Ex Parte Rüba et al

Patent Trial and Appeal Board

Apr 18, 2016

12375234 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/375,234 0312712009
123223 7590 04/20/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
EvaRtiba
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.
07 4008-00848-us
(286105)
CONFIRMATION NO.
5900
EXAMINER
HEINCER, LIAM J
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
04/20/2016 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EVA RUBA, STEPHAN WEINKOTZ, MICHAEL SCHMIDT,
MICHAEL FINKENAUER and CHRISTIAN BEIL1
Appeal2014-003018
Application 12/375,234
Technology Center 1700
Before RICHARD E. SCHAFER, ROMULO H. DELMENDO, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 7-14, 17, 18, 27 and 29. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify BASF SE as the real party in interest. Br. 2.
Appeal2014-003018
Application 12/375,234
BACKGROUND
The subject matter involved in this appeal relates to the "[u]se of
timber materials comprising polyamine for lowering formaldehyde content
in ambient air." Spec 1.2 Claims 7 and 17 illustrate the claimed invention
and are reproduced from the Claims Appendix of the Appeal Brief as
follows:
7. A method for reducing a formaldehyde content in ambient
air, the method comprising: providing a wood material as
furniture parts, wall claddings, and insulation materials,
wherein a process for making the wood material comprises
applying to cellulose-containing chips or fibers a
composition comprising
(i) polyamine as a binder or
(ii) a binder differing from polyamine and additionally
having polyamine in or on the outer layers of the wood
material,
and the polyamine as a binder or the polyamine in or on
the outer layers of the wood material having a molecular weight
of at least 500 g/mol and at least 6 primary or secondary amino
groups;
pressing the cellulose-containing chips or fibers to form
the wood material, and applying the polyamine in an amount of
from 0.1 to 100 g per m2 of surface area of the wood material,
wherein the polyamine as a binder or the polyamine in or on the
outer layers of the wood material is applied with a pH from 9 to
11.
2 We cite to the Specification ("Spec.") filed Jan. 27, 2009, amended Aug.
12, 2011; Final Office Action ("Final Act.") dated Mar. 11, 2013;
Examiner's Answer ("Ans."); and Appellants' Appeal Brief ("Br.").
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Application 12/375,234
1 7. A method for reducing a formaldehyde content in ambient
air, the method comprising: providing a wood material as
furniture parts, wall claddings, and insulation materials,
wherein a process for making the wood material comprises
applying to the wood material
a polyamine in or on the outer layers of the wood
material,
and the polyamine having a molecular weight of at least
500 g/mol and at least 6 primary or secondary amino groups,
wherein the wood material is made from a binder differing from
the polyamine, and wherein the polyamine is applied with a pH
from 9 to 11.
REJECTIONS
The Examiner maintained the following grounds of rejection: 3
I. Claims 7-14 and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Khabbaz4 and Geffroy. 5
II. Claims 17; 18 and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Khabbaz and Geffroy.
III. Claims 17, 18 and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Maine6 and Geffroy.
IV. Claims 7-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Biedermann,7 Maine and Geffroy.
3 Ans. 2-7; Final Act. 2-6.
4 US 2006/0222877 Al, published Oct. 5, 2006 ("Khabbaz").
5 Geffroy, C. et al., Kinetics of adsorption of polyvinylamine onto cellulose,
Colloids and Surfaces A: Physicochemical and Engineering Aspects, 47-56
(2000) ("Geffroy").
6 US 4,165,409, issued Aug. 21, 1979 ("Maine").
7 US 6,624,284, issued Sep. 23, 2003 ("Biedermann").
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Application 12/375,234
DISCUSSION
I
With regard to Rejection I, Appellants argue claims 7-12 and 27
together. Br. 6-10. Appellants also argue claims 13 and 14 together. Br. 10.
We select claims 7 and 13, respectively, as representative and decide the
propriety of Rejection I as to each group of claims based on the
corresponding representative claim. 37 C.F.R. § 41.37(c)(l)(iv). Thus,
claims 8-12 and 2 7 stand or fall with claim 7, and claim 14 stands or falls
with claim 13.
Claim 7
Appellants claim a method which includes pressing cellulose-
containing chips or fibers and a binder composition to form a wood material.
Br. 13, claim 7. Polyamine is provided (i) in the binder composition or (ii)
"in or on the outer layers of the wood material." Id. The Examiner applied
Rejection I to alternative (ii), Final Act. 7; Ans. 7, finding that Khabbaz
discloses applying 25 g/m2 of a 12 weight percent solution of
polyvinylamine to a high density fiberboard core. Final Act. 2 (citing
Khabbaz Ex. 2).
Appellants argue that Khabbaz "fail[ s] to disclose applying polyamine
to cellulose-containing chips or fibers as presently claimed" because
Khabbaz applies the polyvinylamine composition to a veneered flooring
material. Br. 7 (referencing Khabbaz Example 2). Khabbaz' s Example 2
describes applying polyvinylamine to the surface of an oak veneer layer,
followed by gluing the so-treated veneer to a high density fiber board core.
Khabbaz, i-f 38. Appellants do not dispute the Examiner's finding that
Khabbaz's high density fiber board core would have been produced by
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Application 12/375,234
pressing cellulose-containing fibers with a binder. Compare Final Act. 2
with Br. 5-12. See also Khabbaz i-f 10 (disclosing formation of wooden
material such as "fibre board, particle board or chip board" by using binders
to join "fibres, chips, particles or similar materials"). Neither do Appellants
present any reasoning or proposed claim construction that would preclude
provision of a polyamine-coated oak veneer as the "polyamine in or on the
outer layers of the wood material" recited in Appellants' alternative (ii).
