Ex Parte Käsmayr et al

Patent Trial and Appeal Board

Aug 22, 2016

13119882 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/119,882 03/18/2011
123223 7590 08/24/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Daniel Kilsmayr
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.
074008-1152-US (286159) 4823
EXAMINER
KOKKINOS, NICHOLAS C
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
08/24/2016 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL KASMA YR, STEPHAN WEINKOTZ,
CHRISTIAN BEIL, MICHAEL SCHMIDT, and
MICHAEL FINKENAUER1
Appeal2015-000360
Application 13/119,882
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER L. OGDEN, and
JEFFREY R. SNAY, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
decision rejecting claims 13-21, and provisionally rejecting claims 13-25 in
the above-identified application. We have jurisdiction pursuant to 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is BASF AG. Appeal
Br. 2.
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Application 13/119,882
BACKGROUND
Appellants' invention relates to "multilayer lignocellulose-containing
moldings" with reduced or virtually absent formaldehyde emissions, and
with "good mechanical properties." Spec. 3:8-11. Claim 13, the sole
independent claim, is representative:
13. A multilayer lignocellulose-containing molding comprising
A) a middle layer or a plurality of middle layers comprising
lignocellulose-containing particles and a binder (a) and
B) a covering layer or a plurality of covering layers comprising
lignocellulose-containing particles and a binder (b ),
the binder (a) being selected from the group consisting of
(a 1) formaldehyde resins and ( a2) an organic isocyanate
having at least two isocyanate groups;
the binder (b) comprising the following components:
an aqueous component (I) comprising
(i) a polymer A which is composed of the following
monomers:
a) from 70 to 100% by weight of at least one
ethylenically unsaturated mono- and/or dicarboxylic
acid (monomer( s) A 1) and
b) from 0 to 3 0% by weight of at least one further
ethylenically unsaturated monomer which differs from
the monomers Al (monomer(s) A2)
and, optionally,
(ii)a low molecular weight crosslinker having at least two
functional groups which are selected from the group
consisting of hydroxyl, carboxyl and derivatives thereof,
primary, secondary and tertiary amine, epoxy, aldehyde
and, optionally, a component (II), as an aqueous dispersion,
comprising one or more polymer(s) M which is
composed of the following monomers:
a) from 0 to 50% by weight of at least one ethylenically
unsaturated monomer which comprises at least one
epoxide and/or at least one hydroxyalkyl group
(monomer( s) M 1) and
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b) from 50 to 100% by weight of at least one further
ethylenically unsaturated monomer which differs from
the monomers Ml (monomer(s) M2)
and, optionally, additional additives as component (III),
and, where the binder (a) comprises a formaldehyde resin,
the binder (b) comprises formaldehyde scavengers.
Appeal Br. 12-13.
The Examiner maintains the following grounds of rejection:
I. Claims 13-23 and 25 provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 15-26 and 28 of U.S. Application No. 13/224,731 (filed Sept. 2,
2011) (pending). Answer 2; Final Action 4.
II. Claims 13-21 and 22-25 provisionally rejected on the ground
of nonstatutory obviousness-type double patenting as being unpatentable
over claims 16-19, 21-25, and 27-30 of U.S. Application No. 13/313,598
(filed Dec. 7, 2011) (abandoned2). Answer 2; Final Action 5---6.
III. Claims 13-21 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Int'l Publication No. WO 2008/046892 A2 [hereinafter
Schmidt] (published Apr. 24, 2008),3 in view of European Publication No.
EP 0346864 A2 [hereinafter Kurt] (published Dec. 20, 1989)4 and U.S.
Patent No. US 6,596,386 Bl [hereinafter Reck] (issued July 22, 2003).
Answer 2; Final Action 7-12.
2 See Notice of Abandonment, Sept. 25, 2015.
3 Citations to Schmidt are to English language equivalent U.S. Patent
Application No. US 2011/0003136 Al (published Jan. 6, 2011). See
Answer 2.
4 Citations to Kurt are to an English machine translation provided by the
Examiner. See id.
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The Final Action also contains an objection to the format of the
Specification. See Final Action 2. However, this objection is not before us
for decision on appeal. See In re Hengehold, 440 F.2d 1395, 1404 (CCPA
1971 ).
