Ex parte Symons

Board of Patent Appeals and Interferences

Mar 14, 2002

08849008 (B.P.A.I. Mar. 14, 2002)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MICHAEL WINDSOR SYMONS
__________
Appeal No. 2000-0343
Application 08/849,008
___________
ON BRIEF
___________
Before OWENS, WALTZ and DELMENDO, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1-20,
23 and 24, which are all of the claims remaining in the
application.
THE INVENTION
The appellant’s claimed invention is directed toward a
method for treating particles of lignocellulosic material to
Appeal No. 2000-0343
Application 08/849,008
2
prepare them for the manufacture of a finished product such as
particle board, and toward a process for making particle board
from the treated lignocellulosic particles. Claims 1 and 23
are illustrative:
1. A method of preparing particles of a lignocellulosic
material for the manufacture of a finished product includes
the steps of:
(a) chemically modifying the lignocellulosic material by
impregnating the lignocellulosic material with an impregnating
composition comprising a dicarboxylic anhydride or a
tricarboxylic anhydride dissolved in a suitable non-aqueous
solvent;
(b) applying to the particles an adhesion promoter to
promote the adherence of a thermoplastic resin to the surfaces
of the particles of lignocellulosic material;
(c) applying to the particles a thermoplastic resin in
dry powder form, so that after the application of the adhesion
promoter, the thermoplastic resin adheres to the surfaces of
the particles of lignocellulosic material, the thermoplastic
resin having been surface modified by irradiation or by
fluorination; and
(c) after step (a) or step (c), removing the solvent.
23. A process of making a particle board from particles
of a lignocellulosic material treated according to the method
of any one of claims 1, which process includes the steps of:
(i) impregnating a sheet or sheets of a lignocellulosic
material with a composition comprising a thermosetting resin,
an extending liquid for the thermosetting resin and where
necessary a catalyst for the thermosetting resin;
(ii) recovering the extending liquid;
Appeal No. 2000-0343
Application 08/849,008
The examiner and the appellant should correct the1
language “any one of claims 1" in claims 7, 8, 10-16, 19, 20
and 23.
3
(iii) placing on one or both sides of a layer of the
particles of lignocellulosic material, the impregnated sheet
or sheets of lignocellulosic material to form a composite; and
(iv) compressing the composite with heating in a suitable
press to allow the resin present to polymerise, and to allow
any wax or convertible resin present to melt and flow, and to
allow the thermosetting resin in the impregnating sheet or
sheets to polymerise and to bond, and all to set to form the
particle board.[ ] 1
THE REFERENCES
Himmelheber et al. (Himmelheber) 3,477,996 Jun. 3,
1969 Gaylord (Gaylord ‘685) 3,900,685 Aug.
19, 1975 Gaylord (Gaylord ‘230) 3,956,230
May 11, 1976 Simons 5,209,886
May 11, 1993
Earl et al. (Earl) 5,385,754 Jan. 31,
1995
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as
follows: claims 1-20 over Gaylord ‘230 in view of Earl alone,
Earl in view of Simons, or Earl in view of Simons and Gaylord
‘685; and claims 23 and 24 over Himmelheber in view of Gaylord
‘230 and further in view of Earl alone, Earl in view of
Simons, or Earl in view of Simons and Gaylord ‘685.
Appeal No. 2000-0343
Application 08/849,008
4
OPINION
We reverse the aforementioned rejections. We need to
address only claims 1 and 23.
Claim 1
Gaylord ‘230 discloses a method for compatibilizing
thermoplastic polymers with hydroxyl group-containing fillers
(col. 1, lines 9-10). Gaylord ‘230 teaches that “[t]he
material containing hydroxyl groups used in the practice of
this invention may be any of the well known inorganic -OH
containing filler materials or reinforcing agents such as
siliceous materials (e.g., clay, sand, wollastonite, glass,
quartz, diatomaceous earth, mica, silica, asbestos, talc,
kaolinite and nepheline syenite); hydrated or partially
hydrated metal oxides (e.g., titania, zirconia, vanadia,
alumina, chromia, zinc oxide, magnesium oxide and boron
oxides); carbonates (e.g., limestone and chalk); etc.” (col.
