Ex Parte 7888445 et al

Patent Trial and Appeal Board

Apr 30, 2015

95000672 (P.T.A.B. Apr. 30, 2015)

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 05/01/2015
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
KUGEL, TIMOTHY J
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
05/01/2015 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 GMBH
Patent Owner and Respondent
____________

Appeal 2015-001313
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.

DECISION ON APPEAL
This is a decision on the appeal by the Requester from the Patent Examiner’s
decision not to adopt rejections of claims 1–15 in the above–identified inter partes
reexamination of United States Patent 7,888,445 B2. The Board’s jurisdiction for
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this appeal is under 35 U.S.C. §§ 6(b), 134, and 315 (pre–AIA). We affirm but set
forth new grounds of rejection against newly added claims 16–22.

BACKGROUND
The patent in dispute in this appeal is United States Patent 7,888,445 B2
(“the ’445 patent”) which issued Feb. 15, 2011. The patent is subject to a terminal
disclaimer. The real party in interest and owner of the ’445 patent is Knauf
Insulation GmbH (“Patent Owner”). Owner Respondent Brief 1 (June 2, 2014;
“Owner Resp’t Br.”). Knauf Insulation GmbH is the Respondent in this
proceeding.
A request for inter partes reexamination of the ’445 patent was filed June
30, 2012 by Rockwool International A/S (“Requester”) under 35 U.S.C. §§ 311–
318 and 37 C.F.R. §§ 1.902–1.997. Requester is the Appellant in this proceeding.
The Examiner made a determination favorable to the patentability of
amended claims 1–7 and new claims 8–22. Right of Notice Appeal (“RAN”).
Requester appeals from this decision.
An oral hearing was held January 21, 2015. A transcript of the hearing has
been entered into the record (“Hearing Tr.”).
The claimed subject matter of the ’445 patent involves the manufacture of a
thermoset binder bound with a material, such as glass fibers. The method
comprises reacting ammonium, a carbohydrate, and a polycarboxylic acid to
produce melanoidin. ’445 patent, col. 2, ll. 42–59. Melanoidin is a product of the
known Maillard reaction. Id. at col. 2, ll. 23–44. The binder containing
melanoidin is mixed with a material, such as glass fibers, to make a fabricated
product. Id. at col. 1, l. 63 to col. 2, l. 5.
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There are two groups of claims at issue under this appeal. The first group
includes claims 1–15 which recite the limitation that that the ratio of the number of
moles of the ammonium salt of the tricarboxylic acid to the number of moles of the
monosaccharide is about 1:5, about 1:6, and about 1:7. The second group of
claims, claims 16–22, are not limited by this ratio.
Claims 1 and 17 are representative and read as follows (brackets and
underlining relative to the original claims):
1. A formaldehyde–free thermoset binder [comprising] consisting
essentially of a silicon-containing coupling agent, polyester
compounds, and melanoidin products cross–linked with a monomeric
[poly]tricarboxylic acid, wherein the polyester compounds and the
melanoidin products are formed upon dehydrating and curing
amixture that [includes] consists essentially of a [carbohydrate]
monosaccharide and an ammonium salt of the [poly]tricarboxylic
acid, wherein the ratio of the number of moles of the ammonium salt
of the tricarboxylic acid to the number of moles of the
monosaccharide in the mixture is about 1:5, about 1:6, or about 1:7.

17. A fiberglass insulation product, consisting essentially of:
a mat of mineral fibers and/or glass fibers (i) bound by a
formaldehyde free thermoset nitrogenous polymer and (ii) having a
silicon-containing coupling agent disposed on the mineral fibers
and/or glass fibers, wherein (i) the polymer consists essentially of
products produced from a chemical reaction consisting essentially of
bulk polymerizing an initially alkaline aqueous solution of a reducing-
sugar carbohydrate, ammonia, and a monomeric polycarboxylic acid,
(ii) the bulk polymerization is initiated subsequent to the aqueous
solution coming into contact with the mineral fibers and/or glass
fibers, and (iii) the polymer includes melanoidin products crosslinked
with ester linkages between the monomeric polycarboxylic acid and
one or more molecules of the melanoidin products.

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Claims 1–15
With respect to the first group of claims, Requester’s Corrected Appeal
Brief, filed June 12, 2014 (“Req. Appeal Br.”) appeals from the Examiner’s
decision not to adopt the following rejections under 35 U.S.C. § 103 (Req. Appeal
Br. 6):
1. Claims 1–15 under 35 U.S.C. § 103(a) as obvious in view of Wallace,1
Husemoen,2 Keritsis,3 and Agyei-Aye.4
2. Claims 1–15 under 35 U.S.C. § 103(a) as obvious in view of Wallace,
Hansen,5 Keritsis, and Agyei-Aye.
3. Claims 1–15 under 35 U.S.C. § 103(a) as obvious in view of Wallace,
Bjorksten,6 Keritsis, and Agyei-Aye.
4. Claims 1–15 under 35 U.S.C. § 103(a) as obvious in view of Wallace,
Dow Corning,7 Keritsis, and Agyei-Aye.
5. Claims 1–15 under 35 U.S.C. § 103(a) as obvious in view of Wallace,
Helbing,8 Keritsis, and Agyei-Aye.

