Ex Parte Hamilton et al

Patent Trial and Appeal Board

Aug 31, 2017

13629065 (P.T.A.B. Aug. 31, 2017)

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.
13/629,065 09/27/2012 Robert T. Hamilton INTP155873 7478
26389 7590 09/05/2017
rTTRTSTRNSFN OTONNOR TOHNSON KTNDNFNN PT T C EXAMINER
1201 THIRD AVENUE SASTRI, SATYA B
SUITE 3600
SEATTLE, WA 98101-3029 ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
efiling @ cojk. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT T. HAMILTON, HARSHADKUMAR M. SHAH,
JEFFREY J. CERNOHOUS, NEIL R. GRANLUND, and
DAVID E. FISH
Appeal 2016-003483
Application 13/629,065
Technology Center 1700
Before ADRIENE LEPIANE HANLON, N. WHITNEY WILSON, and
SHELDON M. McGEE, Administrative Patent Judges.
WILSON, Administrative Patent Judge,
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
December 29, 2014 decision finally rejecting claims 1—8, 17, 19, and 21—30.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants state that the real party in interest is Weyerhaeuser NR Company
(Appeal Br. 3).
Appeal 2016-003483
Application 13/629,065
CLAIMED SUBJECT MATTER
Appellants’ invention relates to a composition comprising a
thermoplastic polymer and bleached chemical wood pulp fiber (Abstract, Spec.
1). The composition has a brightness level of at least 20, as measured by the
Brightness Test (Abstract). Independent claims 1 and 27 are representative
and are reproduced below from the Claims Appendix of the Appeal Brief
(emphasis added):
1. A composition comprising 10 to 50 weight % bleached
chemical wood pulp fiber and 45 to 85 wt % thermoplastic
polymer, wherein the composition has a brightness of at least
20 as measured by the Brightness Test.
27. A composition consisting of 10 to 50 weight % bleached
chemical wood pulp fiber, 45 to 85 weight % thermoplastic
polymer, and 0.5 to 20 weight % additives;
wherein the additives consist of one or more
compatibilizers, coupling agents, anti-oxidants, and lubricants;
and
wherein the composition has a brightness of at least 20 as
measured by the Brightness Test.
REJECTIONS2
The Examiner withdrew a number of rejections set forth in the Final
Action and imposed new grounds of rejection in the Answer. The rejections
which are currently before us are as follows:
2 There was a provisional obviousness-type double patenting rejection over
Application No. 13/629,371, which has become abandoned, thereby mooting
this provisional rejection.
2
Appeal 2016-003483
Application 13/629,065
I. Claims 1—8, 17, 21, and 24—30 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Sears3 in view of Frank.4
II. Claims 1—8, 17, 19, and 21—26 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Barlow5 in view of Frank.
III. Claims 1—8, 17, 21, and 24—30 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Sears in view of Cook.6
IV. Claims 1—8, 17, 19, and 21—26 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Barlow in view of Cook.
V. Claims 1—8, 17, 21, 22, and 24—30 are provisionally rejected on
the grounds of non-statutory, obviousness-type double patenting over claims
1, 2, 4, 6—8, 10, 12—14, 16, and 18—26 of Application No. 13/629,422 (which
is currently on appeal as Appeal No. 2016-003346.)
VI. Claims 1—8, 17, 21, 22, and 24—30 are provisionally rejected on
the grounds of non-statutory obviousness-type double patenting over claims
24—35 of Application No. 13/629,096 (which issued as U.S. Patent No.
9,328,231 on May 3, 2016).
As an initial matter, we note that Appellants do not contest the
obviousness-type double patenting rejections. Accordingly, we summarily
affirm them.7
3 Sears et al., US 6,270,883 Bl, issued August 7, 2001.
4 Frank, US 2008/0145637 Al, published June 19, 2008.
5 Barlow et al., US 6,743,507 B2, issued June 1, 2004.
6 Cook et al., US 5,562,740, issued October 8, 1996.
7 We observe that Application No. 13/629,096 is no longer pending, but
issued with claims of different scope than were pending at the time of the
provisional rejection. Thus, should prosecution continue, Appellants and the
Examiner should review this rejection.
