Ex Parte 7,772,347 B2 et al

Patent Trial and Appeal Board

Apr 30, 2015

95000675 (P.T.A.B. Apr. 30, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,675 06/30/2012 7,772,347 B2 65461/836830 5092
23643 7590 05/01/2015
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
KUGEL, TIMOTHY J
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
05/01/2015 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
____________

ROCKWOOL INTERNATIONAL A/S
Appellant and Requester
v.

Patent of
KNAUF INSULATION LLC and
KNAUF INSULATION SPRL
Jointly, Patent Owner and Respondent
____________

Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2
Technology Center 3900
____________

Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
RAE LYNN GUEST, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal by the Requester from the Patent Examiner’s
decision not to adopt rejections of claims 1, 2, 4, 5, 7–12, 14–18, and 22–28 in the
above-identified inter partes reexamination of United States Patent 7,772,347 B2.
The Board’s jurisdiction for this appeal is under 35 U.S.C. §§ 6(b), 134, and 315
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

2

(pre-AIA). We affirm but set forth new grounds of rejection against newly added
claims 29–32.
BACKGROUND
The patent in dispute in this appeal is United States Patent 7,772,347 B2
(“the ’347 patent”) which issued August 10, 2010. The patent is subject to a
terminal disclaimer. Since filing the Patent Owner Respondent Brief (filed June 2,
2014; “Owner Resp’t Br.”), an assignment was filed assigning the ’347 patent to
Knauf Insulation LLC and Knauf Insulation SPRL (recorded assignment at Reel
034783/Frame 0898; Jan. 20 and 21, 2015), collectively “Knauf Insulation.”
Therefore, Knauf Insulation is the Respondent in this proceeding.
A request for inter partes reexamination of the ’347 patent was filed June
30, 2012 by Rockwool International A/S (“Requester”) under 35 U.S.C. §§ 311–
318 and 37 C.F.R. §§ 1.902–1.997. Requester is also the Appellant in this
proceeding.
The Examiner made a determination favorable to the patentability of claims
1, 2, 4, 5, 7–12, 14–18, and 22–28, as amended, and new claims 29–32. Right of
Notice Appeal (filed July 23, 2013; “RAN”). Requester appeals from this
decision.
An oral hearing was held January 21, 2015. A transcript of the hearing has
been entered into the record (“Hearing Tr.”).
The claimed subject matter of the ’347 patent involves the manufacture of a
thermoset binder bound with a material, such as glass fibers. The method
comprises reacting ammonia, a carbohydrate, and a polycarboxylic acid to produce
melanoidin. ’347 patent, col. 2, ll. 44–61. Melanoidin is a product of the known
Maillard reaction. Id. at, col. 2, ll. 25–30. The binder containing melanoidin is
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

3

mixed with a material, such as glass fibers, to make a fabricated product. Id. at col.
1, l. 65 to col. 2, l. 7.
There are two groups of claims at issue under this appeal. The first group
includes claims 1, 2, 4, 5, 7–12, 14–18, and 22–28 which recite the limitation that
the ratio of the number of moles of the polycarboxylic acid to the number of moles
of the carbohydrate is about 1:5, about 1:6, and about 1:7. The second group of
claims, claims 29–32, are not limited by this ratio.

Claims 1, 2, 4, 5, 7–12, 14–18, and 22–28
With respect to the first group of claims, Requester appeals from the
Examiner’s decision not to adopt the following rejections under 35 U.S.C. § 103
(Req. Appeal Br. 9):
1. Claims 1, 5, 11, 15, and 22–25 as obvious in view of Wallace,
1

Agyei-Aye,
2
and Keritsis;
3

2. Claims 2, 7–9, 12, 16, 17, and 26 as obvious in view of Wallace,
Agyei-Aye, Keritsis, and Hansen;
4

3. Claims 10, 12, and 18 as obvious in view of Wallace, Agyei-Aye,
Keritsis, Hansen, and Husemoen;
5
and
4. Claims 2, 4, 7–10, 12, 14, 16–18, and 26–28 as obvious in view of
Wallace, Agyei-Aye, Keritsis, and Husemoen.

1 Wallace et al., US 2,215,825, patented Sept. 24, 1940.
2
Agyei-Aye et al., The role of the anion in the reaction of reducing sugars with
ammonium salts, 337 Carbohydrate Research 2273-2277 (2002).
3
Keritsis, US 4,506,684, issued Mar. 26, 1985.
4
Hansen et al., US 6,730,730 B1, issued May 4, 2004.
5
Husemoen et al., US 6,878,800 B2, issued Apr. 12, 2005.
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

4

Claims 1, 15, and 29 are representative and read as follows (brackets and
underlining relative to the original claims):

1. A method of making a collection of matter bound with a
melanoidin containing formaldehyde–free thermoset binder,
comprising:
preparing an aqueous solution containing reactants for
producing melanoidins, wherein the reactants [include] consist
essentially of dextrose, citric acid, and ammonia, and wherein the
ratio of the number of moles of the citric acid to the number of moles
of the dextrose is about 1:5, about 1:6, or about 1:7;
disposing the aqueous solution onto the collection of matter;
volatilizing the water to form a dehydrated reactive mixture
disposed upon the collection of matter, and
polymerizing the dehydrated reactive mixture to form the
thermoset binder containing melanoidins cross–linked with the citric
acid.

15. A composition comprising a collection of matter and a
formaldehyde–free thermoset binder, the binder comprising
melanoidin products of a substantially dehydrated and cured reaction
mixture consisting essentially of [between] a reducing–sugar
carbohydrate, a monomeric polycarboxylic acid, and [an amine base]
ammonia, the melanoidin products being cross–linked with [a] the
polycarboxylic acid, where the ratio of the number of moles of the
polycarboxylic acid to the number of moles of the carbohydrate in the
reaction mixture is about 1:5, about 1:6, or about 1:7.

29. A method of making a fiberglass product bound with a melanoidin
containing binder, comprising:
preparing an alkaline aqueous solution containing reactants for
producing melanoidins, wherein the reactants include dextrose, citric
acid, and ammonia;
disposing the alkaline aqueous solution onto a collection of
fiberglass which consists essentially of glass fibers and/or mineral
fibers;
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

5

volatilizing the alkaline aqueous solution to form a dehydrated
reactive mixture disposed upon the collection of fiberglass, and
polymerizing the dehydrated reactive mixture to form a
thermoset binder consisting essentially of melanoidins cross–linked
with the citric acid.

