Naerum, Lars et al.

Patent Trials and Appeals Board

Jan 24, 2020

13809362 - (D) (P.T.A.B. Jan. 24, 2020)

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.
13/809,362 02/19/2013 Lars Naerum 3672-P50037 1324
13897 7590 01/24/2020
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
ABU ALI, SHUANGYI
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
01/24/2020 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):
hmuensterer@abel-ip.com
mail@Abel-IP.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LARS NAERUM and POVL NISSEN

Appeal 2019-002848
Application 13/809,362
Technology Center 1700
____________

Before RAE LYNN P. GUEST, GEORGE C. BEST, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 38–57. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed Jan. 9, 2013 (“Spec.”),
the Final Office Action dated Feb. 7, 2018 (“Final Act.”), the Appeal Brief
filed Aug. 6, 2018 as corrected Mar. 19, 2018 (“Appeal Br.”), the
Examiner’s Answer dated Dec. 26, 2018 (“Ans.”), and the Reply Brief filed
Feb. 25, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Rockwool International A/S is identified as the real party in
interest. Appeal Br. 3.
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STATEMENT OF THE CASE
The subject matter on appeal relates to a bonded mineral fiber
product, which is used in thermal or acoustical insulation products and
generally produced by converting a melt made of suitable raw materials to
fibers, spraying the fibers with a binder solution, randomly depositing the
fibers as a mat or web, and curing in a curing oven. Spec. 1:3–13. Claim 38,
the sole independent claim, is illustrative and reproduced from the Claims
Appendix to the Appeal Brief (disputed limitations italicized).
38. A bonded mineral fiber product, wherein the
mineral fiber product comprises man-made vitreous
fibers (MMVF) bound by a cured binder composition,
the non-cured binder composition comprising
(a) a sugar component,
and one or both of
(b) a polycarboxylic acid component and an
alkanolamine, and
(c) a reaction product of a polycarboxylic acid
component and an alkanolamine,
(a) being present in a concentration of from 42 % to
72 % by weight, based on a total dry matter weight of
binder components, which concentration further is
sufficient for the cured product to exhibit a fire
resistance in accordance with Class Al of Standard
EN 13501-1.
ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
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(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims and Appellant’s arguments, we are not persuaded of reversible
error in the appealed rejections.
The Examiner rejects claims 38–57 as follows. Final Act. 2–6.
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
38–40, 42–51, 54–57 103 Hawkins3
41, 52, 53 103 Hawkins, Hansen4
Appellant separately argues the rejection of claims 38, 48, 50, and 51.
Appeal Br. 6–11. Accordingly, claims 39, 40, 42–47, and 54–57 will stand
or fall with claim 38 from which they depend and claim 49 will stand or fall
with claim 48 from which it depends. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues the rejection of claims 41, 52, and 53 as a group. Appeal
Br. 12–14. We select claim 41 as representative of grouped claims 41, 52,
and 53, therefore, claims 52 and 53 will stand or fall with claim 41. Claims
38, 41, 48, 50, and 51 are addressed below.
Claim 38
Appellant contends the Examiner erred in rejecting claim 38 over
Hawkins because Hawkins does not teach or suggest employing a
combination of polycarboxylic acids and amino alcohols as crosslinking

