Ex Parte 7888445 et al

Patent Trial and Appeal Board

Feb 12, 2018

95000672 (P.T.A.B. Feb. 12, 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.
95/000,672 06/30/2012 7888445 65461/836827 6906
23643 7590 02/12/2018
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
KUGEL, TIMOTHY J
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
02/12/2018 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 THE PATENT TRIAL AND APPEAL BOARD
____________

ROCKWOOL INTERNATIONAL A/S
Requester and Appellant

v.

Patent of
KNAUF INSULATION LLC and KNAUF INSULATION SPRL
Patent Owners and Respondents
____________

Appeal 2017-004826
Reexamination Control 95/000,672
Patent 7,888,445 B2
Technology Center 3900
____________

Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
RAE LYNN P. GUEST, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

REQUEST FOR REHEARING
Patent Owners request rehearing under 37 C.F.R. § 41.79(a)(1) (“Req.
Reh’g) of the Patent Trial and Appeal Board Decision on Appeal under 37 C.F.R.
§ 41.77(f) entered September 8, 2017 (“41.77f Decision”) affirming the rejection
of claims 16, 18, 19, 21, and 22 under 35 U.S.C. § 103(a) as obvious in view of
Worthington, Wallace, and Helbing.
Appeal 2017-004826
Reexamination Control 95/000,672
Patent 7,888,445 B2

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Patent Owners (“PO”) contend that the Decision misapprehended or
overlooked certain key points in maintaining the rejection. Specifically, Patent
Owners state that each of the claims1 “differently recites a particular quantity of
melanoidins in the claimed binder.” Req. Reh’g 1. Patent Owners contends that
the Decision “provides no evidence suggesting that these melanoidins would be
present in any particular quantity.” Id. at 3. Patent Owners also contend that the
“Decision provides no explanation as to why even ‘substantial amounts’ of
melanoidins would read on the quantities of melanoidins actually recited claims
16, 18, 19, 21, and 22.” Id. Patent Owners also contend that the Decision
improperly shifted the burden to Patent Owners to submit evidence to the contrary.
Id. Patent Owner also states that the “Decision’s conclusion that ‘it is reasonable
to conclude that the Maillard reaction took place,’ . . . falls short of the legal
standard for finding inherency.” Id. Patent Owners also argue that the “different
limitations regarding particular quantities of melanoidins in melanoidin-containing
binders” were not addressed in the Examiner’s determination and that the Board
provided a new analysis that raises theories for the first time and constitutes a new
ground of rejection. Req. Reh’g 7.
To begin, the evidence does not support Patent Owners’ contention that the
Examiner did not address the melanoidin “quantity” limitations recited in claims
16, 18, 19, 21, and 22.
In the Examiner’s Determination under 37 C.F.R. § 41.77(d) (entered Oct.
17, 2016) (“Determination”), the Examiner found that “WORTHINGTON,

1 The rejection of claims 16–22 were maintained in the 41.77f Decision, but Patent
Owner does not request rehearing with respect to claims 17 and 20 (see Req. Reh’g
1), which do not refer to an amount of melanoidins in the binder.
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Patent 7,888,445 B2

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WALLACE and/or HELBING describe the newly added features of claims 16–22”
and referenced pages 12–13 of Requester’s Comments under 41.77(c).
Determination 15.
Requester at the cited pages stated:
Finally, as described above in Section II.C, Owner has further
amended claims 16, 18, 19, 21, and 22 to recite additional features
that are directed to the role of the melanoidin products in binding the
fibers together. Owner acknowledges that these claimed features are
satisfied in a binder that contains melanoidin products in quantities
that exceed an impurity level, i.e. when the reducing-sugar
carbohydrate makes up about 73% to about 96% of a total dry weight
of binder reactants. First Hampson Decl., ¶ 17. In short, prior art
binders with melanoidin products that also disclose, teach, or suggest
the claimed range for the dry weight of the reducing-sugar
carbohydrate likewise disclose, teach, or suggest these additional
features directed to the role of the melanoidin products in binding the
mat of fibers and/or fibrous material together.
. . . As described above, Worthington provides explicit disclosure of a
substantially overlapping range for the dry weight of a reducing-sugar
carbohydrate. Thus, the binder provided by the combination of
Worthington, Wallace, and Helbing would produce melanoidin
products in quantities entirely consistent with those produced in the
claimed binder and would therefore likewise perform the role of
binding the mat of fibers and/or fibrous material together, as recited in
claims 16, 18, 19, 21, and 22.
Requester’s 41.77(c) Comments (filed July 1, 2015).
In Patent Owners’ Comments under 37 C.F.R. § 41.77(e) (filed Nov. 17,
2016) that were subsequent to the Examiner’s Determination and the Requester’s
41.77c Comments, Patent Owners argued that the Examiner did not consider the
additional limitations in claims 16, 18, 19, 21, and 22 (PO 41.77e Comments 9),
but ignored the Examiner’s express reference to Requester’s explanation of why
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Patent 7,888,445 B2

