UNITED STATES PATENT AND TRADEMARK OFFICE. ROCKWOOL INTERNATIONAL A/S Appellant and Requester v.

Transcription

1 Case: Document: 1-2 Page: 6 Filed: 11/09/2015 (7 of 66) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ROCKWOOL INTERNATIONAL A/S Appellant and Requester v. Patent of KNAUF INSULATION LLC and KNAUF fnsulation SPRL Jointly, Patent Owner and Respondent Appeal Reexamination Control95/000,674 Technology Center 3900 Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and RAE LYNN GUEST, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on the appeal by the Requester from the Patent Examiner's favorable decision on the patentability of claims 1-20 in the above-identified inter partes reexamination of United States. This is also a decision on the cross-appeal by the Patent Owner from the Patent Examiner's decision to

2 Case: Document: 1-2 Page: 7 Filed: 11/09/2015 (8 of 66) Appeal reject claims The Board's jurisdiction for this appeal is under 35 U.S.C. 6(b), 134, and 315 (pre-ala). We affirm. BACKGROUND The patent in dispute in this appeal is United States ("the '980 patent") which issued December 21, Since filing the Patent Owner Appeal Brief (April 8, 2014; "PO Appeal Br."), an assignment was filed assigning the '980 patent to Knauf Insulation LLC and Knaufinsulation SPRL (recorded assigmnent at Reel /Frame 0898; recorded January 21, 2015), collectively "Knauf Insulation." Knauf Insulation ("Patent Owner") is the Respondent and Cross-Appellant in this proceeding. A request for inter partes reexamination of the '980 patent was filed June 30, 2012, by Rockwool International A/S ("Requester") under 35 U.S.C and 37 C.F.R (pre-aia). Requester is also the Appellant and Cross-Respondent in this proceeding. In the Right ofnotice of Appeal ("RAN"), the Examiner indicated that claims 1-20 are patentable and claims are rejected. In the Examiner's Answer entered August 15, 2014 ("Ans."), the Examiner indicated that an Amendment filed March 6, 2014, which included a cancellation of claims 27-29, has been entered. Therefore, the Examiner's decision to reject claims is appealed by the Patent Owner and the subject of the Cross-Appeal. Requester appeals ("the Appeal") the Examiner's determination favorable to the patentability of claims Third Party Requester Appeal Brief ("TPR Appeal Br."). Specifically, Requester appeals the Examiner's non-adoption of Grounds A-Z and AA- MM. TPR Appeal Br Each of these grounds of 2

3 Case: Document: 1-2 Page: 8 Filed: 11/09/2015 (9 of 66) Appeal rejection involves the Wallace 1 and Agyei-Aye 2 publications. The publications were brought to the Examiner's attention in Comments by the Requester on December 19, The Examiner did not consider Requester's discussion of these references as proposed grounds of rejection because "TPR merely [in the Comments] discusses how the newly added limitations are disclosed in the newly cited prior art, but does not specifically assert any new ground of rejection, nor point to the pertinency of [sic, or] manner of how the combination of the newly cited prior art applies to each claim it is asserted against." RAN 5-6. In the Comments, Requester expressly identified independent claims 1, 11, and 20 as having been amended with specific ratios and stated "several of the prior art references on which the [Examiner's Office] Action is based-at least Keritsis, 3 Husemoen, 4 Nigam, 5 Helbing '302, 6 and Worthington 7 -disclose a range of molar ratios that overlap[s] with the claimed range." Comments 3. Thus, it is clear from this comn1ent that Requester considered the prior art rejections already of record to be inclusive of a conclusion that the newly recited ratios would have been obvious 1 United States Patent No. 2,215,825, issued on Sept. 24, 1940, to Benjamin F. Wallace and Burgess P. Wallace. 2 Kwasi Agyei-Aye et al., "The role of the anion in the reaction of reducing sugars with ammonium salts," 337 CARBOHYDRATE RESEARCH (2002). 3 United States Patent No. 4,506,684, issued on March 26, 1985, to Gus D. Keritsis. 4 United States Patent No. 6,878,800 B2, issued on Apr. 12, 2005, to Thor Husemoen et al. 5 United States Patent No. 6,171,444 Bl, issued on Jan. 9, 2001, to Asutosh Nigam. 6 World Intellectual Property Organization Publication No. 2006/ A 1, published on April 27, 2006, to Clarence H. Helbing. 7 United States Patent No. 3,513,001, issued on May 19, 1970, to John Edward Worthington and James Seward Woodhead. 3