DISCUSSION
Provisional rejections
Appellants request that the provisional rejections "be held in abeyance
until such time as the full scope of allowable subject matter in each of the
applications, including the present application, is known." Appeal Br. 5.
Because Appellants present no substantive argument for reversing the
provisional rejections, see id.; Answer 3, we summarily affirm the
Examiner's decision to provisionally reject claims 13-23 and 25 based on
pending U.S. Application No. 13/224,731. See Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir. 2008) (holding that the Board need not consider the
merits of an uncontested ground of rejection).
The Examiner's decision to provisionally reject claims 13-21 and 22-
25 based on U.S. Application No. 13/313,598 is moot, in light of that
application's abandonment.
Rejection under 35 U.S.C. § 103(a)
Regarding the Examiner's rejection under 35 U.S.C. § 103(a),
Appellants argue claims 13-21 as a group. See Answer 7-11. Therefore,
consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013), we limit
our discussion to independent claim 13, and all claims stand or fall together.
The Examiner finds that Schmidt teaches a lignocellulose-containing
molding, with a binder (a) as set forth in claim 13, with a middle layer and a
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Application 13/119,882
covering layer. See Final Action 7-8. Although Schmidt does not teach that
the covering layer contains the specific claimed binder (b ), the Examiner
finds that Kurt teaches that a covering layer may include a binder (b) that
contains formaldehyde scavenger agents to reduce formaldehyde emissions,
see id. (citing Kurt iii! 8, 10). The Examiner concludes that it would have
been obvious to include a binder in the covering layers with the claimed
formaldehyde scavengers so that the resultant product does not emit
formaldehyde after it is formed in a hot press mold. Final Action 8. The
Examiner further finds that Reck teaches the specific chemical structure of
the binder required by binder (b) in claim 13, see id. at 9-10. The Examiner
determines that
[b ]ecause the Reck reference suggests that the disclosed resins
can be used to reduce problematic formaldehyde emissions, it
would have been obvious to one of ordinary skill in the art at
the time of invention to include the formaldehyde emission
reducing binding resins of Reck in the composite of Schmidt
and Kurt so that the emissions of harmful formaldehyde are
reduced.
Id. at 10.
Appellants argue that "Reck and Schmidt are not properly combinable
references" because Reck teaches the use of formaldehyde-free binders,
whereas Schmidt teaches the use of formaldehyde-containing binders, which
are "fundamentally incompatible teachings." Appeal Br. 8. This argument
is not persuasive of reversible error. As the Examiner correctly notes,
Appellants' argument focuses solely on the combination of Reck and
Schmidt, without addressing the teachings of Kurt. See Answer 5. The
combination of Schmidt and Kurt teaches a strategy for reducing
formaldehyde emissions using formaldehyde scavengers, whereas Reck
teaches another strategy for reducing formaldehyde emissions using a
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formaldehyde-free binder. Appellants have not directed our attention to any
evidence that the Examiner erred in concluding that these two strategies "can
be combined and employed to varying degrees based on the desired
outcome" to produce a multilayer molding with the desired mechanical
strength and low formaldehyde emissions. Answer 5---6; see also In re
Kerkhoven, 626 F.2d 846 (CCPA 1980) ("It is prima facie obvious to
combine two compositions each of which is taught by the prior art to be
useful for the same purpose, in order to form a third composition to be used
for the very same purpose.").
Appellants also argue that the Examiner's rejection is based on "an
impermissible degree of hindsight" because the Examiner is selectively
picking and choosing from prior art disclosures, guided by Appellants'
disclosure, without properly articulating a rationale for how the selection
was motivated by prior art teachings. See Appeal Br. 8-9. We are not
persuaded by this argument. The Examiner has articulated a rationale for
why the combination of teachings in Schmidt, Kurt, and Reck was within the
level of ordinary skill in the art, and Appellants have not pointed to any part
of the Examiner's rationale that includes knowledge gleaned only from
Appellants' disclosure. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971 ).
Appellants also argue that Appellants have provided evidence of
unexpected results. See Appeal Br. 9. First, Appellants argue that the
Specification describes an embodiment (Series E) in which the molding is
capable of being produced using a shorter pressing time for a given
thickness than the molding described in Reck. See id. 9-10 (citing Reck
11: 16-22; Spec. 26:35-37, 27:32-36, tbls. 1, 2). Second, Appellants argue
that the Specification describes another embodiment (Series A) that shows
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comparable mechanical properties, improved lifting resistance, and reduced
formaldehyde emissions compared to a conventional molding in which the
middle and cover layers contain a urea-formaldehyde resin. See id. at 10
(citing Spec. 27:7-12).
