Ex Parte Hart et alDownload PDFPatent Trial and Appeal BoardJan 29, 201512602780 (P.T.A.B. Jan. 29, 2015) Copy Citation 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”). Appeal 2013-006127 Application 12/602,780 3 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. Appeal 2013-006127 Application 12/602,780 4 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.). Appeal 2013-006127 Application 12/602,780 5 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, Appeal 2013-006127 Application 12/602,780 6 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. Appeal 2013-006127 Application 12/602,780 7 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. Appeal 2013-006127 Application 12/602,780 8 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 Copy with citationCopy as parenthetical citation