Ex Parte Rediger et al

Patent Trial and Appeal Board

May 26, 2016

11747343 (P.T.A.B. May. 26, 2016)

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.
11/747,343 05/11/2007 Richard Rediger 20215-USA 4333
48255 7590 05/27/2016
GEORGIA-PACIFIC LLC
133 PEACHTREE STREET, NE GA30-39
ATLANTA, GA 30303
EXAMINER
KRYLOVA, IRINA
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
05/27/2016 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte RICHARD REDIGER and EDWARD LUCAS
________________

Appeal 2014-003857
Application 11/747,343
Technology Center 1700
________________

Before TERRY J. OWENS, PETER F. KRATZ, and
N. WHITNEY WILSON, 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 1–4, 7, 21–25, and 27–33. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a solid phenol-formaldehyde novolac resin
composition. Claim 1 is illustrative:
1. A solid phenol-formaldehyde novolac resin composition in
flake form, comprising:
less than 1.5 wt% free phenol; and
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a non-phenolic solvent in an amount sufficient to provide
a solid phenol-formaldehyde novolac resin having a melt
viscosity at 150°C of less than 5,000 cps,
wherein the non-phenolic solvent is a dibasic ester
selected from the group consisting of dimethyl adipate,
dimethyl gluterate, dimethyl succinate, and mixtures thereof,
wherein the solid phenol-formaldehyde novolac resin has
a melting point of from 77°C to 93°C, and
wherein the solid phenol-formaldehyde novolac resin
contains no other non-phenolic solvent.

The References
Vargiu US 3,878,159 Apr. 15, 1975
Funabiki US 4,252,700 Feb. 24, 1981
Chandramouli (Chandramouli ‘170) US 4,897,170 Jan. 30, 1990
Chandramouli (Chandramouli ‘412) US 5,043,412 Aug. 27, 1991
Hesse US 5,652,047 July 29, 1997
Keil US 5,658,360 Aug. 19, 1997

Invista, Technical Information: Dibasic Esters (DBE) 1–2 (2004)
(hereinafter DBE Flyer).

The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1–
4, 7, 21, 22, 24, 27–29, and 31–33 over Chandramouli ‘412 in view of
Funabiki and Chandramouli ‘170, claims 23 and 30 over Chandramouli ‘412
in view of Funabiki, Chandramouli ‘170 and DBE Flyer, claims 1–4, 7, 21,
22, 24, 27–29, and 31–33 over Chandramouli ‘412 in view of Funabiki,
Chandramouli ‘170, Keil and Hesse, claims 23 and 30–33 over
Chandramouli ‘412 in view of Funabiki, Chandramouli ‘170, Keil, Hesse
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and DBE Flyer, and claim 25 over Chandramouli ‘412 in view of Funabiki,
Chandramouli ‘170, Keil, Hesse and Vargiu.1
OPINION
We reverse the rejections. We need address only the independent
claims, i.e., claims 1, 7, 21 and 27.2 Those claims require a novolac resin
which comprises less than 1.5 wt% free phenol, comprises a non-phenolic
solvent selected from the group consisting of dimethyl adipate, dimethyl
gluterate, dimethyl succinate and mixtures thereof, and has a melt viscosity
at 150 ºC of less than 5,000 cps (claim 1), less than 4000 cps (claims 7
and 27), or “not greater than 10% higher than the melt viscosity at 150oC of
the phenol-formaldehyde novolac resin before both the non-phenolic solvent
was added and the level of free phenol was reduced” (claim 21).
Rejection over Chandramouli ‘412 in view of
Funabiki and Chandramouli ‘170
Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Chandramouli ‘412 discloses a composition for making a free-flowing
binder-aggregate mixture for forming a foundry mold, foundry core or
furnace lining refractory brick, comprising a mixture of an aggregate
material, a phenol formaldehyde novolac resin, a phenol formaldehyde

1 A rejection of claims 1–4, 7, 21–25, and 27–33 under 35 U.S.C. § 112(a) is
withdrawn in the Examiner’s Answer (Ans. 16).
2 The Examiner does not rely upon DBE Flyer or Vargiu for any disclosure
that remedies the deficiency in the references applied to the independent
claims (Ans. 9–10, 13–16).
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resole resin and an ester functional curing agent (which can be dimethyl
gluterate or dimethyl adipate), wherein the novolac resin component can be
in flake form (Abstract; col. 3, ll. 4–7, 50–51; col. 5, ll. 50–65; col. 7, ll. 37–
38). Chandramouli ‘412 is silent as to the novolac resin’s melt viscosity and
amount of free phenol.
Chandramouli ‘170 discloses a Soderberg electrode3 paste
composition comprising carbonaceous aggregate, novolac resin binder and
plasticizer (Abstract). The binder’s novolac resin can be in flake form and,
to substantially reduce noxious fume evolution, has a free phenol content of
less than 4 wt%, preferably less than 2 wt%, based on resin solids (col. 5,
ll. 22–27; col. 7, ll. 18, 42–48, 63). The novolac resin can be used with a
high boiling plasticizer, which can be a dibasic ester, to “help maintain
plasticity and fluidity of the paste mix through the various temperature zones
of the Soderberg anode feed system” (col. 5, ll. 28–40). Chandramouli ‘170
is silent as to the novolac resin’s melt viscosity.4
Funabiki discloses “a solid phenolic resin composition useful as a
binder in the preparation of foundry sand cores and molds which comprises
a solid novolac resin and a lubricant-containing solid resole resin wherein
the lubricant is incorporated into the resole during the preparation of the

