Ex Parte Bayer

Patent Trial and Appeal Board

Nov 3, 2016

13089971 (P.T.A.B. Nov. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/089,971 04/19/2011 Roland Bayer
109 7590 11/07/2016
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
69701 US NP 1469
EXAMINER
COHEN, STEFANIE J
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
11/07/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROLAND BA YER
Appeal2014-008810
Application 13/089,971
Technology Center 1700
Before BEYERL YA. FRANKLIN, MICHELLE N. ANKENBRAND, and
JEFFREY R. SNAY, Administrative Patent Judges.
ANKENBRAND, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision2 rejecting claims 1, 7, 9, 11, 14, 16, and 18-22. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Background
The subject matter on appeal relates to a composition for extrusion-
molded bodies comprising inorganic material and a methylhydroxyethyl
1 Appellant identifies The Dow Chemical Company as the real party in
interest. App. Br. 3.
2 Advisory Action mailed December 17, 2013.
Appeal2014-008810
Application 13/089,971
cellulose ("ivIHEC"). Spec. Abstract, 1 :9. According to the specification,
known compositions for extrusion-molded bodies comprising a
methylcellulose or MHEC as a binder/plasticizer required high extrusion
pressures, which resulted in both technical and economical disadvantages,
including increased power expenditure and increased wear of the extruder.
Id. at 2:28-31. The recited composition is said to overcome those
disadvantages by utilizing an MHEC having specific ranges of degrees of
methyl substitution ("DS(methyl)") and hydroxyethyl substitution
("MS(hydroxyethyl)"), thereby enabling extrusion at lower extrusion
pressures. Id. at 3 :21-26. Claim 1, is representative of the claims on appeal,
and is reproduced below from the Claims Appendix to the Appeal Brief:
1. A composition for extrusion-molded bodies comprising
a) from 90 to 99.3 weight percent of an inorganic material that
sets as a result of baking or sintering, said inorganic material
comprising a clay, and an oxide that forms cordierite or mullite
when mixed with the clay; and
b) from 0. 7 to 10 weight percent of a methylhydroxyethyl
cellulose having a DS(methyl) of from 1.50 to 1.90, an
MS(hydroxyethyl) of from 0.30 to 0.70 and a sum of the
DS(methyl) and the MS(hydroxyethyl) of from 2.10 to 3.20,
the percentages a) and b) being based on the weight of the
inorganic material a) and the methylhydroxyethyl cellulose.
App. Br. 15 (Claims App'x). Claim 14, the other independent claim
on appeal, recites "[a]n extrusion-molded body produced from a
composition comprising" the same components in the same ranges
recited in claim I. Id. at 15-16.
2
Appeal2014-008810
Application 13/089,971
Schlesiger
Lu
The References
US 7,041,168 B2
US 7,887,897 B2
The Rejection
May 9, 2006
Feb. 15, 2011
The Examiner maintains the rejection of claims 1, 7, 9, 11, 14, 16, and
18-22 under 35 U.S.C. § 103(a) as unpatentable over the combination of Lu
and Schlesiger. Ans. 2-7.
OPINION
Appellant argues the claims as a group, relying on limitations that are
common to independent claims 1 and 14. See App. Br. 9-13. We, therefore,
limit our discussion to claim 1. The remaining claims on appeal stand or fall
with claim 1.
After having considered the evidence presented in this Appeal and
each of Appellant's contentions, we are not persuaded that Appellant
identifies reversible error; and we affirm the Examiner's§ 103(a) rejection
for the reasons expressed in the Final Action, the Answer, and below.
As is relevant to Appellant's arguments on appeal, the Examiner finds
that Lu discloses an extrusion-molding composition comprising
methylcellulose derivatives as a binder, but does not teach other derivatives
that can be used as a binder. Advisory Act. 3. The Examiner finds that
Schlesiger teaches extrusion compositions comprising additives containing
cellulose derivatives, including MHEC. Id. at 3--4. The Examiner further
finds that Schlesiger discloses an extrusion composition comprising an
irreversibly crosslinked MHEC with a DS(methyl) value of from 1.2 to 1.7
and an MS(hydroxyethyl) value of from 0.15 to 0.65. Id. at 4--5.
3
Appeal2014-008810
Application 13/089,971
The Examiner concludes that it would have been obvious to the
ordinarily skilled artisan to use Schelsiger's irreversibly crosslinked MHEC
as a cellulose derivative in Lu's extrusion composition in order "to enhance
the surface quality of the extrudate, permit a high exit velocity and achieve
shape stability of the extrudate," as disclosed in Schlesiger. Id. at 5. The
Examiner also concludes that the ordinary artisan would have considered the
recited DS(methyl) and MS(hydroxyethyl) ranges obvious because the "MS
values, DS values and sum of the DS and MS values" taught by the
combination of Lu and Schlesiger overlap Appellant's recited ranges. Id. at
5---6.
