ROCKWOOL INTERNATIONAL A/S

Patent Trials and Appeals Board

Mar 18, 2021

2020000941 (P.T.A.B. Mar. 18, 2021)

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.
15/502,836 02/09/2017 Thomas HJELMGAARD 3672-P50365 2723
13897 7590 03/18/2021
Abel Schillinger, LLP
5929 Balcones Drive
Suite 300
Austin, TX 78731
EXAMINER
COHEN, STEFANIE J
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
03/18/2021 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):
hmuensterer@abel-ip.com
mail@Abel-IP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS HJELMGAARD, POVL NISSEN,
ERLING LENNART HANSEN, and LARS NAERUM
Appeal 2020-000941
Application 15/502,836
Technology Center 1700
Before BEVERLY A. FRANKLIN, MAHSHID D. SAADAT, and
DONNA M. PRAISS, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 17–36. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as ROCKWOOL
INTERNATIONAL A/S of Hedehusene, Denmark. Appeal Br. 3.
Appeal 2020-000941
Application 15/502,836

2
CLAIMED SUBJECT MATTER
The claims are directed to “an aqueous binder composition which is
particularly suitable for bonding mineral fibres, is economically produced
and is using renewable materials as starting products for the preparation of
the aqueous binder composition.” Spec. 2:30–33. Claim 17, reproduced
below, illustrates the claimed subject matter:
17. An aqueous binder composition for mineral fibers,
wherein the composition comprises
(a) a component (i) in the form of one or more
compounds selected from one or both of
- compounds of formula

and salts thereof, in which RI represents H, alkyl,
monohydroxyalkyl, dihydroxyalkyl, polyhydroxyalkyl,
alkylene, alkoxy, amine;
- compounds of the formula

and salts thereof, in which R2 represents H, alkyl,
monohydroxyalkyl, dihydroxyalkyl, polyhydroxyalkyl,
alkylene, alkoxy, amine;
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(b) a component (ii) in the form of one or more
compounds selected from ammonia, amines, salts thereof;
(c) a component (iii) in the form of one or more
carbohydrates.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Morgan2 US 3,062,682 Nov. 6, 1962
Hawkins US 2011/0223364 A1 Sept. 15, 2011
Naerum US 2014/0135430 A1 May 15, 2014

REJECTIONS
Claims 17, 18, 20–22, 24–26, 28–31, 33, and 34 stand provisionally
rejected on the ground of non-statutory double patenting as being
unpatentable over claims 1–4, 6, 9–11, 13–18 of copending Application No.
14/581,865. Final Act. 3–6
Claims 17–26, 28–33, 35, and 36 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Naerum and Hawkins. Final Act. 6–17.
Claims 24, 25, and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Naerum, Hawkins, and Willard. Final Act. 17–12.3

