Ex Parte Hansen et al

Patent Trial and Appeal Board

May 17, 2017

14361003 (P.T.A.B. May. 17, 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.
14/361,003 05/28/2014 Erling Lennart Hansen 3672-P50149 1763
13897 7590
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
05/19/2017 EXAMINER
USELDING, JOHN E
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
05/19/2017 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):
mail @ Abel-IP.com
hmuensterer @ abel-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERLING LENNART HANSEN, LARS NAERUM,
POVL NISSEN, and DORTE BARTNIK JOHANSSON
Appeal 2016-007454
Application 14/361,003
Technology Center 1700
Before TERRY J. OWENS, CATHERINE Q. TIMM, and
AVELYN M. ROSS Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 14—33. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim an aqueous binder composition, a method for
using the composition to produce a mineral fiber product, and a mineral fiber
product comprising the composition in the cured state. Claim 14 is
illustrative:
Appeal 2016-007454
Application 14/361,003
14. An aqueous binder composition comprising:
(1) a water-soluble binder component obtained by
reacting at least one alkanolamine with at least one
polycarboxylic acid or anhydride and, optionally, treating
a resultant reaction product with a base;
(2) a soy protein product;
and, optionally, one or both of:
(3) a sugar component;
(4) urea.
The References
Kelly US 2008/0051539 A1 Feb. 28, 2008
Nissen US 2010/0012879 A1 Jan. 21,2010
Hawkins US 2011/0086567 A1 Apr. 14, 2011
Brady US 2011/0300380 A1 Dec. 8, 2011
The Rejections
The claims stand rejected as follows: claims 14—19, 26—28 and 31—33
under 35 U.S.C. § 103 over Nissen in view of Hawkins and Kelly,
claims 20-25, 29 and 30 under 35 U.S.C. § 103 over Nissen in view of
Hawkins, Kelly and Brady, claims 14—33 provisionally on the ground of
nonstatutory obviousness-type double patenting over claims 15—34 of
copending Application No. 14/232,360 and over claims 1—20 of copending
Application No. 14/086,245 (issued as US 9,469,766 on Oct. 18, 2016), and
claims 26—30 under 35 U.S.C. § 112, first paragraph as failing to comply
with the written description requirement.1
1 A rejection of claim 30 under 35 U.S.C. § 112, fourth paragraph is
withdrawn in the Examiner’s Answer (Ans. 2).
2
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Application 14/361,003
OPINION
We affirm the rejections under 35 U.S.C. § 103 and the
obviousness-type double patenting rejections and reverse the rejection under
35 U.S.C. § 112, first paragraph.
Rejections under 35 U.S.C. § 103
Rejection of claims 14—19, 26—28 and 31—33 under 35 U.S.C. § 103
over Nissen in view of Hawkins and Kelly
The Appellants argue the claims as a group (App. Br. 9—16). We
therefore limit our discussion to one claim, i.e., claim 14. Claims 15—19,
26—28 and 31—33 stand or fall with that claim. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2012).
Nissen discloses a formaldehyde-free aqueous binder composition
comprising a water-soluble component (reaction product of at least one
alkanolamine with at least one carboxylic anhydride) and urea (Tffl 14—15).
“If appropriate, co-binders such as, e.g., carbohydrates may be employed in
amounts of, for instance, up to 25-30 wt%, based on binder solids” (138).
Hawkins discloses a formaldehyde-free aqueous binder composition
comprising a polyester thermoset resin formed from at least one bio-based
(natural origin) carbohydrate having a dextrose equivalent (DE) from 2 to 20
and at least one crosslinking agent (|| 10, 31). “In addition, the binder may
optionally include at least one extender to improve the binder’s appearance
and/or to lower the overall manufacturing cost” (| 65). The extender can be
a protein-containing biomass which can be soy flour (| 65).
Kelly discloses a formaldehyde-free aqueous binder composition
comprising at least one polycarboxyl emulsion copolymer having from 5
to 40 wt% of a carboxy acid monomer in the copolymer, at least one
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hydroxyamide crosslinker having at least two hydroxyl groups, at as least
one extender which is a polysaccharide and/or a vegetable protein 7—10,
43). “A particularly preferred protein extender is soy protein” (| 27).
