Ex Parte Cowan et al

Patent Trial and Appeal Board

Dec 29, 2015

11104409 (P.T.A.B. Dec. 29, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/104,409 04/13/2005 Jennifer Cowan 8635-USA 9887
31743 7590 12/29/2015
Georgia-Pacific LLC
133 Peachtree Street NE - GA030-42
ATLANTA, GA 30303
EXAMINER
BELL, WILLIAM P
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
12/29/2015 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
____________

Ex parte JENNIFER COWAN, DEREK L. ATKINSON,
ROBERT A. BREYER, JASON D. RIVERS, and CHARLES E. VEST JR.1
____________

Appeal 2014-003787
Application 11/104,409
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.

DERRICK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s maintained final rejection of claims 8–17 and 21–37. We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

1Appellants identify the Real Party in Interest as Georgia-Pacific Chemicals
LLC and further identify Georgia-Pacific LLC—a wholly owned subsidiary
of Koch Industries, Inc.—as the parent of Georgia-Pacific Chemicals LLC.
App. Br. 4.
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CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates to a process for making a wood
composite that involves applying a non-aqueous adhesive binder to a wood
material. Spec. ¶ 1, Abstract, Claim 8. The non-aqueous adhesive binder
comprises an isocyanate-functional resin modified with a soy protein
powder. Id. at ¶ 31.
Independent claim 8 is illustrative (emphasis added):
8. A process for making a wood composite comprising:
applying a non-aqueous adhesive binder to a wood
material, the non-aqueous adhesive binder comprising an
isocyanate-functional resin modified with a soy protein powder
selected from the group consisting of:
powdered raw soy protein;
powdered soy protein modified with saturated and
unsaturated alkali metal C8-C22 sulfate and sulfonate salts;
powdered soy protein modified with compounds having
the formula R2NC(=X)NR2, wherein each R is a H, a C1-C4
saturated group, or a C1-C4 unsaturated group, and X is O, NH,
or S; and blends thereof,
consolidating the wood material; and
curing the isocyanate-functional resin.

REJECTIONS
The Examiner maintains the following grounds of rejection:
Claims 8, 9, 11, 13–17, 21–23, 25–27, 29, 31, 32, and 35 stand
rejected under 35 U.S.C. § 103(a) as unpatentable for obviousness over
Asahi (JP 50034632 A, published April 3, 1975)2 in view of Arndell et al.
(US 2004/0170856 A1, published September 2, 2004) (“Arndell”).

2 Rather than referring to published patent application JP 50034632 A by the
first named inventor (Sakurada), the Examiner refers to the published patent
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Claims 10, 24, and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable for obviousness over Asahi in view of Arndell and Sun et al.
(US 6,497,760 B2, issued December 24, 2002) (“Sun”).
Claims 12 and 30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable for obviousness over Asahi in view of Arndell and Wescott et
al. (US 2005/0222358 A1, published October 6, 2005) (“Wescott”).
Claim 33 stands rejected under 35 U.S.C. § 103(a) as unpatentable for
obviousness over Asahi in view of Arndell, Wescott, and Israel (US
4,609,513, issued September 2, 1986) (“Israel”).
Claims 34 and 37 stand rejected under 35 U.S.C. § 103(a) as
unpatentable for obviousness over Asahi in view of Arndell, Wescott, and
Bostian et al. (US 3,271,335, issued September 6, 1966) (“Bostian”).
Claim 36 stands rejected under 35 U.S.C. § 103(a) as unpatentable for
obviousness over Asahi in view of Arndell, Wescott, and Chen et al. (US
2004/0140055 A1, published July 22, 2004) (“Chen”).

DISCUSSION
Having carefully reviewed the Examiner’s rejections under 35 U.S.C.
§ 103(a) in light of arguments advanced by the Appellants in their Appeal
and Reply Briefs, we are not persuaded that the Examiner erred reversibly in
concluding that the claims are unpatentable for obviousness. We add the
following for emphasis.3

