Ex Parte Hassan et al

Board of Patent Appeals and Interferences

Sep 18, 2008

10669357 (B.P.A.I. Sep. 18, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AZIZ HASSAN, ABBAS HASSAN, and
GREGORY BORSINGER
____________

Appeal 2008-3649
Application 10/669,357
Technology Center 1700
____________

Decided: September 18, 2008
____________

Before EDWARD C. KIMLIN, THOMAS A. WALTZ, and
ROMULO H. DELMENDO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
all pending claims 30-39, 41, 42, 45, and 47. (Final Office Action entered
August 3, 2006). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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Appellants’ invention relates to “a composition that can be applied to
fibrous cellulosic objects such as paper and paperboard, and render such
treated cellulosic objects recyclable using conventional means of recycling.”
(Spec. 6, ll. 4-6). According to Appellants, the composition comprises
“highly hydrogenated vegetable oil (palm, soybean, corn) that has wax-like
properties. . . . [where t]he hydrogenated oils that can be used are >90%
triglyceride and have a range of carbon numbers with C18 being the most
predominant component (>50%).” (Id. 7, ll. 14-19).

Representative claims 30, 31, 33, 41, 45, and 47 read as follows:
30. A composition for application to a fibrous cellulosic
material, the composition comprising a vegetable-derived
triglyceride having a melting point greater than 120 degrees F,
and being characterized by an iodine value between 0 and 30,
the triglyceride comprising an oil selected from the group
consisting of soybean, corn, cottonseed, rape, canola,
sunflower, palm, palm kernel, coconut, crambe, linseed and
peanut, the composition applied in a quantity sufficient to
render the cellulosic material resistant to water, the applied
composition being dispersible in a warm alkaline aqueous
solution.

31. The composition as described in claim 30, wherein the
melting point is from about 130 degrees F to about 165 degrees
F.

33. The composition as described in claim 31, wherein the
composition is further characterized by having a viscosity of
from about 10 to about 200 cps at a temperature of 140 degrees
F.

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41. The composition as described in claim 30, wherein the
triglyceride comprises from about 80 to about 100% by weight
of the composition.

45. A composition for application to a fibrous cellulosic
material, the composition comprising a vegetable-derived
triglyceride having a melting point between 136-160 degrees F,
the triglyceride being characterized by having an iodine value
of between 2 and 5, the composition being characterized by a
viscosity of from about 10 to about 200 cps at 140 degrees F,
wherein the triglyceride comprises a fatty acid, the fatty acid
being stearic acid, and wherein the triglyceride comprises an oil
selected from the group consisting of palm and soybean oil, the
composition applied in a quantity to render the cellulosic
material resistant to water, the applied composition being
dispersible in a warm alkaline aqueous solution.

47. The composition as described in claim 30, wherein the
fibrous cellulosic material is chosen from the group consisting
of paper, kraft paper, corrugated paper, linerboard and
paperboard.

The prior art references relied upon by the Examiner to reject the
claims on appeal are:
Sleeter U.S. 6,001,286 Dec. 14, 1999
Ong WO 96/00815 Jan. 11, 1996

Eriksen, J., RD 392017, Dec. 10, 1996.

The following rejections are before us for review:
Claims 30-39, 41, 42, 45, and 47 are rejected under 35 U.S.C. §
103(a) as unpatentable in view Sleeter.
Claims 30-38, 41, 42, 45, and 47 are rejected under 35 U.S.C. §
103(a) as unpatentable in view of Ong.
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Claims 30-33, 41, and 47 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of RD 392017.

ISSUES
Have Appellants shown reversible error in the Examiner’s
determination that the subject matter of claims 30-39, 41, 42, 45, and 47
would have been obvious to one of ordinary skill in the art in view of
Sleeter?
Have Appellants shown that the Examiner reversibly erred in
determining that the subject matter of claims 30-38, 41, 42, 45, and 47
would have been obvious to one of ordinary skill in the art in view of Ong?
Have Appellants shown reversible error in the Examiner’s
determination that the subject matter of claims 30-33, 41, and 47 would have
been obvious to one of ordinary skill in the art in view of RD 392017?