1 Wallace et al., US 2,215,825, issued September 24, 1940.
2 Husemeon et al., US 6,878,800, issued April 12, 2005.
3 Keritsis, US 4,506,684, issued March 26, 1985.
4 Agyei-Aye et al., “The Role of Anion in the Reaction of Reducing Sugars with
Ammonium Salts,” Carbohydrate Research 2002, 337:2273-2277.
5 Hansen et al., US 6,730,730, issued May 4, 2004.
6 Bjorksten et al., “Polyester-Resin-Glass Fiber Laminates,” Industrial and
Engineering Chemistry, 1954.
7 Dow Corning, “A Guide to Silane Solutions,” 2005 pp. 1-29
8 Helbing, US 2005/0202224 A1, published September 15, 2005.
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Discussion
The Examiner’s reason for not adopting the rejections is that none of the
cited publications were said to teach or “fairly suggest[ ] the instantly claimed
mole ratios” of “about 1:5, about 1:6, or about 1:7.” RAN 10, 28.
Requester contends that the Examiner erred in this determination and that it
would have been obvious to one of ordinary skill in the art to have made a product
where the number of moles of the tricarboxylic acid (e.g., citric acid) to the number
of moles of the carbohydrate (e.g., dextrose) is about 1:5, about 1:6, and about 1:7.
The table below summarizes the ratios disclosed in the ’445 and their effect
on wet strength (a property of the binder), and the ratios described in Wallace and
Agyei-Aye:
Source Ratio of
carboxylic
acid (citric
acid) to
carbohydrate
(dextrose)
Wet strength
at 350°C9
Table 1 (’445 patent) 1:30 Dissolved No wet strength
Table 1 (’445 patent) 1:15 Dissolved No wet strength
Table 1 (’445 patent) 1:10 Partially
dissolved
Minimal wet
strength
Wallace (Examiner
calculation) (Non–
final action, p. 13,
9/7/12)
1:9.44
Table 1 (’445 patent) 1:7 Softened Intermediate wet
strength
Table 1 (’445 patent) 1:6 Softened Intermediate wet
strength

9 Example 3 (’445 patent, col. 18); Table 1 (id. at cols. 33-34)
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Table 1 (’445 patent) 1:5 Softened Intermediate wet
strength
Table 1 (’445 patent) 1:4 Softened Intermediate wet
strength
Wallace (Requester
calculation)
(Comments after
non–final, p. 9,
12/7/12) (based on
dextrose content of
molasses)
1:2.26
Agyei–Aye (Patent
Owner calculation)
(Remarks, p. 11,
11/7/12)
1:1

As shown in the table above, Wallace utilized a ratio of carboxylic acid to
carbohydrate of 1:9.44 or 1:2.26, depending on whether the Examiner’s or
Requester’s calculation is used. Neither ratio overlaps with the claimed ratio of
“about 1:5, about 1:6, or about 1:7.” Agyei-Aye used a ratio of 1:1. This ratio also
does not overlap with the claimed ratio. The issue is whether it would have been
obvious to one of ordinary skill in the art to have selected the claimed ratios based
on the teachings of Wallace and Agyei-Aye.
To establish obviousness, there must be a reason to have started with the
prior art ratios of 1:9.44, 1:2.26, or 1:1 and then to have chosen the ratios recited in
the claims. It is well-established that the “discovery of an optimum value of a
result effective variable in a known process is ordinarily within the skill of the art.”
In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Requester contends that the ratio
between carboxylic acid and carbohydrate is a result-effective variable. As
evidence of this, Requester provided a declaration by Povl Nissen (Nissen Decl.),
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Chief Engineer of Rockwool International A/S, the Requester in this proceeding.
Nissen Decl. ¶ 1.
Mr. Nissen testified:
In my experience, adjusting the molar ratio of the carboxyl group
(contributed by the monomeric polycarboxylic acid component) to the
hydroxyl group (contributed by the monosaccharide carbohydrate
component) is a well-known technique to alter binder properties, such
as Wet Strength.
Nissen Decl. ¶ 12.
As summarized above, Table 1 of the ’445 patent shows that as the ratio
between the carboxylic acid and carbohydrate gets larger, the wet strength
improves. Mr. Nissen states that in his experience adjusting the ratio was a known
technique, but provided no factual or extrinsic evidence for his opinion. Id.
Requester did not identify a teaching in either Wallace or Agyei-Aye for this fact
or any other publication in this proceeding. Wallace, Agyei-Aye, Worthington,
and Husemoen each teach compositions comprising a polycarboxylic acid and
carbohydrate, but Mr. Nissen did not refer to a disclosure in these publications that
would have led one of ordinary skill in the art to have arrived at the claimed ratio
or that shows adjusting the ratio was a known result-effective variable. Absent
factual evidence to support his opinion, we give Mr. Nissen’s testimony little
weight. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004)
(“[T]he Board is entitled to weigh the declarations and conclude that the lack of
factual corroboration warrants discounting the opinions expressed in the
declarations.”).
Patent Owner provided evidence that the claimed ratios achieve different
results with respect to the product’s properties.
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The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable
within the claims. These cases have consistently held that in such a
situation, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected
results relative to the prior art range.
In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). (Internal citations omitted.)
Patent Owner argues “Wet Strength . . . ‘noticeably and surprisingly’
decreases between a molar ratio of 1:7 and 1:10, thereby demonstrating that the
claimed range of molar ratios is indeed critical and non-obvious over the 1:9.44
mole ratio of Wallace.” Owner Resp’t Br. 15. As evidence, Patent Owner points
to the data in Table 1 of the ’445 patent reproduced above showing that the
claimed ratios of about 1:7, 1:6, and 1:5 have superior strength to the ratio of 1:10
and smaller ratios. Id. Patent Owner argues that the ratio of 1:9.44 is close enough
to 1:10 that it would have been expected to have the same strength. Id. Mr. Nissen
testified that he would have expected such a decrease in strength, but did not
support his opinion by factual evidence. Nissen Decl. ¶ 11.
With regard to the prior art compositions having ratios of 1:2.26 and 1:1,
there is no teaching in the prior art that such compositions would have been
modified to have the recited ratios for any purpose—let alone for the purpose of
achieving the wet strengths shown in the ’445 patent. (“[A]ny need or problem
known in the field of endeavor at the time of invention and addressed by the patent
can provide a reason for combining the elements in the manner claimed.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007).) Consequently, the skilled
worker would not have had further reason to pick them such values.
In view of the lack of a showing that the ratio between the tricarboxylic acid
and carbohydrate was known to be a result-effective variable, and the evidence that
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the claimed ratios are critical to wet strength, we conclude that the Examiner’s
determination not to adopt rejections 1–5 of claims 1–15 is supported by a
preponderance of the evidence.

