Ex Parte Lee et al

Patent Trial and Appeal Board

Aug 30, 2017

13091309 (P.T.A.B. Aug. 30, 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.
13/091,309 04/21/2011 Haksu LEE 69828 4344
21898 7590 09/01/2017
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
WALTERS JR, ROBERT S
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAKSU LEE,
WILLIAM FINCH, CHARLES J. RAND,
BARRY WEINSTEIN, ROBERT L. SAMMLER,
and FRANCES J. TIMMERS
Appeal 2015-005727
Application 13/091,309
Technology Center 1700
Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and
DEBRA L. DENNETT, 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 from an
Examiner’s decision finally rejecting claims 1—9 and 11. Claim 10 is also
pending but has been withdrawn from consideration. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal is directed to an aqueous binder
composition comprising one or more diprimary diamine and one or more
Appeal 2015-005727
Application 13/091,309
reducing sugar, wherein the number of equivalents of primary amine relative
to the number of equivalents of carbonyl groups in the reducing sugar ranges
from 0.4:1 to 2:1. Representative Claim 1 is reproduced below from the
Claims Appendix of the Appeal Brief dated October 22, 2014 (“Br.”).
1. An aqueous binder composition comprising one or more
diprimary diamine, and one or more reducing sugar chosen
from a reducing monosaccharide, a reducing disaccharide, a
stereoisomer thereof, an optical isomer thereof, a hydroxy, halo,
alkyl, alkoxy or carbonyl substituted reducing monosaccharide,
a hydroxy, halo, alkyl, alkoxy or carbonyl substituted reducing
disaccharide, a dehydrated reducing monosaccharide, and a
dehydrated reducing disaccharide,
wherein the number of equivalents of primary amine
relative to the number of equivalents of carbonyl groups in the
reducing sugar ranges from 0.4:1 to 2:1.
Br. 9.
The following rejections are maintained on appeal:
(1) claim 11 under 35U.S.C. 112, fourth paragraph, as failing to
further limit the subject matter of the claim upon which is depends;
(2) claims 1—3 and 9 under 35 U.S.C. 102(b) as anticipated by
Nelson et al.;1
(3) claims 1—3 and 9 under 35 U.S.C. 103(a) as unpatentable over
Carroll et al.;2
(4) claims 4—6 and 8 under 35 U.S.C. 103(a) as unpatentable over
Carroll in view of Kelly et al.;3 and
1 US 2006/0204589 Al, published September 14, 2006 (“Nelson”).
2 US 7,494,566 B2, issued February 24, 2009 (“Carroll”).
3 US 2010/0222459 Al, published September 2, 2010 (“Kelly”).
2
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Application 13/091,309
(5) claim 7 under 35 U.S.C. 103(a) as unpatentable over Carroll in
view of Kelly and Clamen et al.4
B. DISCUSSION
1. Rejection (1)
Claim 11 depends from claim 1 and recites that the diprimary diamine
is chosen from, inter alia, aminoguanidine. Br. 10. According to the
Examiner, claim 11 does not further limit the subject matter of claim 1
because aminoguanidine is not a diprimary diamine. Final 3;5 Ans. 2.6
The Appellants argue that they “are their own lexicographer and are
entitled to use other than the ordinary meaning of the term ‘diprimary
diamine.’” Br. 4. In that regard, the Appellants argue that the Specification
at page 2, lines 22—24 and page 7, lines 15—18 “consistently includes
aminoguanidine and its salts within a ‘diprimary diamine.’” Br. 4.
In response, the Examiner maintains that “for appellant to be their
own lexicographer they must clearly set forth in the specification whatever
the special meaning of their term is. In this case, appellants have not clearly
set forth in the specification what special meaning they are applying to the
term ‘diprimary diamine.’” Ans. 6—7.
To the extent that the Appellants do not provide a formal definition of
the term “diprimary diamine,” the Specification expressly discloses that
“diprimary diamines are chosen from aminoguanidine” in one embodiment
of the invention. Spec. 2,11. 22—24. Thus, on this record, the recitation of
4 US 7,579,289 B2, issued August 25, 2009 (“Clamen”).
5 Final Office Action dated May 22, 2014.
6 Examiner’s Answer dated March 4, 2015.
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Application 13/091,309
“aminoguanidine” in claim 11 further limits the “diprimary diamine” recited
in claim 1.
The § 112, fourth paragraph, rejection of claim 11 is not sustained.
2. Rejection (2)
Referring to Nelson Table 19, the Examiner finds Nelson describes an
aqueous composition comprising 1 mM of lysine and 3.2 mM of a reducing
sugar (ribose), wherein the ratio of amine groups to carbonyl groups is
within the claimed range. Final 4; Ans. 3.
The Appellants argue that the reducing sugars in Nelson Table 19 are
not limited to ribose (3.2 mM) but rather include each of mannose (10 mM),
glucose (3 mM), galactose (20 mM), maltose (1 mM), and glucuronic acid
(113.6 mM), totaling at least 147.8 mM of reducing sugars. The Appellants
argue that the number of equivalents of primary amine relative to the
number of equivalents of carbonyl groups in the reducing sugar is less than
0.01:1, which is “far lower than the claimed range of from 0.4:1 to 2:1.” Br.
5.
In response, the Examiner concludes:
[T]he claim simply recites that the composition must include
one or more reducing sugars and one or more diamines, and
that the number of equivalents of the primary amine relative to
the number of carbonyl groups of the reducing sugar is in the
range as claimed. The claims do not require that the total
number of primary amine groups to any and all carbonyl groups
from all reducing sugars in the composition be in the range as
claimed.
Ans. 7—8 (emphasis omitted).
Claim 1 recites that the composition comprises “one or more
