Ex Parte Beihoffer et al

Patent Trial and Appeal Board

Nov 10, 2016

11942638 (P.T.A.B. Nov. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111942,638 11/19/2007
4743 7590 11/15/2016
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
FIRST NAMED INVENTOR
Thomas W. Beihoffer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
28570/42880 1957
EXAMINER
CHEV ALIER, ALICIA ANN
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
11/15/2016 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS W. BEIHOFFER, NATALIYA V. LARIONOVA, and
MAREK R. MOSIEWICZ
Appeal2015-001052
Application 11/942,638
Technology Center 1700
Before PETER F. KRATZ, ROMULO H. DELMENDO, and
JEFFREY R. SNAY, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter the "Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims 1, 4-
6, 8-11, 13-17, 19-24, and 27--45.2, 3 We have jurisdiction under 35 U.S.C.
1 The Appellants state that the real party in interest is "AMCOL
International Corporation" (Appeal Brief filed July 21, 2014, hereinafter
"Appeal Br.," 2).
2 Appeal Br. 5; Final Office Action delivered electronically on March 12,
2014, hereinafter "Final Act.," 6-29.
3 The Appellants identify a related appeal in Application 13/077,871, which
is a continuation-in-part of the current application (Appeal Br. 2). That
appeal (2015-00103 8) is also assigned to us and is being decided
concurrently.
Appeal2015-001052
Application 11/942,638
§ 6(b ).
We affirm-in-part.
BACKGROUND
The subject matter on appeal relates to: (i) a geocomposite article for
waterproofing a surface against the penetration of high conductivity salt-
containing water; (ii) a method of manufacturing such an article; and (iii) a
method of waterproofing a surface (Specification, hereinafter "Spec.," ,-i 1,
Abst.). The Appellants explain the basis for their invention as follows (id.
,-i 7):
Surprisingly it has been found that a partially cross-
linked copolymer of acrylamide/partially neutralized
polyacrylic acid, preferably acrylamide/potassium acrylate or
sodium acrylate/acrylic acid copolymer (CAS# 312-12-13-2),
e.g., STOCKOSORB, or STOCKOSORB S, from Stockhausen,
Inc. of Greensboro, NC, will waterproof surfaces against the
penetration of high conductivity water.
According to the Appellants (id. ,-i 16), articles including the specified
copolymer "have exceptional and unexpected free swell when in contact
with high conductivity water or multivalent ion-containing-contaminated
water."
Representative claims 1 and 41 are reproduced from pages 20 and 22-
23 of the Appeal Brief (Claims Appendix), with key limitations highlighted
in italics, as follows:
1. A self-healing geocomposite article comprising:
a) at least one water-impermeable membrane layer;
b) at least one active self-healing layer comprising a
water-insoluble powdered or granular high conductivity water-
absorbent copolymer capable of absorbing water having a
conductivity of at least 1 mS/cm wherein the copolymer contains
about 5-90 mole% acrylamide; about 2-50 mole % sodium or
2
Appeal2015-001052
Application 11/942,638
potassium or lithium or ammonium acrylate; and about 2-50
mole% acrylic acid, said copolymer having 50-90 wt.% of the
particles in the 200µm to 800µm size range and about 10 wt.%
to about 50 wt.% of the particles in the 50µm to 200µm size
range; and
c) a woven or non-woven geotextile fabric containing at
least a portion of the self-healing layer adhered to the
membrane layer to sandwich the active self-healing layer
between the membrane and the fabric;
wherein the geocomposite article exhibits a self-healing
performance index less than 0. 015 when tested by placing a 1
inch slit through all layers of the geocomposite article sealed at
its edges under 4 meters of water with a conductivity of 1
mS/cm or greater.