3 “Soderberg electrodes are used principally in aluminum reduction, calcium
carbide production, the production of electric pig iron, processing copper
matte, and other kinds of ferro alloy and smelting operations. They are also
used in the manufacture of phosphorus” (col. 2, ll. 52–56).
4 Chandramouli ‘170’s viscosity relied upon by the Examiner (Ans. 2–3) is
the viscosity of the resin binder composition (exemplified as including a
potassium hydroxide solution, water and a phenol formaldehyde resole
resin) not the novolac resin’s melt viscosity (col. 6, ll. 38–48; Examples 1–
8).
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solid resole” (Abstract). The novolac resin has a melting point of 70 to
100 ºC (col. 4, ll. 49–51).
The Examiner asserts that “Chandramouli’170 teaches that
plasticizers help maintain plasticity and fluidity through the various
temperature zones (col. 5, lines 37-40)” (Ans. 5).
The Examiner does not mention that the temperature zones are those
of a Soderberg anode feed system (col. 5, ll. 38–40). The Examiner has not
established that Chandramouli ‘170’s disclosure that plasticizers help
maintain plasticity and fluidity of a paste mix through the various
temperature zones of a Soderberg anode feed system (col. 5, ll. 37–40)
would have provided one of ordinary skill in the art with an apparent reason
to include a plasticizer in Chandramouli ‘412’s composition for making a
foundry mold, foundry core or furnace lining refractory brick (col. 3, ll. 4–
7).
The Examiner argues that in view of Chandramouli ‘170’s disclosure
that plasticizers help maintain plasticity and fluidity of a paste mix through
the various temperature zones of a Soderberg anode feed system (col. 5,
ll. 37–40), one of ordinary skill in the art would have arrived at the
Appellants’ recited melt viscosity through routine optimization depending
upon the novolac resin’s initial melt viscosity and desired fluidity (Ans. 5).
The Appellants’ novolac resin, like Chandramouli ‘412’s novolac
resin, is useful for making foundry molds and cores (Appellants’ Spec. ¶ 4;
Chandramouli ‘412, col. 3, ll. 4–7). The Examiner has not established that
optimizing the melt viscosity of a novolac resin used in a Soderberg
electrode paste would lead to a melt viscosity which would be optimum, or
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even suitable, for a novolac resin which is useful for making foundry molds
and cores.
Rejection over Chandramouli ‘412 in view of Funabiki,
Chandramouli ‘170, Keil and Hesse
Keil discloses an uncured molded abrasive article (such as an uncured
grinding wheel) comprising granular abrasive materials coated with a
novolac resin which is solid at room temperature, preferably contains less
than 0.5 wt% free phenol and has a melt viscosity which, due to being
relatively low (preferably about 400 cp to about 800 cp which corresponds
to a temperature of about 125 ºC to about 115 ºC), makes the novolac resin
easy to handle and blend with other components (col. 1, l. 10; col. 3, ll. 10–
20; col. 4, ll. 55–65; col. 5, ll. 11–13).
Hesse discloses novolac resins which are useful as binders for fiber
composites, are in powder form, contain particularly preferably less than
0.05 wt% free phenol, and have a melting point range from 35 to 120 ºC
(col. 2, ll. 51–58, 63–66; col. 3, ll. 10–15, 37–51; col. 4, ll. 34–50).
The Examiner argues that in view of Chandramouli ‘170’s (col. 5,
ll. 22–27), Keil’s (col. 3, ll. 16–17) and Hesse’s (col. 2, ll. 63–66) use of a
reduced-phenol-content novolac resin to reduce noxious fumes, one of
ordinary skill in the art would have reduced Chandramouli ‘412’s novolac
resin’s phenol content to achieve that benefit (Ans. 8, 12–13).
The Appellants’ claims require not only a low free phenol content but
also a non-phenolic dibasic ester solvent and a low melt viscosity (which the
Appellants achieve by replacing removed phenol with a non-phenolic
dibasic ester solvent (Spec. ¶ 19)). The Examiner has not established that
Chandramouli ‘412, Chandramouli ‘170, Funabiki, Keil and Hesse would
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have led one of ordinary skill in the art to use in Chandramouli ‘412’s
composition a novolac resin having the Appellants novolac resin’s required
combination of low free phenol content, non-phenolic dibasic ester solvent
and low melt viscosity.
Thus, the Examiner has not established a prima facie case of
obviousness of the Appellants’ claimed novolac resin composition.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1–4, 7, 21, 22, 24, 27–
29, and 31–33 over Chandramouli ‘412 in view of Funabiki and
Chandramouli ‘170, claims 23 and 30 over Chandramouli ‘412 in view of
Funabiki, Chandramouli ‘170 and DBE Flyer, claims 1–4, 7, 21, 22, 24, 27–
29, and 31–33 over Chandramouli ‘412 in view of Funabiki,
Chandramouli ‘170, Keil and Hesse, claims 23 and 30–33 over
Chandramouli ‘412 in view of Funabiki, Chandramouli ‘170, Keil, Hesse
and DBE Flyer, and claim 25 over Chandramouli ‘412 in view of Funabiki,
Chandramouli ‘170, Keil, Hesse and Vargiu are reversed.
It is ordered that the Examiner’s decision is reversed.

REVERSED