Ex Parte Karppi et al

Patent Trials and Appeals Board

Jan 30, 2019

13697726 - (D) (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/697,726 01/17/2013 Asko Karppi
17951 7590 02/01/2019
Thomas Horstemeyer/Kemira
3200 Windy Hill Rd SE
Suite 1600E
Atlanta, GA 30339
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.
221105-1975 3335
EXAMINER
CALL,DOUGLASBRYANT
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
02/01/2019 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):
uspatents@tkhr.com
ozzie. liggins@tkhr.com
docketing@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASKO KARPPI,
VELI-MATTI VUORENPALO, LEIF ROBERTSEN,
KARI PARVIAINEN, OLLI DAHL,
and KARI V ANHAT ALO
Appeal2017-010587
Application 13/697,726 1
Technology Center 1700
Before ADRIENE LEPIANE HANLON, BRIAND. RANGE, and
MICHAEL G. McMANUS, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134(a) from an Examiner's
decision finally rejecting claims 1-12 and 17-34. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 The real party in interest is said to be KEMIRA OYJ. Appeal Brief dated March
20, 2017 ("App. Br."), at 2.
Appeal2017-010587
Application 13/697,726
Claim 1, the sole independent claim on appeal, is reproduced below from the
Claims Appendix to the Appeal Brief. The limitation at issue is italicized.
1. A process for producing microcellulose comprising:
subjecting fibrous cellulosic material having fibre length of 0.2-
5 mm, lignin content of 5% or less, and hemicellulose content from 3
to 15% by weight to acid hydrolysis at a temperature from 110°C to
less than 140°C and at a consistency of at least 8% on dry weight of
the fibrous cellulosic material,
App. Br. 13.
wherein the amount of added acid is from 0.5 to 1.5% on
dry weight of the fibrous cellulosic material,
wherein the acid hydrolysis is carried in a reactor
compnsmg a mixer,
wherein the produced microcellulose has an average size
of 30 - 100 µm,
wherein the produced microcellulose is obtained without
a subsequent mechanical treatment step; and
wherein a yield of the microcellulose is at least 90%.
The Examiner maintains the following grounds of rejection on appeal:
(1) claims 1, 2, 4--11, 17, 19-21, 23-26, 29, and 30 under 35 U.S.C.
§ I03(a) as unpatentable over Frangioni et al. 2 in view of Obae et al., 3 Nguyen et
al., 4 Anderson et al., 5 Luo, 6 and Schaible et al. 7 as evidenced by Hanna et al. 8;
2 WO 2010/131088 Al, published November 18, 2010 ("Frangioni").
3 WO 02/02643 Al, published January 10, 2002 (WO 643). The Examiner relies
on US 2010/0291161 Al, published November 18, 2010 ("Obae") as evidence of
the WO 643 disclosure. The Appellants do not object.
4 US 7,037,405 B2, issued May 2, 2006 ("Nguyen").
5 US 6,096,152, issued August 1, 2000 ("Anderson").
6 US 2006/0219376 Al, published October 5, 2006 ("Luo").
7 US 2003/0089465 Al, published May 15, 2003 ("Schaible").
8 US 6,228,213 Bl, issued May 8, 2001 ("Hanna").
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Application 13/697,726
(2) claims 3 and 18 under 35 U.S.C. § 103(a) as unpatentable over
Frangioni in view ofObae, Nguyen, Luo, Schaible, and Anderson as evidenced by
Hanna, and as further evidenced by Hilton; 9
(3) claims 12, 22, 27, and 28 under 35 U.S.C. § 103(a) as unpatentable
over Frangioni in view of Obae, Nguyen, Luo, Schaible, and Anderson as
evidenced by Hanna, and further in view of Hanna and Javed et al.; 10
(4) claim 31 under 35 U.S.C. § 103(a) as unpatentable over Frangioni in
view of Obae, Nguyen, Luo, Schaible, and Anderson as evidenced by Hanna, and
further in view of Prough et al. 11 and Gullichsen; 12
(5) claims 32-34 under 35 U.S.C. § 103(a) as unpatentable over
Frangioni in view ofObae, Nguyen, Luo, Schaible, and Anderson as evidenced by
Hanna, and further in view ofMak; 13
(6) claims 1-10, 12, and 17-34 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 1, 3, 6, 7, 9-12,
14--17, 20, 24--40, 42--46, 48, and 50 of US 9,469,695 in view ofFrangioni as
evidenced by Hilton, Schaible, Mcllroy et al., 14 Luo, Gullichsen, Nguyen, and
Anderson; and
9 US 4,126,706, issued November 21, 1978 ("Hilton").
10 Muhammad Asif Javed & Ulf Germgard, Chlorite & Kraft Reactivity, 6
BioResources 25 81-2591 (2011) ("Javed").
