Case: 19-2013 Document: 43 Page: 1 Filed: 05/26/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SOLENIS TECHNOLOGIES, LP,
Appellant
v.
SNF SAS,
Appellee
______________________
2019-2013
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/002,397.
______________________
Decided: May 26, 2020
______________________
DAVID S. MORELAND, Meunier Carlin & Curfman, LLC,
Atlanta, GA, for appellant. Also represented by JOHN W.
HARBIN.
BILLY AARON SCHULMAN, Stites & Harbison PLLC, Al-
exandria, VA, for appellee.
______________________
Before LOURIE, REYNA, and HUGHES, Circuit Judges.
Case: 19-2013 Document: 43 Page: 2 Filed: 05/26/2020
2 SOLENIS TECHNOLOGIES, L.P. v. SNF SAS
LOURIE, Circuit Judge.
Solenis Technologies L.P. (“Solenis”) appeals from the
decision of the United States Patent Office Trial and Ap-
peal Board (the “Board”) affirming the examiner’s rejection
of claims 2–55 of U.S. Patent 6,454,902 (“the ’902 patent”)
in an inter partes reexamination. SNF SAS v. Ciba Speci-
ality Chems. Water Treatments Ltd., No. 2015-007695,
2018 WL 3456088, at *1 (P.T.A.B. July 16, 2018) (“Second
Board Decision”), reh’g denied,
2019 WL 1580145 (P.T.A.B.
Apr. 10, 2019). For the reasons detailed below, we affirm.
BACKGROUND
Generally, to make paper, an aqueous suspension
called cellulosic stock is fed into a headbox of a papermak-
ing machine. The process may involve the addition of “floc-
culating” solutions, which cause the cellulosic stock to
clump.
The ’902 patent provides a process for making paper
from cellulosic stock using two flocculating steps. The pro-
cess involves forming a cellulosic suspension, flocculating
the suspension, draining the suspension on a screen to
form a sheet, drying the sheet, mechanically shearing it,
and then flocculating it again.
The parties’ arguments in this appeal focus on two
claims: claim 10 and claim 13. In the proceedings below,
claim 1 was cancelled, and its limitations were imported
into amended claim 13. Claim 1 recites:
1. A process for making paper or paper board com-
prising forming a cellulosic suspension, flocculat-
ing the suspension, draining the suspension on a
screen to form a sheet and then drying the sheet,
wherein the cellulosic suspension is flocculated by
the addition of a water soluble cationic synthetic
polymer of intrinsic viscosity of at least 4 dl/g,
wherein the flocculated cellulosic suspension is
subjected to mechanical shearing and then
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SOLENIS TECHNOLOGIES, L.P. v. SNF SAS 3
reflocculated by a subsequent addition of a refloc-
culating system, and in which the reflocculating
system comprises
i) a siliceous material and
ii) a water soluble anionic polymer of in-
trinsic viscosity at least 4 dl/g, and in
which the siliceous material (i) and water
soluble anionic polymer (ii) are added to the
cellulosic suspension subsequent to the
centriscreen and wherein the cationic poly-
mer is added to a thin stock stream of the
cellulosic suspension.
’902 patent col. 13 ll. 29–45 (emphases added). The “cen-
triscreen” appears to be a shearing step, and the specifica-
tion describes the reflocculating polymer as being added
late in the papermaking process. Claim 13 depends from
claim 1, reciting “[a] process according to claim 1 in which
the water soluble anionic polymer has an intrinsic viscosity
of at least 7 dl/g.”
Id. at col. 14 ll. 33–35 (emphasis added).
Claim 10 also depends from cancelled claim 1 and re-
cites a process for making paper or paper board wherein
the second flocculating step uses a “branched” “water solu-
ble polymer which exhibits a rheological oscillation value
of tan delta at 0.005 Hz of above 0.7 (calculated on a 1.5%
by weight aqueous solution of the polymer).”
