Ex Parte 6,454,902 et al

Patent Trial and Appeal Board

Jul 16, 2018

95002397 (P.T.A.B. Jul. 16, 2018)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/002,397 09/15/2012 6,454,902 10007-114RX1 1050
96039 7590 07/16/2018
Meunier Carlin & Curfman LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
EXAMINER
LOPEZ, CARLOS N
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
07/16/2018 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
____________

SNF SAS.
Requester and Appellant

v.

CIBA SPECIALITY CHEMICALS WATER TREATMENTS LTD.
Patent Owner and Cross-Appellant
____________

Appeal 2018-001194
Reexamination Control 95/002,397
Patent 6,454,902 B1
Technology Center 3900
____________

Before JEFFREY B. ROBERTSON, RAE LYNN P. GUEST, and
WESLEY B. DERRICK, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION UNDER 37 C.F.R. § 41.77(f)

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This is a decision under 37 C.F.R. § 41.77(f). On August 19, 2016,
the Board entered a DECISION ON APPEAL, affirming the Examiner’s
decision to reject claims 2-6, 11-13, 15-17, 19-25, and 52-54, but which also
reversed the Examiner’s decision not to adopt rejections of claims 8 and 14,
which by operation of rule entered a new ground of rejection under
37 C.F.R. § 41.77(b) for those claims. (Decision on Appeal, Appeal No.
2015–007695, mailed August 19, 2016, hereinafter, “Decision” 2, 31.) The
Board also entered a new ground of rejection of claims 7, 9, 10, 18, 26-51,
and 55. (Id.) Pursuant to 37 C.F.R. § 41.77(f), this decision is deemed to
incorporate the earlier decision, except as indicated.
In response to the Decision, Patent Owner Ciba Speciality Chemicals
Water Treatments Ltd. (“Patent Owner”) requested reopening of prosecution
under 37 C.F.R. § 41.77(b)(1) in its PATENT OWNER REQUEST TO
REOPEN PROSECUTION UNDER 37 C.F.R. § 41.77(b) filed September
19, 2016 (hereinafter “Request to Reopen” or “Req. to Reopen”).
The Request to Reopen proposed to amend claims 10, 13, 48, 51, and
54, and also presented a Declaration of Christian Jehn-Rendu dated
September 19, 2016 (hereinafter “Jehn-Rendu Declaration”). (Req. to
Reopen 3–11.)
Third-Party Requester SNF SAS. (hereinafter “Requester”) did not
file comments under 37 C.F.R. § 41.77(c).
In an Order remanding the case to the Examiner, the amendments to
claims 10, 48, and 51, as well as Patent Owner’s arguments and portions of
the Jehn-Rendu Declaration related thereto were entered for consideration by
the Examiner, while proposed amendments to claims 13 and 54 were not
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entered for consideration as not being compliant with 37 C.F.R.
§ 41.77(b)(1). (CORRECTED ORDER REMANDING INTER PARTES
REEXAMINATION UNDER 37 C.F.R. § 41.77(d) to the EXAMINER
mailed February 28, 2017.)
An Examiner’s Determination under 37 C.F.R. § 41.77(d) was issued
on July 5, 2017 (hereinafter, “Ex. Det.”) in which the Examiner determined
that the Jehn-Rendu Declaration was sufficient to overcome the rejection of
claims 10 and 26–51. (Ex. Det. 11.) The Examiner determined also that
Jehn-Rendu Declaration was sufficient to overcome the rejection of claim
18. (Ex. Det. 12.) Last, the Examiner determined that the rejection of
claims 7–9, 14, and 55 had not been overcome as Patent Owner did not
provide any evidence or argument pertaining to those claims. (Ex. Det. 13.)
Requester responded to the Examiner’s Determination. (Third-Party
Requester’s Comment Under 37 C.F.R. § 41.77(e), filed August 7, 2017,
hereinafter, “Req. 41.77(e) Resp.”) Patent Owner filed a reply to
Requester’s 37 C.F.R. § 41.77(e) response. (Patent Owner’s Response to
Requester’s Comment filed September 7, 2017, hereinafter “PO 41.77(e)
Rep.”).