4 to one of ordinary skill in the art. Requester cited Wallace and Agyei-Aye "as additional prior art showing the claimed ratio of the number of moles of the tricarboxylic acid to the number of moles of the monosaccharide is about 1:4, about 1:5, or about 1:6." ld. at 4. Requester asserted that the claimed ratios would have been obvious in view of Wallace and Agyei-Aye. I d. at 4-6. It is evident from these statements, and the further discussion in Requester's Conunents, that Requester was proposing a rejection based on the already cited publications combined with newly cited Wallace and Agyei-Aye. As both parties have briefed the merits of applying the prior art identified in Requester's Comments, we shall address Requester's Appeal below. An oral hearing was held June 17,2015. A transcript ofthe hearing will be entered into the record in due course. There are several related district court litigations and PTO proceedings listed in Patent Owner's Appeal Brief at pages 2-3. The district court litigations were said to be dismissed. Id. However, there are ex parte and inter partes reexamination proceedings said to be still pending.!d. Two related inter partes reexaminations appealed to the Patent Trial and Appeal Board have been decided: Appeal (Application 95/000,675) involving US 7,772,347 B2 and Appeal (Application 95/000,672) involving US 7,888,445 B2. The claimed subject matter of the '980 patent is directed to a mineral fiber insulating material which comprises a binder product made from curing and drying an aqueous solution of a carbohydrate, an amine, and a polycarboxylic acid. The patent says that the binder may comprise a product from a Maillard reaction and melanoidins. '980 patent, col2. 2, II ; col. 3, II As explained by Requester: Case: Document: 1-2 Page: 9 Filed: 11/09/2015 (10 of 66) 4

5 [A]pplying heat to a binder mixture that includes polycarboxylic acids, ammonia (or salts thereof), and a reducing sugar carbohydrate ["carbohydrate"] initiates a Maillard reaction between the reactants and cures the binder (while disposed on the fibers), thereby fonning a collection of fibers bound by a cured, formaldehyde-free binder containing melanoidin products crosslinked with the polycarboxylic acids. TPR Appeal Br. 15 (citing Husemoen, 2:25-32, 3:45-47; 4:20--31; 9:35-49; 11: ). There are two groups of claims at issue. The fust group includes claims 1-20, which recite the limitation that the ratio of the number of moles of the polycarboxylic acid to the number of moles of the carbohydrate is about 1:5, about 1:6, and about 1 :7. The second group of claims, claims 21-26, are not limited by this ratio. Case: Document: 1-2 Page: 10 Filed: 11/09/2015 (11 of 66) Claims l and 26 are representative and read as follows: 1. A mineral fiber insulating material comprising mineral fibers and less than about 15% by weight of an organic binder, wherein a) the organic binder is a formaldehyde free thermoset product of drying and curing an aqueous solution having a ph of greater than 5 when applied to the mineral fibers and consisting essentially of a monomeric tricarboxylic acid, a reducing sugar monosaccharide, and amn1onia, wherein the ratio of the number of moles of the tricarboxylic acid to the number of moles of the monosaccharide is about 1:4, about 1:5, or about 1:6, b) the mineral fiber insulating material has a recovered thickness of at least about 95% as detennined according to Annex A of British standard BS EN 823: 1995, c) the mineral fiber insulating material has an ordinary parting strength of at least about 95 gig, d) the mineral fiber insulating material has a weathered parting strength of at least about 7 5 gl g, and e) the mineral fiber insulating material is packaged, and 5