Id. at col. 14
ll. 22–26. All claims in this appeal rise and fall with either
claim 10 or 13.
SNF SAS (“SNF”) filed a request for inter partes reex-
amination, which was ordered for claims 1–9 and 11–18.
Solenis then cancelled claim 1, amended claim 13 to incor-
porate its limitations, and added new claims 26–55. See
J.A. 1553. The examiner, in his discretion, brought claim
10 into the reexamination as well. J.A. 1511.
The reexamination produced a series of opinions, but
the relevant history is as follows. The examiner rejected
Case: 19-2013 Document: 43 Page: 4 Filed: 05/26/2020
4 SOLENIS TECHNOLOGIES, L.P. v. SNF SAS
claim 13 but allowed claim 10. Solenis appealed to the
Board, and the Board affirmed the rejection of claim 13 but
issued a new ground of rejection for claim 10. SNF SAS v.
Ciba Speciality Chems. Water Treatments Ltd., No. 2015-
007695,
2016 WL 4437952, at *1 (P.T.A.B. Aug. 19, 2016)
(“First Board Decision”). Solenis requested to reopen pros-
ecution, arguing that the Board issued a new ground of re-
jection for both claim 10 and 13, J.A. 2046–2076, but the
Board disagreed and declined to remand claim 13. SNF
SAS v. Ciba Speciality Chems. Water Treatments Ltd., No.
2015-007695 (P.T.A.B. Feb. 28, 2017) (“Remand Order”).
On remand, the examiner allowed claim 10, but the Board
reversed the examiner again. Second Board Decision,
2018
WL 3456088, at *5. Solenis then moved for rehearing,
which was denied. SNF SAS v. Ciba Speciality Chems. Wa-
ter Treatments Ltd., No. 2015-007695,
2019 WL 1580145,
at *1 (P.T.A.B. Apr. 10, 2019) (“Rehearing Decision”).
Relevant to this appeal are three references:
WO 98/24973 (“WO ’973”); European Patent Application
EP 0877120 A1 (“EP ’120”); and U.S. Patent 5,958,188
(“the ’188 patent”). WO ’973 discloses a process for making
paper wherein a “main aqueous flow” of cellulosic fibers
and filler are fed into the headbox. WO ’973 at 3. The main
flow comprises at least a “high consistency” (HC) flow and
a “low consistency” (LC) flow.
Id. A cationic polymer is
introduced into the HC flow as a retention agent.
Id. at 8.
WO ’973 specifies that cationic acrylamide-based polymers
are preferred.
Id. at 6. The LC flow may include an “addi-
tive” that may comprise an anionic polymer. The molecular
weight of the “main polymer” is “usually above 200,000,
suitably above 300,000, preferably at least 500,000 and
most preferably at least 1,000,000.”
Id. The polymer
weight is below about 20,000,000.
Id.
EP ’120 teaches a papermaking process that uses an
ionic water-soluble polymer produced by dispersion
polymerization. The disclosure teaches a method for pro-
ducing the polymer by polymerizing water-soluble, ionic,
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SOLENIS TECHNOLOGIES, L.P. v. SNF SAS 5
vinyl monomers under agitation in a salt solution. The
“polymerization mechanism” is not described, but the ap-
plication states that “it is assumed that a polymer having
a specific molecular structure, such as a branched polymer
or block copolymer, is produced” and that “the specific mo-
lecular structure” of the produced polymer “is a primary
factor of improving retention and/or drainage.” EP ’120 at
4.
The ’188 patent teaches a process for making paper
where a polymer is made by reacting monomers. The spec-
ification explains that “one way of indicating that [a]
branched polymer is in solution . . . rather than being in
the form of cross linked particles is by observing that the
defined tan delta value is relatively high (above 0.5 and
preferably above 0.7).” ’188 patent col. 4. ll. 26–36.
