Ex Parte Grünbauer

Patent Trial and Appeal Board

Mar 1, 2019

14404284 (P.T.A.B. Mar. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/404,284 11/26/2014 Henri J.M. Griinbauer
24978 7590 03/05/2019
GREER, BURNS & CRAIN, LTD
300 S. WACKER DR.
SUITE 2500
CHICAGO, IL 60606
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.
1969.118831 8282
EXAMINER
HEINCER, LIAM J
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
03/05/2019 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENRI J.M. GRUNBAUER
Appeal2018-003962
Application 14/404,284
Technology Center 1700
Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
SHELDON M. McGEE, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Primary Examiner's decision to reject claims 1-7, 9-17, and 19-21. 2
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The Appellant is the Applicant, "Stora Enso OYJ" (Application Data Sheet
filed November 26, 2014, 4), which, according to the Brief, is the real party
in interest (Appeal Brief filed October 12, 2017 ("Appeal Br."), 1).
2 Appeal Br. 9-22; Reply Brief filed February 26, 2018 ("Reply Br."), 2-5;
Non-Final Office Action entered May 10, 2017 ("Non-Final Act."), 2-9;
Examiner's Answer entered December 26, 2017 ("Ans."), 3-12.
Appeal2018-003962
Application 14/404,284
I. BACKGROUND
The subject matter on appeal relates to a composition in the form a
dispersion and methods associated with its manufacture and use, such as in
making polyurethane and polyisocyanurate foams for thermal insulation
(Specification filed November 26, 2014 ("Spec.") at 1, 11. 1-18).
Representative claim 1 is reproduced from the Claims Appendix ("Claims
App'x") to the Appeal Brief, with key limitations emphasized, as follows:
1. A composition in the form of a dispersion, comprising:
one or more dispersants, wherein said one or more
dispersants have a solubility parameter of from about 18 to about
30 MPaYo and a viscosity of from about 15 mPas to about 20,000
mPas; and,
lignin, wherein said lignin has an average particle size of
from about 100 nm to about 2000 nm.
(Claims App'x A-1.)
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains several rejections, which are listed
as follows:
A. Claims 1--4, 9, 11, 12, 19, and 20 under 35 U.S.C. § 102(b)
(pre-AIA) as anticipated by Ton-That et al. 3 ("Ton-That");
B. Claim 5 under 35 U.S.C. § 103(a) (pre-AIA) as unpatentable
over Ton-That in view of Reimann et al. 4 ("Reimann");
C. Claims 6, 7, and 10 under 35 U.S.C. § 103(a) as unpatentable
3 Ton-That et al., DEVELOPMENT OF LIGNO-POLYOL FOR THE PRODUCTION OF
POLYURETHANES, National Research Council Canada (2010).
4 Reimann et al., KRAFT LIGNIN IN POLYURETHANES. III. EFFECTS OF THE
MOLECULAR WEIGHT OF PEG ON THE PROPERTIES OF POLYURETHANES FROM
A KRAFT LIGNIN-PEG-MDI SYSTEM, 41 J. Appl. Polymer Sci. 39-50 (1990).
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Application 14/404,284
over Ton-That in view ofWakisaka et al. 5 (referred to as
"Hatakeyama");
D. Claims 13, 14, 16, and 17 under 35 U.S.C. § I03(a) as
unpatentable over Hatakeyama in view of Ton-That;
E. Claim 15 under 35 U.S.C. § I03(a) as unpatentable over
Hatakeyama in view of Ton-That and Liu et al. 6 ("Liu"); and
F. Claim 21 under 35 U.S.C. § I03(a) as unpatentable over Ton-
That in view of Reimann.
(Ans. 3-12; Final Act. 2-9.)
III. DISCUSSION
Rejection A. Focusing on claim 1, the Appellant relies on the same
arguments for all claims subject to this rejection (Appeal Br. 10-16).
Therefore, we confine our discussion to claim 1, which we select as
representative pursuant to 37 C.F.R. § 4I.37(c)(l)(iv). As provided by this
rule, claims 2--4, 9, 11, 12, 19, and 20 stand or fall with claim 1.
The Examiner finds that Ton-That describes every limitation recited
in claim 1 (Ans. 3--4). Specifically, the Examiner finds that Ton-That
describes a dispersion comprising a Kraft lignin and, as a dispersant, a
polyethylene glycol (PEG) with a molecular weight of 400 (id. at 3). The
Examiner finds further that the current Specification (Table 1, Spec. 13, 11.
