Ex Parte Hsu et al

Board of Patent Appeals and Interferences

Nov 13, 2009

09859821 (B.P.A.I. Nov. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte WU-HSIUNG ERNEST HSU
and JAMES A. EVENSEN
______________

Appeal 2009-000247
Application 09/859,821
Technology Center 1700
_______________

Decided: November 13, 2009
_______________

Before EDWIN C. KIMLIN, BRADLEY R. GARRIS, and
CHARLES F. WARREN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1-52 in the Office Action mailed March 3,
2006 (Office Action). Appellants subsequently cancelled claims 43 and 46-
48 in the Amendment filed June 25, 2007, leaving claims 1-42, 44, 45, and
49-52 for consideration on appeal. 35 U.S.C. §§ 6 and 134(a) (2002);
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37 C.F.R. § 41.31(a) (2006).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a method for withdrawing
and recovering volatile organic compounds (VOC) and hazardous air
pollutant emissions (HAP) in the production of a lignocellulosic product,
and is representative of the claims on appeal:
1. A method for withdrawing and recovering VOC and HAP
emissions in the production of a lignocellulosic product, which comprises:
forming a mat of lignocellulosic material;
bonding together said mat batchwise in a product formation press with
an adhesive material to produce said lignocellulosic product;
wherein pressure in said formation press generated by the VOC and
HAP emissions does not exceed about 50 psi during the formation of said
lignocellulosic product;
producing VOC and HAP emissions during the formation of said
lignocellulosic product in said product formation press;
withdrawing at least about 50% of said VOC and HAP emissions
produced during the formation of said lignocellulosic product prior to
removal of said lignocellulosic product from said product formation press,
wherein substantially no steam is introduced into said formation press, from
a source outside said formation press, during the production of said
lignocellulosic product; and
recovering, without releasing to the atmosphere, said VOC and HAP
emissions which are withdrawn from said formation press.
The Examiner relies upon the evidence in these references:
McLaughlin US 4,257,995 Mar. 24, 1981
Israel US 4,898,776 Feb. 6, 1990
Imao US 5,028,374 Jul. 2, 1991
Douglas US 5,273,202 Dec. 28, 1993
Siempelkamp US 5,779,955 Jul. 14, 1998
Lundgren WO 00/25999 A1 May 11, 2000
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Appellants request review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: appealed claims 1-42, 44, 45,
and 49-52 over Imao or Siempelkamp in view of admitted prior art in the
Specification, Israel, or McLaughlin, Lundgren and Douglas.1 App. Br. 25;
Ans. 3.
Appellants argue the claims as a group and further argue certain
individual claims addressed in the ground of rejection. See generally App.
Br. Thus, we decide this appeal based on claim 1 and on other claims to the
extent argued in the Appeal Brief. 37 C.F.R. § 41.37(c)(1)(vii) (2006).
We considered the Appeal Brief filed June 25, 2007, as amended June
30, 2008, and the Examiner’s Answer mailed August 7, 2007.
We have considered the Reply Brief filed October 9, 2007, to the
extent Appellants reply to the additional explanation for the ground of
rejection with respect to claim 6 at pages 5-6 of the Answer which was not
part of the ground of rejection set forth in the Office Action, and to the
Examiner’s response to the issues raised in the Appeal Brief at pages 7-20 of
the Answer. See Reply Br. 5 and 7-11. With the exception of the additional
explanation of the ground of rejection with respect to claim 6, the statement
of the ground of rejection in the Answer is repeated verbatim from the Final
Rejection. Cf. Office Action with Ans. 3-7.
Appellants’ Appeal Brief must include “[t]he contentions of appellant
with respect to each ground of rejection presented for review in paragraph
(c)(1)(vi) of this section, and the basis therefor, with citations of the statutes,

