Ex Parte Schick et alDownload PDFPatent Trial and Appeal BoardDec 13, 201711919702 (P.T.A.B. Dec. 13, 2017) Copy Citation 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. 11/919,702 05/22/2008 Georg Schick 7601/11800 5370 66991 7590 12/13/2017 LAW OFFICE OF MICHAEL A. S ANZO, LLC 15400 CALHOUN DR. SUITE 125 ROCKVILLE, MD 20855 EXAMINER JIANG, SHAOJIA A ART UNIT PAPER NUMBER 1673 MAIL DATE DELIVERY MODE 12/13/2017 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 GEORG SCHICK, MATTHIAS PASCAL Y, STEFAN WILDMOSER, HANS HENNING WENK, KATHRIN JOHN, and HANS-JURGEN KOHLE Appeal 2016-004519 Application 11/919,7021 Technology Center 1600 Before FRANCISCO C. PRATS, ULRIKE W. JENKS, and DEVON ZASTROW NEWMAN, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134(a) involves claims to a method of modifying a polysaccharide. The Examiner rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the real part in interest as Evonik Degussa GmbH. Appeal Br. 3. Appeal 2016-004519 Application 11/919,702 STATEMENT OF THE CASE The following rejections are before us for review: (1) Claims 16—22, 25—30, and 32—36, under 35 U.S.C. § 103(a), as unpatentable over Stober,2 Roesler,3 and Valta4 (Ans. 2—9); (2) Claims 16—21, 25—27, and 34—36, under 35 U.S.C. § 103(a), as unpatentable over Iguchi5 and Valta (Ans. 9-14); and (3) Claim 22, under 35 U.S.C. § 103(a), as unpatentable over Iguchi, Valta, and Srivastava6 (Ans. 14—16). Claim 16, the only independent claim on appeal, is representative and reads as follows: 16. A method for chemically modifying a polysaccharide component with the aid of a mechanical device and at least one modifying reagent selected from the group consisting of: epoxides; alkyl halides; chloroacetic acid; chloroacetates; halohydrins; mono- and dialkyl sulfates; ammonia; primary and secondary alkyl- and arylamines; acrylic acid; acrylic esters; acrylamide; maleamide acid derivatives; carboxylic acids; carboxylic acid chlorides; carboxylic anhydrides; and mixtures of these compounds, said method comprising: a) mechanically treating said polysaccharide component at least once with a roll mill, during which at least two adjacent and counter-rotating rolls rotate at different speeds; and 2 US 4,758,282 (issued July 19, 1988). 3 Fred Roesler and Ashok C. Shah, Mixing and Compounding Equipment, in Encyclopedia of PVC (Chapter 1, Vol. 3, 2nd ed., Leonard I. Nass, ed., 1992). 4 WO 03/064476 A1 (published Aug. 7, 2003). 5 US 5,811,531 (issued Sep. 22, 1998). 6 Manjoosha Srivastava and V.P. Kapoor, Seed Galactomannans: An Overview, 2 Chemistry & Biodiversity 295-317 (2005). 2 Appeal 2016-004519 Application 11/919,702 b) mixing said polysaccharide component with said modifying reagent before and/or during the mechanical treatment of step a). Appeal Br. 18. OBVIOUSNESS— STOBER, ROESLER, AND VALTA The Examiner’s Prima Facie Case In rejecting claims 16—22, 25—30, and 32—36 over Stober, Roesler, and Valta, the Examiner cited Stober as disclosing the reaction of galactomannans (polysaccharides) with epoxides while subjecting the mixture containing the two reactants to intensive mechanical mixing. Ans. 2-4. The Examiner conceded that Stober differs from the rejected claims in that Stober “does not expressly suggest the use of a roll mill for homogenization.” Id. at 4. The Examiner cited Roesler as evidence that a roll mill having the features required by Appellants’ claims was known in the art to be useful for mixing ingredients. Id. The Examiner cited Valta as evidence that, when reacting cellulose with urea to produce cellulose carbamate, a “roll mixer” was among useful options for mechanically mixing the reactants. Id. at 4—5. Based on the references’ combined teachings, the Examiner reasoned that it would have been obvious to use the roll mill/roll mixer taught in Roesler and Valta to mechanically mix the reactants in Stober’s process. Id. at 5—7. As motivation, the Examiner found that Roesler taught “that the greatest advantage of the two-mill mixer is its versatility, wherein varying the shear rate and shear stress can easily be done by simply adjusting the clearance between the rolls.” Id. at 6. The Examiner found, in addition, that although Roesler did not “expressly teach the detailed mechanics for using a 3 Appeal 2016-004519 Application 11/919,702 roll mill to homogenize a mixture, such conditions are known in the prior art, such as from the teachings of Valta et alId. at 7. Therefore, the Examiner reasoned, “it would have been prima facie obvious for one of ordinary skill in the art to use the conditions provided in Valta et al. as a guidance for setting the roll mills to homogenize the mixture disclosed in [Stober].” Id. Analysis As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992): [T]he examiner bears the initial burden ... of presenting a prima facie case of unpatentability. . . . After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument. Appellants do not persuade us that a preponderance of the evidence fails to support the Examiner’s prima facie case of obviousness. As the Supreme Court has explained, “when a patent claims a structure already known in the prior art that is altered by mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 416 (2007). In the present case, as the Examiner found, Stober describes a process in which guar, a galactomannan-containing product (i.e., polysaccharide), is mixed for five minutes with a plowshare mixer, after which a “reagent solution, which contains . . . 