Claims 17 and 20
Requester appeals to the Board from the Examiner’s determination favorable
to the patentability of claims 17 and 20, specifically identifying an anticipation
rejection under 35 U.S.C. § 102 and obviousness rejections under 35 U.S.C. § 103
as rejections not adopted. Req. Appeal Br. 6–7. However, as explained below,
such rejections were set forth for the first time in Requester’s Corrected Notice of
Appeal, filed March 3, 2014, and first explained in Requester’s Corrected Appeal
Brief, filed June 12, 2014.10 Thus, such proposed rejections are improper.

10 Requester filed an original Notice of Appeal on August 16, 2013, noticing the
appeal of claims 1–22. Patent Owner filed a Notice of Cross-Appeal on August
30, 2013, noticing that Requester’s appeal was improper. In two separate Notice
of Defective Notice of Appeal, mailed January 31, 2014, the Examiner identified
that Requester’s original Notice of Appeal, filed August 16, 2013, appealed
particular grounds of rejection that were never proposed and for which there was
never a final determination to not adopt the grounds of rejection. The Examiner
identified Requester’s proposed rejections with respect to claims 16, 18, 19, 21,
and 22 as being improper. The Examiner also notes that the Requester’s Appeal
Brief, filed October 16, 2013, and Patent Owner’s Respondent Brief, filed
November 18, 2013, were to have been expunged from the record. The Examiner
also identified that Patent Owner’s Notice of Cross-Appeal of August 30, 2013,
was improper for failing to appeal any adopted rejections. The Notice also noted
that Patent Owner’s Appeal Cross-Appeal Brief, filed October 30, 2013, and
Requester’s Respondent Brief, filed November 27, 2013, were to have been
expunged from the record. Respondent thus filed a Corrected Notice of Appeal on
March 3, 2014, and a Corrected Appeal Brief on June 12, 2014, citing only
rejections to claims 1–15, 17 and 20. Patent Owner filed a Respondent Brief on
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Patent Owner added new claims 16–22 by amendment on November 7, 2012
in response to a non–final Office Action. Patent Owner Remarks after Office
Action (“Owner Remarks”). On December 7, 2012, Requester responded to the
new claims by identifying where in the references already of record the limitations
of the claims are described. Requester Comments 23–35. While Requester did not
specifically propose a rejection, Requester explained why the claims were not
patentable over the prior art already of record in the proceeding. Id. Subsequently,
in the Action Closing Prosecution (“ACP”), the Examiner made a determination
favorable to the patentability of the new claims (ACP 37), but did not expressly
address Requester’s arguments against their patentability—apparently because the
Requester did not “specifically assert any new ground of rejection.” ACP 4. The
Examiner’s explanation as to why the new claims were patentable focused
primarily on the cited prior art references individually and as anticipatory, and did
not consider Requester’s obviousness arguments.
In the Appeal Brief, filed June 12, 2014, Requester proposed new rejections
of claims 17 and 20. Patent Owner regards such new rejections as procedurally
improper. Owner Resp’t Br. 3, 5–9. We agree that Requester’s attempt to propose
rejections at this time is not compliant with the rules. 37 C.F.R. § 41.67(c)(vi)
specifically prohibits new grounds of rejection “unless such ground was withdrawn
by the examiner during the prosecution of the proceeding, and the third party
requester has not yet had an opportunity to propose it as a third party requester
proposed ground of rejection.” These circumstances have not been satisfied here

June 2, 2014, addressing the arguments in the Requester’s Corrected Appeal Brief.
The Examiner did not identify any of these documents as being defective for
containing grounds of rejection that were never proposed and for which there was
never a final determination to not adopt the grounds of rejection.
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since Requester could have proposed the rejections in their Comments on Dec. 7,
2012, but did not.
Nonetheless, the Board has the authority under 37 C.F.R. § 41.77(b) to make
a new ground of rejection
should the Board have knowledge of any grounds not raised in the
appeal for rejecting any pending claim, it may include in its opinion a
statement to that effect with its reasons for so holding, which
statement shall constitute a new ground of rejection of the claim.
In Q.I. Press Controls, B.V. v. Lee, 752 F.3d 1371, 1383–84 (Fed. Cir.
2014), the Federal Circuit chided the Board for not making a new ground of
rejection under § 41.77(b) when a new ground of rejection was apparent (“Here,
when all these references were before the Board, and this court, an obligation is
owed to the public not to permit inconsistent results when a proper challenge to
that inconsistency is made on appeal.”). We understand there is a certain
incongruence in making new rejections now under § 41.77(b), when Requester did
not make an effort by petitioning the Examiner to make the new rejections, or
otherwise making sure its arguments were considered by the Examiner before
proceeding to appeal. However, when Requester’s comments, immediately after
the new claims were added, made unpatentability arguments that were not
acknowledged by the Examiner in his reasons for confirming the patentability of
the claims, we believe it is improper to overlook them in reaching a final decision.
This reasoning is especially true if, as here, Requester has found features in a
single prior art reference, which would be sufficient to suggest a proposed factual
finding of anticipation. For this reason, we have considered the patentability of
claims 16–22 in view of the prior art of record and have determined that the claims
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are not patentable. The rejections are designated as new grounds of rejection and
are explained in detail below.

