Ex Parte Neel et al

Board of Patent Appeals and Interferences

Oct 8, 2009

11213180 (B.P.A.I. Oct. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS NEEL, DAVID W. THOMPSON,
TIMOTHY McDERMOTT, WILLIAM PRIESTLEY, and
BARRY MONAGHAM
____________

Appeal 2009-009907
Application 11/213,180
Technology Center 1700
____________

Decided: October 9, 2009
____________

Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-009907
Application 11/213,180

2
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1 and 27-30 (Appeal Brief filed January 7, 2009, hereinafter “App.
Br.,” at 1; Final Office Action mailed October 29, 2008). We have
jurisdiction under 35 U.S.C. § 6(b).1
We AFFIRM.

STATEMENT OF THE CASE
Appellants’ claimed invention relates to a strandboard incorporating,
inter alia, specified agricultural stalks and phenol formaldehyde resin,
“without the need for expensive MDI resin”2 (Specification, hereinafter
“Spec.,” 1, ll. 10-11; Spec. 2, ll. 19-21). According to Appellants, the
claimed strandboard “provides an economical means of recycling
agricultural waste material,” “is environmentally friendly in that it uses
inexpensive, non-wood sources,” and “is less toxic and expensive than
previous strandboards that require the use of MDI resin” (Spec. 2, ll. 26-30).
Claims 1, 28, and 30 read as follows:
1. A strandboard comprising: soybean plant stalks, said
stalks having a moisture content of 4% by weight or less; from
0.5-2.0% by weight wax; from 10-12% by weight of a phenol
formaldehyde resin component, said strandboard being
substantially free of MDI resin.
28. A strandboard consisting essentially of: soybean
plant stalks having a length of from about 4-8 inches; from

1 This appeal was docketed prior to the filing of an Information Disclosure
Statement on September 17, 2009.
2 While not entirely clear from the subject Specification, it appears that
“MDI resin” may be a term of art or a trade name denoting a commercially
available isocyanate, namely diphenylmethane diisocyanate (Spec. 5, ll. 14-
21; U. S. Patent Publ’n No. 2002/0100565 A1 of Riebel et al., hereinafter
“Riebel ‘565,” published on Aug. 1, 2002, ¶ [0003]).
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about 10-12% by weight of a phenol formaldehyde resin
component, between about 0.5-2.0% by weight wax; whereby
said plant stalks have a moisture content of 4% by weight or
less; said strandboard being substantially free of MDI resin.
30. A strandboard comprising: longitudinally split
soybean plant stalks that do not have a pith, said stalks having a
moisture content of 4% by weight or less; from 0.5-2.0% by
weight wax; from 10-12% by weight of a phenol formaldehyde
resin component, said strandboard being substantially free of
MDI resin.
(App. Br. 13; Claims App’x.)
The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed February 20, 2009, hereinafter
“Ans.,” 7):
Campbell 3,410,813 Nov. 12, 1966
Chiu 6,113,729 Sept. 5, 2000
Riebel ‘565 2002/0100565 A1 Aug. 1, 2002
Appellants rely upon the following as evidence of nonobviousness
(App. Br. 14, Evidence App’x):
Riebel (“Riebel ‘998”) WO 00/25998 May 11, 2000
The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
I. Claims 1 and 27-29 as unpatentable over the combined
teachings of Riebel ‘565 and Chiu (Ans. 8-9); and
II. Claim 30 as unpatentable over the combined teachings of
Riebel ‘565, Chiu, and Campbell (Ans. 9).

