Ex Parte Braun et alDownload PDFPatent Trial and Appeal BoardMay 9, 201613389515 (P.T.A.B. May. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/389,515 02/08/2012 123223 7590 05/11/2016 Drinker Biddle & Reath LLP (WM) 222 Delaware A venue, Ste. 1410 Wilmington, DE 19801-1621 FIRST NAMED INVENTOR Frank Braun UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 074008-1334-286226 4357 EXAMINER LIU,XUEH ART UNIT PAPER NUMBER 1742 NOTIFICATION DATE DELIVERY MODE 05/11/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): IPDocketWM@dbr.com penelope.mongelluzzo@dbr.com DBRIPDocket@dbr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANK BRAUN, OLAF KRIHA, KLAUS HAHN, BENJAMIN NEHLS, MAXIM PERETOLCHIN, and STEPHAN WEINKOTZ Appeal2015-000374 Application 13/3 89 ,515 Technology Center 1700 Before BRADLEY R. GARRIS, GEORGE C. BEST, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 13-27 of Application 13/389,515 under 35 U.S.C. § 103(a) as obvious. Final Act. (Oct. 4, 2013). Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we AFFIRM. 1 BASF SE is identified as the real party in interest. Appeal Br. 2. Appeal2015-000374 Application 13/389,515 BACKGROUND The '515 Application relates generally to the manufacture of lightweight wood-based materials and to a process for making plastic filler particles used therein. Spec. 1. The primary components of the claimed materials are A) lignocellulose particles (such as wood fibers), B) expanded plastic particles, and C) binder. Other additives may be included as advantageous. There are two independent claims at issue. The first, claim 13, is directed to a process for the production of a light lignocellulose-containing substance comprising mixing and pressing defined quantities of lignocellulose particles, expanded plastics particles, binder and, optionally, additives. The second independent claim, claim 17, is directed to a process for producing expandable plastics particles for use in a light lignocellulose- containing substance. Claims 13 and 17 are reproduced below: 13. A process for the production of a light lignocellulose- containing substance having an average density in the range from 200 to 600 kg/m3, in which, in each case based on the lignocellulose-containing substance: A) from 30 to 95% by weight oflignocellulose particles; B) from 1 to 25% by weight of expanded plastics particles having a bulk density in the range from 10 to 100 kg/m3; C) from 3 to 50% by weight of a binder selected from the group consisting of aminoplast resin, phenol- formaldehyde resin and organic isocyanate having at least two isocyanate groups and, optionally, D) additives which comprises mixing components A)-D) and then pressing at elevated temperature and under elevated pressure, wherein the 2 Appeal2015-000374 Application 13/389,515 expanded plastics particles are obtained from expandable plastics particles with a content of blowing agent in the range from 0.01 to 4% by weight, based on the expandable plastics particles. 1 7. A process for producing expandable plastics particles which are used in a light lignocellulose-containing substance which comprises mixing an expandable plastic particles which have a bulk density in the range from 10 to 100 kg/m3 with a content of blowing agent in the range from 0.01 to 4% wherein the light lignocellulose-containing substance having an average density in the range from 200 to 600 kg/m3, comprising, based in each case on the lignocellulose-containing substance: A) from 30 to 95% by weight oflignocellulose particles; B) from 1 to 25% by weight of said expanded plastics particles having a bulk density in the range from 10 to 100 kg/m3; C) from 3 to 50% by weight of a binder selected from the group consisting of aminoplast resin, phenol- formaldehyde resin and organic isocyanate having at least two isocyanate groups and, optionally, D) additives. Appeal Br. 8-9 (Claims App.). 2 2 The Board notes certain anomalies in the claims as drafted. For instance, the last clause of claim 13, "wherein the expanded plastics particles are obtained from expandable plastics particles with a content of blowing agent in the range from 0.01 to 4% by weight, based on the expandable plastics particles," may be construed as a product-by-process limitation. Further, claim 17 is directed to a "process for producing expandable plastics particles which are used in a light lignocellulose-containing substance." The limitations of claim 17 directed to the lignocellulose-containing substance, rather than the process for producing expandable plastics particles, may be construed as merely describing the intended purpose of the particles and not 3 Appeal2015-000374 Application 13/389,515 REJECTION Claims 13-27 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Weinkoetz3 and Hofmann. 4 Final Act. 2. DISCUSSION Appellants present the same arguments for the reversal of the rejection of all claims. Appeal Br. 4---6. We will, accordingly, treat such arguments as applicable to all claims. The Examiner found that Weinkoetz teaches all limitations of all claims at issue except the content of blowing agent found in the expandable plastic particles. With regard to such limitation, the Examiner found that "Weinkoetz et al. does not positively teach that the expanded plastics particles are obtained from expandable plastics particles with a content of blowing agent in the range from 0.01 % to 4% by weight." The Examiner further found that Hofmann "teaches that various densities of expanded polystyrene or other beads (or other particles) can be obtained in a variety of ways, e.g., by adjustment of the quantity or type of blowing agent employed in the preparation of the bead (or other particle) precursor (see para 82)." On this basis, the Examiner concluded that "it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the accorded patentable weight. If prosecution of the '515 Application continues, Appellants and the Examiner should address these anomalies. 3 Weinkoetz et al., CA 2699106 Al, published March 26, 2009 ("Weinkoetz"). 4 Hofmann et al., US 2005/0281999 Al, published December 22, 2005 ("Hofmann"). 