41. A method of water proofing a surface from contact
with a water source having a conductivity of at least 1 mS/cm
comprising disposing a geocomposite article in contact with the
surface, such that the geotextile fabric is in contact with said
surface, said geocomposite article comprising:
a) at least one water-impermeable membrane layer;
b) at least one active self-healing layer comprising a
water-insoluble high conductivity water-absorbent copolymer
capable of absorbing water having a conductivity of at least 1
mS/cm wherein the copolymer contains about 5-95 mole%
acrylamide; about 5-95 mole% acrylate; and about 5-95 mole
% acrylic acid.
Claims 21 and 31, the only other independent claims on appeal, recite the
same or similar key limitations highlighted above in reproduced claim 1 (id.
at 19-21).
3
Appeal2015-001052
Application 11/942,638
THE REJECTIONS
The Examiner rejected the claims as follows:
I. Claim 6 under 35 U.S.C. § 112, fourth paragraph, as
failing to further limit the subject matter of claim 4 from
which it depends;
II. Claims 1, 4-6, 8, 10, 11, 13, 20-23, 28, 30, 31, 33, and
41-45 under 35 U.S.C. § 103(a) as unpatentable over
Alexander,4 as evidenced by U.S. Fish & Wildlife
Service: Don Edwards San Francisco Bay,5 in view of
White, 6 Ishizaki et al. (hereinafter "Ishizaki"), 7 and
Kimura et al., 8 as evidenced by Components and Salinity
of Seawater; 9
III. Claims 9, 19, and 29 under 35 U.S.C. § 103(a) as
unpatentable over the same references applied in
Rejection II and further in view ofLevy; 10
IV. Claims 14-16, 32, 36, and 37 under 35 U.S.C. § 103(a)
as unpatentable over the same references applied in
4 US 5,132,021, issued July 21, 1992.
5 U.S. Fish & Wildlife Service: Don Edwards San Francisco Bay,
http://\vww.fws.gov/refuge/Don ___ Edwards ___ San ____ Francisco ____ Bay/habitat.html
(first publication date unknown).
6 US 5,237,945, issued August 24, 1993.
7 EP 1426402 A2, published June 9, 2004.
8 EP 0 450 924 A2, published October 9, 1991.
9 Components and Salinity of Seawater,
http://drake.marin.kl2.ea.us/stuwork/rockwater/the%20salt%20in%20seawa
ter/saltinseawatemg3.htm1 (last visited Nov. 9, 2010).
10 US 5,679,364, issued October 21, 1997.
4
Appeal2015-001052
Application 11/942,638
~ • , • TT ., ro , ., • • ro ~., , ., 1 1 KeJecuon 11 ana runner m view or Lnou et al. ii;
V. Claims 17, 24, and 27 under 35 U.S.C. § 103(a) as
unpatentable over the same references applied in
Rejection II and further in view of Levy and Hardin et
al. 12;
VI. Claims 34 and 35 under 35 U.S.C. § 103(a) as
unpatentable over the same references applied in
Rejection II and further in view of Stark; 13
VII. Claims 38--40 under 35 U.S.C. § 103(a) as unpatentable
over the same references applied in Rejection II and
further in view of Stark and Olsta et al. 14 ; and
VIII. Claims 1, 4-6, 8-11, 13-17, 19-24, and 27--43
provisionally under the judicially-created doctrine of
obviousness-type double patenting as unpatentable over
claims 1--4015 of copending Application 13/077,871.
(Final Act. 7-29; Examiner's Answer delivered electronically on September
18, 2014, hereinafter "Ans.," 2-18.)
11 US 6,737,472 B2, issued May 18, 2004.
12 US 6,802,672 B2, issued October 12, 2004.
13 US 5,501,753, issued March 26, 1996.
14 US 2005/0103707 Al, published May 19, 2005.
15 Although the Examiner identified claims 1--40 of the conflicting
application as the basis for the rejection, claims 2, 6, 9, 11, 16, 23, 25, and
29 were canceled in that application (Application 13/077,871, Appeal Brief
filed June 16, 2014, 20-26).
