Ex Parte 7854980 et al

Patent Trial and Appeal Board

Sep 29, 2016

90013156 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
90/013, 156 02/21/2014 7854980
23643 7590 09/30/2016
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20121-229248 3009
EXAMINER
TORRES VELAZQUEZ, NORCA LIZ
ART UNIT PAPER NUMBER
3991
MAILDATE DELIVERY MODE
09/30/2016 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 THE PATENT TRIAL AND APPEAL BOARD
Ex parte KNAUF INSULATION, INC. & KNAUF INSULATION SPRL
Patent Owner and Appellant
Appeal2016-006369
Reexamination Control 90/013,156
US 7,854,980 B2
Technology Center 3900
Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
RAEL YNN P. GUEST, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal by Patent Owner from the Patent
Examiner's final rejection of claims 1-54 in the above-identifed ex parte
reexamination of US 7,854,980 B2. The Board's jurisdiction for this appeal
is under 35 U.S.C. §§ 6(b), 134(b), and 306. We affirm.
Appeal2016-006369
Reexamination Control 901013, 15 6
US 7,854,980 B2
STATEMENT OF CASE
This appeal involves US 7,854,980 B2 ("the '980 patent"), which
issued December 21, 2010. A Request for Ex Parte Reexamination of the
'980 patent was submitted by a third-party requester on February 21, 2014.
Claims 1-54 stand finally rejected by the Examiner. Final Rejection
("Final Rej.") (dated Aug. 18, 2015). Claims 1-20 are original claims, but
were amended during the reexamination proceeding. Claims 21-54 were
added during the reexamination proceeding.
The real party in interest in this ex parte reexamination proceeding is
Knauf Insulation, Inc. and Knauf Insulation SPRL (collectively, "Patent
Owner). Appeal Br. 2.
This ex parte reexamination is related to the ex parte and inter partes
reexaminations listed on pages 3--4 of the Appeal Brief.
The claims stand finally rejected by the Examiner as follows:
1. Claims 1-10, 21-33, and 36--45 under 35 U.S.C. § 103(a)1 as
obvious in view of Hansen II,2 Worthington,3 Helbing,4 and Keller. 5 Final
Rej. 6.
2. Claims 1-4 and 6-10 under 35 U.S.C. § 103(a) as obvious in view
of Hansen II, Worthington, Helbing, and Beaufils. 6 Final Rej. 17.
1 Pre-Leahy-Smith America Invents Act (Public Law 112-29).
2 US 2006/0111480 Al, published May 25, 2006.
3 US 3,513,001, patented May 19, 1970.
4 WO 2006/044302 Al, published Apr. 27, 2006.
5 US 2007/0184740 Al, published Aug. 9, 2007.
6 US 7,458,235 B2, patented Dec. 2, 2008.
2
Appeal2016-006369
Reexamination Control 901013, 15 6
US 7,854,980 B2
3. Claims 11-19, 34, 35, and 46-54 under 35 U.S.C. § 103(a) as
obvious in view of Hansen II, Worthington, Horres, 7 and Keller. Final Rej.
21.
4. Claim 20 under 35 U.S.C. § 103(a) as obvious in view of Hansen
II, Worthington, Horres, Keller, and Helbing. Final Rej. 23.
5. Claims 11-20 under 35 U.S.C. § 103(a) as obvious in view of
Hansen II, Worthington, Horres, and Beaufils. Final Rej. 24.
6. Claim 20 under 35 U.S.C. § 103(a) as obvious in view of Hansen
II, Worthington, Horres, Beaufils, and Helbing. Final Rej. 27.
