Ex Parte Schick et al

Patent Trial and Appeal Board

Dec 13, 2017

11919702 (P.T.A.B. Dec. 13, 2017)

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).
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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
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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.
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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
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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.
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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
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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
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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.
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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.
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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
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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.
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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
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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).
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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.
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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
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