Ex Parte Naerum et alDownload PDFPatent Trial and Appeal BoardMar 27, 201713809362 (P.T.A.B. Mar. 27, 2017) Copy Citation 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. 13/809,362 02/19/2013 Lars Naerum 3672-P50037 1324 13897 7590 Abel Law Group, LLP 8911 N. Capital of Texas Hwy Bldg 4, Suite 4200 Austin, TX 78759 03/29/2017 EXAMINER ABU ALI, SHUANGYI ART UNIT PAPER NUMBER 1731 NOTIFICATION DATE DELIVERY MODE 03/29/2017 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 LARS NAERUM and POVL NISSEN Appeal 2016-001467 Application 13/809,362 Technology Center 1700 Before RAE LYNN P. GUEST, GEORGE C. BEST, and DONNA M. PRAISS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 18—37 as follows3: 1. Claims 29 and 30 under 35 U.S.C. § 112 12 as indefinite; 1 In this decision, we refer to the Specification filed Jan. 9, 2013 (“Spec.”), the Final Office Action appealed from mailed July 10, 2014 (“Final Act.”), the Appeal Brief filed Feb. 23, 2015 (“App. Br.”), the Examiner’s Answer mailed Sept. 30, 2015 (“Ans.”), and the Reply Brief filed Nov. 16, 2015 (“Reply Br.”). 2 The real party in interest is identified by Appellants as Rockwool International A/S. App. Br. 3. 3 We do not include the rejections withdrawn by the Examiner. Ans. 6—7. Appeal 2016-001467 Application 13/809,362 2. Claims 18—30 and 33—354 under 35 U.S.C. § 103(a) over Hawkins5; and 3. Claims 31 and 32 under 35 U.S.C. § 103(a) over Hawkins and Hansen.6 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The subject matter on appeal relates to a bonded mineral fiber product, which is used in thermal or acoustical insulation products and generally produced by converting a melt made of suitable raw materials to fibers, spraying the fibers with a binder solution, randomly depositing the fibers as a mat or web, and curing in a curing oven. Spec. 1:3—18. Claim 18, the sole independent claim, is illustrative: 18. A bonded mineral fiber product exhibiting high fire resistance in accordance with Class A1 of Standard EN 13501-1 as well as improved punking resistance, wherein the mineral fiber product comprises man-made vitreous fibers (MMVF) bound by a cured binder composition, the non-cured binder composition comprising (a) a sugar component, and one or both of (b) a polycarboxylic acid component and an alkanolamine, and (c) a reaction product of a polycarboxylic acid component and an alkanolamine, 4 The Examiner includes claim 32 in the statement of the rejection on page 3 of the Answer, however, claim 32 is not discussed in the body of the rejection, therefore this rejection does not pertain to claim 32. 5 Hawkins et al., US 2011/0086567 Al, pub. Apr. 14, 2011 (“Hawkins”). Hawkins was provisionally filed as US Ser. No. 61/250,187 on Oct. 9, 2009 (“Hawkins ’187”). 6 Hansen et al., US 2006/0111480 Al, pub. May 25, 2006 (“Hansen”). 2 Appeal 2016-001467 Application 13/809,362 an amount of (a) being from 42 % to 72 % by weight, based on a total dry matter weight of binder components. Claims App’x at App. Br. 22. Dependent claim 29 recites “wherein (a) comprises a reducing sugar selected from high DE [dextrose equivalent] glucose syrup, high-fructose syrup, and mixtures thereof.” Id. at 23. Dependent claim 30 recites “wherein the polycarboxylic acid component is selected from dicarboxylic, tricarboxylic, tetracarboxylic, pentacarboxylic, and like polycarboxylic acids, and anhydrides, salts, and combinations thereof.” Id. at 24. Appellants do not separately argue the patentability of the claims for each rejection. App. Br. 7—13; Reply Br. 2—7. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), claims 19—27, 30, and 33—34 will stand or fall together with independent claim 18. OPINION Rejection 1: Definiteness Regarding claim 1, the Examiner finds that claim 29 is indefinite because “[t]he term ‘high’ is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.” Final Act. 2. The Examiner also finds that claim 30 is indefinite because the term “like” renders the scope of the claim(s) unascertainable as it “include(s) elements not actually disclosed (those encompassed by ‘or the like’).” Id. Appellants contend that the Examiner’s rejection of claim 29 is in error because pages 5, 7, and 8 of the Specification “make it clear to one of ordinary skill in the art what the meaning of the terms ‘high DE glucose 3 Appeal 2016-001467 Application 13/809,362 syrup’ and ‘high-fructose syrup’ in claim 29 is.” App. Br. 6. Regarding claim 30, Appellants also contend that one of ordinary skill in the art will understand that a polycarboxylic acid that is like the polycarboxylic acids specifically mentioned in claim 30 is a polycarboxylic acid that has more carboxylic acid groups than the latter polycarboxylic acids but is otherwise similar to these acids, i.e., is a monomeric aliphatic, cycloaliphatic and/or aromatic polycarboxylic acid like the