Ex Parte Narita

Patent Trial and Appeal Board

Apr 27, 2016

12330621 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/330,621 12/09/2008 Mitsuo Narita
20792 7590 04/27/2016
MYERS BIGEL & SIBLEY, PA
PO BOX 37428
RALEIGH, NC 27627
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
5576-208 1175
EXAMINER
MINSKEY, JACOB T
ART UNIT PAPER NUMBER
1741
MAILDATE DELIVERY MODE
04/27/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITSUO NARIT A
Appeal2014-006445
Application 12/330,621
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL 1
Appellant2 filed an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 4--10 under 35 U.S.C. § 103(a) as
1 Our decision refers to Appellant's Specification (Spec.) filed December 9,
2008, Appellant's Appeal Brief (Appeal Br.) filed December 3, 2013, the
Examiner's Answer (Ans.) mailed March 4, 2014, and Appellant's Reply
Brief (Reply Br.) filed May 5, 2014.
2 Appellant identifies the real party in interest as Shin-Etsu Chemical Co.,
Ltd. App. Br. 1.
Appeal2014-006445
Application 12/330,621
being unpatentable over the combination of Thomas, 3 Wood Densities4 and
Harding. 5 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The subject matter on appeal relates to methods for preparing water-
soluble cellulose ether (see, e.g., claims 4 and 8). Appellant discloses
methods of producing a cellulose ether by using, as a starting material, a
pulp sheet of a certain sheet density or a pulp sheet made of pine or chips
into which the pulp sheet has been converted, treating the starting material
with an alkali metal hydroxide at a certain temperature for a certain period of
time, and removing the excess alkali metal hydroxide. Spec. p. 6, 11. 1-13.
Appellant discloses the cellulose ether is transparent when dissolved in
water and has a low water insoluble content. Spec. p. 5, 11. 22-25.
Independent claim 4, reproduced below from the Claims Appendix to
Appellant's Appeal Brief, is illustrative of the subject matter on appeal. The
limitations at issue are italicized.
4. A method for preparing water-soluble cellulose ether,
compnsmg:
contacting a pulp sheet having alpha cellulose content of
90% by weight or greater and a sheet density of0.30 to 0.60 g/ml,
3 Thomas et al., US 3,340,139, issued Sept. 5, 1967. The Examiner and
Appellant refer to Thomas as "Berwyn." Ans. 2 and Appeal Br. 3. The
name of the first inventor listed for US 3,340,139 is Berwyn B. Thomas.
Thomas col. 1, 1. 6. Therefore, we refer to US 3,340, 139 as "Thomas."
4 The Engineering Toolbox website, listing various wood densities
http://www.engineeringtoolbox.com/wood-density-d_ 40.html (last visited
November 5, 2010) ("Wood Densities").
5 Harding et al., US 2005/0250940 Al, published Nov. 10, 2005
("Harding").
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Appeal2014-006445
Application 12/330,621
or chips into which the pulp sheet has been converted, with an
alkali metal hydroxide solution at 5 to 70°C for 10 to 600 seconds
to obtain an alkali cellulose reaction mixture;
draining the reaction mixture to obtain alkali cellulose;
and
reacting the alkali cellulose with an etherifying agent;
wherein an amount of the alkali metal hydroxide solution
to be used for the contacting step is selected so that the alkali
cellulose obtained by the drain step has a ratio of a weight of
alkali metal hydroxide component determined by neutralization
titration of the alkali cellulose to a weight of solid component in
the pulp (alkali metal hydroxide component)/(solid component
in the pulp) of 0.3 to 1.5.
Appeal Br. 7.
ANALYSIS
The Examiner finds Thomas discloses a method of making alkali
cellulose including contacting pine pulp with an alkali metal hydroxide at a
temperature of 5--40°C for about 3-10 minutes and then draining the
resulting mixture. Ans. 2. Thomas discloses an example in which an 18.5%
NaOH solution is used, which has a ratio of water to pulp of 2.5. Id. The
Examiner determines 18.5% of 2.5 is 0.4625, which falls within the range
for ratio of alkali metal hydroxide weight to weight of solid pulp component
recited in claim 4. Id. The alkali treated cellulose of Thomas is further
reacted with an etherifying agent. Ans. 3 and 5.
The Examiner finds Thomas does not disclose the alpha cellulose
content of the pine pulp or its density. Ans. 3. The Examiner finds Thomas
discloses shredding the pulp after it has been treated with alkali metal
hydroxide and the density of the shredded pulp is 0.15 g/mL. Id. The
Examiner finds the density of the shredded pulp is a minimum density. Id.
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Application 12/330,621
The Examiner finds Wood Densities discloses a density of about 0.50 g/cm3
for pine, which would be a maximum density for the starting pulp of
Thomas. Id.
The Examiner further finds Harding discloses a method of making
water-soluble cellulose ether in which a pulp sheet having an alpha cellulose
