Ex Parte 7888445 et al

Patent Trials and Appeals Board

Apr 30, 2015

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

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,672 06/30/2012 7888445 65461/836827 6906
23643 7590 09/08/2017
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
KUGEL, TIMOTHY J
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
09/08/2017 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 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.

DECISION UNDER § 41.77(f)
This is a final decision under 37 C.F.R. § 41.77(f). The above-identified
inter partes reexamination of U.S. Patent No. 7,888,445 B2 (“the ’445 patent”)
was decided by the Patent Trial and Appeal Board Decision on May 1, 2015
(“Decision on Appeal” or “DOA”).
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In the Decision on Appeal, pursuant to 37 C.F.R. § 41.77(b), three new
grounds of rejection of claims 16–22 were set forth. The new grounds of rejection
are as follows:
Ground A. Claims 17 and 20 under 35 U.S.C. § 102(b) as anticipated by
Husemoen ’800.
Ground B. Claims 16, 18, 19, 21, and 22 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 ’800.
Ground C. Claims 16–22 under 35 U.S.C. § 103(a) as obvious in view of
Worthington, Wallace, and Helbing ’224.
Patent Owner requested, under 37 C.F.R. § 41.77(b)(1), that prosecution be
re-opened (“Owner 41.77b Request”; Jun. 1, 2015). In the Request, Patent Owner
amended independent claims 16–22, inter alia, to recite specific amounts of the
reducing sugar carbohydrate:
the polymer is produced from a Maillard reaction in an initially
alkaline aqueous solution of a reducing-sugar carbohydrate and an
ammonium salt of a monomeric polycarboxylic acid, a dry weight of
the reducing-sugar carbohydrate making up about 73% to about 96%
of a total dry weight of binder reactants, all of the binder reactants
being dissolved in the aqueous solution.
Owner 41.77b Request v.
Patent Owner also provided First and Second Declarations by Carl Anthony
Hampson, Ph.D. which addressed the Husemoen rejections.
Requester submitted comments under 37 C.F.R. § 41.77(c) (“Requester
41.77c Comments”; Jul. 1, 2015). The comments were accompanied by Second
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Declarations of Povl Nissen (Exhibit II; “Nissen 2 Decl.”) and Jan Rud Anderson
(Exhibit III).
The proceeding was remanded to the Examiner for a determination under 37
C.F.R. § 41.77(d) whether the rejections are maintained or have been overcome.
The Examiner determined that the rejections (Grounds A. and B.) over Husemoen
’800 were overcome by the claim amendment. Examiner’s 41.77d Determination
7, 10 (Oct. 17, 2016). The Examiner determined, however, that Worthington,
Wallace, and Helbing ’224 (Ground C.) rendered the amended claims obvious and
maintained the rejection. Id. at 14.
In response to the Examiner’s 41.77d Determination, Patent Owner and
Requester filed comments under 37 C.F.R. § 41.77(e) (“Owner 41.77e
Comments”; Nov. 17, 2016) (“Requester 41.77e Comments”; Nov. 17, 2016).
Each party replied to each other’s comments as permitted under 37 C.F.R.
§ 41.77(e) (“Owner 41.77e Reply”; Dec. 19, 2016) (“Requester 41.77e Reply”;
Dec. 19, 2016).
After considering the entirety of the evidence relied upon in this appeal, in
agreement with the Examiner, we conclude that Grounds A. and B. have been
overcome by the claim amendments. Ground C., however, of claims 16–22 is
correctly maintained by the Examiner. Requester proposed three new rejections of
claims 16–22. Requester 41.77c Comments 13, 15, 20. Because claims 16–22
stand rejected on Ground C., we need not consider the proposed rejections.
This appeal is related to Appeal 2017-004910, Reexamination Control
95/000,675, of US Patent 7,772,347 B2 which is concurrently decided.