FINDINGS OF FACT
The record supports the following findings of fact, as well as any
other findings of fact discussed in this opinion, by at least a preponderance
of the evidence.
1. Appellants’ Specification states: “The present invention performs
best with a hydrogenated triglyceride where the iodine value is close
to zero thereby rendering the triglyceride more thermally stable. The
triglycerides can be chosen from those having an iodine value of
between 0-30, but a triglyceride having an iodine value of between 2-
5 is preferred.” (Spec. 11, ll. 23-26).
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2. The Specification states “[s]aturated triglycerides having a low iodine
value (a range of iodine values of about 0-70 with 0-30 preferred) may
be produced by hydrogenation of a commercial oil, such as oils of
soybean, soy stearine, stearine, corn, cottonseed, rape, canola,
sunflower, palm, palm kernel, coconut, crambe, linseed, peanut, fish
and tall oil; or fats, such as animal fats, including lard and tallow, and
blends thereof.” (Spec. 11, ll. 2-6).
3. The Specification discloses “specific waxes employed in the invention
are a palm oil wax and a soybean wax, prepared from hydrogenated
oil,” which are 98% triglyceride by weight and predominantly stearic
acid triglyceride. (Spec. 7, ll. 2-30; 13, ll. 18-21; 15, ll. 9-10; 16, ll. 8-
13; Tables 1 and 2).
4. The melting point of the soybean oil wax is between 155-160°F and
for the palm oil wax is between 136-142°F. (Spec. 15, ll. 3-4).
5. The Specification discloses the melting point property of a free fatty
acid/triglyceride mixture varies as a function of the chain length and
degree of saturation of the free fatty acids and the fatty acid
components of the triglycerides. (Id. 10, ll. 11-14).
6. The Specification states fatty acid components of triglycerides with
increasing iodine values (i.e., decreasing degree of saturation) show
decreasing melting points. (Id. 10, ll. 14-15).
7. Sleeter discloses a composition for rendering fibrous vegetable
materials water resistant comprising a vegetable-derived triglyceride
having an iodine value between 0-30, where the triglyceride “may be
produced by a hydrogenation of a commercial oil or fat, such as oils
of: soybean, soy stearine, stearine, corn, cottonseed, rape, canola,
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sunflower, fish, lard, tallow, palm, palm kernel, coconut, crambe,
linseed, peanut, tall oil, animal fats, and blends thereof.” (Col. 1, ll.
44-50; abstract, ll. 1-3).
8. Sleeter discloses that vegetable oils “hydrogenated to low or very low
iodine values (‘IV’) . . . or fats naturally composed primarily of
saturated triglycerides (such as palm oil or fractionated fats) can be
used alone or in blend formations with adhesives/laminants to achieve
an enhanced water tolerance for composite materials.” (Col. 1, ll. 35-
40).
9. Sleeter teaches dry particles of the triglyceride may be sprayed onto
the substrate, where the dry particles are 100% triglyceride. (Col. 2,
ll. 55-63; col. 3, ll. 8-14).
10. Sleeter discloses applying the dry particles of triglyceride after the
fibrous composite material is formed. (Col. 3, ll. 9-11).
11. Sleeter teaches applying the claimed composition to “fibrous
vegetable matter.” (Abstract, ll. 1-3; col. 1, ll. 4-8).
12. RD 39207 discloses coating paper to obtain a waterproof barrier
“using high melting non hydrogenated triglyceride fractions alone or
as mixtures with vegetable or animal fats,” that has the advantage of
“[e]asy recyclability of used coated paper.” (Emphasis added; RD
39207 at 1, ll. 16-19, 24).
13. RD 392017 discloses mixtures for paper coatings of: i) palm stearin
having iodine value 12.7 and ii) palm stearin having iodine value 38.2
in proportions ranging from 90:10 to 10:90, and the product having a
melting point of 50-65°C (122-149°F). (RD 392017 at 1, ll. 31-33, 37-
39).
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14. The Specification discloses vegetable oils and fats with low iodine
values can be obtained by both hydrogenation and fractionation.
(Spec. 10, ll. 26-27; 11, ll. 10-15).

