Zhihua Guo et al.

Patent Trials and Appeals Board

Mar 5, 2020

13675414 - (D) (P.T.A.B. Mar. 5, 2020)

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.
13/675,414 11/13/2012 Zhihua Guo 8177 6945
29602 7590 03/05/2020
JOHNS MANVILLE
10100 WEST UTE AVENUE
PO BOX 625005
LITTLETON, CO 80162-5005
EXAMINER
WORRELL, KEVIN
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
03/05/2020 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):
lavoie@jm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ZHIHUA GUO, URANCHIMEG LESTER, JAWED ASRAR,
KIARASH ALAVI SHOOSHTARI, and MINGFU ZHANG

Appeal 2019-002070
Application 13/675,414
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1, 3, 7, 10–15, 17–20, 41, and 43–
55.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—namely, “JOHNS MANSVILLE” (Application Data
Sheet filed November 13, 2012 at 5). The Appellant identifies “Johns
Mansville International, Inc.” as the real party in interest (Appeal Brief filed
August 9, 2018 (“Appeal Br.”) at 3 (not paginated)).
2 See Appeal Br. 5–13; Reply Brief filed January 14, 2019 (“Reply Br.”) at
2–6 (not paginated); Final Office Action entered December 22, 2017 (“Final
Act.”) at 2–13; Examiner’s Answer entered November 16, 2018 (“Ans.”) at
3–16.
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I. BACKGROUND
The subject matter on appeal relates to carbohydrate binder
compositions with modified rheologies for adhering together fibers such as
glass fibers (Specification filed November 13, 2012 (“Spec.”) ¶¶ 1, 8).
Representative claims 1 and 41 are reproduced from the Claims Appendix to
the Appeal Brief, as follows:
1. A carbohydrate binder composition comprising a
reducing sugar, a nitrogen-containing compound, and a
thickening agent, wherein:
the nitrogen-containing compound is a reaction product
of urea (H2N-CO-NH2) and glyoxal,
the binder composition has a Brookfield viscosity of 7 to
50 centipoise at 20°C as measured with a Brookfield viscometer
using spindle 18 at 60 rpm,
the binder composition is formaldehyde-free and forms a
polymerization product, and
the thickening agent has a concentration of 0.03 wt.% to
0.3 wt.% of the binder composition.
41. A formaldehyde-free, carbohydrate binder
composition comprising:
a carbohydrate;
a nitrogen-containing compound; and
a thickening agent, wherein:
the carbohydrate reacts with the nitrogen-containing
compound when the carbohydrate binder composition is cured
and forms a polymerization product,
the carbohydrate is selected from the group consisting of
dextrose, fructose, allose, galactose, xylose, ribose, maltose,
cellobiose, and lactose, and
the nitrogen-containing compound is a reaction product
of an organic anhydride and an alkanol amine,
the binder composition has a Brookfield viscosity of 7 to
50 centipoise at 20°C as measured with a Brookfield viscometer
using spindle 18 at 60 rpm, and
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the thickening agent has a concentration of 0.03 wt.% to
0.3 wt.% of the binder composition.
(Appeal Br. 14, 16–17 (emphases added)).
II. REJECTIONS ON APPEAL
The claims on appeal stand rejected, as follows:
A. Claims 54 and 55 under 35 U.S.C. § 112, ¶ 2, as indefinite;
B. Claims 1, 3, 7, 10–15, 17–20, 49, 50, 52, and 54 under 35
U.S.C. § 103(a) as unpatentable over Hansen,3 North,4 and
Quincy et al.5 (“Quincy”);
C. Claims 41, 43–45, 51, 53, and 55 under 35 U.S.C. § 103(a) as
unpatentable over Hansen and Quincy;
D. Claims 46 and 48 under 35 U.S.C. § 103(a) as unpatentable
over Hansen, Quincy, and Tutin et al.6 (“Tutin”); and
E. Claim 47 under 35 U.S.C. § 103(a) as unpatentable over
Hansen, Quincy, and Gestner et al.7 (“Gestner”).
III. DISCUSSION
Rejection A (Indefiniteness). Although the Appellant acknowledges
a rejection under 35 U.S.C. § 112, ¶ 2 (Appeal Br. 3),8 the Appellant does

3 EP 2 230 222 A1, published September 22, 2010.
4 EP 0 402 072 A2, published December 12, 1990.
5 US 2008/0082151 A1, published April 3, 2008.
6 US 2011/0054098 A1, published March 3, 2011.
7 US 6,153,668, issued November 28, 2000.
8 The Appellant states that claims 1, 3, 7, 10–15, 17–21, 23, 26, 41, and 43–
55 stand rejected under 35 U.S.C. § 112, ¶ 2 (id.). That is incorrect. Claims
54 and 55 are the only claims rejected on this ground (Final Act. 2).
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not provide any arguments against Rejection A (id. at 5–13). As Rejection
A has not been expressly withdrawn (Ans. 3–16) and no arguments are
offered, we summarily sustain this rejection. 37 C.F.R. § 41.37(c)(1)(iv).
See also Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“In the event
of . . . a waiver, the [Board] may affirm the rejection of the group of claims
that the examiner rejected on that ground without considering the merits.”).
Rejection B (Obviousness). Claims 1 (reproduced above) and 19 are
the two independent claims subject to this rejection. Both claims recite,
inter alia, that the binder composition comprises a “nitrogen-containing
compound [that] is a reaction product of (H2N-CO-NH2) and glyoxal
[C2H2O2]” (Appeal Br. 14, 15–16).
The Examiner finds that Hansen describes an aqueous binder
composition containing a reducing sugar, an amine component such as a
cyclic urea, and a polysaccharide or a starch hydrolysate such as corn syrup
(Ans. 3; Final Act. 3). Regarding the amine component that may be a cyclic
urea, the Examiner acknowledges that “Hansen may not explicitly disclose
that the cyclic urea is a reaction product of urea and glyoxal” (Ans. 3–4;
Final Act. 3). To account for this difference, the Examiner relies on North.
Specifically, the Examiner finds that North teaches a formaldehyde-free
binder for non-woven fibers and fabrics comprising reaction products
formed from glyoxal and urea (e.g., 4,5 dihydroxy-imidazolidinone) (Ans. 4;
Final Act. 3). Based on these findings, the Examiner concludes:
It would have been obvious to one having ordinary skill in
the art at the time of the invention to have utilized as the cyclic
urea nitrogen compound of Hansen a glyoxal/urea reaction
product having a glyoxal to urea ratio of optimally about 1:1 (i.e.,
4,5 dihydroxyimidazolidinone) in order to provide stable urea
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compounds that can potentially be used along with high levels of
polymers in a binder for non-woven fibers and fabrics while
avoiding the odor, irritation and severe reactions associated with
urea-formaldehydes resins, as taught by North ‘072 (see page 2
lines 17-32).
(Ans. 4; Final Act. 3–4).
The Examiner also finds that Hansen and North do not explicitly
disclose the viscosity values or thickener concentrations recited in claim 1
but relies on inherency based on structural similarity and Quincy (Ans. 4–5;
Final Act. 4–5). The Examiner explains that it would have been obvious to a
person having ordinary skill in the art to modify the amount of viscosity
modifier in the composition resulting from the combination of Hansen and
North in order to adjust the viscosity of the binder composition to suit a
desired coating process and/or desired performance of a coated fibrous
thermal composite, as taught by Quincy (Ans. 5; Final Act. 4).
The Appellant contends, inter alia, that “[t]he Office has not provided
a legitimate suggestion or motivation to modify the references to include a
reaction product of urea and glyoxal, and even if there was a legitimate
suggestion or motivation, there is no reasonable expectation of success”
(Appeal Br. 5). The Appellant argues that, although Hansen discloses that
the amine component can be urea or cyclic urea, it does not disclose a
reaction product of urea and glyoxal as the cyclic urea (id. at 5–6). The
Appellant acknowledges that North teaches a reaction product of glyoxal
and urea but argues that it does so in the context of a different binder
composition—i.e., a binder composition based on an emulsion polymer
containing a crosslinking agent, a glyoxal resin, and a catalyst, wherein the
glyoxal resin is prepared using a reactant including urea or a cyclic urea (id.
at 6).
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We agree with the Appellant that the Examiner’s rejection is not well-
founded. Our reasons follow.
Hansen describes an aqueous binder composition comprising (a) a
sugar syrup including a reducing sugar and having a dextrose equivalent DE
of at least 50 and less than 85, (b) a polycarboxylic acid component (e.g., a
polycarboxylic acid anhydride), (c) an amine such as cyclic urea, and
optionally (d) a reaction product of a polycarboxylic acid component (b) and
an amine (c) (Hansen, Abstract; ¶¶ 47, 55). Hansen further teaches that
component (a) may additionally include a carbohydrate compound that
yields one or more reducing sugars in situ, such as polysaccharide (id. ¶ 22),
which the current Specification discloses as a thickening agent (Spec. ¶ 27;
claims 13 and 14 (Appeal Br. 15)). Hansen does not disclose a “nitrogen-
containing compound [that] is a reaction product of (H2N-CO-NH2) and
glyoxal” as required by claims 1 and 19.
North describes a non-formaldehyde binder for non-woven fiber or
fabrics comprising an emulsion polymer (e.g., (meth)acrylate ester
copolymers) containing a crosslinking agent (e.g., a latent crosslinking agent
such as N-alkylolamides), a glyoxal resin, and a catalyst for promoting
crosslinking reaction between the polymer and the glyoxal resin (North
Abstract; 3, l. 30–4, l. 1). Regarding the glyoxal resin, North teaches that
“[g]lyoxal is a highly reactive monomer which cures quickly and has
excellent crosslinking properties” but that “the viscosity of the binder
increases so rapidly and is so great that the composition cannot be used” (id.
at 2, ll. 33–35). To solve this stability problem with glyoxal per se, North
teaches using a glyoxal resin prepared by reacting glyoxal with, e.g., urea or
cyclic urea (id. at 2, ll. 39–55).
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Considering Hansen and North individually and collectively, we agree
with the Appellant that the articulated reasoning for combining the
references (i.e., “to provide stable urea compounds that can potentially be
used along with high levels of polymers in a binder for non-woven fibers
and fabrics while avoiding the odor, irritation and severe reactions
associated with urea-formaldehydes resins” (Ans. 4)) is flawed. North does
not disclose providing a glyoxal resin to provide stable urea compounds but,
instead, to solve the instability problems associated with glyoxal as a
crosslinking agent for an emulsion polymer (North 2, ll. 33–54). Hansen, on
the other hand, is not concerned with either glyoxal [C2H2O2] or an emulsion
polymer of the type disclosed in North (North 3, ll. 30–34) but, rather, a
reducing sugar and optionally a carbohydrate such as polysaccharide
(Hansen ¶ 22). To the extent that a glyoxal resin may be considered as a
cyclic urea, the potentially infinite genus of “cyclic urea” in Hansen is
insufficient as a motivation that would have prompted a person having
ordinary skill in the art to select North’s glyoxal resin, used in a completely
different type of binder from that disclosed in Hansen, as a species falling
within the genus. In re Jones, 958 F.2d 347, 350 (Fed. Cir. 1992)
(“[T]hough Richter discloses the potentially infinite genus of “substituted
ammonium salts” of dicamba, and lists several such salts, the salt claimed
here is not specifically disclosed[,] [n]or . . . is the claimed salt sufficiently
similar in structure to those disclosed in Richter.”).
For these reasons, we do not uphold Rejection B maintained against
claims 1 and 19 and claims dependent thereon.
Rejections C–E (Obviousness). For Rejections C through E, the
Appellant’s arguments are limited to those directed to claim 41 (Appeal Br.
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12). Therefore, consistently with 37 C.F.R. § 41.37(c)(1)(iv), we limit our
discussion to claim 41. All other claims subject to Rejections C through E
stand or fall with claim 41.
Unlike claims 1 and 19, claim 41 (reproduced above) recites a
formaldehyde-free, carbohydrate binder composition including a
carbohydrate, which reacts with a “nitrogen-containing compound [that] is a
reaction product of an organic anhydride and an alkanol amine” (Appeal Br.
17). In addition, the binder composition includes 0.03 wt.% to 0.3 wt.%,
based on the weight of the binder composition, of a thickening agent, such
that “the binder composition has a Brookfield viscosity of 7 to 50 centipoise
at 20°C as measured with a Brookfield viscometer using spindle 18 at 60
rpm” (id.).
As indicated above, the Examiner’s basic position is that Hansen
discloses, or would have suggested, a binder composition including a
reducing sugar, an additional carbohydrate such as polysaccharide, which
the Appellant discloses as a thickening agent, and a reaction product of at
least one carboxylic acid anhydride (i.e., an organic acid anhydride) and at
least one alkanolamine (Ans. 8; Final Act. 7–8). Regarding the binder
composition’s viscosity, the Examiner finds, inter alia, that “the reducing
sugars and the nitrogen containing compounds taught by Hansen are similar
to those described in paragraphs [0031] and [0038] of the Specification,”
and, therefore, the compositions disclosed or suggested by the prior art
would be expected to have the viscosities specified in the claim (Ans. 9;
Final Act. 9). According to the Examiner, the viscosity would have been
adjusted “to suit a desired coating process and/or desired performance of a
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coated thermal composite, as taught by Quincy” (Ans. 9; Final Act. 8)
(citing Quincy ¶¶ 38, 40, 41).
The Appellant’s arguments, as recounted above, are unpersuasive to
identify reversible error. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