CLAIM AMENDMENTS
The amendments made to claims 10, 48, and 51 appear to be minor or
corrective in nature. (See Req. to Reopen 10.) That is, Patent Owner does
not appear to argue that the claims subject to the new ground are patentable
as a result of the amendments made to claims 10, 48, and 51. Rather, as
further discussed below, Patent Owner relies on the Jehn-Rendu Declaration
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as new evidence in order to address the new grounds of rejection set forth in
the Decision.
DISCUSSION
Claims 10, 26–39, and 41–521
Claim 10, as amended, recites (markings showing changes relative to
the claim as issued have been omitted) (Req. to Reopen 4):
10. A process for making paper or paper board comprising
forming a cellulosic suspension, flocculating the suspension, draining
the suspension on a screen to form a sheet and then drying the sheet,
wherein the cellulosic suspension is flocculated by the addition of a
water soluble cationic synthetic polymer of intrinsic viscosity of at
least 4 dl/g, wherein the flocculated cellulosic suspension is subjected
to mechanical shearing and then reflocculated by a subsequent
addition of a reflocculating system, and in which the reflocculating
system comprises
i) a siliceous material and
ii) a water soluble anionic polymer of intrinsic viscosity at least
4 dl/g, and in which the siliceous material (i) and water soluble
anionic polymer (ii) are added to the cellulosic suspension subsequent
to the centriscreen and wherein the cationic polymer is added to a thin
stock stream of the cellulosic suspension, wherein the water soluble
cationic polymer is a branched water soluble polymer which exhibits a
rheological oscillation value of tan delta at 0.005 Hz of above 0.7
(calculated on a 1.5% by weight aqueous solution of the polymer).

In the Decision, the Board entered a new rejection of claims 10 and
26-30, 32, 34-39, and 41-51 under 35 U.S.C. § 103(a) as obvious over WO

1 Although Patent Owner lists claim 40 under this heading, the rejection of
claim 40 is based on the rejection of claim 18 and will be addressed below.
(See Decision 28–29, 31.)
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’9732 in view of WO ’691 (EP ’120),3 and the ’188 Patent.4 (Decision 25–
28, 38.)
In particular, the Board found that in view of the disclosure in EP ’120
that the water soluble ionic polymers produced by the method disclosed
therein are branched polymers or block copolymers that improve retention
and/or drainage, it would have been obvious to use branched cationic
polymers in WO ’973. (Decision 26; citing EP ’120, p. 4, ll. 29-33.)
Further, the Board found that because EP ’120 discloses that its polymers are
water soluble, the polymers would be expected to have a “relatively high”
rheological oscillation value above 0.5 and “preferably above 0.7”, as
evidenced by the ’188 Patent. (Decision 26; citing ’188 Patent, col. 4, ll.
27-36.) Additionally, the Board agreed with Requester that it would have
been obvious to formulate polymers having the rheological oscillation value
recited in the claims, because it is expressly suggested in the ’188 Patent that
a tan delta value of above 0.7 is preferred. (Decision 26–27.)
Patent Owner contends that the Board’s conclusions that (1) because
EP ’120 discloses water-soluble polymers, the polymers would be expected
to have a “relatively high” rheological oscillation value and that (2) the ’188
Patent discloses tan delta values above 0.7 are preferred are contradicted by
the evidence of record. (Req. to Reopen 12–14; Jehn-Rendu Decl. ¶¶ 4–8.)
In particular, Patent Owner contends that the cationic polymers in EP ’120
are particulate suspensions of polymers, which are disclosed to have particle