6 Case: Document: 1-2 Page: 11 Filed: 11/09/2015 (12 of 66) Appeal f) the thennoset product includes melanoidins cross-linked with the monomeric tricarboxylic acid. 26. A mineral fiber insulating material, comprising: mineral fibers and less than about 15o/o by weight of an organic thermoset binder disposed upon the mineral fibers, wherein: (a) the organic them1oset binder is a fonnaldehyde free product of curing an aqueous solution, consisting essentially of dextrose and an ammonium salt of citric acid wherein (i) the solution has a ph of greater than 5 when applied to the fibers and (ii) the binder includes melanoidins produced by a Maillard reaction which occurs during curmg, (b) the mineral fiber insulating material has a recovered thickness of at least about 9 5% as detennined according to Annex A ofbritish standard BS EN , (c) the mineral fiber insulation material has an ordinary parting strength of at least about 95 gig, (d) the mineral fiber insulating material has a weathered parting strength of at least about 75g/g, and (e) the mineral fiber insulating material is packaged. APPEAL Independent claims 1, 11, and 20 each recite "the ratio of the number of moles of the tricarboxylic acid to the number of moles of the monosaccharide is about 1:4, about 1:5, or about 1:6." In the Comments filed on December 12, 2012, Requester stated that the calculated molar ratio in Wallace is "about 1:1.6 to 1 :2.26" and the calculated molar ratio in Agyei-Aye is 1:1. Comments 5. Requester argued that the claimed ratios would have been obvious in view of Wallace and Agyei-Aye, but did not provide an adequate persuasive explanation as to why the skilled worker would have varied the non-overlapping ratios in Wallace and Agyei-Aye to have arrived at the claimed ratios of"about 1:4, about 1:5, or about 1 :6."!d. at

7 In Requester's Appeal Brief, Requester also argues that Wallace and Agyei Aye are unnecessary because the claimed molar ratios are inherently found in Husemoen "based on the substantially identical physical properties of the resulting products." TPR Appeal Br. 11. Sumn1arizing the identity in reactants and process steps, Requester argues the evidence "clearly demonstrate[s] that 'the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantia11y identical processes,' [In re Best, 562 F.2d 1252, (CCPA 1977)] so as to establish a prima facie case of obviousness."!d. at 16. The weight of the evidence of record does not support Requester's contention that the claimed ratio would have been obvious to one of ordinary skill in the art. First, as discussed above, Requester did not adequately explain what reason the skilled worker would have had to deviate from the ratios in Wallace and Agyei Aye. Neither reference expressly teaches a ratio; rather, the ratios are calculated from working examples. Requester argues that the claimed ratios overlap or lie inside the prior art values, which would make them prima facie obvious under pertinent case law, but the single calculated ratios of Wallace and Agyei-Aye do not actually overlap or describe a range that subsumes the claimed ratio. C01runents 6. Case: Document: 1-2 Page: 12 Filed: 11/09/2015 (13 of 66) Requester also creates a range based on individual ratios calculated in Wallace and Agyei-Aye.!d. However, the upper end of this "range" is based on values from Wallace that Requester admitted to be incorrect.!d. at 5. Moreover, even if this value is correctly calculated, Requester did not provide a persuasive explanation as to why the skilled worker would have combined Wallace, which 7

8 involves core binders for metal casting, with Agyei-Aye, which describes Maillard reaction products as colorants and flavors in foods and tobacco (at 2273), to create a meaningful range. Second, while the evidence is sufficient to establish that Husemoen's process produces melanoidins, Requester did not establish that the reactants in Husemoen' s would necessarily be present in the claimed "ratio of the number of moles of the tricarboxylic acid to the number of moles of the monosaccharide is about 1:4, about 1:5, or about 1 :6." For example, the '980 patent does not describe the claimed ratios as the only possible ratios that would produce melanoidin. Furthermore, Husemoen does not even disclose an explicit amotmt of the monosaccharide. Requester did not explain how, in the absence of a stated amount of monosaccharide, Husemoen' s product would inherent! y and necessarily possess the claimed ratio. Case: Document: 1-2 Page: 13 Filed: 11/09/2015 (14 of 66) Helbing '302 was also cited for making the claimed ratios obvious. Comments 15. However, Requester did not identify the ratio of reactants in Helbing '302 nor provide an explanation as to how Helbing '302's teaching would have given an ordinary skilled worker a reason to have utilized the claimed ratio of "about 1:4, about 1:5, or about 1 :6." In sum, there is insufficient persuasive evidence of record to support Requester's contention that claims 1-20 would have been obvious to one of ordinary skill in the art. CROSS-APPEAL Patent Owner lists 14 grounds of rejection for claims PO Appeal Br Rejections A-G and K involve Helbing '302 for its teaching of Maillard 8