polycarboxylic acids recited in [dependent] claims 31 and 32. Id. Regarding claim 29, the Examiner responds that page 5 of the Specification provides multiple preferred dextrose equivalent DE ranges and maintains that the Specification does not provide a standard for ascertaining the requisite degree. Ans. 7. Regarding claim 30, the Examiner maintains that the term “like” is indefinite because it “include(s) elements not actually disclosed.” Id. We are persuaded by Appellants’ argument regarding the term “like” in claim 30 because even though the term encompasses polycarboxylic acids not explicitly recited in the claim, it broadly claims polycarboxylic acids similar to those recited. Claim 30 recites a list of carboxylic acids with the prefixes di-, tri-, tetra-, penta- followed by “and like polycarboxylic acids.” App. Br. 24 (Claims Appendix). It does not require speculation to determine “like polycarboxylic acids” given such a list. Thus, the use of the term “like” makes claim 30 broad,7 but not indefinite. The breadth of a claim is 7 If prosecution continues in this application, the Examiner should consider whether claim 32, which indirectly depends from claim 30, further limits the claims in compliance with 35U.S.C. § 112 14. 4 Appeal 2016-001467 Application 13/809,362 not to be equated with indefiniteness. See, e.g., In re Miller, 441 F.2d 689, 693 (CCPA 1971). We are not persuaded by Appellants’ argument regarding the term “high” in claim 29 because the portions of the Specification cited by Appellants do not define the term. Instead, the Specification includes multiple ranges for a preferred dextrose equivalent. Spec. 5 (“preferred sugar component. . . having a dextrose equivalent DE of 40 to 100, preferably 50 to 100, more preferably 86 to 100, and most preferably 90 to 100.”), 7 (“having a DE of from 55 to 70”), 8 (“provided with a DE around 55”). The Examiner’s finding that there is no standard by which the requisite degree for the term “high” can be ascertained is therefore consistent with the Specification. Accordingly, we affirm the Examiner’s rejection of claim 29 as indefinite under 35U.S.C. § 112 12. In sum, Appellants have persuaded us of reversible error in the Examiner’s determination that the term “like” recited in claim 30 is indefinite, but Appellants have not persuaded us of reversible error in the Examiner’s determination that the term “high” recited in claim 29 is indefinite. Rejection 2: Obviousness over Hawkins The Examiner finds that claims 18—30, 33, and 34 are unpatentable under 35 U.S.C. § 103(a) over Hawkins. Final Act. 3—5. In response to Appellants’ argument that Hawkins does not qualify as prior art to the pending claims (App. Br. 7), the Examiner issued a new ground of rejection over Hawkins that includes citations to the earlier-filed provisional application (Hawkins ’187). Ans. 3—5. The Examiner’s new ground of 5 Appeal 2016-001467 Application 13/809,362 rejection over Hawkins also includes claim 35 in addition to claims 18—30, 33, and 34. Claim 18 Regarding claim 18, the Examiner finds that Hawkins discloses a glass fiber bounded with a binder composition that comprises a carbohydrate and crosslinking agent. Ans. 3 (citing Hawkins 1 32; Hawkins ’187 132). The Examiner further finds that “the carbohydrate may be selected from monosaccharides (e.g., xylose, glucose, and fructose), disaccharides (e.g., sucrose, maltose, and lactose), oligosaccharides (e.g., glucose syrup and fructose syrup), and polysaccharides and water-soluble polysaccharides (e.g., pectin, dextrin, maltodextrin, starch, modified starch, and starch derivatives).” Id. The Examiner also finds that Hawkins discloses that suitable examples of crosslinking agents include “polycarboxylic acids (and salts thereof), anhydrides, [monomeric] and polymeric polycarboxylic acid with anhydride (i.e., mixed anhydrides), citric acid (and salts thereof, such as ammonium citrate) and triethanolamine et al.” Id. (citing Hawkins ^fl[ 35, 61; Hawkins ’187 135). The Examiner further finds that Hawkins discloses that “[t]he content of the sugar in the binder composition is in an amount of 60-95wt% of the binder[,]” which overlaps the recited range of “42% to 72% by weight.” Id. at 4 (citing Hawkins 134; Hawkins ’187 134). Appellants’ argument concerning the Examiner’s rejection of claim 18 is that the list of suitable crosslinking agents disclosed in Hawkins ’187 is “extremely broad” and that “the (completely different) nature of polycarboxylic acids and alkanolamines also has to be taken into account” because “the carboxylic acid groups of the polycarboxylic acid will react 6 Appeal 2016-001467 Application 13/809,362 with the amino groups (and also the hydroxyl groups) of the alkanolamine.” Reply Br. 2—3. According to Appellants, there is no expectation of success because “[o]ne of ordinary skill in the