4 Appeal2015-000374 Application 13/389,515 content of blowing agent in the expanded polystyrene particles for beads intended for higher-density applications." Final Act. 4. In their initial brief, Appellants make three arguments why one of ordinary skill in the art would not have found sufficient guidance in Hofmann to modify Weinkoetz to arrive at the claimed invention. First, Appellants argue that the following passage from Hofmann is merely genenc: For example various densities of expanded polystyrene or other beads (or other particles) can be obtained in a variety of ways, e.g., by adjustment of the quantity or type of blowing agent employed in the preparation of the bead (or other particle) precursor. Appeal Br. 5. Appellants submit that there is "no specific guidance to select a lower amount of blowing agent, such as in the range of 0.01to4% by weight." Id. For their second argument, Appellants argue that Hofmann teaches away from the claimed range of blowing agent. They argue that the prior art cited in the Specification describes fillers having more than 5% by weight of blowing agent and that one seeking to make a low density plastic filler would use more than five percent blowing agent rather than less. Appeal Br. 5---6. Finally, Appellants argue that use of a lower amount of blowing agent yields an unexpected result. Specifically they argue that neither W einkoetz nor Hofmann predicts that using a low level of blowing agent "would not substantially affect the density [ ] while allowing for lower blowing agent emissions." Appeal Br. 6. The Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). 5 Appeal2015-000374 Application 13/389,515 Here, the Examiner found that the content of blowing agent is a result- effective variable that affects the density of the expanded polymer beads. Final Act. 6. The Examiner further found that it would have been obvious to one of ordinary skill in the art to optimize the content of blowing agent through routine experimentation to obtain various densities of expanded polystyrene and that there is no evidence of the criticality of the claimed range of blowing agent content. A variable is result-effective where variation yields a predictable result in a property: While the absence of any disclosure regarding the relationship between the variable and the affected property may preclude a finding that the variable is result-effective, the prior art need not provide the exact method of optimization for the variable to be result-effective. A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result- effective. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012); see also In re Urbanski, 809 F.3d 1237, 1241--42 (Fed. Cir. 2016) (affirming finding "that reaction time and degree of hydrolysis are result-effective variables; that varying the reaction time would have a predictable effect on the degree of hydrolysis"). "[D]iscovery of an optimum value of a result effective variable ... is ordinarily within the skill of the art." In re Applied Materials, Inc., 692 F.3d at 1295 (citing In re Boesch, 617 F.2d 272, 276 (CCPA 1980)). We adopt the Examiner's findings regarding the content of the prior art and the result- effective nature of the relationship between blowing agent content and polymer density. Thus, the Examiner established a prima facie case of obviousness. Similarly, that the content of blowing agent is a result- effective variable rebuts Appellants' argument that the Hofmann teaching is 6 Appeal2015-000374 Application 13/389,515 too generic to lead one of ordinary skill to the claims at issue. As above, one of ordinary skill in the art may determine the appropriate level of blowing agent for a desired density through routine experimentation. Appellants further argue that the prior art leads one away from the claimed range of blowing agent. Appeal Br. 5---6. "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appellants contend that the prior art cited in the Specification describes fillers having more than 5% by weight of blowing agent and that one seeking to make a low density plastic filler would use more blowing agent rather than less. The Specification undermines this argument. The Specification describes the prior art plastic fillers as having a blowing agent content "usually more than 5% by weight, based on the precursor polymers," Spec. 3: 15-16 (italics added), suggesting some prior art using a lower range of blowing agent. In any case, Hofmann merely describes a relationship between a blowing agent and density of a polymer: porous materials can be made from a variety of available polymers that are inherently foamable (i.e. producing gas during polymerization) or can be foamed with a blowing agent . . . to introduce desirable levels of gas into the polymer to increase the porosity and decrease the density of the resulting material. Hofmann i-f 82 (italics added). Teaching the use of a "desirable level of gas" does not lead away from the claimed range. Further, it is a matter of routine engineering to determine the range of blowing agent and other parameters that would yield the preferred density of polymer filler taught by W einkoetz 7 Appeal2015-000374 Application 13/389,515 (30 to 60 kg/m3) 5 and falling squarely within the range of density claimed here (10 to 100 kg/m3). Appellants' final argument is that the teachings of the prior art would not lead one to predict that use of less blowing agent "would not substantially affect the density [] while allowing for lower blowing agent emissions." Appeal Br. 6. In support thereof Appellants cite to certain testing described in the Specification. Spec. 20-24. The Specification indicates that the density of the material made with plastic fillers having a greater content of blowing agent is lower than that made with a lesser content of blowing agent. Spec. 24, Table 2. This is as expected. Moreover, the density described in the Specification and relied upon by the Appellants is the density of the three-layer wood base material, not the density of the plastic filler (which comprises only 10% of the middle layer of the final material). Spec. 22. The difference in densities between the two materials described in the Specification is small because the plastic filler makes up only a small portion (less than l 0%) of the material being measured. The Appellants have not shown that an "apples to apples" comparison of the plastic filler made according to the invention with a plastic filler made with a greater content of blowing agent would have similar densities. Such information as is found in the record suggests that they would not. Accordingly, the Appellants have not shown that the claimed range is critical by virtue of the prior art teaching away from the claimed range or by 5 W einkoetz at 7. 8 Appeal2015-000374 Application 13/389,515 the claimed range of blowing agent producing some new or unexpected result. CONCLUSION We affirm the rejections of all claims on appeal. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 9 Copy with citationCopy as parenthetical citation