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THE PERSON OF ORDINARY SKILL IN THE ART
When making a patentability determination under 35 U.S.C. § 103(a), we
consider the claims and the scope and content of the prior art to be directed to one
of ordinary skill in the art. Thus, a determination as to whether the claims conform
to the patentability requirements of 35 U.S.C. is made from the perspective of one
of ordinary skill in the art. In this case, the claimed subject matter involves
chemistry related to the Maillard reaction and the production of thermoset binders.
There are multiple declarants in this proceeding, including scientists with Ph.D.’s
in chemistry, a B.Sc. in Chemical Engineering, and industry experience in binder
development (e.g., more than ten years’ experience). The cited prior art includes
patents, published patent applications, and scientific journal articles in the fields of
chemistry, binders, thermosetting compositions, and resins. Accordingly, the
person of ordinary skill in the art is a scientist, familiar with the patent and
scientific literature, who has Ph.D. in a chemical area, or a bachelor’s degree in a
chemical area with considerable industry experience in the development of binders,
and is knowledgeable in basic chemical principles.

CLAIMS
Claims 16–22 have been limited by amendment to a formaldehyde-free
thermoset binder or polymer comprising “a dry weight of the reducing-sugar
carbohydrate making up about 73% to about 96% of a total dry weight of binder
reactants, all of the binder reactants being dissolved in the aqueous solution.” The
amounts of the carbohydrates do not appear expressly in the ’445 patent but are
derived from calculations based on the examples. Owner 41.77b Request 4.

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REJECTIONS BASED ON HUSEMOEN ’800
The Examiner found that Grounds A. and B. based on Husemoen ’800 alone
are overcome by the amendment limiting the carbohydrate to “about 73% to about
96% of a total dry weight of binder reactants” because these amounts are not
described or suggested by Husemoen ’800.1 Examiner 41.77d Determination 7,
10.
Requester contends that the rejections should be maintained because the dry
weight of reducing sugar carbohydrates would have been obvious in view of
Husemoen ’800. Requester 41.77e Comments 2. These comments relate to the
obviousness Ground B. Requester did not provide comments on the Examiner’s
determination with respect to anticipation under Ground A.
Citing the second declaration by Mr. Nissen, Requester contends that “there
was significant motivation in the industry to find ways to drive down the costs of
formaldehyde-free binders and to do so using the same inexpensive ingredients that
had worked to optimize the formaldehyde binders in the past, namely, increasing
sugar content.” Id. Requester also stated that this was the same type of situation
as in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 402–03 (2007). Id.
Mr. Nissen testified that it was known that “sugar is an inexpensive binder
additive that can be added to these binders as an inexpensive ingredient that drives
down the raw material costs.” Nissen 2 Decl. ¶ 8. To support this opinion, Mr.
Nissen cited teachings in U.S. Patent No. 4,339,361, which he testified describes

