Ex Parte DallaviaDownload PDFBoard of Patent Appeals and InterferencesJul 18, 201111701217 (B.P.A.I. Jul. 18, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte ANTHONY J. DALLAVIA __________ Appeal 2010-011990 Application 11/701,217 Technology Center 1700 __________ Before DONALD E. ADAMS, FRANCISCO C. PRATS, and STEPHEN WALSH, Administrative Patent Judges. WALSH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a process to produce a rosin ester resin. The Patent Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE The invention concerns “a process for preparing light color rosin esters” which “are highly desired as tackifier resins in hot melt adhesives and as binder resins in low color printing inks.” (Spec. [0002].) Appeal 2010-011990 Application 11/701,217 2 Claims 1-10 and 12-21 are on appeal. Claim 1 is representative and reads as follows: 1. A process to produce a rosin ester resin comprising the steps of: (a) contacting a molten rosin with a polyol having hydroxyl functionality to form a first reactant mixture; and (b) contacting the first reactant mixture with an amount of 0.5 to 10 weight%, by weight of all reactants, of an acid functional organic compound selected from the group consisting of aromatic monofunctional acids, aromatic polyfunctional acid, aliphatic monofunctional, aliphatic polyfunctional acids, natural fatty acids, synthetic fatty acids, polymerized rosin, rosin resin, and combinations thereof, to form a final reactant mixture, wherein the final reactant mixture does not contain a stoichiometric excess of either rosin or hydroxyl functionality, and wherein the rosin ester resin has a first Gardner color number, and wherein the molten rosin has a second Gardner color number, wherein the first Gardner color number is less than the second Gardner number. The Examiner rejected the claims as follows: • claims 1, 4, and 7 under 35 U.S.C. § 103(a) as unpatentable over Ruckel; 1 • claims 12, 15, and 18 under 35 U.S.C. § 103(a) as unpatentable over Ruckel and Bender; 2 • claims 1, 4, 6, and 8 under 35 U.S.C. § 103(a) as unpatentable over Bender and Ruckel; • claims 12, 15, 17, and 19 under 35 U.S.C. § 103(a) as unpatentable over Bender and Ruckel; • claim 5 under 35 U.S.C. § 103(a) as unpatentable over Bender, Ruckel, and Du Vernet; 3 1 US Patent No. 4,380,513 issued to Erwin R. Ruckel et al., Apr. 19, 1983. 2 US Patent No. 5,698,668 issued to Albert Bender, Dec. 16, 1997. Appeal 2010-011990 Application 11/701,217 3 • claim 16 under 35 U.S.C. § 103(a) as over Bender, Ruckel, and Du Vernet; • claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over Bender, Ruckel, and Whalen; 4 • claims 13 and 14 under 35 U.S.C. § 103(a) as unpatentable over Bender, Ruckel, Whalen, and Schluenz; 5 • claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over Bender, Ruckel, Whalen, Schluenz, and Fontana; 6 and • claims 20-21 under 35 U.S.C. § 103(a) as unpatentable over Bender, Ruckel, Whalen, Schluenz, and Fontana. Claims 2-10 and 12-21 have not been argued separately and therefore stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). OBVIOUSNESS The Issue The Examiner rejected the claims over Ruckel alone (claims 1, 4, and 7), or over combinations including at least Ruckel and Bender (all claims). (Ans. 3-12.) Ruckel 3 US Patent No. 4,725,384 issued to Richard B. Du Vernet, et al., Feb. 16, 1988. 4 US Patent No. 5,830,992 issued to David Mayo Whalen, Nov. 3, 1998. 5 US Patent No. 5,504,152 issued to Robert W. Schluenz, et al., Apr. 2, 1996. 6 Patent Application Publication No. US 2004/0176559 A1 by Thomas A. Fontana, published Sep. 9, 2004. Appeal 2010-011990 Application 11/701,217 4 The Examiner‟s position is that Ruckel taught a process to produce a rosin ester resin comprising: (a) contacting a molten rosin with a polyol having hydroxyl functionality to form a first reactant mixture; and (b) contacting the first reactant mixture with an aliphatic monofunctional acid to form a final reactant mixture, wherein the final reactant mixture does not contain a stoichiometric excess of either rosin or hydroxyl functionality. (Id. at 3-4.) However, the Examiner found that differences between Ruckel‟s process and the claimed process were that Ruckel did not teach (1) adding the acid in the amount 0.5 to 10 weight%, and (2) that the rosin ester resin product has a Gardner color number that is less than the Gardner color number of the molten rosin starting material. (Id. at 4.) According to the Examiner, it was well known to optimize result effective variables such as reactant concentrations (Final Rej. 2) and it would have been obvious to a person of ordinary skill in the art at the time the invention was made to have used the acid in the claimed weight percent. One would have been motivated to do so because Ruckel suggested reducing the amount of excess acid that is distilled from the reaction vessel, to increase process efficiency (Ans. 4). The Examiner found that Ruckel taught or suggested all of the claimed ingredients and process steps. (Id.) Therefore, according to the Examiner, the claimed reduction in Gardner color number would have implicitly been achieved by Ruckel‟s process performing the claimed steps with the claimed ingredients. (Id.) Bender and Ruckel For the rejections over Bender and Ruckel, the Examiner found that