ANTICIPATION BY HUSEMOEN
A. Claims 17 and 20 are rejected under 35 U.S.C. § 102(b) as anticipated by
Husemoen.
Claim 17
“fiberglass insulation product”
The claim is directed to a fiberglass insulation product “consisting
essentially of” a mat of mineral and/or glass fibers having a silicon-containing
coupling agent disposed thereon and a formaldehyde free thermoset nitrogenous
polymer. The product is formed by polymerizing an alkaline aqueous solution
comprising a carbohydrate, ammonia, and a polycarboxylic acid that is in contact
with the mineral and/or glass fibers. Husemoen describes a product formed with
mineral fibers.
H1. Husemoen teaches a “a process for providing a binder for mineral
fibers, i.e. man made vitreous fibers, for example glass, slag or stone wool, a
binder obtainable via such a process, and a mineral wool product comprising such
a binder.” Husemoen, col. 1, ll. 7–11.
H2. Husemoen teaches adding the binder to shots made of mineral fiber. Id.
at col. 10, ll. 65–67.

“polymerizing an initially alkaline aqueous solution”
The claim recites that the product is produced from a chemical reaction
“consisting essentially of bulk polymerizing an initially alkaline aqueous solution
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of a reducing-sugar carbohydrate, ammonia, and a monomeric polycarboxylic
acid.” As explained below, Husemoen teaches such a process.
Husemoen’s process has two parts: the first part is described in H3 below
and the second part is described starting in H4.
H3. Husemoen teaches a first step in its process comprising “mixing
together under reaction conditions, an amine and an anhydride, whereby water is
added thereto only after the anhydride has substantially dissolved in and/or reacted
with the amine, and the reaction is thus terminated.” Id. at col. 1, ll. 4–43. See id.
at col. 3, ll. 13–25 for a description of the anhydrides and amines. The amine can
be diethanolamine (DEA). Id. at col. 3, ll. 20–21.
This first part of Husemoen’s process does not include the claimed alkaline
aqueous solution.
Polycarboxylic acid
A subsequent second step carried out in Husemoen produces a monomeric
carboxylic acid as recited in the claim. This is explained in findings of fact H4 and
H5.
H4. Husemoen teaches
A second anhydride is preferably added to the reaction mixture
whereby the water is preferably added to the reaction mixture
immediately before or together with the second anhydride, or when
substantially all of the second anhydride is dissolved in and/or reacted
with the mixture of the first anhydride and the amine.
Id. at col. 1, ll. 44–49.
When water is added to an anhydride, a polycarboxylic acid results. Id. at
col. 4, ll. 32–35; Requester App. Br. 15. Husemoen specifically teaches unreacted
carboxylic acids upon addition of the water to the second anhydride:
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H5. Husemoen teaches that a resin made according to its method has
unreacted polycarboxylic acids (as required by the claims) after the addition of the
water from H4. Id. at col. 2, l. 64 to col. 3, l. 10. “The first and second anhydrides
are chosen to provide reaction products with a large number of unreacted
polycarboxylic acid groups, which is preferable for water solubility.” Id. at col. 4,
ll. 32–35.

Ammonia
H6. Husemoen teaches adjusting the pH to “a pH of about 8, whereby a pH
of between about 6–8 is preferred, more preferred being a pH of about 7.” Id. at
col. 4, ll. 20–23. “Suitable bases could be NH3, DEA, TEA, or alkali hydroxides.”
Id. at col. 4, ll. 27–28. In the examples, ammonium hydroxide is listed. Id. at col.
10, 43–45. Thus, Husemoen teaches ammonia as required by the claims.

Reducing-sugar carbohydrate
A “reducing-sugar carbohydrate” is also present in the claimed aqueous
alkaline solution. Husemoen describes sugars, such as glucose, as additives:
H7. Husemoen teaches that the reaction mixture can comprise accelerators
and resin additives. Id. at col. 3, l. 27–30.
H8. Among the list of additives are mono-, di- and polysaccharides, such as
sucrose and glucose syrup. Id. at col. 3, ll. 40–42; claim 16.

Polymerizing
The claim requires that the aqueous solution is polymerized.
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H9. Husemoen describes curing the binder to form a cross-linked polymer,
and thus meets the “polymerizing” requirement of the claim. Id. at col. 2, ll. 11–
15.