1 The Examiner cited Husemoen as Patent Application Publication 2004/0024170,
published February 5, 2004. Examiner’s 41.77d Determination 2. However, the
Decision on Appeal rejected the claims over Husemoen et al., US 6,878,800 B2,
issued Apr. 12, 2005. DOA 3. For clarity, the cited Husemoen is referred to as
“Husemoen ’800.”
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sugar as an additive and suggests this additive can be added in amounts up to 35
wt%. Id. Mr. Nissen also testified that EP 0810981 teaches that sugar can be
added in amount up to 40 dry wt% to reduce ammonia emission. Id. at ¶ 9. Mr.
Nissen explained that there was a limit to the amount of sugar that could be added
of approximately 35 dry wt% because, above this amount, the binder properties,
such as wet strength, began to degrade. Id. at ¶ 10. Mr. Nissen testified that when
formaldehyde-free binders were developed, “through later testing,” it was learned
that high amounts of glucose could be added. Id. at ¶¶ 12, 13. In response to
arguments that the sugar content was limited to other additives in Husemoen, such
as silane, Mr. Nissen further state in his declaration “the skilled person would
[have] had no reason to presume that the sugar content would be limited to a range
consistent with the silane addition simply because Husemoen identified all of these
ingredients as ‘additives.’” Id. at ¶ 16.
Mr. Nissen did not adequately explain why it would have been obvious to
have added the reducing-sugar carbohydrate in the claimed range of “about 73% to
about 96% of a total dry weight of binder reactants,” when the prior art he cited
added only up to 40 dry wt%. Even if Husemoen ’800 did not limit the amounts of
sugar to the amounts disclosed by Husemoen ’800 for other additives, Mr. Nissen
did not give an adequate reason as to why it would have been obvious to optimize
the reducing-sugar carbohydrate to the much larger amounts recited in the claims.
To the contrary, as pointed out by Patent Owner, “Mr. Nissen admits that binder
properties began to degrade after the amount of sugar was raised above 35% by
weight.” Owner 41.77e Reply 4; see Nissen 2 Decl. ¶ 10. Thus, Mr. Nissen’s
testimony indicates that it was common knowledge in the industry that amounts of
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sugar over 35-40% by weight were detrimental to binder properties is a teaching
away from higher values or makes the higher values unpredictable.
Mr. Nissen’s conclusory statement indicating the contrary is insufficient to
rebut that teaching away because Requester’s arguments (Requester 41.77c
Comments 7) are not supported by adequate evidence. Consequently, we find that
Requester did not demonstrate an error in the Examiner’s determination that the
claims are not obvious in view Husemoen ’800 alone.

OBVIOUSNESS BASED ON WORTHINGTON, WALLACE, & HELBING ‘224
The claims are directed to a polymer product of a Maillard reaction which is
produced from an “initially alkaline aqueous solution” of 1) a reducing sugar-
carbohydrate and 2) an ammonium salt of a monocarboxylic acid (claim 16, 17,
19–22) or polycarboxylic acid (claim 18).
The claims stand rejected as obvious in view of Worthington, Wallace, and
Helbing ’224. DOA 19. The Decision on Appeal cited specific findings to
establish the presence of all the recited components in Worthington and Wallace.
The Decision on Appeal stated:
To the extent that Patent Owner contends that neither
Worthington nor Wallace describes an alkaline solution (Owner
Remarks 31, 36), [Helbing ’224] teaches a binder composition that is
an aqueous alkaline solution comprising a polycarboxylic acid,
ammonia, and a polyhydroxy [acid] (He2-9). While [Helbing ’224]
does not teach that the polyhydroxy acid is carbohydrate,
carbohydrates are polyhydroxy acids. He9. Because the similar
reactants are present in [Helbing ’224] 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
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been obvious to one of ordinary skill in the art based on [Helbing ’224
’s] selection of such . . . conditions in a similar chemical reaction.
DOA 27.2
The Decision also stated, alternatively, even if Worthington and Wallace are
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.” Id. at 28.

Analogous art
Patent Owner contends that Worthington and Wallace are not analogous
prior art to the claimed subject matter. Owner 41.77b Request 8.
Prior art which is relevant to the claimed invention is referred to as
“analogous” prior art. It is well-established that there are two criteria to be applied
when determining whether a reference is analogous prior art: (1) whether the
reference is from the “same field of endeavor” as the claimed invention; and (2) if
the reference is not within the same field of endeavor, “whether the reference still
is reasonably pertinent to the particular problem with which the inventor is
involved.” In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992). “References are
selected as being reasonably pertinent to the problem based on the judgment of a
person having ordinary skill in the art.” In re Kahn, 441 F.3d 977, 986–87 (Fed.
Cir. 2006)
Patent Owner contends that Worthington is related to plastics for molds and
there is no basis to include that “a fiberglass insulation researcher” in the field of

