Ex parte McVay et al.

Board of Patent Appeals and Interferences

Apr 14, 1998

08063056 (B.P.A.I. Apr. 14, 1998)

Application for patent filed May 19, 1993. According to1
appellants, this application is a continuation of Application No.
07/713,256, filed June 13, 1991, now abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte TED M. McVAY, GENE F. BAXTER
and FREDERICK C. DUPRE JR.
________________
Appeal No. 95-2022
Application No. 08/063,0561
________________
ON BRIEF
________________
Before WINTERS, GARRIS and PAK, Administrative Patent Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner's decision rejecting
claims 2, 3, 7 through 10, 12, 13, 15 and 27 through 37. Claims
17, 18, 22 through 24, 38 and 39, which are the only other claims
remaining in the application, stand allowed.
Appeal No. 95-2022
Application No. 08/063,056
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Claim 31, which is illustrative of the subject matter on
appeal, reads as follows:
31. A low molecular weight lignin fraction of aqueous
lignin solution useful in the preparation of lignin modified
phenol-formaldehyde resins, said lignin fraction comprising
molecules of a lignin solution which, upon being subjected to
ultrafiltration, pass through an ultrafiltration membrane having
a molecular weight cut-off of about 50,000 and are rejected by an
ultrafiltration membrane having a molecular weight cut-off of
about 2,000, wherein more than 60 wt[.] percent of the molecules
of said lignin fraction have a molecular weight which does not
exceed the molecular weight of Glucagon and more than 65 wt[.]
percent of the molecules of said lignin fraction have a molecular
weight which does not exceed 5,000, as determined by gel
chromatography, and wherein said aqueous solution is selected
from the group consisting of black liquor, lignin solution, whole
bagasse lignin, and blends thereof.
The single reference relied on by the examiner:
Forss et al. (Forss) 4,105,606 Aug. 8, 1978
The issues presented for review are: (1) whether the
examiner erred in rejecting claims 2, 7 through 10, 12, 13, 15,
27 through 34, 36 and 37 under 35 U.S.C. § 102(b) as anticipated
by Forss; and (2) whether the examiner erred in rejecting claims
3 and 35 under 35 U.S.C. § 103 as unpatentable over Forss. For
the reasons set forth below, we affirm the rejection under
35 U.S.C. § 102(b), but reverse the rejection under 35 U.S.C.
§ 103.
DISCUSSION
As correctly found by the examiner, the low molecular weight
lignin product defined in independent claims 31 and 32 reasonably
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appears to be identical or substantially identical to the
evaporated black liquor described by Forss in column 12, EXAMPLE
10. This follows for two reasons. First, the aqueous lignin
solution recited in claims 31 and 32 "reads on" black liquor,
whereas the source material in EXAMPLE 10 is "[b]lack liquor from
a kraft cook on pine wood." Second, 67.1% (w/w) of the alkali
lignins in the black liquor of EXAMPLE 10 had molecular weights
not exceeding the molecular weight of Glucagon, and 74.7% (w/w)
had molecular weights not exceeding 5,000 as determined by gel
chromatography. Those weight percentages meet the criteria set
forth in appellants' claims, namely, "more than 60 wt[.] percent
of the molecules of said lignin fraction have a molecular weight
which does not exceed the molecular weight of Glucagon and more
than 65 wt[.] percent of the molecules of said lignin fraction
have a molecular weight which does not exceed 5,000, as
determined by gel chromatography."
As stated in In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
433-34 (CCPA 1977):
Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced
by identical or substantially identical processes, the
PTO can require an applicant to prove that the prior
art products do not necessarily or inherently possess
the characteristics of his claimed product. Whether
the rejection is based on "inherency" under 35 USC 102,
on "prima facie obviousness" under 35 USC 103, jointly
or alternatively, the burden of proof is the same, and
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Application No. 08/063,056
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its fairness is evidenced by the PTO's inability to
manufacture products or to obtain and compare prior art
products. [Footnote and citations omitted.]
On these facts, we believe that the burden of persuasion shifted
to appellants "to prove that the prior art products do not
necessarily or inherently possess the characteristics of [their]
claimed product." This appellants have not done. In the absence
of a showing, it appears that the evaporated black liquor
described by Forss, EXAMPLE 10, like the product defined in
claims 31 and 32, comprises molecules which pass through an
ultrafiltration membrane having a molecular weight cut-off of
about 50,000 and are rejected by an ultrafiltration membrane