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ISSUES
I. Claims 1 and 27-29: Obviousness over Riebel ‘565 and Chiu
Claim 1
The Examiner found that Riebel ‘565 describes every limitation of
claim 1, including the presence of a wax component in the claimed
strandboard, but acknowledges that it does not explicitly describe the recited
amount of wax (“0.5-2.0% by weight wax”) (Ans. 8). To account for this
difference, the Examiner relied on Chiu, which is said to teach composite
panels (e.g., strandboard) from lignocellulosic materials including “up to 2
wt.% wax” for improving water resistance (id.). The Examiner then
concluded that it would have been obvious to one of ordinary skill in the art
to use up to 2% of wax to make the strandboard of Riebel ‘565 in order to
obtain a water resistant product, as suggested by Chiu (id. at 9).
Appellants contend that the claimed “phenol formaldehyde resin
component” does not encompass the acid-catalyzed phenol formaldehyde
resins described in Riebel ‘565 (App. Br. 7-8). Instead, Appellants assert
that persons skilled in the art would have understood “the [claimed] ‘phenol
formaldehyde resin component’ . . . to be the typical ‘alkaline refined’
phenol formaldehyde resin produced with an alkaline catalyst [as described
by Riebel ‘998], not an acid-catalyst resin” (id. at 8-9). Appellants further
assert that the Examiner erred because “Chiu . . . teaches away from
Appellant’s [sic] claimed percentage of [phenol formaldehyde] resin” and
that “[t]he Examiner has not persuasively explained why a person of
ordinary skill in the art would have had a reason to modify the compositions
taught by [Riebel ‘565] and Chiu in a way that would result in the
compositions defined by the claims” (App. Br. 11).
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Thus, the issues arising from the contentions of the Examiner and
Appellants are:
Have Appellants shown reversible error in the Examiner’s finding that
Riebel ‘565 discloses a “phenol formaldehyde resin component,” as required
by claim 1?
Have Appellants shown reversible error in the Examiner’s factual
findings that Riebel ‘565 describes the use of phenol formaldehyde resin in
amounts encompassed by claim 1?
Have Appellants shown reversible error in the Examiner’s
obviousness conclusion, because Chiu would have taught away from the
amounts of phenol formaldehyde resin recited in claim 1?

Claims 28 and 29
With regard to the claim limitation that the strandboard consists
essentially of “soybean plant stalks having a length of from about 4-8
inches,” the Examiner found that Riebel ‘565 discloses that “it [was] known
in [the] prior art[, in a process described by Bach, U.S. Patent No. 5,932,038,
hereinafter “Bach,” that] strands can be split in half and have [a] length
‘preferably 2 inches (50 mm) to 4 inches (100 mm) . . . in order to achieve
structural grade performance’” (Ans. 8). The Examiner then concluded that
“it would [have been] obvious to one of ordinary skill in the art [to] use
strands, split in half and having [a] length up to 4 inches [to make the
strandboard of Riebel ‘565]. . . in order to obtain structural grade material”
(Ans. 11-12).
Appellants contend that Riebel ‘565 teaches away from strands that
are longer than 2 inches in length because Riebel ‘565 “describe[s] his
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strands as having a length of about 0.25 inches to no greater than about 2
inches, with a length of no more than 1.5 inches being preferred” (App. Br.
9).
Thus, the issue arising from the contentions of the Examiner and
Appellants is:
Have Appellants shown reversible error in the Examiner’s conclusion
that it would have been obvious to a person of ordinary skill in the art to use
stalks having a length within the range recited in claims 28 and 29 in the
strandboard of Riebel ‘565 because Riebel ‘565 would have taught away
from such a length?

II. Claim 30: Obviousness over Riebel ‘565, Chiu, and Campbell
The Examiner acknowledged that Riebel ‘565 and Chiu do not
describe the limitation “soybean plant stalks that do not have a pith,” as
recited in claim 30 (Ans. 9). To account for this difference, the Examiner
relied on Campbell, which is said to “teach that ‘[w]hen composition boards
are made from vegetable fibers . . . it has been found necessary to remove
the pith’” because the “‘pith causes high water absorption and contributes
nothing to the strength of the board’” (Ans. 9). The Examiner concluded
that it would have been obvious to one of ordinary skill in the art to remove
pith from the straw of Riebel ‘565 in accordance with Campbell’s teachings
in order to obtain composite strandboard with reduced water absorption
(Ans. 9).
Appellants contend that Riebel ‘565 “teach[es] away from the use of
strands that do not have a pith” because Riebel ‘565 distinguishes its process
from the previous prior art (Bach) described therein and Appellants’
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invention (App. Br. 10). Specifically, Appellants argue that Riebel ‘565
“state[s] the Bach process (i.e., split to effectuate removal of the pith) is
undesirable because it is difficult and/or expensive to scale up to a
commercial level, and further creates an irregularly shaped strand that does
not allow for good surface contact between strands” (id.). Furthermore,
Appellants contend that Riebel ‘565 “teach[es] that the irregularly shaped
strands do not allow for desirable surface contact between strands and that
when pressing into a panel, it undesirable [sic] forms curved strands which
are incapable of lying flat, as required for forming strandboards” (id.).
Thus, the issue arising from the contentions of the Examiner and
Appellants is:
Have Appellants shown reversible error in the Examiner’s conclusion
that it would have been obvious to one of ordinary skill in the art to remove
the piths from the stalks of Riebel ‘565, as suggested by Campbell, because
Riebel ‘565 would have taught away from using strands having no pith?