Discussion
The Examiner’s reason for not adopting the rejections is that none of the
cited publications were said to teach or “fairly suggest[ ] the instantly claimed
mole ratios” of “about 1:5, about 1:6, or about 1:7.” RAN 15, 70.
Requester contends that the Examiner erred in this determination and that it
would have been obvious to one of ordinary skill in the art to have made a product
where the number of moles of the polycarboxylic acid (e.g., citric acid) to the
number of moles of the carbohydrate (e.g., dextrose) is about 1:5, about 1:6, and
about 1:7.
The table below summarizes the ratio’s disclosed in the ’347 patent and their
effect on wet strength (a property of the material), and the ratios described in
Wallace and Agyei-Aye:
Source Ratio of
carboxylic acid
(citric acid) to
carbohydrate
(dextrose)
Wet strength
at 350°C
6

Table 1 (’347 patent) 1:30 Dissolved No wet strength
Table 1 (’347 patent) 1:15 Dissolved No wet strength
Table 1 (’347 patent) 1:10 Partially
dissolved
Minimal wet strength
Wallace (Examiner
calculation) (Non–
1:9.44

6
Example 3 (’347 patent, col. 18); Table 1 (id. at cols. 33–34)
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

6

final action, p. 12,
9/25/12)
Table 1 (’347 patent) 1:7 Softened Intermediate wet
strength
Table 1 (’347 patent) 1:6 Softened Intermediate wet
strength
Table 1 (’347 patent) 1:5 Softened Intermediate wet
strength
Table 1 (’347 patent) 1:4 Softened Intermediate wet
strength
Wallace (Requester
calculation)
(Comments after
non–final, p11,
12/19/12) (based on
dextrose content of
molasses)
1:2.26
Agyei–Aye (Patent
Owner calculation)
(POR, p. 15,
11/26/12)
1:1

As shown in the table above, Wallace utilized a ratio of carboxylic acid to
carbohydrate of 1:9.44 or 1:2.26, depending on whether the Examiner’s or
Requester’s calculation is used. Neither ratio overlaps with the claimed ratio of
“about 1:5, about 1:6, or about 1:7.” RAN 70. Agyei-Aye used a ratio of 1:1.
This ratio also does not overlap with the claimed ratio. The issue is whether it
would have been obvious to one of ordinary skill in the art to have selected the
claimed ratio based on the teachings of Wallace and Agyei-Aye.
To establish obviousness, there must be a reason to have started with the
prior art ratios of 1:9.44, 1:2.26, or 1:1 and then to have chosen the ratios recited in
the claims. It is well-established that the “discovery of an optimum value of a
result effective variable in a known process is ordinarily within the skill of the art.”
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

7

In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Requester contends that the ratio
between carboxylic acid and carbohydrate is a result-effective variable. As
evidence of this, Requester provided a declaration by Povl Nissen (Nissen Decl.),
Chief Engineer of Rockwool International A/S, the Requester in this proceeding.
Nissen Decl. ¶ 1.
Mr. Nissen testified:
In my experience, adjusting the molar ratio of the carboxyl group
(contributed by the polycarboxylic acid component) to the hydroxyl
group (contributed by the carbohydrate component) is a well-known
technique to alter binder properties, such as Wet Strength.
Nissen Decl. ¶ 12.
As summarized above, Table 1 of the ’347 patent shows that as the ratio
between the carboxylic acid and carbohydrate gets larger, the wet strength
improves. Mr. Nissen states that in his experience adjusting the ratio was a known
technique, but provided no factual or extrinsic evidence for his opinion. Id.
Requester did not identify a teaching in either Wallace or Agyei-Aye for this fact
or any other publication in this proceeding. Wallace, Agyei-Aye, Worthington, and
Husemoen each teach compositions comprising a polycarboxylic acid and
carbohydrate, but Mr. Nissen did not refer to a disclosure in these publications that
would have lead one of ordinary skill in the art to have arrived at the claimed ratio
or that shows adjusting the ratio was a known result-effective variable. Absent
factual evidence to support his opinion, we give Mr. Nissen’s testimony little
weight. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004)
(“[T]he Board is entitled to weigh the declarations and conclude that the lack of
factual corroboration warrants discounting the opinions expressed in the
declarations.”).
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

8

Patent Owner provided evidence that the claimed ratios achieves different
results with respect to the product’s properties.
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable
within the claims. These cases have consistently held that in such a
situation, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected
results relative to the prior art range.
In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). (Internal citations omitted.)
Patent Owner argues “Wet Strength . . . ‘noticeably and surprisingly’
decreases between a molar ratio of 1:7 and 1:10, thereby demonstrating that the
claimed range of molar ratios is indeed critical and non–obvious over the 1:9.44
mole ratio of Wallace.” Owner Resp’t Br. 13. As evidence, Patent Owner points
to the data in Table 1 of the ’347 patent reproduced above showing that the
claimed ratios of about 1:7, 1:6, and 1:5 have superior strength to the ratio of 1:10
and smaller ratios. Id. Patent Owner argues that the ratio of 1:9.44 is close enough
to 1:10 that it would have been expected to have the same strength. Id. Mr. Nissen
testified that he would have expected such a decrease in strength, but did not
support his opinion by factual evidence. Nissen Decl. ¶ 11.
With regard to the prior art compositions having ratios of 1:2.26 and 1:1,
there is no teaching in the prior art that such compositions would have been
modified to have the recited ratios for any purpose—let alone for the purpose of
achieving the wet strengths shown in the ’347 patent. (“[A]ny need or problem
known in the field of endeavor at the time of invention and addressed by the patent
can provide a reason for combining the elements in the manner claimed.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007).) Consequently, the skilled
worker would not have had further reason to pick them such values.
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

9

In view of the lack of a showing that the ratio between the polycarboxylic
acid and carbohydrate was known to be a result-effective variable, and the
evidence that the claimed ratios are critical to wet strength, we conclude that the
Examiner’s determination not to adopt rejections 1–4 against claims 1, 2, 4, 5, 7–
12, 14–18, and 22–28 is supported by a preponderance of the evidence.