9 Case: Document: 1-2 Page: 14 Filed: 11/09/2015 (15 of 66) Appeal reactants. Rejections H- J and L- N involve Husemoen for the same teaching. Hansen 8 is also cited in several of the rejections for substantially the same teachings as Husemoen, and thus it has not been considered separately. REJECTIONS BASED ON HUSEMOEN The Examiner found that Husemoen describes applying binders to mineral fibers comprising curing an aqueous solution of the binder having a ph of greater than 5. RAN 36. The Examiner found that the binder described in Husemoen is fonned with reactants which are the same as those claimed, including an amine, citric acid (tricarboxylic acid), and glucose syrup (carbohydrate). Jd. Based on the teachings in Husemoen of the same reactants as recited in the claims, the Examiner found a reaction product would be fonned that includes melanoidin products crosslinked with the polycarboxylic acid (citric acid) as required by the claims.!d. With respect to the specific features of the mineral fiber insulating material, the Examiner further cited various additional publications, including Knauf, 9 Keller, 10 Garcia, 11 Espiard, 12 and Horres United States Patent No. 6,730,730 Bl, issued on May 4, 2004, to Erling Hansen et al. 9 Knauf Insulation GmbH, AMBER BLANKET INs ULATION (2006). 10 United States Patent Application Publication No. 2007/ AI, published Aug. 9, 2007, to Horst Ke1ler et al. 11 United States Patent Application Publication No. 2006/ Al, published May 11, 2006, to Ruben Gregory Garcia et al. 12 United States Patent Application Publication No. 2006/ Al, published Jan. 12, 2006, to Phillppe Espiard and Bruno Mahieuxe. 13 United States Patent No. 7,514,027 B2, issued on Apr. 7, 2009, to Johannes Horres and Joachim Mellem. 9

10 Patent Owner contends that the "primary" teachings of Husemoen are not related to Maillard chemistry "but, rather, are directed to a process whereby an amine and an anhydride are mixed and heated together in the absence of water and then a second anhydride is added to fom1 a polyamide binder. See, e.g., Husemoen, col. 1, " PO Appeal Br. 15. Patent Owner argues that the Examiner did not provide "any support" for the assertion that melanoidin would be fonned in Husemoen's reaction. ld. In response to Requester's arguments that melanoidins would necessarily fonn during Husemoen's reaction because of the presence of the same reactants recited in the claims, Patent Owner argues that there is no teaching that the amines in Husemoen would react with sugar (dextrose) as in a Maillard reaction, but only a teaching of alkanolamines reacting with one or more anhydrides. PO Rebuttal Br. 5. Patent Owner further argues: Requester's criticism fails to recognize that it is the Office's (and, hence, the Requester's) responsibility to come forward with evidence proving an allegedly inherent disclosure. See In [sic, Ex parte] re Levy, 17 U.S.P.Q.2d [1461,] 1464 [(BPAI 1990)]. The burden is on Requester to prove - not on Patent Owner to disprove - that Husemoen inherently teaches an organic thermoset binder that includes melanoidins produced by a Maillard reaction. PO Rebuttal Br. 6. Case: Document: 1-2 Page: 15 Filed: 11/09/2015 (16 of 66) Legal principles It is undisputed that Husemoen does not disclose the production of 1nelanoidins. Rather, the rejection is based on "inherency," a theory invoked when a publication does not expressly describe a limitation in a claim, but the claim limitation would necessarily result by following the guidance in the publication. "[T]he concept of inherency must be limited when applied to obviousness, and is 10

11 Case: Document: 1-2 Page: 16 Filed: 11/09/2015 (17 of 66) Appeal present only when the limitation at issue is the 'natural result' of the combination of prior art elements." PAR Pharmaceutical v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (citing In re Oelrich, 666 F.2d 578, 581 (CCPA 1981 )). The "limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art."!d. at As to the weight of evidence necessary for the Office to establish inherency, Patent Owner incorrectly cited Ex parte Levy for requiring the PTO "to come forward with evidence proving an allegedly inherent disclosure." PO Rebuttal Br. 6 (emphasis added). Rather, the Board in Levy held that "[i]n relying upon the theory of inherency, the examiner must provide a basis in fact and/or teclmical reasoning to reasonably support the deten11ination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Levy, 17 USPQ.2d at 1464 (emphasis added). The Board's holding in Levy is fully consistent with court of appeals case law. For instance, in In re Swinehart, 439 F.2d 210, (CCPA 197l)(emphasis added), the court stated when [W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. The court in In re Best, 562 F.2d 1252, 1255 (CCPA 1977), held: Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.... Whether the rejection is based on "inherency" tmder 35 U.S.C. 102, on "prima facie obviousness" under 35 U.S.C. 103, jointly or alternatively, the 11