FINDINGS OF FACT (“FF”)
1. Riebel ‘565 describes a biocomposite panel (i.e., strandboard)
that comprises, inter alia, cellulosic soybean straw (¶¶ [0056]
and [0067]).
2. Riebel ‘565 discloses a non-preferred embodiment comprising
an “acid-catalyzed resin system” as disclosed in Riebel ‘998,
that “can be used in one or more layers of [a] biocomposite
panel,” wherein the system includes a resin (e.g., phenol
formaldehyde) and an acid catalyst for curing the resin (¶
[0099]).
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3. Riebel ‘565 discloses that “[r]esins [e.g., phenol formaldehyde]
employed in biocomposite panels . . . are typically present in an
amount of about 2 weight percent (wt-%) solids to about 10 wt-
% solids . . . based on the total amount of solids in a
biocomposite panel” (¶ [0101]).
4. Riebel ‘565 discloses that the moisture content of the strands
(e.g., soybean plant stalks) is “preferably about 3 wt-% to about
6 wt-%” (¶ [0093]).
5. Riebel ‘565 discloses that wax can be added to biocomposite
panels (i.e., strandboard) for use as a mold release agent and for
providing additional water resistance (¶ [0102]).
6. Riebel ‘565 does not explicitly disclose that the amount of wax
used is in the range 0.5-2.0% by weight, as required in claim 1.
7. Riebel ‘565 does not disclose “soybean plant stalks having a
length of from about 4-8 inches,” as required in claim 28.
8. Riebel ‘565 does not disclose “longitudinally split soybean
plant stalks that do not have a pith,” as required in claim 30.
9. Riebel ‘565 discloses that “[t]he geometry of the straw used in
making the [structural grade board] materials described in [the
prior art] . . . Bach . . . is a strand that is ‘split’ in half, thus
being half of a cylinder (i.e., curved),” wherein the “strands are
preferably 2 inches . . . to 4 inches . . . in length” (¶ [0072]).
10. Riebel ‘565 touts the invention described therein by disclosing
that Bach’s process for splitting straw is “not desirable”
because, inter alia: (i) it is difficult and/or expensive to scale
up; (ii) it creates an irregularly shaped strand that does not
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allow for good or desirable surface contact between strands;
and (iii) when pressing into a panel, it forms curved strands
which are incapable of lying flat, as required for forming
strandboards (App. Br. 10; Riebel ‘565 at ¶ [0013]).
11. Riebel ‘565, however, discloses that the problem with respect to
non-flat or curved strands produced by Bach’s method can be
compensated by using materials with “a significantly higher
density and/or strand lengths” and using “split straws [which
are] oriented, such that the longitudinal axes of the straws are
aligned, to obtain structural grade materials” (¶ [0072]).
12. Riebel ‘998 discloses that phenol formaldehyde resins, used in
oriented strand board, “are typically ‘alkaline refined’ as they
are produced with an alkaline catalyst . . . .” (emphasis added;
p. 4, ll. 2-3 and 11-13).
13. Chiu discloses an exemplary strandboard that comprises, inter
alia, lignocellulosic materials, 2.44% by dry weight phenol
formaldehyde binder, and 0.5%, 1.0%, 1.5%, or 2.0% by dry
weight wax, wherein the wax is a sizing agent that improves
water resistance (col. 1, ll. 28-29; col. 4, ll. 56-57 and 62-67;
col. 9, ll. 44-50 and 55-57; col. 14, ll. 21-23 and 27-29).
14. Chiu does not disclose that manufacturing a strandboard
comprising 10-12% by weight phenol formaldehyde would
result in an inoperative product.
15. Campbell discloses it was known that “[w]hen composition
boards are made from vegetable fibers, particularly bagasse, it
has been found necessary to remove the pith” because, by
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conventional standards, it causes “high water absorption and
contributes nothing to the strength of the board” (col. 2, ll. 25-
33).

