Ex Parte Pons Y Moll et al

Patent Trial and Appeal Board

Jun 1, 2017

12937307 (P.T.A.B. Jun. 1, 2017)

United States Patent and Trademark Office
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.
12/937,307 01/03/2011 Olivier Pons Y Moll 368375US99PCT 1759
22850 7590 06/05/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
HEINCER, LIAM J
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
06/05/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLIVIER PONS Y. MOLL, BORIS JAFFRENNOU, and
JEROME DOUCE
Appeal 2015-003564
Application 12/937,3071
Technology Center 1700
Before ROMULO H. DELMENDO, GEORGE C. BEST, and
JENNIFER R. GUPTA, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter “Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 1,3,5,
6, 8—11, 13, 14, 17—25, and 27—30.2 We have jurisdiction under 35 U.S.C.
§ 6(b).3
We affirm.
1 The real party in interest is identified as “SAINT-GOBAINISOVER”
(Appeal Brief filed on October 20, 2014, hereinafter “Br.,” 2).
2 Br. 5—17; Final Office Action (notice emailed on March 18, 2014),
hereinafter “Final Act.,” 2—6; Examiner’s Answer (notice emailed on
December 9, 2014), hereinafter “Ans.,” 2—8.
3 We heard oral arguments from the Appellants’ representative on May 25,
2017.
Appeal 2015-003564
Application 12/937,307
BACKGROUND
The subject matter on appeal relates to a product comprising mineral
fibers sized with a sizing composition having a low free formaldehyde
content (Specification, hereinafter “Spec.,” 1,11. 5—7). Representative
claim 1 is reproduced from the Appeal Brief (Claims App’x i), as follows:
1. A product, comprising mineral fibers sized with a sizing
composition, wherein said sizing composition comprises:
a liquid phenolic resin having a pH of less than 6 and a
free formaldehyde content, expressed with respect to the total
weight of liquid, of 0.1 % or less; and
an extender,
wherein the liquid phenolic resin consists essentially of
phenol-formaldehyde and phenol-formaldehyde-amine
condensates, the said amine in the phenol-formaldehyde-amine
condensate is an alkanolamine, and
wherein the extender is selected from the group consisting
of a carbohydrate, a lignin derivative, an animal protein, and a
plant protein.
REJECTIONS ON APPEAL
On appeal, the Examiner maintains two rejections under pre-AIA
35U.S.C. § 103(a):
I. Claims 1, 3, 5, 6, 8—11, 13, 14, 17—22, and 30 as
unpatentable over Tetart et al. (US 5,340,903, iss.
Aug. 23, 1994; hereinafter “Tetart ’903”) in view of
Tetart (US 2006/0128888 Al, pub. June 15, 2006;
hereinafter Tetart ’888), MacPherson et al. (US
4,339,361, iss. July 13, 1982; hereinafter “MacPherson”),
and Walisser et al. (US 5,952,440, iss. Sept. 14, 1999;
hereinafter “Walisser”); and
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Application 12/937,307
II. Claims 23—25 and 27—29 as unpatentable over
Tetart ’903 in view of Tetart ’888, MacPherson, and
Walisser.4
(Ans. 2—6; Final Act. 2—6.)
DISCUSSION
The Appellants rely on the same arguments for both rejections (i.e.,
for all claims on appeal) (Br. 5—17). Therefore, we confine our discussion to
claim 1, which we select as a representative claim pursuant to 37 C.F.R.
§ 41.37(c)(l)(iv).5
The Examiner finds that Tetart ’903 describes a sizing composition
(for mineral fibers) including all the limitations recited in claim 1 except for
three differences:
(1) Tetart ’903 teaches the free formaldehyde content to be less than
0.5% rather than “0.1% or less,” as specified in claim 1;
(2) Tetart ’903 teaches a urea extender rather than an “extender . . .
selected from the group consisting of a carbohydrate, a lignin derivative, an
animal protein, and a plant protein,” as specified in claim 1; and
(3) Tetart ’903 does not teach “a pH of less than 6” for the liquid
phenolic resin, as specified in claim 1, during formation of the mineral fiber
product (Ans. 2—3; Final Act. 2—3).
4 As the Appellants appreciate (Br. 5, n. 1), it appears that Walisser was
inadvertently omitted from the heading (i.e., the statement of the rejection)
for Rejection II.
5 Merely pointing out what a claim recites or what a reference does not
disclose or suggest is not an argument in compliance with the rule. In re
Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011).
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Application 12/937,307
To resolve these differences, the Examiner relies on additional
teachings found in Tetart ’888, MacPherson, and Walisser, respectively (id.).
Based on the prior art’s collective teachings, the Examiner concludes that a
person having ordinary skill in the art would have combined the references
in the manner claimed by the Appellants (id.).
The Appellants’ principal contention is that Walisser teaches alkaline
phenol-formaldehyde resin that “is storage stable and has a high water