PRINCIPLES OF LAW
It is well settled that when a claimed product reasonably appears to be
substantially the same as a product disclosed in the prior art, the burden of
proof is shifted to applicant to prove that the prior art product does not
inherently or necessarily possess the characteristics attributed to the claimed
product. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Fitzgerald,
629 F.2d 67, 70 (CCPA 1980); In re Best, 562 F.2d 1252, 1255 (CCPA
1977) (“Whether the rejection is based on ‘inherency’ under 35 U.S.C. §
102, on ‘prima facie obviousness' under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced
by the PTO's inability to manufacture products or to obtain and compare
prior art products.”) (Footnote omitted.).
“[A] prior art reference that discloses a range encompassing a
somewhat narrower claimed range is sufficient to establish a prima facie
case of obviousness.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).

ANALYSIS
Obviousness Rejection of Claims 30-39, 41, 42, 45, and 47 in View of
Sleeter
Appellants submit specific arguments separately addressing claims 30,
41, 45, and 47. We address these arguments accordingly. Appellants also
argue claims 30-39, 42, and 47 together. We select representative claim 30
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from this group of claims and address these arguments with separately
argued claim 30. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 30
Appellants do not dispute the Examiner's findings that Sleeter
discloses a composition for rendering fibrous vegetable materials water
resistant comprising a vegetable-derived triglyceride having an iodine value
between 0-30, where the composition comprises triglyceride fats, such as
soy stearine or a palm triglyceride. (Ans. 4, ll. 1-8; App. Br. 11-13; FF 7).
Rather, Appellants argue that the claimed properties of the composition,
such as melting point and recyclability (i.e., dispersibility in warm alkaline
aqueous solution), are not disclosed in Sleeter. (Id.12, ll. 26-29; 14, ll. 2-6).
Appellants contend: “[A]llegations that the claimed properties are inherent
in the reference are based merely on hindsight, because the teaching of
applicants’ invention, and not that of the reference, is being used to teach
what was not taught or recognized by the reference.” (Id. 12, ll. 26-33).
Furthermore, Appellants assert: “[B]ecause the reference failed to
appreciate or recognize the properties Applicant claims in the present
pending claims, under the case law it is impermissible to have employed the
Applicants’ teaching and recognition of the properties of the inventive
waxes to fill in the gaps of the reference.” (Id. 13, ll. 21-24).
We find Appellants’ arguments unpersuasive. Appellants’
Specification states:
The present invention performs best with a hydrogenated
triglyceride where the iodine value is close to zero thereby
rendering the triglyceride more thermally stable. The
triglycerides can be chosen from those having an iodine value
of between 0-30, but a triglyceride having an iodine value of
between 2-5 is preferred.
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(FF 1). Furthermore, Appellants’ Specification states the inventive
triglycerides having low iodine values may be obtained by
“hydrogenation of a commercial oil, such as oils of soybean, soy
stearine, stearine, corn, cottonseed, rape, canola, sunflower, palm,
palm kernel, coconut, crambe, linseed, peanut, fish and tall oil; or fats,
such as animal fats, including lard and tallow, and blends thereof.”
(FF 2). Additionally, the Specification discloses examples of the
inventive waxes of palm oil wax and soybean wax, which are 98%
triglyceride by weight and predominantly stearic acid triglyceride (FF
3), and where the fatty acid composition of the hydrogenated soybean
oil is 82-94% stearic acid. (Spec. Table 1). The melting point of
these inventive waxes is described in Appellants’ Specification to be
between 155-160°F for soybean oil and between 136-142°F for palm
oil. (FF 4). Also, according to Appellants, the melting point property
of free fatty acid/triglyceride mixtures varies as a function of the chain
length and degree of saturation of the free fatty acids and the fatty
acid components of the triglycerides. (FF 5).
Describing a similar composition, Sleeter discloses “hydrogenation of
a commercial oil or fat, such as oils of: soybean, soy stearine, stearine, corn,
cottonseed, rape, canola, sunflower, fish, lard, tallow, palm, palm kernel,
coconut, crambe, linseed, peanut, tall oil, animal fats, and blends thereof,” to
obtain triglycerides with a preferred iodine value of 0-30 for water repellant
material for fibrous vegetable materials. (FF 7). Additionally, Sleeter