application by an assignee (Asahi). We, likewise, refer to the published
application as “Asahi.”
3 We refer to the Office Action (mailed May 8, 2013), the Appeal Brief
(filed October 7, 2013), the Examiner’s Answer (mailed December 11,
2013), and the Reply Brief (filed February 11, 2014).
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Rejection over Asahi in view of Arndell
Appellants argue the Examiner erred in the rejection of claims 8, 9,
11, 13–17, 21–23, 25–27, 29, 31, 32, and 35 as a group on the basis of
limitations common to independent claims 8, 15, and 26 (App. Br. 13–17),
with further arguments as to dependent claims 11, 14, 17, 25, 27, and 35 (id.
at 18–19). We select independent claim 8 as illustrative. Claim 8 requires
applying a non-aqueous adhesive binder comprising an isocyanate-
functional resin modified with a soy protein powder to a wood material.
The Examiner finds that Asahi discloses a process for making a wood
composite that comprises applying an adhesive binder composition to wood
veneers, consolidating the wood veneers, and curing the adhesive. Final
Action 2. The Examiner finds that Asahi discloses that the adhesive binder
composition comprises an isocyanate-functional resin modified with a soy
protein powder. Id. at 2–3. The Examiner finds that the soy protein powder
disclosed in Asahi corresponds to the powdered raw soy protein recited in
claim 8 because Asahi “does not teach any chemical modification of the soy
protein” other than that the “soy protein may be treated with acidic or caustic
solutions to enhance its solubility.” Id. at 3 (citing Asahi 2, ¶ 5 to 3,
¶ 1)(emphasis added). The Examiner acknowledges that Asahi does not
disclose that the adhesive binder is non-aqueous when applied to the wood
composite. Id.
Arndell discloses a polyisocyanate adhesive used to produce
laminated wood products which is cured by exposure to moisture. ¶¶ 14–22,
32. The Examiner finds that Arndell discloses that isocyanate-based
adhesives react rapidly with water, and the reaction is difficult to control,
which often creates difficulties during application of the adhesives. Final
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Action 3. The Examiner finds that Arndell discloses that isocyanate-based
adhesives should therefore be stored under a moisture-free atmosphere (Id.),
and Arndell also discloses that all components of the storage tank, as well as
the apparatus used to apply the adhesive, should be maintained in the dry
state. Arndell ¶ 32. The Examiner further finds that Arndell discloses that
isocyanate-based adhesives cure following application to a wood veneer by
reacting with moisture existing in the wood veneer, or with water misted
onto the veneer before, during, or after application of the adhesive. Final
Action 3 (citing Arndell ¶ 36).
Based on such findings, the Examiner concludes that it would have
been obvious to one of ordinary skill in the art at the time of the invention to
modify the method of Asahi by formulating the adhesive composition to be
free of water as taught by Arndell, and curing the adhesive with water after
application of the adhesive to a wood material, for the benefit of improving
the application process and controlling the curing reaction. Id. (citing
Arndell ¶ 10).
Appellants argue that one of ordinary skill in the art would not have
had a reasonable expectation that Asahi’s adhesive would maintain its
“outstanding effects” if the adhesive were modified to exclude water before
application to a wood material.4 App. Br. 14–15. We find Appellants’
argument unavailing because it does not address what the combined
disclosures of Asahi and Arndell reasonably would have suggested to one of
ordinary skill in the art at the time of the invention, as found by the