Claims 29–32
Patent Owner appeals to the Board from the Examiner’s determination
favorable to the patentability of claims 29–32, specifically identifying an
anticipation rejection under 35 U.S.C. § 102 and an obviousness rejection under 35
U.S.C. § 103 as rejections not adopted. Req. Appeal Br. 9. However, as explained
below, such rejections were set forth for the first time in their Appeal Brief and
thus are improper.
7

7
Requester filed an original Notice of Appeal on August 23, 2013, noticing the
appeal of claims 1–32. Patent Owner filed a Notice of Cross-Appeal on September
6, 2013, noticing that Requester’s appeal was improper. In two separate Notice of
Defective Notice of Appeal, mailed January 31, 2014, the Examiner identified that
Requester’s original Notice of Appeal, filed August 23, 2013, appealed particular
grounds of rejection that were never proposed and for which there was never a
final determination to not adopt the grounds of rejection. The Examiner identified
which of Requester’s proposed rejections were deemed improper. The Examiner
also identified that Patent Owner’s Notice of Cross-Appeal of September 6, 2013,
was improper for failing to appeal any adopted rejections. Respondent thus filed a
Corrected Notice of Appeal on March 3, 2014, and a Corrected Appeal Brief on
May 2, 2014, citing only five proposed non-adopted rejections. Patent Owner filed
a Respondent Brief on June 2, 2014, addressing the arguments in the Requester’s
Corrected Appeal Brief. The Examiner did not identify any of these documents as
being defective for containing grounds of rejection that were never proposed and
for which there was never a final determination to not adopt the grounds of
rejection.
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

10

Patent Owner added new claims 29–32 by amendment on November 26,
2012 in response to a non–final Office Action. Patent Owner Response after
Office Action (“POR”). On December 19, 2012, Requester responded to the new
claims by identifying where in the references already of record the limitations of
the claims are described. Requester Comments 23–35. While Requester did not
specifically propose a rejection, Requester explained why the claims were not
patentable over the prior art already of record in the proceeding. Id. Subsequently,
in the Action Closing Prosecution (filed June 6, 2013; “ACP”), the Examiner made
a determination favorable to the patentability of the new claims (ACP 66–68 & 70–
71), but did not expressly address Requester’s arguments against their patentability
– apparently because the Requester did not “specifically assert any new ground of
rejection.” ACP 68. The Examiner’s explanation as to why the new claims were
patentable focused primarily on the cited prior art references individually and as
anticipatory, and did not consider Requester’s obviousness arguments.
In the Appeal Brief, filed May 2, 2014, Requester proposed new rejections
of claims 29–32. Patent Owner regards such new rejections as procedurally
improper. Owner Resp’t Br. 5. We agree that Requester’s attempt to propose
rejections at this time is not compliant with the rules. 37 C.F.R. § 41.67(c)(vi)
specifically prohibits new grounds of rejection “unless such ground was withdrawn
by the examiner during the prosecution of the proceeding, and the third party
requester has not yet had an opportunity to propose it as a third party requester
proposed ground of rejection.” These circumstances have not been satisfied here
since Requester could have proposed the rejections in their Comments on
December 19, 2012, but did not.
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

11

Nonetheless, the Board has the authority under 37 C.F.R. § 41.77(b) to make
a new ground of rejection
should the Board have knowledge of any grounds not raised in the
appeal for rejecting any pending claim, it may include in its opinion a
statement to that effect with its reasons for so holding, which
statement shall constitute a new ground of rejection of the claim.
In Q.I. Press Controls, B.V. v. Lee, 752 F.3d 1371, 1383–84 (Fed. Cir.
2014), the Federal Circuit chided the Board for not making a new ground of
rejection under § 41.77(b) when a new ground of rejection was apparent (“Here,
when all these references were before the Board, and this court, an obligation is
owed to the public not to permit inconsistent results when a proper challenge to
that inconsistency is made on appeal.”). We understand there is a certain
incongruence in making new rejections now under § 41.77(b), when Requester did
not make an effort by petitioning the Examiner to make the new rejections, or
otherwise making sure its arguments were considered by the Examiner before
proceeding to appeal. However, when Requester’s comments, immediately after
the new claims were added, made unpatentability arguments that were not
acknowledged by the Examiner in his reasons for confirming the patentability of
the claims, we believe it is improper to overlook them in reaching a final decision.
This reasoning is especially true if, as here, Requester has found features in a
single prior art reference, which would be sufficient to suggest a proposed factual
finding of anticipation. For this reason, we have considered the patentability of
claims 29–32 in view of the prior art of record and have determined that the claims
are not patentable. The rejections are designated as new grounds of rejection and
are explained in detail below.

Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

12

ANTICIPATION BY HUSEMOEN
A. Claims 29–32 are rejected under 35 U.S.C. § 102(b) as anticipated by
Husemoen.
Claim 31
“method of fabricating a fiberglass mat”
The claimed method is directed to a method of fabricating a fiberglass
product where a binder is formed on glass fibers (“a thermoset binder is formed on
the glass fibers”). Husemoen describes this process:
H1. Husemoen teaches a “a process for providing a binder for mineral
fibers, i.e. man made vitreous fibers, for example glass, slag or stone wool, a
binder obtainable via such a process, and a mineral wool product comprising such
a binder.” Husemoen, col. 1, ll. 7–11.
H2. Husemoen teaches adding the binder to shots made of mineral fiber. Id.
at col. 10, ll. 65–67.

step (i)
Step (i) of the claimed method involves disposing on glass fibers “the
alkaline aqueous solution includes an ammonium salt of a monomeric
polycarboxylic acid and a monomeric reducing-sugar carbohydrate.” As explained
below, Husemoen describes a polycarboxylic acid and carbohydrate.
Husemoen’s process has two parts: the first part is described in H3 below
and the second part is described starting in H4.
H3. Husemoen teaches a first step in its process comprising “mixing
together under reaction conditions, an amine and an anhydride, whereby water is
added thereto only after the anhydride has substantially dissolved in and/or reacted
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