teaches the vegetable oils, hydrogenated to low iodine values, “achieve an
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enhanced water tolerance for composite materials,” either alone or in blends
(FF 8).
Thus, the Specification impresses that the prior art composition
comprising vegetable-derived triglycerides from hydrogenated soybean oil
or soy stearine, having an iodine value of 0, would necessarily have the
properties of a melting point greater than 120°F and dispersiblity in warm
alkaline aqueous solution, as recited in claim 30. Accordingly, the burden
was properly shifted to Appellants to show the claimed composition had
patentably distinct properties from the prior art composition. Appellants
have not directed us to any persuasive evidence demonstrating any
distinction, let alone a patentable one. In re Spada, 911 F.2d at 708; In re
Best, 562 F.2d at 1255. (“Where, as here, the claimed and prior art products
are identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.”). In re Fitzgerald, 619 F.2d at 70
(“As a practical matter, the Patent Office is not equipped to manufacture
products by the myriad of processes put before it and then obtain prior art
products and make physical comparisons therewith.”).
Appellants argue that In re Shetty, 566 F.2d 81 (CCPA 1977), and In
re Spormann, 363 F.2d 444 (CCPA 1966), support their argument that “use
of an applicant’s application to complete gaps in the reference is improper.”
(App. Br. 13, ll. 1-10).
Appellants’ reliance on Shetty and Spormann is misplaced. In Shetty,
the court reviewed the Patent Office’s obviousness rejections of claims
directed to a composition and a method of using the composition. In re
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Shetty, 566 F.2d at 84-85. With respect to the composition claims, the court
affirmed the rejection where the Patent Office found a structural similarity to
the claimed composition, stating:
Confronted with PTO evidence of obviousness, appellant has
offered no evidence of unobviousness, as by showing an actual
difference in properties between his compounds and the prior
art compounds. . . . Presented with such an absence of
comparative or other evidence with respect to the properties of
the compounds and the claimed composition, we hold that
composition claim 52 would have been obvious from and
unpatentable over the prior art.

In re Shetty, 566 F.2d at 86 (Citation omitted). With respect to the method
claims, the court reversed the obviousness rejection. However, this reversal
was based on the improper reliance on a dosage for combating microbial
infestation to show a dosage for curbing appetite. (Id.). Appellants’
arguments are unpersuasive because the rejection before us is similar to the
affirmed rejection of the composition claims before the court in Shetty.
With respect to Spormann, Appellants rely on the court’s statements:
“‘That which may be inherent is not necessarily known. Obviousness
cannot be predicated on what is unknown.’” (App. Br. 13, ll. 5-8).
Here, Appellants misapply the court’s statements to the present
appeal. In Spormann, the Patent Office rejected a method of spraying an
aqueous solution of alkali metal hydroxides and/or carbonates into a dry gas
comprising sulfur dioxide to produce alkali metal sulfites, where the gas
temperature and humidity conditions cause the water content to vaporize in
such a way that little sulfate is produced. (Id. at 444). The rejection
combined references to show minimizing sulfate production would be
inherent in a prior art process. (Id. at 448). The court held that the rejection
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was improper because the prior art process was different from appellants’
process. (Id.). These facts and issues are distinct than those before us in this
appeal. Here, Appellants claimed composition is reasonably believed to be
the same composition as that disclosed in the prior art, and therefore, has the
same inherent properties.
For these reasons we find that Appellants have not shown the
Examiner erred in determining claim 30 obvious in view of Sleeter.
Claim 41
Appellants argue that Sleeter does not disclose the claimed
triglyceride comprising from about 80 to about 100% by weight of the
composition. Particularly, Appellants contend:
[Sleeter’s] spray application is performed prior to the material
being laminated or pressed. The application of the dry particles
is thus merely an intermediate step in the process, and because
later steps of the process utilize additional materials, one skilled
in the art can only speculate as to what the final concentration
of the sprayed on material may be in the final product.

