Erling Lennart. Hansen et al.

Patent Trials and Appeals Board

Feb 21, 2020

13884758 - (D) (P.T.A.B. Feb. 21, 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.
13/884,758 07/01/2013 Erling Lennart Hansen 3672-P50072 5696
13897 7590 02/21/2020
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
GILLETT, JENNIFER ANN
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
02/21/2020 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 ERLING LENNART HANSEN, LARS NAERUM, and
POVL NISSEN
Appeal 2019-002371
Application 13/884,758
Technology Center 1700
Before JAMES C. HOUSEL, CHRISTOPHER C. KENNEDY, and JULIA
HEANEY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 26–33 and 37–41. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Rockwool
International A/S. Appeal Br. 3.
2 Our Decision refers to the Specification (“Spec.”) filed May 10, 2013, the
Examiner’s Final Office Action (“Final Act.”) dated Dec. 14, 2017,
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CLAIMED SUBJECT MATTER
The claims are directed to a mineral fiber product with reduced
formaldehyde emission. Spec. 1, Title. The invention relates to a mineral
fiber product whose fibers have been bonded with a cured urea-modified
phenol-formaldehyde resol binder (“PFU”) wherein the non-cured PFU
includes dextrose.3 Id. at 4.
Claim 26, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter (limitation at issue
italicized):
26. A mineral fiber product comprising mineral fibers bonded
with a cured urea-modified phenol-formaldehyde resol resin
binder composition, wherein the non-cured binder composition
comprises dextrose in an amount of from 30 wt% to 70 wt%,
based on total dry solids of urea-modified phenol-formaldehyde
resol resin and dextrose.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
MacPherson et al.
(“MacPherson”)
US 4,339,361 July 13, 1982
Yang et al. (“Yang”) US 2005/0170734 A1 Aug. 04, 2005
Wiker et al. (“Wiker”) US 2010/0146887 A1 June 17, 2010
Swift et al. (“Swift”) WO 2008/127936 A2 Oct. 23, 2008

Appellant’s Appeal Brief (“Br.”) filed July 10, 2018, the Examiner’s Answer
(“Ans.”) dated Nov. 27, 2018, and Appellant’s Reply Brief (“Reply Br.”)
filed Jan. 24, 2019.
3 There is no dispute in the record that “dextrose” and “glucose” are
synonyms for the same chemical compound. Thus, regardless of which term
is used in the record, particularly the prior art references, we use the term
“dextrose” in our Decision.
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Zimmermann et al.4
(“Zimmermann”)
EP 1 456 444 B2 Jan. 01, 2014

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection:
1. Claims 30, 32, 33, and 37–39 under 35 U.S.C. § 112, second
paragraph, as indefinite;
2. Claims 26, 30, and 37–41 under 35 U.S.C. §102(b) as
anticipated by, or in the alternative, under 35 U.S.C. §103(a) as
unpatentable over MacPherson;
3. Claims 31 and 32 under 35 U.S.C. §103(a) as unpatentable over
MacPherson in view of Zimmermann;
4. Claim 33 under 35 U.S.C. § 103(a) as unpatentable over
MacPherson in view of Yang;
5. Claims 26–30, 32, 33, and 37–39 under 35 U.S.C. § 103(a) as
unpatentable over Swift;
6. Claim 31 under 35 U.S.C. § 103(a) as unpatentable over Swift
in view of Wiker; and
7. Claims 40 and 41 under 35 U.S.C. § 103(a) as unpatentable
over Swift in view of MacPherson.
OPINION
Rejection 1: 35 U.S.C. § 112, second paragraph
The Examiner rejects claims 30, 32, 33, and 37–39 under 35 U.S.C.