2,3-epoxypropyltrimethylammonium chloride [epoxide], is charged through a nozzle with the mixer running over a 5 min. 4 Appeal 2016-004519 Application 11/919,702 period. The mixture is mixed for another 10 min. and loaded into a storage bin.” Stober 5:30-35 (Example 1). Thus, as the Examiner found, the process of Appellants’ claim 16 differs from the process described in Stober only in that Stober does not expressly describe using a roll mill with at least two different speed rollers to mix the reactants. As the Examiner found, however, Stober discloses that, when mixing the reactants, “[a]ny suitable intensive mixer can be used for this purpose in order to provide a zone of high intensity mixing.” Id. at 3:45—47. In that regard, as the Examiner found, Roesler discloses that the two- roll mill was the earliest type of high shear intensive mixer used for thermoplastics (Roesler 4—5), and explains that “[mjixing takes place in the rolling bank created by the speed differential between the rolls.” Id. at 5. As the Examiner found, Roesler discloses that the “two-roll mill’s greatest advantage is its versatility. Varying the shear rate and shear stress can easily be done by simply adjusting the clearance between the rolls.” Id. In contrast, “other mixers [such as the Banbury-type and single-screw extruder] allow variations in shear rates only by varying the speed of rotation, since changes in clearances involve significant redesigning of equipment.” Id. Roesler discloses, moreover, that the “batch mixer group is represented by the two-roll mill and the internal mixer. This group offers maximum versatility, as it is capable of handling such varied mixing chores as combining materials of different density or molecular weight, or liquid and solids . . . .” Id. at 6. In addition to Roesler’s disclosure of the advantages of roll mills, Yalta discloses that when reacting cellulose with urea to produce cellulose 5 Appeal 2016-004519 Application 11/919,702 carbamate, a “roll mixer” with different speed rollers is a suitable device for combining the reactants. Valta 4, 6—7. Thus, given Stober’s teaching that any suitable intensive mixer can be used to mix its polysaccharide and epoxide, and given Roesler’s teaching that roll mills were high shear intensive mixers known to have certain advantages for combining ingredients, and further given Valta’s disclosure of the suitability of roll mills for mixing reactants when derivatizing a polysaccharide, we agree with the Examiner that an ordinary artisan had ample reason for, and a reasonable expectation of success in, using a roll mill in Stober’s process. We, therefore, also agree with the Examiner that the process recited in Appellants’ claim 16 would have been prima facie obvious. Appellants do not persuade us to the contrary. Appellants contend that, because Stober’s process involves mixing dry reactants, and because the Roesler article does not mention using a roll mill in the sections pertaining to dry mixing, an ordinary artisan would not have used a roll mill for mixing Stober’s reactants. Appeal Br. 9—10, 13—14 (citing Pascaly Deck 3);7 Reply Br. 2—3, 5—7. Appellants contend also that Valta does not remedy the deficiencies in the Stober/Roesler combination. Appeal Br. 11, 14 (citing Pascaly Deck 4); Reply Br. We acknowledge Dr. Pascaly’s doctoral degree and one year of experience in the area of processing and chemically modifying polysaccharides. See Pascaly Deck 1. Even assuming that these qualifications establish him as an expert in the field of processing and 7 Declaration under 37 C.F.R. § 1.132 of Dr. Matthias Pascaly, signed and dated “2014-04-10” and entered May 21, 2015. 6 Appeal 2016-004519 Application 11/919,702 chemically modifying polysaccharides, we are not persuaded that his assertions in this regard, or Appellants’ corresponding arguments, are supported by the objective evidence of record. Specifically, as noted above, contrary to the assertions by Appellants and Dr. Pascaly that Stober combines only dry reactants in its process, Stober’s reaction involves mixing the polysaccharide starting material with a “reagent solution.'''’ Stober 5:30, 5:48 (Examples 1 and 2 (emphasis added)); see also id. at 3:57 (discussing the use of an “aqueous solution of, e.g., an alkali hydroxide” in the reaction (emphasis added)). As noted above, moreover, Roesler teaches that the versatility of a two-roll mill is advantageous in a variety of respects, including in its suitability for combining liquids and solids (Roesler 6), precisely as done in Stober’s examples. Appellants’ arguments and Dr. Pascaly’s opinion are also substantially inconsistent with Stober’s express teaching that “/ajny suitable intensive mixer can be used for” mixing the reactants in its process (Stober 3:45—47 (emphasis added)), as well Valta’s teaching that, when using a mechanical mixing process to derivatize a polysaccharide (cellulose), a roll mixer with different speed rollers is advantageous for blending the ingredients. See Valta 6 (“In one aspect of the invention, the mechanical working device is a sieve press or a roll mixer, which are reliable in use and which are not jammed as easily as extruders.'1'’ (emphasis added)). Although we acknowledge Valta’s focus on disintegrating cellulose fiber bundles {id. at 4), Valta is ultimately directed to derivatization of a polysaccharide in which the reactants are mechanically mixed, essentially the same process as Stober. Because Valta, thus, involves a substantially 7 Appeal 2016-004519 Application 11/919,702 similar problem to that addressed in Stober, Appellants do not persuade us that an ordinary artisan would have failed to consider Valta when determining suitable mixing devices for Stober’s process, particularly given Stober’s teaching that “/a]ny suitable intensive mixer can be used for” mixing the reactants in its process. Stober 3:45—47 (emphasis added). Thus, given the relevant teachings in the cited references, Appellants do not persuade us that the cited prior art fails to provide a sufficient reason for, or a reasonable expectation of success in, using a roll mill in Stober’s process. Given the cited references’ teachings, moreover, we are not persuaded that the Examiner cited Roesler out of context (see Appeal Br. 10—11) in asserting that an ordinary artisan would have understood from Roesler that a roll mill would be an advantageous high intensity mixer for use in Stober’s process. Nor do Appellants persuade us (see Appeal Br. 9-11; Reply Br. 3^4; Pascaly Decl. 3) that Roesler is not reasonably pertinent to the problem with which the present invention is involved. As our reviewing court has explained, a “reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (internal quotations omitted). In the present case, Appellants’ invention involves “a method for chemically modifying polysaccharides which is carried with the aid of a mechanical device and at least one modifying reagent.” Spec. 4—5. As noted above, Stober, which involves the same problem, teaches that “/a]ny suitable intensive mixer can be used for” mixing the reactants in such a 8 Appeal 2016-004519 Application 11/919,702 process. Stober 3:45—47 (emphasis added). Because Roesler provides extensive discussion as to the types and relative advantages of a variety of intensive mechanical mixers, Appellants do not persuade us that the Examiner erred in finding that Roesler logically would have commended itself to an inventor considering the problem in which the claimed invention is involved. In sum, for the reasons discussed, Appellants do not persuade us that a preponderance of the evidence fails to support the Examiner’s prima facie case that the process recited in claim 16 would have been obvious to an ordinary artisan. We, therefore, affirm the Examiner’s rejection of claim 16 over Stober, Roesler, and Valta. Claims 17—22, 25—30, and 32—36 were not argued separately and, therefore, fall with claim 16. OBVIOUSNESS—IGUCHI AND VALTA The Examiner’s Prima Facie Case In rejecting claims 16—21, 25—27, and 34—36 over Iguchi and Valta, the Examiner cited Iguchi as disclosing the reaction of any of a variety of polysaccharides with an aqueous solution composed of a crosslinking compound and a water-soluble compound that functionalizes the polysaccharide, and subjecting the reactant-containing mixture to mechanical mixing. Ans. 9—10. The Examiner noted in particular that Iguchi taught that conventional blenders, including “a roll mixer,” were useful for the mechanical mixing. Id. at 11 (citing Iguchi 5:9—15). The Examiner found, therefore, that Iguchi differed from representative claim 16 in that Iguchi “does not expressly teach that the roll mixer operates with counter-rotating rolls that rotate at different speeds.” Id. at 11. 