Ex Parte Hines et al

Patent Trial and Appeal Board

Oct 21, 2016

13847781 (P.T.A.B. Oct. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/847,781 03/20/2013
31743 7590 10/24/2016
Georgia-Pacific LLC
133 Peachtree Street NE - GA030-42
ATLANTA, GA 30303
FIRST NAMED INVENTOR
John B. Hines
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20487-Dl-USA 1059
EXAMINER
KURTZ, BENJAMIN M
ART UNIT PAPER NUMBER
1778
MAILDATE DELIVERY MODE
10/24/2016 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 JOHN B. HINES, BRIAN L. SWIFT,
and PABLO G. DOPICO
Appeal2015-004926
Application 13/847,781
Technology Center 1700
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and BRIAND.
RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 4---6, 10, 11, 13, 15, 16, 18, 19, and 21-24. We
have jurisdiction. 35 U.S.C. § 6(b). We AFFIRM.
1 According to the Appellants, the real party in interest is Georgia-Pacific
Chemicals LLC, which is a wholly owned subsidiary of Koch Industries,
Inc. Appeal Br. 3.
Appeal2015-004926
Application 13/847,781
STATEMENT OF THE CASE
Appellants describe the present invention as relating to the use of
Maillard reaction products to facilitate or modify separation processes.
Spec. ,-r 1. The separation processes could be, for example, flotation,
coagulation, flocculation, and/or filtration. Spec. i-fi-18-10. Claims 1 and 18,
reproduced below with emphasis added to certain key recitations and
spacing added for readability, are illustrative of the claimed subject matter:
1. A process for obtaining a valued material from an aqueous
suspension, dispersion or solution containing the valued
material comprising
adding to the aqueous suspension, dispersion or solution a
Maillard reaction product of an amine reactant and a
reducing sugar,
wherein the amine reactant contains at least one
amine functional group,
wherein the reducing sugar is a triose, a tetrose,
or a pentose,
wherein a molar ratio of the reducing sugar to the
amine functional group is about 1: 1 to about 3: 1,
and
wherein the valued material is obtained by sedimentation,
filtration, or flotation.
13. A process for separating a valued material from a suspension,
dispersion, or solution, comprising:
treating the suspension, dispersion, or solution with a Maillard
reaction product of an amine reactant and a reducing sugar to
provide a treated mixture,
wherein the amine reactant contains at least one amine
functional group,
wherein the reducing sugar is selected from the group
consisting of: glyceraldehyde, dihydroxyacetone,
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Appeal2015-004926
Application 13/847,781
erythrose, threose, erythrulose, arabinose, lyxose,
ribose, xylose, ribulose, xylulose, arabulose, lyxulose,
allose, altrose, mannose, gulose, idose, galactose,
talose, psicose, sorbose, tagatose, dendroketose, and
sedoheptulose,
and wherein a molar ratio of the reducing sugar to the
amine functional group is about 1 : 1 to about 3: 1; and
removing the valued material from the treated mixture by
sedimentation, filtration, or flotation.
Appeal Br.2 16-18 (Claims Appendix).
REJECTION
The Examiner maintains the rejection of claims 1, 4---6, 10, 11, 13, 15,
16, 18, 19, and 21-24 under pre-AIA 35 U.S.C. § 103 as unpatentable over
Wright et al., US 2006/0151397 Al, July 13, 2006 (hereinafter "Wright"), in
view of Trusovs, US 2005/0033037 Al, Feb. 10, 2005 (hereinafter
"Trusovs"). Ans. 2.
ANALYSIS
After having considered the evidence presented in this Appeal and
each of Appellants' contentions, we are not persuaded that Appellants
identify reversible error, and we affirm the Examiner's§ 103 rejections for
the reasons expressed in the Final Office Action and the Answer. We add
the following primarily for emphasis.
Appellants do not separately argue claims 4---6, 10, 11, 15, 16, 18, 19,
and 21-24. Consistent with 37 C.F.R. § 41.37(c)(l)(iv) (2013), we therefore
2 In this decision, we refer to the Final Office Action mailed May 19, 2014
("Final Act."), the Appeal Brief filed November 7, 2014 ("Appeal Br."), the
Examiner's Answer mailed January 27, 2015 ("Ans."), and the Reply Brief
filed March 27, 2015 ("Reply Br.").
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Appeal2015-004926
Application 13/847,781
limit our discussion to claims 1 and 13. Claims 4---6, 10, 11, and 21-24 stand
or fall with claim 1. Claims 15, 16, 18, and 19 stand or fall with claim 13.
The Examiner rejects all claims at issue as obvious over Wright in
view of Trusovs. The Examiner finds that Wright teaches using a reaction
product of an amine reactant an aldehyde to provide a treated mixture and
removing a purified valued material from the treated mixture by
sedimentation or flotation. Final Act. 2-3; Wright i-fi-12, 23, 26, 31, 32. The
Examiner finds that Wright does not explicitly teach use of a reducing sugar,
but Trusovs discloses using a Maillard reaction ("MR") product formed
from combining an amine and a reducing sugar (i.e., a sugar having an
aldehyde group) to obtain a valued material from an aqueous suspension.
Final Act. 3; Ans. 7-8; Trusovs 9-12, 15, 28. Appellants have not
demonstrated error in these findings.
Appellants argue that Wright and Trusovs fail to teach or suggest a
reducing sugar that is "a triose, a tetrose, or a pentose" (as recited by
independent claims l and 21) or a reducing sugar "selected from the group
consisting of: glyceraldehyde, dihydroxyacetone, erythrose, threose,
erythrulose, arabinose, lyxose, ribose, xylose, ribulose, xylulose, arabulose,
lyxulose, allose, altrose, mannose, gulose, idose, galactose, talose, psicose,
sorbose, tagatose, dendroketose, and sedoheptulose" (as recited by
independent claim 13). The Examiner finds that Trusovs suggests that a
Maillard reaction product can be formed from any reducing sugar. Ans. 9;