13

with the amine, and the reaction is thus terminated.” Id. at col. 1, ll. 4–43. See id.
at col. 3, ll. 13–25 for a description of the anhydrides and amines. The amine can
be diethanolamine (DEA). Id. at col. 3, ll. 20–21.
This first part of Husemoen’s process does not include the claimed alkaline
aqueous solution.
Polycarboxylic acid
A subsequent second step carried out in Husemoen produces a monomeric
carboxylic acid as required by step (i) of the claim. This is explained in findings of
fact H4 and H5.
H4. Husemoen teaches
A second anhydride is preferably added to the reaction mixture
whereby the water is preferably added to the reaction mixture
immediately before or together with the second anhydride, or when
substantially all of the second anhydride is dissolved in and/or reacted
with the mixture of the first anhydride and the amine.
Id. at col. 1, ll. 44–49.
When water is added to an anhydride, a polycarboxylic acid results. Id. at
col. 4, ll. 32–35; Requester App. Br. 15. Husemoen specifically teaches unreacted
carboxylic acids upon addition of the water to the second anhydride:
H5. Husemoen teaches that a resin made according to its method has
unreacted polycarboxylic acids (as required by the claims) after the addition of the
water from H4. Id. at col. 2, l. 64 to col. 3, l. 10. “The first and second anhydrides
are chosen to provide reaction products with a large number of unreacted
polycarboxylic acid groups, which is preferable for water solubility.” Id. at col. 4,
ll. 32–35.

Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

14

Ammonium salt of a polycarboxylic acid
Husemoen teaches the addition of ammonia or ammonium hydroxide which
would form an ammonium salt with the carboxylic acid:
H6. Husemoen also teaches adjusting the pH to “a pH of about 8, whereby a
pH of between about 6–8 is preferred, more preferred being a pH of about 7.” Id.
at col. 4, ll. 20–23. “Suitable bases could be NH3, DEA, TEA, or alkali
hydroxides.” Id. at col. 4, ll. 27–28. In the examples, ammonium hydroxide is
listed. Id. at col. 10, 43–45.
It is disputed between Requester and Patent Owner whether an ammonium
salt of the carboxylic acid would be formed upon addition of the ammonia or
ammonium hydroxide to the free polycarboxylic acid (H5). The argument focuses
on the compounds present in the mixture: DEA which is the amine from H3;
polycarboxylic acid from H5; and ammonium from H6. Patent Owner argues that
DEA would preferentially form amine salts with the polycarboxylic acid, forming
a tight ion pair that would resist displacement by ammonium. Owner
Respondent’s Brief 11 (dated June 2, 2014). This argument is not accompanied by
expert testimony, but is based on theoretical arguments in Patent Owner’s Brief
focusing on the dissociation constants of the compounds. Id. at 11–12. Patent
Owner also argues that ammonia is not taught in Husemoen to be a reactant and
there is no indication of how much of it is added. Id. at 12.
Requester, also bases its argument on the dissociation constants of the
constituent compounds. Requester Appeal Br. 15–16. Requester argues that
because the components are weak acids and bases at least some ammonium salt of
the polycarboxylic acid would form. Requester Rebuttal Br. 7–10.
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

15

To establish anticipation, it is the Requester’s burden to show by a
preponderance of the evidence that Husemoen describes all the elements of the
claim. Since it is not expressly disclosed in Husemoen that an ammonium salt of a
polycarboxylic acid is formed, it must be established that one is inherently formed
under the conditions described in Husemoen. When inherency is a basis of
anticipation, it “may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (internal quotation
marks omitted).
In this case, however, we find that the preponderance of the evidence
supports Requester’s position that some ammonium salt of the polycarboxylic acid
would form. Patent Owner’s arguments about the strength of the binding pairs and
dissociation constants are not persuasive that, in equilibrium conditions, as would
be present in Husemoen, at least some ammonium salt of the polycarboxylic acid
would form as the compounds dissociated and re-associated with each other. It is
immaterial that ammonium is not described as a reactant, or that its quantity is
unknown, because its presence in the reaction mixture would dictate that some
ammonium salt of the polycarboxylic acid is formed. As to the requirement that
the salt is “necessarily” and not “probably” formed, Patent Owner’s arguments do
not establish that no ammonium polycarboxylic aid is formed; there is no evidence
that covalent bonds are formed between the DEA and polycarboxylic acid that
would resist dissociation and prevent the ammonium from associating with the
polycarboxylic acid.

Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

16

Monomeric reducing-sugar carbohydrate
A “monomeric reducing-sugar carbohydrate” is also present in the claimed
aqueous alkaline solution. Husemoen describes sugars, such as glucose, as an
additive:
H7. Husemoen teaches that the reaction mixture can comprise accelerators
and resin additives. Id. at col. 3, l. 27–30.
H8. Among the list of additives are mono-, di- and polysaccharides, such as
sucrose and glucose syrup. Id. at col. 3, ll. 40–42; claim 16.

“thermoset binder consists essentially of a nitrogenous polymer having melanoidin
products”
The ammonium salt of the polycarboxylic acid and the reducing sugar
carbohydrate form a melanoidin product. Melanoidin, as explained in the ’347
patent, is a product of the Maillard reaction between an amine reactant (the
ammonium salt) and a reducing–sugar carbohydrate. ’347 patent, col. 2, ll. 25–46.
As shown above, Husemoen in the second part of its process has a solution
with the sugar (H8) and ammonium salt of a polycarboxylic acid (H6) that would
react to form a melanoidin product. As evidence that melanoidin is formed by
Husemoen, Requester provided declarations by Povl Nissen (Nissen Decl.) and Jan
Rud Andersen (“Andersen Decl.”). Requester’s App. Br. 12.
Povl Nissen is one of the co-inventors of the Husemoen patent. Nissen Decl.
¶ 4. Mr. Nissen testified that he made binder according to Husemoen. Id. at ¶ 7.
The binder included dextrose which was not present in any of Husemoen’s
working examples. Husemoen, cols. 5–10. Mr. Nissen testified that binder made
according to Husemoen had an increase of 3% in the C:N ratio with cure
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