PRINCIPLES OF LAW
It is well settled that the United States Patent and Trademark Office
(PTO) is obligated to give claim terms their broadest reasonable
interpretation, taking into account any enlightenment, by way of definitions
or otherwise, found in the specification. In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
“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).
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR, 550 U.S. at 417.
“A known or obvious composition does not become patentable simply
because it has been described as somewhat inferior to some other product for
the same use.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

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ANALYSIS
I. Rejection of Claims 1 and 27-29 as Unpatentable over
Riebel ‘565 and Chiu
Appellants argue the appealed claims together but submit additional
arguments under a separate sub-heading for claims 28 and 29 (App. Br. 6-9).
We address these arguments accordingly by focusing our discussion on
representative claims 1 and 28. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 1
In this case, the Examiner concluded that Riebel ‘565 differs from
claim 1 only in that it does not explicitly disclose the amount of wax to
provide water resistance (FF 1-6). Nevertheless, the Examiner concluded
that it would have been obvious to use wax in amounts encompassed by the
range recited in claim 1 in view of the teachings of Chiu (FF 13). The
Examiner’s obviousness analysis and conclusion have not been shown to be
in error.
We start with claim construction. Claim 1 recites a “phenol
formaldehyde resin component.” Appellants do not direct us to any special
definition in the Specification that restricts the scope of this claim recitation
to be limited to a resin catalyzed by any particular type of catalyst. Thus, we
apply a broad interpretation by construing the recitation to read on any
phenol formaldehyde resin, including phenol formaldehyde resin catalyzed
by any catalyst (e.g., an acid catalyst). See ICON Health and Fitness, 496
F.3d at 1379.
Having construed the disputed claim language, we find no persuasive
merit in Appellants’ contention that the recited “phenol formaldehyde resin
component” would have excluded the phenol formaldehyde resin cured with
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acid catalyst (App. Br. 8-9). Not only is Appellants’ contention
unsubstantiated by sufficient Specification disclosure or other evidence, the
prior art references actually indicate otherwise. Specifically, Riebel ‘565
and Riebel ‘998 collectively suggest that “phenol formaldehyde resin” is not
limited to phenol formaldehyde resin cured with an alkaline catalyst but in
fact also includes phenol formaldehyde resin that is cured with an acid
catalyst (FF 2 and 12). Accordingly, Appellants’ proffered claim
construction has no foundation.
We also find no persuasive merit in Appellants’ contention that Chiu
teaches away from the claimed amount of phenol formaldehyde resin (App.
Br. 11). The Examiner found that Riebel ‘565 teaches the use of phenol
formaldehyde in amounts that overlap with those recited in claim 1, and
Appellant has not shown this finding to be in error (FF 3). While Chiu
discloses 2.44% by weight of phenol formaldehyde resin in an exemplary
strandboard (FF 13), Chiu does not state that 10% by weight phenol
formaldehyde resin would result in an inoperative strandboard (FF 14).
Riebel ‘565, on the other hand, plainly discloses that 10% by weight phenol
formaldehyde resin provides successful results in forming a biocomposite
panel (FF 3). Thus, contrary to Appellants’ belief, the teachings of Riebel
and Chiu are complementary and do not teach away from the claimed
invention.
For these reasons, Appellants have not shown reversible error in the
Examiner’s rejection of claim 1.