2 “He2-9” and “He9” refer to numbered finding of facts recited in the Decision on
Appeal. See DOA 24-26.
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the claimed subject matter “would find plastics used to make shell molds
reasonably pertinent to making a practical, working fiberglass or rock wool
insulation.” Owner 41.77b Request 9.
We do not agree. While claims 16–22 are directed to a fiberglass insulation
product, the ’445 patent expressly states that the binder of the invention can be
used “in a variety of fabrication applications to produce or promote cohesion in a
collection of non or loosely assembled matter” and “in the fabrication of any
material.” ’445 patent, col. 1, l. 63 to col. 2, l. 5. Thus, without any evidence to
the contrary, a variety of binder applications would reasonably be in the same field
of endeavor as binders for fiberglass insulation. Similarly, the problem solved by
the invention, namely providing a formaldehyde-free binder with reduced
trimethylamine content (see ’445 patent, col. 2, ll. 6-10), is not limited to fiberglass
insulation applications, but to the broader scope of binder applications identified in
the ’445 patent.
Worthington describes the invention as:
relat[ing] 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, ll. 29–35. The “Background” of the ’445 patent also mentions
thermosetting binders. ’445 patent, col. 1, ll. 40–50. The “Summary” of the ’445
patent states that the binders of the present invention may be “thermoset binders.”
Id. at col. 2, ll. 40–41. Thus, Worthington is analogous art to the claimed subject
matter because it describes thermoset binders, the same type of material described
in the ’445 patent. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (reference
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describing a toothbrush found to be in the same field of endeavor as a claim to a
hairbrush based on findings regarding function and structural similarity). Also,
Worthington is not restricted to shell molding as asserted by Patent Owner, but is
described as useful “for other purposes for which thermosetting compositions are
used.” Worthington, col. 1, ll. 29–35. Consequently, one of ordinary skill in the
art would have reasonably found the guidance in Worthington pertinent to the
general field of thermoset binders that may be used for the wide range of fiberglass
products within the scope of the ’445 patent. See Requester 41.77c Comments 9–
10.
Patent Owner contends that Wallace is not analogous prior art because it
“‘relates to sand cores for use in the casting of metals.’ Wallace, col. 1, 11. 1–2.
That is not within the field of endeavor of non-woven thermal and acoustical
insulation.” Owner 41.77b Request 9. Patent Owner also states that “Inventors in
the insulation field would not go looking in a 1938 patent [Wallace] about binding
sand into a solid mold to cast, for example, metal engine blocks for answers.” Id.
Although Wallace may not necessarily be in the same field of endeavor, we
do not agree that Wallace is non-analogous art. Wallace describes a binder, as
does the claimed subject matter, comprising the same components as in the claims.
DOA 27. Consequently, one of ordinary skill in the art would have reasonably
found the guidance in Wallace pertinent to the general field of thermoset binders
that may be used for the wide range of fiberglass products within the scope of the
’347 patent. Moreover, because the binders are made with the same chemical
reactants, one of ordinary skill in the art would have reasonably believed that the
same chemistry is involved in forming the binder, and consequently would have
considered Wallace relevant to making the claimed method. We do not see how
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the age of the reference would have dissuaded the skilled worker from considering
its disclosure. It is “established precedent that ‘[t]he mere age of the references is
not persuasive of the unobviousness of the combination of their teachings, absent
evidence that, notwithstanding knowledge of the references, the art tried and failed
to solve the problem.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1337–38 (Fed. Cir.
2016) (citing In re Wright, 569 F.2d 1124, 1127 (CCPA 1977); see also Iron Grip
Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004)). We have
not been directed to evidence that Wallace’s teachings have been subsequently
discredited or that the problem solved by the invention was not known in the art.
Maillard reaction
Patent Owner contends that the reactants described in Worthington and
Wallace are not the same as those in the claims and thus the conclusion in the
Decision on Appeal that “there is reasonable basis to believe that melanoidin is
formed” is not correct. Owner 41.77e Comments 3.
To begin, the 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.
Patent Owner contends that “Worthington fails to teach an ammonium salt
of a monomeric polycarboxylic acid as a binder reactant.” Owner 41.77e
Comments 3. However, as established by the findings in the Decision on Appeal,
Worthington teaches an 1) ammonium salt of an acid and 2) a carboxylic acid.
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DOA 20 (Findings Wo2, Wo5, Wo6).3 The person of ordinary skill in the art is at
least a scientist knowledgeable in chemical principles and would have reasonably
expected the ammonium salts and carboxylic acid would dissociate into ions in
solution. Consequently, when the ammonium salt of an acid and a carboxylic acid
are mixed in an aqueous solution, it is logical that the same constituents of
ammonium and carboxylic acids ions would be present as when an ammonium salt
of a carboxylic acid is used. Thus, while Patent Owner’s statement that
Worthington does not teach an ammonium salt of a monomeric polycarboxylic
acid as a binder reactant is literally true, it fails to take into account general
chemical principles known to the skilled artisan. Patent Owner’s conclusion,
therefore, that “there is no reasonable basis to believe that a Maillard reaction
would necessarily occur and that melanoidin products would necessarily be formed
in Worthington” (Owner 41.77e Comments 4) is not persuasive because the same
reactants would be present as if an ammonium salt of a monomeric polycarboxylic
acid had been added.
Patent Owner contends that “Helbing expressly discloses the presence of
non-Maillard reactants and non-Maillard reactions.” Owner 41.77e Comments 8.
Patent Owner contends that “it cannot be assumed that a Maillard reaction would
necessarily occur due to the presence of both Maillard and non-Maillard reactants
in Helbing.” Id. Patent Owner did not provide objective evidence that the non-
Maillard reactants would hinder the Maillard reactants from reacting and forming
melanoidin.