17

temperature and time which was of the same magnitude of a binder made
according to example 4 of the ’347 patent and which is characteristic of
melanoidin. Nissen Decl. ¶ 7. Mr. Nissen also testified that furan based gaseous
compounds were produced during manufacture of Husemoen’s binder, a feature
which Patent Owner said was indicative of melanoidin production via Maillard
chemistry. Id. at ¶¶ 8–9. Thus, both binder characteristics (C:N ratio; furan)
which Patent Owner asserted were possessed by melanoidins (POR 30) were
demonstrated to be present in the binder made following Husemoen’s directions.
Patent Owner stated the Husemoen’s amide based binder would “have a
strong infra-red absorbance near 1690–1630 cm
–1
consistent with amide carbonyl
C–O, as opposed to ester carbonyl C–O vibrations. The Husemoen binder will also
show infra-red absorbance near 3700–3500 cm
–1
consistent with amide carbonyl
N–H vibrations.” POR 31 (emphasis added).
Dr. Andersen, Senior Project Manager of Rockwool International A/S
(Andersen Decl. ¶ 1), testified that the IR spectra of binder made according to the
’347 patent had infra-red absorbance with the 3700–3500 cm
-1
range, the same
characteristic Patent Owner argued was possessed by Husemoen’s allegedly
different binder. Id. at ¶¶ 4, 5. Thus, Dr. Andersen rebutted, in part, Patent
Owner’s attempt to distinguish Husemoen’s binder from the claimed binder
comprising melanoidin.
In sum, the preponderance of the evidence supports Requester’s contention
that Husemoen describes a binder that comprises melanoidin. The presence of
melanoidin in Husemoen provides further support for reactive ammonium salt of a
polycarboxylic acid since Patent Owner suggested that the latter participates in the
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

18

Maillard reaction and consequent production of melanoidin. ’347 patent, col. 11,
ll. 19–33.
8

“alkaline aqueous solution”
The claim recites that the aqueous solution is “alkaline.” Husemoen teaches
adjusting the pH of the solution to pH 8 which is an alkaline pH. H6.

“consists essentially of a nitrogenous polymer having melanoidin products”
The claim recites that “the thermoset binder consists essentially of a
nitrogenous polymer having melanoidin products cross-linked with ester linkages
from the monomeric polycarboxylic acid.”
“Consisting essentially of” is a transition phrase commonly used to
signal a partially open claim in a patent. Typically, “consisting
essentially of” precedes a list of ingredients in a composition claim or
a series of steps in a process claim. By using the term “consisting
essentially of,” the drafter signals that the invention necessarily
includes the listed ingredients and is open to unlisted ingredients that
do not materially affect the basic and novel properties of the
invention.
PPG Indus. v. Guardian Indus.Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998)
(emphasis added).
Patent Owner added the “consisting essentially” language in the amendment
filed November 26, 2012. Patent Owner stated:
components such as the combination of dual anhydrides and an amine,
relied upon to prepare Husemoen's amide-containing polymeric

8
The patent explains, “[w]ithout being bound to theory,” that the ammonia of the
ammonium salt of the polycarboxylic acid is believed to participate in the reaction.
Id. at col. 11, ll. 19–33.

Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

19

binder, would materially affect the basic and novel properties of the
formaldehyde-free thermoset binder claimed in the ’347 patent.
POR 9.
In accordance with PPG, 156 F.3d at 1354, Patent Owner identified “the
basic and novel properties of the invention” as 1) the C:N ratio; 2) 1735 cm
-1

infra-red absorbance; and 3) release of furan base. POR 9. Patent Owner,
however, did not demonstrate that these characteristics were absent from
Husemoen’s binder. Requester, on the other hand, showed that at least two of
these characteristics are possessed by binder produced following Husemoen’s
instructions, i.e., C:N ratio (Nissen Decl. ¶ 7) and furan based gaseous compounds
(id. at ¶¶ 8,9). Patent Owner asserted that this was not the case, but did not provide
adequate rebuttal evidence. Id. at 10. Neither the ’347 patent nor Patent Owner’s
arguments clearly explain how the alleged presence of another polymer would
affect the basic and novel properties of the claimed melanoidin composition.

Claim 29
Claim 29 is similar to claim 31, but the reactants are dextrose, citric acid,
and ammonia. Dextrose is d–glucose
9
and therefore is met by Husemoen’s
disclosure of glucose syrup (H8). Husemoen also teaches citric acid:
H9. Husemoen recites a list of accelerators which includes citric acid.
Husemoen, at col. 3, l. 9; claim 14.
Husemoen also teaches ammonia. H6.

9
http://medical-dictionary.thefreedictionary.com/dextrose
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

20

Claim 30
Claim 30 is similar to claim 31, but the reactants are ammonia, citric acid,
and a reducing-sugar carbohydrate. These reactants are described in Husemoen as
described above for claims 29 and 31.
Claim 32
Claim 30 is similar to claim 31, but the reactants are ammonia, citric acid,
and a reducing-sugar carbohydrate. These reactants are described in Husemoen as
describe above for claims 29 and 31.

OBVIOUSNESS
B. Claims 29–32 are rejected under 35 U.S.C. § 103(a) as obviousness in
view of Worthington,
10
Wallace, and Helbing.
11

Worthington
Wo1. Worthington describes a thermosetting composition for use in making
shell molds or cores. Worthington, col. 1, ll. 20–33.

Claims 29–32 requires a carbohydrate, ammonia, and a polycarboxylic acid.
These elements are described in Worthington as follows (emphasis added):
Wo2. The composition comprises (1) a carbohydrate, (2) a salt of an acid,
such as ammonium sulphate, and (3) a carboxylic acid. Id. at col. 1, ll. 53–65.
Wo3. The composition further comprises a (4) cross–linking agent and (5)
an amine. Id.

10
Worthington et al., US 3,513,001, patented May 19, 1970.
11
Helbing, US2005/0202224 A1, published Sep. 15, 2005.
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

21

Wo4. Worthington teaches that the (1) carbohydrate can be a
monosaccharide, such as dextrose, or a disaccharide. Id. at col. 2, ll. 5–15; cols. 7–
8 (Experiments 1–24).
Wo5. Worthington teaches that the thermosetting composition comprises
(2) the salt of an acid which can be ammonium sulphate. Id. at col. 1, ll. 55–58;
col. 3, ll. 4–9.
Wo6. Worthington teaches the thermosetting composition also comprises
(3) a polycarboxylic acid. Worthington, col. 1, ll. 59–60.
Wo7. An ammonium salt of the polycarboxylic acid would form because of
the presence of ammonium (Wo5). See supra 12–13.