Appellant argues that neither Lu nor Schlesiger discloses MHEC.
App. Br. 9-10. More specifically, Appellant asserts that Schlesiger "teaches
the use of certain irreversibly cross-linked MHEC," but the ordinary
meaning of MHEC and the description of MHEC in the specification
"exclude irreversibly cross-linked [MHEC]." Id. (citing Sigma Aldrich
Product Catalogue; Spec. 5:9-16); Reply Br. 3.
It is well established that "the PTO must give claims their broadest
reasonable construction consistent with the specification. . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). "[A]s applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee." Id.
Appellant's specification does not provide a definition ofMHEC or
limit the MHEC to a particular chemical formula. Further, although
Appellant points to the specification's discussion of "dissolving the MHEC
4
Appeal2014-008810
Application 13/089,971
component in an aqueous diluent," and contrasts that with Schlesiger's
teaching that crosslinked MHEC "form[s] a gel," Appellant does not argue
persuasively that the two properties are mutually exclusive, or that the
crosslinked MHEC cannot dissolve in an aqueous diluent. In that regard,
Schlesiger discloses "[t]he crosslinking [of the MHEC] can be carried out
before or after the etherification reaction to give the water-soluble cellulose
derivative." Schlesiger, 6:66-7:1 (emphasis added); see also id. at 7:26-29
("The inventively used cellulose derivatives are preferably cellulose ethers,
the water solubility of which is achieved by the etherification with
hydroxyalkyl groups and/or with alkyl groups."), 9:54--57 (explaining that
crosslinked MHEC is dissolved in water before conducting rheological
measurements). We, therefore, find that the portion of the specification on
which Appellant relies embraces both non-crosslinked and crosslinked
MHEC. In view of that finding, and the fact that the specification does not
place limitations on the definition or chemical formula of MHEC, we agree
with the Examiner that the broadest reasonable interpretation of MHEC does
not exclude crosslinked MHEC.
Appellant argues that the combination of Lu and Schlesiger is
improper because the two references provide no motivation for their
combination. App. Br. 11-13. In particular, Appellant argues that Lu and
Schlesiger employ chemically different materials with different end uses,
produce different sizes and types of microstructures, and use different
extrusion profiles and pressures. See id.
We are not persuaded by Appellant's arguments. First, it is not
necessary that the requisite motivation or reason to combine references be
from the prior art. Rather, the reason to modify the prior art "may be found
5
Appeal2014-008810
Application 13/089,971
in any number of sources, including common knowledge, the prior art as a
whole, or the nature of the problem itself." Dystar Textilfarben GmbH &
Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir.
2006). Nevertheless, the Examiner provides a rationale for combining the
teachings of Lu and Schlesiger that is based on Schlesiger' s description of
the advantages that an extrusion composition comprising irreversibly
crosslinked MHEC provides over a similar composition comprising non-
crosslinked methylcellulose derivatives-namely, enhanced surface quality,
higher exit velocity, and shape stability. Advisory Act. 5; Ans. 10; see
Schlesiger 1:58-2:30 (explaining that, although it was known to use
methylcellulose and MHEC as additives for cement extrusion, those
additives "do not display the desired property profile.").
Further, the fact that Lu and Schlesiger utilize different materials,
sizes, and extrusion pressures does not militate against combining their
teachings because both references disclose utilizing a cellulose derivative as
an additive in the extrusion composition. In other words, the Examiner
substitutes one known cellulose additive (i.e., Schlesiger's irreversibly
crosslinked MHEC) for another (i.e., Lu's methylcellulose) in an extrusion
composition, which would have provided the predictable result of producing
an extrudate or extruded structure. Advisory Act. 9; see KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007).
Appellant argues that the combination of Lu and Schlesiger does not
suggest the particular degrees of methyl and hydroxyethyl substitution
required by the claims. App. Br. 10-11. In that regard, Appellant contends
that "[a]ll Examples in Schlesiger" have a degree of substitution that falls
outside the recited ranges. Id. at 11.
6
Appeal2014-008810
Application 13/089,971
We are not persuaded. Although Schlesiger exemplifies certain
degrees of substitution, it is well established that a reference is not limited to
its examples or preferred embodiments. Merck & Co. v. Biocraft Labs, Inc.,
874 F.2d 804, 807 (Fed. Cir. 1989). Instead, all disclosures therein must be
evaluated for what they would have fairly suggested to one of ordinary skill
in the art. In re Boe, 355 F.2d 961, 965 (CCPA 1966). As the Examiner
finds, Schlesiger teaches using irreversibly crosslinked mixed ethers of
MHEC having DS(methyl) values from 1.2 to 1.7 and MS(hydroxyethyl)
values from 0.15 to 0.65 for extrusion. Advisory Act. 5; Schlesiger 7:53-56.
