Ex Parte Lee et al

Patent Trial and Appeal Board

Oct 27, 2014

11548584 (P.T.A.B. Oct. 27, 2014)

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.
11/548,584 10/11/2006 Jeffrey A. Lee 02734.0553-00000 (12401) 5603
31743 7590 10/27/2014
Georgia-Pacific LLC
133 Peachtree Street NE - GA030-42
ATLANTA, GA 30303
EXAMINER
CALANDRA, ANTHONY J
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
10/27/2014 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 JEFFREY A. LEE, STEPHANIE A. KEEN,
H. CHARLES THOMAS, and DANIEL W. SUMNICHT
____________

Appeal 2013-0040401
Application 11/548,5842
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
JAMES C. HOUSEL, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of a final
rejection of claims 1–3, 5, 6, 8–15, 19, 25–34, and 36–57. We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

1 We heard oral arguments from the Appellants’ counsel on October 9, 2014.
2 According to the Appellants, the real party in interest is Georgia-Pacific
Consumer Products LP, which is said to be “an indirect, wholly-owned
subsidiary of Koch Industries, Inc.” (Appeal Brief filed July 18, 2012,
hereinafter “App. Br.,” 3).

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BACKGROUND
The invention relates to a method for bleaching recycled fibers––i.e.,
increasing the brightness of recycled fibers without significant
delignification (Specification, hereinafter “Spec.,” ¶ 1). The recycled fibers
are said to include fibers from waste paper including printer’s clippings,
white office waste, and lower grades of waste paper such as curbside
recycling, newsprint, “junk mail,” magazines, corrugated materials,
packaging, and other mixed papers (id. ¶ 28).
Representative claim 13 is reproduced from page 22 of the Appeal
Brief (Claims App’x), as follows:
1. A method for bleaching recycled fibers, comprising:
(1) providing recycled fibers with a Kappa number of
less than about 40; and
(2) contacting the recycled fibers with an alkaline
hydroxide step to create initially bleached fibers;
(3) contacting the initially bleached fibers with at least
one activating bleach step to create activated fibers,
wherein the activating bleach step comprises contacting
the initially bleached fibers with at least one activating
bleaching agent chosen from peracetic acid,
peroxymonosulfuric acid, and an acylamide with a peroxy
compound,
wherein the activating bleach step further comprises the
addition of oxygen, and
(4) contacting the activated fibers with at least one
reductive bleach step.

3 Other claims necessary for an understanding of certain issues are
reproduced in the “DISCUSSION” section below.
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The Examiner rejected the claims as follows:
I. Claims 13, 14, 40, and 41 under 35 U.S.C. § 112, ¶ 1, as
failing to comply with the written description
requirement;
II. Claims 40 and 41 under 35 U.S.C. § 112, ¶ 2, as
indefinite;
III. Claims 1–3, 5, 6, 8, 9, 15, 19, 25–27, 31–34, and 36–39
under 35 U.S.C. § 103(a) as unpatentable over Forsberg4
and Coles;5
IV. Claims 10–12 and 55–57 under 35 U.S.C. § 103(a) as
unpatentable over Forsberg, Coles, and Fennell;6
V. Claims 28–30, 42–50, 53, and 54 under 35 U.S.C.
§ 103(a) as unpatentable over Forsberg, Coles, and
Smook;7
VI. Claims 51 and 52 under 35 U.S.C. § 103(a) as
unpatentable over Forsberg, Coles, Smook, and Fennell;
and
VII. Claims 55–57 under 35 U.S.C. § 103(a) as unpatentable
over Fluet,8 Coles, and Fennell.
(Ans. 5–28.)