9 Appeal 2016-004519 Application 11/919,702 The Examiner again cited Valta as evidence that, when reacting cellulose with urea to produce cellulose carbamate, a “roll mixer” having counter-rotating rolls moving at different speeds was among useful options for mechanically mixing the reactants. Id. at 11—12. Based on the references’ combined teachings, the Examiner reasoned that it would have been obvious to operate Iguchi’s roll mixer in the manner taught in Valta so to mechanically mix the reactants in Iguchi’s process. Id. at 13. The Examiner reasoned that an ordinary artisan “would have been motivated to set the rollers such that there is a speed difference between the rolls, in order to receive the expected benefit, as disclosed by Valta et al., that this facilitates the conveying.” Id. Analysis Appellants do not persuade us that a preponderance of the evidence fails to support the Examiner’s prima facie case of obviousness. As the Supreme Court has explained, “when a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417. In the present case, Iguchi discloses a process of preparing an absorbent material by reacting the “surface of (A) polysaccharide particles with a (B) crosslinking agent having at least two functional groups which can react with the (A) polysaccharide particles characterized by treating the (A) polysaccharide particles with an aqueous solution of the (B) crosslinking agent and a (C) water-soluble compound.” Iguchi 2:6—11. 10 Appeal 2016-004519 Application 11/919,702 As required by claim 16, Iguchi discloses mixing its polysaccharide with the derivatizing compounds, and then mechanically blending the mixture: In the present invention, to treat the (A) polysaccharide particles with the aqueous Solution of the (C) water soluble compound and the (B) crosslinking agent, generally aqueous solution of (C) and (B) are mixed and then the mixture is sprayed or applied drop wise to (A) and blended afterwards. However, it is also possible that the aqueous solution of (C) and (B), without being mixed previously, are added to (A) at the same time or separately. Id. at 5:1—8. As the Examiner found, a variety of devices may be used to mix the reactants: Conventional blenders can be used as a device for mixing (A), the aqueous solution of (C) and (B), such as a cylindrical blender, a screw blender, a screw extruder, a turbulizer, a Nauta blender, a V-shaped rotating mixer, a ribbon blender, a double arm type kneader, a fluidized bed mixer, an air blender, a rotating disc type mixer and a roll mixer. Id. at 5:9-15. Iguchi, thus, differs from representative claim 16 in that Iguchi does not describe its roll mixer as a roll mill with counter-rotating rolls that operate at different speeds. As noted above, however, Valta discloses that, when using a mechanical mixing process to derivatize a polysaccharide (cellulose), a roll mixer with counter-rotating different-speed rollers is advantageous for blending the reactants. See Valta 6 (“In one aspect of the invention, the mechanical working device is a sieve press or a roll mixer, which are reliable in use and which are not jammed as easily as extruders.'1'’) (emphasis added); see also id. at 7 (“A roll mixer comprises two rolls 11 Appeal 2016-004519 Application 11/919,702 rotating opposite to each other. ... To facilitate the conveying [of the fed pulp containing the reactants],. . . there may be a speed difference between the rolls.”). Thus, given Iguchi’s teaching that a variety of different conventional blenders, including a roll mixer, can be used to blend its polysaccharide and derivatizing reagents, and given Valta’s disclosure of the suitability of a roll mixer with counter-rotating different-speed rollers for blending reactants when derivatizing a polysaccharide, we agree with the Examiner that an ordinary artisan had ample reason for, and a reasonable expectation of success in, using a roll mill encompassed by claim 16 in Iguchi’s process. We, therefore, also agree with the Examiner that the process recited in Appellants’ claim 16 would have been prima facie obvious. Appellants do not persuade us to the contrary. We acknowledge, as Appellants contend (Appeal Br. 15—16; Pascaly Deck 4—5, 7—8), that the term “roll mixer” can encompass a number of mixers that are not roll mills with counter-rotating rolls that operate at different speeds, as recited in claim 16. As noted above, however, Valta uses the term “roll mixer” to describe a device having all of the features of the roll mill recited in claim 16. See Valta 6. Given Iguchi’s teaching that a variety of different conventional blenders, including a roll mixer, can be used to blend its polysaccharide and derivatizing reagents, and given Valta’s disclosure of the suitability of a roll mixer with counter-rotating different- speed rollers for blending reactants when derivatizing a polysaccharide, Appellants do not persuade us that an ordinary artisan lacked an adequate reason for, or a reasonable expectation of success in, using a roll mill encompassed by claim 16 in Iguchi’s process. 