Ex Parte 7799909 et al

Patent Trial and Appeal Board

Mar 1, 2016

95002240 (P.T.A.B. Mar. 1, 2016)

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.
95/002,240 09/13/2012 7799909 062553.013000 3670
25541 7590 03/01/2016
NEAL, GERBER, & EISENBERG
SUITE 1700
2 NORTH LASALLE STREET
CHICAGO, IL 60602
EXAMINER
JONES, DWAYNE C
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
03/01/2016 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 PATENT TRIAL AND APPEAL BOARD
____________

INGREDION INCORPORATED
Requester

v.

LENLO CHEM, INC.
Patent Owner and Appellant
____________

Appeal 2015-007853
Reexamination Control 95/002,240
Patent 7,799,909 B2
Technology Center 3900
____________

Before CHUNG K. PAK, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
Patent Owner, LenLo Chem, Inc. (Patent Owner Appeal Br. 1, dated
December 24, 2014 (“PO App. Br”)), appeals the Patent Examiner’s
decision to reject claims 8-10 and 17 of U.S. Patent 7,799,909 B21 (“the

1 US Patent 7,799,909 B2, issued September 21, 2010, to Leonard T. Lewis.
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Patent 7,799,909 B2

’909 patent”) under 35 U.S.C. § 103(a) as unpatentable over Wolff2 in view
of Billmers3 or Whistler.4 The Board’s jurisdiction for this appeal is under
35 U.S.C. §§ 6(b), 134, and 315 (pre-AIA). We AFFIRM.
I. BACKGROUND
The ’909 patent is directed to a method of preparing a hydrophobic
starch having a near-neutral dry product pH by neutralizing an aqueous
siliconate mixture with an acid either before or after combining the
siliconate mixture with the starch. ’909 patent, col. 2, ll. 25–46. The treated
starch is then filtered “preferably without washing” and dried to form a
hydrophobic starch product. Id. and col. 5, ll. 60-67. According to the
patent, “[d]rying promotes polymerization of the siliconate, which provides
and/or contributes to free-flowing and hydrophobic attributes.” Id. at col. 5,
ll. 45–47.
Third-Party Requester, Ingredion Incorporated (Requester Respondent
Br. 2, dated January 26, 2015, (“Req. Res. Br.”)), requested inter partes
reexamination for claims 1–10 and 17 of the ’909 patent on September 13,
2012, of which claims 7–10 and 17 were subject to reexamination. See
Right of Appeal Notice 1, mailed September 26, 2014 (“RAN”). Claim 7
was canceled during reexamination. Claims 8–10 and 17 are pending and
stand rejected. These claims have not been amended during reexamination.

2 US Patent 2,961,339, issued November 22, 1960, to Ivan A. Wolff.
3 US Patent 5,672,699, issued September 30, 1997, to Robert L. Billmers et
al.
4 Whistler, R.L., et al., eds., Starch: Chemistry and Technology, 2nd Ed., 214
and 216–219, Academic Press, Inc. (1984).
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Patent 7,799,909 B2

Claim 8 is the sole independent claim on appeal and reads as follows:
8. A hydrophobic starch composition comprising a reaction
product of a starch and a siliconate, and having a dry product
pH that is between 5 and 9 and having a moisture content from
6% to 15%.
Claims 9 and 10 depend from claim 8 but further narrow the range of pH to
“between 6 and 9” and “at least 6.9 and at most 7.6,” respectively. Claim 17
also depends from claim 8 but further narrows the moisture content to “from
10% to 13.5%.”
THE REJECTIONS
The Examiner maintains the rejections of claims 8–10 and 17 under
35 U.S.C. § 103(a) as unpatentable over Wolff in view of Billmers or
Whistler.
Wolff teaches a process for forming a hydrophobic starch. According
to Wolff, rendering starches hydrophobic by applying alkyl siliconates
results in a starch that is water-repellant but undesirably alkaline. Wolff,
col. 1, ll. 63–65. Wolff discovered that
if granular starch is first treated with an aqueous solution of the
alkali metal salt of alkyl siliconates such as sodium methyl
siliconate and then permitted to air dry at approximately room
temperature, the surface of the granules are in a quite
remarkably peculiar condition. The water-repellent or
hydrophobic quality appears to be fixed on the dried granules
by some interactive change occurring between the starch
surface and the alkyl siliconate during the drying period.
However, the alkalinity associated with the granules treated in
this way is not fixed, but may be removed entirely by
subsequently washing with water.
Wolff, col. 2, ll. 3–14.
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Patent 7,799,909 B2