“polymer includes melanoidin”
The claims recite that “polymer includes melanoidin products crosslinked
with ester linkages between the monomeric polycarboxylic acid and one or more
molecules of the melanoidin products.”
Husemoen describe the same three components recited in the claim, i.e.,
polycarboxylic acid, ammonia, and reducing sugar.
H10. Because the reactants are the same, there is reasonable basis to believe
that a crosslinked product with ester linkages would result from the carboxylic acid
and the carbohydrate.
H11. There is also reasonable basis to believe that the amine of the dissolved
ammonia and the carbohydrate in Husemoen would form melanoidin.
Melanoidin, as explained in the ’445 patent, is a product of the Maillard
reaction between an amine reactant and a reducing-sugar carbohydrate. ’445
patent, col. 2, ll. 25–46.
As shown above, Husemoen in the second part of its process has a solution
with the sugar (H8) and ammonium (H6) that would react to form a melanoidin
product. As evidence that melanoidin is formed by Husemoen, Requester provided
declarations by Povl Nissen (Nissen Decl.) and Jan Rud Anderson (Anderson
Decl.). Requester App. Br. 9.
Povl Nissen is one of the co-inventors of the Husemoen patent. Nissen Decl.
¶ 4. Mr. Nissen testified that he made binder according to Husemoen. Id. at ¶ 7.
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The binder included dextrose which was not present in any of Husemoen’s
working examples. Husemoen, cols. 5–10. Mr. Nissen testified that binder made
according to Husemoen had an increase of 3% in the C:N ratio with cure
temperature and time which was of the same magnitude of a binder made
according to example 4 of the ’455 patent and which is characteristic of
melanoidin. Nissen Decl. ¶ 7. Mr. Nissen also testified that furan based gaseous
compounds were produced during manufacture of Husemoen’s binder, a feature
which Patent Owner said was indicative of melanoidin production via Maillard
chemistry. Id. at ¶¶ 8–9. Thus, two of the binder characteristics (C:N ratio; furan)
which Patent Owner asserted were possessed by melanoidin (Owner Remarks 8)
were demonstrated to be present in the binder made following Husemoen’s
directions.
Patent Owner stated the Husemoen’s amide based binder would “show a
strong infra-red absorbance near 1690–1630 cm–1 consistent with amide carbonyl
C–O, rather than ester carbonyl C–O, vibrations, and [would] show a new infra-red
absorbance near 3700–3500 cm–1 consistent with amide carbonyl N–H vibrations.”
Owner Remarks 8 (emphasis added).
Dr. Anderson, Senior Project Manager of Rockwool International A/S
(Anderson Decl. ¶ 1), testified that the IR spectra of binder made according to the
’445 patent had infra-red absorbance with the 3700–3500 cm–1 range, the same
characteristic Patent Owner argued was possessed by Husemoen’s allegedly
different binder. Id. at ¶¶ 4, 5. Thus, Dr. Andersen rebutted, in part, Patent
Owner’s attempt to distinguish Husemoen’s binder from the claimed binder
comprising melanoidin.
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In sum, the preponderance of the evidence supports Requester’s contention
that Husemoen describes a binder that comprises melanoidin.

“alkaline aqueous solution”
The claim recites that the aqueous solution is “alkaline.”
H12. Husemoen teaches adjusting the pH of the solution to pH 8 which is
an alkaline pH. H6.

“silicon-containing coupling agent”
The claimed product contains a silicon-containing coupling agent.
H13. Husemoen describes a silicon coupling agent in its binder. Husemoen,
col. 4, ll. 7–19; col. 9, ll. 46–49.

“consists essentially of”
The claims have two instances in which the phrase “consisting essentially
of” is recited:
“A fiberglass insulation product, consisting essentially of” and
“the polymer consists essentially of products produced from a chemical
reaction consisting essentially of bulk polymerizing an initially alkaline aqueous
solution of a reducing-sugar carbohydrate, ammonia, and a monomeric
polycarboxylic acid.”
“Consisting essentially of” is a transition phrase commonly used to
signal a partially open claim in a patent. Typically, “consisting
essentially of” precedes a list of ingredients in a composition claim or
a series of steps in a process claim. By using the term “consisting
essentially of,” the drafter signals that the invention necessarily
includes the listed ingredients and is open to unlisted ingredients that
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do not materially affect the basic and novel properties of the
invention.
PPG Indus. v. Guardian Indus.Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998)
(emphasis added).
Patent Owner added the “consists essentially” language in the amendment
filed Nov. 7, 2012 (“Owner Remarks”). Patent Owner stated that Husemoen
includes materials and steps that alter the basic characteristics of the invention,
e.g., specifically citing the step described in H3. Owner Remarks 22–23.
This argument is not persuasive. As already discussed, Mr. Nissen provided
evidence that melanoidin is made when Husemoen’s instructions are followed.
Nissen Decl. ¶ 7–9. Patent Owner did not provide sufficient evidence to rebut this
conclusion. Neither the ’445 patent nor Patent Owner’s arguments clearly explain
how the alleged presence of another polymer would affect the basic and novel
properties of the claimed melanoidin composition.

Summary
For the foregoing reasons, we conclude that Husemoen anticipates claims 17
and 20.
ANTICIPATION/OBVIOUSNESS IN VIEW OF HUSEMOEN
B. Claims 16, 18, 19, 21, and 22 are rejected under 35 U.S.C. § 102(a) as
anticipated by, or alternatively under 35 U.S.C. § 103(a) as obvious in view of,
Husemoen.
Claims 16, 18, 19, 21, and 22 do not appear to be significantly different from
claims 17 and 20 other than reciting that “the mineral fibers and/or glass fibers of
the mat are present in a range from about 80% to about 99% by weight.”
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Husemoen discloses using 450 g mineral fiber shot, 90 ml binding solution, and
0.2%–3% silane coupling agent. Husemoen, col. 11, ll. 3–7. This value is about
83% mineral fiber shot (450/[450+90=540]) which falls with the scope of the
claim. Consequently, for this reason and those outlined above, we conclude that
Husemoen anticipates claims 16, 18, 19, 21, and 22.
Alternatively, Patent Owner did not provide any arguments or evidence that
would distinguish the claimed amounts, or other features recited in the claims,
from the product described in Husemoen. Consequently, absent evidence of the
criticality of such amounts, we conclude that it would have been obvious to one of
ordinary skill in the art to adjust the amount of glass or mineral fiber in Husemoen
to achieve the desired properties, such as dry and wet bending strength.
Husemoen, col. 11. For these reasons, we conclude that claims 16, 18, 19, 21, and
22 are obvious in view of Husemoen.

OBVIOUSNESS
C. Claims 16–22 are rejected under 35 U.S.C. § 103(a) as obviousness in
view of Worthington, Wallace, and Hebling.

Worthington
Wo1. Worthington describes a thermosetting composition for use in making
shell molds or cores. Worthington, col. 1, ll. 20–33.