Reply Br. 4--5. Trusovs states, for example, that "[t]he MR occurs
nonenzymatically in foods between reducing sugars and available amino
groups .... " Trusovs i18. Trusovs then states that its "first method
combines non-oxidized sugars [i.e., reducing sugars] and amino groups ...
to form a MRP [Maillard reaction product]." Id. i120. Trusovs further
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Appeal2015-004926
Application 13/847,781
explains that "[s]ugar sources may include different mono- and
disaccharides, dextrose, high fructose com syrup, starches, maltodextrins,
and etc." Id. i-f 28.
Although Trusovs does not specifically mention that the reduced
sugar may be "a triose, a tetrose, or a pentose," we agree with the Examiner
that "Trusovs would then fairly suggest that any reducing sugar could be
used" including those specifically recited in claims 1 and 13. Ans. 8. In
other words, the Examiner finds that the "reducing sugar" genus is discrete
enough that a person of skill would readily envision the recited species.
This is sufficient to show that Trusovs suggests the recited species. See In re
Petering, 301F.2d676, 681 (C.C.P.A.1962) (affirming rejection under§
102(b) where prior art did not expressly name claimed compounds but "one
skilled in this art would ... at once envisage each member of this limited
class, even though this skilled person might not at once define in his mind
the formal boundaries of the class as we have done here").
ivioreover, and at a mimmum, Trusovs's use of reducing sugars
presents a finite number of identified solutions that a person of skill in the
art would have expected to work in a Maillard reaction. A person of skill in
the art would thus have had good reason to pursue these known options.
Under these circumstances, the fact that a combination was obvious to try
shows obviousness under§ 103. KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007).
Indeed, with respect to claim 13, Trusovs identifies glucose (Trusovs
i-f 31 ), and claim 13 represents multiple stereoisomers of glucose ( allose,
altrose, mannose, gulose, idose, galactose and talose) as the reducing sugar.
Ans. 8. Thus, based on Trusovs, the Examiner finds that one of skill in the
art would have recognized that stereoisomers of glucose would form
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Application 13/847,781
Maillard reaction products just as glucose does. Id. In other words, a person
of skill presented with the class "glucose" would at once envisage the recited
stereoisomers as well. See In re Petering, 301 F.2d at 681.
Appellants also argue that the ordinary artisan would not have had an
expectation of success in making a Maillard reaction product from the
reducing sugars recited in claims 1 or 13 (Appeal Br. 10) and that, as to
claim 1, it would not have been obvious to use triose (a reducing sugar with
three carbon), tetrose (four carbon), or pentose (five carbon) because those
reducing sugars have less carbon atoms than, for example, the glucose,
fructose, and sucrose that Trusovs expressly references (id. at 12-13). As
explained above, however, Trusovs is best understood as teaching the use of
reducing sugars generally. Moreover, the Examiner finds that Trusovs
explicitly teaches the use of reducing sugars with six carbons such as
glucose and fructose and that Wright teaches use of other aldehydes with
three, four, and five carbons. Ans. 10. Thus, the Examiner finds that "it is
clear from the prior art that the number of carbon atoms present in the
aldehyde reactant is not critical to the formation of the reaction product but
rather the presence of the aldehyde." Id. Appellants do not persuasively
rebut this point; rather, Appellants make no persuasive arguments that use of
the reducing sugars recited by claims 1 and 13 offers any advantages
compared to use of, for example, glucose, fructose, or sucrose. See also
Spec. i-f 57 (providing an extensive list of "suitable reducing sugars or
reducing sugar equivalents").
Appellants also argue that Trusovs teaches removing the reducing
property of sugars. Appeal Br. 12-13; Reply Br. 5-6. Appellants'
argument, however, references a second embodiment of Trusovs (Trusovs i-fi-1
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Application 13/847,781
22-23) that the Examiner does not rely upon. The Examiner relies upon
reducing sugar as described in Trusovs paragraph 20. Ans. 12-13.
Appellants also dispute the Examiner's reasoning that a person of
ordinary skill would have used the reducing sugars disclosed in Trusovs in
the Wright process because the sugars are less expensive than commonly
used hydroxyl carboxylic acid chelating agents. Appeal Br. 11; Reply Br. 3-
4. Appellants emphasize that Wright uses formaldehyde and not hydroxyl
carboxylic acid. Appeal Br. 11-12. The Examiner, however, has provided
adequate reasoning as to why a person of ordinary skill would have
combined Trusovs and Wright. In particular, the Examiner found that
Trusovs teaches that its sugars are "a natural, inexpensive and effective
method of forming a chelating agent for producing chelated metal
complexes .... " Ans. 11 (citing Trusovs i-f 26). The Examiner has
provided, therefore, evidence to support a finding that substitution of
Trusovs reducing sugars for Wright's aldehyde is a substitution of known
elements that would have yielded predictable results. Ans. 11. The
Examiner's obviousness conclusion is thus well-supported.
Because Appellants have not identified Examiner error, we sustain the
Examiner's rejections of claims 1, 4---6, 10, 11, 13, 15, 16, 18, 19, and 21-24
DECISION
For the above reasons, we affirm the Examiner's rejection of claims 1,
4---6, 10, 11, 13, 15, 16, 18, 19, and 21-24.
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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