1 The Examiner’s statement of the ground of rejection as directed to claims
1-52 is harmless error. Ans. 7.
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regulations, authorities, and parts of the record relied on,” and in this
respect, “[a]ny arguments or authorities not included in the brief or a reply
brief filed pursuant to § 41.41 will be refused consideration by the Board,
unless good cause is shown.” 37 C.F.R. § 41.37(c)(1)(vii) (2007). There is
no provision in this rule permitting Appellants to separate their contentions
into two parts without good cause: one part submitted in the Appeal Brief
and the other part submitted in the Reply Brief.
In the appeal before us, Appellants’ arguments with respect to the
ground of rejection at pages 2-7 in the Reply Brief do not reply to a new
point raised by the Examiner in stating the ground of rejection in the Answer
with the exception of the argument submitted with respect to claim 6, and
thus, the arguments should have been submitted in the Appeal Brief and
were not. Appellants have not submitted a showing of good cause why such
arguments were not included in the Appeal Brief. See generally Reply Br.
Accordingly, Appellants’ contentions submitted on pages 2-7 of the Reply
Brief, with the exception of the arguments with respect to claim 6, are
deemed waived.
Opinion
We considered the totality of the record in light of Appellants’
arguments with respect to claim 1 and other claims to the extent argued in
the Appeal Brief and the ground of rejection advanced on Appeal. See, e.g.,
In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“‘On appeal to the
Board, an applicant can overcome a rejection by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.’”) (quoting In re
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Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)); In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) (“After evidence or argument is submitted by
the applicant in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration to
persuasiveness of argument.”) (citing, inter alia, In re Spada, 911 F.2d 705,
707 n.3 (Fed. Cir. 1990)).
We are of the opinion Appellants’ arguments in the Briefs have not
established that the evidence in the totality of the record, including the Hsu
Declaration,2 weighs in favor of the nonobviousness of the claimed method
for withdrawing and recovering VOC and HAP emissions from the product
formation press in the production of a lignocellulosic product encompassed
by claim 1 and other claims as argued in the Briefs. In this respect, we are in
substantial agreement with the Examiner’s analysis of the evidence in the
references and the Hsu Declaration, and the legal conclusions stated in the
Answer, to which we add the following for emphasis with respect to
Appellants’ arguments.
Appellants submit that the claimed method is nonobvious because it
satisfies “a substantial long felt commercial need to handle VOC and HAP
emissions in an effective and efficient manner.” App. Br. 26-28. Appellants
do not adduce any objective evidence of long-felt need and/or commercial
success. App. Br. 26-28. Instead, Appellants merely assert that the claimed
method of recovering VOC/HAP emissions does not have the problems of
the known product formation press enclosure solution to the art recognized