content of less than 97%, 95%, 90% or 85% and made from southern
softwood kraft is treated with an alkali metal hydroxide solution, the
resulting mixture is drained, and the alkali cellulose is reacted with an
etherifying agent. Ans. 4. The Examiner concludes it would have been
obvious to use southern pine kraft pulp in the process of Thomas to
minimize the amount of insoluble cellulose in view of Harding. Id.
Appellant asserts there is no reason to modify Thomas in view of the
secondary references and the Examiner has employed impermissible
hindsight. Appeal Br. 4; Reply Br. 3. In particular, Appellant contends
Thomas is directed to papermaking while the claims are directed to
producing cellulose ether. Appeal Br. 4--5. Appellant argues claim 4 recites
a pulp density not necessarily used in papermaking while Thomas is directed
to papermaking and uses an amount of etherification agents suitable for
papermaking. Appeal Br. 5. Moreover, Appellant contends there would
have been no reason to replace the generic pulp disclosed by Thomas with a
pulp having the density disclosed by Wood Densities and/or the pulp of
Harding and that the applied references do not disclose or suggest the sheet
density recited in claim 4. Appeal Br. 4 and Reply Br. 2.
Appellant's arguments are not persuasive of reversible error. The
disclosure of Thomas supports the Examiner's findings. Thomas discloses
treating woodpulp, such as wood pulp made from southern pine, with an
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Appeal2014-006445
Application 12/330,621
aqueous sodium hydroxide solution, removal of excess sodium hydroxide,
and etherifying the mercerized fiber. Thomas col. 1, 11. 61-72 and col. 2, 11.
17-21 and 50-51. Therefore, Thomas is directed to making cellulose ether,
as the Examiner finds. Ans. 7 and 10.
With regard to the secondary references, the density of pine disclosed
by Wood Densities, which falls within the range recited in claim 4, is an
inherent property of the southern pine disclosed by Thomas. Appellant has
not shown the pulp of Thomas would not have the density disclosed by
Wood Densities. Appellant argues the alpha cellulose content disclosed by
Wood Densities is for raw wood materials, which would have alpha
cellulose contents of less than 49%. Reply Br. 2-3. To support this
argument, Appellant cites a table of alpha cellulose content disclosed in
Mokuzai Kagaku (Wood Chemistry). Reply Br. 3. However, any evidence
from Mokuzai Kagaku (Wood Chemistry) was not timely filed during
prosecution. Appellant has not shown "good and sufficient reasons why the
... other Evidence is necessary and was not earlier presented," as required
by 37 C.F.R. § 41.33(d)(l), and none of the exceptions enumerated in
§ 41.33(d)(2) apply. As such, we have not considered the Mokuzai Kagaku
(Wood Chemistry) evidence in rendering our decision.
To the extent the Examiner does not rely on Harding to demonstrate
the inherent alpha cellulose content of the southern pine disclosed by
Thomas, 6 the Examiner provides a rationale for modifying the southern pine
wood pulp of Thomas to use a high alpha cellulose content (i.e., less than
97%, 95%, 90% or even 85% alpha cellulose, as disclosed in paragraph 52
6 The Examiner finds Harding discloses a physical property of the material
used by Thomas. Ans. 9.
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Appeal2014-006445
Application 12/330,621
of Harding) so the amount of insoluble cellulose is minimized. Ans. 4.
Appellant does not challenge the Examiner's reason for the modification.
Appellant further asserts the mercerized cellulose pulp of Harding is
substantially free of etherifcation agents. Appeal Br. 5. This argument is
unpersuasive of reversible error because, as found by the Examiner, 7
Harding discloses the mercerized and recovered cellulose, which is
substantially free of etherification agents, is alkalated and treated with
etherification agents. Harding i-fi-f 14, 51, and 70. In addition, Appellant
argues the references do not disclose the amount of alkali metal hydroxide
recited in claim 4. Appeal Br. 5; Reply Br. 2. However, Appellant does not
provide any evidence or technical reasoning to direct us to any reversible
error in the Examiner's findings.
For the reasons discussed above and for the reasons expressed in the
Answer, Appellant has not identified reversible error in the Examiner's
rejection of claim 4. Appellant has not advanced separate arguments for any
of claims 5-10. Therefore, the§ 103 rejection of claims 4--10 is sustained.
DECISION
On the record before us and for the reasons in the Examiner's Answer
and above, we affirm the Examiner's rejection.
7 Ans. 11.
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Appeal2014-006445
Application 12/330,621
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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