As the Examiner correctly finds, Hansen describes a binder
composition including the following components: a sugar syrup containing a
reducing sugar and having a dextrose equivalent DE of at least 50 as
component (a); a polycarboxylic acid component as component (b); an
amine as component (c); and, e.g., a reaction product of at least one
polycarboxylic acid anhydride and at least one alkanolamine as component
(d) (Hansen Abstract; ¶¶ 9, 55–56). Hansen further teaches the inclusion of
an additional carbohydrate such as a polysaccharide, which the Inventors
disclose as a thickening agent (see Spec. ¶ 27; see also claims 13 and 14
(Appeal Br. 15)). Therefore, Hansen teaches a binder that is
compositionally indistinguishable from the composition recited in claim 41
but does not specifically disclose the amount for the additional carbohydrate
(polysaccharide) or the viscosity.
Quincy discloses an exothermic composition formed from a variety of
components including binders, which may serve as an adhesive for bonding
one thermal composite to another thermal composite (Quincy ¶¶ 27, 29).
According to Quincy, a water-soluble organic polymer such as
polysaccharides may be used as the binder (id. ¶ 32). Furthermore, Quincy
teaches that viscosity modifiers (e.g., xanthan gum—a polysaccharide) may
be added in an amount of from about 0.001 wt.% to about 5 wt.% and that
the viscosity of the coating formulations may vary depending on the coating
method or type of binder (id. ¶¶ 38, 40–41). Quincy teaches, however, that
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“[g]enerally, the viscosity is less than about 2×106 centipoise, in some
embodiments less than about 2×105 centipoise, in some embodiments less
than about 2×104 centipoise, and in some embodiments, less than about
2×103 centipoise, such as measured with a Brookfield DV-1 viscometer with
an LV spindle” (id. ¶ 41).
Thus, although Quincy teaches exothermic compositions that are
formulated with generally higher viscosities than those recited in claim 41, it
provides evidence that the amount of viscosity modifier (i.e., thickening
agent) is a result-effective variable that may be adjusted to meet the
particular requirements of a given coating application. Under these
circumstances, a person having ordinary skill in the art would have
optimized the amount for each component in Hansen’s composition,
including the polysaccharide, to achieve a suitable viscosity for binding
mineral fibers such as glass fibers (Hansen ¶¶ 2, 8), which is the same
coating application disclosed in the current application for the claimed
composition (Spec. ¶ 2). Indeed, Hansen teaches that binder additives and
adjuvants such as carbohydrates “may be used in conventional amounts
generally not exceeding 20 wt.% of the binder solids” and provides general
guidance on the amounts for components (a)–(c) (Hansen ¶¶ 69–71). In re
Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012)
(“‘[D]iscovery of an optimum value of a result effective variable . . . is
ordinarily within the skill of the art.’”) (quoting In re Boesch, 617 F.2d 272,
276 (CCPA 1980)).
The Appellant argues that “[n]either Hansen nor Quincy teach[es] or
suggest[s] the thickening agent in the binder composition of independent
claim 41” and that “the recited concentration range of thickening agent
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provides surprising results over Hansen” (Appeal Br. 12 (italics omitted);
see also id. 8–10). In support of “surprising results,” the Appellant refers to
Figure 1 in Kiarash Alavi’s Declaration filed November 10, 20169 (¶ 10) and
Table 2 of the Specification (Spec. ¶ 80).
The Appellant is incorrect that neither Hansen nor Quincy teaches a
thickening agent. As we found above, both Hansen and Quincy teach
adding a polysaccharide—a compound disclosed in the current Specification
as a thickening agent. As for “surprising results,” we discern no reversible
error in the Examiner’s finding that the results appear to show a generally
linear relationship between thickening agent concentration and the properties
of interest (hot/wet tension, strength, and viscosity). Mere differences in
results do not suffice to establish unexpected results. In re Harris, 409 F.3d
1339, 1344 (Fed. Cir. 2005) (“The 32-43% increase in stress-rupture life,
however, does not represent a ‘difference in kind’ that is required to show
unexpected results.”) (quoting In re Huang, 100 F.3d 135, 139 (Fed. Cir.
1996)). Compare In re Soni, 54 F.3d 746, 748, 751 (Fed. Cir. 1995)
(“[W]hen an applicant demonstrates substantially improved results . . . and
states [in the specification] that the results were unexpected, this should
suffice to establish unexpected results in the absence of evidence to the
contrary.”).
Moreover, the results are limited to hydroxyethyl cellulose and a
single example of xanthan gum with specific combinations with other
specific components and are, therefore, not commensurate in scope with
claim 41, which recites any “thickening agent” over a varied concentration

9 The Appellant refers to a Declaration filed November 11, 2016, but the
Declaration was actually filed November 10, 2016.
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range combined with a nitrogen-containing compound that may be reacted
from a wide variety of reactants. See, e.g., In re Grasselli, 713 F.2d 731,
743 (Fed. Cir. 1983) (“With respect to appellants’ broad claims to a catalyst
with ‘an alkali metal,’ the experiments detailed in Friedrich III, being limited
to sodium only, are not commensurate in scope, and are, therefore,
insufficient to rebut the prima facie case.”). Alternatively, claim 41 should
have been narrowed to be commensurate in scope with the proffered
showing. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
For these reasons, and those well-stated by the Examiner, we uphold
Rejections C–E.
IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
54, 55 112, ¶ 2 Indefiniteness 54, 55
1, 3, 7, 10–15, 17–
20, 49, 50, 52, 54
103(a) Hansen, North,
Quincy
1, 3, 7, 10–15,
17–20, 49, 50,
52, 54
41, 43–45, 51, 53,
55
103(a) Hansen, Quincy 41, 43–45,
51, 53, 55

46, 48 103(a) Hansen, Quincy,
Tutin
46, 48
47 103(a) Hansen, Quincy,
Gestner
47
Overall Outcome 41, 43–48,
51, 53, 55
1, 3, 7, 10–15,
17–20, 49, 50,
52,

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED IN PART