The claims also require an alkaline aqueous solution. Worthington doesn’t
describe the pH of its composition, but it does teach an aqueous solution.
Wo8. The components are in the form of an aqueous solution.
Worthington, col. 5, ll. 14-18.
Wo9. In sum, Worthington describes an aqueous solution (Wo8) of step (i)
of claim 31 which “includes” an ammonium salt of a monomeric polycarboxylic
acid (Wo5–Wo7) and a monomeric reducing sugar–carbohydrate (Wo4).
Wo10. Worthington also describes the claimed aqueous solution (Wo8) of
step (i) of claim 32 comprising a carbohydrate reactant (Wo4), an amine base
reactant (Wo3, Wo5), and a polycarboxylic acid reactant (Wo6).

Volatilizing, dehydrating
Claims 29–32 recite that the process includes steps of “volatilizing” or
“dehydrating” the aqueous solution.
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

22

Wo11. Worthington teaches removing water from the mixture of
components (id. at col. 5, ll. 24–29; col. 5, l. 73 to col. 6, l. 6) and thus meets the
claim limitations of “volatilizing” (claims 29 and 32) and “dehydrating” (claims 30
and 31).

Glass fiber
The claims require depositing the aqueous solution on glass fibers or
fiberglass prior to the steps of volatilizing or dehydrating.
Wo12. Worthington teaches mixing the composition with “a granular
refractory material such as silica sand, zircon sand or any of the other refractory
materials commonly used and well known to those engaged in the foundry
industry.” Id. at col. 4, ll. 19–23.
Wo13. Worthington does not expressly disclose a fabricating a fiberglass
product or depositing the binder composition on glass fibers as recited in claims
29–32.

Cured, cross-linked, or polymerized
The volatilized or dehydrated solution is cured, cross–linked, or polymerized
in the claims.
Wo14. Worthington teaches mixing the refractory material (sands) with the
composition and curing it with heat. Id. at col. 9, ll. 7–13; Example 4 (cols 8–9).
Wo15. Such curing step meets the polymerizing step of claim 29, heating
step of claim 30, polymer of claim 31, and curing step of claim 32 because
Worthington teaches the heat turns the composition into a rigid foam with
mechanical strength (id. at col. 10, ll. 11–14; col. 9, Table 2).
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

23

Summary
In sum, Worthington describes the steps of the methods recited in claims 29–
32, but (1) not that the solution is alkaline; and (2) not that the solution is deposited
on glass fibers.
Wallace
Wa1. Wallace teaches sand cores for use in the casting of metals. Wallace
1 (col. 1): 1–2.

Carbohydrate, ammonia, carboxylic acid
Claims 29–32 requires a carbohydrate, ammonia, and a polycarboxylic acid.
These elements are described in Wallace as follows:
Wa2. Wallace describes making its sand core with “black strap molasses,
an uncrystallizable sugar, such as glucose and dextrose, a starch or dextrine.” Id.
at 1 (col. 1): 19–21.
Wa3. Wallace further describes making its sand core with ammonium
sulphate. Id. at 1 (col. 1): 42; 1 (col. 2): 34–40.
Wa4. In addition to the sugar and ammonium sulphate, Wallace teaches
adding a glycerol-citric-acid resin to the core. Id. at 1 (col. 1): 45–46; 1 (col. 2): 7–
13. Citric acid is a polycarboxylic acid.
Wa5. An ammonium salt of the polycarboxylic acid would form because of
the presence of ammonium (Wa3). See supra 12–13.
Wa6. Wallace also teaches adding water to the components (id. at 1 (col.
1):42–49) which would form an aqueous solution.
Wa7. In sum, Wallace describes the claimed aqueous solution (Wa6) of
claim 29 including dextrose (Wa2), citric acid (Wa4), and ammonia (Wa3).
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

24

Wa8. Wallace describes the claimed alkaline aqueous solution (Wa6) of
claim 30 including a reducing-sugar carbohydrate (Wa2), citric acid (Wa4), and
ammonia (Wa3).
Wa9. Wallace describes the claimed aqueous solution (Wa6) of step (i) of
claim 31 which “includes” an ammonium salt of a monomeric polycarboxylic acid
(Wa4–Wa6) and a monomeric reducing sugar-carbohydrate (Wa2).
Wa10. Wallace describes the claimed alkaline aqueous solution (Wa6) of
step (i) of claim 32 comprising a carbohydrate reactant (Wa2), an amine base
reactant (Wa3), and a polycarboxylic acid reactant (Wa4).
Wa11. Wallace does not teach the pH of its solution.

Volatilizing, dehydrating
Claims 29–32 recite that the process includes steps of “volatilizing” or
“dehydrating” the aqueous solution.
Wa12. Wallace teaches baking the aqueous solution at a temperature
preferably between 180°C to 300°C (id. at 1 (col. 2):24–30) which would remove
the water from the mixture because the temperature is above the boiling point of
water, thus meeting the claim limitations of “volatilizing” (claims 29 and 32) and
dehydrating (claims 30 and 31).

Glass fiber
The claims require depositing the aqueous solution on glass fibers or
fiberglass prior to the steps of volatilizing or dehydrating.
Wa13. Wallace teaches mixing the binder of Wa8–Wa10 with sand. Id. at 1
(col. 2):20–23.
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

25

Wa14. Wallace does not expressly disclose fabricating a fiberglass product
or depositing the binder composition on glass fibers as recited in claims 29–32.

Cured, cross-linked, or polymerized
The volatilized or dehydrated solution is cured, cross-linked, or polymerized
in the claims.
Wa15. Wallace teaches mixing the binder with sand and baking it at a
temperature preferably between 180°C to 300°C. Id. at 1 (col. 2):24–30.
Wa16. Such baking step meets the polymerizing step of claim 29, heating
step of claim 30, polymer of claim 31, and curing step of claim 32 because Wallace
teaches that the baking produces a core which is highly water-insoluble and
unusually tough. Id. at 1 (col. 2): 28–50.

Summary
In sum, Wallace describes the steps of the methods recited in claims 29–32,
but (1) not that the solution is alkaline; and (2) not that the solution is deposited on
glass fibers.
Helbing
He1. Helbing describes a binder for non-woven fibers, such as fiberglass.
Helbing ¶ 7.

