Ex Parte Johnston et al

Patent Trial and Appeal Board

Mar 28, 2017

14049337 (P.T.A.B. Mar. 28, 2017)

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.
14/049,337 10/09/2013 James W. Johnston 21161-USA 5690
31743 7590 03/28/2017
fTenraia-Paoifio T T C EXAMINER
133 Peachtree Street NE - GA030-42
ATLANTA, GA 30303
FORTUNA, JOSE A
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
03/28/2017 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 JAMES W. JOHNSTON, DAVID F. TOWNSEND,
CORNEL HAGIOPOL, LAKEISHA D. TALBERT, and
CHARLES G. RUFFNER
Appeal 2016-003372
Application 14/049,337
Technology Center 1700
Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants1 appeal from the Examiner’s
rejection of claims 13—29. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Appellants identify the real party in interest as Georgia-Pacific Chemicals
LLC. Appeal Br. 3.
Appeal 2016-003372
Application 14/049,337
SUBJECT MATTER
Claim 13 is representative of the claimed subject matter:
13. A process for improving the oil and grease resistance of
a cellulose fiber material, comprising:
applying a pretreatment composition comprising a first
cationic polymer to a cellulose fiber material to form a
pretreated cellulose substrate;
drying the pretreated cellulose substrate to form a dried
pretreated cellulose substrate; and
applying a fluorochemical composition comprising a
mixture of an inorganic nanoparticle component and a
fluorochemical to the dried pretreated cellulose substrate to
form an oil-repellant cellulose fiber material, wherein the
inorganic nanoparticle component comprises silica.
Appeal Br. 17—18.
REJECTION
In the Answer, the Examiner withdrew and consolidated certain
rejections of claims 13—29 that were made in the Final Office Action.2
Ans. 3. Specifically, the Examiner withdrew the 35 U.S.C. § 102(b)
rejection of claims 13—29 and stated that “[sjome of the references used in
the previous office action were omitted for simplicity, since they were
redundant.” Id. at n.2.
Thus, the sole rejection before us on appeal is the rejection of claims
13—293 under 35 U.S.C. § 103(a) as unpatentable over Rudolph et al. (US
2 Final Office Action dated Dec. 22, 2014; hereinafter “Final Act.”.
3 Although these claims are not explicitly identified in the Answer, the
Examiner states that this ground of rejection is “applicable to the appealed
claims” (Ans. 3), which include claims 13—29 (Appeal Br. 1, 15). Further,
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Application 14/049,337
2007/0020462 Al, published Jan. 25, 2007; hereinafter “Rudolph”) in view
of Wittosch et al. (US 5,989,724, issued Nov. 23, 1999; hereinafter
“Wittosch”), and Joyce et al. (US 2004/0161594 Al, published Aug. 19,
2004; hereinafter “Joyce”). Ans. 3.
ANALYSIS
The Examiner relies on 14 of Rudolph for its teaching regarding the
use of fluorochemicals in preparing a paper substrate with enhanced grease-
resistance. Final Act. 3. The Examiner finds further that “Joyce teaches the
use of nanoparticles of the same type as claimed that are used as a barrier
coating.” Id. at 4. The Examiner concludes that it would have been obvious
to combine Rudolph’s fluorochemical with Joyce’s nanoparticle composition
because “it has been held that it is [pjrima facie obvious to combine [two]
compositions each of which is taught by the prior art for [the] same purpose
to form a third composition for the same purpose,” citing In re Kerkhoven,
626 F.2d 846 (CCPA 1980), and that prima facie case was not rebutted
successfully. Id. at 5—7; Ans. 4—6.
the Examiner indicates that only “[s]ome of the references used in the
previous office action were omitted” in the statement of the rejection,
(Ans. 3, n.2. (emphasis added)) and the previous office actions identified
claims 13—29 as being rejected. (Final Act. 3; Advisory Action entered
March 9, 2015). Also, the Examiner does not contest Appellants’
“understanding that the only rejection that remains is the rejection of claims
13—29” (Reply Br. 2). Thus, for purposes of this appeal, we treat claims 13—
29 as rejected under 35 U.S.C. § 103(a).
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Appellants present the following arguments for our consideration.
i. Appellants ’ teaching away arguments
Appellants contend that Joyce teaches away from using any of
Rudolph’s fluorochemicals because Joyce teaches that they are expensive
and “that fluorochemicals ‘have been found to bioaccumulate in the
environment’, and that products containing fluorochemicals cannot be easily
disposed of.” Appeal Br. 10; Reply Br. 3. Appellants then contend that “no
person having ordinary skill in the art would have been motivated to replace
some of Rudolph’s fluorochemicals that yield satisfactory products with
Joyce’s nanoparticles that yield unsatisfactory products” because “such
modification to Rudolph would yield a product having reduced water and
oleo repellency.” Reply Br. 3.
