Ex Parte 7,772,347 B2 et alDownload PDFPatent Trial and Appeal BoardApr 30, 201595000675 (P.T.A.B. Apr. 30, 2015) Copy Citation 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 Copy with citationCopy as parenthetical citation