Ex Parte 7799909 et al

Patent Trial and Appeal Board

Jan 25, 2018

95002240 (P.T.A.B. Jan. 25, 2018)

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.
95/002,240 09/13/2012 7799909 062553.013000 3670
25541 7590 01/25/2018
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
01/25/2018 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 RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.1

GUEST, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Patent Owner, LenLo Chem, Inc.2 (“Patent Owner”), requests
rehearing of the Decision on Appeal, mailed March 1, 2016 (“Decision”).
See Request for Rehearing, filed April 1, 2016 (“Request”). The Decision
affirmed the Patent Examiner’s decision to reject claims 8–10 and 17 of U.S.

1 Administrative Patent Judge Chung K. Pak, who served on the panel that
decided this case originally, has since retired.
2 Patent Owner’s Appeal Br. 1, dated December 24, 2014 (“PO App. Br”)
Appeal 2015-007853
Reexamination Control 95/002,240
Patent 7,799,909 B2

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Patent 7,799,909 B23 (“the ’909 patent”) under 35 U.S.C. § 103(a) as
unpatentable over Wolff4 in view of Billmers5 or Whistler.6 Third-Party
Requester, Ingredion Incorporated (Requester Respondent Br. 2, dated
January 26, 2015, (“Req. Res. Br.”)), did not file a response to Patent
Owner’s Request.
In accordance with 37 C.F.R. § 41.79, Patent Owner contends that:
1. The prior art does not expressly teach a moisture content for
hydrophobic starch, but only teaches moisture content for
hydrophyllic starch, which is not relevant to the moisture content
of a siliconate-modified starch. Request 1–2.
2. Billmers teaches an unmodified starch as a starting material for a
“dry method” of preparing a hydrophobic starch, but does not
teach the moisture content of the end product. Id. at 2.
3. Whistler does not teach a moisture content for a hydrophobic
starch, and Figure 17 thereof does not support a finding of a
disclosure of a moisture content of 5 to 20% because the moisture
content varies with humidity. Id.
4. Routine optimization requires first a finding that the parameter
optimized is a result-effective variable. Id. at 3.

3 US Patent 7,799,909 B2, issued September 21, 2010, to Leonard T. Lewis.
4 US Patent 2,961,339, issued November 22, 1960, to Ivan A. Wolff.
5 US Patent 5,672,699, issued September 30, 1997, to Robert L. Billmers et
al.
6 Whistler, R.L., et al., eds., Starch: Chemistry and Technology, 2nd Ed., 214
and 216–219, Academic Press, Inc. (1984).
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Reexamination Control 95/002,240
Patent 7,799,909 B2

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5. Col. 5, ll. 34–56 of the ’909 Patent shows that the moisture content
ranges are critical.
6. Speakman was not a cited reference in any of the Examiner’s
rejections. Id.
7. Requester admits, in its U.S. Patent 8,703,933, a narrow moisture
content of 7 to 14% is not “trivial and obvious” because this range
is recited in a dependent claims therein. Id. at 4.
We have considered Patent Owner’s arguments; however, we decline
to modify the Decision for the reasons that follow.
Regarding contentions 1–3, the teachings of the prior art were not
overlooked or misapprehended. The Decision acknowledged the teachings
of Billmers and Whistler (see Decision 4–6) and addressed Patent Owner’s
arguments regarding the hydrophobic/hydrophilic nature of the prior art
teachings. Id. at 11.
Regarding contention 4, as stated in the Decision (Decision 12), Wolff
teaches air drying a hydrophobic product and a desire for “good free-flowing
properties (Wolff, col. 2, 11. 22–24),” and thus Wolff teaches optimizing the
drying (i.e., drying to an optimal moisture content) to achieve this desirable
property. Decision 12.
Regarding contention 5, in the Decision, we note 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%.” Decision
13. Patent Owner identifies col. 5, ll. 34–56 of the ’909 Patent as evidence
of criticality of the range for the first time in the Rebuttal Brief (Reb. Br. 4)
and again in the Request for Rehearing (Request 3). These arguments
should have been raised in the Appeal Brief, were not presented in a timely
Appeal 2015-007853
Reexamination Control 95/002,240
Patent 7,799,909 B2

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manner, and thus were not considered. See 37 C.F.R. § 41.67(c)(1)(vii)
(“Any arguments or authorities not included in the brief permitted under this
section or §§ 41.68 and 41.71 will be refused consideration by the Board,
unless good cause is shown.”). Even considering the merits of Patent
Owner’s contention, the argument is not persuasive. Although the portion of
the ’909 Patent cited by Patent Owner discloses preferred moisture content
ranges, including minimum and maximum moisture contents, Patent
Owner’s argument that drying to a particular moisture content is critical to
the free-flowing and hydrophobic attributes is not supported by the portion
of the ’909 patent argued by Patent Owner.
Regarding contention 6, we affirm the Examiner’s determination that a
moisture content within the range of 5 to 20% was known for unmodified
starch, as taught by the teachings of Billmers and Whistler, and, as such, it
would have been obvious to the skilled artisan to similarly have “air-dried” the
hydrophobic starch, as taught by Wolff, to obtain any moisture content within
the broad moisture content range of 5 to 20%. See Decision 11. The reasoning
of the Examiner is affirmed by the analysis of the Decision directed to (1) the
teachings of Billmers and Whistler, (2) the lack of criticality as to the narrower
claimed moisture content ranges, and (3) the teaching in Wolff that would
suggest optimizing for free flowing properties, even without reference to the
teachings of Speakman. Accordingly, we revise our analysis to make it clear
that we do not rely on Speakman in affirming the Examiner’s rejection of the
claims. Nonetheless, our determination of obviousness and our affirmance of
the Examiner’s rejection is unchanged.
Regarding contention 7, we disagree with Patent Owner that including
varying ranges of moisture content in a patent’s dependent claims is an
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Patent 7,799,909 B2

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“admission” that the ranges are non-trivial and non-obvious. The claims in
Requester’s patent have a very different scope than the present claims and have
not been asserted as prior art. Therefore, Requester’s patent claims have no
bearing on the patentability of the claims of the ’909 patent.
Thus, we decline to make any changes to the outcome of the Decision
mailed March 31, 2016, affirming the Examiner’s decisions to reject claims
8–10 and 17.
DENIED

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