Reducing sugar carbohydrate, ammonia, and a polycarboxylic acid
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Claims 16–22 require a reducing sugar carbohydrate, ammonia, and a
polycarboxylic acid. These elements are described in Worthington as follows
(emphasis added):
Wo2. The composition comprises (1) a carbohydrate, (2) a salt of an acid,
such as ammonium sulphate, and (3) a carboxylic acid. Id. at col. 1, ll. 53–65.
Wo3. The composition further comprises a (4) cross–linking agent and (5)
an amine. Id.
Wo4. Worthington teaches that the (1) carbohydrate can be a
monosaccharide, such as dextrose, or a disaccharide. Id. at col. 2, ll. 5–15; cols. 7–
8 (Experiments 1–24).
Wo5. Worthington teaches that the thermosetting composition comprises
(2) the salt of an acid which can be ammonium sulphate. Id. at col. 1, ll. 55–58;
col. 3, ll. 4–9.
Wo6. Worthington teaches the thermosetting composition also comprises
(3) a polycarboxylic acid. Worthington, col. 1, ll. 59–60.
The claims also require the components to be in an alkaline aqueous
solution. Worthington does not describe the pH of its composition, but it does
teach an aqueous solution.
Wo7. The components are in the form of an aqueous solution. Id. at col. 5,
ll. 14–18.
Wo8. In sum, Worthington describes an aqueous solution (Wo7) which
“includes” a reducing sugar–carbohydrate (Wo4), an ammonium salt (“ammonia”
as required by the claims) (Wo5), a polycarboxylic acid (Wo6) as recited in claims
16–22.

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Polymerizing to form thermoset polymer
The claimed fiberglass insulation product of claims 16–22 includes a
thermoset polymer which is formed by “polymerizing” the alkaline aqueous
solution.
Wo9. Worthington describes a thermosetting composition. Id. at col. 1, ll.
29–30.
Wo10. Worthington teaches mixing the refractory material (sands) with the
composition and curing it with heat. Id. at col. 9, ll. 7–13; Example 4 (cols 8–9).
Wo11. Such curing step meets the polymerizing requirement of claims 16–
22 because Worthington teaches the heat turns the composition into a rigid foam
with mechanical strength (id. at col. 10, ll. 11–14; col. 9, Table 2).

Mineral or glass fibers; fiberglass insulation product
The claims require that the aqueous solution was contacted with mineral
and/or glass fibers to form the claimed fiberglass insulation product.
Wo12. Worthington teaches mixing the composition with “a granular
refractory material such as silica sand, zircon sand or any of the other refractory
materials commonly used and well known to those engaged in the foundry
industry.” Id. at col. 4, ll. 19–23.
Wo13. The composition forms a shell mold or core, or other plastic article.
Id. at col. 1, ll. 29–36.
Wo14. Worthington does not disclose a fiberglass insulation product as
recited in claims 16–22.

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Silicon-containing coupling agent
The claims recite “a silicon–containing coupling agent disposed on the
mineral fibers and/or glass fibers.”
Wo15. Worthington describes utilizing a cross-linking agent in its
thermoset composition, but does not specifically disclose that it contains silicon.
Id. at col. 2, ll. 42–46.

Summary
In sum, Worthington describes a thermoset composition with the same
compounds recited in the claims, but (1) not that the solution is alkaline; (2) not
that the solution is deposited on glass fibers to form a fiberglass insulation product;
and (3) not the same coupling agent (“cross-linking agent” in Worthington) which
is claimed.
Wallace
Wa1. Wallace teaches sand cores for use in the casting of metals. Wallace
1 (col. 1): 1–2.
Reducing sugar carbohydrate, ammonia, and a polycarboxylic acid
Claims 16–22 requires a reducing sugar carbohydrate, ammonia, and a
polycarboxylic acid. These elements are described in Wallace as follows:
Wa2. Wallace describes making its sand core with “black strap molasses,
an uncrystallizable sugar, such as glucose and dextrose, a starch or dextrine.” Id.
at 1 (col. 1): 19–21.
Wa3. Wallace further describes making its sand core with ammonium
sulphate. Id. at 1 (col. 1): 42; 1 (col. 2): 34–40.
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Wa4. In addition to the sugar and ammonium sulphate, Wallace teaches
adding a glycerol-citric acid resin to the core. Id. at 1 (col. 1): 45–46; 1 (col. 2): 7–
13. Citric acid is a polycarboxylic acid.
Wa5. Wallace also teaches adding water to the components (id. at 1 (col.
1):42–49) which would form an aqueous solution.
Wa6. In sum, Wallace describes the claimed aqueous solution (Wa5)
containing a reducing sugar carbohydrate (glucose) (Wa2), ammonia in the form of
ammonia sulphate (Wa3), and a polycarboxylic acid (citric acid) (Wa4).
Wa7. Wallace does not teach the pH of its solution.

Polymerizing to form thermoset polymer
The claimed fiberglass insulation product of claims 16–22 includes a
thermoset polymer which is formed by “polymerizing” the alkaline aqueous
solution.
Wa8. Wallace teaches baking the aqueous solution at a temperature
preferably between 180°C to 300°C. Id. at 1 (col. 2): 24–30.
Wa9. Such baking step meets the polymerizing requirement of claims 16–
22 because Wallace teaches that the baking produces a core which is highly
water-insoluble and unusually tough. Id. at 1 (col. 2): 28–50.

Mineral or glass fibers; fiberglass insulation product
The claims require that the aqueous solution was contacted with mineral
and/or glass fibers to form the claimed fiberglass insulation product.
Wa10. Wallace teaches mixing the binder of Wa2–Wa7 with sand to form
the core. Id. at 1 (col. 2):20–23.
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Wa11. Wallace does not disclose a fiberglass insulation product as recited
in claims 16–22.

Summary
In sum, Wallace describes a thermoset composition with the same
compounds recited in the claims, but (1) not that the solution is alkaline; (2) not
that the solution is deposited on glass fibers to form a fiberglass insulation product;
and (3) not with a silicon-containing coupling agent.

Helbing
He1. Helbing describes a binder for non-woven fibers, such as fiberglass.
Helbing ¶ 7.

