Ex Parte Bury et al

Board of Patent Appeals and Interferences

May 12, 2011

12132204 (B.P.A.I. May. 12, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/132,204 06/03/2008 Rafael Bury 4148/2033.79836 7254
45455 7590 05/12/2011
GREER, BURNS & CRAIN, LTD.
300 SOUTH WACKER DRIVE
SUITE 2500
CHICAGO, IL 60603
EXAMINER
KOLLIAS, ALEXANDER C
ART UNIT PAPER NUMBER
1725
MAIL DATE DELIVERY MODE
05/12/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RAFAEL BURY and DONGHONG LI
__________

Appeal 2010-008208
Application 12/132,204
Technology Center 1700
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and ERIC GRIMES,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
decorative composition. The Examiner has rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The Specification discloses a decorative composition that is “durable
and less brittle compared to other plasters and joint compounds. It can be
shaped and sanded to a very smooth finish without chipping or crumbling”
Appeal 2010-08208
Application 12/132,204

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(Spec. 3: 17-20). The Specification discloses that the “composition is
substantially free of stucco, cement or other hydraulic component where the
setting action would act as the binder for the composition” (id. at 3: 8-10).
Claims 1-20 are on appeal. Claims 1 and 17 are representative and read
as follows:
1. A decorative composition comprising:
a first filler in an amount of at least 50% by weight;
a polymeric resin;
a coalescent solvent for film-formation of said polymeric
resin; and
water in amounts of about 10% to about 50% by weight,
wherein said decorative composition is substantially free of hydraulic
components.

17. A decorative composition consisting essentially of calcium
carbonate in an amount of at least 50% by weight;
a polymeric resin;
a coalescent solvent for film formation of said polymeric resin;
a biocide;
a second filler;
a thickener; and
water in amounts of about 10% to about 25% by weight.

The claims stand rejected under 35 U.S.C. § 103(a) as follows:
• Claims 1, 2 and 5-20 in view of Negri,1 Kyte,2 and Nass;3 and
• Claims 3 and 4 in view of Negri, Kyte, Nass, and Ash.4