(Spec. 16, ll. 15-19).
Appellants’ argument is not persuasive. The Examiner found that
Sleeter teaches “[d]ry particles of the triglyceride may be sprayed onto the
substrate . . . which means that the composition is then 100% triglyceride.”
(Ans. 4, ll. 17-18; FF 9). Appellants do not dispute the Examiner’s finding
that the prior art composition is 100% by weight concentration at the time
the composition is applied. (App. Br. 11-23; Reply Br. 5-10). Rather,
Appellants incorrectly focus on the composition concentration in the final
product, which does not address the claimed subject matter of a
“composition for application to a fibrous cellulosic material.” (Emphasis
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added; claim 30). Appellants’ arguments addressing the intermediate step of
a coating process relates to the intended use of the composition, not to the
triglyceride concentration of the composition for application to the fibrous
cellulosic material. Here, the claimed composition reads on the prior art
composition regardless of its intended use.
Moreover, Sleeter discloses applying the composition of 100% by
weight triglyceride after the fibrous composite material is formed. (FF 10).
On this record, Appellants have not provided any persuasive evidence that
the composition of claim 41 patentably distinguishes from the prior art
composition.
Claim 45
Appellants argue: “Claim 45 claims use of a wax with an iodine value
in the range of 2-5, and includes additional properties such as the range of
melting points of the wax, and the viscosities of the inventive waxes.” (App.
Br. 16, l. 35 through 17, l. 2). Again, Appellants contend: “It is the
Applicants’ teaching being used in hindsight to fill the gap of the reference,
because the reference fails to recognize any such properties of their
composition.” (App. Br. 16, ll. 30-33).
Again, we find Appellants’ arguments unpersuasive. Sleeter discloses
a prior art composition comprising triglycerides from hydrogenated soybean
oil or soy stearine. (FF 7). As the Specification discloses the inventive
soybean oil wax having a melting point range 155-160°F (FF 4), one of
ordinary skill in the art would have understood the substantially identical
prior art composition to have the same melting point range.
Furthermore, the Examiner determined viscosity to be a result
effective variable that one of ordinary skill in the art would modify by
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routine optimization to control an important parameter of coating processes.
(Ans. 7, ll. 6-9). Appellants have not even asserted that the Examiner’s
determination that viscosity is a result effective variable is in error. (App.
Br. 6-23). Appellants’ bare arguments that Sleeter does not teach the
composition properties found in the claim are not sufficient to overcome the
Examiner’s determination of obviousness. In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence.”).
With respect to the claimed iodine values, Appellants contend that
Sleeter teaches away from the claimed invention because, after analyzing the
trade-off between composition performance and production expense,
“Sleeter thus uses materials that have a much higher iodine value.” (App.
Br. 17, ll. 3-9).
This argument is not persuasive. Although Sleeter discusses trade-
offs between iodine value and expense, Sleeter also discloses iodine values
of 0-30, “finding that the optimum IV [iodine value] is 0 or as low as
possible.” (Col. 4, ll. 59-60). Though Sleeter teaches “for most uses a
hydrogenation to an IV of 20-25 yields the best value in performance versus
cost to produce” (Col. 4, ll. 66-67), the reference does not state this IV range
should be selected for every use. Significantly, Sleeter does not discourage
the use of lower iodine values when needed for performance requirements.
Moreover, the iodine value range disclosed in the prior art (i.e., 0-30)
encompasses Appellants’ claimed iodine value range of 2-5. Thus, the
burden properly shifted to Appellants to show that their claimed narrower
range would not have been obvious in light of the broader range disclosed in
the prior art. In re Peterson, 315 F.3d at 1330. Appellants have not directed
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us to any persuasive evidence that the claimed narrower iodine value range
gives unexpected results as compared to the prior art broader iodine value
range.
Appellants also argue that because Sleeter “deals with rendering
structural products water resistant[,] it does not recognize, nor even attempt
to determine, whether the applied composition is dispersible under aqueous
conditions.” (App. Br. 18, ll. 1-3). As discussed above, we find Appellants’
arguments unpersuasive because the prior art composition comprising
triglycerides from hydrogenated soybean oil or soy stearine is substantially
identical to the claimed composition comprising stearic acid triglyceride.
Thus, one of ordinary skill in the art would have understood the prior art
composition to have the same properties, including dispersibility in warm
alkaline aqueous solution, as recited in claim 45. Appellants have not relied
upon any persuasive evidence to show otherwise. In re Spada, 911 F.2d at
708; In re Best, 562 F.2d at 1255; In re Fitzgerald, 619 F.2d at 70. For these
reasons, we find that Appellants have not shown the Examiner reversibly
erred in determining claim 45 obvious over the prior art.
Claim 47
Appellants argue that the prior art discloses coated products that are
different from Appellants’ claimed coated fibrous cellulosic materials.
Appellants contend: “[T]here is no motivation for using the teachings of
[Sleeter] for coating paper products and related materials as claimed.” (App.
Br. 15, ll. 20-21). Furthermore, Appellants contend there is no teaching for
“the use of fibrous cellulosic products to be coated with a highly
hydrogenated, vegetable derived wax, as claimed in the present pending
application.” (Id. 16, ll. 2-3). Additionally, Appellants assert the
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Declaration of Mr. Borsinger under 37 C.F.R. § 1.132, submitted May 18,
2006, describes the “differences between fibrous cellulosic products that are
derived from wood, such as paper and cardboard, and distinguish[es] these
products from lumber or strand board, products made with wood.” (Id. 15,
ll. 31-32). The Declaration states:
“The fibrous cellulosic products claimed in the present pending
application and the composite boards described in [Sleeter] . . .
[are] different because the structural board form used in
[Sleeter] contains lignin to provide it with its’ structure, and
lignin is absent from the fibrous cellulosic products claimed in
the present pending application.”

