Ex Parte Geeraert

Patent Trial and Appeal Board

Jun 1, 2016

12280685 (P.T.A.B. Jun. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/280,685 08/26/2008
466 7590
YOUNG & THOMPSON
209 Madison Street
Suite 500
Alexandria, VA 22314
06/03/2016
FIRST NAMED INVENTOR
Emmanuel Geeraert
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.
0579-1199 3541
EXAMINER
HEINCER, LIAM J
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
06/03/2016 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):
DocketingDept@young-thompson.com
yandtpair@firs ttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMMANUEL GEERAER T
Appeal2015-000575
Application 12/280,685
Technology Center 1700
Before CATHERINE Q. TIMM, BRIAND. RANGE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-3, 6-15, 18-22, 24, 25, 27, 29, and 31. We have
jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellant, the real party in interest is BPB LTD. Appeal
Br. 1.
Appeal2015-000575
Application 12/280,685
STATEMENT OF CASE
Appellant describes the present invention as relating to waterproofing
a gypsum-based product formed from a plaster-based composition with the
advantageous inclusion of pregelified starch. Spec. 1:5-8; 2: 11-20; Appeal
Br. 5. The composition could be used to manufacture extruded or molded
plaster blocks or boards. Spec. 1 :5-8.
Claims 1-3, 6-15, 18-22, 24, 25, 27, 29, and 31 stand rejected and are
the subject of appeal. Appeal Br. 1; Final Act. 1. Claim 23 has been
allowed. Final Act. 1. Claim 12, reproduced below, is illustrative of the
claimed subject matter:
12. A waterproofed plaster-based composition, comprising a
waterproofing agent consisting of:
a polysiloxane; and
a pregelified starch,
wherein said compound consisting of a polysiloxane is present
in the composition in a ratio of 0.05% to 0.25% by \veight to the
plaster powder.
Appeal Br.2 21-22 (Claims Appendix).
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
Goss et al.
(hereinafter "Goss")
Wang et al.
(hereinafter "Wang")
Franzoni et al.
(hereinafter "Franzoni")
5,836,263
2007 /0022913 Al
WO 99/50200
Nov. 17, 1998
Feb. 1, 2007
Oct. 7, 1999
2 In this decision, we refer to the Final Office Action appealed from, filed
June 26, 2013 ("Final Act."), the Appeal Brief filed June 3, 2014 ("Appeal
Br."), and the Examiner's Answer filed July 31, 2014 ("Ans.").
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Application 12/280,685
REJECTIONS
The Examiner made the following rejections:
Rejection 1. The Examiner rejected claims 1-3, 6-9, 12-14, 18, 19,
24, 25, and 27 under 35 U.S.C. § 103 as unpatentable over Wang as
evidenced by Goss. Ans. 2, 6, 9, 10, 14.
Rejection 2. The Examiner rejected claims 10, 11, 15, 29, and 31
under 35 U.S.C. § 103 as unpatentable over Wang. Ans. 4, 8.
Rejection 3. The Examiner rejected claims 20-22 under 35 U.S.C.
§ 103 as unpatentable over Wang in view of Franzoni. Ans. 11.
ANALYSIS
Rejection 1. The Examiner rejected claims 1-3, 6-9, 12-14, 18, 19,
24, 25, and 27 as obvious over Wang as evidenced by Goss. Appellant
argues these claims as a group. Appeal Br. 5-10. We therefore limit our
discussion to independent claim 12. Claims 1-3, 6-9, 13, 14, 18, 19, 24, 25,
and 27 stand or fall with claim 12. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
We sustain the Examiner's§ 103 rejection based on the findings of
fact, conclusions of law, and rebuttals to arguments well-expressed by the
Examiner in the Final Action and in the Answer. We provide additional
comments below for emphasis.
Appellant's primary argument is that its claims are directed to a
compound having 0.05% to 0.25% polysiloxane by weight to the plaster
powder, but the closest range explicitly taught by Wang is from "about 0.3
to 1.0%" polysiloxane. Appeal Br. 5---6. Appellant further argues that Wang
teaches away from using less polysiloxane by teaching a preferable range
from 0.4 to about 0.8% polysiloxane. Id. at 7-8.
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Application 12/280,685
In the context of describing an embodiment, Wang refers to percent
polysiloxane3 in the paragraph reproduced below:
The gypsum-based water resistant articles of the present invention are
preferably made with a solventless methyl hydrogen siloxane fluid
sold under the name SILRES BS 94 by Wacker-Chemie GmbH
(Munich, Germany) as the siloxane. The manufacturer indicates this
product is a siloxane fluid containing no water or solvents. It is
contemplated that about 0.3 to 1.0% of the BS 94 siloxane may be
used, based on the weight of the dry ingredients. It is preferred to use
from about 0.4 to about 0.8% of the siloxane based on the dry stucco
weight.