art would not know whether a resultant reaction product is still suitable as crosslinking agent for the carbohydrate component of the binder of [Hawkins ’ 187].” Id. at 3. Appellants also assert that Hawkins ’ 187 does not teach or suggest “any advantage would be associated with the use of more than one (type of) crosslinking agent” and that the Examples in Hawkins ’187 only employ monomeric or polymeric polycarboxylic acids in the form of polyacrylic acid resins and an aliphatic polycarboxylic acid (citric acid) individually. Id. at 4. Appellants also argue that neither Hawkins nor Hawkins ’187 disclose the properties of fire resistance and improved punking resistance recited in the preamble of claim 18. App. Br. 9—10. Appellants also assert that neither disclosure teaches a substantially similar structure or chemical composition. Id. at 10. Appellants further contend that Examples 22—37 in Table 1 of the Specification evidence “the favorable results regarding fire resistance and punking resistance afforded by the mineral fiber products according to the present invention are unexpected.” Id. at 10—11 (emphasis omitted). According to Appellants, Table 1 shows that Examples 24—34 meet the claimed sugar content as well as “have a Fire Class A1 rating and show no punking” while Examples 22, 23, and 35—37, which have a sugar content outside of the claimed range, “result[] either in a Fire Class A2 rating ... or in punking.” Id. at 10—11 (emphasis omitted). The Examiner responds to the Appellants’ argument that the prior art reference discloses a long list by summarizing the disclosure in Hawkins 7 Appeal 2016-001467 Application 13/809,362 ’187 of combining a sugar (Hawkins ’187 1 32) and a crosslinking agent (Hawkins ’187 135) and finding that “using carboxylic acid such as citric acid and alkanolamine such as triethanolamine as [crosslinking agents] is obvious since it has been held that [‘it] is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition [which is] to be used for the very same purpose.’” Ans. 8 (quoting In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980)). The Examiner also responds that the lack of a working example that uses a carboxylic acid and an alkanolamine as crosslinking agent in Hawkins ’ 187 does not negate obviousness because “a reference is not limited to the teaching in its preferred embodiment” and may be used for all that it teaches. Id. at 9 (citing, inter alia, In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). Regarding the fire resistance and punking resistance properties, the Examiner finds that “the claimed properties are deemed to naturally flow from the structure in the prior art combination, since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention” and the burden to prove otherwise shifted to Appellants. Id. at 10. As to the alleged unexpected results shown in Table 1 of the Specification, the Examiner finds that “applicants should compare a sufficient number of tests both inside and outside (i.e. as well as the upper and lower limits) the claimed range to show the criticality of the claimed range” to be commensurate in scope with the subject matter claimed and to show a difference that is really unexpected rather than simply an optimized improvement based on the teachings of the prior art. Id. at 10—11. The Examiner also finds that the components of the compositions in Examples 8 Appeal 2016-001467 Application 13/809,362 22 and 35—37 are different from Examples 25—34 in addition to the difference in sugar content, therefore it has not been shown whether “the property difference is due to the sugar content or different components used in the composition.” Id. at 11. We are not persuaded by Appellants’ arguments because, based on this record, the Examiner’s findings that Hawkins ’187 discloses the required sugar component in an overlapping range, the required polycarboxylic acid component, and the required alkanolamine are all supported by the record, and Appellants have not adequately demonstrated (1) one of ordinary skill in the art would not have had a reasonable expectation of success of forming the claimed bonded mineral fiber product based on the teachings of Hawkins ’187 or (2) that a resulting product having an A1 fire rating and no punking is an unexpected result. We are not persuaded that the breadth of possible crosslinking agents disclosed by Hawkins ’ 187 necessarily establishes that there would be no expectation of success because Hawkins ’ 187 discloses multiple options for a two component system (carbohydrate and crosslinking agent) which the skilled artisan would have expected to be substantially equal alternatives in the art. Appellants do not argue that the claimed polycarboxylic acid component and alkanolamine, and/or the reaction product of the two, are distinguishable from the crosslinking agent component