4 Paivi M. Forsberg and Joseph M. Genco, Bleaching Mixed Office Waste to
High Brightness, 77 Tappi J. 253–259 (1994).
5 PCT International Publication WO 03/048450 A1 published June 12, 2003.
6 U.S. Patent 2,525,594 issued October 10, 1950.
7 Gary A. Smook, Handbook for Pulp & Paper Technologists (2d. ed. 1992).
8 Alain Fluet, Sodium Hydrosulfite Brightening and Color Stripping of
Mixed Office Waste Furnishes, Tappi Proceedings: Pulping Conference 717–
724 (1995).
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DISCUSSION
I. Lack of Written Description (Claims 13, 14, 40, & 41)
We start with Rejection I. Claim 13, which depends from claim 10,9
which in turn depends from claim 1, is reproduced from page 23 of the
Appeal Brief (Claims App’x), as follows:
13. The method according to claim 10, wherein the
alkaline hydroxide step further comprises contacting the recycled
fibers with at least one of peracetic acid, peroxymonosulfuric
acid, and an acylamide.
Claim 14 depends from claim 13 (id.).
Claim 40, which depends from claim 31,10 which in turn depends from
claim 1, is reproduced from page 26 of the Appeal Brief (Claims App’x), as
follows:
40. The method of claim 31, wherein alkaline oxygen
peroxide contacts the recycled fibers after the peracetic acid.
Claim 41 depends from claim 40 (id.).
The Examiner found that claims 13 and 40 are original claims but
depend from claims 1 and 31, respectively, which were amended
substantially during prosecution (Ans. 19). The Examiner further found that
the subject matter of claims 13 and 40, as amended by virtue of their direct
or indirect dependence on amended claims 1 and 31, respectively, violate the
written description requirement of 35 U.S.C. § 112, ¶ 1 (id. at 5–6).
Specifically, with respect to claims 13 and 14, the Examiner found that “the

9 Claim 10 reads: “10. The method according to claim 1, wherein the
alkaline hydroxide step comprises contacting the recycled fibers with at least
one alkaline peroxide agent chosen from a mixture of an alkaline hydroxide
and a peroxy compound” (App. Br. 23, Claims App’x).
10 Claim 31 reads: “31. The method of claim 1, wherein the at least one
activating bleaching agent is peracetic acid” (App. Br. 25, Claims App’x).
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[S]pecification [as originally filed] does not disclose peracetic acid,
peroxymonosulfuric acid, or an acylamide . . . in the alkaline peroxide stage”
but rather that “[t]hese chemicals are only present ion [sic, in] the activating
bleaching stage” (id. at 5). With respect to claims 40 and 41, the Examiner
further found that the Specification, as originally filed, does not describe a
four-step method including an additional alkaline oxygen peroxide step of
the recycled fibers after a peracetic acid treatment (id. at 5–6).
The Appellants contend otherwise. With respect to claims 13 and 14,
the Appellants argue that the Examiner’s position is erroneous in view of the
description in paragraph 47 of the published application (paragraph 46 of the
Specification as originally filed) (App. Br. 12–13; Reply Brief filed January
25, 2013, hereinafter “Reply Br.,” at 2). With respect to claims 40 and 41,
the Appellants argue that paragraph 38 and original claim 40 provide
sufficient written descriptive support (id. at 13–14).
Thus, the issues arising from these contentions are:
A. Did the Appellants demonstrate reversible error in the
Examiner’s finding that the Specification, as originally filed, does not
provide sufficient written description for the subject matter of claim 13?
B. Did the Appellants demonstrate reversible error in the
Examiner’s finding that the Specification, as originally filed, does not
provide sufficient written description for the subject matter of claim 40?
The Appellants’ arguments are unpersuasive to demonstrate reversible
error. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[E]ven assuming
that the examiner had failed to make a prima facie case, the Board would not
have erred in framing the issue as one of ‘reversible error.’”).
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To satisfy the written description requirement of 35 U.S.C. § 112, ¶ 1,
the specification must describe the invention in sufficient detail so “that one
skilled in the art can clearly conclude that the inventor[s] invented the
claimed invention as of the filing date sought.” Lockwood v. Am. Airlines,
Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
The Specification, as originally filed, states that “[t]he recycled fibers
may or may not be washed between the activating bleach step and the
alkaline peroxide step, regardless of which step is performed first” (Spec. ¶
46). The Specification also states that “[i]n some embodiments it may be
desirable that at least some quantity of the at least one activating bleaching
agent be present in the recycled fibers at the time of contact with an alkaline
peroxide step” (id.). But, consistent with the Examiner’s position (Ans. 5,
18), we find that the description in paragraph 46 is not sufficiently specific
for claim 13 (as now amended), which requires, in order: an alkaline
hydroxide step using a mixture of an alkaline hydroxide and a peroxy
compound; an activating bleaching step using at least one activating agent
chosen from peracetic acid, peroxymonosulfuric acid, and an acylamide with
a peroxy compound, and oxygen; and at least one reductive bleach step. In
this regard, the description in paragraph 46 is provided in the context of a
considerably broader disclosure that encompasses a “laundry list” of
possibilities (Spec. ¶¶ 37–55). Therefore, we detect no error in the
Examiner’s position that claims 13 and 14 fail to comply with the written
description requirement of 35 U.S.C. § 112, ¶ 1. Lockwood, 107 F.3d at
1572 (“[D]escription which renders obvious the invention . . . is not
sufficient.”).
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Similarly, original claim 40 is not sufficiently specific to provide
support for claim 40, as now amended. Original claim 40 ultimately
depended on original claim 1, which was considerably broader than claim 1,
as now amended. Likewise, paragraph 37 of the Specification, which recites
a “laundry list” of possibilities for the activating bleaching step, is not
sufficiently specific for the subject matter of claim 40, as now amended.
Again, obviousness is not the proper standard for determining whether a
claim complies with the written description requirement of 35 U.S.C. § 112,
¶ 1. Id.
For these reasons, we uphold Rejection I.