Claim 1, reproduced below, is representative of the appealed subject
matter (underlining and brackets indicate amendments relative to the original
claim):
1. A mineral fiber insulating material comprising mineral fibers
and less than about 15% by weight of an organic binder,
wherein
a) the organic binder is a formaldehyde free thermoset
product of drying and curing an aqueous solution having a pH
of greater than 5 when applied to the mineral fibers and
comprising a monomeric tricarboxylic acid, a reducing sugar
monosaccharide, and ammonia, wherein the ratio of the number
of moles of the tricarboxylic acid to the number of moles of the
monosaccharide is about 1 :4, about 1 :5, or about 1 :6 and
wherein a dry weight of the monosaccharide makes up about
73 % to about 96% of a total dry weight of reactants in the
aqueous solution,
b) the mineral fiber insulating material has a recovered
thickness of at least about 95% as determined according to
Annex A of British standard BS EN 823: 1995,
c) the mineral fiber insulating material [having] has an
ordinary parting strength of at least about 95 gig,
7 US 7,514,027 B2, patented Apr. 7, 2009.
3
Appeal2016-006369
Reexamination Control 901013, 15 6
US 7,854,980 B2
d) the mineral fiber insulating material [having] has a
weathered parting strength of at least about 75 gig, [and]
e) the mineral fiber insulating material is packaged and
f) the thermoset product includes melanoidins cross-
linked with the monomeric tricarboxylic acid.
REJECTION 1
Claim 1 is directed to a "mineral fiber insulating material comprising
mineral fibers and less than about 15% by weight of an organic binder." The
binder is a formaldehyde-free thermoset product of drying and curing an
aqueous solution having a pH greater than 5 which comprises: (1) a
monomeric tricarboxylic acid, (2) a reducing sugar monosaccharide, and (3)
ammo ma.
Claim 1 further recites that ( 4) "the ratio of the number of moles of
the tricarboxylic acid to the number of moles of the monosaccharide is about
1 :4, about 1 :5, or about 1 :6." The claim also requires that (5) "a dry weight
of the monosaccharide makes up about 73% to about 96% of a total dry
weight of reactants in the aqueous solution."
The Examiner cited Hansen II for its teaching of a method of making
a binder with the same components as recited in claim 1. Hansen II teaches:
A formaldehyde-free aqueous binder composition comprises a
binder component (A) obtainable by reacting at least one
alkanolamine with at least one carboxylic anhydride and,
optionally, treating the reaction product with a base; and a binder
component (B) which comprises at least one carbohydrate.
Hansen II, Abstract.
4
Appeal2016-006369
Reexamination Control 901013, 15 6
US 7,854,980 B2
The Examiner found that binder component (B) comprises a
carbohydrate, such as a monosaccharide, 8 meeting the corresponding
limitation (2) of claim 1. Final Rej. 6. The Examiner also found that
Hansen II teaches (1) monomeric tricarboxylic acid. Id., 7. The Examiner
found that Hansen II discloses a base, identifying paragraph 30 of Hansen II
to support this fact. Id. Paragraph 30 discloses that the base can be
ammonia, meeting the corresponding limitation (3) of claim 1.
For ( 4) "ratio of the number of moles of the tricarboxylic acid to the
number of moles of the monosaccharide is about 1 :4, about 1 :5, or about
1 :6," the Examiner relied on calculations done by the Requester in the
Request for Reexamination filed Feb. 21, 2014, and the Examiner's own
calculations. Id., 7-12. The Examiner found that Hansen II teaches a ratio
of three parts (A) (carboxylic anhydride and alkanol amine) to one part (B)
(monosaccharide dextrose). Id., 11 (citing Hansen II, iJ 56).
The Examiner cited Helbing and Keller to reach limitations b) through
e) of claim 1. Id., 14-15.
The Examiner acknowledged that Hansen II does not describe ( 5) "a
dry weight of the monosaccharide makes up about 73% to about 96% of a
total dry weight of reactants in the aqueous solution." Id., 12. However, the
Examiner cited Worthington's description of a thermosetting binder
composition comprising the same components as Hansen II, where the
composition comprises "at least 51 % by weight" of carbohydrate, and
preferably "a proportion of carbohydrate lying within the range of from 7 5-
8 "HANSEN II teaches that the at least one carbohydrate preferably selected
from monosaccharides .... " Final Rej. 6.