Bender taught the ingredients and process steps (a) and (b) of claim 1, including teaching the addition of 0.5 to 10 weight percent of an acid. (Id. at Appeal 2010-011990 Application 11/701,217 5 6.) However, the Examiner found that Bender did not teach (1) that “the final reaction mixture [does not contain] a stoichiometric excess of [either rosin or] hydroxyl functionality,” or (2) the comparative Gardner color number reduction. (Id.) According to the Examiner, it would have been obvious to a skilled artisan to have added the acid in a stoichiometric excess in Bender‟s process as taught by Ruckel with the motivation to avoid residual hydroxyl functionality, i.e., an excess of hydroxyl functionality, which Ruckel taught could cause unstable tack value. (Id.) According to the Examiner, the Gardner color number reduction of the claims “would implicitly be achieved by a process performing the claimed steps with the claimed ingredients.” (Id.) Appellant’s Contentions Appellant contends that Ruckel did “not produce resins that exhibit the beneficial low color as currently claimed by Appellant.” (App. Br. 9.) While acknowledging that Ruckel did not disclose Gardner color information for the molten rosin before reaction with a polyol, Appellant asserts that Ruckel‟s Example I reacted an unmodified rosin ester with 12 wt% acetic anhydride and provided a product having a color that was darker (i.e., a greater Gardner color no.) than the initial unmodified rosin ester. (Reply Br. 6.) Additionally, Appellant asserts that Ruckel‟s Example II reacted the unmodified rosin ester with 20 wt% pivalic anhydride and provided a product having a slightly lighter color (i.e., a lower Gardner color no.) than the initial unmodified rosin ester. (Id.) According to Appellants, these examples “provide evidence contrary to the Examiner‟s assertion that Appeal 2010-011990 Application 11/701,217 6 the excess of acid functionality would disclose any Gardner color number improvement.” (Id. at 7.) Additionally, Appellant contends that “[t]he Examiner has created a plausible basis for why someone wishing to solve some other problem may have been willing to make the combination art cited by the Examiner, but it is to make a different product, namely rosin ester resin with more stable tack values,” rather than the instantly claimed “low color rosin ester resin” product. (App. Br. 15-16.) The issue with respect to these rejections is whether the record supports the Examiner‟s conclusion that Ruckel alone, or in combination with Bender, would have made the claimed process obvious. Findings of Fact 1. The Examiner found: Ruckel et al. teaches a process to produce a rosin ester resin (1:5-7) comprising contacting a molten rosin with a polyol having hydroxyl functionality (3:58-62); and contacting the first reactant mixture with an aliphatic monofunctional acid (1:51- 58). The resultant mixture does not contain a stoichiometric excess of hydroxyl functionality (2:37-38 and 2:56-60) or ester groups (1:25-42). (Final Rej. 2.) 2. The Examiner further found: Ruckel et al. does not teach the acid as being added in the claimed amount. However, it is well known in the art to optimize result effective variables such as reactant concentrations. (Id.) Appeal 2010-011990 Application 11/701,217 7 3. The Examiner concluded: [i]t would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the acid in the claimed weight percent, and the motivation to do so would have been, as Ruckel et al. suggests, to reduce the amount of excess acid that is distilled from the reaction vessel (2:39-44). See MPEP § 2144.05. (Id. at 2-3.) 4. According to the Examiner: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the ingredients and process steps. Therefore, the claimed effects and physical properties, i.e. a lower Gardner color number would implicitly be achieved by a process performing the claimed steps with the claimed ingredients. (Id. at 3.) 5. In a passage cited by the Examiner, Ruckel taught: To prepare the rosin ester, rosin is generally reacted with a primary polyhydric alcohol at temperatures from about 150° C. to about 300° C. and usually an excess of the alcohol is employed, although an excess of the rosin may be employed. (Ruckel, col. 3, ll. 58-61.) 6. According to Ruckel: The rosin color standards described in the examples are U.S.D.A. standards, ranging from X, the lightest, to D, the darkest color. The order of the U.S.D.A. scale of colors is as follows: X, WW, WG, N, M, K, I, H, G, F, E and D. (Id. at col. 3, ll. 23-27.) Appeal 2010-011990 Application 11/701,217 8 7. Ruckel‟s “Example I” started by reacting a commercially available rosin pentaerythritol ester with acid, rather than by first reacting a rosin with an alcohol to make a rosin pentaerythitol ester and then reacting the rosin pentaerythritol ester with acid. (Id. at col. 2, ll. 25- 33.) 8. The commercially available rosin pentaerythritol ester starting material in Ruckel‟s Example I had “Color=WG” (id. at l. 30), and the product had “Color=N” (id. at l. 53). 9. The Examiner found, and Appellant agrees, that the commercially available rosin pentaerythritol ester starting material in Ruckel‟s Example I corresponds to an intermediate in Appellant‟s process, not to the starting rosin of claim 1. (Ans. 13; Reply Br. 6.) 