(Decl. ¶ 17). Furthermore, the Declaration states that “a person following
[Sleeter] would not employ its’ teachings with fibrous cellulosic materials.”
(Decl. ¶ 18).
Appellants’ arguments and the Declaration are unpersuasive because
the claims are not directed to a coated substrate, but to a composition for
application to a substrate (i.e., a fibrous cellulosic substrate). Furthermore,
as far as we can tell from the evidence of record, the composition disclosed
in Sleeter is identical to the claimed composition. Therefore, the
characteristics of the prior art composition comprising hydrogenated
soybean or soy stearine would inherently include the characteristics of the
claimed inventive wax as disclosed in the Specification, including the
capability to be applied to fibrous cellulosic material. Neither Appellants’
arguments nor the Declaration show that the claimed composition has
patentably distinct properties from the prior art composition.
Moreover, Sleeter’s description of applying the composition to
composite materials does not criticize the prior art composition’s capability
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for application to other materials. Indeed, the Examiner found that Sleeter
discloses applying the claimed composition to “fibrous vegetable matter
(which would be inclusive of paper) and fiber board.” (FF 11).
For these reasons, we find that Appellants have not shown that the
Examiner reversibly erred in determining claims 30-39, 41, 42, 45, and 47
obvious in view of Sleeter.