3 “Wo2, Wo5, Wo6” refer to numbered finding of facts recited in the Decision on
Appeal. See DOA 19-22.
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The Board considered an argument along the same lines in the related Inter
Partes Reexamination 95/000,674 of Patent 7,854,980 B2 and found it
unpersuasive. Decision on Appeal (95/000,674; entered July 30, 2015) 20–21. In
the appeal to the Federal Circuit of the decision, the court affirmed and agreed with
the Board’s reasoning:
But the record evidence does not show that esterification [a non-Maillard
reaction with non-Maillard reactants] would necessarily prevent a Maillard
reaction. . . . In other words, not only does Helbing contain the three
components of a Maillard reaction, it discloses a Maillard reaction, and
Knauf did not demonstrate that esterification forecloses a Maillard reaction.
As a result, substantial evidence supports the Board’s conclusion that a
Maillard reaction is a natural result of Helbing.
Knauf Insulation, Inc., v. Rockwool Int’l A/S, No. 2016-1184, 2017 WL 744055
(Fed. Cir. February 27, 2017).
Patent Owner has not provided additional arguments or evidence that would
lead us to conclude that the related US patent application publication by Helbing4
does not produce melanoidin.
Patent Owner also contends, relying on a similar argument, that Worthington
also discloses the presence of non-Maillard reactants and non-Maillard reactions
and that “when both Maillard and non-Maillard reactants are present, it cannot be
assumed that a Maillard reaction will necessarily occur.” Owner 41.77e
Comments 6. Patent Owner explains that the reactants in Worthington are not the
same as those in the ’455 Patent because additional non-Maillard reactants are
present in Worthington. Id.

4 The “Helbing” publication in the Federal Circuit Decision was not Helbing ’224,
but a related WIPO publication WO 2006/044302 A1.

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Patent Owner, however, did not provide evidence that the non-Maillard
reactants would interfere or hinder the formation of Maillard reactants. Patent
Owner argues, with accompanying chemical reactions, that the amine in
Worthington is not engaging in Maillard chemistry to the extent that amines might
react with a hemiacetal group of the carbohydrate rather than reacting with an
aldehyde carbonyl group as in a Maillard reaction. Id. at 5. However, Patent
Owner did not establish that none of the amine present would react with the
Maillard reactants to form a Maillard product. Because all of the reactants of a
Maillard reaction are present in Worthington, it is not a possibility that the
Maillard reaction occurred, but a reasonable fact-based certainty, absent scientific
evidence or reasoning to the contrary. While side-reactions may compete with the
Maillard reactants, we have not been directed to evidence that such competition
would deplete amine entirely and prevent the amine from reacting with the
Maillard reactants present in the same reaction vessel, albeit at lower frequency if
some of it were used up in making non-Maillard products.5 Thus, for the same
reason as with Helbing ’224, we do not find sufficient evidence that melanoidin
would not be formed.
Patent Owner makes the same type of argument for Wallace, further
arguing:
Wallace teaches that his reactants engage in non-Maillard reactions
that would interfere with the Maillard chemistry recited in the claims.