11 US 5,401,361, issued March 28, 1995 ("Prough").
12 6A Papermaking Science and Technology A616-A665 (Johan Gullichsen &
Hannu Paulapuro eds. 1999) ("Gullichsen").
13 Andrew Tsz-Chung Mak, Solid-Liquid Mixing in Mechanically Agitated Vessels
(June 1992) (Ph.D. dissertation, University College London) ("Mak").
14 US 5,820,830, issued October 13, 1998 ("Mcllroy").
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Application 13/697,726
(7) claims 1-12 and 17-34 on the ground of nonstatutory obviousness-
type double patenting as unpatentable over claims 1, 2, 4, 12, 13, 15, and 17-33 of
US 9,096,692 in view ofFrangioni, Luo, Gullichsen, Nguyen, and Anderson.
B. DISCUSSION
1. Rejections (1}----(5)
The Examiner finds that Frangioni discloses an acid hydrolysis process for
preparing microcrystalline cellulose (MCC) comprising the steps of:
combining 20 - 22.2 weight percent paper-grade cellulose in water
(Table 1) (i.e., consistency) derived from bleached wood pulp from
eucalyptus or pine ( a hardwood and softwood respectively and also a
fibrous cellulosic material) ... with hydrochloric acid and mixed in a
stirred reactor ... at a temperature of between 90 and 160 degrees
Celsius for between 1 hr/40 minutes and 5 hours ... thereby
overlapping the claimed range.
Final Act. 4 ( citations omitted). 15 The Examiner also finds that Frangioni teaches
an acid range of from about 0.0085 to 23.2%. Final Act. 5.
The Examiner finds that "the process of Frangioni discloses all the process
conditions of the instant case while not disclosing the physical and chemical
makeup of the raw materials and products." Ans. 24. 16 The Examiner relies on
Nguyen to teach the claimed cellulose consistency (Final Act. 5---6), Obae as
evidenced by Hanna to teach the claimed particle size (Final Act. 7-8), Anderson
to teach the claimed fiber length (Final Act. 8), and Luo to teach the claimed
hemicellulose and lignin contents (Final Act. 8-9).
15 Final Office Action dated December 14, 2016.
16 Examiner's Answer dated June 5, 2017.
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The Examiner also finds that "Frangioni is silent on ... the yield of the
MCC." 17 Final Act. 5. The Examiner, however, finds:
Schaible discloses a process for producing microcrystalline
cellulose from bleached or unbleached pulps obtained from softwoods
or hardwoods, Kraft processes, sulphite process or steam explosion ..
. wherein hydrolysis is conducted on the pulps at an elevated
temperature producing MCC with a yield of at least 95% ... thereby
falling within or touching the instantly claimed ranges. Although
Schaible does not utilize any additional acid, it is disclosed that the
hydrolysis can be sped up by the addition of acids ....
Final Act. 6 ( citations omitted).
The Examiner concludes:
[I]t would have been obvious to one of ordinary skill in the art at the
time of the invention to expect the MCC yield of Frangioni to fall
within the instantly claimed ranges as suggested by Schaible as the
processes of Frangioni, Nguyen and Schaible are similar in nature.
Final Act. 7 ( emphasis added).
The Appellants argue that "[t]he processes of Frangioni, Nguyen and
Schaible are so different that it cannot be concluded that yields of one process
would be similar to yields in another process." 18 App. Br. 9 (emphasis omitted).
More specifically, the Appellants argue that the hydrolysis steps disclosed in
Schaible and Frangioni are different. The Appellants argue that "[i]n Frangioni the
temperature is 90-160 °C and hydrolysis time is 2-5 hours. In Schaible the
treatment [is] at much higher temperatures 200-235 °C for a shorter time of 4-25
17 We note that Frangioni discloses that "[t]he production yield of microcrystalline
cellulose is typically comprised between 82% and 84%," which is lower than the
claimed yield. Frangioni 8, 11. 15-16.
18 The Examiner relies on Schaible, not Nguyen, to show that one of ordinary skill
in the art would have expected the process of Frangioni to yield an amount of
microcellulose within the range recited in claim 1. See Final Act. 6; Ans. 26.
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mm. With these differences, one of skill in the art would not presume that the
yields would be similar." App. Br. 9 ( emphasis omitted).
The Appellants' argument is persuasive of reversible error. In order for
Schaible to be probative of the yield expected by or inherent in Frangioni's
process, the Examiner must show that Schaible' s process is substantially the same
as Frangioni's process. In this case, the Examiner summarily finds that the
processes are "similar in nature" 19 but does not make any specific factual findings
demonstrating that the processes disclosed in Frangioni and Schaible are in fact
similar. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (examiner bears
the initial burden of presenting a prima facie case ofunpatentability).