Wang i-f 22 (emphasis added). Notably, the passage only provides
percentages to the nearest tenth of a percent. Therefore, due to rounding, it
appears that about 0.3% could reasonably include 0.25% and/or slightly
above 0.25% percent. Cf, e.g., Pall Corp. v. Micron Separations, Inc., 66
F.3d 1211, 1217 (Fed. Cir. 1995) ("The use of the word 'about,' avoids a
strict numerical boundary to the specified parameter. Its range must be
interpreted in its technologic and stylistic context."); In re vVoodrujf, 919
F.2d 1575, 1577 (Fed. Cir. 1990) (holding that prior art teaching of "about
1-5%" allows for concentrations "slightly above 5%"). Thus, we agree with
the Examiner that values below 0.3 are considered to be part of the range
and the difference between the claimed range and range disclosed in Wang
must be less than 0.05%. Ans. 15. Indeed, the embodiment of Wang is best
understood as either overlapping or very nearly overlapping the claimed
range of 0.05 to 0.25%.
3 Wang refers to "siloxane" rather than the recited "polysiloxane."
Applicant, however, does not appear to dispute that these two terms recite an
equivalent additive. Appeal Br. 8 (arguing that Wang encourages use of
"more polysiloxane"). We refer to the two terms interchangeably in this
opm10n.
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Application 12/280,685
Our reviewing court has held that "even a slight overlap in range
establishes a prima facie case of obviousness." See In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003); see also, e.g., In re Woodruff, 919 F.2d at 1577
(concluding that claimed invention was rendered obvious by prior art
reference whose disclosed range ("about 1-5%" carbon monoxide) abutted
claimed range ("more than 5% to 25%" carbon monoxide)). Thus,
Appellant's argument that the claimed lower range of 0.05% substantially
differs from Wang's lower range of about 0.3% (Appeal Br. 6) urges a
legally erroneous analysis. To the extent the claimed range (with a top value
of 0.25%) and Wang range (with a lower value of about 0.3%) overlap
slightly, prima facie obviousness is established.
Alternatively, even if Wang's range going down to "about 0.3%"
merely comes close to but does not overlap the claimed upper range of
0.25%, our conclusion would not be altered. As our reviewing court has
stated, "a prima facie case of obviousness exists when the claimed range and
the prior art range do not overlap but are close enough such that one skilled
in the art would have expected them to have the same properties." In re
Peterson, 315 F.3d at 1329 (citing Titanium Metals Corp. v. Banner, 778
F.2d 778, 783 (Fed. Cir. 1985)). In Titanium Metals Corp. of Am. v. Banner,
778 F.2d at 782-783, the court held that a claim requiring 0.3%
molybdenum (Mo) and 0.8% nickel (Ni) was obvious in view of prior art
alloys having 0.25% molybdenum and 0.75% nickel and 0.31 %
molybdenum and 0.94% nickel because "[t]he proportions are so close that
prima facie one skilled in the art would have expected [the claimed alloys] to
have the same properties." We note that the notion of "same" in Titanium
Metals must be understood as meaning requiring not only strictly identical
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Application 12/280,685
properties but also similar properties. One of skill in the art would know or
would reasonably expect, for example, 0.3% versus 0.31 % molybdenum is
not strictly the same and will not result in precisely the same properties (i.e.,
it would be impossible for differing composition percentages to have exactly
zero effect on melting point, density, etc.).
The decision inin re Dillon, 919 F.2d 688, 692---693 (Fed. Cir. 1990)
(en bane) further confirms the reasoning of Titanium Metals. There, the
court reaffirmed
that structural similarity between claimed and prior art subject
matter, proved by combining references or otherwise, where the
prior art gives reason or motivation to make the claimed
compositions, creates a prima facie case of obviousness, and
that the burden (and opportunity) then falls on an applicant to
rebut that prima facie case.
Id. Rebuttal could consist of "showing that the claimed compositions
possess unexpectedly improved properties or properties that the prior art
does not have." Id. The claims at issue there were thus obvious because
"[t]he art provided the motivation to make the compositions in the
expectation that they would have similar properties." Id. at 693 (emphasis
added). Thus, just as in Titanium Metals involving similar (close) ranges of
the same materials claimed matter was obvious where one skilled in the art
would have expected the claimed matter and the prior art to have similar
properties due to the chemical structural similarities.