The Appellants argue that there is no structural or other relationship or
similarity between Nissan’s composition and those of Hawkins or Kelly and
that, therefore, one of ordinary skill in the art would not have had a
reasonable expectation of success in using Hawkins’ or Kelly’s soy flour
extender in Nissan’s composition, particularly to improve the appearance
and/or lower the overall manufacturing cost as disclosed by Hawkins (1 65)
(App. Br. 11—16; Reply Br. 2).
“Obviousness does not require absolute predictability of success ....
For obviousness under § 103, all that is required is a reasonable expectation
of success.” In re O’Farrell, 853 F.2d 894, 903—04 (Fed. Cir. 1988).
Neither Hawkins nor Kelly indicates that the extender is a reactive
component. To the contrary, Hawkins indicates that the extender is an
alternative to an inorganic filler (| 65). Consequently, one of ordinary skill
in the art would have had a reasonable expectation of success in using soy
protein as an extender in aqueous binder compositions generally, including
that of Nissan.
The Appellants assert that Brady (14) indicates that “amino
group-containing substances such as proteins are known to undergo a
(browning) Maillard reaction with carbohydrates” (Reply Br. 3) and that
“[t]he binder compositions of HAWKINS include carbohydrate, wherefore
one is left to wonder how an extender such as soy protein can improve the
appearance of the binder compositions of HAWKINS” (id.).
The portion of Brady relied upon by the Appellants discloses (14):
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“[N]ew and less expensive bio-based binder materials have
recently been introduced to the insulation market. Many of
these materials cure to form highly colored thermosets, such as
those comprising saccharides and/or simple sugars which are
believed brown due to carmelization and/or Maillard reactions.
The Appellants do not establish that brown coloration necessarily is
undesirable. Regardless, Hawkins’ soy protein extender not only can
improve the binder’s appearance but also can lower its overall
manufacturing cost (| 65).
The Appellants assert that none of Kelly’s examples discloses a
vegetable protein as an extender (App. Br. 13—14).
That assertion is not well taken because Kelly is not limited to its
examples. See In re Fracalossi, 681 F.2d 792, 794 n.l (CCPA 1982); In re
Mills, 470 F.2d 649, 651 (CCPA 1972). Instead, all disclosures therein must
be evaluated for what they would have fairly suggested to one of ordinary
skill in the art. See In re Boe, 355 F.2d 961, 965 (CCPA 1966).
The Appellants assert that their aqueous binder composition provides
the unexpected effect of improved strength levels of mineral fiber products
(App. Br. 14—16).
That assertion is not well taken because the Appellants have not set
forth a side-by-side comparison of the claimed invention with the closest
prior art which is commensurate in scope with the claims and provided
evidence that the results would have been unexpected by one of ordinary
skill in the art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed.
Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
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1029, 1035 (CCPA 1980); In re Freeman, 474 F.2d 1318, 1324 (CCPA
1973); In reKlosak, 455 F.2d 1077, 1080 (CCPA 1972).
Rejection of clams 20—25, 29 and 30 under 35 U.S.C. § 103 over
Nissen in view of Hawkins, Kelly and Brady
The Appellants argue the claims as a group (App. Br. 16—26). We
therefore limit our discussion to one claim, i.e., claim 29. Claims 20—25
and 30 stand or fall with that claim. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).2
Brady discloses a formaldehyde-free aqueous binder composition
comprising a carbohydrate component including “up to 50 wt. %, preferably
up to 20 wt. %, of a mono- or di-saccharide, e.g., dextrose, sucrose or
fructose, based on the total weight of the carbohydrate component” 6, 7,
9).
The Appellants assert that Nissen’s co-binder carbohydrate is a
separate polymeric binder capable of acting independently, not a sugar
component of the aqueous binder composition made using a water-soluble
binder component and urea (App. Br. 19—20; Reply Br. 4—6).