1 Negri et al., US 2007/0116879, May 24, 2007
2 Kyte et al., US 2005/0065240, Mar. 24, 2005
3 Nass et al., US 5,741,844, Apr. 21, 1998
4 Michael and Irene Ash, The Handbook of Preservatives, Synapse Information
Resources, Inc., page 231 (2004).
Appeal 2010-08208
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I.
Issue
The Examiner has rejected claims 1, 2 and 5-20 under 35 U.S.C.
§ 103(a) as being obvious in view of Negri, Kyte, and Nass. With the
exception of claim 17, the claims have not been argued separately and
therefore stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that Negri discloses “a decorative composition
comprising fillers such as calcium carbonate[,] … a latex emulsion media
including acrylic polymer,” and “15 wt % to 55 wt % water” (Answer 3). The
Examiner finds that, although Negri’s composition does not include at least
50% filler (id. at 4), Kyte “discloses a composition comprising a first and
second mineral filler,” which can both be calcium carbonate and each of which
comprises 20-80 wt % of the composition (id. at 4).
The Examiner finds that Nass “discloses a composition comprising
emulsion binding polymer such as acrylic latex polymers … [and] a latex
coalescence producing agent known under the trade name TEXANOL which
… improve[s] the physical and mechanical properties of the film cast from the
latex” (id. at 5). The Examiner concludes that “it would have been obvious to
one of ordinary skill in the art … to adjust the amount of filler disclosed by
Kyte in the composition of Negri” and to include the coalescence agent taught
by Nass because of the advantages taught by that reference (id. at 5).
Appellants contend that one of skill in the art would not have been
motivated to modify the Negri decorative composition by increasing the
amount of filler (calcium carbonate) in view of Kyte (Appeal Br. 6-9) or by
adding a coalescent solvent in view of Nass (id. at 10-11).
Appeal 2010-08208
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The issues with respect to this rejection are: Does the evidence of record
support the Examiner’s conclusions that one of ordinary skill in the art would
have considered it obvious to modify the Negri decorative composition, with a
reasonable expectation of success, by increasing the amount of calcium
carbonate filler and by adding a coalescent solvent?
Findings of Fact
1. Negri discloses “a decorative effect coating composition capable of
producing a multi-colored and/or multi-shaded appearance” (Negri, abstract).
2. Negri discloses that the coating composition comprises “a first
tinting colorant, a thickener, a surfactant, and a binder, which are generally
dispersed (or dissolved) in one or more conventional organic solvents and/or
an aqueous solution” (id. at 3: ¶0018).
3. Negri discloses that a “non-tinting filler/base pigment is also
typically included in the coating compositions” (id.).
4. Negri discloses that “[e]xemplary non-tinting filler/base pigments …
include but are not limited to talcs, gypsums (i.e., hydrated calcium sulphates),
calcium carbonates…” (id. at 7: ¶0048).
5. Negri discloses that the “coating composition typically comprises
from about 1 weight percent (‘wt. %’) to about 45 wt. % ... of the non-tinting
filler/base pigment(s)” (id. at 7: ¶0049).
6. Negri discloses that the “binder can be any suitable film-forming
resin capable of forming a solid film and binding pigments together to the
surface to which the coating composition is applied. Suitable binders include
… latex emulsion media.” (Id. at 6: ¶0045.)
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7. Negri discloses that “the coating composition may contain from
about 15 wt. % to about 55 wt. % ... of water” (id. at 8: ¶0057).
8. Negri discloses that the “coating compositions may optionally
contain other additives including but not limited to biocides, fungicides,” etc.
(id. at 7: ¶0055).
9. Kyte discloses a grout composition comprising first and second
mineral fillers, “microspheres, and an air-dryable polymeric resin” (id. at
1: ¶0009).
10. Kyte discloses that the “first and second mineral fillers can be the
same mineral (e.g., calcium carbonate) or different minerals” (id. at 1: ¶0012).
11. Kyte discloses that the “overall mineral filler content … should be
in the range of 30% to 80% by weight, and is preferably 55% to 65% by
weight” (id.).
12. Nass discloses a “coating composition giving a fresco-like
appearance when mixed with a cement based plaster [that] comprises a latex
polymer binder, acrylic polymer binder, or two acrylic polymer cross-linking
binders, particulate matter and chemical agents” (Nass, abstract).
13. Nass discloses that a “latex coalescence-producing agent, such as
TEXANOL … can be used with the binding polymer(s) of the present
invention … to obtain cohesiveness (compaction, hardness)” (id. at col. 4, ll.
59-65).
14. Nass discloses that a “formulation additive capable of enhancing
coalescence of latex particles improves the physical and mechanical properties
of film cast from the latex” (id. at col. 4, ll. 65-67).
Appeal 2010-08208
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Principles of Law
“By using the term ‘consisting essentially of,’ the drafter signals that the
invention necessarily includes the listed ingredients and is open to unlisted
ingredients that do not materially affect the basic and novel properties of the
invention.” PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed.
Cir. 1998).
“It is axiomatic that claims are given their broadest reasonable
construction consistent with the specification. . . . [A]n applicant who has not
clearly limited his claims is in a weak position to assert a narrow construction.
Therefore, in construing the phrase ‘consisting essentially of’ in appellants’
claims, it is necessary and proper to determine whether their specification
reasonably supports a construction that would include additives such as [those
in the prior art].” In re Herz, 537 F.2d 549, 551 (CCPA 1976).
Analysis
Claim 1 is directed to a decorative composition comprising at least 50%
by weight filler, a polymeric resin, a coalescent solvent, and 10-50% by weight
water. Claim 1 also requires that the decorative composition is substantially
free of hydraulic components.
Negri discloses a decorative coating composition that comprises a filler
(calcium carbonate), a binder (a film-forming resin such as latex emulsion),
and 15-55 wt% water. Kyte discloses a grout composition that contains a
polymeric resin and filler(s) that may be calcium carbonate in an amount of 30-
80% by weight. Nass discloses that including a “latex coalescence-producing
agent” in a coating composition that contains a latex polymer binder improves
the properties of film cast from the latex.
Appeal 2010-08208
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In view of these disclosures, it would have been obvious to one of skill
in the art to modify the Negri decorative composition to increase amount of
calcium carbonate to at least 50% by weight because (a) the difference between
Negri’s “about 45 wt.%” and the claimed 50 wt% is minimal and (b) Kyte
discloses similar compositions with up to 80 wt% calcium carbonate. Further,
it would have been obvious to one of skill in the art to modify Negri’s
composition to contain Nass’s coalescence-producing agent because Nass
discloses that doing so improves polymer film formation.
Appellants argue that those of skill in the art would not have been
motivated to modify Negri’s amount of the calcium carbonate based on Kyte
because “Kyte is directed towards caulks and grouts that are used to fill spaces
between tiles” rather than decorative compositions (Appeal Br. 6-9).
This argument is not persuasive. Claim 1 requires at least 50% by
weight filler (e.g., calcium carbonate). Kyte discloses using up to 80 wt%
calcium carbonate in grout compositions and Negri discloses a decorative
composition comprising up to “about 45 wt. %” filler (e.g., calcium carbonate)
(FF 4-5). We agree with the Examiner (Answer 7) that the range taught by
Negri is so close to the claimed amount that one of skill in the art would have
found it obvious to slightly increase the amount of calcium carbonate in
Negri’s composition, especially in view of Kyte’s teaching of higher amounts
in a similar composition, albeit one for use as grout rather than a coating
composition.
Appellants also argue that one of skill in the art would not have been
motivated to combine the coalescent solvent of Nass with the Negri
composition because Nass discloses that the composition comprising the
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polymeric resin and the coalescent solvent is for use as an additive for a plaster
that contains a hydraulic component (Appeal Br. 10-11).
This argument is not persuasive. Although Nass discloses that its final
composition comprises a hydraulic component, it also discloses that the
function of the coalescent solvent is to improve the properties of the polymer
formed from the latex resin (FFs 13, 14). Nass does not disclose that this
function requires the presence of a hydraulic component. Therefore, a person
of ordinary skill in the art would reasonably expect the coalescent solvent to
have the same function in compositions that contain a polymer-forming resin
without a hydraulic component.
Appellants also argue that the Negri composition “contains numerous
raw materials. To arrive at the composition disclosed and claimed in the
Application, not only would additional materials have to be incorporated but
numerous raw materials would also have to be removed.” (Appeal Br. 12.)
This argument is not persuasive. Claim 1 uses the transition term
“comprising” and therefore is not limited to the specified claim components.
Thus, the removal of additional materials from the Negri composition would
not be required to meet the limitations of claim 1.
With regard to claim 17, Appellants argue that the claim’s “consisting
essentially of” language limits the composition to the specified materials and
those that do not materially affect the basic and novel characteristics of the
claimed invention (Appeal Br. 13-14). Appellants argue that “if Negri were to
be the starting point for one skilled in the art … then the resulting product
would be materially different than the composition claimed” (id. at 14).
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This argument is also not persuasive. The Specification does not
expressly define the basic and novel properties of the invention. In addition,
although the Specification discloses that the disclosed composition does not
contain hydraulic components (Spec. 3: 8-10), it discloses that the composition
can contain other ingredients such as a color and a humectant (id. at 3: 20, 4:
13-14). Thus, we conclude that the composition of claim 17 is open to the
additional ingredients of Negri’s composition.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that one of
skill in the art would have considered it obvious to modify the Negri decorative
composition by increasing the amount of calcium carbonate filler and by
adding a coalescent solvent, with a reasonable expectation of success.
II.
The Examiner has rejected claims 3 and 4 under 35 U.S.C. § 103(a) as
being obvious in view of Negri, Kyte, Nass, and Ash. The Examiner finds that
the combination of Negri, Kyte, and Nass would have made obvious the
composition of claim 1, as discussed above, and that Ash would have made
obvious the additional limitations of claims 3 and 4 (Answer 6). We agree
with the Examiner’s reasoning and conclusion.
Appellants do not dispute that Ash would have suggested the limitations
added to claim 1 by claims 3 and 4, but contend that Ash does not cure the
deficiencies of Negri, Kyte, and Nass in suggesting the invention of claim 1
(Appeal Br. 17-18).
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Application 12/132,204

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This argument is not persuasive because, for the reasons discussed
above, we conclude that Negri, Kyte, and Nass would have made obvious the
invention of claim 1 to one of ordinary skill in the art.
SUMMARY
We affirm the rejection of claims 1-20 under 35 U.S.C. § 103(a).
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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