5
Appeal2016-006369
Reexamination Control 901013, 15 6
US 7,854,980 B2
95% by weight of the composition." Worthington, col. 2, 11. 1--4; Final Rej.
12. The Examiner determined it would have been obvious to use the
amounts of the dextrose described by Worthington in Hansen II's binder
because "such concentrations were preferred to bind the similar composite
components." Final Rej. 13.
Was the reason to combine improper?
Patent Owner contends that the Examiner's rationale is improper
because Hansen II's binder and Worthington's binder are not used to bind
"'similar composite components."' Appeal Br. 18. Patent Owner states that
Hansen II's binder is for mineral fibers, while Worthington's binder is for
plastics and utilizes granular refractory materials. Id. Based on these stated
differences, Patent Owner argued that a skilled worker would not have
considered the binders suitable for use with similar components because "it
would have been appreciated by the person of ordinary skill that the
components to be bound (the fibers of Hansen II and the sand grains of
Worthington) have materially different properties due, at least in part, to
their vastly different sizes and shapes." Id.
This argument is not persuasive because it conflicts with the evidence
of record. Hansen II would have suggested to one of ordinary skill in the art
that a given binder is suitable for binding various materials, including both
fibers and particulates such as sand. Specifically, Hansen II describes the
broad suitability of its binder composition as follows:
Although the formaldehyde-free aqueous binder composition
according to the present invention is particularly useful for
bonding mineral fibers, it may equally be employed in other
applications typical for binders and sizing agents, e.g. as a binder
6
Appeal2016-006369
Reexamination Control 901013, 15 6
US 7,854,980 B2
for foundry sand, chipboard, cellulosic fibers, non-woven paper
products, composites, molded articles, coatings etc.
Hansen II, iJ 50 (emphasis added). Indeed, Hansen II expressly states its
binder can be used with sand (id.), one of the materials exemplified in
Worthington as common refractory materials in the foundry industry for
producing shell moulds and cores (Appeal Br. 18 ("sand grains" of
Worthington); Worthington, col. 4, 11. 19-23).
Similarly, Worthington also states that its binder can be used for other
purposes:
The present invention relates to thermosetting compositions
suitable for use as binders in the shell moulding process (i.e. in
the making of shell moulds or cores or parts thereof) and for
other purposes for which thermosetting compositions are used
as, for example, in the production of plastic articles, in
conjunction with suitable fillers such as are commonly used in
the plastics industry ...
Worthington, col. 1, 11. 29-35 (emphasis added).
Because Hansen II discloses that its binder can be used for binding a
wide variety of materials such as fibers or sand, as does Worthington more
generally, f! person having ordinary skill in the art would have reasonably
expected that Worthington's teachings concen1ing f! similar binder would be
applicable for binders for not only sand, but also binders for fibers as
disclosed in Hansen II. Therefore, we find Patent Owner's argument that
Hansen II and Worthington do not bind similar components to be unavailing
and not factually supported when the disclosures are read in their entirety.
7
Appeal2016-006369
Reexamination Control 901013, 15 6
US 7,854,980 B2
Does Hansen !J's disclosure of an aqueous solution teach away from
Worthington?
Patent Owner also contends that "the teachings of Hansen II and
Worthington would actually have discouraged a person of ordinary skill in
the art from making the combination proposed by the Examiner" because:
Hansen II relates to "a formaldehyde-free aqueous solution
binder composition." Hansen II, ,-i [0001] (emphasis added). By
contrast, Worthington teaches a thermosetting composition
where formation should be carried out in the absence of water
(or, at the very least, in a vanishingly small amount of water or
liquid).
Appeal Br. 19.
We begin with Hansen II. Hansen II describes an "aqueous binder"
which is described as having "good water solubility." Hansen II, ,-i 7.