12 Case: Document: 1-2 Page: 17 Filed: 11/09/2015 (18 of 66) Appeal burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. In sum, the Examiner has the initial burden of providing factual, teclmical reasoning, or a reason to believe that Husemoen's process necessarily results in the production of melanoidins. Once this burden is met, the burden shifts to Patent Owner to prove that Husemoen 's process does not possess the claimed characteristic. The initial issue is therefore the sufficiency of the Examiner's evidence in adopting the Requester's proposed rejections. We address this below. Findings of Fact The numbered paragraphs ("Hu" for Husemoen) swnmarize the relevant findings. Hu 1. Husemoen teaches "a process for providing a binder for mineral fibers, i.e. man made vitreous fibers, for example glass, slag or stone wool, a binder obtainable via such a process, and a mineral wool product comprising such a binder." Husemoen, col. 1, The claims are directed to the same general material, i.e., "mineral fibers and less than about 15% by weight of an organic thermoset binder disposed upon the tnineral fibers." Claims Hu2. The binder claimed in the '980 patent (claim 21) consists essentia11y of a carbohydrate (reducing sugar in claims 24 and 25; dextrose in claim 26), amine (anunonia in claims 22 and 26), and a polycarboxylic acid (ammonimn salt of citric acid in claim 26). The following findings of fact establish that all three components are described in Husemoen: Hu3. Husemoen' s process has two parts: the first part is described in Hu4 below and the second part is described starting in Hu5. 12

13 Hu4. Husemoen teaches a first step in its process comprising "mixing together under reaction conditions, an amine and an anhydride, whereby water is added thereto only after the anhydride has substantially dissolved in and/or reacted with the amine, and the reaction is thus tenninated." Husemoen, col. 1, The amine can be diethanolamine (DBA).!d. at col. 3, follows: Case: Document: 1-2 Page: 18 Filed: 11/09/2015 (19 of 66) Hu5. A subsequent second step carried out in Husemoen is described as A second anhydride is preferably added to the reaction mixture whereby the water is preferably added to the reaction mixture immediately before or together with the second anhydride, or when substantially all of the second anhydride is dissolved in and/or reacted with the mixture of the frrst anhydride and the amine. Husemoen, col. 1, Polycarboxylic acid Hu6. When water is added to the first and/or second anhydrides, Husemoen teaches that polycarboxylic acid is formed (see Hu7, Hu8 infra; Requester Resp't Br. 8-9). Hu7. "The first and second anhydrides are chosen to provide reaction products with a large number of unreacted polycarboxylic acid groups, which is preferable for water solubility." Husemoen, col. 4, Hu8. "A resin according to the present invention but made with water addition from the start has more than 50% unreacted monomers of diethanolamine and polycarboxylic acids (anhydrides reacted with water)." Husemoen, col. 2,

14 Carbohydrate Case: Document: 1-2 Page: 19 Filed: 11/09/2015 (20 of 66) Hu9. Husemoen teaches that the reaction mixture can comprise additives. Husemoen, col. 3, Among the list of additives are mono-, di- and polysaccharides, such as sucrose and glucose syrup, which are carbohydrates within the scope of the claimed subject matter. ld. at col. 3, ll ; claim 16; Requester Resp't Br. 8 ("Step C"), 10. Amine Hu 1 0. Husemoen discloses that a base, such as ammonia, is added to the pre-reacted resin mixture. Husemoen, 3: ; 4:20--28; 10:42--44; claims 23-24; Requester Resp' t Br. 9. Hull. Husemoen specifically teaches: In order to improve the water solubility of the binder a base might be added up to a ph of about 8, whereby a ph of between about ~8 is preferred, more preferred being a ph of about 7. The base can be mixed with a polyacrylic acid and added to the resin after the resin reaction is stopped by water addition. The base thus need first be added after the resin is prepared. The base may be mixed with a carboxylic acid group containing polymer before addition. Suitable bases could be NH 3, DBA, TEA, or alkali hydroxides. Husemoen, 4: In the examples, a1nn1onium hydroxide is listed.!d. at col. 10, Ammonium salt of citric acid Hul2. Requester provided technical reasoning as to why an an11nonium salt of citric acid would fonn. Resp't Br. 8, Patent Owner did not challenge this reasoning in their Appeal or Rebuttal Briefs. 14