2 Declaration under 37 C.F.R. § 1.132 by Appellant Hsu executed June 7,
2004, and filed with the Amendment filed June 15, 2004.
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emission problem, and that one of ordinary skill in this art would not have
been motivated by the cited references to solve the emissions problems using
the claimed emissions recovery method, leaving only the claimed method to
satisfy the long-felt commercial need for a solution to the emissions
recovery problem. App. Br. 27-28; see Spec., e.g., 2:2 to 3:29, and 4:29; see
also Lundgren, e.g., 1:7 to 2:10.
Appellants’ unsupported position with respect to “long-felt
commercial need,” a secondary consideration of nonobviousness, is, of
course, entitled to little weight. Cf., e.g. In re Lindner, 457 F.2d 506,
508 (CCPA 1972) (“This court has said . . . that mere lawyers’ arguments
unsupported by factual evidence are insufficient to establish unexpected
results.” (citations omitted.)).
However, the principal difficulty with Appellants’ position is that, as
the Examiner points out, Lundgren would have disclosed to one of ordinary
skill in this art a method of recovering VOC/HAP emissions inside a
continuous product formation press for forming a board product from a mat
of lignocellulosic material, thus reasonably suggesting to this person
emissions recovery inside any product formation press. We agree with the
Examiner that recovering VOC/HAP emissions inside a product formation
press is “the main essence” of the claimed method encompassed by claim 1,
thus satisfying the asserted long-felt commercial need. Ans. 8; see
Lundgren, e.g., 2:20 to 3:31; see Reply Br. 7. See, e.g., Newell Cos., Inc. v.
Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988) (“once another
supplied the key element, there was no long-felt need or, indeed, a problem
to be solved”).
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In this respect, Appellants submit that Lundgren “teaches away from
all of the subject claims which prohibit withdrawing VOC and HAP
emissions from the formation press in the presence of steam,” App. Br. 29-
31. Appellants base the contention on Appellant Hsu testimony comparing
the claimed method with Lundgren’s method which uses steam injection.
App. Br. 29; Lundgren 2:22-26, and Fig. Appellants argue that Appellant
Hsu attests that “the use of high-pressure steam is totally impractical and
prone to explosion” which “is a major reason why no steam injection
continuous press is actually in use today either in any production facility or
in any laboratory.” App. Br. 30.
We determine that claim 1, in pertinent part, substantially limits the
steam within the batch product formation press to the steam generated by
subjecting mat materials to heat and pressure within the press, by specifying
substantially no stream is introduced into the formation press from a source
outside the press. See Spec., e.g., 7:17-27, 8:3-8, 9:7-9 and 19-26, and 20:14
to 21:2.
We find Appellant Hsu testifies as here argued by Appellants. Hsu
Decl. ¶ II. D. We find Lundgren injects steam into fibre mat 1 through wires
6 as the mat passes into the nip between steam injection rolls 5 within
continuous steam-injected press 2. App. Br. 29; Lundgren, e.g., 2:22-26,
and Fig. Lundgren discloses that when the formed board leaves the nip, the
process pressure and temperature falls because of the vaporization of the
“enclosed moisture,” and the VOC and HAP emissions “accompanying the
steam are captured by suction unit 8 inside the press before escaping to the
atmosphere. Lundgren, e.g., 2:26 to 3:5, and Fig. Lundgren further
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discloses that hot air and leakage air form the “vehicle gas for the steam and
said other emissions,” and the high temperature prevents “emissions and the
steam from condensing out to the suction system.” Lundgren, e.g., 3:5-20.
We fail to find in Appellant Hsu’s testimony any statement that the
process described by Lundgren is prone to explosion or would not be used
by one of ordinary skill in this art. Indeed, Appellant Hsu’s testimony does
not account for Lundgren’s process conditions which remove steam and the
VOC/HAP emissions, thus preventing condensation thereof. We agree with
the Examiner that even if Appellant Hsu’s opinion testimony that a steam
injection continuous press would not be used in the whole of the
lignocellulosic product industry at the time the Application was filed is
correct, the testimony does not support the contention that the mere use of
steam injection detracts from the concept that VOC/HAP emissions
accompanying steam can be captured inside a formation press using vacuum
taught by Lundgren. Ans. 11-12; see Reply Br. 9. Indeed, as the Examiner
points out, Lundgren discloses that it was well known in the art that in
discontinuous, that is, batch, and continuous presses, gases, including “water
vapor (steam),” VOC and HAP, are generated during compression of the
lignocellulosic mat. Ans. 12; Lundgren 1:17-22.
Thus, on this record, we find that contrary to Appellants’ position, one
of ordinary skill in this art would not have been lead away from considering
Lundgren’s solution to the art recognized VOC/HAP emission recovery
problem merely because Lundgren applied it to a continuous steam injection
formation press. Indeed, this person would have been armed with the
knowledge evinced by Lundgren that steam is formed in processing a
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lignocellulosic mat even in a batch process, and thus would have recognized
that the steam would combine with the emissions in the batch formation
press just as in Lundgren’s continuous formation press process. Thus,
Appellants’ arguments and Appellant Hsu’s testimony also do not
distinguish the claimed method encompassed by claim 1 over the teachings
of Lundgren.
Appellants additionally contend that Appellant Hsu’s testimony
further establishes that Lundgren leads away from using only a product
formation press as claimed by disclosing a multistage emission recovery
system. App. Br. 29-31. Appellants argue Appellant Hsu’s testimony
establishes that “only a portion of the injected steam and the VOC and HAP
emissions will be captured” in Lundgren’s continuous process because “[a]
substantial portion . . . will be emitted from all the edges of the board into
the atmosphere surrounding [sic] due to a great extent to the force of the
injected steam.” App. Br. 30. “Therefore, there is substantially less VOC
and HAP collected when [Lundgren’s] method is employed,” and the
claimed method ‘actually withdraws and recovers the VOC and HAP
emission in a much more effective and efficient manner than” Lundgren’s
process. App. Br. 30. Appellants further argue Lundgren’s process requires
a multi-component recovery system, including recovery units 4, 8, to capture
emissions outside of the continuous formation press. App. Br. 30. We
disagree.
We determine that the claimed method encompassed by claim 1 does
