Ex Parte Shooshtari et al

Board of Patent Appeals and Interferences

Mar 12, 2012

11322985 (B.P.A.I. Mar. 12, 2012)

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.
11/322,985 12/30/2005 Kiarash Alavi Shooshtari 7526 6008
29602 7590 03/12/2012
JOHNS MANVILLE
10100 WEST UTE AVENUE
PO BOX 625005
LITTLETON, CO 80162-5005
EXAMINER
HEINCER, LIAM J
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
03/12/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KIARASH A. SHOOSHTARI and
JAWED ASRAR
____________

Appeal 20011-006671
Application 11/322,985
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal under 35 U.S.C. § 134 (2002) involving claims to a
fiberglass binder comprising a cured benzohydro-benzofurane. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
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THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A curable composition for use in the binding of fiberglass
comprising a benzohydro-benzofurane reaction product of a multi-
aldehyde or multi-ketone and a phenolic compound which upon
heating is capable of forming a water-insoluble cured benzohydro-
benzofurane binder which exhibits good adhesion to glass.

THE REJECTIONS
The Examiner relied on the following as evidence of unpatentability:
Malhotra et al. US 6,646,094 B1 Nov. 11, 2003
Akar et al., “Condensation Polymers From Diphenols and Glyoxal,” Eur.
Polym. J. 31(1), 9-14 (1995).
The following rejections are before us for review:
1. Claims 1-27 stand rejected as failing to comply with the written
description requirement of 35 U.S.C. § 112, first paragraph.
2. Claims 1-3 and 6-11 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Akar.
3. Claim 28 stands rejected under 35 U.S.C. § 102(b) and § 103 as
anticipated by or obvious in view of Malhotra.
FINDINGS OF FACT
We rely on and adopt the Examiner’s factual findings stated in the
Examiner’s Answer filed December 8, 2010. Additional findings of fact
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may appear in the Analysis below. Our decision will make reference to the
Examiner’s Answer filed December 8, 2010 (“Ans.”) and the Appellants’
Appeal Brief filed September 30, 2010 (“App. Br.”).

ANALYSIS
The rejection of claims 1-27 as failing to comply with the written
description requirement of 35 U.S.C. § 112, first paragraph.