4 The parties refer to this reference by the last name of the second-named
inventor, Ackermann. Ans. 7; Appeal Br. 13. The conventional practice is to
refer to a reference by the last name of the first-named inventor,
Zimmermann. We adopt the conventional practice.
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§ 112, second paragraph, as being indefinite. We discuss claim 30 as a first
group, claims 32 and 33 as a second group, and claims 37–39 as a third
group. The patent statute requires that a claim “particularly point[] out and
distinctly claim[] the subject matter which the applicant regards as [the]
invention.” 35 U.S.C. § 112, second paragraph. “[F]or a claim to comply
with section 112, paragraph 2, it must satisfy two requirements: first, it must
set forth what ‘the applicant regards as his invention,’ and second, it must do
so with sufficient particularity and distinctness, i.e., the claim must be
sufficiently ‘definite.’” See Solomon v. Kimberly-Clark Corp., 216 F.3d
1372, 1377 (Fed. Cir. 2000). As such, a claim is invalid for indefiniteness if
a person of ordinary skill in the art would not have understood the scope of
the claim, when the claim was read in light of the specification. See Allen
Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1348 (Fed. Cir. 2002).
The legal standard for definiteness in prosecution is whether a claim
reasonably apprises those of skill in the art of its scope. In re Warmerdam,
33 F.3d 1354, 1361 (Fed. Cir. 1994). Notably too, when a word of degree or
a purely subjective phrase is used in a patent claim, the specification must
provide some objective standard for measuring that degree or the scope of
that phrase. See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342,
1350-55 (Fed. Cir. 2005). “The scope of claim language cannot depend
solely on the unrestrained, subjective opinion of a particular individual
purportedly practicing the invention.” Id. at 1350 (citation omitted).
Claim 30
Claim 30 depends from claim 26, and further requires that the product
of claim 26 satisfies at least one of several standards for formaldehyde
emission. The Examiner rejected claim 30 as indefinite because standards
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are known to change over time such that it is unclear what emission
requirement must be met. Ans. 3–4. Appellant argued that it is apparent what
the standards were at the time of filing and a skilled artisan would be able to
find out what the requirements for each standard are. Appeal Br. 8. This
argument is insufficient to identify reversible error in the Examiner’s
rejection of claim 30 because Appellant fails to address the Examiner’s
position that the standards may change over time such that the scope of the
claim is indefinite. A claim whose scope is subject to change over time is
indefinite because the standards might have different meanings over time
and no informed and confident choice is available among the contending
meanings. Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d
1366, 1371 (Fed. Cir. 2015); see also Amgen, Inc. v. Hoechst Marion
Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003) (“[A]mbiguity in claim
scope is at the heart of the definiteness requirement of 35 U.S.C. § 112,
¶ 2.”)
Accordingly, we sustain the Examiner’s indefiniteness rejection of
claim 30.
Claims 32 and 33
Claims 32 and 33 depend from claim 26, and further require that the
product is either a roof board having a density of 100–250 kg/m3 or a
building insulation product board or roll having a density of 5–70 kg/m3,
“provided that the non-cured binder composition comprises dextrose in an
amount of from 30 wt% to 50 wt%, based on total dry solids of urea-
modified phenol-formaldehyde resol resin and dextrose.” The Examiner
rejected claims 32 and 33 as indefinite on the basis that the term, “provided
that,” renders it unclear whether the density is necessarily present or is
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present only when dextrose is present in the specified amounts in the non-
cured binder. Ans. 4.
Appellant argued that the only reasonable interpretation of these
claims is that the mineral fiber product has both the recited density and the
non-cured binder composition comprises dextrose in an amount from 30–50
wt% based on the total dry solids of the PFU and dextrose. Appeal Br. 8. We
agree. Not unlike a “wherein” clause, Appellant’s use of “provided that” sets
forth a proviso that adds a limitation to the previously recited structure. In
both claims 32 and 33, this proviso is that the range of dextrose present in
the non-cured PFU is narrowed to 30–50 wt%. Thus, each of these claims
requires that the named product have both the density and dextrose present
in the non-cured PFU within this narrower range.
Accordingly, we do not sustain the Examiner’s indefiniteness
rejection of claims 32 and 33.
Claims 37–39
Claim 37 depends from claim 26, and further requires that the product
is obtained by a process comprising “adding dextrose to the binder
composition after preparation of the binder composition but before curing
the binder composition applied to the mineral fibers.” Claims 38 and 39
depend from claim 37. The Examiner rejected claim 37 because it is not
clear whether “the binder composition” as used in claim 37 is the cured urea-
modified PFU, the non-cured PFU, or a different binder composition. Ans.
