Ex Parte Mohanty et al

Board of Patent Appeals and Interferences

Jun 18, 2009

11200593 (B.P.A.I. Jun. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AMAR K. MOHANTY, QIANGXIAN WU, and SUSAN SELKE
____________

Appeal 2009-003545
Application 11/200,593
Technology Center 1700
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Decided:1 June 19, 2009
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Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
ROMULO H. DELMENDO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-11, 13, 14, 16-31, and 36 (Appeal Brief filed February 27,

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Application 11/200,593

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2008, hereinafter “App. Br.”; Final Office Action mailed October 26, 2007).
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

STATEMENT OF THE CASE
Appellants state that the claimed invention relates “generally to the
utilization of thermoplastic blended compositions of soy meal and natural
rubber for the preparation of thermoset biodegradable elastomers”
(Specification, hereinafter “Spec.,” ¶ 0003).
Claims 1, 6, 13, 20, 25, and 29, the only independent claims on
appeal, read as follows:
1. An uncured and unvulcanized thermoplastic blended
composition which comprises: a mixture of
(a) a preprocessed soy meal and water mixture which has
been die extruded at 80-100°C, wherein soy meal has been
preprocessed prior to being die extruded to remove hulls and
cellulose fiber materials associated with soy beans and ground
to a powder and then die extruded; and
(b) an unvulcanized natural rubber, which is to be
vulcanized, in admixture with sulfur as a vulcanization agent
and a vulcanization accelerator, wherein the blended
composition can be vulcanized to a thermoset solid.
6. A thermoset blended composition which comprises: a
die extruded mixture of
(a) a preprocessed soy meal and water mixture which has
been extruded at 80-100°C, wherein soy meal has been
preprocessed prior to being die extruded to remove hulls and
cellulose fiber materials associated with soy beans and ground
to a powder and then die extruded; and
(b) a vulcanized natural rubber in admixture with sulfur
as a vulcanization agent and a vulcanization accelerator,
wherein the blended composition has been vulcanized to a
thermoset solid.
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13. A method for the production of a thermoset blended
composition which comprises: a die extruded mixture of
(a) a mixture of a preprocessed soy meal and water
mixture which has been die extruded at 80-100°C, wherein soy
meal has been preprocessed prior to being die extruded to
remove hulls and cellulose fiber materials associated with soy
beans and ground to a powder and then die extruded; and
unvulcanized natural rubber which is to be vulcanized in
admixture with sulfur as a vulcanization agent, and a
vulcanization accelerator; and
(b) vulcanizing the blended composition to produce the
thermoset solid composition.
20. A thermoset blended composition which
comprises: a die extruded mixture of
(a) a preprocessed soy meal and water mixture, which
has been die extruded at elevated temperatures, wherein the soy
meal has been preprocessed prior to being extruded to remove
hulls and cellulose fiber materials associated with soy beans
and ground to a powder and then die extruded; and
(b) vulcanized natural rubber which has been vulcanized
with the die extruded processed soy meal to produce the
composition.
25. An uncured and unvulcanized thermoplastic blended
composition which comprises: a die extruded mixture of
(a) a preprocessed soy meal and water mixture which has
been die extruded at elevated temperatures, wherein soy meal
has been preprocessed prior to being die extruded to remove
hulls and cellulose fiber materials associated with soy beans
and ground to a powder and then die extruded; and
(b) unvulcanized natural rubber which is to be vulcanized
in admixture with sulfur as a vulcanization agent and a
vulcanization accelerator, wherein the blended composition can
be vulcanized to a thermoset solid.
29. A method for the production of a thermoset blended
composition which comprises:
(a) blending a mixture of a preprocessed soy meal and
water mixture which has been die extruded at elevated
temperatures, wherein soy meal has been preprocessed prior to
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being die extruded to remove hulls and cellulose fiber materials
associated with soy beans and ground to a powder, and
unvulcanized natural rubber in admixture with sulfur as a
vulcanization agent, and a vulcanization accelerator which is to
be vulcanized with the die extruded processed soy meal; and
(b) vulcanizing the blended composition to produce the
thermoset solid composition.