2 WO 98/24973.
3 WO 97/23691 (WO ’691, as evidenced by its English equivalent EP 0 877
120 A1 (EP ’120).
4 U.S. Patent 5,958,188.
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sizes of 0.1 to 150 µm, and as such would be expected to have tan delta
values less than 0.5 according to the ’188 Patent. (Req. to Reopen 12–14;
Jehn-Rendu Decl. ¶¶ 5–7.) Patent Owner further contends that the
preference expressed in the ’188 Patent for polymers having a tan delta
value greater than 0.5 is limited to anionic polymers, and is improper to
apply to cationic polymers. (Req. to Reopen 13–14; Jehn-Rendu Decl. ¶¶ 4–
8.)
The Examiner agreed with Patent Owner, finding that because EP
’120 discloses the polymer produced is a dispersion, and the Jehn-Rendu
Declaration states that if the polymer has a tan delta value less than 0.5, the
polymer is dispersed in the liquid, rather than dissolved, EP ’120 does not
disclose a polymer having a tan delta value above 0.7. (Ex. Det. 11.)
We are not persuaded that Patent Owner’s additional arguments and
evidence overcome the new ground of rejection set forth in the Decision.
Initially, we acknowledge that EP ’120 discloses a method for producing
water-soluble cationic polymers by dispersion polymerization, using an
“aqueous salt solution capable of dissolving the monomers but not the
produced polymer” and which have an average particle diameter between
0.1 and 150 µm. (EP ’120 3, ll. 22–25, 7, ll. 24–25.) However, the
dispersion produced and particle sizes thereof relate to the production
method, where the medium is particularly selected such that a dispersion
results. Such does not change the fact that the polymer produced is a
“water-soluble” polymer.
Indeed, EP ’120, in discussing particle sizes, discloses:
If the average particle diameter of the particles of the ionic
water-soluble polymer exceeds 150 µm, they can easily precipitate to
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damage the stable storability of the dispersion and require a long time
before they are completely dissolved into water because of low
solubility due to the large sizes of the particles of the ionic water-
soluble polymer if the dispersion is mixed with water for use.

(EP ’120 7, ll. 25–28.)
Thus, while EP ’120 speaks to a polymer dispersion produced during
polymer formation, EP ’120 expressly discloses that the resulting polymer is
water-soluble. Indeed, EP ’120 characterizes the intrinsic viscosity of the
polymer samples A-F by dissolving the polymer in a 2 wt% aqueous
solution of ammonium sulfate. (EP ’120 7, ll. 30–34.) Further, EP ’120
indicates that larger particles are less soluble than the fine particles formed
by the dispersion, for example “if the dispersion is mixed with water for
use.” (EP ’120 7, ll. 25–28.)
The declaration testimony does not sufficiently explain why a
“polymer system” in which 1.5% of the polymer of EP ’120 patent is present
in an aqueous solution, as recited in the claims, would not have the recited
tan delta value in light of the teaching regarding dissolution of branched
polymers provided by the ’188 patent. The only “polymer system”
discussed in the Jehn-Rendu Declaration is a polymer dispersion of the EP
’120, the relevance of which to the 1.5% aqueous solution “polymer system”
recited in the claims, is not sufficiently explained. (See Jehn-Rendu Decl.
¶¶ 3–6.)
Regarding Patent Owner’s position that the polymers having a tan
delta value greater than 0.5 in the ’188 Patent is limited to anionic polymers,
and is improper to apply to cationic polymers, we agree with Requester that
the ’188 Patent is only relied upon in the Decision for the teaching of
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rheological oscillation values for branched polymers in an aqueous solution,
which is the criteria expressly recited in the claims “calculated on a 1.5% by
weight aqueous solution of the polymer.” (Req. 41.77(e) Resp. 8, citing
Decision 27.) In this regard, the disclosure of the ’188 Patent does not
particularly associate the tan delta values with respect to whether the
polymer is anionic or cationic, but rather attributes the values to the
tendency of branched polymers to dissolve (as opposed to cross-link) in a
given aqueous solution. (’188 Patent, col. 4, ll. 26–36.)
As set forth in the Decision, we also agree with Requester that even if
the recited rheological oscillation value is not inherent in the water-soluble
branched polymers of EP ’120, it would have been obvious to optimize the
water soluble cationic polymer to select a branched water soluble polymer as
taught by EP ’120, because of the desire for a water soluble and easily
dissolvable cationic polymer. Accordingly, the skilled artisan would seek to
utilize a fine cationic polymer exhibiting a tan delta above 0.7 due to the
express disclosure in the ’188 patent that polymer systems having a tan delta
values above 0.7 have more soluble polymer and less cross-linked polymer.
(Req. 41.77(e) Resp. 8; Decision 26–27.)
Thus, we are not persuaded by Patent Owner’s argument that the
position that it would have been obvious to optimize the water soluble
cationic polymer to have the tan delta values recited in the claims is
conclusory and lacks any supported rationale. (PO 41.77(e) Rep. 6–7.)
Patent Owner does not rely on any additional arguments for claims
26–39 and 41–52. (Req. to Reopen 14.) Accordingly, Patent Owner’s
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response is insufficient to overcome the new grounds of rejection of claims
10, 26–39, and 41–52.