having a molecular weight cut-off of about 2,000.
For these reasons, we find that (1) the examiner established
a prima facie case of anticipation of claims 31 and 32 based on
the description in Forss, EXAMPLE 10; and (2) appellants have not
rebutted the prima facie case. We therefore affirm the rejection
of independent claims 31 and 32 under 35 U.S.C. § 102(b) as
anticipated by Forss. In so doing, we are mindful that
appellants rely on data presented in their specification and in
the McVay declaration, executed July 12, 1993, designed to show
that their claimed product possesses unexpectedly superior
results. See the Appeal Brief, section VI.C. We point out,
however, that a proper rejection under 35 U.S.C. § 102 cannot be
Appeal No. 95-2022
Application No. 08/063,056
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overcome by a showing of unexpectedly superior results, which are
relevant only to an obviousness rejection. In re Malagari,
499 F.2d 1297, 1302, 182 USPQ 549, 553 (CCPA 1974). Here, we
find no limitation in the claims serving to distinguish
appellants' product from the product described by Forss, EXAMPLE
10, and it is axiomatic that appellants cannot patent subject
matter which is old.
With respect to dependent claims 2, 7 through 9, 27 through
30, 33, 34, 36 and 37, these fall together with independent
claims 31 and 32 because appellants do not group or argue them
separately. See the Appeal Brief, section V.
We next consider claims 10, 12, 13 and 15, which appellants
argue separately (Appeal Brief, page 5, second full paragraph).
We find that the examiner established a prima facie case of
anticipation of these claims in view of the description in Forss,
column 12, lines 37 through 53. Note particularly the disclosure
of an adhesive prepared by mixing evaporated black liquor with
phenolic resin, followed by the workup described in column 12,
lines 42 through 53.
We are mindful that the adhesive composition of Forss,
EXAMPLE 10, does not meet "requirements set by the Finnish
standards" (Forss, column 14, lines 45 through 65). This does
not, however, detract from the anticipatory effect of Forss with
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respect to claims 10, 12, 13 and 15. Again, we find no
limitation in these claims serving to distinguish appellants'
product from the product described by Forss, EXAMPLE 10. Compare
In re Hafner, 410 F.2d 1403, 1405, 161 USPQ 783, 785 (CCPA 1969)
(§ 112 provides that the specification must enable one skilled in
the art to "use" the invention, whereas § 102 makes no such
requirement for an anticipatory disclosure; a disclosure lacking
a teaching how to use a fully disclosed compound for a specific,
substantial utility is adequate to anticipate a claim drawn to
the compound).
The rejection of claims 3 and 35 under 35 U.S.C. § 103,
however, stands on different footing. These claims define a low
molecular weight lignin product derived from whole bagasse
lignin. According to the examiner, there is not "a clear
distinction" between the prior art low molecular weight lignin
product derived from black liquor (Forss, EXAMPLES 10 and 11) and
the claimed low molecular weight lignin product derived from
whole bagasse lignin. See the Examiner's Answer, page 5. We
disagree.
In our judgment, the examiner focuses too narrowly on the
molecular weight limitation in claims 3 and 35 without
considering the claimed subject matter as a whole, including the
nature of whole bagasse lignin. In this regard, we invite
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attention to the specification, page 6, first paragraph,
explaining that whole bagasse lignin is "a by-product obtained
from the extraction of juice from sugar cane," i.e., it is a
lignin from "sources other than wood." In contrast, Forss
describes "[b]lack liquor from a kraft cook on pine wood" (column
12, EXAMPLE 10). Manifestly, all lignins are not the same. The
examiner has not established that the nature of the lignin
(polymerized product) in Forss, EXAMPLES 10 and 11, is the same
or substantially the same compared with the nature of the lignin
in claims 3 and 35. Accordingly, the examiner has not
established a prima facie case of unpatentability.
The rejection of claims 3 and 35 under 35 U.S.C. § 103 as
unpatentable over Forss is reversed.
In conclusion, we affirm the examiner's decision rejecting
claims 2, 7 through 10, 12, 13, 15, 27 through 34, 36 and 37
under 35 U.S.C. § 102(b) as anticipated by Forss. We reverse the
rejection of claims 3 and 35 under 35 U.S.C. § 103 as
unpatentable over Forss.
The examiner's decision is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
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Application No. 08/063,056
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SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
CHUNG K. PAK )
Administrative Patent Judge )
Appeal No. 95-2022
Application No. 08/063,056
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