15 Maillard Reaction Case: Document: 1-2 Page: 20 Filed: 11/09/2015 (21 of 66) Hu 13. On page 8 of their Respondent Brief, Requester provides technical reasoning as to why a Maillard reaction takes place. First, Requester cites evidence, as discussed above (Hu- Hu8), that polycarboxylic acid is fonned. Requester Resp't Br. 8 (Steps A and B). Hu14. Second, Requester provides evidence that po1ycarboxylic acid is mixed with ammonia and a carbohydrate (Requester Resp't Br. 8 (Step C)), the same steps described in the '980 patent (at col. 4, ll ). Binder is "product of curing" (claims 21-26) Hu 15. The uncured binder mixture may be mixed with fibers, followed by curing (i.e., heating) while the binder mixture is disposed on the fibers (Husemoen, 9:49; 11:11-13), just as required by claims Discussion The evidence is sufficient to establish that melanoidins are formed. As sunu11arized above, Husemoen describes mixing all three of the claimed reactants together and then curing the mixture on fibers (Hu6-Hu 15), the same steps described in the '980 patent. Based on the identity between the reactants and process steps, it is reasonable to conclude that at least some melanoidin would be fonned. Patent Owner has not pointed to any specific conditions or amounts of reactants disclosed in the '980 patent which would enable melanoidin formation and which would distinguish the reaction that would proceed in Husemoen. Patent Owner argues that Husemoen describes an esterification reaction (PO Rebuttal Br. 5), but neither Examiner nor Requester disputes this fact. Patent Owner has not 15

16 shown that the esterification reaction would interfere with or hjnder a Maillard reaction, or affect the resulting melanoidin. The claims require the binder to be "consisting essentially of a carbohydrate, an amine, and a polycarboxylic acid." The Examiner found that "consisting essentially of' would exclude components that affect the basic and novel properties of the invention. RAN However, the Examiner found there was no clear indication of what constitutes the basic and novel characteristics of the invention, and, therefore, interpreted "consisting essentially of' to have the same meaning as "comprising."!d. at Patent Owner did not respond in the Appeal or Rebuttal Brief to the Examiner's claim interpretation of the phrase. Under this interpretation, the claimed melanoidin product, as discussed above, is indistinguishable from the melanoidin formed in Husemoen. Claims have additional limitations that were not argued by Patent Owner in this appeal, which were found by the Examiner to have been met by the additionally cited publications. See RAN 8, 19, 28, 44, 64, etc. We have reviewed the Examiner's findings and conclude they are reasonable and fact-based. For the foregoing reasons, we affim1 the rejections of claims as obvious in view of Husemoen and the additionally cited publications. PO Appeal Br Case: Document: 1-2 Page: 21 Filed: 11/09/2015 (22 of 66) REJECTIONS BASED ON HELBING '302 The Examiner found that Helbing '302 describes formaldehyde-free, thermally-curable, alkaline, aqueous binder compositions. RAN 9. The Examiner found that Helbing teaches "use of a polyacid component such as citric acid in the binder composition and also teaches the inclusion of an amine such as aqueous 16

17 anunonia." ld. Citric acid is tricarboxylic acid and, therefore, meets the corresponding limitation of the claims. The Examiner cited Example 4 of the publication as teaching the addition of corn syrup to the mixture, which the Examiner found would have been understood to be another ten11 for glucose syrup, which is a carbohydrate. ld. The Examiner found that the inclusion of com syrup into the reaction mixture would indicate that melanoidin was present in Helbing '302's product since all the reactants recited in the claims (carbohydrate, amine, and polycarboxylic acid) are present. ld. at 9, 11 ("HELBING provides for all the reactants that form melanoidins."). In addition to the Maillard reactants, the claims further recite properties and characteristics of the mineral fiber insulating material. The Examiner cited Knauf, Keller, Garcia, Espiard, Horres, and Beaufils 14 for teaching materials with such characteristics. Patent Owner contends that none of the cited publications describes the claimed "organic them1oset binder" that "includes melanoidins produced by a Maillard reaction." PO Appeal Br. 10. Patent Owner argues that the primary teaching in Helbing '302 is of polyester resins produced by an esterification reaction pathway which is different from the reaction pathway used to make melanoidins. ld. As with the inherency rejections involving Husemoen, Patent Owner argues: The possibility that a Malliard [sic] reaction might also occur, under certain conditions, does not mean that a Malliard [sic] reaction will necessarily occur under each of the possible conditions disclosed in Helbing. Yet, Requester has presented!!.q evidence (including citation to any passages of Helbing) to support its conclusory statements that esterification and Maillard reactions necessarily occur in competition with one another in Helbing. 14 United States Patent No. 7,458,235 B2, issued on Dec. 2, 2008, to Sebastien Beaufils et al. Case: Document: 1-2 Page: 22 Filed: 11/09/2015 (23 of 66) 17