4 We will not consider Appellants’ Exhibit A—the Declaration of Robert A.
Breyer submitted with the Appeal Brief on October 2, 2013, in support of
this argument—because it has not been admitted into the record. 37 C.F.R.
§ 41.33(d)(2).
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Examiner (Ans. 3–4). In re Keller, 642 F.2d 413, 425 (CCPA 1981) (The
test for obviousness “is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.”).
Although Asahi appears to teach that water is an essential component
of the adhesive, Asahi does not indicate that water must be present in the
adhesive when it is applied to a wood material. Ans. 2. Instead, as the
Examiner correctly finds, Asahi appears to indicate that water is an essential
component of a reaction that occurs between isocyanate, protein, water, and
a bulking agent or filler. Id. The Examiner also correctly finds that Arndell
suggests excluding water from an isocyanate-based adhesive until after the
adhesive has been applied to a wood material. Id. at 4.
Therefore, the Examiner has provided a sufficient factual basis for
determining that the combined disclosures of Asahi and Arndell reasonably
would have suggested to one of ordinary skill in the art that Asahi’s adhesive
could be successfully modified to exclude water before application of the
adhesive to a wood material, and water could be introduced to the adhesive
after application, as taught by Arndell, in order to cure the adhesive. In re
Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (“Obviousness does not require
absolute predictability of success . . . all that is required is a reasonable
expectation of success.”) (emphasis omitted, citing In re O’Farrell, 853 F.2d
894, 903‒04 (Fed. Cir. 1988)). Appellants have not provided any evidence
or explanation demonstrating that Asahi’s adhesive would not effectively
adhere to wood material if it was formulated to exclude water, and if water
was introduced into the adhesive after application of the adhesive to a wood
material. App. Br. 13–19.
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Appellants also argue that Asahi teaches away from the non-aqueous
adhesive binder recited in claim 8 because Asahi teaches that water is an
essential and necessary component of the adhesive. Id. at 13–14.
We find Appellants’ argument to be without persuasive merit because we
find no disclosure in Asahi indicating that the adhesive could not be used to
prepare a wood composite if water was not present in the adhesive at the
time of application to a wood material. Rather, Asahi appears to indicate
only that the outstanding effects observed for the adhesive might not be
realized if water was not present in the adhesive during a reaction between
isocyanate, protein, and a bulking agent or filler. Asahi 3, ll. 32–39.
Accordingly, Asahi does not criticize, discredit, or otherwise discourage
application of a non-aqueous adhesive binder to a wood material, so long as
water is present during a reaction between isocyanate, protein, and a bulking
agent or filler present in the adhesive. Therefore, we find that Asahi does
not teach away from the non-aqueous adhesive binder recited in claim 8. In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551,
552–53 (Fed. Cir. 1994).
Appellants further argue that the Examiner impermissibly relied on
hindsight in asserting that the combined disclosures of Asahi and Arndell
reasonably would have suggested to one of ordinary skill in the art that
Asahi’s adhesive could be successfully modified to exclude water before
application of the adhesive to a wood material, and water could be
introduced to the adhesive following application in order to cure the
adhesive. App. Br. 19.
However, Appellants’ arguments do not persuade us that the
Examiner’s articulated reasons for modifying Asahi’s adhesive to exclude
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water are unsupported by the applied prior art and/or are otherwise based on
teachings that are insufficient to support the conclusion of obviousness and,
thus, we are not persuaded the Examiner relied on impermissible hindsight.
If the Examiner has articulated a reason having rational underpinnings for
making a proposed modification or combination of prior art teachings, then
that articulated reasoning can demonstrate the combination is not based on
hindsight. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)).
Appellants also argue that their non-aqueous adhesive binder exhibits
surprising and unexpected internal bond strength as compared to that of
aqueous-based adhesive binders, such as those of Asahi, and rely on two
Rule 132 Declarations executed by Dr. Robert A. Breyer—an inventor of the
instant application—to support this assertion; Exhibit B, executed on
February 28, 2013 (“Breyer Dec. B”) and Exhibit C, executed on June 27,
2013 (“Breyer Dec. C”). App. Br. 15–17.5
It is well established that Appellants bear the burden of showing that
the claimed invention imparts unexpected results. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). To meet the burden, Appellants must establish that the results
actually would have been unexpected, and that the unexpected results are

5 We note that the basis for Appellants’ proffered unexpected result of
increased bond strength—absence of water in the adhesive—does not
correspond to the basis for the unexpected results of enhanced tack and
increased bond strength described in the Specification—addition of protein
to the adhesive. Spec. ¶ 53.
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reasonably commensurate with the scope of protection sought by the claims
on appeal. Klosak, 455 F.2d at 1080; In re Grasselli, 713 F.2d 731,743 (Fed.
Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
We note initially that the information provided in the Declarations is
insufficient to allow one of ordinary skill in the art to ascertain how the
results presented in the Declarations were obtained. See generally Breyer
Dec. B and Breyer Dec. C. For example, the Declarations do not indicate
the type of soy protein powder and isocyanate-functional resin that were
used to prepare each adhesive. Nor do the Declarations provide specific
details regarding the length of time that elapsed between when each wood
furnish-resin mixture was prepared and when each mixture was exposed to
heat and pressure. Id.
Further, Appellants have not met their burden of demonstrating that
the non-aqueous adhesive binder recited in claim 8 imparts results that
would have been unexpected by one of ordinary skill in the art at the time of
the invention. Although the Breyer Declarations state that a non-aqueous
adhesive comprising isocyanate-functional resin and soy protein powder
imparts “a significant and unexpected increase” in the internal bond strength
of an oriented strand board panel made with the adhesive, as compared to a
panel made with a corresponding aqueous adhesive (Breyer Dec. B ¶ 9;6
Breyer Dec. C. ¶¶ 9, 16), there is no explanation why this result would have
been unexpected, nor have Appellants provided any corroborating evidence
demonstrating that the result actually would have been unexpected (App. Br.
13–19). Accordingly, we find the declarations insufficient to meet
Appellants’ burden. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368