The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed March 28, 2008, hereinafter
“Ans.,” 2):
Lehmann 2,931,845 Apr. 5, 1960
Jones 4,158,656 Jun. 19, 1979
Yamashita 6,527,990 Mar. 4, 2003
PROTEIN RESOURCES AND TECHNOLOGY: STATUS AND RESEARCH NEEDS 282-
284 and 286 (Max Milner et al. eds., The Avi Publishing Company, Inc.,
1977) (hereinafter “Milner”). 2
The Examiner rejected the appealed claims under 35 U.S.C. § 103(a)
as follows:
I. claims 1, 3, 6-8, 13, 14, 16, 19-22, 24-26, 28, 29, and 36 as
unpatentable in view of the combined teachings of Lehmann
and Milner (Ans. 3);3

2 The Examiner’s Answer lists Milner as including pages 281-286 (Ans. 2).
The copy of Milner in the record, however, does not include pages 281 and
285. Accordingly, we base our decision solely on the portions of Milner as
found in the record (i.e., pages 282-284 and 286).
3 Claim 6, though listed as rejected in the Office Action Summary of the
Final Office Action mailed October 26, 2007, was not specifically addressed
in the “Claim Rejections – 35 USC § 103” section at pages 2-5.
Nevertheless, Appellants state that, for the purpose of their appeal, claim 6 is
treated as rejected as obvious over Lehmann and Milner for the reasons
given at pages 2-4 of the Final Office Action (App. Br. 12, n. 2).
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II. claims 4, 5, 9-11, 17, 18, 23, 27, and 30 as unpatentable in view
of the combined teachings of Lehmann, Milner, and Yamashita
(Ans. 5); and
III. claim 31 as unpatentable in view of the combined teachings of
Lehmann, Milner, and Jones (Ans. 6).

ISSUES
With respect to claim 1, the Examiner asserts that Lehmann teaches a
composition comprising: (i) vegetable protein of soybeans; (ii) aqueous
dispersion of natural rubber; (iii) sulfur; and (iv) a vulcanization accelerator
(Ans. 3). The Examiner acknowledged that Lehmann’s composition differs
from the subject matter of claim 1 in that it does not describe the claimed
“preprocessed soy meal” (i.e., “a preprocessed soy meal and water mixture
which has been die extruded at 80-100°C, wherein soy meal has been
preprocessed prior to being die extruded to remove hulls and cellulose fiber
materials associated with soy beans and ground to a powder and then die
extruded”) (id. at 4). To account for this difference, the Examiner relied on
Milner, which is said to supply the teachings necessary to arrive at the
claimed subject matter (id. at 4). Specifically, the Examiner concluded that
“it would have been obvious to one of ordinary skill in the art at the time of
the invention to use treated soy meal (instead of soy protein isolate) as
taught by Milner in the composition disclosed by Lehmann in order to obtain
thermoplastic or thermoset articles at reduced manufacture cost due to
reduced number of processing steps” (id.).
Appellants, on the other hand, contended that “Lehmann never
discloses the recited unvulcanized natural rubber in admixture with sulfur as
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a vulcanization agent and a vulcanization accelerator (i.e., as recited in
[independent] claims 1, 13, 25, and 29)” (App. Br. 16). Appellants asserted
that “by the time the vulcanization reagents are introduced in [Lehmann’s
composition], the unvulcanized ‘rubber’ no longer exists, as it has been
converted to a different compound – [a] crosslinked rubber-protein-aldehyde
product” (id.). With regard to independent claims 6 and 20, Appellants
similarly contended that “Lehmann only discloses the vulcanization of a
rubber derivative (i.e., the vulcanized crosslinked rubber-protein-aldehyde
product), and not natural rubber itself” (id. at 16-17). According to
Appellants, Milner, Yamashita, and Jones “do not remedy the deficiencies of
Lehmann” and, therefore, the Examiner failed to establish a prima facie case
of obviousness (id. at 17).
Thus, a dispositive issue arising from the contentions of the Examiner
and Appellants is:
Have Appellants shown reversible error in the Examiner’s position
that the term “natural rubber” in the appealed claims reads on a reaction
product of natural rubber, protein, and aldehyde?