The Board’s merits determinations for two claims are
relevant to this appeal: (1) the rejection of claim 13 based
on the Board’s finding that WO ’973 discloses a cationic pol-
ymer with an intrinsic viscosity of at least 4 dl/g and an
anionic polymer with an intrinsic viscosity of at least 7 dl/g;
and (2) the rejection of claim 10 based on the Board’s find-
ing that EP ’120 in view of the ’188 patent teaches a
branched, water-soluble cationic polymer with a rheologi-
cal oscillation value of tan delta at 0.005 Hz of above 0.7.
The examiner considered both issues in the first instance.
The examiner relied on WO ’973 to teach both cationic
and anionic polymers of the claimed intrinsic viscosities in
claim 13. The examiner calculated the intrinsic viscosity
of poly(N,N’-dimethylacrylamide) with a weight range of
50,000 to 1.22 million, treating it as representative of both
the cationic and anionic polymers of WO ’973.
To calculate the intrinsic viscosity of the prior art ma-
terials, the examiner used the Mark-Houwink-Sakurada
(MHS) equation:
[n] = KMa.
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6 SOLENIS TECHNOLOGIES, L.P. v. SNF SAS
In the MHS equation, “[n]” is the intrinsic viscosity, “K” is
a constant in dl/g, and “M” is the molecular weight. Relying
on “K” and “a” values from the Polymer Handbook, 1 the ex-
aminer calculated the intrinsic viscosity of poly(N,N’-dime-
thylacrylamide) as 16.8 dl/g. According to the examiner’s
determination, the intrinsic viscosity of WO ’973’s “pre-
ferred polymer” (i.e., an acrylamide-based polymer) at the
preferred molecular weight met both claimed viscosity lim-
itations.
Regarding claim 10, the examiner relied on a combina-
tion of WO ’973, EP ’120, and the ’188 patent. The exam-
iner found that WO ’973 teaches an LC flow, which may
comprise an anionic polymer and preferably an acrylamide-
based polymer with a molecular weight above 1 million.
Relying on the value calculated above for poly(N,N’-dime-
thylacrylamide), the examiner found that the anionic poly-
mer would also have an intrinsic viscosity of at least 16.8
dl/g. But the examiner ultimately found claim 10 would
not have been obvious because there was no disclosure in
EP ’120 or the ’188 patent showing a cationic water-soluble
polymer with the claimed rheological oscillation value.
On appeal, the Board affirmed the examiner’s decision
regarding intrinsic viscosity and claim 13. The Board spe-
cifically agreed with the examiner’s reliance on poly(N,N’-
dimethylacrylamide) as representative for cationic poly-
mers because WO ’973 discloses cationic acrylamide-based
polymers as particularly preferred with molecular weights
of at least 1 to about 20 million. 2 The Board found no
1 POLYMER HANDBOOK, IV-21 (J. Brandrup & E.H.
Immergut eds., 1966).
2 The Board also commented that high molecular
weight cationic polymers used in retention systems are
characterized by intrinsic viscosities of about 4 dl/g and
that such cationic polymers have molecular weights above
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SOLENIS TECHNOLOGIES, L.P. v. SNF SAS 7
evidence of record suggesting that poly(N,N’-dime-
thylacrylamide) could not be used as an example of an
acrylamide-based polymer sufficient to establish the rela-
tionship between intrinsic viscosity and molecular weight
with respect to the polymers described in WO ’973. The
Board also commented that Solenis had not explained why
a cationic polymer would have a significantly different K
value. Citing that WO ’973 discloses anionic polymers of
similarly high weights—most preferably above
10,000,000—the Board extended its conclusion for the in-
trinsic viscosity of the cationic polymer to the anionic poly-
mer. First Board Decision,
2016 WL 4437952, at *7–8.
Regarding claim 10, the Board held that EP ’120 dis-
closes water-soluble ionic polymers that are either
branched polymers or block copolymers, which is the pri-
mary factor in improving retention or drainage. Thus, the
Board read EP ’120 to teach branched cationic polymers.