16-20) describes polyethylene glycol with a molecular weight of 400 as
5 DE 10153980 Al, published June 6, 2002 (machine-generated translation
found in the record).
6 Liu et al., PERFORMANCE CHARACTERIZATION OF RIGID POLYURETHANE
FOAM WITH REFINED ALKALI LIGNIN AND MODIFIED ALKALI LIGNIN, 20 J.
Forestry Res. 161---64 (2009).
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Application 14/404,284
having a solubility parameter of 20.56 and a viscosity of 91 mPas (Ans. 3).
Regarding the average particle size values specified for the lignin, the
Examiner finds that Ton-That discloses preparing the dispersion by high
speed mixing at a sufficiently high shear rate under conditions similar to
those disclosed in the current Specification for the claimed composition
(id.). The Examiner finds that although Ton-That was unable to determine
the particle sizes for the lignin prepared according to the high speed mixing
embodiment, the prior art lignin produced according to such a technique
would inherently possess an average particle size as specified in claim 1 in
view of the identity or substantial identity in the compositional ingredients
and preparation conditions and, therefore, the burden of production is on the
Appellant to show otherwise (id. at 3--4, 9--10).
The Appellant contends that the Examiner's inherency position with
respect to the lignin's average particle size "is contrary to the evidence and
not supported by fact" (Appeal Br. 10). Specifically, the Appellant argues
that Ton-That's disclosure regarding "reduction in size of the lignin based on
high temperature mixing is only one of the possibilities" as "it is unclear if
the lignin particles 'have either been broken in to smaller particles or
dissolved into the PEG"' (id. at 11 (quoting Ton-That, 7)). The Appellant
argues that because Ton-That further states that the density of the "fine
particles," which are disclosed as having particle sizes mostly less than
100,000 nm (100 µm), did not increase, the lignin particle size was not
reduced to an average particle size within the range ("about 100 nm to about
2000 nm") recited in claim 1 (id.). The Appellant argues that, therefore, the
Examiner's inherency position is based on a mere possibility or probability
that a certain result or characteristic may occur or be present in the prior art
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and that possibility or probability is insufficient to support an inherency
finding (id. at 12). Additionally, the Appellant contends that, in any event,
the current Specification does not teach that high speed mixing at a
sufficiently high shear rate reduces the lignin's size (id. at 13-14).
Furthermore, the Appellant argues that the Examiner "also presumes,
without support, that the starting length of the present Specification and
those in [Ton-That] are the same" (id. at 15; emphasis omitted). Finally, the
Appellant argues that the Examiner's position is in direct conflict with Ton-
That, which teaches that mixing at a mixer speed of 1200 rpm and room
temperature resulted in increased lignin size as a result of swelling (id. at
15-16).
For the reasons well-stated by the Examiner in the Answer and below,
the Appellant's arguments fail to identify any reversible error in the
rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
We start by consulting the claim language and the Specification to
ascertain what is claimed. Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed.
Cir. 1997) ("Implicit in our review of the Board's anticipation analysis is
that the claim must first have been correctly construed to define the scope
and meaning of each contested limitation.").
The current Specification informs one skilled in the relevant art that
the claimed invention satisfies "a need for a simple, cost-effective process
for the production of lignin particles of submicron and/or nanometer size
that are amenable to the production of a multitude of industrial products
where these powders may be effective" (Spec. 2, 11. 9-28). In describing the
lignin material used to make the claimed compositions (dispersions), the
Specification states that "any lignin," such as a Kraft lignin, may be used,
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and refers to EP 1 794 363 B2 as disclosing a preferred lignin that may be
used to prepare the dispersions (id. at 5, 11. 12-17). Neither this description
in the Specification nor EP 1 794 363 B2 places any particular limitation or
sheds any light on the particle sizes for the starting lignin material. 7 As for
the process used to make the dispersions including the lignin with the final
average particle sizes recited in claim 1, the Specification describes, as a
preferred embodiment, "a high shear mixing of at least about 1000 rpm,
preferably at least about 5000 rpm, most prefer[ably] at least about 20000
rpm" (id. at 7, 11. 27-30). The Specification describes a working example
(Example 4) in which dispersions of Kraft lignin of unspecified average
particle size in PEG 400 were subjected to dispersive mixing at 18,800 rpm
for at least one minute followed by further mixing at 25,000 rpm for another
minute (Spec. 11, 11. 15-22; 10, 11. 6-12). The dispersions formed in
Example 4 are described as having lignin particles with an "[ o ]verall mean
diameter" of 260 nm, which is within the broad range ("about 100 nm to
about 2000 nm") recited in claim 1 (Spec. 13, 11. 16-18 (Table 1)).