Obviousness Rejection of Claims 30-38, 41, 42, 45, and 47 in View of Ong
The Examiner alleges “tristearin is one of the triglycerides claimed by
applicant.” (Ans. 5, l. 13). On the other hand, Appellants appear to argue
that tristearin is not one of the claimed triglycerides (App. Br. 18, l. 21), and
contend:
[Ong] deals with tristearin; Applicants claim a triglyceride
which has a stearic acid as a major component. Tables 1 and 2
of the specification . . . summarize properties of the inventive
waxes, and the fatty acid composition of these waxes ranges
from C8 through C20. The soy wax includes a greater
concentration range of C18:0 (stearic acid) than the palm wax,
but this fatty acid is not the only fatty acid in the inventive
waxes. . . . Therefore, these Claim rejections under 35 U.S.C.
§103(a) are improper and must be withdrawn.

(Id. 19, ll. 22-28).
We agree with Appellants. There is no disclosure in the prior art that
tristearin is a “triglyceride comprising an oil from the group consisting of
soybean, corn, cottonseed, rape, canola, sunflower, palm, palm kernel,
coconut, crambe, linseed and peanut” or a “triglyceride comprises an oil
selected from the group consisting of palm and soybean oil,” as required by
the independent claims 30 and 45, respectively. The Examiner has not
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identified evidence or provided acceptable reasoning to show the prior art
tristearin is a triglyceride comprising any one of the claimed oils.
Therefore, we must agree with Appellants that the Examiner erred in
determining the subject matter of the appealed claims obvious in view of
Ong.

Obviousness Rejection of Claims 30-38, 41, 42, 45, and 47 in View of RD
392017
Appellants submit separate specific arguments to claim 33, and we
address these arguments accordingly. Appellants also submit specific
arguments to grouped claims: i) 30, 31, and 47, and ii) 33 and 41. We select
representative claim 30 from the first group and representative claim 33
from the second group, and confine our discussion to these claims. 37
C.F.R. § 41.37(c)(1)(vii).
Claim 30
Appellants contend that the prior art teaches away from the claimed
invention because “one of ordinary skill in the art would . . . not want to use
hydrogenated fats and oils to obtain a paper coating” in light of RD
392017’s statements to avoid use of hydrogenated fats and oils and the
disclosure from page 772 (App. Br. Exhibit B) that “[i]t is not necessarily an
advantage to work with fully or nearly fully hydrogenated mixtures of
triglycerides.” (App. Br. 21, ll. 12-21). Appellants’ arguments are
unpersuasive.
RD 392017 discloses coating paper to obtain a waterproof barrier
“using high melting non hydrogenated triglyceride fractions alone or as
mixtures with vegetable or animal fats,” that has the advantage of “[e]asy
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recyclability of used coated paper.” (FF 12). A disclosed example describes
a mixture of palm stearin having an iodine value of 12.7 and palm stearin
having an iodine value of 38.2. (Id., ll. 31-33). However, one of ordinary
skill in the art would have understood the prior art to disclose compositions
comprising non hydrogenated fractions of the mixture by themselves (i.e., a
composition of 100% palm stearin having an iodine value of 12.7).
Additionally, RD 392017 discloses the melting point range of exemplary
mixtures of: i) palm stearin having iodine value 12.7 and ii) palm stearin
having iodine value 38.2, in proportions ranging from 90:10 to 10:90, to be
50-65°C (122-149°F). (FF 13). As triglycerides with increasing iodine
values (i.e., decreasing degree of saturation) show decreasing melting points
(FF 6), triglycerides having decreasing iodine values would show increasing
melting points, and one of ordinary skill in the art would have recognized
that palm stearin having an iodine value of 12.7 has a melting point greater
than 120°F. Thus, the prior art composition would reasonably appear to be
identical to the claimed “composition for application to a fibrous cellulosic
material,” and possess the claimed characteristics.
Additionally, the claimed composition requires a “vegetable-derived
triglyceride . . . characterized by an iodine value between 0 and 30.” (Claim
30). According to Appellants, vegetable oils and fats having low iodine
values can be obtained from hydrogenation and fractionation. (FF 14).
Therefore, Appellants’ arguments that RD 392017 and page 772 teach away
from Appellants’ claimed invention are unpersuasive because the claimed
subject matter encompasses non hydrogenated triglyceride fractions
comprising a palm oil, as well as triglycerides produced by hydrogenation of
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Application 10/669,357