3
Appeal 2016-003483
Application 13/629,065
DISCUSSION
Rejections I and III. The Examiner finds that Sears discloses
composites containing cellulosic pulp fibers (between 1 and 60%) disposed
in matrix comprising a thermoplastic polymeric material (Ans. 2, citing
Sears, Abstract). The Examiner finds that Sears does not disclose that the
pulp fibers are bleached chemical wood pulp fibers and does not specifically
disclose the claimed brightness level (Ans. 2).
The Examiner finds that Frank discloses color stabilized composite
material that combines polymeric materials with cellulosic natural fibers or
wood or wood based composite materials (Ans. 3). The Examiner further
finds that Frank teaches that the cellulosic fibers may be bleached or
oxidized in order to enhance the color stability of the composites and to
improve their physical properties {id., citing Frank, Abstract). The
Examiner concludes that it would have been obvious to bleach the cellulosic
pulp fibers of the Sears composition in view of the teachings in Frank on the
benefits of doing so and the suggestion in Sears to optimize process
conditions to provide light colored and high quality products (Ans. 3).
The Examiner also finds that Cook discloses bleached wood cellulosic
fibers having reduced odor and improved brightness (Ans. 7, citing Cook,
Abstract, 3:41—45), including some fibers with a final odor of zero and a
brightness of 84 {id.). The Examiner determines that it would have been
obvious to use Cook’s fibers in the Sears composition to produce a product
with a reduced odor and improved brightness {id.).
The Examiner finds that neither the combination of Sears and Cook or
Sears and Frank specifically teach the claimed brightness value. However,
the Examiner determines that because the compositions of Sears/Cook and
4
Appeal 2016-003483
Application 13/629,065
Sears/Frank have the same composition as the claimed composition, the
burden shifts to Appellants to show that the combined art does not have
claimed brightness value (Ans. 3, 7), essentially invoking the rationale of In
re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“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.”).
Appellants make several arguments seeking reversal of Rejections I
and III. First, they argue that the rejection does not meet the standards
necessary to support a finding that the brightness value is inherent in the
claimed combinations (Reply Br. 4—7). “[I]n order to rely on inherency to
establish the existence of a claim limitation in the prior art in an obviousness
analysis[,] the limitation at issue necessarily must be present, or the natural
result of the combination of elements explicitly disclosed by the prior art.”
PAR Pharm., Inc. v. TWIPharms, Inc., 773 F.3d 1186, 1195-96 (Fed. Cir.
2014). To properly rely on the doctrine of inherency in a rejection, “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.”
Ex Parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990). Once the Examiner so
provides, the burden shifts to the patent applicant to demonstrate otherwise.
See In re Best, 562 F.2d at 1255.
Applying these concepts to the instant case, the Examiner provides
sufficient basis in fact and technical reasoning to support the finding that the
claimed brightness value would be present in the modified Sears
5
Appeal 2016-003483
Application 13/629,065
composition. Specifically, the Examiner points to Cook’s bleached wood
fibers which have a brightness of 84 (Ans. 7, 8), to Frank’s teaching
regarding the bleaching or oxidation of cellulosic fibers (id. at 3), and to the
teaching in Sears to optimize process conditions to provide lighter color
products (id., citing Sears 12:48—13:9).
In an effort to rebut this showing, Appellants point to the disclosure in
Sears at Table IVA as teaching that properties of compositions may vary in
spite of similar compositions (Appeal Br. 12, citing Table IVA). In effect,
Appellants rely on the disclosure of Sears as the required evidence to meet
the burden of showing that the prior art products do not necessarily have the
claimed brightness value. Appellants’ argument is not persuasive, because it
relies on mere attorney argument to contend that because some of the
mechanical properties may differ in the Sears compositions, the brightness
levels of the compositions may also differ. “Attorney’s argument in a brief
cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974). Moreover, Appellants do not contest the Examiner’s
determinations (Ans. 14—15) that the art suggests the desirability of a bright
product, and that a person of skill in the art would be able to optimize the
processing conditions so that the claimed brightness level would be
achieved.
Appellants also contend that the obviousness rejection is deficient
because “Frank is not enabling with respect to the cited subject matter”
(Reply Br. 8). Appellants argue that “there is no indication in Frank as the
quantities of bleached material or the extent of bleaching required to achieve
the alleged benefits and so forth” (id.). This argument is not persuasive. A
prior art patent or printed publication is presumptively enabled, and the
6
Appeal 2016-003483
Application 13/629,065
burden of showing non-enablement of the reference is on the Appellants.