The ranges for degree of methyl and hydroxyethyl substitution disclosed in
Schlesiger overlap Appellant's recited ranges and, therefore, render them
prima facie obvious. In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir.
2003) ("In cases involving overlapping ranges, we and our predecessor court
have consistently held that even a slight overlap in range establishes a prima
facie case of obviousness."). Accordingly, the burden shifts to Appellant to
show that the particular recited ranges are critical, e.g., achieve unexpected
results relative to the prior art ranges. Id. at 1330.
Appellant argues that the Examples in Table 1 of the specification
show that the recited composition "reduces the extrusion pressure of clay
compositions by at least 2 bar as compared with similar compositions that
lack the claimed MHEC component." App. Br. 13.
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence, including the evidence of
secondary considerations, along with the evidence upon which the
conclusion of prima facie obviousness was based. In re Rinehart, 531 F.2d
1048, 1052 (CCPA 1976). The burden rests with Appellant to establish that
7
Appeal2014-008810
Application 13/089,971
the alleged unexpected results presented as being associated with the
claimed invention are, in fact, unexpected, as well as commensurate in scope
with the claimed subject matter. See, e.g., In re Klosak, 455 F.2d 1077,
1080 (CCPA 1972).
Table 1 includes data illustrating resulting extrusion pressure for
compositions comprising MHEC or methylcellulose with varying degrees of
DS(methyl) and MS(hydroxyethyl) substitution. Spec. 8:20-32. Examples
1--4 provide results from compositions comprising MHEC within the recited
DS(methyl) and MS(hydroxyethyl) substitution ranges, and the remaining
examples are comparative. Id.
As the Examiner finds, the Table 1 data are not commensurate in
scope with claim 1, which encompasses broad ranges of DS(methyl)
substitution, MS(hydroxyethyl) substitution, and sums of the two. Final Act.
8. And Appellant does not provide any explanation why a person of
ordinary skill in the art would have accepted the limited showing in Table 1
as evidence of unexpected results sufficient to outweigh the Examiner's
evidence of obviousness. See, e.g., In re Harris, 409 F.3d 1339, 1344 (Fed.
Cir. 2005) ("Even assuming that the results were unexpected, Harris needed
to show results covering the scope of the claimed range. Alternatively
Harris needed to narrow the claims."); In re Greenfield, 571 F.2d 1185, 1189
(CCP A 1978) ("Establishing that one (or a small number of) species gives
unexpected results is inadequate proof, for 'it is the view of this court that
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support."') (quoting In re Tiffin,
448 F.2d 791, 792 (CCPA 1971)).
8
Appeal2014-008810
Application 13/089,971
Appellant argues in the Reply Brief that the Examiner erred in finding
that "cellulose is known in the art as starch" because, although both cellulose
and starch are classified as polysaccharides, they are "different polymers
having different chemical natures." Reply Br. 4--5 (quoting Ans. 5).
Appellant further contends the Examiner's finding was raised for the first
time in the Answer, and seeks two alternative forms of relief: (1) Appellant
asks the Board "to take official notice that cellulose and starch are different
from each other," or (2) "if the Board cannot take such official notice,"
Appellant asks that the "appeal be remanded so that evidence [regarding the
differences between cellulose and starch] can be presented." Id. at 5.
We decline to grant either request for relief. First, we note that the
issue of whether the Examiner's Answer includes a new ground of rejection
is a petitionable matter that does not fall within the Board's jurisdiction. See
37 C.F.R. 1.181; 37 C.F.R. § 41.40(a). Accordingly, we lack authority to
remand the case for consideration of new evidence.
In addition, we find that it would be inappropriate for the Board to
take judicial notice of the alleged differences between cellulose and starch,
and we decline to do so. See In re Eynde, 480 F.2d 1364, 1370 (CCP A
1973) (facts constituting the state of the art are normally subject to the
possibility of rational disagreement among reasonable people and are not
amenable to the taking of official notice). Even assuming judicial notice of
Appellant's facts is appropriate, and that the Examiner errs in finding
"cellulose is known in the art as starch," we consider that error harmless
because such a finding is not necessary to support the Examiner's prima
facie case of obviousness. Accordingly, we affirm the rejection of claims 1,
7, 9, 11, 14, 16, and 18-22 under 35 U.S.C. § 103(a).
9
Appeal2014-008810
Application 13/089,971
DECISION/ORDER
TheExaminer'srejectionofclaims 1, 7, 9, 11, 14, 16, and 18-22
under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
10