In the Answer, the Examiner finds that "it is known to the ordinary skilled
artisan that the use of higher temperatures frequently requires the use of lower
reaction times to prevent degradation." Ans. 27. Nonetheless, the Examiner has
failed to establish, in the first instance, that the time and temperature disclosed in
Schaible is equivalent to the time and temperature in Frangioni' s process, whereby
one of ordinary skill in the art would have expected the two processes to yield
substantially the same amount of microcellulose.
In the Answer, the Examiner also finds that "[a]s the process ofFrangioni is
essentially identical to the instant process, the ordinary skilled artisan would expect
similar yields from Frangioni as to the instant case." Ans. 24.
As correctly pointed out by the Appellants, the Examiner acknowledges that
"Frangioni fails to disclose a starting fibrous cellulosic material having at least a
0.2-5 mm fiber length, a :S 5 % lignin content, and a 3-15 % hemicellulose
19 Final Act. 7.
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content." Reply Br. 3 (citing Ans. 5); 20 see also Ans. 24 (acknowledging that
Frangioni does not disclose "the physical and chemical makeup of the raw
materials and products" recited in claim 1 ). Thus, a preponderance of the evidence
does not support the Examiner's finding that Frangioni's process is essentially
identical to the Appellants' claimed process.
For the reasons set forth above, the obviousness rejection of claim 1 is not
sustained. 21
The Examiner does not rely on the remaining prior art of record to cure the
deficiencies in the rejection of claim 1 identified above. Therefore, the
obviousness rejections of dependent claims 2-12 and 17-34 also are not sustained.
See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) ("Dependent claims are
nonobvious under section 103 if the independent claims from which they depend
are nonobvious.").
2. Rejection (6)
The Appellants argue:
The claims of [US 9,469,695 ("US 695")] do not teach or
suggest at least the claimed fiber length, lignin content or
hemicellulose content of the starting fibrous cellulosic material, and
does not teach a microcellulose yield of at least 90% as set forth in
claim 1. As discussed above, the cited references also fail to disclose,
teach, or suggest the combination of these features with the claimed
yield with a reasonable expectation of success.
App. Br. 11.
20 Reply Brief dated August 7, 2017.
21 The Appellants also disagree with the Examiner's finding that Schaible discloses
a microcellulose yield within the range recited in claim 1. App. Br. 7-9. Based on
our reasons for reversal, it is not necessary to address the Appellants' argument.
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The Appellants' argument is persuasive of reversible error. In the rejection
on appeal, the Examiner does not find that the claims of US 695 recite a
microcellulose yield within the claimed range. See Final Act. 19--21; Ans. 18-20.
Rather, the Examiner finds that "[ t ]he instant invention also claims a process yield
when utilizing pure cellulose as the starting material which is disclosed by
Schaible who discloses a yield of MCC of at least 95% [0025]." Ans. 19. The
Examiner concludes that it would have been obvious to one of ordinary skill in the
art "to utilize pure cellulose to obtain the highest product yields." Ans. 19-20.
The Examiner, however, does not explain, in any detail, why modifying the
claimed process in US 695 with pure cellulose would have been expected to yield
or inherently yields microcellulose within the range recited in claim 1 (i.e., at least
90%). For that reason, rejection (6) is not sustained.
3. Rejection (7)
The Examiner states that "the limitations of the instant claims are met by
claims 1, 4, 5, 15, 17-19, 20 and 21 in view of Anderson, Gullichsen and Luo."
Final 22.
The Appellants argue that "the claims of [US 9,096,692 ("US 692")] do not
teach or suggest an MCC yield of at least 90% as set forth in claim 1 of the present
application." App. Br. 12. The Appellants' argument is supported by the record.
In the Answer, the Examiner concludes that "the MCC yield is obvious when
applying the claims of '692 to the instant claims in view of the cited prior art."
Ans. 28. The Examiner, however, does not explain, in any detail, why the claimed
yield would have been obvious to one of ordinary skill in the art based on the
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claims of US 692 in view ofFrangioni, Luo, Gullichsen, Nguyen, and Anderson. 22
See Oetiker, 977 F .2d at 1445 ( examiner bears the initial burden of presenting a
prima facie case of unpatentability). For that reason, rejection (7) is not sustained.
C. DECISION
The Examiner's decision is reversed.
REVERSED
22 Notably, in the previous rejections, the Examiner relied on Schaible to
demonstrate the obviousness of the claimed microcellulose yield. Rejection (3),
however, does not include Schaible.
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