Ammonia and polycarboxylic acid in alkaline solution
Claims 16–22 requires a carbohydrate, ammonia, and a polycarboxylic acid.
Ammonia and a polycarboxylic acid are expressly described in Helbing.
He2. The binder described in Helbing comprises (1) a polyacid component
having acid groups, which can be a polycarboxylic acid; (2) a polyhydroxy
component having hydroxyl groups; and (3) a base such as ammonia which is
used to neutralize the polyacid and as a catalyst. Id. at ¶¶ 8, 27.
He3. The polyacid in Helbing can be polycarboxylic acid. Id. at ¶ 8.
He4. Helbing also teaches the addition of ammonia or as an ammonium salt.
¶¶ 8, 20, 27.
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He5. Helbing teaches that “the pH of the binder composition is greater than
7, or, illustratively, is in the range from about 7 to about 10.” Id. at ¶ 9. Helbing
teaches that avoiding acidic binder compositions, which “cause corrosion problems
in manufacturing equipment . . . eliminating the need to retrofit such plants with
stainless steel equipment.” Id. at ¶ 22.
He6. The combination of the polyacid, polyhydroxy component, and
ammonia is an aqueous alkaline solution as required by claims 16–22. Id. at ¶ 7;
He5.

Reducing-sugar carbohydrate
The claims also require a reducing-sugar carbohydrate.
He7. Helbing does not expressly teach a reducing sugar carbohydrate
reactant as recited in claims 16–22.
He8. However, Helbing teaches a polyhydroxy compound. Id. at ¶ 8.
He9. A sugar, such as dextrose, is a polyhydroxy compound.11

Polymerizing to form thermoset polymer
The claimed fiberglass insulation product of claims 16–22 includes a
thermoset polymer which is formed by “polymerizing” the alkaline aqueous
solution.
He10. Helbing contacting fibers, such as glass fibers, with the thermally
curable aqueous binder composition described above and heating to cure the binder

11 http://en.wikipedia.org/wiki/Glucose (accessed March 9, 2015) (shows D-
glucose with five hydroxyl groups).
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composition to form a thermoset polyester. Id. at ¶¶ 9, 10. The temperature can be
at 300°F or 350°F to cure it. Id. at ¶ 41.
He11. Such heating/baking step (He10) meets the polymerizing limitation
of the claims because it results in “a structural or morphological change in the
aqueous binder . . . that is sufficient to alter the properties of non-woven fibers to
which an effective amount of binder has been applied.” Id. at ¶ 12.

Mineral or glass fibers; fiberglass insulation product
The claims require that the aqueous solution was contacted with mineral
and/or glass fibers to form the claimed fiberglass insulation product.
He12. Helbing teaches making a fiberglass insulation product. Id. at ¶¶ 6,
11. Helbing also describes a glass fiber product and glass fibers. Id. at ¶¶ 10, 16.

Silicon-containing coupling agent
The claims recite “a silicon-containing coupling agent disposed on the
mineral fibers and/or glass fibers.”
He13. Helbing describes a silicon-containing agent as a coupling agent. Id.
at ¶¶ 8, 21.

Summary
In sum, Helbing describes a thermoset composition with the same
compounds recited in the claims, but (1) not that the polyhydroxy compound is a
reducing sugar.