4. The Examiner stated that it was not clear whether claim 37 requires a
binder composition already including dextrose then have dextrose added
after its preparation. Id.
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Appellant argued that the only reasonable interpretation of claim 37 is
that the non-cured binder composition of claim 26 is prepared by adding
dextrose to the uncured PFU before the resin is cured. Appeal Br. 9. We
disagree. Claim 26 recites both a cured and a non-cured binder composition,
wherein the non-cured binder composition includes dextrose. Claim 37
recites that the product of claim 26 is made by a process comprising adding
dextrose to “the binder composition after preparation of the binder
composition but before curing of the binder composition.” Claim 37
(emphasis added). Because this clause is referring to a binder composition
before curing, “the binder composition” cannot be referring to the cured
binder composition of claim 26. By use of the definite article, “the,” claim
37 must be referring to the non-cured binder composition of claim 26.
However, as the Examiner indicated, claim 26 requires that the non-cured
binder composition already includes 30–70 wt% dextrose. Therefore, if
adding dextrose is performed “after preparation of the binder composition,”
i.e., the non-cured binder composition, then it would appear that claim 37 is
requiring adding more dextrose to the non-cured binder composition that
already includes dextrose. This interpretation is not the same as Appellant’s
“only reasonable interpretation.” Where a claim is subject to multiple
interpretations, it is appropriate for Appellant to amend the claims to make
clear which interpretation is required. In re Zletz, 893 F.2d 319, 322 (Fed.
Cir. 1989) (“[D]uring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.”).
Accordingly, we sustain the Examiner’s indefiniteness rejection of
claim 37, and claims 38 and 39 which depend thereon.
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Rejections 2–4: Anticipation/Obviousness over MacPherson
After review of the Examiner’s and Appellant’s opposing positions
and the appeal record before us, we determine that Appellant’s arguments
are sufficient to identify reversible error in the Examiner’s anticipation
rejection, but insufficient to identify reversible error in the Examiner’s
obviousness rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Accordingly, we reverse the stated anticipation rejection for substantially the
reasons given by Appellant and set forth below, but affirm the stated
obviousness rejection for the fact findings and reasons set forth in the
Examiner’s Answer. We offer the following for emphasis only.
The Examiner rejected claims 26, 30, and 37–41 under 35 U.S.C.
§102(b) as anticipated by, or in the alternative, under 35 U.S.C. §103(a) as
unpatentable over MacPherson. Specifically, the Examiner found that
MacPherson teaches a mineral fiber product as recited in claim 26 wherein
the product includes mineral fibers bonded with a PFU composition that may
include a sugar-type compound such as dextrose. The Examiner found that
MacPherson teaches the phenol-formaldehyde (“PF”) to urea ratio is
between 70:30 and 40:60 parts by weight, and the ratio of PF to total
extender (i.e., sugar plus urea) being 35:65 parts by weight. The Examiner
further found that MacPherson teaches an example with a PF to urea to
dextrose weight ratio of 55/45/40, which has 33.7 wt% dextrose. See Ans. 5–
6.
Appellant argued that the Examiner erred in determining the weight
percentage of dextrose in the example. In particular, Appellant asserted that
because the example uses an 80% dextrose solution, the actual amount of
dextrose in this example is only 24.2 wt%. Since this value is “significantly
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lower than the percentage recited in instant claim 26 (30 %),” Appellant
contended that MacPherson does not anticipate nor render obvious claim 26.
In this regard, Appellant urged that MacPherson’s disclosure of the use of an
80% dextrose solution “would be completely irrelevant information if one
were to assume that the percentages of glucose shown in Table II refer to
[dextrose] as such[, i.e., 100% dextrose].” According to Appellant,
MacPherson could merely have indicated that an aqueous solution of
dextrose was used without indicating its exact concentration. See Appeal Br.
10–11. As such, Appellant contends that MacPherson’s disclosure in this
regard “is not unambiguous.” Reply Br. 3.
We are persuaded of reversible error in the Examiner’s anticipation
finding by MacPherson. MacPherson discusses the 55/45/40 R/U/G blend
(where the PF resin=R, urea=U, and G=dextrose) both in Example 6, column
10, and Table II. Therein, MacPherson refers to the R/U solids blends in
parts by weight. MacPherson teaches that these blends are mixed with
various amounts of dextrose, and then states that percent solids were
determined and reported in Table II. MacPherson notes that the 55/45/40
R/U/G blend would be adequate for glass bonding purposes. In Table II
notes, MacPherson teaches that the 55/45/10 blend actually provides 9.09
wt% dextrose.
This disclosure agrees with the Examiner’s position that the values for
the R/U/G blends are parts by weight. Indeed, if Appellant’s argument were
correct, MacPherson would have reported a 7.27 wt% for this example.5
Contrary to Appellant’s argument, MacPherson’s reporting of the use of