Then, relying on the ’188 patent, the Board held that a
branched polymer in solution has a relatively high tan
delta value, above 0.5 and preferably above 0.7. Thus, the
Board held that EP ’120 discloses water-soluble polymers,
which would have a relatively high rheological oscillation
value. In the Board’s view, the value taught by the prior
art matched that in the claims because the ’188 patent ex-
pressly teaches that a tan delta of above 0.7 is preferred.
Thus, the Board entered a new rejection of claim 10 as ob-
vious over WO ’973 and EP ’120.
On remand to the examiner, Solenis submitted a dec-
laration from its expert, Christian Jehn-Rendu, and the ex-
aminer relied on the declaration to find that EP ’120
discloses a polymer in a dispersion, and polymers in
500,000, but this finding was vacated on rehearing to make
clear that the Board was affirming the examiner’s ra-
tionale and not providing a new basis for rejection. Rehear-
ing Decision,
2019 WL 1580145, at *2.
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8 SOLENIS TECHNOLOGIES, L.P. v. SNF SAS
dispersions have a tan delta value of less than 0.5, outside
the scope of the claim.
On appeal from that decision, the Board reversed. It
found that EP ’120 did disclose a method for producing wa-
ter-soluble cationic polymers by dispersion polymerization,
but the dispersion was produced during polymer formula-
tion. Ultimately, in the Board’s view, the process yielded a
water-soluble polymer. Alternatively, the Board also found
that, even if the claim’s oscillation value was not inherent
in the water-soluble branched polymers of EP ’120, it would
have been obvious to select a branched water-soluble poly-
mer as taught by EP ’120 because of the desire for a water-
soluble, easily-dissolvable cationic polymer. According to
the Board, a “skilled artisan would seek to utilize a fine
cationic polymer exhibiting a tan delta above 0.7 due to the
express disclosure in the ’188 patent that polymer systems
having a tan delta value above 0.7 have more soluble poly-
mer and less cross-linked polymer.” Second Board Deci-
sion,
2018 WL 3456088 at *5.
Solenis moved for rehearing on all the above issues, but
the Board reiterated its previous reasoning and denied re-
hearing. Solenis appealed, and we have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal determinations de novo, In
re Elsner,
381 F.3d 1125, 1127 (Fed. Cir. 2004), and its fact
findings for substantial evidence, In re Gartside,
203 F.3d
1305, 1316 (Fed. Cir. 2000). A finding is supported by sub-
stantial evidence if a reasonable mind might accept the ev-
idence as sufficient to support the finding. Consol. Edison
Co. v. NLRB,
305 U.S. 197, 229 (1938).
Obviousness is a question of law, supported by under-
lying fact questions. In re Baxter Int’l, Inc.
678 F.3d 1357,
1361 (Fed. Cir. 2012). In evaluating obviousness, we con-
sider the scope and content of the prior art, differences
Case: 19-2013 Document: 43 Page: 9 Filed: 05/26/2020
SOLENIS TECHNOLOGIES, L.P. v. SNF SAS 9
between the prior art and the claims at issue, the level of
ordinary skill in the pertinent art, and any relevant sec-
ondary considerations. Graham v. John Deere Co. of Kan.
City,
383 U.S. 1, 17–18 (1966).
“The inherent teaching of a prior art reference, a ques-
tion of fact, arises both in the context of anticipation and
obviousness.” In re Napier,
55 F.3d 610, 613 (Fed. Cir.
1995) (citing In re Grasselli,
713 F.2d 731, 739 (Fed. Cir.
1983)). The use of inherency, however, “must be carefully
circumscribed in the context of obviousness.” PAR Pharm.,
Inc. v. TWI Pharm., Inc.,
773 F.3d 1186, 1195 (Fed. Cir.
2014) (first citing In re Rijckaert,
9 F.3d 1531, 1533–34
(Fed. Cir. 1993); then citing In re Oelrich,
666 F.2d 578, 581
(C.C.P.A. 1981); and then citing Application of Shetty,
566
F.2d 81, 86 (C.C.P.A. 1977)).
