Ex Parte Dong et al

Patent Trial and Appeal Board

Jul 26, 2017

14368641 (P.T.A.B. Jul. 26, 2017)

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.
14/368,641 06/25/2014 Chengbin Dong 72177-US-PCT 3873
21898 7590 07/28/2017
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
HERRING, BRENT W
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
07/28/2017 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHENGBIN DONG and JONAS L. LU
Appeal 2016-005128
Application 14/368,6411
Technology Center 3600
Before JOSEPH L. DIXON, SCOTT B. HOWARD, and SCOTT E. BAIN,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—10, which constitute all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Dow Global Technologies LLC as the real party in
interest. Br. 2.
Appeal 2016-005128
Application 14/368,641
STATEMENT OF THE CASE
The Claimed Invention
Appellants’ invention relates to tile grout cement compositions, and
specifically, to such compositions that limit “efflorescence.” Spec. 1. The
Specification describes efflorescence as a “whitish deposit on the surface of
the tile grout” that is a serious “aesthetic problem.” Id. Claims 1 and 10 are
independent. Claim 1 is illustrative of the invention and subject matter on
appeal, and reads as follows:
1. A low efflorescence tile grout composition comprising a
dry mix of a) Portland cement, b) sand or aggregate, c) from 0.01
to 1.0 wt. % [weight percent], based on total solids in the dry
mix, of an aluminum cement, d) a fatty acid or a fatty acid salt of
an alkali metal, an alkaline earth metal, or a divalent metal, and
e) metakaolin.
Br. 7 (Claims App.).
The Rejection on Appeal
Claims 1—10 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Eberwein et al. (US 2013/0098271 Al; publ. Apr.
25,2013). Final Act. 3.
ANALYSIS
We have reviewed the Examiner’s rejection in light of the arguments
raised in the Brief. On the record before us, we do not sustain the
Examiner’s rejection.
Appellants argue the Examiner erred in finding Eberwein teaches or
suggests a tile grout composition including “aluminum cement” at a weight
percent of “0.01 to 1.0 [] based on total solids in the dry mix,” as recited in
claim 1. Br. 4—5. Specifically, Appellants argue that although Eberwein
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Application 14/368,641
teaches aluminum cement in a composition, it does not teach or suggest
anything regarding the amount of such aluminum cement, and therefore does
not teach or suggest the weight range (or anything close to it) recited in
Appellants’ claim 1. Id. at 5. We are persuaded by Appellants’ argument.
The Examiner relies on Eberwein paragraphs 32—33, 35—36, and 123,
which specify the individual elements recited in claim 1 including “portland
cement,” “aggregate options,” “aluminum cement,” “sodium oleate,”
“metakaolin,” and “filler with water.” Ans. 3. The Examiner acknowledges
Eberwein does “wot specify[] the weight percentage of the aluminum
cement” in the dry mixture. Id. (emphasis added). The Examiner finds,
nevertheless, it “would be obvious to a person of ordinary skill in the art at
the time of the invention to try different quantities” of the foregoing
elements so as to preserve low efflorescence. Id. (citing MPEP §§2141,
2144). Quoting the MPEP, the Examiner states “differences in
concentration . . . will not support patentability of subject matter
encompassed by the prior art unless there is evidence indicating such
concentration ... is critical,” which “has not been established by the
appellant.” Ans. 3^4.
Where an applicant seeks to differentiate a claimed range from a
range in the prior art, or to “optimize certain variables by selecting narrow
ranges from broader ranges disclosed in the prior art,” the applicant
generally must show the claimed range is critical, such as by demonstrating
“unexpected results” commensurate in scope with the claimed range. In re
Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003); see also In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990) (applicant generally must show
“critical” difference between claimed range and prior art range). In the
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Application 14/368,641
present case, however, the Examiner cites no relevant weight range or
concentration of aluminum cement taught or suggested in the cited prior art.2
The Examiner has not sufficiently explained, on the record before us, what
“would lead [one of ordinary skill in the art] to expect success in using so
little aluminum cement, much less any guidance as to which of the
[countless] possibilities in Eberwein would be reasonable likely to succeed
in making a low efflorescence tile grout composition.” Br. 5.
Accordingly, on the record before us, we cannot sustain the
obviousness rejection of independent claim 1. Independent claim 10 recites
similar limitations. Consequently, we cannot sustain the obviousness
rejection of independent claim 10 for the same reasons. We further do not
sustain the rejection of claims 2—9, which depend from claim 1 and therefore
include the same disputed limitation.
DECISION
We REVERSE the Examiner’s rejection of claims 1—10.
REVERSED
2 Eberwein (at 133) does describe a “3 to 50%” weight of the mixture, and 1
to 15% hydrated lime, but on this record, the Examiner does not explain how
any of these ranges would pertain to the weight proportion of the disputed
element, i.e., aluminum cement.
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