Ex Parte Wantling

Patent Trial and Appeal Board

May 23, 2017

13692376 (P.T.A.B. May. 23, 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.
13/692,376 12/03/2012 Steven Joseph Wantling 08-20-FF01.US-CON 6566
759033249
Hexion Inc.
12650 Directors Drive, Suite 100
Stafford, TX 77477
05/25/2017 EXAMINER
SHUKLA, KRUPA
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
05/25/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
tammy.hodges @ hexion.com
lisa.jones @ hexion.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN JOSEPH WANTLING1
Appeal 2016-000731
Application 13/692,376
Technology Center 1700
Before MARK NAGUMO, GEORGE C. BEST, and JULIA HEANEY,
Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Steven Joseph Wantling (“Hexion”) timely appeals
under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 1—5 and 12—
18.3 We have jurisdiction. 35 U.S.C. § 6. We affirm.
1 The applicant under 37 C.F.R. § 1.46 is Hexion Inc. (“Hexion,” formerly
known as Momentive Specialty Chemicals, Inc.), the real party in interest.
(Appeal Brief, filed 22 April 2015 (“Br.”), 3.)
2 Office Action mailed 2 October 2014 (“Final Rejection”; cited as “FR”).
3 Remaining copending claims 6—11 have been withdrawn from
consideration by the Examiner (FR 1, § 5a, at 1), and are not before us.
Appeal 2016-000731
Application 13/692,376
OPINION
A. Introduction4
The subject matter on appeal relates to a moisture resistance additive
and composite panels, e.g., gypsum board or oriented strand board (“OSB”),
prepared with such an additive. The ’376 Specification explains that it is
desirable to increase the moisture resistance of such panels (Spec. 2 [0007],
[0008]) as measured by, e.g., density, inter-board strength (“IB”), moisture
absorption (“MA”), and thickness swelling (“TS”) {id. at 9 [0043], and 10,
Tables 1 and 2). The moisture resistance additive of the invention is said to
provide these benefits by including a triglyceride (i.e., a glycerol tri-ester of
fatty acids {id. at 3 [0013])) having a saponification value5 of at least 150
and an iodine number6 of at least 35 {id.); and a non-ionic emulsifier that is a
4 Application 13/692,376, Triglyceride compositions useful for preparing
composite panels and applications thereof filed 3 December 2012 as a
continuation of 12/687,491, filed 14 January 2010, now U.S. Patent
No. 8,343,634 (1 January 2013), which is a continuation-in-part of
12/360,655, filed 27 January 2009, now U.S. Patent No. 8,076,006
(13 December 2011). We refer to the “’376 Specification,” which we cite as
“Spec.”
5 The Specification explains that the “saponification value is the milligrams
of potassium hydroxide (KOH) required to saponify 1 g of sample and
corresponds to the sum of an acid value and an ester value.”
(Spec. 4 [0018].)
6 The Specification explains that the term “iodine number” is a measure of
the degree of unsaturation of a sample (Spec. 3 [0014]—[0015]), and defines
it as the equivalent grams of iodine absorbed by 100 g of sample
{id. at 4 [0017]).
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Application 13/692,376
fatty acid ester of a polyalcohol, such as sorbitan, sucrose, or glycerine7
{id. at 5 [0025]).
Claim 1 is representative and reads:
A composite panel prepared using a moisture resistance
additive useful for preparing composite panels, the composite
panel comprising:
gypsum, cellulose, or combinations thereof; and
the moisture resistance additive, wherein the moisture
resistance additive is provided as an emulsion comprising:
a triglyceride having
a saponification value of at least 150 and
an iodine value of at least 35;
at least one non-ionic emulsifier comprising
a fatty acid ester of a polyalcohol;
and water,
wherein the moisture resistance additive is free of
hydrocarbon wax.
(Claims App., Br. 48; some indentation, paragraphing, and emphasis added.)
Claim 5 depends from claim 1 and reads:
The composite panel of claim 1 wherein the moisture
resistance additive further comprises a compound or
compounds selected from the group consisting of
an amine,
an inorganic base, and
mixtures thereof, and
at least partially saponify the triglyceride,-[sic] wherein
7 The Specification does not make clear the difference, if any, between a
triglyceride (fatty acid tri-ester of glycerine (glycerol) and a non-ionic
emulsifier that is a fatty acid ester of a polyalcohol. In any event, as
discussed infra, we are not persuaded of harmful error regarding the
treatment of nonionic emulsifiers in the appealed rejections.
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Application 13/692,376
the amine, when present, comprises from 0.5 to 3 weight
percent of the emulsion, and wherein
the inorganic base, when present, comprises from 0.5 to
6 weight percent of the emulsion, and
mixtures thereof.
(Claims App., Br. 48-49; some indentation and paragraphing added.)