10. The Examiner found: the Gardner color number of the rosin ester of Ruckel et al. is not the same as the Gardner color number of the molten rosin as required by the claims, but rather the Gardner color number of the intermediate product. As such, the disclosed Gardner color number in Ruckel et al. is not germane for determining if the process of Ruckel et al. has the claimed lower Gardner color number. (Ans. 13.) 11. Appellant states: In [Ruckel‟s] Example II, the rosin ester reacted with having 20 wt% of pivalic anhydride modified resin color was equal to WW (Gardner Scale 8) which is only slightly lighter than the initial unmodified resin ester starting color which was WG (both WW and WG correspond to a Gardner Scale of about 7 with WW being slightly lighter than WG). (Reply Br. 6.) Appeal 2010-011990 Application 11/701,217 9 12. Ruckel‟s Example I showed a color darkening (from WG to N), and Example II showed a color lightening (from WG to WW). 13. Although Ruckel taught a process starting with contacting a rosin and a polyol, which corresponds to Appellant‟s claim step (a), Ruckel‟s Examples began with a rosin ester, corresponding to an intermediate formed in Appellant‟s claim step (a). 14. The Examiner and Appellant are in agreement that Ruckel did not disclose the color number of the rosin starting material(s) in Examples I and II. Principles of Law “[A] prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). “Only if the „results of optimizing a variable‟ are „unexpectedly good‟ can a patent be obtained for the claimed critical range.” In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). “[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). Analysis After considering all the evidence and arguments, we conclude that the record supports a conclusion of prima facie obviousness. In particular, Appeal 2010-011990 Application 11/701,217 10 we are not persuaded by Appellant‟s contention that Ruckel did “not produce resins that exhibit the beneficial low color as currently claimed by Appellant.” (App. Br. 9.) First, Appellant does not claim a beneficial low color. Appellant claims a process that produces a product with lower color than the starting material. If the prior art process produced a product with a comparatively lower color, that would suffice for obviousness, whether the product has a “beneficial” low color or not. While Ruckel did not disclose color information regarding the molten rosin starting material used to form its initial unmodified rosin ester, i.e., the first reactant mixture, Appellant acknowledges that Ruckel‟s Example II disclosed a process which provided a final rosin ester resin having a lower Gardner color number than the first reactant mixture. (See Reply Br. 6.) That result must be weighed in context with Ruckel‟s Example I, a process wherein the final rosin ester resin had a darker color, i.e., greater Gardner color number, than the first reactant mixture. (See id.) A skilled artisan would have understood from the disclosure as a whole that Ruckel‟s processes provided a choice as to the desired color of the final product, i.e., one that is darker (i.e. having a greater Gardner color number) than the first reactant mixture, or one that is lighter (i.e., having a lesser Gardner color number) than the first reactant mixture. There is no way to know the color number of Ruckel‟s starting rosin, but the evidence that is available on this record indicates that the Examiner was correct to conclude that Appellant‟s process would have been obvious. Appellant‟s contention that Ruckel did not teach or suggest using 0.5 to 10 wt% of an acid functional organic compound (Reply Br. 4) is unpersuasive of nonobviousness because Appellant did not establish the criticality of this recited range. In re Geisler, 116 F.3d at 1470. Indeed, Appeal 2010-011990 Application 11/701,217 11 Appellant acknowledges that Ruckel‟s Example II used 20 wt% of an acid functional organic compound (Reply Br. 6) and still this process provided (1) a final reactant mixture that did not contain a stoichiometric excess of either rosin or hydroxyl functionality, and (2) a rosin ester resin having a comparatively lower Gardner color number change. Appellant challenges the Examiner‟s rationale for combining Bender and Ruckel by asserting that it was “to solve some other problem….” (App. Br. 15-16.) This argument is not persuasive as the motivation to combine references need not be identical to that of the applicants to establish obviousness. See KSR, 550 U.S. at 420. Because Ruckel suggested an advantage to be attained by adding the acid in a stoichiometric excess, it is valid to make the combination advanced by the Examiner, even if for a different purpose than that of the Appellant. Ruckel suggested adding an excess of acid because residual hydroxyl functionality could cause unstable tack value. (Ans. 6.) This teaching does not limit Ruckel‟s disclosure regarding the benefits of adding excess acid. CONCLUSION OF LAW The record supports the Examiner‟s conclusion that Ruckel alone, or in combination with Bender, would have made the claimed process obvious. SUMMARY We affirm each of the rejections of claims 1-10 and 12-21. Appeal 2010-011990 Application 11/701,217 12 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 cdc Copy with citationCopy as parenthetical citation