II. Indefiniteness (Claims 40 & 41)
Next, we address Rejection II. The Examiner found that, in base
claim 1, step (2) recites “contacting the recycled fibers with an alkaline
hydroxide step to create initially bleached fibers” (emphases added) and step
(3) recites “contacting the initially bleached fibers with at least one
activating bleach step to create activated fibers” (emphases added) (Ans. 6,
20). The Examiner held that the scope of claim 40 is unclear, questioning
how the “recycled fibers [can] be treated after [the] peracetic acid activating
bleaching stage when claim 1 states that the recycled fibers have already
become ‘initially bleached fibers’” (id. at 20). Accordingly, the Examiner
concluded that claim 40 “conflicts with the parent claims and it is not clear
which fibers or when the alkaline oxygen peroxide treatment occurs” (id. at
6; see also Final Office Action entered August 18, 2011 at 4).
The Appellants contend that “[c]laim 1 does not preclude the use of
PAA [peracetic acid] as the activating bleaching agent or the addition of
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another activating agent oxygen peroxide in the activating bleaching step
after the addition of PAA” (App. Br. 14).11
We discern no error in the Examiner’s rejection after considering the
Appellants’ argument presented in their Appeal Brief. Claim 1 specifically
identifies the fibers after the hydroxide step (2) and the activating bleaching
agent step (3) by their conditions as “initially bleached fibers” and “activated
fibers,” respectively, in order to specify a particular order and particular set
of relationships in the specified steps. By specifying that “alkaline oxygen
peroxide contacts the recycled fibers after the peracetic acid” (emphasis
added) in claim 40, an apparent inconsistency between the limitations
meticulously set forth in the parent claim and rejected claim 40 has been
created, and therefore, in claim 40, “it is not clear [on] which fibers or when
the alkaline oxygen peroxide treatment occurs” (Ans. 6). In re Morris, 127
F.3d 1048, 1056 (Fed. Cir. 1997) (“It is the applicants’ burden to precisely
define the invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2.”).
Therefore, we uphold Rejection II.

III. Obviousness in View of Forsberg & Coles (Claims 1–3, 5, 6, 8, 9, 15,
19, 25–27, 31–34, and 36–39)
Turning to Rejection III, the Appellants argue the claims––namely,
claims 1–3, 5, 6, 8, 9, 15, 19, 25–27, 31–34, and 36–39––together (App. Br.
15–17). Therefore, we confine our discussion to claim 1, which we select as