diprimary diamine, and one or more reducing sugar . . . wherein the number
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Application 13/091,309
of equivalents of primary amine relative to the number of equivalents of
carbonyl groups in the reducing sugar ranges from 0.4:1 to 2:1Br. 9. We
interpret “the reducing sugar” as referring to the “one or more reducing
sugar” (i.e., all of the reducing sugar) in the composition. Thus, contrary to
the Examiner’s interpretation of claim 1, we conclude that “the number of
equivalents of carbonyl groups in the reducing sugar” refers to all of the
carbonyl groups in all of the reducing sugar in the claimed composition. Br.
9 (emphasis added).
In the rejection on appeal, the Examiner does not find that the number
of equivalents of primary amine relative to the number of equivalents of all
of the carbonyl groups in all of the reducing sugar in Nelson’s composition
(Nelson Table 19) falls within the claimed range.7 Therefore, the § 102(b)
rejection is not sustained.
3. Rejection (3)
The Examiner finds Carroll discloses an aqueous binder comprising
an amine and a reducing sugar. Final 5 (citing Carroll, col. 2,11. 54—67 and
col. 3,11. 10—18). The Examiner finds Carroll does not “teach the amine
specifically being a diprimary diamine.” Final 6. The Examiner, however,
finds “Carroll teaches that the amine can be an amine with at least two
amine groups, all of which can be primary.”8 Final 6 (citing Carroll, col. 2,
11. 10-24); see also Ans. 4.
7 Consistent with the Appellants’ arguments, we find that the reducing sugar
in the composition described in Nelson Table 19 is not limited to ribose but
rather includes ribose, fructose, glucose, galactose, mannose, lactose,
maltose, and allose. See Spec. 6,11. 18—29.
8 The Examiner also finds that Carroll does not expressly teach the number
of equivalents of primary amine relative the number of equivalents of
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Application 13/091,309
In response, the Appellants argue that Carroll does not disclose any
diprimary diamine. Br. 6 (citing Carroll, col. 2,11. 10—24). The Appellants
argue that “[i]n contrast to a diprimary diamine, the term ‘poly(primary
amine)’ means any compound having three or more primary amine groups.”
Br. 6.
Carroll discloses that “[i]n one aspect, the present invention provides
a composition comprising at least one hydrophilic polymer containing
primary (-NH2) and/or secondary (-NHR) amine groups (that is, hydrophilic
polymer contains or includes at least two groups which are independently
the same or different a primary amine group or a secondary amine group).”
Carroll, col. 2,11. 10—15 (emphasis added). The Examiner finds that that
disclosure in Carroll “teaches the use of a range of compounds inclusive of
diprimary diamines.” Ans. 8. Significantly, the Appellants do not direct us
to any error in the Examiner’s finding.
The Appellants also argue that “ample data in the instant specification
confirms the unexpected superiority of the instantly recited combination of a
reducing sugar and diprimary diamine in an aqueous binder composition.”
carbonyl groups in the reducing sugar is within the range recited in claim 1.
Final 5—6. The Examiner, however, finds that “Carroll makes clear that the
amount of amines to reducing sugar is a result-effective variable, whereby
altering the ratio alters the final properties of a gel resulting from the
composition.” Final 6 (citing Carroll, col. 3,11. 54—63). Therefore, the
Examiner concludes that it would have been obvious to one of ordinary skill
in the art “to choose the instantly claimed ranges through process
optimization.” Final 6 (citing In re Boesch, 617 F.2d 272 (CCPA 1980)).
The Appellants do not direct us to any error in the Examiner’s findings of
fact or conclusion of obviousness.
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Application 13/091,309
Br. 6—7. For support, the Appellants rely on Table 2 at page 14 of the
Specification. Br. 7.
In response, the Examiner finds that the Appellants’ evidence is not
commensurate in scope with the claimed invention. In particular, the
Examiner finds that “[t]he evidence appellant points to is for only three
different diamines and two reducing sugars. This is not commensurate in
scope with the claims, which recite any ‘diprimary diamine’ and a broad
range of different types of reducing sugars.”9 Ans. 8—9. The Examiner’s
finding is supported by the record.
On balance, the weight of the evidence supports the Examiner’s
conclusion of obviousness. Therefore, the § 103(a) rejection of claim 1 is
sustained.
The Appellants do not present arguments in support of the separate
patentability of any of claims 2—9. Therefore, the § 103(a) rejections of
claims 2—9 also are sustained.
C. DECISION
The Examiner’s decision to reject claim 11 under 35 U.S.C. 112,
fourth paragraph, is reversed.
The Examiner’s decision to reject claims 1—3 and 9 under 35 U.S.C.
102(b) as anticipated by Nelson is reversed.
The Examiner’s decision to reject claims 1—3 and 9 under 35 U.S.C.
103(a) as unpatentable over Carroll is affirmed.
9 See In re Tiffin, 448 F.2d 791, 792 (CCPA 1971) (“objective evidence of
non-obviousness must be commensurate in scope with the claims which the
evidence is offered to support”).
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Application 13/091,309
The Examiner’s decision to reject claims 4—6 and 8 under 35 U.S.C.
103(a) as unpatentable over Carroll in view of Kelly is affirmed.
The Examiner’s decision to reject claim 7 under 35 U.S.C. 103(a) as
unpatentable over Carroll in view of Kelly and Clamen 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)(1).
AFFIRMED-IN-PART
8