tolerance under conditions of applying the resin” (Br. 10 (citing Walisser,
col. 1,11. 5—8; col. 3,1. 64—col. 4,1. 2)). According to the Appellants,
Walisser teaches away from an acidic pH (i.e., “a pH of less than 6” as
recited in claim 1) because a binder having an acidic pH (i.e., a pH of 5.0) is
disclosed as being unstable (id. at 13—14 (citing Walisser, Example 2 and
Table 2)). The Appellants acknowledge that “[wjhile Walisser does indicate
that the latent acid should be added in an amount sufficient to bring the pH
of the binder below 6 during the ‘C-stage cure’ . . . upon evaporation of the
ammonia, these modifications result in a dried or cured resin” and not a
“liquid phenolic resin having a pH of less than 6,” as specified in claim 1 (id.
at 14 (citing Walisser, col. 8,11. 57—64)).
We do not find the Appellants’ argument persuasive. As the
Examiner correctly notes (Ans. 6—7), claim 1 recites a “product. . .
comprising mineral fibers sized with a sizing composition’'’ (emphasis
added). Therefore, it is appropriate to construe the disputed phrase “a liquid
phenolic resin having a pH of less than 6” as specifying the pH at the time of
sizing (i.e., at the C-stage cure). Under that reasonable construction, we find
no error in the Examiner’s finding that Walisser would have suggested a pH
of less than 6 for the binder, which would be in aqueous form, at the time of
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Application 12/937,307
sizing (i.e., at the C-stage cure). Specifically, Walisser teaches that
sufficient latent acid is added “so that upon evaporation of the ammonia, the
acid which remains will neutralize the alkaline catalyst in the resin and then
be sufficient to bring the pH down to below 6 during the C-stage cure”
(col. 8,1. 60-64). Rather than teach away, Walisser teaches that this
“accelerates the cure of resin in the binder” and also enables the amine
(melamine) component of the resin to scavenge more of the formaldehyde
that may be released during the subsequent curing of the resin in the binder
(col. 9,11. 5—11). Thus, although (i) Tetart ’903 teaches neutralizing the
reaction mixture (during binder formation) to a pH ranging from
approximately 7.0 and 8.5 and adding urea to fix the unreacted
formaldehyde (col. 6,11. 9—14) and (ii) Walisser teaches that the binder
should be maintained at a relatively high pH for storage stability (Example
2; Table 2), Walisser would have nonetheless provided the requisite
motivation or reason to lower the pH to a value below 6 in order to
accelerate the C-stage cure and also scavenge formaldehyde that may be
released.
We find no merit in the Appellants’ position that Walisser teaches a
pH of less than 6 for the cured binder and not a liquid binder (Br. 15). As
the Examiner explains (Ans. 7), it is well known that pH indicates the
concentration of hydrogen ions in an aqueous composition. That finding has
not been rebutted (e.g., by way of a reply brief).
The Appellants also argue that the limitation “wherein the liquid
phenolic resin consists essentially of’ excludes Tetart ’903’s urea extender
(Br. 8 (citing Tetart ’903, Example 4)). Consistent with the Examiner’s
findings and analysis (Final Act. 3; Ans. 6), MacPherson teaches that sugar-
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Application 12/937,307
type extenders (i.e., carbohydrate extenders) may replace some of the amide
or amine extenders (e.g., urea extenders) as “inexpensive and effective
extenders” (col. 2,11. 29-36). Composition with such sugar-type extenders
are said to exhibit “exceptionally good wet and dry tensile strength
properties with minimal change to the gel time and minimal curing losses”
(col. 4,11. 48—57). Therefore, a person having ordinary skill in the art would
have been prompted to replace some of Tetart ’903 ’s urea extender with a
sugar-type extender in order to obtain the advantages disclosed in
MacPherson. The Appellants’ conclusory statement that the claim language
“consists essentially of’ necessarily excludes urea is unavailing because they
fail to direct us to evidence indicating that urea would materially affect the
basic and novel characteristics of the claimed product. Indeed, the
Examiner’s proposed combination is wholly consistent with the Appellants’
description that urea extender may also be included (Spec. 7,11. 12—26).
See, e.g., In re Herz, 537 F.2d 549, 551-52 (CCPA 1976).
For these reasons and those given by the Examiner, we sustain the
Examiner’s rejections.
SUMMARY
Rejections I and II are sustained. Therefore, the Examiner’s final
decision to reject claims 1,3,5, 6, 8—11, 13, 14, 17—25, and 27—30 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)(1).
AFFIRMED
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