Examples 1-3 of Hansen II describe adding water to an amine and
carboxylic acid anhydride to make binder component Al. Id., ,-i,-i 52-54.
Subsequently, the binder component Al is mixed with a monosaccharide
("glucose syrup") and other components. Id., ,-i,-i 56, 58.
The Examiner found that it would have been obvious to use the
amounts of dextrose described by Worthington in Hansen II' s binder. Final
Rej. 13. Patent Owner contends this is error. Patent Owner points to
disclosure in Worthington about using powdered components, small
amounts of liquid (Worthington, col. 2, 1. 62 to col. 3, 1. 3), and how
Worthington teaches that the "presence of water in the composition
materially alters the course of the resinification reaction so the ingredients of
the composition are preferably anhydrous" (id., col. 3, 11. 12-16). Appeal
Br. 19. Based on these disclosures, Patent Owner argues that Worthington
8
Appeal2016-006369
Reexamination Control 901013, 15 6
US 7,854,980 B2
teaches away from Hansen II, which uses an aqueous solution comprising
the binder components. Id., 19-20.
However, Patent Owner's argument does not address Worthington's
full disclosure. In addition to the disclosure identified by Patent Owner,
Worthington describes an embodiment in which the amine and carboxylic
acid are combined to make "an aqueous solution of a water soluble
precondensate of the carboxylic acid and the amine" (Worthington, col. 5, 11.
18-20), and then adding the precondensate to the carbohydrate (see id., col.
4, 11. 41-73; carbohydrate can be the monosaccharide dextrose), similar to
Hansen II's description at ,-i,-i 52-54, 56, and 58 described above in which the
amine and acid are first combined with water to make component A 1 which
is subsequently mixed with carbohydrate.
Specifically, Worthington teaches:
The whole or a part of the amine constituent and a part of the
carboxylic acid constituent of the binder is advantageously added
to the remainder of the constituents, after they have been mixed
with the refractory material, in the form of an aqueous solution
of a water soluble precondensate of the carboxylic acid and the
amine. The precondensate may be made by dissolving 60 to 90
parts by weight of the carboxylic acid, preferably a tannin, and
40 to 10 parts by weight of the amine, preferably melamine or
dicyandiamide or a mixture thereof in water and distilling off
sufficient of the water to leave a solution in which the
concentration of the precondensate is within the range of 40 to
60% by weight, calculated on the solution. If desired, the
solution may be refluxed for a period to complete the reaction
prior to distilling off some of the water. When a precondensate
is added to the binder the proportion added is generally about half
a pint of solution to each 1 cwt. of sand.
Worthington, col 5, 11. 14-31 (emphasis added). Worthington teaches that
the "use of such a precondensate results in binders which when used for
9
Appeal2016-006369
Reexamination Control 901013, 15 6
US 7,854,980 B2
making shell moulds and cores gives greater strength in the investment
stage." Id., col. 5, 11. 32-34.
Patent Owner acknowledges that water is utilized to make the
precondensate, but states that the water is distilled off and only a half pint of
the precondensate is added to the 100 pounds of sand. Appeal Br. 19-20.
Patent Owner argues that, when dextrose is subsequently added, the
resulting mixture is well above the solubility of dextrose and is therefore not
an aqueous solution of dextrose. Id., 20-21.
The issue is whether the teachings in W orthington9 constitute a
teaching away from utilizing its dextrose concentrations in the aqueous
solution of Hansen II. "A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant." In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
We are not persuaded that the skilled worker would have been
discouraged from using Worthington's dextrose concentrations in Hansen II.
As discussed above, Hansen II and Worthington both describe an aqueous
solution of amine and carboxylic acid which is subsequently added to the
monosaccharide (carbohydrate). Because the steps are substantially the
same, the skilled worker would have found both publications to be
9 "The presence of water in the composition materially alters the course of
the resinification reaction so the ingredients of the composition are
preferably anhydrous. If the water content of the composition is not carefully
controlled variable products may be obtained." Worthington, col. 3, 11. 12-
16.