FINDINGS OF FACT
1. Appellants’ Specification does not include any description that
would indicate to one skilled in the relevant art that the
inventors are using the term “natural rubber” to include
materials other than natural rubber per se (Spec. ¶ 0040).
2. Lehmann discloses the use of a modified natural rubber as
follows:
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The process according to the invention consists
firstly in utilizing an animal or vegetable protein as
a constituent of the resin, in incorporating such a
protein in an aqueous dispersion of rubber so as to
form with it a homogeneous fluid medium and in
treating with a reticulating agent, such as an
aldehyde. The condensation with the aldehyde
therefore commences within a latex in which the
protein has been introduced previously in the non-
precondensed state in the form of a solution or
colloidal dispersion. There is thus obtained a
rubber-protein-aldehyde compound which, after
kneading and vulcanization, has the properties of
an excellent reinforced rubber [col. 1, ll. 37-49;
emphasis added].
3. Specifically, Lehmann states that “it is presumed that within the
latex the glyoxal [i.e., polyaldehyde] reacts in two stages on the
proteinaceous matter and the rubber” in which the rubber is
chemically reacted (col. 2, ll. 31-71).

PRINCIPLES OF LAW
“Since it would be unreasonable for the PTO to ignore any
interpretive guidance afforded by the applicant's written description, either
phrasing connotes the same notion: as an initial matter, the PTO applies to
the verbiage of the proposed claims the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406
(2007).

ANALYSIS
Claim Construction
We start with a construction of the claim term “natural rubber.”
Nothing in Appellants’ Specification indicates that the term “natural rubber”
includes any material other than natural rubber per se (Fact 1). Nor has the
Examiner directed us to any evidence that the term “natural rubber” would
have been understood by one skilled in the relevant art to encompass
modified forms of natural rubber (i.e., natural rubber that has been reacted
with other materials). Thus, we interpret the term “natural rubber” to mean
natural rubber per se.
Having construed the term “natural rubber,” we agree with Appellants
that the Examiner reversibly erred. Specifically, Lehmann’s disclosure is
limited to the use of a modified natural rubber, which is said to be a reaction
product of an aldehyde with proteinaceous material and natural rubber (Facts
2 and 3). Thus, unlike the claimed subject matter, Lehmann discloses
unvulcanized modified natural rubber or vulcanized modified natural rubber.
The Examiner has not directed us to any evidence or provided any reasoning
to support a position that Lehmann uses unvulcanized natural rubber or
vulcanized natural rubber as required by the claims.
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Because the Examiner has not otherwise accounted for the argued
claim limitations, we cannot uphold any of the Examiner’s rejections.

CONCLUSION
On this record, Appellants have shown reversible error in the
Examiner’s position that the term “natural rubber” in the appealed claims
reads on a reaction product of natural rubber, protein, and aldehyde.

DECISION
We reverse the Examiner’s decision to reject the appealed claims
under 35 U.S.C. § 103(a) as follows:
(i) claims 1, 3, 6-8, 13, 14, 16, 19-22, 24-26, 28, 29, and 36 as
unpatentable in view of the combined teachings of Lehmann and Milner;
(ii) claims 4, 5, 9-11, 17, 18, 23, 27, and 30 as unpatentable in view of
the combined teachings of Lehmann, Milner, and Yamashita; and
(iii) claim 31 as unpatentable in view of the combined teachings of
Lehmann, Milner, and Jones.

REVERSED

Appeal 2009-003545
Application 11/200,593

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MAT

Ian C. McLeod
McLeod & Moyne, P. C.
2190 Commons Parkway
Okemos MI 48864