Claims 18 and 40
Claim 18 depends from claim 13, and recites a process for making
paper of paperboard comprising a cellulosic suspension, “in which the
cellulosic suspension is substantially free of filler.” Claim 40 recites a
similar limitation.
In the Decision, the Board entered a new ground of rejection over
claims 18 and 40 as obvious over WO ’973 in view of WO ’691 (EP ’120)
and EP ’893.5 (Decision 23–24, 28–29, 31.) The Board found that whether
fillers are used and how much filler is present in cellulosic suspensions used
in paper making is a design choice that depends on the paper to be produced,
citing, in particular, EP ’893, which discloses that stock and the final paper
may be substantially unfilled and that including filler in the stock is optional.
(Decision 34; EP ’893, p. 6, ll. 35-40.)
Patent Owner contends that WO ’973 and EP ’120 do not disclose a
papermaking process for preparing paper without a filler, citing to the Jehn-
Rendu Declaration for support for the position that because tests performed
in Examples 31–44 of EP ’120 were performed using recycled fibers, “it is
likely that there may have been some filler from beforehand present.” (Req.
to Reopen 15; Jehn-Rendu Decl. ¶ 15.) Patent Owner contends that even
assuming no filler is present, Examples 31–44 were conducted for the
purpose of testing drainage, not for making finished paper. (Id.) Patent

5 EP 0 235 893.
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Owner argues that one of ordinary skill in the art, given the teachings of EP
’893, would not have produced a filler-less paper using anionic polymer in
the suspension, because EP ’893 discloses anionic polymers produce paper
with inferior results. (Req. to Reopen 16; Jehn-Rendu Decl. ¶ 17.) In
addition, Patent Owner argues that if a person of ordinary skill in the art
were to combine EP ’893 and WO ’973, in order to produce a paper with
substantially no filler, there would have been no reason to include the
cationic polymer recited in the claims in view of the disclosure in EP ’893
that high molecular weight polymers such as polyacrylamide as flocculants
are associated with increased filler retention. (Req. to Reopen 16–17; Jehn-
Rendu Decl. ¶ 16.)
The Examiner determined that Patent Owner’s arguments and
evidence were sufficient to overcome the rejection of claim 18. (Ex. Det.
12.) In particular, the Examiner stated that because EP ’893 teaches away
from using anionic polymers and because WO ’973 discloses using anionic
polymers, one of ordinary skill in the art would not have had a reason to
combine WO ’973 and EP ’893. (Id.)
We are not persuaded by Patent Owner’s evidence. As pointed out by
Requester, the teaching away argument made by Patent Owner and adopted
by the Examiner misses the point of the Decision’s reliance on EP ’893,
which was not to combine the paper-making process disclosed therein with
WO ’973, but simply to highlight a representative example that cellulosic
suspensions substantially free of fillers were well-known at the time of the
invention. (Req. 41.77(e) Resp. 16.) Indeed, EP ’893 does not relate the
choice of bentonite versus anionic soluble polymers for the cellulosic
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suspension to whether there is filler present in the suspension, but rather,
consistent with the Decision, EP ’893 discloses that whether filler is
included depends on the particular paper desired, i.e., tissue paper versus
highly filled high quality writing papers. (EP ’893 8, ll. 32–35.) In this
regard, we are not persuaded by the statements in the Jehn-Rendu
Declaration regarding the examples in EP ’120 and the possible presence of
filler in recycled fibers. As discussed above, the rejection is based on the
position that whether or not a cellulosic suspension contains filler is choice
made by one of ordinary skill in the art based on the desired paper to be
produced.
In addition, while it is true that EP ’893 discloses that one of ordinary
skill in the art is “more likely” to use high molecular weight coagulants such
as polyacrylamides to increase filler retention (EP ’893, 2, ll. 29–32), the
Jehn-Rendu Declaration does not provide sufficient explanation and support
for the conclusion that this necessarily means that one of ordinary skill in the
art would not employ high molecular weight coagulants in the absence of
filler (and thus where filler retention is not a concern) such that the cationic
and anionic polymers recited in the instant claims would be excluded. As a
result, we are not persuaded by the Patent Owner’s rationale that one of
ordinary skill in the art would have used bentonite rather than anionic
soluble polymers in unfilled paper because Patent Owner has not sufficiently
established that EP ’893 relates its avoidance of anionic soluble polymer to
whether there is filler present in the stock.
We acknowledge, as Patent Owner contends, that “a person of
ordinary skill in the art would modify the cellulosic suspension in other
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ways to account for the lack of filler in producing paper.” (PO 41.77(e) Rep.
9.) However, there is insufficient evidence on this record that such
modifications would be beyond the capabilities of the ordinary skilled
artisan.
Accordingly, the rejection of claims 18 and 40 is maintained.