Wolff teaches that the resulting modified starch “is not only water-
repellent, but is also completely free of undesirable alkalinity.” Wolff, col.
2, ll. 20–21. Accordingly, the Examiner finds that the pH of the resulting
hydrophobic starch product “would reasonably be expected to equal or
resemble the pH of the washing water,” in other words, “neutral to mildly
acidic (pH 6 to 7).” RAN 5.
The Examiner also recognizes that Wolff is silent as to the moisture
content of starch granules, prepared in accordance with Wolff, i.e., that were
air-dried “at approximately room temperature.” Id.; Wolff, col. 2, ll. 6–7
and ll. 50–64, Table I, Treatment 3.
Billmers is directed to a process for preparation of a hydrophobic
starch by reacting starch with an organic acid anhydride at an acidic pH. See
Billmers, col. 1, ll. 53-57. However, Billmers is relied upon by the
Examiner for a teaching in its background section of a “dry method” of
preparing a modified hydrophobic starch “using starch in the commercially
dry form, i.e., starch having moisture content of approximately 5 to 20%,” as
described in U.S. Patent 2,661,349 issued December 1, 1953, to Caldwell et
al. (hereinafter “Caldwell”). RAN 5-6; see Billmers, col. 1, ll. 11–24.
Caldwell describes blending a commercially dry starch having a moisture
content of approximately 5% to 20% with an alkaline material and sprayed
with an alkenyl succinic anhydride thinned by mixing with toluene, and
heating the mixture. Caldwell, col. 5, ll. 21–31; col. 8, l. 68 to col. 9, l. 2.
The Examiner determines that it would have been obvious for the
skilled artisan to produce a hydrophobic starch having a moisture content as
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Patent 7,799,909 B2

taught by Billmers because this range represents commercially known
moisture content levels with decreased drying times. RAN 6.
Whistler is a technical reference directed to the chemistry and
technology of starch. Whistler, Title. The Examiner relies upon Figure 17
on page 216 of this reference which is reproduced below.

Figure 17 of Whistler depicts a graphical representation comparing
water vapor sorbtion (in g of water per 100 g of polysaccharide) for corn
starch and cellulose at relative humidity from close to zero percent to nearly
100%. See Whistler 216, Figure 17 caption.
The Examiner finds that Whistler describes that the moisture content
of corn starch ranges “between about 5% (5 gm of water/100 gm of starch)
to about 20% (20 gm of water/100 gm of starch) over a broad range of
relative humidity (about 10% to about 90%).” RAN 8. As with Billmers,
the Examiner determines that it would have been obvious for the skilled
artisan to produce a hydrophobic starch having a moisture content as taught
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Patent 7,799,909 B2