3 US 2011/0086567 A1, published Apr. 14, 2011. Our decision does not
include the parallel citations to Hawkins U.S. Provisional Application No.
61/250,187, filed Oct. 9, 2009, because there is no dispute regarding
Hawkins’s prior art status.
4 US 2006/0111480 A1, published May 25, 2006.
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agents and also does not mention fire resistance. Appeal Br. 7. According to
Appellant, because Hawkins broadly discloses suitable crosslinking agents
and combinations which comprise components (a) to (c), it cannot be
assumed that Hawkins teaches or suggests the claimed binder composition.
Id. at 7–8.
The Examiner responds that Hawkins discloses using sugar in an
amount of 60–95 weight percent in a binder composition that includes
crosslinking agents. Ans. 3 (citing Hawkins ¶¶ 32, 34, 35, 61). The
Examiner finds that because Hawkins discloses carboxylic acids (e.g., such
as a citric acid) and alkanolamines (e.g., triethanolamine) as examples of
suitable crosslinking agents, it would have been obvious to combine the
crosslinking agents for the same purpose which “flows logically from their
having been individually taught in the prior art.” Id. at 3–4 (quoting In re
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980)). The Examiner determines that
even though Hawkins does not disclose the claimed fire resistance property,
the claimed properties are deemed to flow from the structure of the
composition in which the sugar content overlaps with the claimed sugar
content. Id. at 4–5 (citing Hawkins ¶¶ 34, 61, 75).
In the Reply Brief, Appellant maintains that Hawkins discloses
employing crosslinking agents individually in a binder composition, not in
combination, therefore there would have been no motivation for a person
having ordinary skill in the art to employ combinations of crosslinking
agents let along the specific combination of crosslinking agents claimed.
Reply Br. 3. Appellant also asserts that the obvious choice of combinations
of crosslinking agents would have been those which react with the sugar
component rather than with each other. Id. at 4. According to Appellant,
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under normal conditions, the carboxylic acid groups of polycarboxylic acid
will react with the amino (and also the hydroxyl groups) of the
alkanolamine. Id.
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting the claims as obvious over Hawkins’s teachings.
Appellant does not dispute that Hawkins discloses a binder composition
comprising (a) a sugar component in an amount that overlaps the claimed
range and one or both of (b) a polycarboxylic acid component and an
alkanolamine, and (c) a reaction product of a polycarboxylic acid component
and an alkanolamine. The Examiner’s findings are supported by the record
cited in this Appeal. Hawkins ¶¶ 32, 34, 35, 61. Appellant’s argument
(Reply Br. 4) that a person having ordinary skill in the art would have
chosen crosslinking agents which react with the sugar component rather than
with each other is not persuasive of error for two reasons. First, Hawkins
discloses the use of alkanolamines to improve the degree of crosslinking of
the carbohydrate based binder. Hawkins ¶ 61. Second, Appellant’s
arguments are unpersuasive given the lack of evidence in support thereof.
See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (argument by
counsel cannot take the place of evidence).
Although Appellant argues that choosing from the “millions of binder
compositions encompassed by the broad disclosure of HAWKINS” would
be required to arrive at a composition within the Appellant’s claims (Appeal
Br. 8), Appellant does not provide a substantive argument as to why
Hawkins’s disclosure of components that function as crosslinkers, and the
use of alkanolamines specifically (Hawkins ¶ 61), would not have led one of
ordinary skill in the art to binder compositions encompassed by Appellant’s
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claim. Appellant does not direct us to any evidence of criticality of the
claimed range of sugar component concentration or claimed components in
the composition to rebut the Examiner’s rejection. The record has a
preponderance of evidence that Hawkins discloses the same composition
required by claim 38, which justifies requiring Appellant to prove that
Hawkins’s product does not necessarily or inherently possess the claimed
fire resistance property. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
(“[T]he PTO can require an applicant to prove that the prior art products do
not necessarily or inherently possess the characteristics of his claimed
product. . . . Whether the rejection is based on ‘inherency’ under 35 U.S.C.
§ 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced
by the PTO’s inability to manufacture products or to obtain and compare
prior art products.” (footnote omitted)). Appellant has not provided any such
proof.
The preponderance of the evidence in this appeal record, therefore,
supports the Examiner’s conclusion that the claimed subject matter would
have been obvious in view of Hawkins. Accordingly, we sustain the
Examiner’s rejection of claim 38 for the above reasons and those expressed
in the Answer, including the Response to Argument section.
Claims 48, 50, and 51
Appellant contends that the Examiner erred in rejecting claim 48,
which depends from claim 38, because claim 48 recites “wherein (a) consists
of one or more sugars having a total dextrose equivalent (DE) of from 40 to
100” and excludes sugar components with a significantly lower DE. Appeal
Br. 9, 10. Appellant asserts that if dextrose were employed as a carbohydrate
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component in Hawkins’s binder composition, it would be employed with a
carbohydrate (polymer) having a dextrose equivalent of from 2 to 20
because that is a required feature of Hawkins’s binder composition. Id. at 9.
(citing Hawkins ¶ 10, Table 3). Appellant also argues that Hawkins’s Table
4 “teaches away” from a total (combined) dextrose equivalent of at least 40
because it shows that properties do not improve with increasing DE. Id. at 9–
10.
Even if Hawkins permitted relatively small amounts of a carbohydrate
having a dextrose equivalent of from 2 to 20, Appellant contends that the
combination with other sugar components having a significantly higher DE
would not meet a total DE of 90 as required by claim 50. Appeal Br. 11.