5 The 55/45/10 blend is disclosed to have 50 wt% R (or PF), 40.91 wt% U
(or urea), and 9.09 wt% dextrose. See Table II, legend, note “+”.
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either a 50% or an 80% dextrose solution is directed to the determination of
the “% Organic Solids” in each blend because this note corresponds to this
column of data in Table II. The 55/45/10 mixture was prepared using the
80% dextrose solution, but this information did not alter the calculation of
the actual weight percentage of dextrose.
However, we note that the Examiner reversibly erred in calculating
the amount of dextrose in MacPherson’s 55/45/40 R/U/G blend. The actual
amount of dextrose in this blend is 28.57 wt%, based on the total R+U+G
solids (40/(55+45+40)=.2857). Claim 26 requires 30–70 wt% dextrose,
“based on total dry solids of urea-modified phenol-formaldehyde resol resin
and dextrose,” i.e., based on R+U+G. The Examiner does not provide the
mathematical explanation in the rejection for the calculation arriving at 33.7
wt% dextrose, but erroneously indicates this amount of dextrose is based
only on the total R+G solids. Ans. 6; see also id. at 15 and 19 (“32% as
asserted by Examiner”). Further, the Examiner’s calculation of 32 wt%
dextrose for the 55/45/40 R/U/G blend is erroneous because it also is based
only on the total R+G solids, uses the 80% dextrose solution, and assumes
that this solution is 40 wt% of the blend. See Ans. 21. We hold this error to
be reversible error with respect to the Examiner’s anticipation rejection by
MacPherson because the actual amount of dextrose in MacPherson’s
55/45/40 R/U/G blend, 28.57 wt%, does not represent a value within the
recited range of claim 26.
We do not find Appellant’s argument persuasive of reversible error as
to obviousness. MacPherson teaches the phenol-formaldehyde (“PF”) to urea
ratio is between 70:30 and 40:60 parts by weight, and the ratio of PF to
sugar plus urea being up to 35:65 parts by weight. MacPherson 3:19–38.
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These ratios permit one to calculate the range of the amounts of sugar, e.g.,
dextrose, permitted in MacPherson’s composition. Where the ratio of PF to
urea is 70:30 parts by weight, there must be up to 50 parts by weight, i.e., 50
wt%, dextrose in a composition having a ratio of PF to dextrose plus urea of
35:65.6 Conversely, for a ratio of PF to urea of 40:60 parts by weight, there
must be up to 12.5 parts by weight, i.e., 12.5 wt%, dextrose in a composition
having a ratio of PF to dextrose plus urea of 35:65.7 Thus, the range of
dextrose in MacPherson’s composition is 12.5–50 wt%, based on total dry
solids of urea-modified phenol-formaldehyde resol resin and dextrose. This
range overlaps with the range recited in claim 26 and, therefore, a prima
facie case of obviousness exists. See E.I. DuPont de Nemours & Co. v.
Synvina C.V., 904 F.3d 996 (Fed. Cir. 2018) (“[A] prima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art.” (quoting In re Peterson, 315
F.3d 1325, 1329 (Fed. Cir. 2003))).
Appellant does not argue dependent claims 30 and 37–41, nor
rejections 3 and 4 separately. Accordingly, we reverse the Examiner’s
anticipation rejection of claim 26 and dependent claims 30 and 37–41, but
affirm the Examiner’s obviousness rejections of claim 26, 30–33, and 37–41.