Polycarboxylic acid, ammonia
Claims 29–32 requires a carbohydrate, ammonia, and a polycarboxylic acid.
Ammonia and a polycarboxylic acid are expressly described in Helbing.
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

26

He2. The binder described in Helbing comprises (1) a polyacid component
having acid groups, which can be a polycarboxylic acid; (2) a polyhydroxy
component having hydroxyl groups; and (3) a base such as ammonia which is
used to neutralize the polyacid. Id. at ¶ 8.
He3. The polyacid in Helbing can be citric acid (“In another illustrative
embodiment, the composition includes a polyacid component, such as succinic
acid, citric acid . . .”). Id.; see also id. at ¶17.
He4. The polyacid can be neutralized with a base, such as ammonia, to form
an ammonium salt of the polyacid and an ammonium salt of a polycarboxylic acid.
In one illustrative aspect, the composition is an alkaline composition,
where the polyacid component is neutralized by the addition of a base
or where certain salts of the polyacid component are used. In another
illustrative embodiment, the composition includes a polyacid
component, such as succinic acid, citric acid, or fumaric acid and the
like that has been neutralized by the addition of a base, or is a salt. In
another illustrative embodiment, the polyacid component is maleic
acid [a polycarboxylic acid] neutralized with, for example, aqueous
ammonia. In another illustrative embodiment, the polyacid
component is the ammonium salt of maleate [an ammonium salt of a
polycarboxylic acid].
Id. at ¶ 8.
He5. The polyhydroxy component “is sufficiently nonvolatile to maximize
its ability to remain available for reaction with the polyacid component.” Id. at ¶
19. Helbing exemplifies the polyhydroxy component as a polyvinyl acetate. Id.
He6. Ammonium salt can be added as a catalyst. Id. at ¶ 20.
He7. The combination of the polyacid, polyhydroxy component, and
ammonia is an aqueous alkaline solution as required by claims 29–32. Id. at ¶ 7.

Carbohydrate
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

27

The claims also require a carbohydrate.
He8. Helbing does not expressly teach a reducing sugar carbohydrate
reactant as recited in claims 29-32.
He9. However, Helbing teaches a polyhydroxy compound. Id. at ¶ 8.
He10. A sugar, such as dextrose, is a polyhydroxy compound.
12

Volatilizing, dehydrating
Claims 29–32 recite that the process includes steps of “volatilizing” or
“dehydrating” the aqueous solution.
He11. Helbing teaches baking the binder composition at 300°F or 350°F to
cure it. Id. at ¶ 41. This step would remove the water from the aqueous mixture
because the temperature is above the boiling point of water, thus meeting the claim
limitations of “volatilizing” (claims 29 and 32) and dehydrating (claims 30 and
31).

Glass fiber
He12. Helbing teaches making a fiberglass product. Id. at ¶ 11. Helbing
also describes a glass fiber product and glass fibers. Id. at ¶¶ 10, 16.

Cured, cross-linked, or polymerized
The volatilized or dehydrated solution is cured, cross-linked, or polymerized
in the claims.
He13. Helbing contacting fibers, such as glass fibers, with the thermally

12
http://en.wikipedia.org/wiki/Glucose (accessed March 9, 2015) (shows D-
glucose with five hydroxyl groups.
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

28

curable aqueous binder composition described above and heating to cure the binder
composition to form a thermoset polyester. Id. at ¶¶ 9, 10. The temperature can be
at 300°F or 350°F to cure it. Id. at ¶ 41.
He14. Such heating/baking step (He13) meets the polymerizing step of
claim 29, heating step of claim 30, polymer of claim 31, and curing step of claim
32 because it results in “a structural or morphological change in the aqueous binder
. . . that is sufficient to alter the properties of non-woven fibers to which an
effective amount of binder has been applied.” Id. at ¶ 12.

Alkaline solution
He15. Helbing teaches that “the pH of the binder composition is greater
than 7, or, illustratively, is in the range from about 7 to about 10.” Id. at ¶ 9.
Helbing teaches that avoiding acidic binder compositions, which “cause corrosion
problems in manufacturing equipment . . . eliminating the need to retrofit such
plants with stainless steel equipment.” Id. at ¶ 22.

Discussion
Each of Worthington and Wallace describes a binder composition with a
carbohydrate, a polycarboxylic acid, and ammonia in an aqueous solution. Wo9–
10; Wa7–10. Thus, a preponderance of the evidence establishes that the claimed
combination of three recited components in an aqueous solution to form a strong
binder composition was known in the prior art. As to the specifically recited
dextrose as the carbohydrate and citric acid as the polycarboxylic acid, both
Worthington and Wallace teach these components. Id.
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

29

To the extent that Patent Owner contends that neither Worthington nor
Wallace describes an alkaline solution (POR 41), Hebling teaches a binder
composition that is an aqueous alkaline solution comprising a polycarboxylic acid,
ammonia, and generically a polyhydroxy (He2, He4, He8, He13). While Hebling
does not teach that the polyhydroxy acid is carbohydrate, carbohydrates are
polyhydroxy acids. He10. Because the similar reactants are present in Hebling as
in Worthington and Wallace, it would have been reasonable to expect that the same
products are formed, and that such products would be formed under alkaline
conditions. The choice of alkaline conditions would have been obvious to one of
ordinary skill in the art based on Hebling’s selection of such a conditions in a
similar chemical reaction.
Patent Owner’s attempt to distinguish Helbing (Owner Remarks 41) ignores
the fact that a reducing sugar is a polyhydroxy component (He10). The selection
of a reducing sugar as a polyhydroxy component would have been suggested by
Worthington and Wallace (Wo2; Wa7-8) which have similar reactants to Helbing
(i.e., polycarboxylic acid and ammonia).
An alkaline solution would have been obvious to the skilled artisan because
Helbing explains the need to avoid acidic binder compositions (He15). Non-
obviousness cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Alternatively, while Worthington and Wallace might be silent on pH, there
are only three choices—acidic, neutral, and alkaline pH—and each would have
been obvious to one of ordinary skill in the art because of the small number.
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