palm oil. Thus, the prior art does not teach away from the path taken by
Appellants.
Appellants argue: “There is no demonstration that the mixtures are
actually being used, or could be used, as paper coatings, let alone any
demonstration that papers coated with any of the mixtures could be
recycled.” (App. Br. 22, ll. 7-9).
Appellants’ arguments are unpersuasive. The appealed claims are
directed to a composition and not to a coating process. As discussed above,
RD 392017 specifically discloses the triglyceride fractions as a “coating of
paper to obtain a waterproof barrier” with the advantage of easy recyclability
of the coated paper. (RD392017, l. 16). Furthermore, the Specification
impresses that a prior art composition comprising a vegetable-derived
triglyceride of palm oil, having an iodine value between 0-30 and a melting
point greater than 120°F would necessarily have the claimed property of
dispersiblity in warm alkaline aqueous solution. (FF 2, 4, Spec. 20, ll. 5-17,
Table 5). Appellants have not directed us to any persuasive evidence that
the claimed composition is patentably distinct from the prior art composition
and therefore fail to meet their burden to show the Examiner reversibly erred
in rejecting claim 30 in view of RD 392017. In re Spada, 911 F.2d at 708;
In re Best, 562 F.2d at 1255. In re Fitzgerald, 619 F.2d at 70.
Claim 33
Appellants contend: “[RD 392017] fails to describe viscosity of any of
either one of the individual components used to make the mixtures, nor does
it discuss the viscosity of the mixtures actually tested.” (App. Br. 23, ll. 1-
2). Furthermore, Appellants argue that the Examiner has not made “a
convincing argument why the reference teaches the subject matter of the
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Application 10/669,357

claimed invention,” and contend that “the rejection of these claims was
speculative, leaving one to guess at the underlying rationale for the rejection
of the claims.” (App. Br. 22, ll. 19-23).
Appellants’ arguments are unpersuasive. The Examiner determined
viscosity to be a result effective variable that one of ordinary skill in the art
would modify by routine optimization to control an important parameter of
compositions involved in coating processes. (Ans. 6, ll. 9-12). Here,
Appellants’ bare arguments that RD 392017 does not teach the limitations
found in the claim are not sufficient to overcome the Examiner’s finding of
obviousness. In re Pearson, 494 F.2d at 1405. For these reasons we find
that Appellants have not shown the Examiner reversibly erred in
determining claims 30-38, 41, 42, 45, and 47 obvious in view of RD 392017.

CONCLUSION
On this appeal record, Appellants have failed to show that the
Examiner reversibly erred in concluding that one of ordinary skill in the art
would have found the subject matter of appealed claims 30-39, 41, 42, 45,
and 47 obvious in view of Sleeter.
Appellants, however, have shown that the Examiner reversibly erred
in concluding that one of ordinary skill in the art would have found the
subject matter of appealed claims 30-38, 41, 42, 45, and 47 obvious in view
of Ong.
Appellants have failed to show that the Examiner reversibly erred in
concluding that one of ordinary skill in the art would have found the subject
matter of appealed claims 30-33, 41, and 47 obvious in view of RD 392017.
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Application 10/669,357

Accordingly, the decision of the Examiner to reject all the appealed
claims 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)(1)(iv).

AFFIRMED

PL initials
sld

THOMAS L. ADAMS
P.O. BOX 340
120 EAGLE ROCK AVENUE
EAST HANOVER, NJ 07936

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