Moreover, Khabbaz generally teaches that the polyvinylamine is to be
provided on a surface of a "wood based product comprising one or more
layers," Khabbaz, i-f 14, and that "[w]hen the wood based product comprises
one layer only ... the 'layer' constitutes the fibre board or particle board
itself' id. at i-f 24. Thus, Khabbaz expressly teaches applying polyamine
directly to a fiber board surface at least where the wood material is formed
as a single fiber board layer. On this record, we are not persuaded of
reversible error in the Examiner;s finding that Khabbaz discloses applying
polyvinylamine to the surface of a wood material formed from cellulose-
containing chips or fibers.
Neither are we persuaded by Appellants' argument that "the Examiner
has not set forth a sufficient reason or rationale" to apply the teachings of
Geffroy to Khabbaz. Br. 7. The Examiner found that Geffroy evidences
that pH was known to affect adsorption of polyvinylamine on a cellulose
surface, and reasoned that it would have been obvious to one skilled in the
art to optimize pH of Khabbaz' s polyvinylamine solution to maximize the
desired adsorption of polyvinylamine to a wood surface. Ans. 9.
Appellants' contention that Geffroy is non-analogous art, Br. 7-9, is
not persuasive. We agree with the Examiner's determination that Geffroy' s
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Application 12/375,234
study of polyvinylamine adsorption on cellulose is reasonably pertinent to
the problem addressed by Appellants-treatment of wood materials with
polyamines such as polyvinylamine. Geffroy's recognition that the
disclosed study has industrial relevance in the papermaking process, Geffroy
4 7, is consistent with that determination, given that papermaking and
production of wood materials involve similar cellulose-based materials. As
such, Appellants' argument that Geffroy is directed to a different field of
endeavor, Br. 7-9, is insufficient to persuade us that Geffroy is non-
analogous art. See K-Tec, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed.
Cir. 2012) (explaining that a reference is analogous if it is from the same
field of endeavor or "reasonably pertinent to the particular problem with
which the inventor is involved").
Appellants also argue that Geffroy tested manufactured cellulose
rather than wood chips or particles, Br. 9, and determined an optimal pH
only under conditions involving a given ionic strength, id. at 10. These facts
do not negate Geffroy's conceptual teaching that pH is a result-effective
variable for the adsorption of polyvinylamine on cellulose. Given
Khabbaz's disclosed intent to treat wood surfaces with polyvinylamine to
reduce formaldehyde emission, Khabbaz ,-r 2, we are persuaded that a
preponderance of the evidence before us supports the Examiner's
determination that it would have been obvious to one skilled in the art to
optimize pH of Khabbaz's applied polyvinylamine composition. Appellants
do not dispute the Examiner's finding that such optimization in Khabbaz
would have yielded a pH within Appellants' recited range.
Appellants' arguments do not persuade us of reversible error in the
Examiner's rejection of claim 7 on the grounds set forth in Rejection I.
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Application 12/375,234
Claim 13
Claim 13 requires that the polyamine is polyvinylamine "in the form
of an aqueous solution having a solids content from 5 to 30% by weight."
Br. 14, claim 13. Appellants' sole additional argument with regard to claim
13 is that "Khabbaz does not disclose or suggest the solids content" recited
in that claim. Br. 10. The Examiner responded that Khabbaz "teaches the
polyvinylamine as being in a 12% solids content solution," which the
Examiner found to be within Appellants' recited range. Ans. 9. Appellants
neither dispute the Examiner's response in any Reply Brief, nor point us to
any evidence or argument to support the conclusory statement that Khabbaz
does not disclose the solids content recited in claim 13. Thus, we are not
persuaded of reversible error in the Examiner's rejection of claim 13 on the
grounds set forth in Rejection I.
For the foregoing reasons, we sustain Rejection I.
II
Appellants argue claims 17, 18 and 29 as a group in connection with
Rejection II, Br. 10, the propriety of which we decide based on
representative claim 17. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants do not present any argument against Rejection II other
than a general reliance on the arguments made against Rejection I with
regard to the Examiner's reliance on Geffroy in determining that it would
have been obvious to optimize pH of Khabbaz's polyvinylamine
composition. Br. 10. Because we find Appellants' arguments unpersuasive
for the reasons set forth in connection with Rejection I, we are not persuaded
of reversible error in the Examiner's rejection of claim 17 on the grounds set
forth in Rejection II. Accordingly, we also sustain Rejection II.
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Application 12/375,234
III, IV
Because our decision sustaining Rejections I and II is dispositive
regarding the Examiner's determination of unpatentability as to all claims on
appeal, we need not reach the merits of the cumulative obviousness
determinations based on other references set forth in Rejection III and
Rejection IV. Cf Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
1984) (Having decided a single dispositive issue, the ITC was not required
to review other matters decided by the presiding officer.); In re Basel!
Poliolefine Italia SP.A., 547 F.3d 1371, 1379 (Fed. Cir. 2008) (Having
concluded that the Board properly affirmed the rejection of the claims on
one obviousness-type double patenting ground, it was unnecessary to reach
other grounds including additional double patenting or§§ 102(b) and 103(a)
rejections).
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended 35 C.F.R. § 1.136.
AFFIRMED
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