The Appellants argue claims 1-27 as a group (App. Br. 4-6). We
select independent claim 1 (see supra) as the representative claim for this
group. The remaining claims stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).
Claim 1 is directed to a curable composition for use in the binding of
fiberglass comprising a reaction product formed by reacting a multi-
aldehyde or multi-ketone with a phenolic compound. The reaction product
is formed by heating the reactants in an acidic or basic aqueous medium to
form a “flowable and curable composition.” Spec. at 6. That “flowable and
curable composition” contains the reaction product that is the subject of
claim 1. The reaction product so obtained is capable of being cured, for
example, by spraying the reaction product onto glass fibers and heating the
fibers to form a water-insoluble cured benzohydro-benzofurane binder
adhering to the glass. Spec. at 6-7 and Example 1. For the purposes of our
discussion, it is helpful to keep in mind that the curable “reaction product” is
distinct from the “cured benzohydro-benzofurane binder” recited in claim 1.
The rejection turns on whether the Specification supports the term
“benzohydro-benzofurane reaction product” in claim 1. As originally filed,
claim 1 simply required a “reaction product of a multi-aldehyde or multi-
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ketone and a phenolic compound.” In an Amendment dated August 27,
2008, claim 1 was modified to specify “a benzohydro-benzofurane reaction
product of a multi-aldehyde or multi-ketone and a phenolic compound.”
(emphasis added). We agree with the Examiner that the amended claim,
requiring “a benzohydro-benzofurane reaction product,” runs afoul of the
written description requirement of Section 112.
The Specification is silent regarding the chemical structure of the
reaction product of claim 1. The Specification identifies the reaction
product exclusively in terms of (1) the reactants that are combined to form
the reaction product, namely, a multi-aldehyde or multi-ketone and a
phenolic compound; and (2) the capability of the reaction product to be
cured by heating to form a benzohydro-benzofurane binder that exhibits
good adhesion to glass. See, e.g., Spec. at 4-6 and Example 1.
The Appellants argue that the phrasing “cured benzohydro-
benzofurane binder” in claim 1 implies to an ordinary artisan that the
precursor compound is a benzohydro-benzofurane (App. Br. 5-6). However,
the Examiner observed, and we agree, that “[a]ll that can be reasonably read
into the statement is that the binder is a benzohydro-benzofurane and that the
binder has undergone a curing step. The nature of the compound prior to
curing is not established.” (Ans. 7) (emphasis added).
On September 30, 2008, the Appellants added to the record a figure
depicting the formation of a benzohydro-benzofurane compound, which was
not submitted with the original application, and which the Appellants now
advance in support of its view that the Specification complies with the
written description requirement of Section 112 (App. Br. 5). The added
figure was not submitted with the original Specification and does not
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demonstrate that the inventors, at the time the application was filed, were in
possession of the claimed “benzohydro-benzofurane reaction product.”
In any event, the reaction scheme depicted in the added figure makes
abundantly clear that a compound containing furane rings is not formed until
after the reaction product is cured via heating (App. Br. 5). Referring to that
reaction scheme, the Examiner correctly concluded that “[t]he intermediate
product does not contain furane rings and cannot be considered to be a
benzohydro-benzofurane product” (Ans. 6). In sum, the reaction scheme
advanced by the Appellants does not support a conclusion that the uncured
reaction product of claim 1 contains furane rings as one would expect in a
“benzohydro-benzofurane” compound.
Significantly, the Specification nowhere refers to the uncured reaction
product as a “benzohydro-benzofurane.” Where the reaction product is
described, the Specification simply lists a number of possible multi-aldehyde
and multi-phenol compounds suitable for use in the reaction. Spec. at 5.
None of the examples teach that furane rings are formed prior to curing.
Spec. at 7-10. On the contrary, the Specification describes only the final
cured binder as a benzohydro-benzofurane. Spec. at 7-10.
The Specification teaches, and the plain language of claim 1 requires,
that the reaction product at issue must be capable of forming a benzohydro-
benzofurane binder upon curing with heat. If the reaction product is itself a
benzohydro-benzofurane compound prior to heating, it would not be readily
curable as required by the claim. See Ans. 7 (Examiner’s finding that a
benzohydro-benzofurane compound will not itself readily undergo a curing
reaction). The Specification describes a reaction product that readily
undergoes curing. See, e.g., Spec. at 7 and Example 1. The Appellants do
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not address or refute the disconnect between the easy-to-cure reaction
product described in the Specification, and the hard-to-cure reaction product
(a “benzohydro-benzofurane” reaction product) advanced in its brief.
We are not persuaded by the Appellants’ argument that the curing step
of the invention is in fact a process of crosslinking a benzohydro-
benzofurane compound (App. Br. 6). The Specification makes plain that
curing is not the same as crosslinking. See Spec. at 7 (“During the curing,
crosslinking also takes place.”) (emphasis added); see also Ans. 7 (where
the Specification distinguishes curing from crosslinking, “one cannot
reasonably read that the curing step is actually crosslinking of previously
formed cured products, i.e. the benzohydro-benzofurane”).
Where the Specification nowhere discloses the chemical structure of
the reaction product prior to curing, we agree with the Examiner that the
claims at issue contain subject matter – namely, a “benzohydro-benzofurane
reaction product” -- that was not described in the Specification in such a way
as to reasonably apprise one skilled in the art that the inventors, at the time
the application was filed, were in possession of the claimed invention. We,
therefore, affirm the rejection for failure to comply with the written
description requirement of Section 112.

The rejection of claims 1-3 and 6-11 under 35 U.S.C. § 102(b) as
anticipated by Akar.