10
Appeal2016-006369
Reexamination Control 901013, 15 6
US 7,854,980 B2
complementary rather than divergent in terms of making a binder within the
scope of claim 1.
Worthington expressly makes a precondensate of carboxylic acid and
amine in water prior to combining with "the remainder of the constiutents"
in order to confer greater strength to the binder. Id., col. 5, 11. 14-34.
Worthington states that "sufficient" water can be distilled off the
precondensate "to leave a solution in which the concentration of the
precondensate is within the range of 40 to 60% by weight, calculated on the
solution." In other words, after distillation, the precondensate solution still
contains 40 to 60% by weight of water. Id. at col 5, 11. 14-31 (reproduced
above). For this reason, the skilled worker would not have been deterred
from using the conditions in Hansen II to make a binder with higher
monosaccharide content, even if more water is present.
As mentioned, Hansen II includes both fibers and "foundry sand" as
materials that can be bound or sized by its binder (Hansen II,~ 50).
Therefore, it is reasonable to use Worthington's dextrose concentrations in
Hansen II' s process when making a binder for fiber because both Hansen II
and Worthington suggest that a given binder has broad applicability
(Worthington, col. 4, 11. 19-23). We have not been directed to sufficient
evidence that these higher dextrose concentrations and the presence of water
would have led to a lack of a reasonable expectation of success for fibers. In
fact, Hansen II did not exclude concentrations above 40 wt% carbohydrate
11
Appeal2016-006369
Reexamination Control 901013, 15 6
US 7,854,980 B2
(i.e., dextrose), but rather stated that values of 40 wt% or less were suitable
"[f]or most applications." Hansen II, 36. 10
Patent Owner performed calculations said to show that "Worthington
teaches a dextrose-water mixture (of at least 1.9 grams/ml) that is well above
the solubility of dextrose (0.91 grams/ml)." Appeal Br. 20. However, in
making this calculation, Patent Owner stated: "If the precondensate contains
only 10% water, or about 24 ml, 453 grams of added dextrose would equate
to about 19 g dextrose/ml." Id. Patent Owner did not identify how it arrived
at the value of 10% water and therefore we do not consider the calculation to
be reliable.
Nonetheless, even if it is true that Worthington's dextrose is not fully
soluble after addition of the precondensate, it would not have deterred the
skilled worker from using the dextrose with additional water as taught by
Hansen II because Hansen II' s conditions achieve success for making a
binder with a high water content.
Patent Owner contends that Hansen II utilizes large amounts of water
compared to Worthington. Reply Br. 5. However, Patent Owner did not
dispute that Hansen II and Worthington use the same reactants, i.e., an
amine, carboxylic acid, and a carbohydrate. Thus, even though Worthington
may have used smaller amounts of water than Hansen II, the skilled worker
would have reasonably expected that larger amounts of water would achieve
10 "For most applications, the binder composition comprises 60 wt. % or
more, preferably 60 to 95 wt. % and more preferably 60 to 80 wt. %, of
binder component (A), and 40 wt.% or less, preferably 5 to 40 wt.% and
more preferably 20 to 40 wt.% of binder component (B) [carbohydrate],
based on the total solids content of components (A) and (B)." Hansen II, ,-i
36.
12
Appeal2016-006369
Reexamination Control 901013, 15 6
US 7,854,980 B2
success based on Hansen II's teaching of the addition ofwater. 11 We have
not been directed to evidence that increasing the concentrations of
carbohydrate in Hansen II would make the process inoperable. "[A]
reference may teach away from a use when that use would render the result
inoperable." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1381 (Fed.
Cir. 2007).
Was melanoidin made in Hansen II?