5
Appeal2015-001052
Application 11/942,638
DISCUSSION
Rejections I & VIII
The Appellants do not contest these rejections on the substantive
merits (Appeal Br. 6, 12). Rather, with respect to Rejection I, the Appellants
state that claim 6 will either be canceled or amended to overcome the
rejection (id. at 6). With respect to Rejection VIII, the Appellants state that
a terminal disclaimer will be filed upon an indication of allowability over the
prior art (id. at 12). Because no amendment and/or terminal disclaimer has
been filed, we summarily affirm Rejections I and VIII.
Re} ections II-VII
A. Claims 1, 4-6, 8-11, 13-17, 19-24, 27-40, & 42-45
The Examiner interprets the recitation "said copolymer having 50-90
wt.% of the particles in the 200µm to 800µm size range and about 10 wt.%
to about 50 wt.% of the particles in the 50µm to 200µm size range" in claim
1 to read on a copolymer in which 100% of the particles are 200 µm in size
(Final Act. 8, 12). The Examiner then determines that the combined
teachings of Alexander and White would have disclosed or suggested an
article as recited in the Appellants' claim 1, except that it would contain
bentonite clay and White's superabsorbent polyacrylate polymer, rather than
the Appellants' specified water-absorbent copolymer containing specified
molar amounts of acrylamide, sodium or potassium or lithium or ammonium
acrylate, and acrylic acid (id. at 9-12). The Examiner further finds that
Ishizaki teaches a water-absorbent copolymer with the same monomeric
constituents in molar percentages within the ranges recited in claim 1 and
that the copolymer particles have a particle size within the range of 200-700
µm (id. at 12). Based on these findings, the Examiner concludes (id. at 13):
6
Appeal2015-001052
Application 11/942,638
[I]t would have been obvious to one of ordinary skill in the art
... to use the particulate water-absorbent resin as taught by
Ishizaki ... as the polyacrylate superabsorbent polymer as
disclosed by modified Alexander motivated by expected success
of providing a water-absorbent layer.
Regarding the "self-healing performance index less than 0.015"
limitation recited in claim 1, the Examiner finds that "the geocomposite
article as taught by modified Alexander would also exhibit a self-healing
performance index less than 0.015" (emphasis added) and that the burden
was shifted to the Appellants to provide evidence to the contrary (id.).
The Appellants contend, inter alia, that Ishizaki "neither discloses nor
suggests 10-50% of the particles in the 50-200µm size" because Ishizaki's
"Table 1 at page 24 shows 1.6 to 3% of the particles have a size smaller than
l 50µm" (Appeal Br. 10). In addition, the Appellants argue that the
Examiner's inherency position with respect to the self-healing performance
index relative to high conductivity water is flawed because the
"DECLARATION OF ivIICHAEL DO NOV AN, PH.D" filed January 6,
2012 (hereinafter "First Donovan Declaration") (Evidence Appendix)
provides evidence that "bentonite, when in contact with sea water, had a
Self-Healing Performance (SHPI) Index of 1.15 vs. Applicants' claimed
SHPI of less than 0.015" (id. at 8). Specifically, the Appellants rely on the
comparative test results summarized in the table found in the First Donovan
Declaration (id. at 8, 10) (citing First Donovan Deel. ,-i 6).
The Examiner responds that the First Donovan Declaration is
unpersuasive because it refers to partially crosslinked copolymers described
in prior art references (US 6,783,802 B2, iss. Aug. 31, 2004, and US
6,777,480, iss. Aug. 17, 2004) that are not relied upon in the rejection and
that the mole percentages recited for the partially crosslinked copolymers
7
Appeal2015-001052
Application 11/942,638
based on these references are outside of those suggested by Ishizaki (Ans.
7). In addition, the Examiner points out that the Declaration provided tests
conducted with 3.5% salt water, whereas the claims (e.g., claim 5) recite
4.5% sea water (id.). Furthermore, the Examiner finds that the showing is
not commensurate in scope with the claims in terms of the amount of the
water-absorbent copolymer in the self-healing layer (id.).