Claims 7–9, 14, and 55
The Decision entered new grounds of rejection for claims 8 and 14
under 35 U.S.C. § 103(a) as obvious over WO ’973 and WO ’691 (EP ’120)
and claims 7, 9, and 55 under 35 U.S.C. § 103(a) as obvious over WO ’973
in view of WO ’691 (EP ’120) and the ’796 Patent. (Decision 17–23, 30.)
As noted by the Examiner, Patent Owner has not provided any
evidence or proper amendments related to claims 7–9, 14, and 55. (Ex. Det.
13.) Accordingly, pursuant to 37 C.F.R. § 41.77(b)(1), the appeal with
respect to claims 7–9, 14, and 55 is terminated. (“When the Board makes a
new ground of rejection, the owner, within one month from the date of the
decision, must exercise one of the following two options with respect to the
new ground of rejection to avoid termination of the appeal proceeding as to
the rejected claim.”)

CONCLUSION
In sum:
The Examiner’s decision to reject claims 2-6, 11-13, 15-17, 19-25,
and 52-54 under 35 U.S.C. § 103(a) as obvious over WO ’973 and WO ’691
(EP ’120) remains affirmed as set forth in the Decision.
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The Patent Owner’s response under 37 C.F.R. 41.77(b)(1) is
insufficient to overcome the new grounds of rejection set forth in the
Decision such that the following rejections are maintained:
claim 18 under 35 U.S.C. § 103(a) as obvious over WO ’973 in view
of WO ’691 (EP ’120) and EP ’893;
claims 10 and 26-30, 32, 34-39, and 41-51 under 35 U.S.C. § 103(a)
as obvious over WO ’973 in view of WO ’691 (EP ’120), and the ’188
Patent;
claims 31 and 33 under 35 U.S.C. § 103(a) as obvious over WO ’973
in view of WO ’691 (EP ’120) the ’188 Patent, and the ’796 Patent; and
claim 40 under 35 U.S.C. § 103(a) as obvious over WO ’973 in view
of WO ’691 (EP ’120), the ’188 Patent, and EP ’893.
Because Patent Owner did not file a proper amendment or evidence
related to claims 7–9, 14, and 55, the appeal with respect to these claims is
terminated.
In accordance with 37 C.F.R. § 41.79(a)(4), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he new decision of the Board under § 41.77(f).” A request
for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments
in opposition to the request and additional requests for rehearing must be in
accordance with 37 C.F.R. § 41.79(c)–(d), respectively. Under 37 C.F.R.
§ 41.79(e), the times for requesting rehearing under paragraph (a) of this
section, for requesting further rehearing under paragraph (c) of this section,
and for submitting comments under paragraph (b) of this section may not be
extended.
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An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

37 C.F.R. § 41.77(f)

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PATENT OWNER:

Meunier Carlin & Curfman LLC
999 Peachtree Street NE
Suite 1300
Atlanta GA 30309

THIRD-PARTY REQUESTER:

MINTZ LEVIN/SPECIAL GROUP
ONE FINANCIAL CENTER
BOSTON, MA 02111