAFT LIGNIN IN POLYURETHANES. III. EFFECTS OF THE MOLECULAR WEIGHT OF PEG ON THE PROPERTIES OF POLYURETHANES FROM A KRAFT LIGNIN-PEG-MDI SYSTEM, 41 J. Appl. Polymer Sci. 39-50 (1990). 2 Appeal2018-003962 Application 14/404,284 over Ton-That in view ofWakisaka et al. 5 (referred to as "Hatakeyama"); D. Claims 13, 14, 16, and 17 under 35 U.S.C. Â§ I03(a) as unpatentable over Hatakeyama in view of Ton-That; E. Claim 15 under 35 U.S.C. Â§ I03(a) as unpatentable over Hatakeyama in view of Ton-That and Liu et al. 6 ("Liu"); and F. Claim 21 under 35 U.S.C. Â§ I03(a) as unpatentable over Ton- That in view of Reimann. (Ans. 3-12; Final Act. 2-9.) III. DISCUSSION Rejection A. Focusing on claim 1, the Appellant relies on the same arguments for all claims subject to this rejection (Appeal Br. 10-16). Therefore, we confine our discussion to claim 1, which we select as representative pursuant to 37 C.F.R. Â§ 4I.37(c)(l)(iv). As provided by this rule, claims 2--4, 9, 11, 12, 19, and 20 stand or fall with claim 1. The Examiner finds that Ton-That describes every limitation recited in claim 1 (Ans. 3--4). Specifically, the Examiner finds that Ton-That describes a dispersion comprising a Kraft lignin and, as a dispersant, a polyethylene glycol (PEG) with a molecular weight of 400 (id. at 3). The Examiner finds further that the current Specification (Table 1, Spec. 13, 11. 16-20) describes polyethylene glycol with a molecular weight of 400 as 5 DE 10153980 Al, published June 6, 2002 (machine-generated translation found in the record). 6 Liu et al., PERFORMANCE CHARACTERIZATION OF RIGID POLYURETHANE FOAM WITH REFINED ALKALI LIGNIN AND MODIFIED ALKALI LIGNIN, 20 J. Forestry Res. 161---64 (2009). 3 Appeal2018-003962 Application 14/404,284 having a solubility parameter of 20.56 and a viscosity of 91 mPas (Ans. 3). Regarding the average particle size values specified for the lignin, the Examiner finds that Ton-That discloses preparing the dispersion by high speed mixing at a sufficiently high shear rate under conditions similar to those disclosed in the current Specification for the claimed composition (id.). The Examiner finds that although Ton-That was unable to determine the particle sizes for the lignin prepared according to the high speed mixing embodiment, the prior art lignin produced according to such a technique would inherently possess an average particle size as specified in claim 1 in view of the identity or substantial identity in the compositional ingredients and preparation conditions and, therefore, the burden of production is on the Appellant to show otherwise (id. at 3--4, 9--10). The Appellant contends that the Examiner's inherency position with respect to the lignin's average particle size "is contrary to the evidence and not supported by fact" (Appeal Br. 10). Specifically, the Appellant argues that Ton-That's disclosure regarding "reduction in size of the lignin based on high temperature mixing is only one of the possibilities" as "it is unclear if the lignin particles 'have either been broken in to smaller particles or dissolved into the PEG"' (id. at 11 (quoting Ton-That, 7)). The Appellant argues that because Ton-That further states that the density of the "fine particles," which are disclosed as having particle sizes mostly less than 100,000 nm (100 Âµm), did not increase, the lignin particle size was not reduced to an average particle size within the range ("about 100 nm to about 2000 nm") recited in claim 1 (id.). The Appellant argues that, therefore, the Examiner's inherency position is based on a mere possibility or probability that a certain result or characteristic may occur or be present in the prior art 4 Appeal2018-003962 Application 14/404,284 and that possibility or probability is insufficient to support an inherency finding (id. at 12). Additionally, the Appellant contends that, in any event, the current Specification does not teach that high speed mixing at a sufficiently high shear rate reduces the lignin's size (id. at 13-14). Furthermore, the Appellant argues that the Examiner "also presumes, without support, that the starting length of the present Specification and those in [Ton-That] are the same" (id. at 15; emphasis omitted). Finally, the Appellant argues that the Examiner's position is in direct conflict with Ton- That, which teaches that mixing at a mixer speed of 1200 rpm and room temperature resulted in increased lignin size as a result of swelling (id. at 15-16). For the reasons well-stated by the Examiner in the Answer and below, the Appellant's arguments fail to identify any reversible error in the rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). We start by consulting the claim language and the Specification to ascertain what is claimed. Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed. Cir. 1997) ("Implicit in our review of the Board's anticipation analysis is that the claim must first have been correctly construed to define the scope and meaning of each contested limitation."). The current Specification informs one skilled in the relevant art that the claimed invention satisfies "a need for a simple, cost-effective process for the production of lignin particles of submicron and/or nanometer size that are amenable to the production of a multitude of industrial products where these powders may be effective" (Spec. 2, 11. 9-28). In describing the lignin material used to make the claimed compositions (dispersions), the Specification states that "any lignin," such as a Kraft lignin, may be used, 5 Appeal2018-003962 Application 14/404,284 and refers to EP 1 794 363 B2 as disclosing a preferred lignin that may be used to prepare the dispersions (id. at 5, 11. 