We agree with the Examiner, see Answer 8-9, that Appellants'
evidence of unexpected results is not commensurate with the scope of
representative claim 13. The evidence relates to binder compositions in
which component (I) comprises 70% acrylic acid and 30% maleic anhydride
in water, see Spec. 25:13-18, whereas claim 13 is broader, encompassing
70-100% of monomer Al and 0-30% monomer A2, where Al is "at least
one ethylenically unsaturated mono- and/or dicarboxylic acid" and A2 is "at
least one further ethylenically unsaturated monomer which differs from the
monomers Al." Appeal Br. 12. Therefore, Appellants have not met the
burden required to establish that the claimed invention imparts unexpected
results that are reasonably commensurate with the scope of protection sought
by the claims on appeal. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972) ("the burden of showing unexpected results rests on he who asserts
them"); In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("Even assuming
that the results were unexpected, Harris needed to show results covering the
scope of the claimed range. Alternatively Harris needed to narrow the
claims."); In re Greenfield, 571F.2d1185, 1189 (CCPA 1978)
("Establishing that one (or a small number of) species gives unexpected
results is inadequate proof, for 'it is the view of this court that objective
evidence of non-obviousness must be commensurate in scope with the
claims which the evidence is offered to support."' (quoting In re Tiffin, 448
F.2d 791, 792 (CCPA 1971))).
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Moreover, Appellants do not direct us to any statement in the
Specification attesting to the unexpected nature of the results shown in
Tables 1 and 2 of the Specification, or to any other persuasive evidence or
averment evincing that these results would have been unexpected by one of
ordinary skill in the art at the time of the invention. See Appeal Br. 9-11.
Absent such evidence or averment, Appellants cannot meet their burden.
See, e.g., In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) ("Geisler made
no such assertion [that results were unexpected] in his application. Nor did
Geisler submit any such statement through other evidentiary submissions,
such as an affidavit or declaration under Rule 132 ... Instead, the only
reference to unexpected results was a statement by Geisler's counsel ... that
Geisler' s results were 'surprising.'"). Appellants accordingly do not meet
the burden of demonstrating that the claimed invention imparts unexpected
results that are reasonably commensurate with the scope of protection sought
by the claims on appeal as required to rebut the prima facie case of
obviousness. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983).
Finally, the evidence of unexpected results cited by Appellants does
not compare the invention with the closest prior art. See In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art."). Regarding the
evidence of decreased pressing time at a given thickness of Series E as
compared to Reck, the Examiner cited Reck only as teaching the specific
chemical structure of the binder. See Final Action 9. Appellants have not
pointed to evidence disputing the Examiner's finding that the binders
described in Schmidt, the primary reference, would be expected to have the
needed mechanical strength and quick pressing times. See Answer 7.
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Regarding the evidence of improved lifting resistance and reduced
formaldehyde emissions of Series A, this comparison is only to a molding
containing urea-formaldehyde resin, and not the broader class of
compositions that include "aminoplast resins and/or organic isocyanates,
such as PMDI," Schmidt if 110, which in addition to isocyanates may
include "melamine-formaldehyde resins (MF resins) or melamine-containing
urea-formaldehyde resins (MUF resins)." Id. if 115. Thus, Appellants have
compared neither Series E nor Series A with the closest prior art.
Therefore, by a preponderance of the evidence presented to us on this
appeal record, we find no reversible error in the Examiner's decision to
reject independent claim 13 under 35 U.S.C. § 103(a). For the same reasons,
we find no reversible error in the Examiner's decision to reject dependent
claims 14--21.
DECISION
The Examiner's decision provisionally rejecting claims 13-23 and 25
on the ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 15-26 and 28 of U.S. Application No. 13/224,731
is affirmed.
The Examiner's decision provisionally rejecting claims 13-21 and
22-25 on the ground of nonstatutory obviousness-type double patenting as
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being unpatentable over claims 16-19, 21-25, and 27-30 of U.S.
Application No. 13/313,598 is moot, and is not included in our decision.
The Examiner's decision rejecting claims 13-21 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)(l )(iv).
AFFIRMED
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