Ex Parte Westland et al

Patent Trial and Appeal Board

Jan 23, 2017

12466227 (P.T.A.B. Jan. 23, 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.
12/466,227 05/14/2009 John A. Westland 26661 5394
26389 7590 01/25/2017
rTTRTSTRNSFN OTONNOR TOHNSON KTNDNFNN PT T C EXAMINER
1201 THIRD AVENUE CALANDRA, ANTHONY J
SUITE 3600
SEATTLE, WA 98101-3029 ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
01/25/2017 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):
efiling @ cojk. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN A. WESTLAND, ANDREW J. DODD, MENGKUI LUO,
NORIKO SUZUKI, and S. ANANDA WEERAWARNA
Appeal 2015-007597
Application 12/466,2271
Technology Center 1700
Before WESLEY B. DERRICK, CHRISTOPHER L. OGDEN, and
JULIA HEANEY, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify Weyerhaeuser NR Company as the real party in
interest. Appeal Br. 3, Dec. 1, 2014.
Appeal 2015-007597
Application 12/466,227
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1 and 3—15, 21, and 22 in the above-
identified application.3 We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We REVERSE.
BACKGROUND
Appellants’ invention relates to “a dispersible fibrillated blend of
lyocell and low [degree of polymerization] cellulosic pulp.” Spec. 1.
Claim 1 is representative of the claims on appeal:
1. A fibrillated blend of lyocell and cellulosic pulp having a
degree of polymerization of200 to 1000 as measured by ASTM
Test 1795-96, the lyocell and cellulosic pulp having been
fibrillated together to form a fibrillated blend,4
wherein at least a portion of the lyocell fiber has a length
of 3 to 12 mm, and
wherein the lyocell is from 25 to 75 weight percent of the
blend.
Appeal Br. 22 (emphasis added). Claim 7 is also independent, and includes
substantially the same limitations. Id. at 23.
2 Office Action, June 6, 2014 [hereinafter Final Action]; Examiner’s Answer,
May 27, 2015 [hereinafter Answer],
3 Appeal Br. 1. The Office Action Summary incorrectly omits claims 21 and
22 from the list of rejected claims. See Final Action 1.
4 Appellants interpret the term fibrillated blend as precluding the use of
lyocell that has already been fibrillated prior to blending with the cellulosic
pulp, because they argue that such an interpretation would be inconsistent
with the Specification. See Reply Br. 4—5, Aug. 14, 2015. Because we
reverse on other grounds, we do not need to address this issue.
2
Appeal 2015-007597
Application 12/466,227
The Examiner maintains the following grounds of rejection:
I. Claims 1, 3—7, 9-15, 21, and 22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bletsos5 in view of ASTM,6 as
evidenced by Smook,7 Ogata,8 and Chirat.9 See Final Action 6—7.
II. Claims 3 and 9 are alternatively rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bletsos in view of ASTM and Luo.10
See Final Action 9.
DISCUSSION
In rejecting claims 1 and 7, the Examiner finds that Bletsos teaches
mixing fibrillated lyocell with southern bleached hardwood kraft (SBHK)
pulp in an agitator, where the amount of lyocell is 50%, and the lyocell
fibers have a length of 3.8 mm. Final Action 6. Although Bletsos does not
teach the degree of polymerization (DP) of SBHK pulp, the Examiner finds
that “ASTM discloses typical wood pulp samples with [DP] of 570-1520
which overlaps the instant claimed range.” Id. The Examiner concludes as
follows:
5 Bletsos et al., Patent Application Pub. No. US 2005/0142973 A1
(published Jun. 30, 2005).
6 ASTM Standard D 1795, Standard Test Method for Intrinsic Viscosity of
Cellulose 1—6 (ASTMInt’l 2007) [hereinafter ASTM],
7 Gary A. Smook, Handbook for Pulp & Paper Technologists (2d ed.
1992).
8 Ogata et al., U.S. Patent No. 4,567,496 (issued Jan. 28, 1986).
9 Christine Chirat et al., Use of Ozone in a Last Bleaching Stage, TAPPI
Pulping Conf. Proc. 99 (1996).
10 Luo et al., Patent Application Pub. No. US 2004/0206463 Al (published
Oct. 21,2004).
3
Appeal 2015-007597
Application 12/466,227
At the time of the invention it would be obvious to the per­
son of ordinary skill in the art to use the bleached pulps disclosed
as typical by ASTM in the mixture disclosed by BLETSOS. It is
obvious for the person of ordinary skill in the art to substitute one
known conventional/commercial pulp for another known con­
ventional pulp absent evidence of unexpected results.
Id. at 7 (citing KSRInt’l Co. v. Teleflex Inc., 550 U.S. 421 (2007)).11
The Examiner’s rationale for rejecting claims 1 and 7 does not support
a prima facie case of obviousness. First, although the Examiner disputes
Appellants’ declaratory evidence that the DP of the SBHK pulp used by
Bletsos would have been much higher than the range of 200—1000 required
by claims 1 and 7, see Answer 9-10; Office Action 2—3, Oct. 2, 2013, the
Examiner has not pointed to any persuasive evidence or technical reasoning
that the DP of the disclosed SBHK pulp falls within the range 200—1000.
Second, while the Examiner is correct that ASTM teaches that a wood
pulp used in papermaking may have a DP somewhere in the range of 570—
1520, see ASTM 3 tbl. 2 (intrinsic viscosity range for “[pjaper (wood)
pulps”), 5 (formula to convert intrinsic viscosity to DP), many such wood
pulps would fall outside the range of 200-1000 required by claims 1 and 7.
The Examiner has not articulated a persuasive rationale for why a person of
ordinary skill in the art would have selected a wood pulp within the 200-
1000 DP range to replace the SBHK wood pulp disclosed by Bletsos.
“[Ojbviousness concerns whether a skilled artisan not only could have made
but would have been motivated to make the combinations or modifications of
prior art to arrive at the claimed invention.” Bel den Inc. v. Berk-Tek LLC,
11 The Examiner explicitly states that the rejection is not based on the
rationale that the DP range of 200—1000 would have been met as a matter of
routine optimization of a result effective variable. See Answer 12.
4
Appeal 2015-007597
Application 12/466,227
805 F.3d 1064, 1073 (Fed. Cir. 2015). Nor does the Examiner’s rejection
contain an articulation of factual support for the finding that “there is a
design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions” to that problem, such that a
person would have had reason to pursue the substitution of 200-1000 DP
wood pulps for the SBHK pulp of Bletsos. See KSR at 421.
We reach the same conclusion regarding the Examiner’s alternative
ground of rejection, which assumes that Bletsos discloses a “dissolving
pulp.” See Final Action 7—8. ASTM teaches that a dissolving pulp
(including low, regular, and high viscosity dissolving pulps) may have a DP
within the range of 570—1900. See ASTM 3,5. This range is even larger
than the range of 570—1520 discussed above, and the Examiner has likewise
failed to articulate a persuasive reason why a person of ordinary skill in the
art would have selected a pulp within the range of 200-1000 as required by
claims 1 and 7.
For the above reasons, the Examiner reversibly erred in rejecting
claims 1 and 7. Likewise, the Examiner reversibly erred in rejecting
dependent claims 3—6, and 21, which depend from claim 1, and claims 8—15,
and 22, which depend from claim 7.
DECISION
The Examiner’s decision is reversed.
REVERSED
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