5 Moreover, we note that the claims encompass the presence of a thermoset binder
having non-Maillard by-products provided that they do not affect the basic and
novel characteristics of the claimed invention. See DOA 30. Patent Owner has not
demonstrated that any of the alleged non-Maillard products affect the basic and
novel characteristics of the resulting binder or even what those characteristics
might be.
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In particular, the citric acid of Wallace is taught to form a resin with
glycerol, meaning that the citric acid will be unavailable for cross-
linking. See, e.g., id at 1:45-46; 2:5-8.
Id. at 7.
Even assuming that citric acid reacts in the manner stated by Patent Owner,
Patent Owner has not provided evidence that the citric acid would be entirely used
up without reacting with the Maillard reactants to form melanoidins, or would be
prevented from doing so.
Patent Owner further argues that Helbing ’224 teaches only the use of a
“polyhydroxy component” which would not suggest the use of a reducing-sugar as
required by the claims. Id. at 8. Patent Owner states: “Reducing-sugar
carbohydrates (as recited in claims 16-22) are but one species among the large
genus of polyhydroxy compounds (which also include non-reducing sugars, which
would not take part in a Maillard reaction).” Id.
Patent Owner has attacked the publication individually when the rejection is
based on Helbing ’224, Worthington, and Wallace. “Non-obviousness cannot be
established by attacking references individually where the rejection is based upon
the teachings of a combination of references.” In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). The references must be read, not in isolation, but in
combination for what they fairly teach as a whole. Id.
Specifically, the Decision on Appeal concluded:
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 [’224] (i.e., polycarboxylic acid and
ammonia).
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DOA 27.6
Patent Owner also has failed to take into account general chemical principles
known to one of ordinary skill in the art that Helbing ’224’s teaching of a
polyhydroxy compound as a reactant indicates that the hydroxy is the reactive
group, providing evidence that the same chemical reactions in Worthington and
Wallace using the hydroxy group of a reducing sugar would take place in Helbing
because the remaining reactants are the same.

Binders consist primarily of melanoidins
Patent Owner contends that, even if trace amounts of melanoidin are
produced from the reactions described in Worthington, Wallace, and Helbing ’224,
“there is absolutely no basis in these references to conclude that their binders
consist primarily of melanoidins.” Owner 41.77e Comments 10. Patent Owner
asserts that the additional limitations in claims 16, 18, 19, 21, and 22 require the
binder to “consist primarily of melanoidins.” Id. at 9–10.
To the extent the Patent Owner is relying on the “consisting essentially of”
language recited in the claims, the Decision on Appeal discusses that Patent Owner
has not established what additional materials would be excluded by the “consisting
essentially of” language or even what the basic and novel characteristics of the
invention are. See DOA 30.
Claim 16 and 22 recite that “substantially all of the polymer that binds the
mat of mineral fibers and/or glass fibers is melanoidin products.” Claim 21 recites
that “melanoidin products form at least a majority of the polymer that binds the