12-17). Neither this description in the Specification nor EP 1 794 363 B2 places any particular limitation or sheds any light on the particle sizes for the starting lignin material. 7 As for the process used to make the dispersions including the lignin with the final average particle sizes recited in claim 1, the Specification describes, as a preferred embodiment, "a high shear mixing of at least about 1000 rpm, preferably at least about 5000 rpm, most prefer[ably] at least about 20000 rpm" (id. at 7, 11. 27-30). The Specification describes a working example (Example 4) in which dispersions of Kraft lignin of unspecified average particle size in PEG 400 were subjected to dispersive mixing at 18,800 rpm for at least one minute followed by further mixing at 25,000 rpm for another minute (Spec. 11, 11. 15-22; 10, 11. 6-12). The dispersions formed in Example 4 are described as having lignin particles with an "[ o ]verall mean diameter" of 260 nm, which is within the broad range ("about 100 nm to about 2000 nm") recited in claim 1 (Spec. 13, 11. 16-18 (Table 1)). With this background, we next consider what is described in the prior art. Ton-That describes a composition obtained by subjecting Kraft lignin and PEG 4008 (polyol) to a high temperature and high-speed mixing process 7 Although the Specification further states that "the lignin particles involved are largely of sub micron and/ or nanometer size which makes [sic] them effective as participants in the production process of the end-product" (id. at 9, 11. 5---6; emphasis added), the "end-product" refers to products that are formed after the claimed compositions are subject to "further processing steps" (id. at 8, 11. 21-26). 8 The Examiner finds, and the Appellant does not dispute, that Ton-That's PEG 400 possesses a solubility parameter and a viscosity within the ranges recited in claim 1 (Ans. 3; Reply Br. 2-5; Appeal Br. 9-16). 6 Appeal2018-003962 Application 14/404,284 in which the lignin and the polyol were stirred at 90Â°C using an Ultra-Turax homogenizer operating at a high speed of 13,500 rpm for 10 minutes (Ton- That 39 ("Fabrication ofLigno-PU")). Ton-That teaches that the "[m]ixing method and temperature have tremendous effect on the quality of dispersion of lignin in the given polyol" (id. at 6 ("Lignin Dispersion in Polyol")). According to Ton-That, the lignin in the dispersion resulting from the high temperature and high-speed mixing process could no longer be observed by an optical microscope (OM), stating that "it remains unclear if they really dissolved in the PEG or the particle sizes are too fine to be detected by the OM" (id.). According to Ton-That, "[w]ith the aid of high shear force those [lignin] particles [ swollen by the polyol] could be easily broken into smaller particles and even can dissolve into the polyol if the thermodynamics of the system is favorable" (id.; emphasis added). Given the facts recounted above, we agree with the Examiner that it would reasonably appear that Ton-That's dispersion obtained by high temperature and high-speed mixing would include lignin particles that would inherently possess an average particle size within the range recited in claim 1 because the prior art subjects the same compounds recited in claim 1 to a treatment process that is substantially the same or similar to that described in the current Specification. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("[W]e conclude that the Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada's polymer latexes."). 9 The Ton-That paper is not paginated. Our pagination starts with the page with the "ABSTRACT" and "INTRODUCTION" as the first page. 7 Appeal2018-003962 Application 14/404,284 Here, the burden of production (i.e., to show that the lignin particles in the prior art would not possess an average particle size within the range recited in claim 1) was properly shifted to the Appellant because "[ w ]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." In re Best, 562 F.2d 1252, 1255 (CCPA 1977). The "fairness [in shifting the burden to the Appellant] is evidenced by the PTO' s inability to manufacture products or to obtain and compare prior art products." Id. The Appellant's argument (Appeal Br. 12) that the Examiner's inherency position is based on a mere possibility or probability is misplaced and misunderstands controlling precedent. See, e.g., MEHL/Biophile Int 'l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (mere possibility that "an operator of [an] RD-1200 laser could use the laser ... without necessarily aligning the laser 'substantially vertically over a hair follicle opening"' did not legally suffice to show anticipation of a claim directed to hair depilation). In this case, Ton-That describes an experiment in which a dispersion is obtained by a method that is consistent with the method as generally described in the Specification and is substantially identical or similar to that exemplified in the Specification's working examples, as we found above. Ton-That's experiment is not a mere possibility or probability-it was actually carried out. Id. at 1366 ("It is not a question of probabilities as to whether a person of ordinary skill following the teachings of the article will align the laser light applicator over a hair follicle."); Id. ("[T]he laser 8 Appeal2018-003962 Application 14/404,284 operating parameters disclosed in the [Polla] article substantially coincide with those disclosed in the patent. Accordingly, to the extent the embodiment in the patent achieves hair depilation, so does the Polla method."). The fact that Ton-That did not