Ex Parte Bichler et al

Patent Trial and Appeal Board

Sep 25, 2018

14347118 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/347,118 03/25/2014
23575 7590 09/27/2018
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
FIRST NAMED INVENTOR
Manfred Bichler
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.
BCS.P71593 1050
EXAMINER
CHANG, JOSEPHINE L
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
docket@patentandtm.com
cortese@patentandtm.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANFRED BICHLER,
MICHAEL SCHINABECK, NORBERT STEIDL,
WERNER STRAUSS, MARKUS MAIER, and MARKUS WILDE
Appeal2017-010345
Application 14/34 7,118
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
January 9, 2017 decision finally rejecting claims 1-10, 12, and 15, which
constitute all the claims pending in this application. Claims 11, 13, 14, and 17
are withdrawn from consideration as being directed to a non-elected
invention. 2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
1 Appellants state that the real party in interest is BASF Construction Solutions
GmbH (Appeal Br. 2).
2 Appellants request correction of the status of claim 17 (Appeal Br. 6). The
withdrawal of a claim from consideration pursuant to a restriction or election
requirement is a petitionable matter not subject to review by the Board. See
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Application 14/34 7, 118
We affirm-in-part.
CLAIMED SUBJECT MATTER
Appellants' invention is directed to cement powder compositions for
rapid suspension and a process for producing a liquid component thereof
(Spec. 1: 1; 1:6-7).
Independent claims 1 and 15 are reproduced below from the Claims
Appendix of the Appeal Brief (emphasis added):
1. A pulverulent composition produced by bringing a
powder which comprises at least one inorganic binder into
contact with from 0.01 to 10% by weight, based on the total
mass of the composition, of a liquid component comprising at
least one copolymer obtained by polymerization of a mixture of
monomers compnsmg
(I) at least one ethylenically unsaturated monomer which
comprises at least one radical selected from the group
consisting of carboxylic acid, carboxylic acid salt,
carboxylic esters, carboxamide, carboxylic anhydride and
carboximide and
(II) at least one ethylenically unsaturated monomer having a
polyalkylene oxide radical,
where the liquid component contains at least 1 % by weight of
the at least one copolymer and at least 30% by weight of an
organic solvent; wherein said bringing into contact occurs prior
to adding make-up water to the powder.
15. A process for producing a liquid component comprising
utilizing at least 30% by weight of an organic solvent, not more
In re Berger, 279 F.3d 975, 984--85 (Fed. Cir. 2002) (petitionable issues are
not subject to review by the Board). Accordingly, we cannot act on this
request.
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Application 14/34 7, 118
than 30% by weight of water and a copolymer obtained by
polymerization of a mixture of monomers comprising
(I) at least one ethylenically unsaturated monomer which
comprises at least one radical selected from the group
consisting of carboxylic acid, carboxylic acid salt, carboxylic
ester, carboxamide, carboxylic anhydride and carboximide and
(II) at least one ethylenically unsaturated monomer
having a polyalkylene ether radical, characterized in that the
polymerization of the monomers is carried out in a water
containing solvent, where the water content of the total reaction
mixture is more than 10% by weight, the polymerization
product is admixed with an organic solvent and water is
removed.
DISCUSSION
The only rejection on appeal is the rejection to claims 1-10, 12, and
15 as obvious over Yamashita. 3 Dependent claims 2-10 and 12 will stand or
fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). Claim 15 will be addressed
separately.
Claim 1
There is no dispute that claim 1 is a product-by-process claim (Ans. 5;
Appeal Br. 9).
In rejecting claim 1, the Examiner finds that Yamashita discloses or
suggests each step of the claimed process for making the pulverulent
composition (Ans. 2-3). The Examiner further finds that although
Yamashita does not disclose that the "bringing [ a powder] into contact [ with
a liquid component] occurs prior to adding make-up water to the powder,"
Yamashita discloses that the composition disclosed therein includes water.
3 Yamashita et al., EP 1 437 330 Al, published July 14, 2004.
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Id. at 3. According to the Examiner's construction of the claim, "it is not
clear whether the recited 'make-up water' is a component of the claimed
pulverulent composition." Id. at 5.
Thus, the Examiner determined that a prima facie case of obviousness
exists "[g]iven that Yamashita discloses a cement dispersant containing
copolymer with an organic solvent and combining the same with a cement."
Id. at 3. According to the Examiner, "it would have been obvious to a
person having ordinary skill in the art at the time of invention to provide a