2 The Examiner refers to this reference as “Willard.” Final Act. 17.
3 The Examiner indicates claim 34 contains allowable subject matter. Final
Act. 18–19.
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OPINION
Non-Statutory Double Patenting Rejection
Appellant did not present any arguments to challenge the double
patenting rejection. See Appeal Br. 6. As a result, we summarily affirm the
Examiner’s non-statutory double patenting rejection of claims 17, 18, 20–22,
24–26, 28–31, 33, and 34. See Ex Parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential) (“If an appellant fails to present arguments on a
particular issue –– or, more broadly, on a particular rejection –– the Board
will not, as a general matter, unilaterally review those uncontested aspects of
the rejection.”).
35 U.S.C. § 103 Rejection
Claim 17
In rejecting claim 17, the Examiner finds Naerum discloses an
aqueous binder composition for mineral fibers which comprises the recited
components (a)–(c) in the form of the claimed compounds. Final Act. 6–8
(citing Naerum Abstract, ¶¶ 1, 36–38, 42, 48). The Examiner further finds
Hawkins discloses “fibrous insulation products have an aqueous binder
composition that includes a carbohydrate and a crosslinking agent,” whereas
a corrosion inhibitor, such as ascorbic acid, is added to the solution for
eliminating “any potential corrosion to the process equipment.” Final Act.
8–9 (citing Hawkins Abstract, ¶¶ 3, 60). The Examiner concludes one of
ordinary skill in the art would have combined Naerum with Hawkins to
“incorporate ascorbic acid as taught by Hawkins as the corrosion inhibitor as
taught by Naerum because Hawkins teaches ascorbic acid is known in the art
as a corrosion inhibitor in an aqueous binder used for mineral fibers.” Final
Act. 10. The Examiner also “interprets ascorbic acid as taught by Hawkins
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to meet the chemical formula of component (i), the first formula, wherein R1
is a monohydroxyalkyl.” Id.
Appellant does not dispute the teachings of Naerum, nor the
Examiner’s mapping of the claimed limitations to the specific compositions
disclosed in Naerum. Instead, Appellant contends “due to the significant
differences between the binder compositions disclosed in NAERUM and
HAWKINS there is no motivation for one of ordinary skill in the art to
combine the disclosures of these two documents, let alone in the specific
way envisioned by the Examiner.” Appeal Br. 7. Appellant specifically
argues that
In other words, the binder compositions of NAERUM
and HAWKINS solely have in common that one of the
components thereof is a carbohydrate (sugar component).
However, in the case of the binder compositions of NAERUM
the sugar component is added merely in order to improve the
reaction yield compared to the use of the reaction product of an
alkanolamine with a polycarboxylic acid or anhydride and of
urea alone (see, e.g., paragraph [0065] of NAERUM), whereas
in the case of the binder compositions of HAWKINS the
carbohydrate is the major and most important component (to be
crosslinked by, e.g., a polycarboxylic acid such as citric acid).
Appeal Br. 8. Appellant also argues that, because the references disclose
different binder compositions, one of ordinary skill in the art would not
conclude “that any other corrosion inhibitor, and especially a corrosion
inhibitor which is mentioned as an example of a corrosion inhibitor for the
compositions of HAWKINS, must also be a good choice for the
compositions of NAERUM (or at least is automatically also suitable for the
compositions of NAERUM).” Appeal Br. 9. With respect to the stated
reason to combine, Appellant argues one of ordinary skill in the art would
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expect that using ascorbic acid of Hawkins would react with the disclosed
compounds of Naerum and therefore would be discouraged to make such a
combination. Appeal Br. 10–11. Lastly, Appellant asserts Naerum’s
disclosure in paragraph 36 “confirms that if a corrosion inhibitor is to be
employed at all in the binder compositions disclosed therein, it must not be a
compound such as ascorbic acid which would increase the acidity of a
binder composition and thus increase, rather than decrease, the corrosiveness
of the binder composition.” Appeal Br. 13.
The Examiner responds that Naerum discloses an aqueous binder
composition that includes one or more binder additives, such as thiourea as
corrosion inhibitors. Ans. 20–21 (citing Naerum ¶ 48). The Examiner
further explains that one of ordinary skill in the art would incorporate
Hawkins’ ascorbic acid as the corrosion inhibitor. Ans. 22. According to
the Examiner, the amount of specific compounds in the final product or the
amount of the corrosion inhibitor is not recited in the claim, which allows
adding even a small amount of ascorbic acid to meet the claimed subject
matter. Id. With respect to Appellant’s argument that ascorbic acid would
increase the acidity of the compound, the Examiner refers to paragraph 36 of
Naerum where the preferred pH is specified between 5 and 8, which allows
using the teachings of Hawkins and adding ascorbic acid in the amount that
maintains the pH of the binder composition in the preferred range. Ans. 23.
We are unpersuaded of Examiner error. Appellant is arguing the
references individually although the rejection is based on the combination of
the cited references where all of the features of the secondary reference need
not be bodily incorporated into the primary reference (see In re Keller, 642
F.2d 413, 425 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097
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(Fed. Cir. 1986)) and the artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment (see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984)). We agree with the Examiner that the
combination of references teaches using a corrosion inhibitor with the
recited fiber composition. See Ans. 22–23. In other words, this is a
combination of familiar elements according to known methods with
predicable results. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007) (“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”).
Additionally, the Supreme Court made clear that when considering
obviousness, “the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR, 550 U.S. at 418. Furthermore, the skilled artisan is “a