These arguments are not persuasive of reversible error. “[I]n general,
a reference will teach away if it suggests that the line of development
flowing from the reference’s disclosure is unlikely to be productive of the
result sought by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994). Furthermore, the fact “[t]hat a given combination would not be made
by businessmen for economic reasons does not mean that persons skilled in
the art would not make the combination because of some technological
incompatibility.” In re Farrenkopf 713 F.2d 714, 718 (Fed. Cir. 1983).
“Only the latter fact would be relevant.” Id.
Here, Appellants do not dispute the Examiner’s finding that “the
composition of [Rudolph] passes the Purina and The [AJggressive Pet Food
Test, which the Joyce [product] fails after 8 hours; see Table 7” (Ans. 5).
Specifically, Rudolph teaches preparing multiple test paper specimens
containing various amounts of a fluorocarbon-containing compound
(Rudolph | 88, 130), and subjecting the paper specimens to the “Ralston
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Purina (RP-2) Test” for 24 hours to determine their grease resistance
properties {id. H 119-137). Joyce teaches subjecting multiple paper
samples containing various amounts of a nanoparticle talc composition to
the “Ralston-Purina Test” for at least 12 hours to determine their grease
resistance. Joyce H 21, 31—35, 44-46.
According to each of Rudolph and Joyce, the Ralston Purina Test
includes placing a paper specimen on a printed grid sheet, placing both
sheets on a metal plate, and placing a metal ring on the surface of the paper
specimen. Rudolph H 131, 132; Joyce 145. Then, approximately 5 g of
sand is placed onto the paper, the sand is saturated with approximately 1.3
ml of red stained oil, and the entire sample is placed in an oven at 140- F for
a period of time. Rudolph H 133, 134; Joyce 145. The results of the test
are then expressed as a percentage of the oil that reaches the printed grid,
with less than 2% staining representing a good result. Rudolph 1136; Joyce
145.
Appellants’ relied-upon teachings in Joyce fail to demonstrate
effectively that a person having ordinary skill in the art would have been
discouraged or taught away from combining Rudolph’s fluorochemicals
with Joyce’s inorganic nanoparticles. Rather, we determine that a person
having ordinary skill in the art would have appreciated the potential benefits
and drawbacks of each of these components. Specifically, we note Rudolph
evinces that, of its paper specimens which contained a fluorocarbon-
containing compound, three of four specimens tested (i.e., “exp 2”, “exp 3”,
and “exp 4”) passed the Ralston Purina Test after 24 hours. Rudolph H 119,
134—136. On the other hand, Joyce discloses that each of its nanotalc coated
paper specimens also provided some degree of water and oil penetration
resistance for at least 8 hours. Joyce H 44-46.
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While we recognize that identical protocols were not necessarily
followed in Rudolph and Joyce (e.g., Rudolph’s test was run for 24 hours,
whereas Joyce’s test length is not expressly stated), the protocols that were
followed are so similar to each other that the results observed would inform
the skilled artisan to reasonably expect that a mixture of Rudolph’s
fluorocarbons and Joyce’s nanoparticles would yield an amount of grease
resistance somewhere between that observed with Rudolph’s fluorocarbons
and Joyce’s nanoparticles individually.
We therefore determine that a person having ordinary skill in the art
would have appreciated that Rudolph’s use of fluorochemicals may be
superior to Joyce’s use of nanoparticles in some respects (e.g., enhanced
water / oleo repellency), but may be inferior in others (e.g., increased
environmental pollution). Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
1165 (Fed. Cir. 2006) (“[T]here is no rule that a single reference that teaches
away will mandate a finding of nonobviousness. Likewise, a given course
of action often has simultaneous advantages and disadvantages, and this
does not necessarily obviate motivation to combine.”).
Thus, we agree with the Examiner’s determination that Joyce “does
not teach away from the combination [because the ordinary skilled artisan]
would realize that the stability and degree of water and/or oleo repellency
that can be achieved with the fluorochemicals is much greater than the ones
using nanoparticles.” Ans. 5. We likewise agree with the Examiner that the
Joyce reference “would tell one of ordinary skill in the art that a mixture of
fluorochemicals and nanoparticles can be used for the same purpose, i.e.
water and/or oleo repellency with the added benefit of reduction of the
fluorochemicals.” Id. That is, although the degree of improvement imparted
by Joyce’s nanoparticles would not have been expected to be identical to
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that imparted by Rudolph’s more expensive fluorochemicals, both additives
were known to improve water and oil repellency to varying degrees.
Therefore, a mixture of these materials would have been expected to impart
a degree of improvement proportionate to the sum of each material present
in the mixture.
ii. Appellants ’ argument regarding no predictability or reasonable
expectation of success
Appellants contend that the Examiner’s rationale for combining
Rudolph’s fluorochemicals with Joyce’s nanoparticles “does not provide
predictability or a reasonable expectation of success to arrive at the claimed
invention.” Reply Br. 4; See also Appeal Br. 12—13.
Specifically, Appellants urge that while Joyce’s coatings provide
barrier properties by reducing or eliminating the porosity of the substrate to
which it is applied, Rudolph acts differently by using “the electronegativity
of the fluorochemicals to repel fats, oils, and/or water away from substrate
surfaces.” Appeal Br. 12. Appellants thus contend that “the physical
presence of nanoparticles and the electronegativity of the fluorochemicals
are not chemically or functionally equivalent and are taught by the prior art
for different purposes.” Id.