by Whistler because this range represents commercially known moisture
content levels with decreased drying times. RAN 8. In other words, Fig. 17
of Whistler evinces that commercially “dried” starch would nonetheless
have a moisture content between about 5% and about 20% depending upon
the relative humidity.
The dispositive issue on appeal is: based on a preponderance of the
evidence, did the Examiner err in determining that a hydrophobic starch
product having a dry pH and a moisture content as recited in the claims
would have been obvious to one of skill in the art at the time of the invention
based on the teachings of Wolff and either Billmers or Whistler?
pH ranges
The claims of the ’909 patent recited pH ranges of “between 5 and 9,”
“between 6 and 9” and “at least 6.9 and at most 7.6.”
The Patent Owner disputes the Examiner’s finding that the
hydrophobic starch product of Wolff would have a pH that resembles that of
the wash water (from 6 to 7), and asserts that a modified starch product of
Wolff would have a “dry product” pH of greater than 10. PO App. Br.
17-19. Patent Owner and Requester agree that, although Wolff describes a
product in which “the alkalinity associated with the granules . . . may be
removed entirely by subsequently washing with water” and “is completely
free of undesirable alkalinity” (Wolff, col. 2, ll. 12–14 and 19–21), Wolff
does not expressly describe the final dry pH of its alkaline-free hydrophobic
modified starch product.
Patent Owner relies on the declaration testimony of Mr. Leonard
Lewis, who has over 30 years of experience in the area of modified starch
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products and is qualified to testify as to the state of the art at the time of the
invention.5 Lewis Decl. ¶¶ 4–6 and Attachment A (curriculum vitae).
Mr. Lewis testifies that “Wolff is incorrect in stating that Treatment 3
produces a non-alkaline siliconate treated starch, as shown by testing that I
personally conducted and had confirmed by an independent laboratory.” Id.
¶ 11. Mr. Lewis describes performing Wolff’s Treatment 3 procedure,
washing the hydrophobic starch after air drying with 820 ml of tap water and
achieving a pH of 10.10. Id. ¶ 17. Mr. Lewis states that the sample was also
sent for independent confirmation, using a process that measured pH in an
isopropyl alcohol solution, which reported a pH of 10.60. Id. Mr. Lewis
then describes performing a second similar procedure, wherein the
hydrophobic starch was washed after air drying with 1000ml of tap water
and a pH of 10.06 was achieved (which were independently verified as a pH
of 10.53). Id. ¶ 18.
Mr. Lewis testifies that his testing is consistent with the language in
Canadian Patent 726,667, issued January 25, 1966, to Speakman, which in
referring to Wolff states “[e]ven after washing and redrying, the products
exhibit a high alkalinity.” Speakman, ¶ spanning pp. 1–2; Lewis Decl. ¶¶
14–15. This language is quoted in the ’909 Patent. See ’909 patent, col. 1,
ll. 59-61.
Requester argues that Mr. Lewis’ test confirms a reduction in
alkalinity when washing with water and that it is possible to remove all the

5 We note that Mr. Lewis is the inventor of the ’909 patent and the owner of
LenLo Chem, Inc., the Patent Owner in this reexamination, and thus the
weight we apply to Mr. Lewis’ testimony must take into consideration that
Mr. Lewis is an interested party in this reexamination. Lewis Decl. ¶ 3.
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alkalinity of the hydrophobic starch when a sufficient amount of water is
provided. Req. Res. Br. 10–11. Requester relies on the testing performed
by Mr. Shawn Branning, who testifies to at least 8 years of work in the area
of modified starches, namely for use in biodegradable compositions
containing hydrophobic starches.6 Second Branning Decl. ¶¶ 1, 2, and 7.
Accordingly, Mr. Branning is also qualified to testify as to the state of the art
at the time of the invention.
Mr. Branning opines that the lack of disclosure of the amount of wash
water in Wolff would have suggested to the skilled artisan to use “a
sufficient quantity of water to remove all the alkalinity of the siliconated
starch.” Second Branning Decl. ¶¶ 23, 24. To support this position, Mr.
Branning testifies that he supervised testing “following the teachings of
Treatment 3 of Example 1 of Wolff.” Id. ¶ 29. Mr. Branning’s testing
procedure used 4000 ml of wash water instead of 820 ml or 1000 ml used by
Mr. Lewis. Id. Mr. Branning testifies that the final pH of the starch product
was 6.92. Id.
Mr. Branning further supports Requester’s argument by pointing out
that, even in Mr. Lewis’ testing, “washing a siliconated starch with water
does release alkalinity because the pH of the water used to wash the starch
in Lewis’ attempted reproductions of Wolff exceeded the pH of the unused
tap water throughout the test.” Id. ¶ 32 (emphasis in original).