6 Normalizing to a composition having 100 parts by weight of PF, urea, and
dextrose, the ratio 35:15 is equivalent to the ratio 70:30 for PF:urea, and the
amount of dextrose present in a 35:65 PF to dextrose plus urea composition
is 65–15=50.
7 Normalizing to a composition having 100 parts by weight of PF, urea, and
dextrose, the ratio of 35:52.5 is equivalent to a ratio of 40:60 for PF:urea,
and the amount of dextrose present in a 35:65 PF to dextrose plus urea
composition is 65–52.5=12.5.
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Rejections 5–7: Obviousness over Swift
After review of the Examiner’s and Appellant’s opposing positions
and the appeal record before us, we determine that Appellant’s arguments
are insufficient to identify reversible error in the Examiner’s obviousness
rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we
affirm the stated obviousness rejection for the fact findings and reasons set
forth in the Examiner’s Answer. We offer the following for emphasis only.
The Examiner rejected claims 26–30, 32, 33, and 37–39 under 35
U.S.C. § 103(a) as unpatentable over Swift. Specifically, the Examiner
found that Swift teaches a mineral fiber product comprising mineral fibers
bonded with a cured PFU composition, wherein the non-cured composition
comprises the PFU resin and a predominate mole fraction of Maillard
reactants including a carbohydrate carbonyl reactant such as dextrose. The
Examiner found that Swift teaches that the function of the Maillard reactants
is to reduce formaldehyde and trimethylamine content, when compared to
PFU resin alone. The Examiner also found that Swift’s non-cured
composition, with a predominate mole fraction of Maillard reactants, i.e.,
greater than 50 mole%, would have greater than 50 wt% dextrose, given the
molecular weights (“MWs”) of PFU (184.2 g/mol) and dextrose (180.2
g/mol). Because this range of amounts of dextrose overlaps the recited range
in claim 26, the Examiner concluded that the recited range would have been
prima facie obvious. See Ans. 10, 21–22, citing In re Wertheim, 541 F.2d
257 (CCPA 1976); In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990); and
Peterson, 315 F.3d at 1330. The Examiner further concludes that it would
have been obvious for one of ordinary skill in the art to increase the amount
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of Maillard reactants, to reduce formaldehyde and trimethylamine emission.
Ans. 22.
Appellant argued that the Examiner failed to explain how the MW of
PFU was derived, especially since a PFU resin is an oligomer or polymer.
Appellant contended that it is highly unlikely that a PFU resin has a MW of
only about 184 g/mol, a value less than twice that of phenol itself. Appellant
further asserted that dextrose is present in Swift’s composition in the form of
a Maillard reaction product with an amine, rather than as dextrose per se.
Appellant urged that Swift’s composition includes a predominate mole
fraction of the Maillard reaction product, not just dextrose. Appeal Br. 15–
16.
Appellant’s arguments are not persuasive of reversible error. The
Examiner provided a table with the formula and MWs of each of the
ingredients of Swift’s composition, including urea, phenol, formaldehyde,
and dextrose. Where there are equal molar amounts of PFU and Maillard
reactants and equal molar amounts of the Maillard reactants, the Examiner
uses a 1:1:1 molar ratio as a reasonable starting point because a resol
requires the F:P ratio to be greater than one and urea reacts with unreacted
formaldehyde groups on the PF resin. Further, the Examiner correctly notes
that, although the Maillard reactants include both dextrose and an amine,
claim 26 only requires that the dextrose be considered in the calculation of
the weight percentage of dextrose in the non-cured composition. The
Examiner further found that claim 26 does not exclude the presence of other
materials, including Swift’s amine reactant, and that the unreacted Maillard
reactants may be combined with the uncured PFU resin. Based on these
explanations, the Examiner calculated the weight percentage of dextrose as
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49.45 wt%, based on the MW of dextrose (180.16 g/mol) divided by the
MWs of urea (60.06 g/mol), phenol (94.11 g/mol), formaldehyde (30.03
g/mol), and dextrose (180.16 g/mol)
(180.16/(60.06+94.11+30.03+180.16)=.4945). The Examiner further noted
that, for the embodiment where the Maillard reactants are predominate, this