The Appellants argue claims 1-3 and 6-11 as a group (App. Br. 7).
We select claim 1 (see supra) as the representative claim for this group, and
the remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
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The Appellants do not dispute that Akar discloses a reaction product
formed by reacting a multi-aldehyde with a phenolic compound (App. Br.
7). See Akar 9 (disclosing glyoxal and 2,6 dishydroxynaphthalene as
reactants). Akar employs the very same reactants that were chosen by the
Appellants in the instant invention. See Spec. at 5 and Claims 3, 6
(disclosing glyoxal and 2,6 dihydroxynaphthalene as reactants). The
Appellants attempt to distinguish Akar on the ground that the reaction in the
reference takes place in the presence of strong acid catalysts (App. Br. 7).
See Akar (describing the use of “strong acidic catalysts such as . . . sulphuric
acid”). But as the Examiner correctly points out, the instant application
teaches a reaction in the presence of the very same acidic catalysts (Ans. 7).
See Spec. at Example 7 (adjusting pH to 4.0 by the presence of sulphuric
acid).
We reject the Appellants’ attempt to distinguish Akar based on
features of the invention that are not recited in the claims. For example, the
Appellants assert that the reaction product of Akar, described as a polymer
or oligomer, is distinguishable from the reaction product at issue in this case
(App. Br. 7). The claims at issue do not preclude polymers or oligomers.
Where Akar teaches a reaction product formed from the same reactants that
are recited in the Appellants’ application, the Examiner correctly concluded
that the reaction product at issue here and the reaction product disclosed in
Akar inherently share the feature of being curable by heat. In re Spada, 911
F.2d 705, 709 (Fed. Cir. 1990) (“Products of identical chemical composition
cannot have mutually exclusive properties.”) Where no persuasive argument
or evidence as to error has been brought forward by the Appellants, we
affirm the rejection under Section 102(b).
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The rejection of claim 28 under 35 U.S.C. § 102(b) and § 103 as
anticipated by or obvious in view of Malhotra.

Claim 28 reads as follows: “A formaldehyde-free fiberglass product
comprised of glass fibers bound with a water insoluble cured benzohydro-
benzofurane binder.” This claim was rejected in view of Malhotra on the
grounds of anticipation or single-reference obviousness. Malhotra is
directed to a binder for mineral fiber insulation materials, “such as insulative
glass fiber batts for walls, in roofs and ceilings, insulative coverings for
pipes and the like.” Although the preferred embodiment of Malhotra is
directed to a binder containing formaldehyde, the reference plainly discloses
a formaldehyde-free binder product formed by reacting glutaraldehyde and
phenol. Col. 5, ll. 53; Col. 6 l. 7. These two reactants are described in the
Appellants’ Specification at page 5, and the Appellants nowhere dispute that
the reaction product formed from these two reactants is formaldehyde-free.
Malhotra further discloses spraying the reaction product onto glass fibers
“and then curing the binder at an elevated temperature.” Col. 5, ll. 29-30.
The Appellants argue that the reaction product of Malhotra is a
“resin” that “is not a water-insoluble cured benzohydro-benzofurane binder.”
App. Br. 8 (emphasis in original). The Appellants, however, have not
demonstrated that the claim terms preclude a “resin” as the reaction product.
Furthermore, nothing in the relied-upon evidence suggests that the reaction
product recited in the claim is water-insoluble. It is the cured benzohydro-
benzofurane binder that is water-insoluble according to the present
invention. The Appellants state that curing the Malhotra reaction product
“to create a binder would necessarily result in a different binder than that
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obtained upon the curing of a benzohydro-benzofurane.” The Appellants,
however, have come forward with no persuasive argument or evidence to
support that statement.
While Malhotra does not refer to its binder as a “benzohydro-
benzofurane” binder, the reference recites reactants identical to those
disclosed in the Appellants’ application, and further discloses reaction and
curing conditions that are identical or nearly identical to the conditions set
forth in the instant application. Under these circumstances, the formation of
the “cured benzohydro-benzofurane binder” of Claim 28 is inherently
disclosed in Malhotra. See In re Best, 562 F.2d 1252, 1255 (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.”).
The Examiner correctly observes that, as a practical matter, “the
Patent Office is not equipped to manufacture products by the myriad of
processes put before it and then obtain prior art products and make physical
comparisons therewith.” Ans. 9 (quoting In re Brown, 459 F.2d 531, 535
(CCPA 1972). Where the Examiner came forward with a prior art reference
that describes a product that reasonably appears to be either identical with or
only slightly different than the product of Claim 28, the burden shifted to the
Appellants to come forward with evidence to establish an unobvious
difference between the claimed fiberglass product and the prior art fiberglass
product disclosed in Malhotra. In re Marosi, 710 F.2d 798, 802 (Fed. Cir.
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1983). No persuasive argument or evidence as to error in the rejection
having been made, we sustain the rejection.

CONCLUSION
The Examiner did not err in rejecting claims 1-28, therefore, we
AFFIRM.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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