6 Mr. Branning is an employee of the Requester, and we also consider his
interest in the outcome of this reexamination when weighing the probative
value of his testimony.
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Patent Owner disputes that a skilled artisan would have used 4000 ml
of wash water for 25g of product in the process described in Wolff because
“[i]t is impractical, environmentally harmful and/or uneconomical to
generate such a large volume of waste water” as well as “inefficient and
wasteful.” PO App. Br. 18.
We are persuaded that, based on the teachings of Wolff, the skilled
artisan would have used as much wash water as necessary to remove the
alkalinity of the starch product “entirely” or “completely.” We understand
this to mean washing with enough water that starch achieves a neutral or
acidic pH, i.e., is not alkaline. Mr. Branning has demonstrated that a pH of
6.92 can be achieved by washing the treated starch using the process
described in Wolff using a large amount of wash water. The discussions of
this procedure in Speakman and in the ’909 patent do not dispute Mr.
Branning’s findings because they too do not indicate any particular amount
of wash water used.
Patent Owner has not demonstrated error in Mr. Branning’s
procedure, other than providing unsupported argument that the amount of
wash water used is undesirable, and has not shown that using a large volume
of wash water is outside the skill of the ordinary artisan or discouraged by
the teachings of Wolff.
Even if the impracticality of using a large volume of wash water were
shown with evidentiary support,7 the claims are directed to a hydrophobic

7 Although not relied upon by the Patent Owner, we note that Speakman’s
description of Wolff’s procedure as “very expensive and decidedly
impractical” supports Patent Owner’s argument. Speakman, ¶ spanning 1–2.
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starch product. Wolff’s product has been described in the prior art as
“entirely” or “completely” free of alkalinity, and Mr. Branning’s testimony
supports a finding that achieving such a product by washing, as described in
Wolff, would have been within the skill of an ordinary artisan. Moreover,
we agree with the Examiner that the resulting pH of an alkaline-free product
would be limited by the pH of the wash water used. The Examiner’s finding
of the relative neutrality of water is reasonable and not persuasively disputed
by the Patent Owner. Moreover, the skilled artisan would have recognized
that the wash water pH would affect the products end pH, and, thus,
selecting wash water of sufficient neutrality to obtain an alkaline-free
product having a pH within the narrowest claimed range would have been
within the skill of the ordinary artisan. Accordingly, we agree with the
Examiner that a product having the recited pH would have been obvious to
one of ordinary skill in the art at the time of the invention.