18 PO Rebuttal Br. 3. Case: Document: 1-2 Page: 23 Filed: 11/09/2015 (24 of 66) Patent Owner contends that the Requester "fails to recognize that it is the Office's (and, hence, the Requester's) responsibility to come forward with evidence proving an allegedly inherent disclosure."!d. at 4. Findings offact The numbered paragraphs ("He" for Helbing '302) summarize the relevant findings. He 1. Helbing '302 describes "formaldehyde-free, thermally-curable, alkaline, aqueous binder compositions." Abstract. Helbing '302 teaches that the binder compositions "may be cured to substantially water-insoluble them1oset polyester resins, including formaldehyde-free, substantially water-insoluble thermoset polyester resins."!d. He2. The binder composition is described by Helbing as for use in manufacturing fiber products, such as fiber products composed of fiberglass and other fibers. Helbing '302, 3: He3. In one embodiment, the composition, having a ph of greater than about 7, includes: l) one or more polyacid components having acid groups, or anhydride or salt derivatives thereof, and 2) a plurality ofpolyhydroxy components having hydroxyl groups. Helbing '302, 3: Polycarboxylic acid He4. Helbing '302 teaches that the polyacid can be a dicarboxylic acid, tricarboxylic acid, or a po1ycarboxylic acid, which meets the corresponding polycarboxylic acid limitation of the claims. Helbing '302, 4:

19 Case: Document: 1-2 Page: 24 Filed: 11/09/2015 (25 of 66) Appeal Amine He5. Helbing '302 teaches that in one embodiment "the polyacid component is maleic acid neutralized with, for example, an amine such as aqueous am1nonia. In another illustrative embodiment, the polyacid component is the ammonium salt of maleate." Helbing '302, 4:31 to 5:2. See also id. at 8: He6. The polyhydroxy component in Helbing '302 can be a mixture of partially hydrolyzed polyvinyl acetate, such as, for example, an EL V ANOL, and a fully hydrolyzed polyvinyl acetate, such as, for example, a MOWIOL. Helbing '302, 5:3-7. Carbohydrate, amine, and polycarboxylic acid present in reaction He7. The "one or more polyacid component has been found to be capable of reacting with a plurality of polyhydroxy components, under alkaline, aqueous conditions in the absence of a catalyst, to form a thermoset polyester resin." Helbing '302, 6: He8. Example 4 of Helbing '302 (at 13:10--21) describes a composition of ph of with the following components: He9: approximately 25.2o/o MOWIOL 4-98, 1.5% EL V ANOL 51-05, Hel % maleic acid, 5.6% maleinized soybean oil (a dicarboxylic acid), Hell. 5.9% com syrup (glucose, a carbohydrate), He o/o ammonium sulfate (amine), and Hel3. 2.0% SILQUEST A-1101 silane. 19

20 Case: Document: 1-2 Page: 25 Filed: 11/09/2015 (26 of 66) Appeal Binder is "product of curing" (claims 21-26) Hel4. Helbing '302 teaches that this method includes "contacting fibers with a thermally-curable, aqueous binder composition including one or more polyacid component and a plurality of poly hydroxy components,... and heating the... composition at an elevated temperature that is sufficient to cure the binder composition to form a polyester." Helbing '302, 5: Discussion As discussed above, the PTO does not have to prove that a recited characteristic of the claimed invention would inherently and necessarily be possessed by the prior art. Rather, the PTO must provide factual evidence, technical reasoning, or a reason to believe that the prior art necessarily possesses such characteristic, which in this case is the production of melanoidins. Once tllis burden is met, the burden shifts to Patent Owner to prove that the prior art does not possess the claimed characteristic. The initial issue is, therefore, the sufficiency of the Examiner's evidence in adopting the Requester's proposed rejections. A preponderance of the evidence establishes that all three reactants present in a Maillard reaction- a carbohydrate (He 11), an amine which is ammonia (He5, Hel2), and a polycarboxylic acid (He4, He5, HelO) are described by Helbing as present in a reaction mixture. The reactants are mixed and then cured (Hel4) as required by claims Because of the identity of reactants and process steps, there is factual basis and reason to believe that Helbing 302' s binder product would contain melanoidins as required by the claims. In rebuttal, Patent Owner argues that there are a number of elements in Helbing '302's disclosure that "point away from a Malliard reaction occurring in 20