Independent claim 12 is similar to claim 1 but is drawn to the
moisture resistance additive. Claim 17 depends from claim 12 and is similar
to claim 5. (The recitation in claims 5 and 17 of a process step, rather than
the product resulting from a process step, is anomalous. The Examiner, not
unreasonably, has treated this recitation as a product-by-process limitation.
It is also not clear why the phrase, “and mixtures thereof’ is repeated in
claims 5 and 12. We trust these issues will be addressed appropriately in the
event of any further examination.)
The Examiner maintains the following grounds of rejection:8,9
A. Claims 1—4 and 12—16 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Sleeter10 and Roos.* 11
8 Examiner’s Answer mailed 25 August 2015 (“Ans.”).
9 Because this application was filed before the 16 March 2013 effective date
of the America Invents Act, we refer to the pre-AIA version of the statute.
10 Ronald T. Sleeter, Material for enhancing water tolerance of composite
boards, U.S. Patent No. 6,001,286 (1999).
11 Kenneth D. Roos, Triglyceride/wax replacement for conventional slack
and emulsified waxes used in forest products based composites, U.S. Patent
Application Publication 2005/0269728 A1 (2005).
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Application 13/692,376
Al. Claims 5, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Sleeter, Roos, and
Dieckmann.12
A2. Claims 5, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Sleeter, Roos, and
Wantling.13
A3—4 Claims 5, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
in view of further combinations of these references.14
B. Claims 1—4 and 12—16 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Sleeter, Merlin,15 and Roos.
Bl—4 Claims 5, 17, and 18 are rejected under 35 U.S.C. § (a)
further in view of various combinations of the base
references with Dieckmann and Wantling.16
12 Dale J. Dieckmann and Wayne H. Nyberg, Partially saponified
triglycerides, their methods of manufacture and use as polymer additives,
U.S. Patent No. 6,201,053 B1 (2001).
13 Steven Wantling and Bonnie S. Zepka, Emulsions for lignocellulosic
products, methods of their manufacture, improved lignocellulosic products
and methods for their manufacture, U.S. Patent Application Publication
2006/0243323 Al (2006) issued as U.S. Patent No. 7,563,826 B2
(21 July 2009).
14 See FR 10—14 for a full statement of these rejections.
15 Merlin Martin Brubaker and Leo Phillip Hubbuch, Artificial leather, U.S.
Patent No. 2,121,684 (1938). We follow the Examiner and Hexion in
referring to this reference as “Merlin.”
16 See FR 16—26 for a full statement of these rejections.
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Application 13/692,376
B. Discussion
The Board’s findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Generally, Hexion argues that the Examiner failed to establish a prima
facie case of obviousness based on the applied references. Hexion does not
present substantive arguments for patentability based on secondary
considerations such as unexpected results in the 53-page principal Brief or in
the Reply.17
More particularly, Hexion urges the Examiner erred in rejecting the
independent claims because Sleeter is silent as to the triglyceride having a
saponification value of at least 150, and because Sleeter does not teach or
suggest a nonionic emulsifier that is a fatty acid ester of a polyol. (Br. 10-
11.)
These arguments are not persuasive of harmful error. As the
Examiner finds (FR 3,^7), Sleeter discloses a number of the same
triglycerides named in the supporting ’376 Specification. The same
materials would have been expected to have the same or substantially the
same properties. To the extent the saponification value is a measure of
purity, e.g., a measure of the number of ester groups relative to the amount
of non-saponifiable groups present in the sample, Hexion has not directed
our attention to any disclosure that the routineer in this art would have used
less pure samples in preference to pure samples. Indeed, in this regard, the
Examiner finds that Merlin teaches triglycerides having saponification
17 Reply Brief filed 23 October 2015 (“Reply”).
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Application 13/692,376
values in excess of 150, and the Examiner concludes, reasonably, that it
would have been obvious to use such known materials as embodiments of
triglycerides suggested by Sleeter. (Id. at 15, ]Hf 37—38.)
As for the use of non-ionic emulsifiers, Hexion does not dispute the
Examiner’s finding (id.) that Sleeter discloses that the material for enhancing
water tolerance can be applied as a water emulsion (Sleeter, col. 3,11. 17—
19). Hexion’s argument that Roos would have suggested the use of a non­
ionic emulsifier only for combinations of triglycerides and waxes (Br. 12,
last para.) is not persuasive. It is generally obvious to use known materials
for their known purposes in similar compositions, particularly when those
compositions are intended for similar uses. Here, Roos seeks “enhancing the
mechanical strength and dimensional stability of composite boards and
structures.” (Roos, Abstract.) Sleeter is concerned with “protecting the
dimensional stability of fibers (especially fiber composite panels such as
oriented strand board”). (Sleeter, col. 1,11. 4—8.) Both accomplish this goal
by applying emulsions based at least in part on triglycerides. Hexion has not
directed our attention to any teachings in the record that indicate that the
routineer would have thought Roos’s teachings of adding surfactants or
emulsifying agents such as sorbitan esters, glycerol ste[a]rates, etc.