30

The claims require the binder to be deposited on glass fibers, dehydrated or
vaporized, and cured. Worthington and Wallace carry out these steps, but not on
glass fibers to make fiberglass as required by each of the claims. Wo12–13;
Wa13–14.
However, Helbing, which teaches a very similar binder composition,
describes making fiberglass using glass fibers by substantially the same
dehydration and curing steps as in Worthington and Wallace. He9–12. It would
have been obvious to used glass fiber in either of Worthington or Wallace in view
of Worthington’s teaching that any material “commonly used and well known to
those engaged in the foundry industry” can be used to fabricate a thermosetting
composition. Wo12. The use of a conventional material for its established
function would have been obvious to one of ordinary skill in the art. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“. . . a court must ask whether the
improvement is more than the predictable use of prior art elements according to
their established functions.”)
The cited publications do not teach that a melanoidin product is formed as
recited in claims 29–32. However, because the reactants and process steps recited
in the claims are the same as those in Worthington and Wallace, there is reasonable
basis to believe that melanoidin is formed.
Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.
. . .
Whether the rejection is based on “inherency” under 35 U.S.C. § 102, on
“prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively,
the burden of proof is the same, and its fairness is evidenced by the PTO’s
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

31

inability to manufacture products or to obtain and compare prior art
products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (footnote omitted); In re Skoner,
517 F.2d 947, 950-51 (CCPA 1975) (“Appellants have chosen to describe their
invention in terms of certain physical characteristics [not described expressly in the
prior art].... Merely choosing to describe their invention in this manner does not
render patentable their method which is clearly obvious in view of [the prior art]."
(Citation omitted)).
The claims further recite that the thermoset binder prepared as described in
the claim with the carbohydrate, sugar, and ammonia is “consisting essentially of
melanoidins” that are cross-linked with the polycarboxylic acid. The phrase
“consisting essentially of” excludes material which would affect the basic and
novel properties of the claimed invention. PPG, 156 F.3d at 1354. There is
insufficient evidence in the record before us in that any material in any of
Worthington, Wallace, or Helbing, which are not recited in claims 29–32, would
affect the basic and novel properties of the invention.
To the extent other materials and cross-linking agents are present, it has not
been established that such cross–- agents and materials would prevent the
production of melanoidin and eliminate the cross-linkage with the polycarboxylic
acid.
Patent Owner argued:
the mere presence of reactants which could form cross-linked
melanoidins in an aqueous mixture, i.e., a carbohydrate, a nitrogen
source, and a polyacid, does not inherently mean that those substances
will be subjected to the appropriate conditions and react in such a way
as to form a thermoset binder consisting essentially of melanoidins
cross–linked with a polyacid.
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

32

POR 38.
However, Patent Owner did not provide sufficient evidence or arguments as
to why the same reactants under the same conditions recited in the claims would
not form melanoidin with the claimed characteristics.

Helbing
Helbing describes a process which would have made the claimed process
obvious. As set forth above, Helbing describes the same reactants (He2–7) and the
same process steps (He9–12) as recited in the claims. Helbing’s solution can be
alkaline as required by the claim. He13. Helbing deposits its alkaline solution on
glass fibers prior to the volatilizing and dehydrating steps. He11. The main
difference between the clamed subject matter and Helbing is that Helbing doesn’t
expressly teach a carbohydrate such as dextrose. He8. However, Helbing describes
adding a polyhydroxy reactant (He2) and carbohydrates, such as dextrose, can be
polyhydroxy compounds (He8). Each of Worthington (Wo4) and Wallace (Wa2)
describe using a carbohydrate in a reaction similar to the reaction of Hebling.
Consequently, it would have been obvious have utilized a carbohydrate in Helbing
as an exemplification of a polyhydroxy compound.

SUMMARY
The Examiner’s decision not to adopt rejections 1-4 of claims 1, 2, 4, 5, 7–
12, 14–18, and 22–28 is AFFIRMED.
Claims 29–32 are rejected as set forth in Rejections A and B as discussed
above. These rejections are designated as new grounds of rejection.

Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

33

NEW GROUND OF REJECTION

This decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that "[a]ny decision which includes a new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Correspondingly, no portion of the decision is final for purposes of
judicial review. A requester may also request rehearing under 37 C.F.R. § 41.79, if
appropriate, however, the Board may elect to defer issuing any decision on such
request for rehearing until such time that a final decision on appeal has been issued
by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R. § 41.77(b)–
(g). The decision may become final after it has returned to the Board. 37 C.F.R.
§ 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN ONE
MONTH FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be either an
amendment of the claims so rejected or new evidence relating to the claims so
rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …
Any request to reopen prosecution before the examiner under 37 C.F.R.
§ 41.77(b)(1) shall be limited in scope to the "claims so rejected." Accordingly, a
request to reopen prosecution is limited to issues raised by the new ground(s) of
rejection entered by the Board. A request to reopen prosecution that includes
issues other than those raised by the new ground(s) is unlikely to be granted.
Furthermore, should the patent owner seek to substitute claims, there is a
presumption that only one substitute claim would be needed to replace a cancelled
claim.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be
limited in scope to the issues raised by the Board's opinion reflecting its decision to
reject the claims and the patent owner's response under paragraph 37 C.F.R.
§ 41.77(b)(1). A newly proposed rejection is not permitted as a matter of right. A
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

34

newly proposed rejection may be appropriate if it is presented to address an
amendment and/or new evidence properly submitted by the patent owner, and is
presented with a brief explanation as to why the newly proposed rejection is now
necessary and why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for all
patent owner responses and requester comments, is required.
The examiner, after the Board's entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d) as to
whether the Board's rejection is maintained or has been overcome. The proceeding
will then be returned to the Board together with any comments and reply submitted
by the owner and/or requester under 37 C.F.R. § 41.77(e) for reconsideration and
issuance of a new decision by the Board as provided by 37 C.F.R. § 41.77(f).

AFFIRMED; 41.77(b)

alw
Appeal 2015-001256
Reexamination Control 95/000,675
Patent 7,772,347 B2

35

Patent Owner:

Barnes & Thornburg LLP
11 South Meridian Street
Indianapolis, IN 46204

Third Party Requester:

Tiffany L. Williams
Kilpatrick Townsend & Stockton LLP
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309