not exclude multi-component emission recovery systems or additional
process steps and conditions in view of the open-ended transitional term
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“comprises,” and specifies that only “at least about 50% of said VOC and
HAP emissions produced during” product formation are recovered inside the
batch formation press prior to removal of the product from the formation
press. See, e.g., In re Baxter, 656 F.2d 679, 686 (CCPA 1981) (“As long as
one of the monomers in the reaction is propylene, any other monomer may
be present, because the term ‘comprises’ permits the inclusion of other steps,
elements, or materials.”).
We again find Appellant Hsu testifies as here argued by Appellants.
Hsu Decl. ¶ II. C.; App. Br. 30. We found above that Lundgren’s suction
unit 8 captured the steam and VOC/HAP emissions inside press 2 before the
gases can escape to the atmosphere. See above p. 7. We find Lundgren
further discloses the smaller quantities of VOC/HAP emissions formed in
after-conditioning unit 4 are captured by suction unit 12 associated with
conditioning unit 4. Lundgren, e.g., 3:21-31, and Fig. Lundgren further
discloses that subsequent to after-conditioning unit 4, board 3 can be further
processed in a surface-densifying press (not shown), which includes a
sanction unit to capture emissions formed in this press. Lundgren, e.g.,
4:12-17. Lundgren discloses “measurements taken in a pilot plant have
shown that the major part of the emissions occur in the continuous steam-
injection press.” Lundgren 3:27-29.
We fail to find in the Hsu Declaration any evidence supporting
Appellant Hsu’s statement that Lundgren’s process permits a substantial part
of the VOC/HAP emissions to escape the edges of the pressed material into
the surround atmosphere due to the force of injected steam. Hsu Decl. ¶ II.
C.; App. Br. 30. Indeed, Appellant Hsu’s testimony does not account for
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Lundgren’s disclosure that suction unit 8 is located inside continuous steam
injection press 2 to capture the steam and the emissions before the gases can
escape into the atmosphere. Hsu Decl. ¶ II. C. Accordingly, there is no
basis in Appellant Hsu’s testimony for the conclusory statement that
Lundgren’s process collects substantially less VOC/HAP emissions than the
claimed method. Hsu Decl. ¶ II. C. See, e.g., Lindner, 457 F.2d at 508
(“mere conclusory statements in . . . affidavits are entitled to little weight
when the Patent Office questions the efficacy of those statements” (citations
omitted)). Thus, Appellants’ coextensive arguments fall as well.
The difficulty with the remainder of Appellants’ position is that claim
1 does not specifies the manner in which at least 50% of the emissions
formed inside the batch formation press are captured inside the press prior to
removal of the pressed material therefrom. Thus, claim 1 does not exclude a
method which includes a vacuum system associated within the press which
can operates during the pressing step as well as when the press is opened but
prior to the removal of the pressed material, in a manner similar to
Lundgren’s suction unit 8 in press 2. We agree with the Examiner that claim
1 does not exclude a method which includes further processing of the
pressed material such as by Lundgren’s after-conditioning unit 4 and surface
densifying press, which subsequent processing generates additional
emissions that can be captured by suction units as Lundgren discloses. Ans.
12-13; see above pp. 9-10. In this respect, we emphasize that the language
of claim 1 does not specify that at least 50% of the total emissions which can
be produced from the lignocellulosic mat material must be captured inside
the formation press, only that at least 50% of the emissions actually
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produced inside the press must be captured before the pressed material is
removed from the press. As the Examiner points out, Lundgren teaches that
the VOC/HAP emissions formed in press 2 are captured by suction unit 8,
thus meeting this claim limitation. Ans. 11 and 13. We are mindful of
Appellants’ contention that Lundgren uses a vacuum to capture the
emissions while claim 1 requires “the pressure inside the press is a
maximum of about 50 psi, which is a positive pressure, not a vacuum.”
Reply Br. 7; see also App. Br. 32. Contrary to Appellants’ position, the
subject claim language of claim 1 is “wherein pressure in said formation
press generated by the VOC and HAP emissions does not exceed about 50
psi during the formation of said lignocellulosic product.” Thus, as claimed,
the pressure within the formation press generated by the VOC/HAP
emissions can be less than 50 psi, which would occur when the emissions are
continuously removed from the press by Lundgren’s vacuum just as
Appellants point out. App. Br. 32.
We are not convinced by Appellants’ arguments that Douglas
constitutes non-analogous art with respect to the claimed invention because
it is in a different field than the pressed lignocellulosic product art, and the
disclosed process includes volatilizing binder between Ti metal plates with a
heater under vacuum prior to diffusion bonding the plates with heat under
pressure. App. Br. 31-32; Reply Br. 9-10. We agree with Appellants’
findings with respect to Douglas’s disclosure. See Douglas, e.g., abstract,
col. 2, ll. 5-45, and col. 5, ll. 6-46. However, we agree with the Examiner’s
determination that one of ordinary skill in this art would recognize that
Douglas removes volatilized binder gases with a vacuum like Lundgren, but
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without Lundgren’s steam. Thus, this person would have considered
Douglas’s process along with Lundgren’s process in addressing the problem
of removing VOC/HAP emissions from inside a batch formation press for
lignocellulosic material which does not inject steam even though Douglas
does not disclose such material. Ans. 14. See, e.g., In re Clay, 966 F.2d
656, 659-60 (Fed. Cir. 1992).3
Turning now to Appellants’ contentions with respect to other claims,
we determine Appellants statements with respect to apparently claims 5 and
6, and specifically to claims 8, 10-12, 14-16, and 41-45 in the Appeal Brief
merely describes the limitation in these claims without arguments with
respect to the references, and where referred to, Lundgren is not discussed
with respect to the claim limitation with specificity. App. Br. 33-34. See 37
C.F.R. § 41.37(c)(1)(vii) (2005) (“[a] statement which merely points out
what a claim recites . . . [is not an argument for separate patentability”). In
the reply Brief, Appellants contend with respect to claim 6 that, among other
things, one of ordinary skill in this art would not have enclosed Lundgren’s
formation press to recover emissions that escape therefrom prior to the
formation of the pressed lignocellulosic material if Lundgren

