Ex Parte HOSAKA et al

Patent Trials and Appeals Board

Apr 10, 2019

15323928 - (D) (P.T.A.B. Apr. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/323,928 01/04/2017
2292 7590 04/12/2019
BIRCH STEW ART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
FALLS CHURCH, VA 22042-1248
FIRST NAMED INVENTOR
Mitsuteru HOSAKA
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.
3673-0625PUS 1 3187
EXAMINER
WHITE, EVERETT
ART UNIT PAPER NUMBER
1623
NOTIFICATION DATE DELIVERY MODE
04/12/2019 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITSUTERUHOSAKA, TOSHINORI OKANO, and YUJI IDA
(APPLICANT: DAICEL CORPORATION)
Appeal2019-000045
Application 15/323,928 1
Technology Center 1600
Before DONALD E. ADAMS, ELIZABETH A. LA VIER, and
DAVID COTT A, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1, 4, and 5
(Final Act. 1). Examiner entered rejections under35 U.S.C. § 103(a). We
have jurisdiction under 3 5 U.S. C. § 6(b ).
We AFFIRM.
1 Appellants identify "DAICEL CORPORATION" as the real party in
interest (Br. 1 ).
Appeal2019-000045
Application 15/323,928
STATEMENT OF THE CASE
Appellants' disclosure "relates to a method of disintegrating pulp for
use as a raw material for producing cellulose acetate, and also relates to a
method of producing cellulose acetate by using the disintegrated pulp as a
raw material" (Spec. ,r 1 ). Claims 1 and 5 are representative and reproduced
below:
1. A method of disintegrating pulp for use in cellulose acetate
production, the method comprising:
a primary disintegration step of disintegrating a pulp
sheet, to which water has not been added, into pulp pieces
having an average area of not more than 45 cm2 by a disc
refiner or a hammer mill; and
a secondary disintegration step of disintegrating the pulp
pieces with an impact shock exerted by a jet mill, wherein
the jet mill includes:
a cylindrical casing provided with an inlet and an outlet;
and
a rotor including a plurality of blades provided on its
outer peripheral portion, the plurality of blades facing an inner
peripheral surface of the casing.
(Claims App. 1.)
5. A method of producing cellulose acetate, comprising
a pretreatment step of performing a pretreatment of
adding acetic acid to pulp that has been disintegrated by the
method of disintegrating pulp according to claim 1; and
an acetylation step of adding acetic acid, acetic
anhydride, and a sulfuric acid catalyst to the pulp that has
undergone the pretreatment step, and subjecting a resulting
mixture to acetylation while controlling a temperature of the
mixture.
(Claims App. 1-2.)
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Application 15/323,928
Grounds of rejection before this Panel for review:
I. Claims 1 and4 standrejectedunder35 U.S.C. § 103(a)as
unpatentable over the combination of Meldal, 2 Ueno, 3 and Nutt. 4
II. Claim 5 standsrejectedunder35 U.S.C. § 103(a)as unpatentable
over the combination ofMeldal, Ueno, Nutt, and Malm. 5
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
We adopt Examiner's fmdings concerning the scope and content of
the prior art (Ans. 4---6) and provide the following fmdings for emphasis.
FF 1. Meldal "relates to the field of polymer materials, in particular to
biodegradable polymers prepared at least in part from natural fibres. The
polymer materials of the invention are useful for several purposes including
containers for liquids and even for carbonated liquids" (Meldal 1: 14--18).
FF 2. Meldal discloses that "[i]n general plant fibres comprise polymers
and it is preferred that the plant fibre used with the present invention at least
comprises cellulose, more preferably the plant fibres comprises cellulose and
hemicellulose" (Meldal 10:30-33; see Ans. 5).
2 Meldal et al., US 8,796,362 B2, issued Aug. 5, 2014.
3 Ueno, JP 2010094574 A, published Apr. 30, 2010 (English language
Abstract).
4 Nutt, US 3,753,749, issued Aug. 21, 1973.
5 Malm et al., US 2,646,429, issued July 21, 1953.
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Application 15/323,928
FF 3. Meldal further discloses
filler material [] prepared from plant materials, such as plant
fibre, the plant material, such as the plant fibre is preferably
fmely divided. This may be obtained by optionally drying the
plant material, optionally dividing the plant material to smaller
pieces using cutting means and fmely dividing the plant
material or the smaller pieces for example by grinding or
milling in order to obtain a powder. Thus, the powder may for
example be obtained using a blender and/or a mill and/or a
chrusher and/or a grinder, such as for example a jaw crusher, a
cone crusher, a gyratory crusher, a roller crusher, an impact
crusher, a ball mill, a mortar, a rod mill, an autogenous mill, a
semi-autogenous grinding mill, a pebble mill, a hammer mill, a
pin mill, a jet mill, a roller mill or a roller press. The plant
material may be provided in raw form and then subjected to
blending and or milling, thus by way of example straw from
cereal may be dried and divided using cutting means, such as a
blender and then milled.