6 Paragraph 9 is incorrectly labeled paragraph 6.
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(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.”); Velander v. Garner, 348 F.3d
1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications
than to subsequent conclusory statements by experts, the Board acted well
within [its] discretion.”); Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir.
2010) (The Board has discretion to give more weight to one item of evidence
over another “unless no reasonable trier of fact could have done so”).
Moreover, as correctly found by the Examiner, Appellants have not
met their burden of establishing that the data provided in the Declarations
are reasonably commensurate in scope with the claimed subject matter. Ans.
4–5. Specifically, Appellants have not demonstrated that the single result set
forth in the Declarations for a non-aqueous adhesive binder would hold true
for the non-aqueous adhesive binders comprising multifarious soy protein
powders and various isocyanates encompassed by claim 8. App. Br. 15–17.
Therefore, on this record, Appellants fail to provide that their
evidence of unexpected results is sufficient to overcome the prima facie case
of obviousness of the subject matter recited in claims 8, 9, 11, 13–17, 21–23,
25–27, 29, 31, 32, and 35 established by the Examiner. In re Grasselli, 713
F.2d at 743.
Dependent claims 11, 14, 17, 25, 27, and 35
Appellants proffer further arguments as to dependent claims 11, 14,
17, 25, 27, and 35 that require the weight ratio of the isocyanate-functional
resin and the soy protein powder in the non-aqueous adhesive binder to be
within a specified range. Appellants do not dispute the Examiner’s finding
that Asahi discloses that the adhesive binder composition comprises 1 to
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100 % by weight of isocyanate, and 10 to 50 % by weight of protein.
Compare Final Action 3–5 with App. Br. 18–19. Nor do Appellants dispute
the Examiner’s de facto finding that Asahi discloses that the weight ratio of
isocyanate to soy protein in the adhesive binder composition overlaps with
the ranges recited in claims 11, 14, 17, 25, 27, and 35. Compare Final
Action 3–5 with App. Br. 18–19. Instead, Appellants argue that Asahi
expressly teaches away from the Examiner’s reasons for modifying Asahi
according to Arndell and that the cited art and reasoning do not provide any
predictability or expectation of success to arrive at the claimed invention,
including that of claims 11, 14, 17, 25, 27, and 35. App. Br. 19.
We find Appellants’ arguments lacking in persuasive merit for the
reasons discussed above in connection with Appellants’ arguments directed
to independent claim 8. In addition, we find that the Examiner did not
reversibly err in determining that Asahi would have suggested an adhesive
binder comprising the recited weight ratios of isocyanate to soy protein
powder within the meaning of 35 U.S.C. § 103(a). In re Peterson, 315 F.3d
1325, 1329–330 (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 . . . .”).
Because Appellants have not provided persuasive evidence demonstrating
the criticality of the recited ranges (App. Br. 13–19), we are unpersuaded of
reversible error in the Examiner’s rejection of claims 11, 14, 17, 25, 27, and
35 under 35 U.S.C. § 103(a). In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990) (indicating that in cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims, the applicant must show that the particular range is critical, generally
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by showing that the claimed range achieves unexpected results relative to the
prior art range.).
For the reasons above, we are unpersuaded of reversible error in the
Examiner’s rejection of claims 8, 9, 11, 13–17, 21–23, 25–27, 29, 31, 32,
and 35 under 35 U.S.C. § 103(a) over Asahi in view of Arndell, which
rejection we, accordingly, sustain.
Rejection over Asahi in view of Arndell and Sun—Claims 10, 24, and
28
Appellants rely on contentions that the Examiner erred in rejecting the
base claims, independent claims 8, 15, and 26, from which claims 10, 24,
and 28, respectively, depend, and argue that Sun fails to remedy the
deficiencies of Asahi and Arndell. App. Br. 17–18. Because we are not
persuaded of reversible error in the Examiner’s rejection of claims 8, 15, and
26, we sustain the rejection of claims 10, 24, and 28 under 35 U.S.C.
§ 103(a) over Asahi in view of Arndell and Sun.
Further Grounds of Rejection Not Appealed—Claims 12, 30, 33, 34, 36, and
37
Appellants identify only two grounds of rejection for appeal of the six
grounds of rejection pending—over Asahi in view of Arndell and over Asahi
in view of Arndell and Sun. Compare App. Br. 12 with Final Action 2–16.
We summarily affirm the other four separate pending grounds of
rejection—of claims 12 and 30 over Asahi in view of Arndell and Wescott,
of claim 33 over Asahi in view of Wescott and Israel, of claims 34 and 37
over Asahi in view of Arndell, Wescott, and Bostian, and of claim 36 in
view Asahi in view of Arndell, Wescott, and Chen—because Appellants do
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not contest these grounds of rejection. App. Br. 12–19; 37 CFR
41.37(c)(iv).
DECISION
The Examiner’s rejections of claims 8–17 and 21–37 under 35 U.S.C.
§ 103(a) are 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)(1).

AFFIRMED

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