Claim 1 requires that the thermoset product includes melanoidins
cross-linked with the monomeric tricarboxylic acid. The Examiner
acknowledged that Hansen II does not describe melanoidin, but found that
the same reactants known to produce melanoidin via the Maillard reaction
are present in Hansen II, namely, "a carbohydrate, an amine that is an
alkanolamine, and a polycarboxylic acid." Answer 5. Because the same
reactants in the same ratio are present in Hansen II as recited in the claims,
the Examiner had reasonable basis to find the melanoidin cross-linked with
tricarboxylic acid was present. As held in 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.
... Whether the rejection is based on "inherency" under 35
U.S.C. § 102, on "prima facie obviousness" under 35 U.S.C. §
103, jointly or alternatively, the burden of proof is the same,
11 For example, Hansen teaches: "The binder solution was made by diluting
the resin to about 40% solids with water." Hansen, col. 2, 11. 21-22.
13
Appeal2016-006369
Reexamination Control 901013, 15 6
US 7,854,980 B2
and its fairness is evidenced by the PTO's inability to
manufacture products or to obtain and compare prior art
products.
Patent Owner does not dispute that Hansen II describes the reactants
of a Maillard reaction that would produce melanoidin. However, Patent
Owner contends that Hansen II does not produce melanoidin because
[I]n Examples 1-3, there is no residual alkanolamine (e.g.,
DEA) to react with the carbohydrate (e.g., glucose) at the time
when Hansen II' s Component B is mixed with Component A.
In other words, Hansen II' s Examples 1-3 fail to teach
conditions in which both an amine and a reducing sugar are
present and available to engage in a Maillard reaction.
Appeal Br. 26-27.
Patent Owner calculated that in Examples 1-3 of Hansen II that there
is an excess of total carboxylic anhydride relative to the amount of
alkanolamine. Id. Patent Owner calculated the ratios of alkanolamine to
carboxylic anhydride in these examples to be 1:1.53, 1:1.29, and 1:1.21,
respectively. Id., 26.
Patent Owner's argument is not persuasive. As found by the
Examiner, Hansen II teaches that "'the ratio of equivalents of amine
plus hydroxy groups (NH+OH) to equivalents of carboxy groups (COOR) is
at least 0.4, more preferably at least 0.6.' Hansen II, [0025]." Final Rej. 8.
Paragraph 25 of Hansen II is reproduced below:
[0025] In the preparation of binder component (A), the
proportion of the alkanolamine and carboxylic anhydride
reactants is preferably selected such that the ratio of equivalents
of amine plus hydroxy groups (NH+OH) to equivalents of
carboxy groups (COOH) is at least 0.4, more preferably at least
0. 6. By employing these minimum ratios, a too high excess of
free unreacted acid is avoided which under specific conditions
14
Appeal2016-006369
Reexamination Control 901013, 15 6
US 7,854,980 B2
could lead to a displacement of binder in the curing oven, i.e. to
a non-uniform distribution in amount of binder between the
bottom and top of the mineral wool mat or web. Furthermore,
high amounts of unreacted acid may increase corrosiveness.
Hansen II discloses Example 1 having "a binder component (Al)
having an equivalent ratio of (NH+OH)/(COOH) of 0.85," Example 2
having "a binder component (A 1) having an equivalent ratio of
(NH+OH)/(COOH) of 1.0," and Example 3 also of 1.0. Hansen II, iii! 52-
54.
As the ratio of (NH+OH)/(COOH) increases, the proportion of
(NH+OH) increases, and since the NH and OH groups are fixed in the
alkanolamine (e.g., 2 OH to 1 NH in the diethanolamine used in Examples
1-3), the NH amine groups would also increase. Thus, the amine
component is necessarily increasing from Example 1 to Examples 2 and 3.
While the miniumum ratios taught by Hansen II have an excess of
carboxylic acid according to Patent Owner, Hansen II seeks to avoid "too
high" an excess of the carboxylic anhydride to the amine and hydroxyl
groups of the alkanolamine by requiring a minimum (NH+OH)/(COOH)
ratio of at least 0.4. Id., at iJ 25. Hansen II does not expressly limit the
amount of alkanolamine present. There is no upper limit on the ratio
prescribed by Hansen II, and thus higher concentrations of alkanolamine are
permitted by Hansen II, including concentrations in which unreacted
alkanolamine is present when the monosaccharide is subsequently added.