person of ordinary creativity, not an automaton,” and this is a case in which
the skilled artisan would “be able to fit the teachings of multiple patents
together like pieces of a puzzle.” KSR, 550 U.S. at 421.
We agree with the Examiner that paragraph 48 of Naerum suggests
adding other materials to the binder composition and lists corrosion
inhibitors as one type of such additives. Naerum ¶ 48. Contrary to
Appellant’s contention that one of ordinary skill in the art would not add
ascorbic acid as a corrosion inhibitor disclosed by Hawkins to the binder
composition because Naerum already contains carboxylic acid groups (see
Reply Br. 2), Naerum’s disclosure provides the suggestion for the proposed
modification. That is, Naerum includes corrosion inhibitors as a category of
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additives, whereas Hawkins discloses ascorbic acid as a specific example of
such corrosion inhibitors that is available to be added to the binder
composition.
Additionally, Appellant’s “teaching away” argument is not persuasive
because Appellant has not identified where Naerum actually criticizes,
discredits, or otherwise discourages using ascorbic acid as the corrosion
inhibitor. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009) (“A reference does not teach away, however, if it merely
expresses a general preference for an alternative invention but does not
‘criticize, discredit, or otherwise discourage’ investigation into the invention
claimed.”) (citing Fulton); see also Bayer Pharma AG v. Watson
Laboratories, Inc., 874 F.3d 1316, 1327 (Fed. Cir. 2017) (“When there are
only two possible formulations and both are known in the art at the time, the
fact that there may be reasons a skilled artisan would prefer one over the
other does not amount to a teaching away from the lesser preferred but still
workable option.”). We specifically agree with the Examiner that the
disclosed pH level in paragraph 36 of Naerum provides a limited pH range
in which the compound remains water soluble and can reduce corrosiveness.
Naerum ¶ 36. At most, Appellant has identified Naerum’s caution regarding
the preferred pH level for maintaining a neutral composition.
Appeal Br. 12–13. Therefore, contrary to Appellant’s teaching away
contentions (seeid.), using Hawkins’ ascorbic acid in Naerum’s fiber
composition as the corrosion inhibitor would have been reasonable when the
binder maintains a pH of between about 5 and 8 which helps with the
neutralization of the composition. In other words, Naerum’s preferred pH
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range for the addition of a base to achieve desired water solubility or
dilutability does not amount to an explicit teaching away of adding ascorbic
acid.
Additionally, we are unpersuaded that the Examiner has used
improper hindsight. See Appeal Br. 8. Reliance on multiple references in a
rejection does not, without more, weigh against the obviousness of the
claimed invention. In re Gorman, 933 F.2d 982 (Fed. Cir. 1991). In
addition, any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning. However, so long as it takes
into account only knowledge which was within the level of ordinary skill at
the time the claimed invention was made, and does not include knowledge
gleaned only from the Appellant’s disclosure, such a reconstruction is
proper. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here,
the Examiner has relied on references that disclose aqueous binder
compositions where corrosion is a concern. We also find that it is
reasonable to rely on other references, such as Hawkins, for disclosing a
solution to the corrosion problem by adding ascorbic acid as the specific
corrosion inhibitor, as set forth in the claims at issue.
Claim 19
Appellant contends the Examiner has not shown that “HAWKINS (or
NAERUM) teaches or suggests that salts of ascorbic acid (or of any of the
other compounds recited in claim 19) can be used as corrosion inhibitors.”
Appeal Br. 14. Appellant argues that the document cited in the Advisory
Action mailed March 12, 2019 (US 4,784,779, col. 3, lines 35–42) makes it
clear that the reference is not concerned with corrosion inhibitors for binder
compositions, but, instead, relates to “the use of aldose group antioxidants
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only in combination with sodium, ammonium, and calcium thiocyanate.”
Appeal Br. 15.
The Examiner responds
Further, as stated in the advisory action for claim 19,
Hawkins, paragraph 80 of the PGPUB, teaches the binder
composition may optionally include a corrosion inhibitor to
reduce or eliminate any potential corrosion to the process
equipment. The corrosion inhibitor can be chosen from a
variety of agents, such as, ascorbic acid. It would have been
obvious before the effective filing date of the claimed invention
to a person having ordinary skill in the art to which the claimed
invention pertains that derivatives of ascorbic acid such as
calcium or sodium salts of ascorbic acid can be used as a
corrosion inhibitor because the similarities in structure would
result in the same corrosion inhibitor properties. Examiner
interprets ascorbic acid as taught by Hawkins to be L-ascorbic
acid.
Ans. 23–24.
We are unpersuaded by Appellant’s contention. As explained by the
Examiner, the ’779 reference is used to show that “sodium isoascorbate is a
known corrosion inhibitor” and also known as D-sodium ascorbate; salts of
ascorbic acid are known as L-sodium ascorbate. Ans. 24. Therefore, in
view of the Examiner’s reasoning, and based on the same analysis presented
above for claim 17, we are also unpersuaded of Examiner error in rejecting
claims 19.
CONCLUSION
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 17 and dependent claim 19. We also sustain the
Examiner’s obviousness rejection of the remaining appealed claims which
are not separately argued by Appellant. See Appeal Br. 7–17.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
17, 18, 20–
22, 24–26,
28–31, 33,
34
Non-statutory
Double Patenting
17, 18, 20–
22, 24–26,
28–31, 33,
34

17–26, 28–
33, 35, 36
103(a) Naerum, Hawkins 17–26, 28–
33, 35, 36

24, 25, 27 103(a) Naerum, Hawkins,
Willard
24, 25, 27
Overall
Outcome
17–36

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED