HANSEN, Erling Lennart.

Patent Trials and Appeals Board

Jan 25, 2021

2019005495 (P.T.A.B. Jan. 25, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/278,150 09/28/2016 Erling Lennart HANSEN 3672-P50324 1385
13897 7590 01/25/2021
Abel Schillinger, LLP
5929 Balcones Drive
Suite 300
Austin, TX 78731
EXAMINER
BRUNSMAN, DAVID M
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
01/25/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
hmuensterer@abel-ip.com
mail@Abel-IP.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERLING LENNART HANSEN

Appeal 2019-005495
Application 15/278,150
Technology Center 1700
____________

Before DONNA M. PRAISS, N. WHITNEY WILSON, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 21–40. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed Sept. 28, 2016
(“Spec.”), the Final Office Action dated May 2, 2018 (“Final Act.”), the
Appeal Brief filed Jan. 31, 2019 (“Appeal Br.”), the Examiner’s Answer
dated May 15, 2019 (“Ans.”), and the Reply Brief filed July 12, 2019
(“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Rockwool International A/S as the
real party in interest. Appeal Br. 3.
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STATEMENT OF THE CASE
The invention relates to an aqueous binder composition, more
particularly, “an aqueous binder composition produced from carbohydrate
starting materials.” Spec. ¶ 2. According to the Specification, “using specific
types of carbohydrates in binder production” achieves improvements both in
costs and in application properties such as curing speed, curing density,
durability, and humidity resistance. Id. ¶ 6. The Specification lists the
following aqueous binder composition “in a first aspect” of the invention: (a)
a sugar syrup; (b) a polycarboxylic acid component; (c) an amine
component; and, optionally, (d) a reaction product of a polycaroxylic acid
component (b) and an amine component (c). Id. ¶ 7. Claim 21, reproduced
below, is illustrative.
21. An aqueous binder composition, wherein the
composition comprises:
(a) a sugar syrup comprising a reducing sugar and having
a dextrose equivalent DE of at least 50 and less than 85;
(b) an amine component which comprises an ammonium
salt of an inorganic acid;
and, optionally,
(c) a polycarboxylic acid and/or a reaction product of a
polycarboxylic acid and an amine component (b).
Appeal Br. 11 (Claims Appendix) (disputed elements italicized).

ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
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(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error in the appealed rejections.
The Examiner’s rejections rely on the following references:
Name Reference Date
Hansen ’642 US 8,591,642 B2 Nov. 26, 2013
Hansen ’766 US 9,469,766 B2 Oct. 18, 2016

The Examiner maintains the following rejections:3
Claims
Rejected 35 U.S.C. § Reference/Basis
21–29, 31–40 112(a) Written description
21–40 Hansen ’642 claims 1–19/ Double patenting
21–40 Hansen ’766 claims 1–19/ Double patenting

Double Patenting Rejections
Appellant does not argue the double patenting rejections in this
Appeal. Appeal Br. 8–9. Therefore, we summarily affirm the Examiner’s
rejections of claims 21–40 for non-statutory double patenting over claims
1–19 of Hansen ’642 and claims 1–19 of Hansen ’766. Final Act. 5–8.

3 The Examiner withdrew the double patenting rejection of claims 21 and 30
under 35 U.S.C. § 101 over claim 8 of Hansen ’766. Ans. 4.
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Written Description Rejection
The Examiner rejects claims 21–29 and 31–40 under 35 U.S.C.
§ 112(a) for lack of written description because the record does not support
the scope of independent claim 21 such that the presence of the
polycarboxylic acid component is optional. Final Act. 2. Appellant argues
claims 21–29 and 31–40 together. Appeal Br. 5–8. Therefore, we confine
our discussion of the written description rejection to claim 21, which we
select as representative. Claims 22–29 and 31–40 stand or fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv).
According to Appellant, because the Specification’s paragraph 6 does
not even mention polycarboxylic acid, “let alone as [a] critical component of
the binder composition,” a person having ordinary skill in the art would take
from that paragraph that carbohydrate component (a) is the critical
component. Appeal Br 5. Appellant also directs us to paragraph 78’s
disclosure of “a Maillard-type reaction” between “two or more of the
constituents of the binder composition,” which Appellant identifies as a
carbohydrate and an amine component. Id. at 6. Appellant contends that a
polycarboxylic acid component is not necessary to such a Maillard-type
reaction. Based on the Specification’s disclosures in paragraphs 6 and 78,
Appellant argues the Specification conveys with reasonable clarity to those
skilled in the art that Appellant was in possession of the claimed invention as
of the filing date sought. Id. at 7.
We do not agree with Appellant’s argument. Rather, we agree with
the Examiner that the disclosures in paragraphs 6 and 78 must be read in
context with the rest of the Specification in order to discern whether a person
of ordinary skill in the art would recognize that the applicant possessed what
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is claimed as of the filing date sought. See Agilent Techs., Inc. v. Affymetrix,
Inc., 567 F.3d 1366, 1379 (Fed. Cir. 2009) (“Adequate written description
means that the applicant, in the specification, must ‘convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, he or she
was in possession of the [claimed] invention.’”).
Paragraph 6 is not a self-contained description of the claimed
invention’s features because it states “specific types of carbohydrates” not
“any one carbohydrate” as Appellant’s argument implies. Spec. ¶ 6. Thus, a
person having ordinary skill in the art would glean from paragraph 6 that
there are specific types of carbohydrates required by the invention and read
the additional disclosures in the Specification that follow to learn more.
Paragraph 7, which follows, immediately lists specific carbohydrates
including polycarboxylic acid. Id. ¶ 7. Appellant’s argument that the listed
composition components in paragraph 7 are a preferred composition because
they are the same components included in paragraph 73’s preferred
composition is not persuasive because paragraph 73’s composition includes
proportional amounts by weight of each component.
As the Examiner notes (Ans. 6), neither paragraph 73 nor the detailed
discussion of the polycarboxylic acid component in paragraphs 49 and 50
indicate that it is an optional component. Appellant also does not direct us to
any explicit teaching in the Specification that the polycarboxylic acid
component is optional. Rather, Appellant directs us to introductory
paragraph 6 and the reaction mechanism disclosed in paragraph 78 and
contends polycarboxylic acid is not a necessary component to the claimed
composition because it is not explicitly mentioned in those two paragraphs
of the Specification.
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In the Reply Brief, Appellant asserts that the description of the
Maillard-type reaction in paragraph 78 “clearly excludes a polycarboxylic
acid” because it is not listed as required to make the binder composition.
Reply Br. 3. At the same time, however, Appellant concedes that the binder
composition does require additional components to those identified in
paragraph 78, namely water. Id. While the record supports Appellant’s
assertion that “(only) specific types of carbohydrates must be used in the
binder production” according to the Specification (id. at 2), we agree with
the Examiner that the record does not support Appellant’s further assertion
(id. at 3) that “a sugar syrup comprising a reducing sugar and having a
dextrose equivalent DE of at least 50 and less than 85” (as recited in claim
21) is the specific type of carbohydrate reasonably conveyed by the
Specification to a person having ordinary skill in the art. Appellant merely
infers from the omission of polycarboxylic acid in two paragraphs standing
alone that polycarboxylic acid is an optional component and not the specific
type of carbohydrate required by the Specification. Appellant’s cited
paragraphs read in context with the rest of the Specification does not convey
that polycarboxylic acid is an optional component, but, rather, that
polycarboxylic acid is the specific carbohydrate required by the invention
and the claimed sugar participates in a Maillard-type reaction.
The preponderance of the evidence in this appeal record therefore
supports the Examiner’s conclusion that the claimed subject matter does not
have written description support in the Specification. Accordingly, we affirm
the Examiner’s rejection of claim 21, as well as claims 22–29 and 31–40,
under 35 U.S.C. § 112(a) for the above reasons and those provided by the
Examiner.
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CONCLUSION
For these reasons and those the Examiner provides, we uphold the
Examiner’s rejection of claims 21–29 and 31–40 under 35 U.S.C. § 112(a)
for lacking written description support, and claims 21–40 for non-statutory
double-patenting.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§ Reference/Basis Affirmed Reversed
21–29, 31–40 112(a) Written description 21–29, 31–40
21–40 Hansen ’642 claims 1–19/ Double patenting 21–40
21–40 Hansen ’766 claims 1–19/ Double patenting 21–40
Overall
Outcome 21–40

TIME PERIOD FOR RESPONSE
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