2, lines 34-43). Gaylord ‘230 charges a thermoplastic
polymer, a hydroxyl group-containing filler, an ethylenically
unsaturated carboxylic acid or anhydride, and a free radical
generating catalyst to a mill and blends the mixture at
Appeal No. 2000-0343
Application 08/849,008
5
exemplified temperatures above 100ºC, preferably 140-160ºC
(col. 4, lines 5-7; col. 5, lines 3-8). The unsaturated
carboxylic acid or anhydride “simultaneously or consecutively
adducts or reacts with the thermoplastic polymer and
esterifies and forms hydrogen bonds with the filler containing
hydroxyl groups”, thereby linking the thermoplastic polymer
and filler together (col. 5, lines 49-54). The thermoplastic
polymer-encapsulated filler is mixed with a thermoplastic
polymer which may be the same as or different than that used
to coat the filler, thereby producing a thermoplastic polymer
composition having improved mechanical properties such as
tensile strength, impact strength and flexural modulus (col.
1, lines 63-68; col. 5, lines 35-45).
Gaylord ‘230 teaches that it was known in the art that
“when a cellulosic material, such as wood flour or cotton
fibers, is used as a filler in polymers containing methylol
groups such as phenolic, urea or melamine resins, a reaction
occurs between the methylol groups and the hydroxyl groups on
the cellulosic filler” (col. 1, lines 26-30). Gaylord ‘230,
however, does not disclose that the filler in his method can
be a cellulosic filler. Gaylord ‘230 also does not disclose
Appeal No. 2000-0343
Application 08/849,008
6
dissolving the ethylenically unsaturated carboxylic acid or
anhydride in a nonaqueous solvent and impregnating the filler
with this solution, and does not disclose modifying by
irradiation or fluorination the surface of the thermoplastic
polymer with which the coated filler is mixed.
Earl discloses a process for modifying lignocellulosic
material before it is formed into a board (col. 1, lines 42-
45). The process includes treating the lignocellulosic
material, which may be in particulate form, sequentially or
simultaneously with 1) phthalic anhydride, which may be in
solution in a nonaqueous solvent, and 2) a thermosetting
resin, and then heat curing the resulting product (col. 1,
lines 42-53 and 62-63; col. 2, lines 8-11).
Simons discloses a method for forming particle board by
impregnating natural fibrous material particles with coal tar,
pitch, asphalt or bitumen dissolved in a solvent, applying
novolac resin in finely divided form and a crosslinking agent
to the impregnated particles so that the resin adheres to the
impregnated particles, recovering the solvent, and pressing
the composition to form particle board (abstract; col. 3,
lines 31-32).
Appeal No. 2000-0343
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Gaylord ‘685 discloses a method for adhering together
sheets or chips of wood by impregnating the wood with a
polymerizable complex of a monomer combination such as maleic
anhydride and styrene, and carrying out the polymerization
through a charge transfer mechanism (abstract; col. 2, lines
20-21; col. 5, lines 8-25). Gaylord ‘685 teaches that “when
the polymerizable complex contains groups which are reactive
with hydroxyl groups on the cellulose substrate, such as
anhydride groups, these groups in the resultant polymer react
with the cellulosic hydroxyl groups to form stable, covalent
ester bonds as well as hydrogen bonds” (col. 2, lines 29-34).
Appeal No. 2000-0343
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The examiner argues that “it would have been obvious to
one so skilled to employ the sequential methodology and
powder-form resin of the secondary references in the process
of Gaylord (‘230) in place of the corresponding, analogous
methodology and resin form employed therein; mere substitution
of one known set of elements for another (and in a
like/similar environment) involved” (answer, page 6). In
order for a prima facie case of obviousness to be established,
however, the teachings from the prior art itself must appear
to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The examiner’s argument
does not include the required explanation as to how the
references themselves would have led one of ordinary skill in
the art to make the substitutions referred to by the examiner.
The examiner argues that the Gaylord ‘230 hydroxyl group-
containing particles can be cellulosic particles (answer,
pages 8-9). In support of this argument the examiner points
out (answer, page 9) that Gaylord ‘230 states that the
Appeal No. 2000-0343
Application 08/849,008
9
particles are “hydroxyl-containing particulate material such
as clay” (col. 1, lines 12-13) and that “[t]he material
containing hydroxyl groups used in the practice of this
invention may be any of the well known inorganic -OH
containing filler materials or reinforcing agents” (col. 2,
lines 34-37). The examiner argues that the “such as” and “may
be” language indicates that the Gaylord ‘230 particles are not
limited to inorganic particles (answer, page 9). The
examiner, however, provides no explanation as to why one of
ordinary skill in the art, considering the reference as a
whole, would have interpreted “such as” and “may be” as argued
by the examiner. Except for the discussion of the prior art,
the Gaylord ‘230 disclosure is directed toward inorganic
fillers. Consequently, it reasonably appears that one of
ordinary skill in the art would have interpreted “[t]he
material containing hydroxyl groups used in the practice of
this invention may be any of the well known inorganic -OH
containing filler materials or reinforcing agents such as ...