Nissen’s co-binders appear to be components which are combined
with the water-soluble binder component and urea to form the aqueous
binder composition. Nissan does not indicate that the co-binders are
polymeric. The Appellants provide evidence that starch, carboxymethyl
cellulose, leguminous seed proteins, methyl silicone resin and latex can
function as co-binders (App. Br. 21—22), but the Appellants do not establish
that sugar or any other carbohydrate, by itself, can achieve Nissen’s desired
2 The Appellants assertions which are repeats of those made regarding the
rejection of claims 14—19, 26—28, and 31—33 are not persuasive for the
reasons given above regarding the rejection of those claims.
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binding of mineral fibers (1 5). Moreover, regardless of whether sugar as
Nissen’s carbohydrate functions with the water-soluble binder component
and urea or functions separately, it is a component of the aqueous binder
composition and, therefore, corresponds to the Appellants’ claim 14’s
aqueous binder composition’s sugar component.
The Appellants assert that Nissen’s “disclosure of ‘carbohydrates’
cannot anticipate the ‘sugar component’ or ‘reducing sugar’ recited in
instant independent claims 14 and 29” (App. Br. 22).
The rejection is based on obviousness, not anticipation. The
Appellants do not clearly argue that Nissen’s term “carbohydrate” would not
have suggested “sugar” to one of ordinary skill in the art.
For the above reasons we are not convinced of reversible error in the
rejections under 35 U.S.C. § 103.
Obviousness-type double patenting rejections
The Appellants assert that “one of ordinary skill in the art will readily
recognize that the compositions of the copending application on the one
hand and the compositions of HAWKINS and KELLY are completely
different as far as the components (starting materials) thereof are concerned,
wherefore there is no apparent reason to add to the former compositions a
substance such as soy protein whose use is not even exemplified in any of
HAWKINS and KELLY” (App. Br. 26, 27).
That assertion is not convincing for the reasons given above regarding
the rejection of claim 14.
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Rejection under 35 U.S.C. § 112, first paragraph,
written description requirement
A specification complies with the 35 U.S.C. § 112, first paragraph,
written description requirement if it conveys with reasonable clarity to those
skilled in the art that, as of the filing date sought, the inventor was in
possession of the invention. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563-64 (Fed. Cir. 1991); In reKaslow, 707 F.2d 1366, 1375 (Fed. Cir.
1983); In re Edwards, 568 F.2d 1349, 1351-52 (CCPA 1978); In re
Wertheim, 541 F.2d 257, 262 (CCPA 1976).
The Examiner finds that “[t]he original specification [p. 4] only
supports some of the embodiments of claims 26-28 (when both (3) and (4)
are absent), but not all of the possible embodiments of claims 26-28 (when
either (3) and/or (4) are present). The original specification does not support
any of the possible embodiments of claims 29 and 30 because component (3)
is required” (Ans. 3).
The Appellants’ claim 26 recites that “the composition comprises
from about 10 to about 50 wt. % of component (1) and from about 50 to
about 90 wt. % of component (2), based on a total amount of components (1)
and (2).”
Because the recited amounts of components (1) and (2) are based
upon the total amount of only those components, the Appellants’ original
disclosure (Spec. 4) indicates possession of those relative amounts
regardless of the presence of component (3) and/or component (4).
Accordingly, we reverse the rejection under 35 U.S.C. § 112, first
paragraph, written description requirement.
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DECISION/ORDER
The rejections of claims 14—19, 26—28 and 31—33 under
35 U.S.C. § 103 over Nissen in view of Hawkins and Kelly, claims 20-25,
29 and 30 under 35 U.S.C. § 103 over Nissen in view of Hawkins, Kelly and
Brady, and claims 14—33 provisionally on the ground of nonstatutory
obviousness-type double patenting over claims 15—34 of copending
Application No. 14/232,360 and over claims 1—20 of copending Application
No. 14/086,245 (issued as US 9,469,766 on Oct. 18, 2016) are affirmed.
The rejection of claims 26—30 under 35 U.S.C. § 112, first paragraph,
written description requirement is reversed.
It is ordered that the Examiner’s decision is affirmed.
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
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