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the claimed amounts of melanoidin binder would be reasonably expected to have
been produced by the modified process of Worthington, Wallace, and Helbing.
The Board’s 44.77f Decision followed the Requester’s reasoning, which had
been adopted by the Examiner, namely:
[T]he Examiner found that the amounts of reducing sugar
carbohydrate present in Worthington meet the claimed requirement of
“about 73% to about 96% of a total dry weight of binder reactants.”
Examiner's 41.77d Determination 13. Patent Owner did not dispute
that such amounts of reducing sugar carbohydrate are described by
Worthington.
41.77f Dec. 11.
It is not disputed that Worthington describes the recited amounts of
carbohydrate, as well as ammonium (and other amine) and
polycarboxylic acid. DOA 21. The amounts of amine and ammonia in
Worthington (col. 3, 11. 17–22, 45–50; col. 5, 11. 20–25; Example 1
at col. 8; Table spanning cols. 7-8, e.g., Nos. 2 and 22) do not appear
to be insubstantial, but rather are substantial reactants. While
Worthington may not have recognized that a melanoidin was
produced, because [of] the presence of all reactants recited in the
claims and in substantial amounts, it is reasonable to conclude that the
Maillard reaction took place, resulting in substantial amounts of
melanoidin.
Id. at 18.
Thus, the 41.77f Decision did not set forth a new ground of rejection
because the reasoning in the 41.77f Decision was the same as that adopted by the
Examiner’s Determination, i.e., the cited publications describe the same quantities
of reactants as claimed, making it reasonable to find that the Maillard reaction
occurred and produced the same product in the same amounts recited in the claims.
Because Requester originally set forth this rationale in the Requester’s 41.77c
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Patent 7,888,445 B2

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Comments, which was later adopted by the Examiner’s Determination under
41.77d, Patent Owners had a full and fair opportunity to respond to it.
Patent Owners contend that the Board improperly shifted the burden to
Patent Owner to show the melanoidin was not formed in the same quantities
recited in the rejected claims. We do not agree that the burden was improperly
shifted. The burden is properly shifted to patent owner when there is a factual
basis to believe a skilled artisan would have made substantially identical products
from the teachings of the prior art:
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, and its fairness is
evidenced by the PTO’s inability to manufacture products or to obtain
and compare prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (footnote omitted).
As explained above, the Requester originally set forth a factual basis for
finding that the modified process of Worthington, Wallace, and Helbing produced
melanoidin in the quantities encompassed by the claims. Patent Owners were
aware of this position in Requester’s 41.77c Comments, and adopted by the
Examiner’s Determination. Patent Owner’s main response to the rejection is that
melanoidin is not formed. PO 41.77e Comments 3. This argument was addressed
in the 41.77f Decision, beginning on page 11. Patent Owners, however, did not
respond to the so-called “quantities of melanoidin” evidence put forth by
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Patent 7,888,445 B2

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Requester, which provided the factual basis to have shifted the burden to Patent
Owners to prove that such quantities were not present. This burden has not been
met by Patent Owners.
In sum, Patent Owners did not persuasively identify a point overlooked or
misapprehended in the 41.77f Decision.

REHEARING DENIED

For Patent Owner:
BARNES & THORNBURG LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204

For Third Party Requester:

Tiffany L. Williams
KILPATRICK, TOWNSEND & STOCKTON LLP
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309