See, e.g., In re Antor Media Corp., 689 F.3d 1282, 1287—88 (Fed. Cir.
2012). Appellants have not met this burden, having only asserted that the
lack of more detailed information in Frank is evidence of non-enablement
(Reply Br. 8). Appellants’ allegation that there was no reasonable
expectation of success (Reply Br. 8) is not well tied to the prima facie case.
To the extent that Appellants are arguing that there is no reasonable
expectation that incorporating Frank’s bleached fibers into the Sears
composition would yield a useful product, with good brightness, they have
not pointed to persuasive evidence that a person of skill in the art would not
expect that the combination of Sears and Frank would yield a useful product.
In re Pearson, 494 F.2d at 1405. To the extent that Appellants argue that a
person of skill in the art would not have been able to determine the amounts
of materials needed to achieve the claimed brightness level, Appellants have
not pointed to any evidentiary support for this argument, making it
unpersuasive.
Appellants also suggest that there is no reason to combine Sears and
Frank because Sears discusses the use of colorants while Frank’s fibers are
said to be resistant to color change (Reply Br. 8). This argument is not
persuasive because enhanced color stability is not necessarily competitive
with wanting to change the color. That is, color stability can mean that once
the color is changed it remains stable.
Rejections II and IV. The Examiner finds that Barlow discloses cellulose
pulp fiber-reinforced composites having improved color and reduced
yellowness (Ans. 4, citing Barlow, Abstract, 4:42—64, 5:20-28, 6:33—42,
7
Appeal 2016-003483
Application 13/629,065
7:47-49, Table 1). The Examiner further finds that Frank discloses color
stabilized composite materials that combine cellulosic natural fibers or wood
or wood-based composite materials, and suggests bleaching the cellulosic
fibers to enhance their color stability (Ans. 4). The Examiner concludes that
it would have been obvious to use Frank’s bleached cellulosic fibers in the
Barlow composition as Barlow seeks improved color and reduced
yellowness, and that the combination would have been expected to have the
claimed brightness level, absent evidence to the contrary (Ans. 4).
The Examiner also finds that Cook discloses bleached wood cellulosic
fibers having reduced odor and improved brightness (Ans. 8, citing Cook,
Abstract, 3:41—45), including some fibers with a final odor of zero and a
brightness of 84 (id.). The Examiner determines that it would have been
obvious to use Cook’s fibers in the Barlow composition to produce a product
with a reduced odor and improved brightness (id.).
The Examiner determines that because the compositions of
Barlow/Cook and Barlow/Frank have the same composition as the claimed
composition, the burden shifts to Appellants to show that the Barlow’s
modified composition does not have claimed brightness value (Ans. 4, 8),
essentially invoking the rationale of In re Best, 562 F.2d at 1255.
As with Rejections I and III, Appellants’ principal arguments are that
the Examiner has not adequately established that the Barlow/Cook and
Barlow/Frank compositions inherently have the claimed brightness (Appeal
8
Appeal 2016-003483
Application 13/629,065
Br. 13—14, Reply Br. 9). However, as discussed above in connection with
Rejections I and III, this argument is not persuasive.
CONCLUSION
We AFFIRM the rejection of claims 1—8, 17, 21, and 24—30 under
35 U.S.C. § 103(a) as being unpatentable over Sears in view of Frank.
We AFFIRM the rejection of claims s 1—8, 17, 19, and 21—26 under
35 U.S.C. § 103(a) as being unpatentable over Barlow in view of Frank.
We AFFIRM the rejection of claims 1—8, 17, 21, and 24—30 under
35 U.S.C. § 103(a) as being unpatentable over Sears in view of Cook.
We AFFIRM the rejection of claims 1—8, 17, 19, and 21—26 under
35 U.S.C. § 103(a) as being unpatentable over Barlow in view of Cook.
We SUMMARILY AFFIRM the provisional rejection of claims 1—8,
17, 21, 22, and 24—30 on the grounds of non-statutory, obviousness-type
double patenting over claims 1, 2, 4, 6—8, 10, 12—14, 16, and 18—26 of
Application No. 13/629,422.
We SUMMARILY AFFIRM the provisional rejection of claims 1—8,
17, 21, 22, and 24—30 on the grounds of non-statutory obviousness-type
double patenting over claims 24—35 of Application No. 13/629,096.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
9