Despite reference to paragraph 25 by the Examiner in the statement of the
rejection (Final Rej. 7) and by the Requester in the Request for
Reexamination (at 50), Patent Owner did not address that the disclosure in
Hansen II are minimums in their Briefs on Appeal.
15
Appeal2016-006369
Reexamination Control 901013, 15 6
US 7,854,980 B2
We further note that the Examiner found ammonia can be added to
Hansen II' s reaction mixture, which provides an additional source of amine
groups. Final Rej. 17. The ammonia is preferably added after the reaction
between the alkanolamine and the carboxylic anhydride has been stopped.
Hansen II, ,-i 30. The addition of ammonia at this step is further evidence
that there is no upper limit to the concentration of amine and that such
concentration could exceed the carboxylic acid concentration. Indeed, we
have not been directed to evidence that, at equilibrium, there would be no
amount of unreacted free amine present that would react with carboxylic
acid to form melanoidin.
Patent Owner contends that the Examiner did not address the
limitation that the "thermoset product includes melanoidins cross-linked
with the monomeric tricarboxylic acid." Appeal Br. 23. However, the
Examiner found that such a structure would inherently result when the
compounds in Hansen II react. Final Rej. 17. Patent Owner has not
demonstrated reversible error in this finding.
Insulating material
Claim 1 recites that "b) the mineral fiber insulating material has a
recovered thickness of at least about 95% as determined according to Annex
A of British standard BS EN 823: 1995."
The Examiner found that Helbing teaches "a polyacid component
such as citric acid in the binder composition and also teaches the inclusion of
an amine such as aqueous ammonia." Final Rej. 14. The Examiner also
found that Helbing describes an insulating material with the characteristics
of limitation b ). Id. The Examiner determined that it would have been
16
Appeal2016-006369
Reexamination Control 901013, 15 6
US 7,854,980 B2
obvious to have made Hansen II' s insulating material with the claimed
recovering thickness that is taught by Helbing to be desirable in the art. Id.
Patent Owner did not identify a deficiency in the Examiner's fact-finding or
reasonmg.
Patent Owner acknowledges that Helbing also describes all three
reactants as in claim 1, which would produce melanoidin. Appeal Br. 28.
However, Patent Owner argues that, using the reaction of Helbing, "any
reducing sugar present in the com syrup (i.e., a polyhydroxy component)
would be expected to react with excess maleic acid" via esterification, which
is not a Maillard reaction. Id. Thus, Patent Owner argues that Maillard
reaction products are not necessarily present in the binder of Helbing. Id.
Patent Owner has not provided sufficient evidence that melanoidins
would not be produced by Helbing, but merely argued that esterification
would be expected to occur. Id. An argument made by counsel in a brief
does not substitute for evidence lacking in the record. Estee Lauder, Inc. v.
L 'Orea!, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
We note that in the related inter partes reexamination No. 95/000,674
of the '980 patent, rejections over Helbing were affirmed in the Appeal to
the Patent Trial and Appeal Board in which a similar argument was made by
Patent Owner about the failure of Helbing to make melanoidins. See
Decision in Appeal 2015-00184, pp. 16-22. Nonetheless, while the
Examiner stated that Helbing produced melanoidin (Final Rej. 17, 23), the
Examiner did not appear to rely on this finding in concluded that the claimed
subject matter would have been obvious to one of ordinary skill in the art.
Rather, as explained above, the Examiner found that Hansen II would
inherently produce melanoidin products because of the presence of the same
17
Appeal2016-006369
Reexamination Control 901013, 15 6
US 7,854,980 B2
reactants, and Patent Owner did not demonstrate reversible error in this
finding. Rather, Patent Owner made the same arguments for claims 21-26
(id., 23) and 43 (id .. 24) found unpersuasive above, i.e., that there is no
express teaching of a Maillard reaction product in Hansen II.