With this background, we next consider what is described in the prior
art. Ton-That describes a composition obtained by subjecting Kraft lignin
and PEG 4008 (polyol) to a high temperature and high-speed mixing process
7 Although the Specification further states that "the lignin particles involved
are largely of sub micron and/ or nanometer size which makes [sic] them
effective as participants in the production process of the end-product" (id. at
9, 11. 5---6; emphasis added), the "end-product" refers to products that are
formed after the claimed compositions are subject to "further processing
steps" (id. at 8, 11. 21-26).
8 The Examiner finds, and the Appellant does not dispute, that Ton-That's
PEG 400 possesses a solubility parameter and a viscosity within the ranges
recited in claim 1 (Ans. 3; Reply Br. 2-5; Appeal Br. 9-16).
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in which the lignin and the polyol were stirred at 90°C using an Ultra-Turax
homogenizer operating at a high speed of 13,500 rpm for 10 minutes (Ton-
That 39 ("Fabrication ofLigno-PU")). Ton-That teaches that the "[m]ixing
method and temperature have tremendous effect on the quality of dispersion
of lignin in the given polyol" (id. at 6 ("Lignin Dispersion in Polyol")).
According to Ton-That, the lignin in the dispersion resulting from the high
temperature and high-speed mixing process could no longer be observed by
an optical microscope (OM), stating that "it remains unclear if they really
dissolved in the PEG or the particle sizes are too fine to be detected by the
OM" (id.). According to Ton-That, "[w]ith the aid of high shear force those
[lignin] particles [ swollen by the polyol] could be easily broken into smaller
particles and even can dissolve into the polyol if the thermodynamics of the
system is favorable" (id.; emphasis added).
Given the facts recounted above, we agree with the Examiner that it
would reasonably appear that Ton-That's dispersion obtained by high
temperature and high-speed mixing would include lignin particles that would
inherently possess an average particle size within the range recited in claim
1 because the prior art subjects the same compounds recited in claim 1 to a
treatment process that is substantially the same or similar to that described in
the current Specification. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
("[W]e conclude that the Board correctly found that the virtual identity of
monomers and procedures sufficed to support a prima facie case of
unpatentability of Spada's polymer latexes.").
9 The Ton-That paper is not paginated. Our pagination starts with the page
with the "ABSTRACT" and "INTRODUCTION" as the first page.
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Here, the burden of production (i.e., to show that the lignin particles in
the prior art would not possess an average particle size within the range
recited in claim 1) was properly shifted to the Appellant because
"[ w ]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."
In re Best, 562 F.2d 1252, 1255 (CCPA 1977). The "fairness [in shifting the
burden to the Appellant] is evidenced by the PTO' s inability to manufacture
products or to obtain and compare prior art products." Id.
The Appellant's argument (Appeal Br. 12) that the Examiner's
inherency position is based on a mere possibility or probability is misplaced
and misunderstands controlling precedent. See, e.g., MEHL/Biophile Int 'l
Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (mere possibility
that "an operator of [an] RD-1200 laser could use the laser ... without
necessarily aligning the laser 'substantially vertically over a hair follicle
opening"' did not legally suffice to show anticipation of a claim directed to
hair depilation).
In this case, Ton-That describes an experiment in which a dispersion
is obtained by a method that is consistent with the method as generally
described in the Specification and is substantially identical or similar to that
exemplified in the Specification's working examples, as we found above.
Ton-That's experiment is not a mere possibility or probability-it was
actually carried out. Id. at 1366 ("It is not a question of probabilities as to
whether a person of ordinary skill following the teachings of the article will
align the laser light applicator over a hair follicle."); Id. ("[T]he laser
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operating parameters disclosed in the [Polla] article substantially coincide
with those disclosed in the patent. Accordingly, to the extent the
embodiment in the patent achieves hair depilation, so does the Polla
method."). The fact that Ton-That did not appreciate or could not ascertain
the lignin's actual average particles is of no moment. Id. ("Where, as here,
the result is a necessary consequence of what was deliberately intended, it is
of no import that the [prior art] did not appreciate the results.").