12 Appeal 2016-004519 Application 11/919,702 We acknowledge, as Appellants contend (Appeal Br. 16; Reply Br. 9— 10; Pascaly Deck 5), that Iguchi teaches that, in its absorbent product, only the outer surface of the polysaccharide should be crosslinked. See Iguchi 3:44-46 (“The absorbent of the present invention needs to have a structure that the vicinity of the surface of the (A) polysaccharide particles is crosslinked but the inside of the polysaccharide particles is scarcely crosslinked.”). We acknowledge also Valta’s disclosure that, in its process [ujnder mechanical working, the [cellulose] fibre bundles are disintegrated, the pores in the fibre are opened and the liquid penetrates into the fibre. The auxiliary agent activates the fibre and contributes to the penetration of urea. The mechanical working is also used for homogenization of the mixture of pulp and chemicals. The mechanical working device is particularly a sieve press, a roll mixer, or an extruder. The reaction is carried out in a mixture containing a liquid. Valta 4. Appellants do not persuade us, however, that these teachings suggest that an ordinary artisan would have avoided using Valta’s roll mill in Iguchi’s process. We note initially that, rather than disintegrating polysaccharide particles as Appellants contend, Valta’s disclosure relates to the mechanical disruption of cellulose fibers. See id. Iguchi, moreover, explains that its interior crosslinking problem is addressed by including component (C) in its reactant mixture, rather than by avoiding physical conditions that might damage its polysaccharide particles: The absorbent of the present invention needs to have a structure that the vicinity of the surface of the (A) polysaccharide particles is crosslinked but the inside of the polysaccharide particles is scarcely crosslinked. For that reason, the crosslinking procedure in the production process of 13 Appeal 2016-004519 Application 11/919,702 this invention is preferably conducted with the presence of a (C) water-soluble compound. Iguchi 3:44—50 (emphasis added); see also id. at 4:23—47 (discussing that the amount of component (C) can be optimized). Moreover, contrary to Appellants’ contention that certain types of physical conditions should be avoided during Iguchi’s mixing process, Iguchi teaches expressly that any of a variety of conventional blenders, including roll mixers, are useful. Id. at 5:9-15. As the Examiner found, a number of the blenders listed in Iguchi, such as the ribbon and Nauta blenders, were known to damage the material being mixed. Ans. 23—24 (citing Muzzio 914)).8 We acknowledge, as Appellants contend (Appeal Br. 16—17; Reply Br. 9—10 (citing Muzzio 963)), that roll mills like Valta’s would have been expected to significantly reduce the particle size of Iguchi’s particles. Iguchi, however, teaches that a broad range of particle sizes is useful in its process. See Iguchi 2:50—54 (“The shape of the (A) polysaccharide particles is not especially limited. Any of pearly, lamellar, lumpy, amorphous, and fine powdery shapes can be used. Further, the particle size is not particularly limited but in general, it is about 10 to 1,000 pm.”). Thus, that using Valta’s roll mill might have been expected to significantly reduce the size of Iguchi’s polysaccharide particles does not persuade us that an ordinary artisan would have avoided using Valta’s roll mill in Iguchi’s process. 8 Fernando J. Muzzio et al., Solids Mixing, in Handbook of Industrial Mixing: Science and Practice (Chapter 15, Edward F. Paul et al., eds., 2004). 14 Appeal 2016-004519 Application 11/919,702 In sum, for the reasons discussed, Appellants do not persuade us that a preponderance of the evidence fails to support the Examiner’s prima facie case that the process recited in claim 16 would have been obvious to an ordinary artisan. We, therefore, affirm the Examiner’s rejection of claim 16 over Iguchi and Valta. Claims 17—21, 25—27, and 34—36 were not argued separately and, therefore, fall with claim 16. OBVIOUSNESS— IGUCHI, VALTA, AND SRIVASTAVA In rejecting claim 22 over Iguchi, Valta, and Srivastava, the Examiner relied on the teachings in Iguchi and Valta discussed above, and cited Srivastava as evidence that an ordinary artisan would have considered it obvious to use the galactomannans recited in claim 22 in Iguchi’s process. Ans. 14—16. In traversing this rejection, Appellants rely on their arguments directed to the combination of Iguchi and Valta, addressed above. Appeal Br. 7. As noted above, however, we do not find those arguments persuasive. Thus, because Appellants do not identify, nor do we discern, error in the Examiner’s prima facie case of obviousness to claim 22 over Iguchi, Valta, and Srivastava, we affirm the Examiner’s rejection of that claim over those references. SUMMARY For the reasons discussed, we affirm each of the Examiner’s rejections. 15 Appeal 2016-004519 Application 11/919,702 TIME PERIOD 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 16 Copy with citationCopy as parenthetical citation