For the foregoing reasons, we affirm the rejection of claim 1 as
obvious in view of Hansen II, Worthington, Helbing, and Keller. Separate
arguments were not provided for claims 2-10, 21-33, and 36--45.
Connsequently, these claims fall with claim 1.
REJECTION 2
Claims 1--4 and 6-10 stand rejected under 35 U.S.C. § 103(a) as
obvious in view of Hansen II, Worthington, Helbing, and Beaufils. Final
Rej. 17.
The Examiner relied upon Hansen II, Worthington, and Helbing for
the same teachings as in Rejection 1. Id. at 18. Beaufils is further cited for
the claimed characteristics of the mineral fiber. Id. Patent Owner makes the
same arguments for this rejection as they did for Rejection 1. Appeal Br. 30.
Consequently, we affirm Rejection 2 for the same reasons.
REJECTION 3
Claims 11-19, 34, 35, and 46-54 stand rejection under 35 U.S.C. §
103(a) as obvious in view of Hansen II, Worthington, Horres, and Keller.
Final Rej. 21.
The Examiner relied upon Hansen II, Worthington, and Keller for the
same teachings as in Rejection 1. Id. Horres is further cited for the claimed
characteristics of the mineral fiber. Id. Patent Owner makes the same
18
Appeal2016-006369
Reexamination Control 901013, 15 6
US 7,854,980 B2
arguments for this rejection as they did for Rejection 1. Appeal Br. 31-33.
Consequently, we affirm Rejection 3 for the same reasons.
REJCTION 4
Claim 20 stands rejected under 35 U.S.C. § 103(a) as obvious in view
of Hansen II, Worthington, Horres, Keller, and Helbing. Final Rej. 23.
The Examiner relied upon Hansen II, Worthington, Horres, and Keller
for the same teachings as in Rejection 3. Id., 23-24. Helbing is further cited
for the claimed characteristics of the mineral fiber. Id. Patent Owner makes
the same arguments for this rejection as they did for Rejection 1. Appeal Br.
33. Consequently, we affirm Rejection 4 for the same reasons.
REJECTION 5
Claims 11-20 stand rejected under 35 U.S.C. § 103(a) as obvious in
view of Hansen II, Worthington, Horres, and Beaufils. Final Rej. 24.
The Examiner relied upon Hansen II, Worthington, and Beaufils for
the same teachings as in Rejection 2. Id. Horres is further cited for the
claimed characteristics of the mineral fiber. Id., 24-25. Patent Owner
makes the same arguments for this rejection as they did for Rejection 1.
Appeal Br. 34-35. Consequently, we affirm Rejection 5 for the same
reasons.
REJECTION 6
Claim 20 stands rejected under 35 U.S.C. § 103(a) as obvious in view
of Hansen II, Worthington, Horres, Beaufils, and Helbing. Final Rej. 27.
19
Appeal2016-006369
Reexamination Control 901013, 15 6
US 7,854,980 B2
The Examiner relied upon Hansen II, Worthington, Horres, and
Beaufils for the same teachings as in Rejections 1 and 4. Id. Helbing is
further cited for the claimed characteristics of the mineral fiber. Id., 24-25.
Patent Owner makes the same arguments for this rejection as they did for
Rejection 1. Appeal Br. 35-36. Consequently, we affirm Rejection 6 for the
same reasons.
TIME PERIOD
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § l.550(c). See 37 C.F.R. § 41.50(g).
AFFIRMED
20
Appeal2016-006369
Reexamination Control 901013, 15 6
US 7,854,980 B2
FOR PATENT OWNER:
BARNES & THORNBURG LLP (IN)
11 S. MERIDIAN STREET
INDIANAPOLIS, IN 46204
FOR THIRD-PARTY REQUESTER:
KILPATRICK TOWNSEND & STOCKTON LLP
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
21