of Hawkins ’ 187’s mineral fiber product. Therefore, the record does not show any difficulty in understanding or following Hawkins ’ 187’s teachings concerning the combination required by claim 18 and disclosed by Hawkins ’ 187 for forming the crosslinking agent component. See In re Sivaramakrishnan, 673 F.2d 1383, 1385 (CCPA 1982) (prior art reference enumerating multiple 9 Appeal 2016-001467 Application 13/809,362 salts in a chemical mixture containing two components, resin and salt, held to be anticipatory). We also are not persuaded that Examples 22—37 in Table 1 of the Specification evidence unexpected results on the basis of fire resistance and punking resistance. Although Appellants have indicated that punking and low fire resistance is common, Appellants have not explained why an A1 rated fire resistant and non-punking product necessarily would be “unexpected” even if “uncommon.” From the Appellants’ discussion, we are led to believe that at least some carbohydrate containing materials with an A1 class fire rating and no punking have existed in the art prior to the invention because Appellants admit that they are currently used in the art. See Spec. 2:13—29 (stating that “punking may occur” and that “obtaining highly fire resistant mineral wool products” is difficult, but not unknown or unexpected) (emphasis added). Appellants also have not presented evidence of unexpected results that is commensurate with the full scope of the claimed components and amounts claimed. The Examiner’s finding (Ans. 11) that the composition components of comparative Examples 35—37 differ from the components for Examples 25—34 is supported by the record. Spec. 18—19 (Table 1). Moreover, the B1 amount in the binder composition differs as between Example 24 (58%) and comparative Example 35 (27%). Id. Thus, the examples in Table 1 are insufficient to support the alleged unexpected results argued by Appellants are due to the claimed sugar content, let alone support the full range of components and amounts claimed. Whether an invention has produced unexpected results is a question of fact. In reMayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). “[TJhere is no hard-and-fast rule for determining whether evidence of unexpected results is 10 Appeal 2016-001467 Application 13/809,362 sufficient to rebut a prima facie case of obviousness.” Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re Dillon, 919 F.2d 688, 692—93 (Fed. Cir. 1990) (“[e]ach situation must be considered on its own facts.”). However, a party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). “[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appellants have not met their burden of showing expected results based on this record. Appellants’ arguments are insufficient to show error in, and thus justify a reversal of, the Examiner’s rejection of claim 18. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the examiner had failed to make a prima facie case, the Board would not have erred in framing the issue as one of reversible error because it has long been the Board’s practice to require an appellant to identify the alleged error in the examiner’s rejections). Claims 28 and 35 Regarding claim 28, which indirectly depends from claim 18 and recites “wherein (a) comprises a reducing sugar having a dextrose equivalent (DE) of from 40 to 100[,]” Appellants contend that “even if dextrose is employed as a carbohydrate component in a binder composition according to [Hawkins ’187], it is to be employed in combination with one or more additional carbohydrates to afford a combined dextrose equivalent of from 2 to 20.” Reply Br. 4—5 (emphasis omitted). Appellants further contend that 11 Appeal 2016-001467 Application 13/809,362 Hawkins ’ 187 “teaches away from using a carbohydrate component having a dextrose equivalent of at least 40” because Table 4 at page 19 of Hawkins ’ 187 does not show improvement in the properties of the binder with increasing DE equivalent. Id. at 5 (emphasis omitted). Appellants assert that the same arguments made with respect to claim 28 also apply to claim 35 which depends from claim 28 and also recites “wherein (a) comprises a reducing sugar having a dextrose equivalent (DE) of from 86 to 100.” Id. The Examiner responds that “the prior art disclose[s] the [use] of glucose and dextrose is another name for glucose. Thus glucose is read on sugar with a DE of 100.” Ans. 12. We are not persuaded by Appellants’ arguments because claims 28 and 35 do not require that component (a) have a cumulative or combined DE of 40 to 100, but, rather, that “a reducing sugar” have the recited dextrose equivalent. Appellants do not dispute the Examiner’s finding that Hawkins ’187 discloses glucose and glucose has a DE of 100. Therefore, Hawkins ’ 187 also cannot be said to teach away from claim 28. Moreover, Appellants do not direct us to any disclosure in Hawkins ’ 187 that would discredit a carbohydrate component having a dextrose equivalent of at least 40. Therefore, the examples in Hawkins ’ 187’s disclosure does not amount to a teaching away from the method of claim 1. See, e.g., In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”). Appellants’ arguments are insufficient to show error in, and thus justify a reversal of, the Examiner’s rejection of claims 28 and 35. 