Ex Parte Dallavia

Board of Patent Appeals and Interferences

Jul 18, 2011

11701217 (B.P.A.I. Jul. 18, 2011)

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].)
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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.
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• 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.
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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
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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
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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.)
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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.)
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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.)
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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,
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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,
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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.

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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

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