Here, the range of difference is narrow (a difference of 0 to 0.05% as
compared to Wang's acceptable 0.7% range). Thus, one would expect
material having the claimed 0.25% polysiloxane by weight to the plaster
powder and the prior art Wang material having about 0.3% polysiloxane by
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weight of the dry ingredients4 to have substantially similar properties. Final
Act. 2, 8; Ans. 15. Appellant does not persuasively dispute the Examiner's
finding of fact as to this point. Therefore, based on the reasoning of
Titanium Metals and In re Dillon, we conclude claim 12 would have been
prima facie obvious even if Wang's teaching of "about 0.3%" does not
overlap with the claimed upper range of 0.25%.
Appellant also argues that unexpected results weigh against an
obviousness conclusion. Appeal Br. 7-9. For a showing of unexpected
results to be particularly probative, evidence "must establish that there is a
difference between the results obtained and those of the closest prior art, and
that the difference would not have been expected by one of ordinary skill in
the art at the time of the invention." Bristol-Myers Squibb Co. v. Teva
Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014). Appellant argues
that the Specification provides example compositions with better results than
the compositions Wang reports. Appeal Br. 8-9. We are persuaded,
however, by the Examiner's explanation that the embodiment plasters of
Wang and of the Specification have numerous differences such that
Appellant has not established that lowering the percent polysiloxane from
about 0.3% to 0.25% is responsible for any improvement. Ans. 17.
The fundamental problem with Appellant's argument is that the
Specification's limited experimental results are not commensurate with the
scope of claim 12. Only two of the experimental results use pregelified
starch (Spec. 8, Table 1 ), and the results do not reasonably address the wide
4 The Wang material does not appear to include substantial solids other than
the plaster. Wang i-fi-146-57. Thus, percent by weight of plaster powder and
percent by weight of dry ingredients are nearly the same.
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ranges of potential compositions with various unnamed ingredients
encompassed by claim 12. Cf In re Peterson, 315 F.3d at 1331 (upholding
rejection where reported unexpected results were not commensurate with
claimed invention).
Moreover, while the Specification states that pregelified starch
"[s]urprisingly" allows use of less silicone (Spec 2:11-16), Wang identifies
this same discovery (Wang i-f 54). Appellant presents no evidence that any
difference in results based upon changing percent polysiloxane from about
0.3% to 0.25% was unexpected. Thus, Appellant's arguments concerning
unexpected results to not establish any Examiner error.
Appellant also notes, in passing, that Wang teaches fly ash and
magnesium oxide must be used to achieve satisfactory results. Appeal Br. 7.
Appellant does not, however, explain why this teaching is relevant to the
Examiner's obviousness analysis or why this teaching differentiates Wang
from claim 12. Moreover, the Examiner correctly explains that claim 12
allows for additional unnamed components to be included in the recited
plaster-based composition. Final Act. 5; Ans. 16. Appellant does not appear
to dispute this point. Thus, claim 12 does not exclude embodiments of
Wang which include fly ash and magnesium oxide.
Finally, Appellant argues that Goss does not address Wang's
deficiencies. Appeal Br. 10. As explained above, however, we do not agree
with Appellant's identification of deficiencies in Wang. The Examiner
appears to reference Goss for the narrow purpose of establishing that the
Amerikor 818 product referenced in Wang is a com starch (an issue relevant
to claim 6). Final Act. 3; Ans. 18. Appellant does not dispute this teaching
of Goss, and we discern no error in the Examiner's use of Goss.
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We thus sustain the Examiner's rejection of claims 1-3, 6-9, 12-14,
18, 19, 24, 25, and 27.
Rejection 2. The Examiner rejected claims 10, 11, 15, 29, and 31 as
obvious over Wang. Ans. 4, 8. Appellant disputes these rejections for same
reasons as claim 12. Appeal Br. 10. We sustain this rejection for the
reasons explained above.
Rejection 3. The Examiner rejected claims 20-22 as obvious over
Wang in view of Franzoni. Ans. 11. Appellant first appears to repeat
verbatim the arguments Appellant raised with respect to claim 12. Appeal
Br. 11-15. We disagree with these arguments for the reasons explained
above.
Appellant also argues that Franzoni does not address Wang's
deficiencies. Appeal Br. 16. We do not, however, agree with Appellant's
identification of deficiencies in Wang. The Examiner appears to reference
Franzoni for its teaching that water-repellant siloxane could be added as an
oil. Final Act. 8. The Examiner adequately explains why one of skill would
be motivated to employ this teaching of Franzoni with the teachings of
Wang. Id. Appellant does not dispute this teaching of Franzoni and does
not argue that the Examiner incorrectly combined the Wang and Franzoni
references. Appeal Br. 16. We therefore discern no Examiner error and
sustain this rejection.
DECISION
For the above reasons, we affirm the Examiner's rejection of
claims 1-3, 6-15, 18-22, 24, 25, 27, 29, and 31.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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Application 12/280,685
AFFIRMED
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