pulverulent composition as claimed in order to provide high dispersibility[,]
even when added in a small amount to a cement composition." Id.
Appellants argue that the rejection of claim 1 should be reversed
because "Yamashita discloses adding its dispersant to the mixing water, and
subsequently adding this aqueous mixture to the inorganic binder system"
(Appeal Br. 8). Appellants further argue that claim 1 is distinguished from
Yamashita' s product because the ordinary skilled artisan would understand
that "the claimed pulverulent composition is a pulverulent raw material." Id.
at 9. Appellants contend that "[b ]ased on the plain reading of the claim
language, it is clear that 'make-up water' is not a component of the claimed
pulverulent composition" (Reply Br. 3).
We begin by interpreting the language of claim 1. In particular, we
construe the phrase "[a] pulverulent composition produced by bringing a
powder ... into contact with ... a liquid component ... wherein said
bringing into contact occurs prior to adding make-up water to the powder"
( emphasis added).
During prosecution, the PTO gives the language of the proposed
claims "the broadest reasonable meaning of the words in their ordinary
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usage as they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description contained in the applicant's
specification." In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir. 1997).
In support of Appellants' position, the Specification provides that
"[t]he pulverulent composition should ... preferably be present in dry form,
which means that it has a water content determined by the Karl-Fischer
method of less than 5% by weight, preferably less than 1 % by 40 weight and
particularly preferably less than 0.1 % by weight" (Spec. 8:37--40).
Furthermore, Appellants' arguments are persuasive that the "term 'make-up
water' is widely recognized and well-known to those of ordinary skill in the
art as referring to the water that is added to a cement mix in order to form
hydration reaction products (i.e., concrete)" (Reply Br. 4). 4 See K-2 Corp. v.
Salomon S.A., 191 F.3d 1356, 1365 (Fed. Cir. 1999) ("claim construction is
firmly anchored in reality by the understanding of those of ordinary skill in
the art").
Therefore, we determine that claim 1 requires that the pulverulent
composition subject matter encompasses only two components: (1) "a
powder" and (2) "a liquid component." The broadest reasonable
interpretation of the phrase "wherein ... bringing into contact [ the powder
and the liquid component] occurs prior to adding make-up water to the
powder" is that the claimed "make-up water" is not a component of the
pulverulent composition of claim 1.
4 See, e.g., Macauley, Jr., US 3,997,434, issued Dec. 14, 1976 (Abstract
disclosing a concrete reclamation system in which clarified wash water is
provided as make-up water for mixing with cement).
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The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability."). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). In this instance, the Examiner has not shown that the
bringing of a powder in contact with a liquid component and subsequent
make-up water addition was taught or suggested by the cited prior art, as
Yamashita does not teach such a process.
Therefore, Appellants have persuasively argued that the facts and
reasons relied on by the Examiner are insufficient to establish a prima facie
case of obviousness as to independent claim 1. The rejection of dependent
claims 2-10 and 12 are reversed for the same reason as independent claim 1.
Accordingly, we reverse the rejection of claims 1-10 and 12 for the reasons
set forth above.
Claim 15
We note that for claim 15 on appeal, Appellants' briefs do not include
any particularized argument based on that claim's limitations. Rather,
Appellants' arguments urging reversal of claim 15 include a bare assertion
that "Yamashita fails to disclose or suggest" the limitations recited therein.
Appeal Br. 12. Appellants then state that the rejection of the claim should
be reversed. Id. However, Appellants fail to identify reversible error in the
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Examiner's findings that Yamashita discloses or suggests the claimed
process for producing a liquid component. Ans. 9. Claim 15 does not recite
the phrase "[a] pulverulent composition produced by bringing a powder ...
into contact with ... a liquid component ... wherein said bringing into
contact occurs prior to adding make-up water to the powder." Thus, the
arguments we found persuasive in showing reversible error in the rejection
of claim 1 are not pertinent with respect to claim 15. Accordingly, we
affirm the rejection of claim 15 for the reasons set forth and explained in the
Examiner's Answer.
CONCLUSION
We REVERSE the rejection of claims 1-10 and 12 under 35 U.S.C.
§103(a) as obvious over Yamashita.
We AFFIRM the rejection of claim 15 under 35 U.S.C. § 103(a) as
obvious over Yamashita.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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