(Meldal 14:67-15:17 (emphasis added); see Ans. 4--5.)
FF 4. Meldal discloses that "filler material is frequently prepared from a
plant material, such as a plant fibre ... [having] an average particle size of at
the most 750 µm" (Meldal 15:24--32; see id. 12:47-50 ("it is preferred that
the filler has an average particle size of at the most 7 50 µm"); id. at 10: 13-
15 ("the average particle size of the plant fibre to be used with ...
[Meldal' s] invention may be in the range of 100 µm to 25 mm"); see Ans.
5).
FF 5. Examiner fmds that Meldal fails to disclose the specific jet mill
recited in Appellants' claimed invention and relies on Ueno to make up for
this deficiency in Meldal (Ans. 4; see id. (Examiner fmds that Ueno
"discloses a jet mill that comprises an outer periphery opening leading to
rotational flow generator, a louver blade, a classification rotor, an exit casing
having a cylindrical side wall, a discharge port, and an exit casing leading to
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Application 15/323,928
rotor and base plate." Thus, Examiner fmds that Ueno' s 'jet mill ...
embraces the description of the jet mill recited in [Appellants'] Claim 1 ")).
FF 6. Examiner relies on Nutt to establish that dry milling wood pulp is
known in the art and, to further disclose, the production of "pulp having an
average fiber length of2mm" (Ans. 6 (citing Nutt 3:60----63)).
FF 7. Examiner fmds that the combination of Meldal, Ueno, and Nutt fails
to disclose "a method of producing cellulose acetate" and relies on Malm to
make up for this deficiency in the combination of Meldal, Ueno, and Nutt
(Ans. 7).
FF 8. Examiner fmds that Malm
discloses a method of preparing cellulose esters of fatty acids of
2-4 carbon atoms which comprises activating [] cellulose with
acetic acid whereby the same is swollen and then treating the
cellulose with a mixture of a lower fatty acid and a sulf o-lower
fatty acid at 70° -120°F, cooling to 60° - 65° F, and adding
acetic anhydride to the mass, whereby the water therein is
destroyed, cooling the mass to 10° - 60° F, and adding sulfuric
acid esterification catalyst and allowing the reaction so induced
to go to completion, the maximum temperature during the
reaction not exceeding 100° F . . . . The activation of the
cellulose with acetic acid described in the Malm et al patent
embraces the pretreatment step of adding acetic acid to pulp as
recited in [Appellants'] Claim 5 .... Malm ... [further]
suggests that the process thereof provides a process for the
preparation of cellulose esters in which the temperature control
in the preparation of the cellulose for its esterification is
facilitated, which embraces the text recited in the last line of
[Appellants'] Claim 5 of carrying out the acetylation while
controlling the temperature of the mixture.
(Ans. 7 (citing Malm 4:65-5:2 and2:9-13).)
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Application 15/323,928
ANALYSIS
Rejection!:
Based on the combination of Meldal, Ueno, and Nutt, Examiner
concludes that, at the time Appellants' invention was made, it would have
been prima facie obvious to substitute Ueno' s jet mill for the jet mill used in
Meldal' s method, which is nothing more than the "substitution of one known
element for another to obtain predictable results" (see Ans. 6). In addition,
Examiner reasons that "there is no indication in [] Meldal ... of water being
added for the disintegration of the cellulose" and relies on Nutt to establish
make clear that dry milling wood pulp is known in the art (id.). Examiner
further fmds that Meldal discloses milled pulp pieces that have "an average
area of not more than45 cm2" (see Ans. 96 ; see FF 1---6)).
Appellants contend that Meldal "disclose[ s] 16 different means for
fmely dividing the plant material" and "[t]hus, the combination of using a
hammer mill and then using a jet mill is only one of overall 20 trillion
possibilities ( calculated from a factorial of 16)" (Br. 5; see FF 3 ). In this
regard, Appellants contend that Meldal fails to provide "a 'fmite number of
identified, predictable solutions"' (id. ( citing KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398,421 (2007)); see Br. 7-9). We are not persuaded. Meldal
discloses several different means, and combinations thereof, for use in
producing plant based filler material having "an average particle size of at
the most 750 µm" (see FF 3--4). Therefore, we are not persuaded by
Appellants' contention that Examiner's rejection is based on an
6 As Examiner explains, "[a]tmost the average area of pulp disclosed in
Meldal ... is: 0.075 cm x 0.075 cm= 0.005625 cm2," which "is well within
the 'not more than 45 cm2 ' recited in [Appellants'] Claim 1" (Ans. 9).
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Application 15/323,928
"impermissible 'obvious to try' analysis since one of ordinary skill in the art
would have no proper reason, rationale, or motivation to specifically select
the combination of a hammer mill followed by a jet mill in view of Meldal"
(Br. 6). Cf Merck& Co. Inc. v. BiocraftLabs.,Inc., 874F.2d804, 807
(Fed. Cir. 1989) ("Disclos[ ure ofJ a multitude of effective combinations does
not render any particular formulation less obvious").
