Ex Parte Haas et al

Board of Patent Appeals and Interferences

Aug 17, 2009

10313610 (B.P.A.I. Aug. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER HAAS,
ERNST-MARTIN HOPPE,
DONALD-RICHARD LARIMER,
and ANDREAS PIELASCH
____________

Appeal 2006-002230
Application 10/313,610
Technology Center 1700
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Decided: August 17, 2009
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Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 5, which are all of the claims
pending in the above-identified application. We have jurisdiction pursuant to
35 U.S.C. § 6.
We AFFIRM.
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STATEMENT OF THE CASE
The subject matter on appeal is directed to a process for the production of
a laminated material based on wood veneer. Claim 1 is illustrative:
1. A process for the production of a laminated material based on
wood veneer comprising pressing veneers glued with a binder,
optionally in combination with paper, cellulose or a woven web, in
which the binder comprises a prepolymer having urethane groups
and an NCO content of from 20 to 31 wt.%, which is the reaction
product of a polyisocyanate of the diphenylmethane diisocyanate
series with a hydroxy-functional polyether having an EO content
of more than 60 wt.%, in relation to total quantity of alkylene
oxide used to produced the polyether.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:
Yoshida US 6,635,695 B2 Oct. 21, 2003
Kobayashi JP 42-20854 Oct. 17, 19671

The Examiner maintains the following rejections:

1) Claims 1-3 and 5 are rejected under 35 U.S.C. § 102(e) as anticipated
by the disclosure of Yoshida; and
2) Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Yoshida and Kobayashi.

Rejection (1): The § 102 rejection

1 We note the Examiner's reference to Kobayashi as 67-020854 at page 3 of the
Answer is harmless error since it is apparent that the Examiner’s citation of 67-
020854 corresponds to JP 42-20854. The Examiner relies on the translation
thereof prepared by the Translations Branch of the U.S. Patent and Trademark
Office (PTO: 2005-3619, May 12, 2005), as do we in this Decision.
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With respect to rejection (1), Appellants argue the claims as a group.
(App. Br. 3-7 and Reply Br. 2-3). Accordingly, we select claim 1. See
37 C.F.R. § 41.37(c)(1)(vii)(2009).

ISSUE
Have Appellants shown reversible error in the Examiner's finding that
Yoshida teaches the isocyanate terminated prepolymer prepared from a
polyether polyol having an ethylene oxide (EO) content in excess of 60 wt.%?
We decide this issue in the negative.
FINDINGS OF FACT (FF)
1. Appellants do not specifically dispute the Examiner's finding that
Yoshida meets all of the features recited in claim 1. (Compare Ans. 3-4
with App. Br. 3-7 and Reply Br. 2-3). Rather, Appellants contend that
Yoshida does not teach using the claimed isocyanate terminated
prepolymer would be advantageous for any reason or eliminating the use
of Yoshida’s wax emulsion, which is not recited in appealed claim 1
(App. Br. 3).
PRINCIPLES OF LAW
Arguments attempting to distinguish an invention over a prior art
reference must be based on limitations appearing in the claim. In re Self, 671
F.2d 1344, 1348 (CCPA 1982).
“It is well-established that ‘comprising’ is a term of art used in claim
language which means that the named elements are essential, but other elements
may be added and still form a construct within the scope of the claim.” In re
Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004).
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"A reference is no less anticipatory if, after disclosing the invention, the
reference then disparages it. Thus, the question whether a reference 'teaches
away' from the invention is inapplicable to an anticipation analysis." Celeritas
Technologies, Ltd. v. Rockwell Int'l. Corp., 150 F.3d 1354, 1361 (Fed. Cir.
1998).
Evidence of secondary considerations, such as unexpected results, is
irrelevant to a 35 U.S.C. § 102 rejection and thus cannot overcome a rejection
so based. In re Wiggins, 488 F.2d 538, 543 (CCPA 1973).
ANALYSES AND CONCLUSIONS
Appellants argue that Yoshida does not meet the claimed invention
because Yoshida does not disclose a cold-pressed article and that Yoshida does
not teach or suggest removing the wax emulsion (B) from the binder. (App. Br.
3). We disagree. Appellants' process claim 1 does not require either a cold-
pressed article or the removal of a wax emulsion (B) from the binder. Thus, it
is immaterial whether Yoshida teaches or would have suggested a cold-pressed
article or the removal of the wax emulsion (B) from the binder because
Appellants have not limited their claim to require either of these features. Self,
671 F.2d at 1348. Appellants open-ended transitional claim language
“comprising” does not exclude any additional material, such as Yoshida’s wax
emulsion (B). Crish, 393 F.3d at 1257.
With respect to Appellants' argument (App. Br. 3) that Yoshida does not
provide a reason for using an isocyanate-terminated prepolymer, as stated
above, Appellants do not specifically dispute the Examiner's finding that
Yoshida meets all of the features recited in claim 1, which includes a
prepolymer having the recited NCO (isocyanate) content. (See FF 1). In
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addition, we note that Yoshida's particular reason for using an isocyanate-
terminated prepolymer is irrelevant to an anticipation analysis. See, Celeritas,
150 F.3d at 1361.
With respect to Appellants' argument (App. Br. 5) regarding the
"criticality" (i.e., unexpected results) of a claimed feature, this argument is not
relevant or material to a 35 U.S.C. § 102 rejection and thus, cannot be used to
overcome a § 102 rejection. Wiggins, 488 F.2d at 543.
Thus, it follows that Appellants have not shown reversible error in the
Examiner's finding that Yoshida teaches the isocyanate terminated prepolymer
prepared from a polyether polyol having an ethylene oxide (EO) content in
excess of 60 wt.%.
Accordingly, based on the factual findings and legal conclusions set forth
in the Answer and above, we sustain the Examiner's rejection of claims 1-3 and
5.

Rejection (2): The § 103(a) rejection

ISSUES
The issues are as follows: (1) Have Appellants shown reversible error in
the Examiner's determination that it would have been obvious to combine
Kobayashi’s zeolite useful in adhesives for fire resistance with Yoshida’s
adhesive in order to make the laminate fire resistant? (2) If not, is Appellants'
argument sufficient to rebut the Examiner's prima facie case? We decide these
issues in the negative.

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ADDITIONAL FINDINGS OF FACT (FF)
2. Yoshida teaches an adhesive composition for a lignocellulose-type hot-
pressed form, which may be a laminated veneer lumber. (Yoshida, col.
1, ll. 9-22 and col. 7, ll. 64-66). Yoshida teaches that this adhesive
composition may optionally include a flame retardant or a heat-
resistance-providing agent. (Yoshida, col. 7, ll. 47-54). Yoshida does
not mention a zeolite.
3. Kobayashi teaches the use of a zeolite to improve the fire-resistance of
man-made wooden members such as a poly-board. (Kobayashi, pp. 1-2).
Kobayashi, in one embodiment, teaches that a zeolite may be mixed with,
inter alia, an adhesive (urea resin). (Kobayashi, p. 2).
ADDITIONAL PRINCIPLES OF LAW
Once the Examiner establishes a prima facie case of obviousness, “the
burden (and opportunity) then falls on an applicant to rebut that prima facie
case. Such rebuttal or argument can consist of . . . any other argument or
presentation of evidence that is pertinent.” In re Dillon, 919 F.2d 688, 692-93
(Fed. Cir. 1990) (en banc).
It is well settled that objective evidence must be factually supported by
an appropriate affidavit or declaration. See, e.g., In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984).
ANALYSES AND CONCLUSIONS
ISSUE (1): Have Appellants shown reversible error in the Examiner's
determination that it would have been obvious to combine Kobayashi’s zeolite
useful in adhesives for fire resistance with Yoshida’s adhesive in order to make
the laminate fire resistant?
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Given the above factual findings (i.e., FF 2 and 3), we, like the Examiner,
determine that one of ordinary skill in the art would have been led to employ
Kobayashi's zeolite in Yoshida's adhesive composition for enhanced fire-
resistance.
With respect to Appellants' argument (App. Br. 6) that there is no
equivalence between Kobayashi's urea resin binder and Yoshida's isocyanate-
terminated prepolymers, the Examiner's reason for combining Kobayashi and
Yoshida is not directed to this equivalence. Instead, the Examiner's reason is
directed to enhancing the fire-resistance of Yoshida's adhesive composition.
In addition, Appellants refer (App. Br. 6) to their arguments made in
connection with rejection (1). With the exception of Appellants' argument of
unexpected results, we are unpersuaded by these arguments for the reasons
explained above.
Therefore, because the Examiner has established a prima facie case of
obviousness, we determine that the burden properly shifted to Appellants to
present persuasive arguments or evidence refuting the Examiner’s prima facie
case. We now consider Appellants' argument.

ISSUE (2): Unexpected Results
Appellants contend that Yoshida does not teach the criticality of the
polyether polyol having a minimum of 60% ethylene oxide (App. Br. 5) without
a wax emulsion. However, Appellants’ argument fails to address the
Examiner’s finding that Yoshida teaches 100% ethylene oxide in the polyether
polyol. In other words, even if Yoshida is silent with regard the minimum
ethylene oxide value being 60%, Appellants mere argument does not establish
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that the claimed percent of ethylene oxide yields unexpected results relative to
the composition disclosed by Yoshida, which undisputedly is made using a
hydroxyl-functional polyether having 100% ethylene oxide. Appellants’
argument regarding the presence of a wax emulsion is not relevant because, as
noted above, a wax emulsion is not excluded from the claims.
Moreover, it is well settled that objective evidence must be factually
supported by an appropriate affidavit or declaration. See e.g., De Blauwe, 736
F.2d at 705. In this case, Appellants do not direct us to any persuasive
objective evidence in an affidavit or declaration to support their argument of
unexpected results. Accordingly, Appellants' mere attorney argument is
insufficient to establish unexpected results.
Accordingly, based on the factual findings set forth in the Answer and
above, we determine that the preponderance of evidence weighs most heavily in
favor of obviousness of the subject matter defined by claim 4 within the
meaning of 35 U.S.C. § 103.
Accordingly, based on the factual findings and legal conclusions set forth
in the Answer and above, we sustain the Examiner's rejection of claim 4.
ORDER
In summary, all of the rejections made by the Examiner are sustained.
Accordingly, the Examiner's decision is affirmed.
TIME PERIOD
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
cam
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