3 A reference is reasonably pertinent if, even though it may be
in a different field from that of the inventor’s endeavor, it is one
which, because of the matter with which it deals, logically
would have commended itself to an inventor’s attention in
considering his problem. Thus, the purposes of both the
invention and the prior art are important in determining whether
the reference is reasonably pertinent to the problem the
invention attempts to solve.
Clay, 966 F.2d at 659-60.
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discloses capture of all of the emissions from the press as the Examiner
contends. Reply Br. 5; see Ans. 5-6. Enclosing a formation press was
known in the art. See above pp. 5-6. We disagree with Appellants’ position
because one of ordinary skill in this art would have reasonably enclosed
Lundgren’s press 2 as an additional safety measure with respect to emissions
which may escape from the press.
We are of the opinion Appellants have not established error in the
Examiner’s position. Accordingly, on this record, we determine one of
ordinary skill routinely following the combined teachings of Imao,
Siempelkamp, the admitted prior art in the Specification, Israel,
McLaughlin, Lundgren and Douglas would have reasonably arrived at the
claimed method encompassed by claim 1, including all of the limitations
thereof arranged as required therein, without recourse to Appellants’
Specification. See, e.g., KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398,
420-421 (2007) (“When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within
his or her technical grasp.”); In re Sovish, 769 F.2d 738, 743 (Fed. Cir.
1985) (skill is presumed on the part of one of ordinary skill in the art); In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is . . .
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.”); see also Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348, 1364 (Fed. Cir. 2007) ("the expectation of success need only
be reasonable, not absolute"); In re O’Farrell, 853 F.2d 894, 903-04 (Fed.
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Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable
expectation of success.” (citations omitted)).
Conclusion
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Imao, Siempelkamp, the admitted prior art in the
Specification, Israel, McLaughlin, Lundgren and Douglas with Appellants’
countervailing evidence of and argument for nonobviousness and conclude,
by a preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 1-42, 44, 45, and 49-52 would
have been obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary 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)(1)(a)(iv).

AFFIRMED

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