Claim 50 depends from claim 48 and recites “wherein (a) has a total DE of
from 90 to 100.” Claim 51 depends from claim 50 and recites “wherein (a)
consists of a glucose syrup.” Appeal Br. 17 (Claims Appendix).
The Examiner responds that Hawkins is not limited to its preferred
embodiments and that it cannot be said to teach away from the claimed
component when it broadly discloses that the carbohydrate may be glucose.
Ans. 6 (citing Hawkins ¶ 32).
In the Reply Brief, Appellant maintains that it is a required feature of
Hawkins that the carbohydrate component has a DE of from 2 to 20 even if
dextrose is one of the components. Reply Br. 4. Appellant cites Hawkins’s
Table 4 as evidence that the binder properties do not improve with increase
DE because Sample 5 has the best properties, but has a DE intermediate
between the two other maltodextrins employed in the other samples. Id. at 5.
We do not find Appellant’s arguments persuasive of error. Appellant
does not dispute the Examiner’s finding that dextrose has a DE of 100. Final
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Act. 5–6. Appellant’s argument (Appeal Br. 9; Reply Br. 4) that even if
dextrose with a DE of 100 is used in Hawkins’s binder composition,
Hawkins requires that it be combined with other sugars to have a DE of from
2 to 20 is not persuasive because it is not supported by the record. Hawkins
states “[t]he carbohydrate may have a dextrose equivalent (DE) from 2 to
20.” Hawkins ¶ 10 (emphasis added). Hawkins’ teachings, therefore, do not
preclude a carbohydrate having a DE of “from 40 to 100” recited by claim
48 or “total DE of from 90 to 100” recited by claim 50, or “a glucose syrup”
as recited by claim 51.
Appellant’s argument that Hawkins’ Table 4 teaches away from a
binder having an increased DE value is not persuasive because it is not
supported by the cited record in this Appeal. As Appellant notes, the sample
with the carbohydrate having an intermediate DE value, not the lowest
value, has the best tensile strength. Appeal Br. 5. Therefore Hawkins’s Table
4 does not show any trend to suggest that Hawkins’ binder composition
requires a dextrose equivalent of 20 or less, let alone teach away from a
dextrose equivalent that was not even tested (i.e. DE greater than 20).
Accordingly, we affirm the Examiner’s rejections of claims 48, 50,
and 51 under 35 U.S.C. § 103.
For these reasons and those the Examiner provides, we uphold the
Examiner’s rejection of claim 48 under 35 U.S.C. § 103 as obvious over
Hawkins.
Claim 41
Claim 41 depends from claim 40 and recites “wherein (b) comprises a
reaction product of diethanolamine, tetrahydroterephthalic anhydride and
trimellitic anhydride.” Appeal Br. 15 (Claims Appendix). Claim 40, in turn,
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depends from claim 38 and recites “wherein the non-cured binder
composition comprises (b).” Id. The Examiner rejects claim 41 over the
combination of Hawkins and Hansen because Hawkins discloses a bounded
mineral fiber product and Hansen discloses trimellitic anhydride can be used
to react with alkanolamine in binder compositions for bounded mineral fiber
products. Final Act. 6 (citing Hansen ¶¶ 22–24). The Examiner determines it
would have been obvious to use trimellitic anhydride in a binder
composition for the same purpose known in the art. Id.
Appellant contends that the Examiner erred in rejecting claim 41
because Hansen discloses aromatic polycarboxylic acids as reactants for
forming binder components, not as binder components as such, and Hawkins
does not disclose aromatic polycarboxylic acid or any reaction products of
crosslinking agents. Appeal Br. 12. Appellant also contends that Hawkins
does not disclose tetrahydroterephthalic acid or trimellitic anhydride. Id. at
13.
The Examiner responds that Appellant is attacking the cited
references individually. Ans. 9. The Examiner finds Hansen discloses using
trimellitic anhydride to react with alkanolamine in binder compositions for
bounded mineral fiber products and concludes that substituting one known
compound for another for the same purpose is known. Id. (citing Hansen
¶¶ 22–24).
We are not persuaded that the Examiner erred in rejecting claim 41
over the combination of Hawkins and Hansen because the Examiner’s
finding that Hansen discloses using the claimed trimellitic anhydride as well
as the claimed tetrahydrophthalic anhydride to react with alkanolamine in a
binder composition for bounded mineral fiber products is supported by the
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record. Hansen ¶¶ 22–24, Title. Appellant does not adequately rebut the
Examiner’s finding that it would have been a matter of substitution of
Hawkins’ carboxylic acid and an alkanolamine component for Hansen’s
carboxylic acid and an alkanolamine component as both disclose a binder
composition for a mineral fiber. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007) (“when a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result.”).
Even if Hawkins uses exclusively aliphatic polycarboxylic acids in its
examples and Hansen discloses aromatic polycarboxylic acids as reactants
for forming binder components, Appellant does not adequately explain why
a person having ordinary skill in the art would have understood the teachings
of Hawkins to be so limited. In an obviousness determination, a reference
may be relied upon for all that it would have reasonably suggested to one
having ordinary skill in the art. Merck & Co. v. Biocraft Labs., 874 F.2d
804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a multitude
of effective combinations does not render any particular formulation less
obvious.”). Moreover, “a reference is not limited to the disclosure of specific
working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972) (citation
omitted).
Accordingly, we affirm the Examiner’s rejection of claim 41 under 35
U.S.C. § 103.
For these reasons and those the Examiner provides, we uphold the
Examiner’s rejection of claims 41 and its dependent claims 52 and 53 under
35 U.S.C. § 103 as obvious over the combination of Hawkins and Hansen.
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TIME PERIOD FOR RESPONSE
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)(iv).
CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
38–40, 42–
51, 54–57 103 Hawkins
38–40, 42–
51, 54–57
41, 52, 53 103 Hawkins, Hansen 41, 52, 53
Overall
Outcome
38–57

AFFIRMED