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Discussion
Each of Worthington and Wallace describes a binder composition with a
carbohydrate, a polycarboxylic acid, and ammonia in an aqueous solution. Wo8;
Wa6. Thus, a preponderance of the evidence establishes that the claimed
combination of three recited components in an aqueous solution to form a strong
binder composition was known in the prior art.
To the extent that Patent Owner contends that neither Worthington nor
Wallace describes an alkaline solution (Owner Remarks 31, 36), Hebling teaches a
binder composition that is an aqueous alkaline solution comprising a
polycarboxylic acid, ammonia, and a polyhydroxy (He2–9). While Hebling does
not teach that the polyhydroxy acid is carbohydrate, carbohydrates are
polyhydroxy acids. He9. Because the similar reactants are present in Hebling as
in Worthington and Wallace, it would have been reasonable to expect that the same
products are formed, and that such products would be formed under alkaline
conditions. The choice of alkaline conditions would have been obvious to one of
ordinary skill in the art based on Hebling’s selection of such a conditions in a
similar chemical reaction.
Patent Owner’s attempt to distinguish Helbing (Owner Remarks 41) ignores
the fact that a reducing sugar is a polyhydroxy component (He7–9). The selection
of a reducing sugar as a polyhydroxy component would have been suggested by
Worthington and Wallace (Wo8; Wa6) which have similar reactants to Helbing
(i.e., polycarboxylic acid and ammonia).
An alkaline solution would have been obvious to the skilled artisan because
Helbing explains the need to avoid acidic binder compositions (He5). Non-
obviousness cannot be established by attacking references individually where the
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rejection is based upon the teachings of a combination of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Alternatively, while Worthington and Wallace might be silent on pH, there
are only three choices—acidic, neutral, and alkaline pH—and each would have
been obvious to one of ordinary skill in the art because of the small number.
The claims require the alkaline aqueous solution to have been polymerized
with glass fibers to make a fiberglass insulation product. Worthington and Wallace
describe polymerizing the same aqueous solution on sand (Wo9–Wo14; Wa8–
Wa11); but not on glass fibers. However, Helbing, which teaches a very similar
binder composition, describes making a fiberglass insulation product by
polymerization of a binder composition with glass fibers. He10–He12. It would
have been obvious to used glass fiber in either of Worthington or Wallace in view
of Worthington’s teaching that any material “commonly used and well known to
those engaged in the foundry industry” can be used to fabricate a thermosetting
composition. Wo12. The use of a conventional material for its established
function would have been obvious to one of ordinary skill in the art. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“. . . a court must ask whether the
improvement is more than the predictable use of prior art elements according to
their established functions.”)
While neither Worthington nor Wallace uses a silicon-containing coupling
agent, Worthington describes using a coupling agent in its reaction. Wo15.
Helbing describes using a silicon-containing coupling agent in the same type of
reaction as in Wallace and Worthington. He13. It would have been obvious to one
of ordinary skill in the art to have utilized Helbing’s silicon-containing coupling
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agent in Worthington or Wallace for its known and expected function. KSR, 550
U.S. at 416–17.
The cited publications do not teach that a melanoidin product is formed as
recited in claims 16–22 and that such melanoidin has ester linkages also recited in
the claims. However, because the reactants recited in the claims are the same as
those in Worthington and Wallace, there is reasonable basis to believe that
melanoidin with ester linkages is formed.
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); In re Skoner,
517 F.2d 947, 950–51 (CCPA 1975) (“Appellants have chosen to describe their
invention in terms of certain physical characteristics [not described expressly in the
prior art].... Merely choosing to describe their invention in this manner does not
render patentable their method which is clearly obvious in view of [the prior art]."
(Citation omitted)).
The claims have two instances of “consisting essentially.”
“A fiberglass insulation product, consisting essentially of” and
“a chemical reaction consisting essentially of bulk polymerizing an initially
alkaline aqueous solution.”
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The phrase “consisting essentially of” excludes material which would affect
the basic and novel properties of the claimed invention. PPG, 156 F.3d at 1354.
There is insufficient evidence in the record before us that any materials in any of
Worthington, Wallace, or Helbing, which are not recited in claims 16–22, would
affect the basic and novel properties of the invention. Consequently, we conclude
this language is insufficient to distinguish the claimed subject matter over the
combination of Worthington, Wallace, and Helbing.
To the extent other materials and cross-linking agents are present, it has not
been established that such cross-linking agents and materials would prevent the
production of melanoidin and eliminate the cross-linkage with the polycarboxylic
acid.
Patent Owner argued:
the mere presence of a carbohydrate, an amine, and a polyacid in an
aqueous mixture does not inherently mean that those substances will
react in such a way as to form a thermoset nitrogenous polymer
formed via bulk polymerization subsequent to the aqueous mixture
being disposed upon the fibers. Further, the discussed reactants must
also react in such a way that melanoidins contained in the nitrogenous
polymer be cross-linked with the monomeric polycarboxylic acid.
Owner Remarks 25.
However, as indicated above, Patent Owner did not provide sufficient
evidence or arguments as to why the same reactants under the same conditions
recited in the claims would not form melanoidin with the claimed characteristics.

Helbing
Helbing describes a product which would have made the claimed process
obvious. As set forth above, Helbing describes the same reactants (He2–9) and the
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same process steps (He9–He11) as recited in the claims. Helbing’s solution can be
alkaline as required by the claims. He5. Helbing also describes the claimed
silicon-containing coupling agent. He13. Helbing makes a fiberglass insulation
product as claimed. He12. The main difference between claims 16–22 and
Helbing is that Helbing doesn’t expressly teach a reducing-sugar carbohydrate
such as dextrose. He7–He9. However, Helbing describes adding a polyhydroxy
reactant (He2, He6) and carbohydrates, such as dextrose, are polyhydroxy
compounds (He8). Each of Worthington (Wo4) and Wallace (Wa2) describe using
a carbohydrate in a reaction similar to the reaction of Hebling. Consequently, it
would have been obvious have utilized a carbohydrate in Helbing as an
exemplification of a polyhydroxy compound.

SUMMARY
The Examiner’s decision not to adopt rejections 1–5 of claims 1–15 is
AFFIRMED.
Claims 16–22 are rejected as set forth in Rejections A, B, and C discussed
above. These rejections are designated as new grounds of rejection.

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NEW GROUND OF REJECTION

This decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that "[a]ny decision which includes a new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Correspondingly, no portion of the decision is final for purposes of
judicial review. A requester may also request rehearing under 37 C.F.R. § 41.79, if
appropriate, however, the Board may elect to defer issuing any decision on such
request for rehearing until such time that a final decision on appeal has been issued
by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R. § 41.77(b)–
(g). The decision may become final after it has returned to the Board. 37 C.F.R.
§ 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN ONE
MONTH FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be either an
amendment of the claims so rejected or new evidence relating to the claims so
rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …
Any request to reopen prosecution before the examiner under 37 C.F.R.
§ 41.77(b)(1) shall be limited in scope to the "claims so rejected." Accordingly, a
request to reopen prosecution is limited to issues raised by the new ground(s) of
rejection entered by the Board. A request to reopen prosecution that includes
issues other than those raised by the new ground(s) is unlikely to be granted.
Furthermore, should the patent owner seek to substitute claims, there is a
presumption that only one substitute claim would be needed to replace a cancelled
claim.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be
limited in scope to the issues raised by the Board's opinion reflecting its decision to
reject the claims and the patent owner's response under paragraph 37 C.F.R.
§ 41.77(b)(1). A newly proposed rejection is not permitted as a matter of right. A
newly proposed rejection may be appropriate if it is presented to address an
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amendment and/or new evidence properly submitted by the patent owner, and is
presented with a brief explanation as to why the newly proposed rejection is now
necessary and why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for all
patent owner responses and requester comments, is required.
The examiner, after the Board's entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d) as to
whether the Board's rejection is maintained or has been overcome. The proceeding
will then be returned to the Board together with any comments and reply submitted
by the owner and/or requester under 37 C.F.R. § 41.77(e) for reconsideration and
issuance of a new decision by the Board as provided by 37 C.F.R. § 41.77(f).

AFFIRMED; 41.77(b)

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