11 On page 4 of the Reply Brief, the Appellants offer an argument that was
not made in the opening Brief. Because the Appellants do not provide a
showing of good cause for the belated argument, we decline to consider it.
Ex parte Borden, 93 USPQ2d 1473 (BPAI 2010) (informative opinion).
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representative pursuant to 37 C.F.R. § 41.37(c)(1)(vii). Claims 2, 3, 5, 6, 8,
9, 15, 19, 25–27, 31–34, and 36–39 stand or fall with claim 1.
The Examiner found that Forsberg describes every limitation of claim
1 except for the specified at least one activating bleaching agent in step (3)
(Ans. 7–8, citing Forsberg pp. 253–54 and Tables II, V, and VI). To resolve
this difference, the Examiner considered the teachings of Coles.
Specifically, the Examiner found that Coles teaches the addition of
N,N,N’,N’-tetraacetyl ethylene diamine (TAED), which is an acylamide, to
a peroxide to form peroxyacids in a bleaching step to provide an enhanced
pre-treatment of the fibers for subsequent bleaching with a reductive agent
(Ans. 8 and 21, citing Cole p. 4, ll. 15–20, and p. 3, ll. 21–31). Based on
these findings, the Examiner concluded that a person of ordinary skill in the
art would have been motivated to add TAED to the peroxide of Forsberg in
order to provide enhanced pre-treatment for subsequent bleaching with a
reductive agent (Ans. 8, 21).
The Appellants do not dispute the Examiner’s findings concerning the
scope and content of Forsberg (Ans. 22; App. Br. 15–17). Rather, the
Appellants contend that Coles is the closest prior art because “Forsberg is
not directed to activated bleaching, in any form” (id. at 16). The Appellants
argue that “Coles neither teaches nor suggests that alkaline hydroxide (or
hydrogen peroxide) step should be carried out prior to activated bleaching”
(id.). According to the Appellants, they “have surprisingly found that a very
efficient and cost effect [sic] method for treating low cost recycle fiber can
be achieved when the first alkaline hydroxide stage is carried out before the
fiber is subjected to activated bleaching” because “[t]he chemicals used in
the bleaching process can be carried forward and recycled in the process that
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reduces chemical costs” and “the use of the alkaline hydroxide stage before
the activated bleaching stage results in strong gains in brightness” (id. at 17).
Thus, the dispositive issues arising from these contentions are:
A. Did the Appellants demonstrate that the Examiner failed to
articulate a sufficient reason with some rational underpinning to support a
conclusion that a person of ordinary skill in the art would have combined
Forsberg with Coles in the manner recited in claim 1?
B. If not, did the Appellants meet their burden of coming forward
with persuasive evidence of unexpected results, or other indicia of
nonobviousness, commensurate in scope with claim 1?
None of the Appellants’ arguments are persuasive to show reversible
error in the Examiner’s rejection. Regarding Issue A, we are in complete
agreement with the Examiner’s analysis at pages 21–22 of the Answer.
Although Coles does not explicitly mention an alkaline hydroxide step prior
to the activating bleaching step, it does not exclude such a preliminary step.
(Coles at p. 3, ll. 11-21). As found by the Examiner, Coles provides a clear
teaching that would have prompted a person of ordinary skill in the art to
add a TAED activator together with Forsberg’s peroxide in order to enhance
pre-treatment for subsequent bleaching with the reductive agent (Coles at p.
3, l. 22 – p. 4, l. 23). The Appellants do not direct us to persuasive evidence
or technical reasoning why a person of ordinary skill in the art would have
expected that a preliminary alkaline hydroxide step would interfere with the
beneficial effects of TAED described in Coles. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
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would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”).
As stated by the Examiner (Ans. 22), the Appellants’ attack against
Coles fails to take account of what the collective teachings of both Forsberg
and Coles would have suggested to a person of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
As to Issue B, we are again in complete agreement with the
Examiner’s position (Ans. 23). In particular, we emphasize the Examiner’s
well-stated position that the Appellants fail to support their argument with a
sufficient comparative showing to establish that the actual difference
between the subject matter of claim 1 and Forsberg––i.e., the TAED––
provides results that would have been considered truly unexpected by a
person of ordinary skill in the art. Moreover, the Appellants’ contention that
the sequence of steps provides surprising cost savings because “[t]he
chemicals used in the bleaching process can be carried forward and recycled
in the process” (App. Br. 17) fails at the outset in the absence of any
limitations in claim 1 specifying a carryover or recycling of chemicals. In re
Self, 671 F.2d 1344, 1348 (CCPA 1982).
For these reasons and those set forth in the Answer, we uphold
Rejection III.