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Claim 28
Appellants’ assertion that Riebel ‘565 teaches away from the use of
strands longer than 2 inches is also unpersuasive (App. Br. 9).
The Examiner found that while Riebel ‘565 does not disclose soybean
plant stalks of 4-8 inches, it discloses that such a length is known in the prior
art (Bach), whereby “strands can be split in half and have [a] length
‘preferably 2 inches (50 mm) to 4 inches (100 mm) . . . in order to achieve
structural grade performance’” (Ans. 8; FF 7 and 9). Because Appellants
have not shown error in this finding, we agree with the Examiner that a
person having ordinary skill in the art would have found it obvious to use
soybean plant stalks having a length of 4 inches, which is within the claimed
range of “from about 4-8 inches,” in the biocomposite panels taught by
Riebel ‘565 because such a length was a known strand length for structural
grade materials. While Riebel ‘565 criticizes the strand lengths produced by
Bach as somewhat inferior (FF 10 and 11), Riebel ‘565 does not state that 4
inch strand lengths would result in an inoperative or unusable strandboard.
See Gurley, 27 F.3d at 553.

II. Rejection of Claim 30 as Unpatentable over Riebel ‘565, Chiu, and
Campbell
Appellants contend that the disclosure in Riebel ‘565 of certain
disadvantages arising from splitting straw as described by Bach (to
effectuate removal of the pith) shows that Riebel ‘565 teaches away from the
claimed invention (App. Br. 9-10; FF 10). Appellants’ contention is
unpersuasive to show Examiner error.
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The Examiner found that Campbell teaches removing the pith when
making composition boards from vegetable fibers “in order to . . . reduce[
the] possibility of water absorption” (Ans. 9; FF 15). Because Appellants
have not shown error in this finding, we agree with the Examiner that one of
ordinary skill in the art would have found it obvious to apply Campbell’s
technique of removing pith from vegetable fibers when making composition
boards suggested by the combination of Riebel ‘565 and Chiu, thus arriving
at a strandboard encompassed by claim 30 (FF 1-6, 8, 9, 11, 13, and 15).
KSR, 550 U.S. at 417.
Again, we find no merit in Appellants’ contention that the Examiner
erred in concluding obviousness because the claimed invention was
described as somewhat inferior to another product. See Gurley, 27 F.3d at
553. While Appellants assert that splitting the soybean plant stalks to
remove the pith was recognized as undesirable due to cost and irregularly
shaped strands (FF 10), Appellants have not shown any discovery beyond
what would have been expected from the prior art. Rather, it appears that
Appellants are merely accepting the known disadvantages of the prior art.
Moreover, Riebel ‘565 discloses that structural grade materials can be
achieved with Bach’s splitting process by using higher density and/or strand
lengths and aligning the longitudinal axes of the straws (FF 11). Thus, a
person of ordinary skill in the art would have simply compensated for
conditions resulting from splitting the straw to remove the pith.

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CONCLUSION
Rejection I
Appellants have not shown reversible error in the Examiner’s finding
that Riebel ‘565 discloses a “phenol formaldehyde resin component,” as
required by claim 1.
Appellants have not shown reversible error in the Examiner’s factual
finding that Riebel ‘565 describes the use of phenol formaldehyde resin, as
required by claim 1.
Appellants have not shown reversible error in the Examiner’s
obviousness conclusion of claim 1 by demonstrating that Chiu would have
taught away from the recited amounts of phenol formaldehyde resin.
Appellants have not shown reversible error in the Examiner’s
obviousness conclusion of claims 28 and 29 by demonstrating that Riebel
‘565 teaches away from a length of from about 4-8 inches.

Rejection II
Appellants have not shown reversible error in the Examiner’s
obviousness conclusion of claim 30 by demonstrating that Riebel ‘565
would have taught away from using strands having no pith.

DECISION
The Examiner’s rejections under 35 U.S.C. § 103(a) of:
I. claims 1 and 27-29 as unpatentable over Riebel ‘565 and
Chiu; and
II. claim 30 as unpatentable over Riebel ‘565, Chiu, and
Campbell
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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)(v).

AFFIRMED

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