6 “Wo8” and “Wa6” refer to numbered finding of facts recited in the Decision on
Appeal. See DOA 19-24.
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mat of mineral fibers and/or glass fibers. To the extent that “substantially all” or
“at least a majority of” intends to limit the amount, as opposed to the type, of
additional material that may be included in the binder, Patent Owner has not
explained what amount of non-melanoidin product is permitted by these claims.
The ’445 patent is silent as to the amounts, if any, of permitted side-reactants that
are present in the examples or otherwise may be permitted. Dr. Hampson merely
testifies that “the melanoidin products are not simply present at impurity levels (for
example, as the result of an unintended and/or unappreciated side-reaction).”7
Second Hampson Decl. ¶ 8.
Patent Owner also has not established with adequate evidence that the
amounts of melanoidin produced in Worthington, Wallace, and Helbing ’224 are
only trace amounts (i.e., “present at impurity levels”) or would not constitute a
binder “consisting primarily of melanoidin.” The evidence in this record that each
of Worthington and Wallace describe reactions comprising the reactants necessary
to make melanoidin (DOA 27) is sufficient to find, for example, that “the
melanoidin products are present at greater than impurity levels in the polymer that
binds the mat of mineral fibers and/or glass fibers” as recited in claim 19. We have
not been pointed to objective evidence to the contrary that only “trace” impurities
of melanoidin are present. Patent Owner’s argument, as discussed above, about the
absence of an ammonium carboxylic acid are unavailing because Patent Owner
failed to take into account fundamental chemical principles that the salts and
carboxylic acids utilized in Worthington and Wallace would necessarily dissociate

7 Claim 19 mimics the language of Dr. Hampson and recites that “melanoidin
products are present at greater than impurity levels in the polymer that binds the
mat of mineral fibers and/or glass fibers.”
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into ions in water to produce the same reactants utilized in the ’445 patent.
Clearly, where the claims and all the cited prior art involve chemistry, the skilled
worker would necessarily be trained in chemistry and absolutely have knowledge
of these facts.
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, ll. 17–22,
45–50; col. 5, ll. 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 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. The same is true of Wallace
(Wallace 1, col. 1, ll. 40–50) and Helbing ’224 (see above). Patent Owner denies
that Maillard reaction takes place in these publications but did not provide
adequate objective evidence that the reaction and resulting product was not
obtained in light of the same reactants in substantial amounts.

Alkaline solution
All the rejected claims require that the melanoidin is produced from a
Maillard reaction in an “initially alkaline aqueous solution.” The ’445 patent
defines “alkaline” as follows:
As used herein, the term “alkaline” indicates a solution having a
pH that is greater than or equal to about 7. For example, the pH of the
solution can be less than or equal to about 10. In addition, the
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solution may have a pH from about 7 to about 10, or from about 8 to
about 10, or from about 9 to about 10.
’445 patent, col. 5, ll. 25–30.
The Decision stated the following finding of fact in relying upon Helbing
’224 for teaching alkaline solutions.
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.
DOA 25 (ellipse in original).
Thus, Helbing ’224 provide an express reason to adjust the pH to from about
7 to about 10, the same range described as “alkaline” in the ’445 patent.
Patent Owner further argues that Wallace “teaches away” from utilizing an
alkaline solution. Owner 41.77e Comments 10. For this “teaching away” from
using an “initially alkaline aqueous solution,” Patent Owner cites the following
disclosure from Wallace:
Such compounds as sodium borate, caustic soda and like substances
which have an alkaline reaction are entirely unsuited for use with molasses
or like water-soluble base in the production of our improved binder.
Wallace 2 (col. 1), ll. 14–18.
Patent Owner contends that Wallace’s solution is acidic and that “Wallace
makes it clear that having an alkaline reactant solution will not function in his core
binder system.” Owner 41.77e Comments 10–11.
Requester responded to this argument:
In contrast to Owner’s assertions, Wallace itself is silent on a pH
range. The suggestion in Wallace that sodium borate, caustic soda,
and like substances are unsuitable because they have “an alkaline
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reaction” is referring to [the] fact that these substances are categorized
as “strong bases.” The fact that Wallace suggests not using a strong
base is not the same as suggesting that the solution cannot be alkaline
at all.
Requester 41.77c Comments 11.
As indicated by Requester, Wallace does not disclose a pH range for its
operating conditions. Rather, it states that certain types of bases are unsuitable
which have an alkaline reaction. However, the pH range described in the ’445
patent is greater than or equal to about 7. ’445 patent, col. 5, ll. 25–30.
Requester’s position is that the solution in Wallace can still be alkaline, i.e., great
than or equal to about 7, but not at a pH of a “strong base” such as “sodium borate,
caustic soda, and like substances.” For example, a pH equal to about 7 would be
neutral or barely alkaline. Patent Owner did not rebut Requester’s assertions about
Wallace’s exclusion of strong bases, rather than excluding any alkaline pH at all.