etc.” (col. 2, lines 34-43) as meaning that the hydroxyl
group-containing material can be an inorganic material such as
the ones listed. Likewise, it reasonably appears that one of
Appeal No. 2000-0343
Application 08/849,008
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ordinary skill in the art would have interpreted “such as
clay” (col. 1, line 13) as meaning similar to clay, not as
meaning clay or anything else.
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The examiner points out (answer, page 9) that the
thermoplastic polymers disclosed by Gaylord ‘230 include
chlorinated polymers (col. 2, lines 67-68), but does not
explain how the applied references would have fairly
suggested, to one of ordinary skill in the art, using
thermoplastic polymers which have been surface modified by
irradiation or fluorination.
The examiner argues that using Earl’s solvent in the
Gaylord ‘230 method “as a processing aid/viscosity reducer
and/or carrier” “is held/seen to be an obvious expedient
to/well within the purview of one of ordinary skill in this
art” (answer, page 9). The relevant issue, however, is not
whether dissolving the Gaylord ‘230 ethylenically unsaturated
carboxylic acid or anhydride in a nonaqueous solvent would
have been within the purview of one of ordinary skill in the
art but, rather, whether the applied references themselves
would have fairly suggested doing so to one of ordinary skill
in the art. See Rinehart, 531 F.2d at 1051, 189 USPQ at 147.
The examiner has not explained how, particularly considering
that Gaylord ‘230 is directed toward compatibilizing
Appeal No. 2000-0343
Application 08/849,008
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thermoplastic resins with hydroxyl group-containing inorganic
fillers, whereas Earl is directed toward
Appeal No. 2000-0343
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13
modifying lignocellulosic material with phthalic anhydride and
a thermosetting resin, and that the Gaylord ‘230 exemplified
compatibilization temperature is above 100ºC, preferably 140-
160ºC (col. 4, lines 5-7), one of ordinary skill in the art
would have been led by the references themselves to use Earl’s
nonaqueous solvent in the Gaylord ‘230 method.
For the above reasons we conclude that the examiner has
not carried the burden of establishing a prima facie case of
obviousness of the invention recited the appellant’s claim 1.
Accordingly, we reverse the rejection of this claim and
claims 2-20 which depend therefrom.
Claim 23
Himmelheber discloses “[a] stratified wood panel
including at least one covering layer of bonded wood fibers,
oriented substantially parallel to the panel plane, secured to
a core of bonded wood chips oriented substantially
perpendicular to the panel plane” (col. 1, lines 14-18).
The examiner argues that “it would have been obvious to
one of ordinary skill in this art to employ the particles of
Gaylord (‘230) (as modified by the remaining secondary
Appeal No. 2000-0343
Application 08/849,008
14
references) in the process of Himmelheber et al, in place of
the corresponding, analogous particles employed therein; mere
substitution of one known hydroxyl group containing (filler)
particle for another involved” (answer, page 7).
The examiner, however, has not established that the
applied references would have fairly suggested, to one of
ordinary skill in the art, the treated lignocellulosic
material made by the method recited in the appellant’s claim
1. Also, the examiner has not explained how the applied prior
art would have fairly suggested, to one of ordinary skill in
the art, the steps recited in the appellant’s claim 23.
Accordingly, we reverse the rejection of this claim and claim
24 which depends therefrom.
DECISION
The rejections under 35 U.S.C. § 103 of claims 1-20 over
Gaylord in view of Earl alone, Earl in view of Simons, or Earl
in view of Simons and Gaylord ‘685, and claims 23 and 24 over
Himmelheber in view of Gaylord ‘230 and further in view of
Earl
Appeal No. 2000-0343
Application 08/849,008
15
alone, Earl in view of Simons, or Earl in view of Simons and
Gaylord ‘685, are reversed.
REVERSED
)
TERRY J. OWENS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
THOMAS A. WALTZ )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
Appeal No. 2000-0343
Application 08/849,008
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