(Roos 3 [0035]), would have been interpreted as being limited to
triglyceride-wax emulsions. Nor has Hexion come forward with evidence
that the routineer would have thought that adding fatty acid esters of polyols,
such as sorbitan esters, as emulsifying agents, would likely inhibit the ability
to provide useful emulsions of glycerol esters of fatty acids.
Hexion presents separate arguments for the patentability of claim 5,
which depends from independent claim 1, and for claims 17 and 18, which
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Application 13/692,376
depend from independent claim 12. These claims require either the presence
of 0.5 to 3 weight % amine, or of 0.5 to 6 weight present of an inorganic
base; and partial saponification of the triglyceride.18 Hexion urges that
Dieckmann (Appeal Br. 15—19), and Wantling {id. at 20-22), either
separately or together {id. at 23—25) do not cure the various cited
deficiencies of Sleeter and of Roos.
We do not find these arguments persuasive of harmful error. First, to
the extent the claim language is to be taken literally, the composite panel of
claim 1, and the moisture resistance additive of claim 12, will contain the
inorganic base only to the extent the saponification is incomplete.19 Second,
Hexion does not dispute the Examiner’s findings (FR, para, bridging 5—6)
that Dieckmann discloses partial saponification of triglycerides using
about 0.1 to 2 parts by weight catalyst (Dieckmann, col. 3,11. 17—20), where
the catalyst may comprise diethanolamine or triethanolamine {id. at 11. 50—
54). The partial saponification is said to reduce or eliminate the need for
compatibilizing additive to obtain homogeneous compositions useful as
waterproofing agents, etc. {Id., Abstract; col. 5,11. 3—8.) Because these are
claims to a product, the way in which the product is made is not important
except to the extent that the method of making imposes distinct properties on
the product that would not be met by the way a prior art product was made.
E.g., In re Thorpe, 111 F.2d 695, 697, (Fed. Cir. 1985) (“[i]f the product in a
18 Full saponification of the triglyceride would remove the dependent claim
from the scope of the corresponding independent claim.
19 We assume, without deciding, that the amine behaves as a true catalyst,
i.e., it is not used up in the reaction, and that it is not inactivated by chemical
transformation during work-up of the reaction.
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Application 13/692,376
product-by-process claim is the same as or obvious in view of a product of
the prior art, the claim is unpatentable even though the prior product was
made by a different process” (citations omitted)). It is well known to
ordinary chemists that the product of saponification of a fatty acid ester is an
alcohol and the salt of the fatty acid, i.e., a soap, the amphoteric character of
which is well-recognized as tending to stabilize emulsions. (Dieckmann,
col. 3,11. 5—16.) Thus, the Examiner’s findings are not unreasonable, and
Hexion has not come forward with argument supported by credible evidence
of record that, for example, the routineer would not have had a reasonable
expectation of successfully modifying the compositions obvious in view of
Sleeter and Roos by the partial saponification taught by Dieckmann.
Similarly, Hexion urges that Wantling does not cure the deficiencies
of Sleeter and Roos, and “does not teach or suggest the use of ammonium
hydroxide or a metal hydroxide in a composition free of a hydrocarbon
wax.” (Br. 21, 2d full para.) Accordingly, in Hexion’s view, Wantling
provides no motivation to saponify a triglyceride composition that is free of
a hydrocarbon wax, as taught by Sleeter. {Id. at 3d full para.)
We have already rejected Hexion’s arguments that Sleeter and Roos
are deficient for the purposes considered by the Examiner. The Examiner’s
findings regarding Wantling are complementary to those regarding
Dieckmann—but they are focused on the presence of a metal hydroxide and
the partial saponification of the triglyceride, i.e., the fatty acid tri-ester
taught by Sleeter. For essentially the same reasons, namely, the similarity of
the starting materials and of the fatty acids and alcohols produced by
saponification of the tri-esters and of the esters disclosed by Wantling, we
find the Examiner established a reasonable basis for an expectation of
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successfully modifying compositions obvious in view of Sleeter and Roos.
Hexion’s arguments have not shown harmful error in the Examiner’s
findings of fact, or the legal conclusion of obviousness based on those
factual findings.
Having rejected Hexion’s arguments that the rejections further in view
of Dieckmann or Wantling individually are faulty, we are not persuaded by
Hexion’s essentially cumulative arguments against Rejections A3^4
and B3^4. (Br. 23-27 and Br. 42-47.)
Again, Hexion presents no arguments for patentability based on so-
called secondary considerations such as unexpected results.
We conclude that Hexion has not demonstrated harmful error in the
appealed rejections.
C. Order
It is ORDERED that the rejection of claims 1—5 and 12—18 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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