As we noted above, the Appellant argues that Ton-That's teaching
that "the density of fine particles does not increase significantly" (Ton-That
6) indicates that the lignin particle sizes are not reduced from 100 µm (id. at
4) to an average size within the range recited in claim 1. But that argument
ignores Ton-That's teachings that analysis using an optical microscope was
unable to ascertain the particle sizes or otherwise establish whether the
particles dissolved in the polyol. Indeed, Ton-That posits that "[ w ]ith the
aid of high shear force those particles could be easily broken into smaller
particles and even can dissolve into the polyol if the thermodynamics of the
system is favorable" (id. at 6). The Appellant offers no objective
experimental evidence to the contrary.
Regarding the Appellant's argument that Ton-That's starting lignin
materials do not have the same sizes as the Inventor's lignin particles, we
have already found above that the Specification does not place any
limitations on the sizes of the starting lignin materials. Again, because Ton-
That's dispersion is made by a process that is substantially identical or
similar to that described in the current Specification, the burden was
properly shifted to the Appellant to show that Ton-That's method would not
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result in a dispersion having lignin particles with average particle sizes
within the range recited in claim 1.
Finally, we find no merit in the Appellant's argument that Ton-That's
method ( carried out at room temperature) resulted in increased lignin
particle sizes because Ton-That teaches that the particles were swollen (Ton-
That 6). Ton-That plainly teaches that "[b ]y increasing the mixing
temperature to 90°C[,] the large lignin particles almost disappeared (Figure
6b )[,] indicating that they have either been broken in to smaller particles or
dissolved into the PEG" (id.).
For these reasons, and those given by the Examiner, we uphold the
Examiner's rejection as maintained against claim 1. Therefore, we sustain
Rejection A.
Rejection B. Claim 5, which depends indirectly from claim 1 through
intervening claim 3, recites in relevant part: "wherein said polyol comprises
a mixture of different PEGs, one PEG having a molecular weight of about
400 and one PEG having a molecular weight of about 600" (Claims App'x
A-1).
The Examiner finds that Ton-That discloses a dispersion including a
polyethylene glycol having a molecular weight of 400 (PEG 400) but not a
polyethylene glycol having a molecular weight of about 600 (PEG 600)
(Ans. 5). To resolve this difference, the Examiner relies on Reimann, which
teaches using polyethylene glycol with a molecular weight of, for example,
400 or 600 in a polyurethane formulation comprising Kraft lignin (id.). The
Examiner concludes from these findings that a person having ordinary skill
in the art would have been prompted to add PEG 600, and thus use both
PEG 400 and PEG 600, based on the rationale that it would have been
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obvious to combine two compositions, each of which is disclosed in the
prior art to be useful for the same purpose, in order to form a third
composition to be used for the very same purpose (id. ( citing In re
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980)).
Seizing on the Examiner's statement that PEG 600 and PEG 400 are
"functionally equivalent" (Ans. 5), the Appellant argues that the PEGs
disclosed in Reimann are not "functionally equivalent" (Appeal Br. 18). The
Appellant argues that, rather, Reimann teaches PEG's molecular weight
alters the composition of the polyurethane's hard segment in such a way that
the Kraft lignin content increases and the content of MDI ( diphenylmethane
diisocyanate) decreases (id.). The Appellant urges that, therefore, the
Examiner's articulated reason is insufficient (id. at 19).
We disagree with the Appellant. Although Reimann teaches that
various PEG molecular weights provide somewhat different results
(Reimann 42 (Table I)), a person having ordinary skill in the art would have
understood that PEG 400 and PEG 600 would both provide suitable
polyurethane compositions (id. at 42-50 (discussing effects in varying PEG
molecular weight)). Because each of PEG 400 and PEG 600 would be
expected to provide successful results as a reactant in the formation of
polyurethane compositions-i.e., fulfill the same purpose, it would have
been obvious to a person having ordinary skill in the art to use both PEGs
with a reasonable expectation that the combination would also provide
successful results in an additive or cumulative manner. In this regard, a
showing that PEG 400 and PEG 600 provide the same results is not
necessary. Kerkhoven, 626 F .2d at 850 ("It is prima facie obvious to
combine two compositions each of which is taught by the prior art to be
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useful for the same purpose, in order to form a third composition which is to
be used for the very same purpose.").
For these reasons, we uphold the Examiner's rejection as maintained
against claim 5.
Rejections C-F. The Appellant relies on the same arguments offered
above, which we found unpersuasive. Therefore, we sustain Rejections C
through F for the same reasons.
IV. SUMMARY
Rejections A through Fare sustained. Therefore, the Examiner's final
decision to reject claims 1-7, 9-17, and 19-21 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
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