Solenis raises two arguments on appeal: (1) that the
Board’s determinations regarding claims 10 and 13 lack
substantial evidence; and (2) that the Board erred in failing
to consider the Jehn-Rendu declaration in its review of the
intrinsic viscosity limitation of claim 10 after prosecution
was reopened. We address each issue in turn.
A.
Solenis argues that the Board’s determinations for
claim 13’s intrinsic viscosity limitations and claim 10’s rhe-
ological oscillation value limitation lack substantial evi-
dence.
First, Solenis challenges the examiner’s and the
Board’s analysis regarding claim 13. According to Solenis,
the examiner failed to provide sufficient detail concerning
his MHS equation calculation and did not adequately ex-
plain why poly(N,N’-dimethylacrylamide) was representa-
tive of all cationic and anionic polyacrylamides. Thus, in
Solenis’s view, the examiner failed to show that WO ’973
necessarily and inherently discloses cationic and anionic
polyacrylamides of the claimed intrinsic viscosities. SNF
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10 SOLENIS TECHNOLOGIES, L.P. v. SNF SAS
responds that the Board’s decisions are supported by sub-
stantial evidence and that the Board properly analyzed the
record.
We agree with SNF. WO ’973 discloses cationic and
anionic polymers with molecular weights of above 1 mil-
lion. See WO ’973 at 6 (“Examples of suitable main poly-
mers include anionic, amphoteric and cationic acrylamide-
based polymers . . . . The molecular weight of the main pol-
ymer is usually above 200,000 . . . and most preferably at
least 1,000,000.”). Selection of an acrylamide-based poly-
mer like poly(N,N’-dimethylacrylamide) was reasonable on
this record as acrylamides were designated in WO ‘973 as
preferred. Solenis may disagree with the examiner and
Board’s designation of poly(N,N’-dimethylacrylamide) as
representative, but the selection certainly meets the sub-
stantial evidence standard on appeal. Consol.
Edison, 305
U.S. at 229.
We also agree with the examiner’s and Board’s deter-
mination that the dimethylacrylamide polymer meets the
intrinsic viscosity limitation of the claim. Solenis identifies
no errors in the examiner’s calculation using the MHS
equation. Nor do we find error in his determination that,
based on the MHS equation, intrinsic viscosity is propor-
tional to molecular weight such that the intrinsic viscosity
of the WO ’973 polymers with molecular weights preferably
greater than 1 million would be expected to have higher
intrinsic viscosities than 16.8 dl/g.
The Board and examiner used a well-known equation
to determine an inherent property—the intrinsic viscos-
ity—of a polymer in the prior art. The inherency of a
claimed material is not at issue in this analysis; it is the
inherency of a property that is at issue, and substantial ev-
idence shows that the polymer possesses that property. We
discern no error in this analysis.
Regarding claim 10, Solenis argues that EP ’120 does
not inherently disclose branched polymers because the
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SOLENIS TECHNOLOGIES, L.P. v. SNF SAS 11
disclosure does not specify whether branched or block co-
polymers are formed. According to Solenis, because the EP
’120 polymers are not necessarily branched, the polymers
do not necessarily have the claimed tan delta values. Sole-
nis also argues that, since the EP ’120 polymers are not
necessarily branched, the Board’s alternative conclusion
that EP ’120 would have motivated a person skilled in the
art to use a branched, water-soluble cationic polymer lacks
substantial evidence.
It is unclear that the Board relied on inherency to find
polymers disclosed by EP ’120 are necessarily branched.