Given Meldal' s disclosure of a number of different devices, or
combinations thereof, including a jet mill (FF3 ), that are useful in preparing
plant based filler material, we find no error in Examiner's conclusion that it
would have been prima facie obvious to use Ueno' s jet mill to prepare plant
based filler material having an average particle size of at most 7 5 0 µm
according to Meldal's methodology (see Ans. 6; FF 1-5).
Appellants contend that Table 1 of their Specification (see Spec.
,r 43; see generally id. ,r,r 25--48) provides evidence of "unexpectedly
superior results in terms of the values of the degree of filtration and fiber
amount" (Br. 6; see also id. at 8). According to Appellants, "[ t ]he
comparative examples strongly evidence that the prior art does not produce
the results of the claimed invention" (Br. 6). We are not persuaded.
Appellants' Table 1 reports the use of various combinations of
primary and secondary disintegrators. According to Appellants'
Specification, "high-quality cellulose acetate with favorable filterability and
reduced unreacted components was obtained ... [ when coniferous or braid-
leaved tree] pulp was disintegrated in [a] secondary disintegration []
utilizing the impact shocks exerted by the [Turbo Mill T600] jet mill" (Spec.
,r 44 ). Appellants' disclosure explains that the Turbo Mill T 600 produced
superior and unexpected results when compared to a Turbo Mill T 400 jet
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Appeal2019-000045
Application 15/323,928
mill as exemplified in Appellants' Comparative Examples 8 and 9 (see Spec.
,r,r 43 and 4 7). In addition, Appellants' disclosure teaches that: (a) the
Turbo Mill T600 as the "turbo mill (T600) manufactured by Freund-Turbo
Corporation" and (b) that the disintegration treatment using this Turbo Mill
T600 was "performed at 1750 r/min" (Spec. ,r 28). Thus, as presented by
Appellants, unexpected results are obtained when a specific jet mill, the
Turbo Mill T600, operating under specific conditions (1750 r/min), is used
as a secondary disintegrator in their method steps. Appellants' claimed
invention does not, however, expressly limit the secondary disintegrator to:
(i) a particular jet mill, specifically the Turbo Mill T600 or (ii) a particular
operational condition, specifically 17 50 r/min (see Claims App. 1 ). Thus,
Appellants' assertion of unexpected results is not commensurate in scope
with Appellants' claimed invention and is, therefore, not persuasive. See In
re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) ("[e]vidence of
secondary considerations must be reasonably commensurate with the scope
of the claims").
Rejection!!:
Based on the combination of Meldal, Ueno, Nutt, and Malm,
Examiner concludes that, at the time Appellants' invention was made, it
would have been prima facie obvious to use Malm' s esterification process in
the method suggested by the combination ofMeldal, Ueno, and Nutt to
prepare cellulose acetate (Ans. 7; see FF 1-8).
Having found no deficiency in the combination ofMeldal, Ueno, and
Nutt, we are not persuaded by Appellants' contention that Malm fails to
make up for Appellants' asserted deficiencies (see Br. 9).
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Application 15/323,928
We are also not persuaded by Appellants' contention that because
Malm discloses a process for producing cellulose acetate that does not use
gas, and gas is essential to Meldal's "surface decoration (graft) by gas-phase
process," the combination of Malm with Meldal would change Meldal's
principle of operation (id.).
Meldal and Malm both disclose processes involving plant derived
cellulose (see FF 1--4 and 8). Although Malm discloses the use of cellulose,
Malm does not disclose methods for obtaining cellulose. Meldal, in
combination with Ueno and Nutt, however, supplements Malm in this regard
by disclosing a particular methodology for obtaining cellulose products from
plant material (see e.g., FF 1-7). Thus, notwithstanding Appellants'
contention to the contrary, a person of ordinary skill in this art would have
understood thatthe combination of Meldal, Ueno, and Nutt provides a
process for producing the starting material for the processes of both Meldal
and Malm (see FF 1-8). Therefore, if one reading the references relied upon
by Examiner wished to pursue a method of producing cellulose acetate, they
would follow Malm' s process, making use of the cellulose obtained by the
process set forth by Meldal, Ueno, and Nutt, which occurs prior to the
reaction steps that utilizing gases. Thus, nothwithstanding Appellants'
contentions to the contrary, the combination of references relied upon by
Examiner does not change Meldal's principle of operation. To the contrary,
it uses Meldal' s starting material, a plant derived cellulose material, for
entirely different, and subsequent, process steps.
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CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over
the combination ofMeldal, Ueno, and Nutt is affrrmed. Claim 4 is not
separately argued and, therefore, falls with claim 1.
The rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over
the combination ofMeldal, Ueno, Nutt, and Malm is affrrmed.
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)(l )(iv).
AFFIRMED
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