Moisture content
The claims recite a hydrophobic starch product with a moisture
content of “6% to 15%” or “10% to 13.5%.”
Patent Owner disputes the Examiner’s determination that it would
have been obvious for the skilled artisan to air dry a hydrophobic starch to
the claimed range because a dry commercial starch is described in the art to
have a moisture content of between 5% and 20%. PO App. Br. 12–16. In
particular, Patent Owner contends that both Billmers and Whistler teach a
dry moisture content for an unmodified starch and that “[o]ne of ordinary
skill in the art would not have a reason or a reasonable expectation of
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success of producing a hydrophobic starch having a moisture content
ranging from about 5% to about 20%, let alone a hydrophobic starch having
the moisture content recited by the rejected claims.” Id. at 15 and 25.
According to Patent Owner, “[t]he moisture content of a starting material,
especially a hydrophilic one, is not relevant to the moisture content of a
reaction product that results from mixing the starch with siliconate in water,
and drying to a desired moisture content.” Id. at 11. Further, Patent Owner
contends that there is no evidence that the moisture content is a result
effective variable to be optimized and that the skilled artisan would have
arrived at the recited moisture content only through impermissible hindsight
via the ’909 patent. Id. at 28 and 30.
We are not persuaded by Patent Owner’s arguments. Wolff expressly
teaches that the treated starch is “air-dried” both before and after washing.
Although Wolff states that the product is “air dried at approximately room
temperature” (col. 2, ll. 6–7), Wolff does not expressly state the drying time
or relative humidity, which would be expected to dictate the final product’s
moisture content. Nonetheless, the skilled artisan would have had to dry the
product to some moisture content for it to have been considered “dried.”
Billmers and Whistler teach that, for commercial unmodified starch, a
moisture content of from 5% to 20% is a reasonable and objective measure
of a “dried” starch product, as described in Wolff. Thus, it is reasonable to
find that the skilled artisan would have had a reason to have dried Wolff’s
product to a similar moisture content of from 5 to 20%. This finding is
further supported by the teachings of Speakman, which was relied upon
during the initial prosecution of the ’909 patent as evidence that
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conventional moisture content for normal commercial starch would also
have been obvious to the skilled artisan for drying hydrophobic starches,
and, more importantly, that the narrower specific moisture content range of
10% to 13.5% that is recited in the claims would have been obvious for
modified starches as well as unmodified starches. See Speakman 6, last ¶
(“The [hydrophobic starch] product is dried preferably to moisture contents
in the range of about 10% to about 13.5% moisture, which is normal for
commercial starch. The product may be dried to a higher or lower moisture
content without losing the desired properties.”). Thus, we can conclude that
drying to this moisture content range is within the skill of the ordinary
artisan. An improvement in the art is obvious if “it is likely the product not
of innovation but of ordinary skill and common sense.” KSR Int'l Co. v
Teleflex Inc., 550 U.S. 398, 402–403 (2007).
Moreover, it would have been obvious for the skilled artisan to have
optimized the moisture content for the desirable properties described in
Wolff, i.e., good free-flowing properties (Wolff, col. 2, ll. 22–24), and so
that the product is suitable for use for its intended purpose described therein,
namely as a dusting material, dry lubricant, or detackifying agent. Id. at col.
2, ll. 30–32. In other words, the desirable properties reported in the ’909
patent, namely the free-flowing properties (col. 3, ll. 4–7) and the uses
“dusting materials, dry lubricants, and detackifying agent (col. 3, ll. 15–18),
are the same as those taught by Wolff. Wolff, col. col. 2, ll. 22–24 and 30–
32. Patent Owner has not shown that the moisture content ranges of “6% to
15%” or “10% to 13.5%” recited in the claims represent any more than
routine optimization of moisture content for the same properties and
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objectives described in Wolff. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1368 (Fed. Cir. 2007) (“[T]he discovery of an optimum value of a variable
in a known process is usually obvious.”); see also In re Aller, 220 F.2d 454,
456 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed
in the prior art, it is not inventive to discover the optimum or workable
ranges by routine experimentation.”). Patent Owner has shown no criticality
or unexpected properties for the hydrophobic starch within the narrower
ranges of “6% to 15%” or “10% to 13.5%.”
Accordingly, for the above reasons, we affirm the Examiner’s
rejections of claims 8–10 and 17 under 35 U.S.C. § 103(a) as unpatentable
over Wolff in view of Billmers or Whistler.

TIME PERIOD FOR RESPONSE
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
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inter partes reexamination proceeding “commenced” on or after November
2, 2002, may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81; see
also MPEP § 2682 (8th ed., Rev. 7, July 2008).

AFFIRMED

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Patent 7,799,909 B2

rvb

PATENT OWNER:

MICHAEL B. HARLIN
NEAL, GERBER & EISENBERG, LLP
TWO NORTH LASALLE ST., SUITE 2100
CHICAGO, IL 60602

THIRD-PARTY REQUESTER:
BARRY J. SCHINDLER, ESQ.
GREENBERG TRAURIG (NJ)
200 PARK AVE.
P.O. BOX 677
FLORHAM PARK, NJ 07932