IV. Obviousness in View of Forsberg, Coles, & Fennell (Claims 10–12 &
55–57)
As noted by the Examiner (Ans. 27), the Appellants do not provide
any arguments against the rejection of claims 55–57 on this ground (App.
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Br. 9, 17–18). Therefore, the Appellants we summarily affirm the rejection
of claims 55–57 on this ground.
As for the remaining claims (claims 10–12) subject to this ground, the
Appellants argue the claims together (App. Br. 17–18). Therefore, we
confine our discussion to claim 10 (reproduced in n. 9 above), which we
select as representative pursuant to 37 C.F.R. § 41.37(c)(1)(vii). Claims 11
and 12 stand or fall with claim 10.
The Examiner acknowledged that the combination of Forsberg and
Coles differs from the subject matter of claim 10 in that the references do
not teach an alkaline hydroxide step in which a mixture of an alkaline
hydroxide and a peroxy compound is used to treat the fibers (Ans. 12). The
Examiner found, however, that Fennell teaches treating recycled paper with
caustic soda and sodium peroxide in a repulping/deinking stage to provide a
product that requires less subsequent bleaching and higher yields (id., citing
Fennell’s col. 1, ll. 5–15, 45–50, col. 2, ll. 5–20, and col. 5, ll. 1–6). The
Examiner concluded from these findings that a person of ordinary skill in the
art would been led to implement Fennell’s repulping/deinking technique in
the combination of Forsberg and Coles (Ans. 25).
The Appellants rely on the same arguments made against Rejection III
(App. Br. 18). In addition, the Appellants concede that Forsberg describes
the same deinking technique disclosed in Fennell but appear to argue that a
person of ordinary skill in the art would not consider such a deinking
technique as a first alkaline hydroxide bleaching stage (id.).
To the extent that the Appellants rely on the same arguments made
against Rejection III, we find them unpersuasive for the reasons stated in our
discussion above. As for the argument that deinking with caustic soda and a
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peroxide would not be considered an alkaline hydroxide bleaching stage, we
adopt the Examiner’s response at page 5 as our own. Furthermore, although
characterized as deinking, the prior art treatment involves treating recycled
fibers with the same chemicals specified in claim 10. Therefore, the prior art
deinking step would necessarily result in bleaching. The Appellants have
not shown otherwise. Cf. MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d
1362, 1366 (Fed. Cir. 1999) (“Where, as here, the result is a necessary
consequence of what was deliberately intended, it is of no import that the
article’s authors did not appreciate the results.”).
For these reasons, we uphold Rejection IV.

V. Obviousness in View of Forsberg, Coles, & Smook (Claims 28–30, 42–
50, 53, & 54)
The Appellants rely on the same arguments made against Rejection III
(App. Br. 19). These arguments are unpersuasive for the same reasons
discussed above.
In addition, for claim 42, the Appellants contend that “Smook does
not . . . address an activated bleaching stage or whether it would be
appropriate and/or beneficial to recycle the filtrate from the activated
bleaching stage back to an alkaline hydroxide stage” (id.). We adopt the
Examiner’s factual findings and analysis as set forth on pages 13 and 26–27
of the Answer.
Accordingly, we uphold Rejection V.

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VI. Obviousness in View of Forsberg, Coles, Smook, & Fennell (Claims 51
& 52)
The Appellants rely on the same arguments (App. Br. 19–20), which
we found unpersuasive above. Therefore, we uphold Rejection VI.

VII. Obviousness in View of Fluet, Coles, & Fennell (Claims 55–57)
The Appellants contend that “[n]owhere does either Fuet or Fennell
address an activated bleaching step [as required by claims 55–57]” and
further add that Coles does not cure this perceived deficiency (App. Br. 20).
As we discussed above, however, Fennell discloses the advantages of adding
TAED to peroxide. The same motivation would have prompted a person of
ordinary skill in the art to implement Fennell’s technique in the method of
Fluet, thus arriving at a method encompassed by the claims.
Therefore, we uphold Rejection VII.

ORDER
Rejections I–VII are 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)(1).
AFFIRMED

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