Aqueous solution
Patent Owner states that each of claims 16–22 recites that “all of the binder
reactants [are] dissolved in the [alkaline] aqueous solution.” Owner 41.77e
Comments 11. Patent Owner states: “[w]hile Worthington does teach the ‘use [of]
a proportion of carbohydrate lying within the range of from 75%-95% by weight of
the composition,’ the composition referred to in Worthington is not dissolved in an
aqueous solution.” Id.
Patent Owner points to disclosure in Worthington about using powdered
components and small amounts of liquid (Worthington, col. 2, l. 62 to col. 3, l. 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
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composition are preferably anhydrous” (id., col. 3, ll. 12–16). Id. at 12. Patent
Owner also identifies the disclosure in Worthington that “[i]f the water content of
the composition is not carefully controlled[,] variable products may be obtained.”
Id. Based on these disclosures, Patent Owner argues that Worthington teaches
away from Wallace and Helbing which use aqueous solutions. Id.
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, ll. 18–20), and then adding the precondensate to the
carbohydrate (see id., col. 4, ll. 41–72; carbohydrate can be the monosaccharide
dextrose).
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, l. 14–31 (emphasis added). Worthington teaches that the “use
of such a precondensate results in binders which when used for making shell
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moulds and cores gives greater strength in the investment stage.” Id., col. 5, ll. 32–
34.
Thus, Worthington does not teach that water cannot be used. Rather,
Worthington instructs the skilled worker to control the water content.
Worthington, col. 3, ll. 12–16. Worthington expressly uses water to make a
precondensate in order to confer greater strength to the binder. Id., col. 5, ll. 32–
34. Worthington states that water can be distilled off the precondensate, but does
not require distillation. Id. at col 5, l. 14–31 (reproduced above). Instead,
Worthington states that distillation can be carried out if “desired.” Id. For this
reason, the skilled worker would not have been deterred from using the aqueous
conditions of Wallace and Helbing ’224 to make a binder with higher
monosaccharide content, even if more water is present.

SUMMARY

The rejection of claims 17 and under 35 U.S.C. § 102(b) as anticipated by
Husemoen ’800 is withdrawn.
The rejection of claims 18, 19, 21 and 22 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 ’800 is withdrawn.
The rejection of claims 16–22 under 35 U.S.C. § 103(a) as obvious in view
of Worthington, Wallace, and Helbing ’224 is maintained.

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TIME PERIOD FOR RESPONSE
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may
file a request for rehearing of the decision within one month of the date of: . . .
[t]he original decision of the Board under § 41.77(a).” A request for rehearing
must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the
request and additional requests for rehearing must be in accordance with 37 C.F.R.
§ 41.79(c)–(d), respectively. Under 37 C.F.R. § 41.79(e), the times for requesting
rehearing under paragraph (a) of this section, for requesting further rehearing under
paragraph (d) of this section, and for submitting comments under paragraph (c) of
this section may not be extended.
An appeal to the United States Court of Appeals for the Federal Circuit
under 35 U.S.C. §§ 141–44 and 315 and 37 C.F.R. § 1.983 for an inter partes
reexamination proceeding “commenced” on or after November 2, 2002, may not
be taken “until all parties’ rights to request rehearing have been exhausted, at
which time the decision of the Board is final and appealable by any party to the
appeal to the Board.” 37 C.F.R. § 41.81. See also Manual of Patent Examining
Procedure § 2682 (9th ed., Rev. 07.2015, Nov. 2015).
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable
under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See 37 C.F.R.
§§ 90.1 and 1.983.

AFFIRMED; 37 C.F.R. § 41.77(f )

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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