This argument is unpersuasive of reversible error. Appellants do not
dispute, but rather acknowledge, that Rudolph’s fluorochemical composition
“has a high degree of water and/or oleo repellency” when applied to a
substrate. Reply Br. 3. Appellants likewise acknowledge that Joyce’s
nanoparticles have some water and/or oleo-repellant properties when applied
to a substrate, albeit lower than that observed with Rudolph’s
fluorochemicals. Id. Thus, on this record, it is undisputed that both Rudolph
and Joyce teach two separate compositions, (e.g., a fluorochemical
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Application 14/049,337
composition and a nanoparticle composition), each of which is taught as
having the same or similar purpose (i.e., having oil-resistant or fat-repellent
properties when applied to a substrate). Although Rudolph’s
fluorochemicals and Joyce’s nanoparticles may impart water and/or oil
repellency differently in terms of their exact chemical and/or physical effects
(e.g., the fluorochemical’s surface activity on the paper substrate), a person
having ordinary skill in the art would have reasonably expected that both
materials would be able to act on the paper substrate freely to the extent that
they are available in their respective amounts. Appellants have not directed
us to persuasive evidence or technical reasoning to establish that these
materials would be expected to interfere with each other. Thus, Appellants’
contention that the Examiner has failed to provide “evidence that Joyce’s
nanoparticles and Rudolph’s fluorochemicals, if combined, are physically
and/or chemically compatible” (Reply Br. 4) is misplaced.
Hi. Appellants ’ arguments regarding Joyce’s nanoparticles
Appellants contend that the Examiner erred by relying on Joyce’s
exemplified magnesium silicate nanoparticles, whereas the claims require
the inorganic nanoparticle component to comprise silica. Reply Br. 5.
We are not persuaded by this argument because it ignores the full
scope of Joyce’s disclosure relied on by the Examiner (Final Act. 4),
including that “materials suitable for use as the pigment nanoparticles
[include]. . . silica.” Joyce 121. “It is well settled that a prior art reference
is relevant for all that it teaches to those of ordinary skill in the art.” In re
Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992).
We conclude, therefore, that the Examiner established a prima facie
case of obviousness against the appealed claims (Final Act. 4—5; Ans. 4)
because the prior art references would have suggested combining Rudolph’s
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fluorochemicals and Joyce’s nanoparticles—each of which being
individually known for imparting grease-resistant properties to a barrier—to
form a third composition for the same or similar purpose, thereby shifting
the burden of production to Appellants to provide persuasive rebuttal
argument and/or evidence in support of nonobviousness. Because
Appellants have not satisfied their burden, we are unpersuaded of reversible
error.
iv. Appellants ’ arguments regarding dependent claims
Appellants argue that the Examiner employed impermissible hindsight
by relying on Appellants’ own Specification to reject dependent claims 19,
23, 24, and 29. Reply Br. 5; Appeal Br. 13—14. Specifically, Appellants
argue that “none of Rudolph, Wittosch, and Joyce disclose any amount of an
inorganic nanoparticle component, much less the claimed amounts or the
claimed ratio of the inorganic nanoparticle component to the fluorine
atoms.” Reply Br. 5.
Appellants’ argument is not persuasive of reversible error in the
rejection of claims 19, 23, 24, and 29, because, as observed by the Examiner,
these “claims limit[] the amounts of the additives or the ratio of them and . . .
the amount/ratio of the additives can be tailored/optimized to desired levels
and considered to be obvious absent a showing of unexpected results.”
Ans. 6.
As we previously observed, a person having ordinary skill in the art
would have appreciated that Rudolph’s use of fluorochemicals may be
superior to Joyce’s use of nanoparticles in some respects but may be inferior
in others. Armed with this knowledge, the ordinary skilled artisan would
have been led to use both in order to obtain an additive or cumulative effect
(i.e., a balance of advantages/disadvantages). When using a combination of
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the two, a person having ordinary skill in the art would have determined an
optimum or workable amount for each by routine experimentation, thereby
arriving at the claimed amounts and ratios. For example, if the skilled
artisan wished to maximize grease resistance, a higher amount or ratio of
fluorochemicals may have been selected over nanoparticles for further
experimentation. Conversely, if cost or pollution were of great importance,
the ordinary skilled artisan may have chosen a higher concentration of
nanoparticles over fluorochemicals.
“[Wjhere the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.” In reAller, 220 F.2d 454, 456 (CCPA 1955).
As such, we do not agree with Appellants’ contention that the
Examiner relied on impermissible hindsight to construct the obviousness
conclusion of dependent claims 19, 23, 24, and 29.
SUMMARY
For the reasons expressed by the Examiner in the Answer, and as
outlined above, we affirm the Examiner’s decision to reject claims 13—29
under 35 U.S.C. § 103(a).
DECISION
The Examiner’s rejection of claims 13—29 under 35 U.S.C. § 103(a) is
affirmed.
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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