21 competition with the esterification reaction taught in Helbing." PO Rebuttal Br. 4. Specifically, Patent Owner reasons:!d. Case: Document: 1-2 Page: 26 Filed: 11/09/2015 (27 of 66) The basis of Maillard chemistry is the reaction of a reducing sugar carbonyl group with an amine or ammonia. Hydroxyl groups are not involved in Maillard chemistry. However, each dextrose (i.e., corn syrup) molecule of Helbing has five reactive hydroxyl groups and only one carbonyl group. Accordingly, based on probability alone, it is five times more likely that the dextrose molecules in Helbing will engage in esterification chemistry than in Maillard chemistry. Patent Owner also points that Helbing '302 teaches the use of catalysts, and includes the catalyst ammonimn sulfate in Example 4.!d. "The addition of a catalyst for purposes of increasing the rate of ester formation makes it even less likely that Maillard chemistry is taking place or competing with esterification under the conditions taught by Helbing." Jd. Patent Owner's argument is not adequate persuasive evidence that Maillard reaction will not take place. The statement that it is "five times more likely that the dextrose molecules in Helbing will engage in esterification chemistry than in Maillard chemistry" (id. ), if true, would mean that dextrose will react in Maillard fashion less frequently than in esterification, but it will still react with an amine or atmnonia because the reactants are present. Consequently, a preponderance of the evidence support the Examiner's position that melanoidins will be formed in Helbing '302's process. The claims require the binder to be "consisting essentially of a carbohydrate, an amine, and a polycarboxylic acid." We addressed the "consisting essentially of' limitation in the rejections based on Husemoen and found it to be non-limiting. Under this interpretation, the claimed melanoid in product, as discussed above, is indistinguishable from the melanoidin formed in Husemoen. 21

22 Claims have additional limitations that the Examiner found to be described in the prior art. See, e.g., RAN 10, 12. Patent Owner did not address these additional limitations. We have reviewed the Examiner's fmdings and conclude they are reasonable and fact-based, and thus adopt them herein. For the foregoing reasons, we affinn the rejections of claims as obvious in view of Helbing '302 and the additionally cited publications. PO Appeal Br Case: Document: 1-2 Page: 27 Filed: 11/09/2015 (28 of 66) TIME PERIOD FOR RESPONSE In accordance with 37 C.P.R (a)(l), the "[p]arties to the appeal may file a request for rehearing of the decision within one month of the date of:... [t]he original decision of the Board under 41.77(a)." A request for rehearing must be in compliance with 37 C.P.R (b). Comments in opposition to the request and additional requests for rehearing must be in accordance with 37 C.P.R (c)-(d), respectively. Under 37 C.P.R (e), the times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (d) of this section, and for submitting conu11ents under paragraph (c) of this section may not be extended. An appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C and 315 and 37 C.F.R for an inter partes reexamination proceeding "c01nmenced" on or after November 2, 2002 may not be taken "until all parties' rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board." 37 C.F.R See also MPEP 2682 (8th ed., Rev. 7, July 2008). 22

23 In the event neither party files a request for rehearing within the time provided in 37 C.F.R , and this decision becomes fmal and appealable under 37 C.F.R , a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R and Case: Document: 1-2 Page: 28 Filed: 11/09/2015 (29 of 66) AFFIRMED peb 23

24 Patent Owner: Case: Document: 1-2 Page: 29 Filed: 11/09/2015 (30 of 66) BARNES & THORNBURG LLP 11 S. Meridian Street Indianapolis, IN Third Party Requester: JohnS. Pratt, Esq. KILPATRICK TOWNSEND & STOCKTON LLP 1100 Peachtree Street, Suite 2800 Atlanta, GA