The Board determined that it would have been obvious to
use branched cationic polymers because EP ’120 discloses
branched or block copolymers. EP ’120 describes a disper-
sion polymerization reaction that yields a water-soluble
polymer. The polymerization mechanism is unknown, and
the inventors “assumed that a polymer having a specific
molecular structure, such as a branched polymer or block
copolymer, is produced.” EP ’120 at 4.
The Board’s determination that “it would have been ob-
vious to optimize the water soluble cationic polymer to se-
lect a branched soluble polymer as taught by EP ’120
because of the desire for a water soluble and easily dissolv-
able cationic polymer” is supported by the record. Second
Board Decision,
2018 WL 3456088, at *5. EP ’120 credits
the structure of the generated polymer as a “primary factor
of improving retention and/or drainage,” and therefore
teaches that a branched polymer may be responsible for
improvements to the papermaking process. EP ’120 at 6.
It was thus reasonable for the Board to conclude that it
would have been obvious for a skilled artisan to use
branched copolymers based on EP ’120’s express disclosure,
and the Board’s obviousness conclusion is supported by
substantial evidence.
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12 SOLENIS TECHNOLOGIES, L.P. v. SNF SAS
B.
After the first Board decision, Solenis requested reo-
pening prosecution under 37 C.F.R. § 41.77(b)(l) and sub-
mitted the Jehn-Rendu declaration. The request was
granted for claim 10, which was subject to a new ground of
rejection, but was denied for claim 13. Remand Order, No.
2015-007695, slip op. at 3; J.A. 1975. Specifically, the
Board entered a new ground of rejection based on its find-
ing that a combination of WO ’973, EP ’120, and the ’188
patent discloses branched polymers of a rheological oscilla-
tion tan delta value of above 0.7.
As a preliminary matter, in its request to reopen pros-
ecution, Solenis argued the issue of intrinsic viscosity with
respect to claim 13 alone. See J.A. 1946–49. Solenis’s ar-
guments regarding claim 10 address only whether EP ’120
and the ’188 patent disclose a branched water-soluble pol-
ymer with the claimed rheological oscillation value. J.A.
1940–43. The examiner considered the declaration and the
request in his determination on remand. J.A. 1989–90.
Thus, it is not surprising that the examiner’s analysis on
remand addresses the Jehn-Rendu declaration only as it
relates to the claimed tan delta value of claim 10.
On remand to the examiner after the Board issues a
new ground of rejection, 37 C.F.R. § 41.77(d) tasks the ex-
aminer to consider whether new evidence not previously of
record overcomes the new ground of rejection in the Board’s
decision. The Manual of Patent Examining Procedure
(“MPEP”) § 2682 (9th ed., rev. Jan. 2018), provides similar
guidance, explaining that “examiner will not comment on
any entered arguments or comments that are not limited
to the new ground(s) of rejection issued in the Board’s de-
cision (e.g., arguments or comments that addressed a
Case: 19-2013 Document: 43 Page: 13 Filed: 05/26/2020
SOLENIS TECHNOLOGIES, L.P. v. SNF SAS 13
rejection affirmed in the Board’s decision).” 3 The examiner
clearly followed the applicable regulations and guidance in
considering the Jehn-Rendu declaration for the limited
purpose of the new ground of rejection. Solenis has failed
to identify any procedural error warranting a remand.
CONCLUSION
We have considered Solenis’s remaining arguments but
find them unpersuasive. Accordingly, the decision of the
Board finding claims 2–55 of the ’902 patent unpatentable
is affirmed.
AFFIRMED
3 “While the MPEP does not have the force of law, it
is entitled to judicial notice as an official interpretation of
statutes or regulations as long as it is not in conflict there-
with.” Molins PLC v. Textron, Inc.,
48 F.3d 1172, 1180 n.10
(Fed. Cir. 1995) (citing Litton Sys., Inc. v. Whirlpool Corp.,
728 F.2d 1423, 1439 (Fed. Cir. 1984)).