12 Appeal 2016-001467 Application 13/809,362 Claim 29 We need not address the rejection of claim 29 under 35 U.S.C. § 103(a) in view of our discussion of claim 29 above and affirmance of the Examiner’s rejection of claim 29 under 35 U.S.C. § 112 12. Conclusion In sum, Appellants have not persuaded us of a reversible error in the Examiner’s finding that claims 18—28, 30, and 33—35 would have been obvious in view of Hawkins. Rejection 3: Obviousness over Hawkins and Hansen Regarding claims 31 and 32, which relate to the polycarboxylic acid component and depend from claims 30 and 31, respectively, the Examiner finds that Hawkins ’ 187 discloses the use of carboxylic anhydrides, but does not teach any of the specific polycarboxylic acids recited in claim 31. Ans. 6. The Examiner further finds that Hansen “discloses aliphatic carboxylic anhydrides such as succinic anhydride, maleic anhydride and glutaric anhydride and aromatic anhydrides such as phthalic anhydride, methylphthalic anhydride, trimellitic anhydride and pyromellitic dianhydride can be used to react with alkanolamine in [a] binder composition for [a] bounded mineral fiber product.” Id. (citing Hansen || 22—24). The Examiner also finds that it would have been obvious to one of ordinary skill in the art at the time of the invention to use trimellitic anhydride in the binder composition because “substituting one known compound for another for the same purpose is known in the art.” Id. Appellants contend that the Examiner erred because in Hawkins ’ 187 “an aliphatic anhydride is used as a crosslinking agent for the carbohydrate 13 Appeal 2016-001467 Application 13/809,362 component of the binder composition” in contrast to Hansen where “the (aliphatic or aromatic) anhydride is reacted with an alkanolamine to produce a first binder component (reaction product) which is combined, optionally after having been treated with a base, with a second binder component which comprises at least one carbohydrate.” Reply Br. 6 (citing Hansen Abstr.). According to Appellants, the aromatic anhydride of Hansen, therefore, “would not be used for the same purpose as an aliphatic anhydride in a binder composition” as in Hawkins ’187. Id. We are not persuaded by Appellants’ arguments because Appellants do not adequately explain why using Hansen’s polycarboxylic acid component for the polycarboxylic acid in Hawkins’ 187’s binder composition would not be a “simple substitution of one known element for another.” See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Like Hawkins ’187, Hansen’s “formaldehyde-free aqueous binder composition” comprises two binder components with one being a carbohydrate and the other including an alkanolamine and a carboxylic anhydride. Hansen H 14— 16. That Hansen states that its alkanolamine reacts with its carboxylic anhydride (Hansen Abstr., 115) does not mean that Hansen’s component is not also a crosslinking agent for the carbohydrate. Similarly, the disclosure of an alkanolamine, carboxylic acids, anhydrides among other suitable crosslinking agents and combinations thereof in Hawkins ’ 187 does not mean that Hawkins ’ 187’s combinations do not also react with each other. Moreover, Hawkins ’ 187 states that its “binder composition contains a cross linking agent” and that its “crosslinking agent may be any compound suitable for crosslinking the carbohydrate and reacting with a moisture resistant agent, if it is present in the binder composition.” Hawkins ’ 187 14 Appeal 2016-001467 Application 13/809,362 135. Therefore, based on this record, we are not persuaded that the purpose of Hawkins ’ 187 ’s polycarboxylic acid component is different and not substitutable with Hansen’s polycarboxylic acid component. Appellants’ arguments are insufficient to show error in, and thus justify a reversal of, the Examiner’s rejection. In sum, Appellants have not persuaded us of a reversible error in the Examiner’s finding that claims 31 and 32 would have been obvious in view of Hawkins and Hansen. CONCLUSION We sustain the Examiner’s rejections of claims 18—28 and 30—35 under 35 U.S.C. § 103(a) and the rejection of claim 29 under 35 U.S.C. §11212. We reverse the Examiner’s rejection of claim 30 under 35 U.S.C. §11212. DECISION The Examiner’s decision is affirmed. TIME PERIOD FOR RESPONSE 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 15 Copy with citationCopy as parenthetical citation