appreciate or could not ascertain the lignin's actual average particles is of no moment. Id. ("Where, as here, the result is a necessary consequence of what was deliberately intended, it is of no import that the [prior art] did not appreciate the results."). As we noted above, the Appellant argues that Ton-That's teaching that "the density of fine particles does not increase significantly" (Ton-That 6) indicates that the lignin particle sizes are not reduced from 100 Âµm (id. at 4) to an average size within the range recited in claim 1. But that argument ignores Ton-That's teachings that analysis using an optical microscope was unable to ascertain the particle sizes or otherwise establish whether the particles dissolved in the polyol. Indeed, Ton-That posits that "[ w ]ith the aid of high shear force those particles could be easily broken into smaller particles and even can dissolve into the polyol if the thermodynamics of the system is favorable" (id. at 6). The Appellant offers no objective experimental evidence to the contrary. Regarding the Appellant's argument that Ton-That's starting lignin materials do not have the same sizes as the Inventor's lignin particles, we have already found above that the Specification does not place any limitations on the sizes of the starting lignin materials. Again, because Ton- That's dispersion is made by a process that is substantially identical or similar to that described in the current Specification, the burden was properly shifted to the Appellant to show that Ton-That's method would not 9 Appeal2018-003962 Application 14/404,284 result in a dispersion having lignin particles with average particle sizes within the range recited in claim 1. Finally, we find no merit in the Appellant's argument that Ton-That's method ( carried out at room temperature) resulted in increased lignin particle sizes because Ton-That teaches that the particles were swollen (Ton- That 6). Ton-That plainly teaches that "[b ]y increasing the mixing temperature to 90Â°C[,] the large lignin particles almost disappeared (Figure 6b )[,] indicating that they have either been broken in to smaller particles or dissolved into the PEG" (id.). For these reasons, and those given by the Examiner, we uphold the Examiner's rejection as maintained against claim 1. Therefore, we sustain Rejection A. Rejection B. Claim 5, which depends indirectly from claim 1 through intervening claim 3, recites in relevant part: "wherein said polyol comprises a mixture of different PEGs, one PEG having a molecular weight of about 400 and one PEG having a molecular weight of about 600" (Claims App'x A-1). The Examiner finds that Ton-That discloses a dispersion including a polyethylene glycol having a molecular weight of 400 (PEG 400) but not a polyethylene glycol having a molecular weight of about 600 (PEG 600) (Ans. 5). To resolve this difference, the Examiner relies on Reimann, which teaches using polyethylene glycol with a molecular weight of, for example, 400 or 600 in a polyurethane formulation comprising Kraft lignin (id.). The Examiner concludes from these findings that a person having ordinary skill in the art would have been prompted to add PEG 600, and thus use both PEG 400 and PEG 600, based on the rationale that it would have been 10 Appeal2018-003962 Application 14/404,284 obvious to combine two compositions, each of which is disclosed in the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose (id. ( citing In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980)). Seizing on the Examiner's statement that PEG 600 and PEG 400 are "functionally equivalent" (Ans. 5), the Appellant argues that the PEGs disclosed in Reimann are not "functionally equivalent" (Appeal Br. 18). The Appellant argues that, rather, Reimann teaches PEG's molecular weight alters the composition of the polyurethane's hard segment in such a way that the Kraft lignin content increases and the content of MDI ( diphenylmethane diisocyanate) decreases (id.). The Appellant urges that, therefore, the Examiner's articulated reason is insufficient (id. at 19). We disagree with the Appellant. Although Reimann teaches that various PEG molecular weights provide somewhat different results (Reimann 42 (Table I)), a person having ordinary skill in the art would have understood that PEG 400 and PEG 600 would both provide suitable polyurethane compositions (id. at 42-50 (discussing effects in varying PEG molecular weight)). Because each of PEG 400 and PEG 600 would be expected to provide successful results as a reactant in the formation of polyurethane compositions-i.e., fulfill the same purpose, it would have been obvious to a person having ordinary skill in the art to use both PEGs with a reasonable expectation that the combination would also provide successful results in an additive or cumulative manner. In this regard, a showing that PEG 400 and PEG 600 provide the same results is not necessary. Kerkhoven, 626 F .2d at 850 ("It is prima facie obvious to combine two compositions each of which is taught by the prior art to be 11 Appeal2018-003962 Application 14/404,284 useful for the same purpose, in order to form a third composition which is to be used for the very same purpose."). For these reasons, we uphold the Examiner's rejection as maintained against claim 5. Rejections C-F. The Appellant relies on the same arguments offered above, which we found unpersuasive. Therefore, we sustain Rejections C through F for the same reasons. IV. SUMMARY Rejections A through Fare sustained. Therefore, the Examiner's final decision to reject claims 1-7, 9-17, and 19-21 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 12