We agree with the Appellants. Alexander discloses an article for
holding and treating water contaminated with one or more water-soluble
contaminants so as to substantially prevent the contaminants from seeping
into ground water supplies disposed below a water hold area (Abst.).
According to Alexander, the article includes a water-holding material such
as a water-swellable clay (e.g., bentonite) for reducing the permeation of the
contaminated water into the soil and a water-holding material containing a
material for adsorbing, absorbing, ion-exchanging, neutralizing, or reaction
with the one or more water-soluble contaminants (id.). Although Alexander
teaches "cross-linked acrylic ... copolymers" as ion-exchange materials, the
ion-exchange materials are included for removing the water-soluble
contaminants (col. 6, 11. 62-66; col. 8, 11. 24-34). Thus, in Alexander, a
water-swellable clay such as bentonite is disclosed as the material that holds
water or swells in the presence of water (col. 4, 11. 28-56; col. 5, 11. 39-53).
White discloses a water barrier fabric filled with a water-absorbent
powdered or granular material (e.g., bentonite) (col. 3, 11. 9-30). White
further teaches that the water-absorbent material may include "bentonite clay
and/or a polyacrylate superabsorbent polymer" (col. 17, 11. 19-25).
Ishizaki discloses water-absorbent resins for use in sanitary materials
such as diapers (,-i,-i 10-11 ). Ishizaki teaches that the resins may be made by
8
Appeal2015-001052
Application 11/942,638
crosslink-polymerizing acrylic acid and/or its salt and then surface-
crosslinking the resultant polymer with a dehydration-reactable crosslinking
agent (iJ 16). According to Ishizaki, the water-absorbent resin may contain
0-50 mol% of acrylic acid, 50-100 mol% of acrylic acid salt, and 0-30
mol% of another monomer such as acrylamide (iJiJ 15, 28-29). Ishizaki
further teaches that the mass-average particle diameter is in the range of 300
to 600 µm and "an average value of less than 5.0 mass% and a standard
deviation of 0 to 0.50 as to a fine powder (smaller than 150 µm) content
which is measured in a number 'n' of analyzed samples= 3" (id. iJ 16).
These teachings in Alexander, White, and Ishizaki are insufficient to
support the Examiner's flawed inherency position. The closest prior art
references-Alexander and White-both disclose water-swellable clay (e.g.,
bentonite) as the primary water-absorbent material. Although these
references suggest the inclusion of other materials including acrylic resins,
they do not disclose the specific water-absorbent copolymer recited in claim
1 and no specific findings are offered to establish that all acrylic resins as
disclosed in these references would necessarily yield the characteristic
recited in the claim. Contrary to the Examiner's stated position (Final Act.
13), the burden did not properly shift to the Appellants to show that
Alexander, when modified in view of the other references, would inherently
possess the self-healing performance index of 0. 015 as specified in claim 1.
That would impermissibly require the Appellants to compare the claimed
invention against the claimed invention. In re Tiffin, 443 F.2d 394, 399
( CCP A 1971) ("The examiner's composite process is appellants' process,
and thus cannot be compared with it.").
9
Appeal2015-001052
Application 11/942,638
Rather, the Appellants can effectively rebut a prima facie case of
obviousness by comparing the claimed invention against the closest prior art.
In re Merchant, 575 F.2d 865, 869 (CCPA 1978).
In our view, they did so here for claim 1. As noted above, the
Appellants attribute the surprising results in terms of waterproofing surfaces
against the penetration of high conductivity water to the use of the particular
copolymer recited in claim 1 (Spec. ,-i 7). The First Donovan Declaration
reasonably supports that assertion. Specifically, the Declaration
demonstrates that a copolymer within the scope of claim 1 (or a combination
thereof with bentonite) exhibited significantly improved self-healing
performance index characteristics (tested with 3.5% salt water) compared to
bentonite alone, which is representative of either Alexander or White, or
bentonite in combination with partially crosslinked acrylic acid/neutralized
acrylic acid (First Donovan Deel. ,-i 6).