weight percentage represents the low end of Swift’s range. In addition, the
Examiner found that Swift teaches even greater amounts of Maillard
reactants. Therefore, the Examiner again concluded that it would have been
obvious to have varied the molar amounts of Maillard reactants, and thus the
weight percentage of dextrose, to reduce formaldehyde and trimethylamine
emission. See Ans. 22–24.
With regard to the Examiner’s response, Appellant argued only that
the 1:1:1 molar ratio was not a reasonable starting point because “it is not
seen that the reaction product of one molecule of phenol and one molecule
of formaldehyde can reasonably be assumed to react with (only) one
molecule of urea,” especially if the F:P ratio is greater than one. Reply Br. 4.
However, as the Examiner explained, the 1:1:1 molar ratio was merely a
starting point to illustrate how Swift suggests use of greater amounts of
Maillard reactants in order to reduce formaldehyde and trimethylamine
emission. Appellant fails to rebut these findings or the reasoning the
Examiner provides for concluding that an ordinary artisan would have
increased the amounts of Maillard reactants, including dextrose, to arrive at
amounts within the range recited in claim 26.
Finally, we note Appellant argues for the first time in the Reply Brief
that Swift teaches a large number of possible sugar reactants and is not
limited to dextrose. Reply Br. 5. Under regulations governing appeals to the
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Board, any new argument not timely presented in the Appeal Brief will not
be considered when filed in a Reply Brief, absent a showing of good cause
explaining why the argument could not have been presented in the Appeal
Brief. See 37 C.F.R. § 41.41(b)(2) (2017). Appellant has provided this
record with no such showing and, therefore, this argument has been waived.
Moreover, this argument is not persuasive of reversible error. The fact
that Swift teaches a large number of effective sugar reactants does not render
any particular named sugar reactant, including dextrose, any less obvious,
especially where the claimed composition is used for the same purpose as
Swift. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) (“That the ʼ813 patent discloses a multitude of effective combinations
does not render any particular formulation less obvious. This is especially
true because the claimed composition is used for the identical purpose.”);
see also, In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection
affirmed where the disclosure of the prior art was “huge, but it undeniably
include[d] at least some of the compounds recited in appellant’s generic
claims and [was] of a class of chemicals to be used for the same purpose as
appellant’s additives”).
Appellant does not argue dependent claims 27–30, 32, 33, and 37–39,
nor rejections 6 and 7 separately. Accordingly, we affirm the Examiner’s
obviousness rejections of claim 26–33, and 37–39.
CONCLUSION
Upon consideration of the record, and for the reasons given above and
in the Examiner’s Answer, the decision of the Examiner rejecting: (1) claims
30 and 37–39 under 35 U.S.C. § 112, second paragraph, as indefinite, (2)
claims 26, 30, and 37–41 under 35 U.S.C. § 103(a) as unpatentable over
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MacPherson, (3) claims 31 and 32 under 35 U.S.C. § 103(a) as unpatentable
over MacPherson in view of Zimmermann, (4) claim 33 under 35 U.S.C.
§ 103(a) as unpatentable over MacPherson in view of Yang, (5) claims 26–
30, 32, 33, and 37–39 under 35 U.S.C. § 103(a) as unpatentable over Swift,
(6) claim 31 under 35 U.S.C. § 103(a) as unpatentable over Swift in view of
Wiker, and (7) claims 40 and 41 under 35 U.S.C. § 103(a) as unpatentable
over Swift in view of MacPherson, is affirmed.
However, for the reasons given above and in the Appeal and Reply
Briefs, the decision of the Examiner rejecting (1) claims 32 and 33 under 35
U.S.C. § 112, second paragraph, as indefinite, and (2) claims 26, 30, and 37–
41 under 35 U.S.C. § 102(b) as anticipated by MacPherson, is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
30, 32, 33,
37–39
112, ¶ 2 Indefiniteness 30, 37–39 32, 33
26, 30, 37–
41
102(b) MacPherson 26, 30, 37–
41
26, 30, 37–
41
103(a) MacPherson 26, 30, 37–
41

31, 32 103(a) MacPherson,
Zimmermann
31, 32
33 103(a) MacPherson, Yang 33
26–30, 32,
33, 37–39
103(a) Swift 26–30, 32,
33, 37–39

31 103(a) Swift, Wiker 31
40, 41 103(a) Swift, MacPherson 40, 41
Overall
Outcome
26–33, 37–
41

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED