Ex Parte Hart et al

Patent Trial and Appeal Board

Jan 29, 2015

12602780 (P.T.A.B. Jan. 29, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER W. HART, DARRELL M. WAITE, DALE E. NUTTER,
and JARED BRADBERRY
____________

Appeal 2013-006127
Application 12/602,780
Technology Center 1700
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 6–24, 32, 37–53, 61, and 65–84. An oral hearing was
conducted January 6, 2015. During the oral hearing, Appellants discussed
both this instant application and related application S.N. 11/761,535 (Appeal
No. 2013-005999), together.1 We have jurisdiction pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM.

1 The instant decision is being mailed about the same time as the decision
for Appeal No. 2013-005999.
Appeal 2013-006127
Application 12/602,780

2
Claim 1 is illustrative of the claimed subject matter and is set forth
below:
1. A method of wood pulping, comprising steps of:
(a) chemically pulping hardwood chips to a kappa number of at least
30 to generate a first amount of pulp including a first accepts component and
a first rejects component;
(b) separating the first accepts component from the first rejects
component;
(c) performing a high consistency, substantially mechanical pulping of
the first rejects component to generate a second amount of pulp including a
second accepts component and a second rejects component; and
(d) separating the second accepts component from the second rejects
component.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Prough US 4,220,498 Sept. 2, 1980

Sven A. Rydholm, PULPING PROCESSES 420–422 (Interscience
Publishers 1965) (hereinafter “Rydholm”).

Ray A. Leask et al., PULP AND PAPER MANUFACTURE VOLUME 2
MECHANICAL PULPING 210–216 (3rd ed. 1987) (hereinafter “Leask”).

Thomas M. Grace et al., PULP AND PAPER MANUFACTURE VOLUME 5
ALKALINE PULPING 117–119, 341–347 (3rd ed. 1989) (hereinafter
“Grace”).

Størker T. Moe et al., Extended Oxygen Delignification of High-Yield
Kraft Pulp. Correlation between Residual Lignin Structures and
Bleachability by Oxygen and Chlorine Dioxide, 1998 INTERNATIONAL
PULP BLEACHING CONFERENCE (BOOK 1) 33–39 (1998) (hereinafter
“Moe”).

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Lucian A. Lucia et al., High Selectivity Oxygen Delignification,
USDOE OFFICE OF INDUSTRIAL TECHNOLOGIES (2005) (hereinafter
“Lucia”).

THE REJECTIONS
1. Claims 1, 6–10, 13–22, 24, 32, 37–39, 42–51, 53, 61, 65–70, 73–82,
and 84 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Grace and Leask in view of Rydholm.
2. Claims 11, 12, 40, 41, 71, and 72 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Grace and Leask, and further in view of
Prough.
3. Claims 23, 52, and 83 are rejected under 35 U.S.C. § 103(a) as
allegedly being unpatentable over Grace and Leask, and further in view of
Moe.
4. Claims 23, 52, and 83 are rejected under 35 U.S.C. § 103(a) as
allegedly being unpatentable over Grace in view of Lucia.

ANALYSIS
Appellants argue the claims as a group, and do not separately argue
any claims, including those claims separately rejected (App. Br. 5–12).
Accordingly, all of the claims on appeal stand or fall together. We select
claim 1 as representative. As a result, our determination with respect to
Rejection 1 applies to Rejections 2–4.
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Claim 1 of the instant application is similar to claim 1 of related
application S.N. 11/761,535 in that is recites performing a high consistency,
substantially mechanical pulping of the first rejects component. Claim 32 of
the instant application recites a similar method as claim 1 (see Claims
App’x). Claim 61 recites a method including chemically pulping wood
chips to a kappa number of at least 50 (versus a value of at least 30 as recited
in, e.g., claim 1).
Upon consideration of the evidence on this record and each of
Appellants contentions, we find that the preponderance of the evidence on
this record supports the Examiner’s conclusion that the subject matter of
Appellants’ representative claim 1 is unpatentable over the applied prior art.
We sustain the above rejections based on the Examiner’s findings of fact,
conclusions of law, and rebuttals to Appellants’ arguments as expressed in
the Answer. We add the following for emphasis.
Appellants’ contentions that 1) Grace teaches away from the use of
high consistency pulping of the rejects of medium or high yield chemical
pulp (that is, pulped to a kappa number of at least 30 or 50) because Grace
teaches the use of a low consistency reject refining, and 2) that the Examiner
thus also used impermissible hindsight in modifying Grace based on Leask
(App. Br. 9, 10), are not persuasive of error. Whether the prior art teaches
away from the claimed invention is a question of fact, DyStar Textilfarben
GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360
(Fed. Cir. 2006), In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005); Cf.
Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1090
(Fed. Cir. 1995) (to teach away, a reference must state that a feature “should
not” or “cannot” be used in combination with other features in the prior art.).
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Furthermore, it has been held that “[t]he fact that the motivating benefit
comes at the expense of another benefit, however, should not nullify its use
as a basis to modify the disclosure of one reference with the teachings of
another. Instead, the benefits, both lost and gained, should be weighed
against one another.” Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340,
1349 n. 8 (Fed. Cir. 2000).
In the instant case, as pointed out by the Examiner, Leask teaches the
benefits of higher consistency refining of rejects contrasted with lower
consistency refining (e.g., Final Rej. 11; Ans. 12; Leask pp. 213–215).
There are de facto only two alternatives to choose from — low or high
consistency refining of rejects (e.g., Final Rej. 11). Therefore, a
preponderance of the evidence supports the Examiner’s determination that it
would have been obvious to have used the known alternative of high
consistency refining of rejects in Grace’s chemical pulping process, in order
to gain the commonly understood benefits of “lower energy, better pulp
properties, and cleaner pulp” (Ans. 11). Cf. Leapfrog Enterprises, Inc. v.
Fisher-Price, Inc., 485 F.3d 1157 (Fed. Cir. 2007). This appears to be
nothing more than the predictable use of prior art elements/steps according
to their established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007).

Alleged Breakthrough Technology and Praise by Others
“Once a prima facie case of obviousness has been established, the
burden shifts to the applicant to come forward with evidence of
nonobviousness to overcome the prima facie case.” In re Huang, 100 F.3d
135, 139 (Fed. Cir. 1996). As indicia of obviousness or nonobviousness,
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such secondary considerations as commercial success, long felt but
unresolved needs, copying by others, etc., might be utilized to give light to
the circumstances surrounding the origin of the subject matter sought to be
patented and, therefore, may be relevant to the question of obviousness or
nonobviousness. Graham v. John Deere, 383 U.S. 1, 17–18 (1966).
“Evidence of secondary considerations . . . are but a part of the
‘totality of the evidence’ that is used to reach the ultimate conclusion of
obviousness.” Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1483
(Fed. Cir. 1997). The usefulness of this type of evidence lies in the fact that
it serves as a “‘guard against slipping into use of hindsight’” during the
determination of obviousness, Graham, 383 U.S. at 36, in that it may
demonstrate that the invention, while it appears to be obvious upon looking
back in time with hindsight, really was not. Stratoflex, Inc. v. Aeroquip
Corp., 713 F.2d 1530, 1538–39 (Fed. Cir. 1983). To properly consider
secondary considerations, we must consider all of the evidence under the
Graham factors together. Id.
In weighing secondary considerations along with the other evidence,
the secondary considerations must be carefully appraised as to evidentiary
value. EWP Corp. v. Reliance Universal, Inc., 755 F.2d 898, 908, (Fed. Cir.
1985). In some cases, evidence of secondary considerations is highly
probative on the question of obviousness. Richardson-Vicks, 122 F.3d at
1483. However, the existence of such evidence does not control the
obviousness determination, it remains in the realm of secondary
considerations. Id. A nexus between the merits of the claimed invention
and the evidence of secondary considerations is required in order for the
evidence to be given substantial weight in an obviousness decision.
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Stratoflex, 713 F.2d at 1539. When evidence of secondary considerations is
submitted, we begin anew and evaluate the rebuttal evidence along with the
evidence upon which the conclusion of prima facie obviousness was based,
rather than evaluating it on its knockdown ability. In re Rinehart, 531 F.2d
1048, 1052 (CCPA 1976).
In the instant case, for reasons discussed below, the evidence relied on
by Appellants is unpersuasive of patentability. The burden of showing
unexpected results rests on the person who asserts them by establishing that
the difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991). The unexpected results must be established by factual
evidence, and attorney statements are insufficient to establish unexpected
results. See In re Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir. 1997).
Further, a showing of unexpected results supported by factual evidence must
be reasonably commensurate in scope with the degree of protection sought
by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983);
In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). Looking at the totality
of the evidence, we conclude that the evidence of secondary considerations
does not outweigh the evidence of obviousness, as follows.
First, as discussed by the Examiner on pages 6–7 of the Answer, the
TAPPI Paper discussed in the Hart Declaration of August 1, 2011 is not as
broad as claims 1, 32, and 61 for the reasons stated by the Examiner. For
example, the Examiner explains that claims 1, 32, and 61 do not specify any
type of chemical methods whereas the TAPPI paper is specific to kraft
chemical pulping. Ans. 6. Also, the Examiner points out that the claims do
not require the addition of alkali or peroxide into or before the refiner. Id.
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The Examiner discusses other elements of the claim not addressed by the
TAPPI Paper. A preponderance of the evidence supports the Examiner’s
determination that the discussion of the praise of the invention by others and
the breakthrough technology is not commensurate in scope with the claims.
As noted, supra, a showing of unexpected results supported by factual
evidence must be reasonably commensurate in scope with the degree of
protection sought by the claims on appeal. Grasselli, 713 F.2d at 743;
Clemens, 622 F.2d at 1035.
Second, we also agree with the Examiner that Appellants have not
demonstrated that their results achieved by use of a high consistency refining
step are unexpected for the reasons stated on pages 7–8 of the Answer. As
noted, supra, the burden of showing unexpected results rests on the person
who asserts them by establishing that the difference between the claimed
invention and the closest prior art was an unexpected difference. Baxter
Travenol Labs, 952 F.2d at 392. Appellants have not adequately done so in
the instant case.
For the foregoing reasons, and for those reasons set forth in the
Answer, we determine that the preponderance of evidence weighs in favor of
obviousness, giving due weight to Appellants’ arguments and evidence.
Accordingly, the Examiner’s rejections under 35 U.S.C. § 103 are affirmed.
The Examiner’s decision is affirmed.
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