We discern no merit in the Examiner's objections to the Declaration
evidence. Although the First Donovan Declaration refers to other prior art
documents (First Donovan Deel. ,-i 5), the described experiments include a
fair comparison between the claimed invention and the applied closest prior
art references (Alexander and White), both of which disclose bentonite as in
the comparative experiment described in the Declaration (id. ,-i 6). In
addition, although the Declaration states that the testing was performed
using 3.5% salt water, as opposed to 4.5% salt water as recited in claim 5,
the Examiner fails to explain why that difference would negate the
surprising or unexpected results shown in the Declaration. Finally, the
Examiner's position that the showing is not commensurate in scope with the
claims is not well-founded because, as the Appellants point out (Reply Brief
10
Appeal2015-001052
Application 11/942,638
filed October 14, 2014 at 3), claim 1 limits the article to only those that
exhibit the specified self-healing performance index of "less than 0.015"
(Appeal Br. 17).
In addition to the Examiner's flawed inherency position, we cannot
agree with the Examiner (Final Act. 8, 12) that Ishizaki discloses (or would
have suggested) 100% of the copolymer particles to be 200 µm in size.
Ishizaki describes particles having a distribution of particle sizes (iJiJ 16,
187). The Examiner does not articulate a sufficient reason why a person
having ordinary skill in the art would have undertaken the additional steps
(if possible) to ensure 100% of the particles are 200 µm in size or to use
copolymer particles having the size distributions specified in the claims.
For these reasons, we cannot uphold the§ 103 rejection of claims 1,
4-6, 8-11, 13-17, 19-24, 27--40, and 42--45.
B. Claim 41
Claim 41, however, stands on different footing. Claim 41, unlike
claim 1, does not require any particular self-healing performance index or
any particular size distribution for the copolymer particles. Therefore, we
share the Examiner's view that the showing in the First Donovan
Declaration is not commensurate in scope with the claim.
The Appellants argue that Ishizaki "provides a long, at least 26
member, list of third monomers capable of copolymerization to form water-
insoluble (cross-linked) copolymers at paragraph [0028] - one of which is
acrylamide - but provide no examples of a copolymer that includes
acrylamide, or any other third monomer" (Appeal Br. 9). A prior art
reference disclosure, however, is not limited to its working examples.
Merck & Co. Inc. v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
11
Appeal2015-001052
Application 11/942,638
("[I]n a section 103 inquiry, 'the fact that a specific [embodiment] is taught
to be preferred is not controlling, since all disclosures of the prior art,
including unpreferred embodiments, must be considered."') (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)). Furthermore, the mere fact
" [ t ]hat the [reference] discloses a multitude of effective combinations does
not render any particular formulation less obvious." Id. at 807.
The Appellants also argue that it would not have been obvious to
replace the (meth)acrylic copolymers described in Alexander with Ishizaki's
water-absorbent copolymers because Alexander's copolymers are described
as ion-exchange resins designed to remove contaminants, not water-
absorbent resins (Appeal Br. 10). We do not find this argument persuasive
because Alexander discloses "water-holding materials" generally including
water-absorbing materials (Abst.). In addition, White teaches that a
superabsorbent polyacrylate copolymer may be included (col. 17, 11. 19-25).
For these reasons, we uphold the rejection of claim 41.
SUMMARY
Rejections I and VIII are affirmed. Rejection II is affirmed as to
claim 41, but reversed as to claims 1, 4-6, 8, 10, 11, 13, 20-23, 28, 30, 31,
33, and 42-45. Rejections III-VII are reversed.
Therefore, the Examiner's final decision to reject the appealed claims
is affirmed as to claims 1, 4-6, 8-11, 13-17, 19-24, and 27--43, but reversed
as to claims 44 and 45.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l).
AFFIRMED-IN-PART
12