Ex Parte Gosselin

Patent Trial and Appeal Board

Jun 5, 2013

11478372 (P.T.A.B. Jun. 5, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/478,372 06/29/2006 Michel Gosselin 027092.077015 5614
7590 06/05/2013
Royal W. Craig
Ober, Kaler, Grimes & Shriver
Attorneys at Law
120 East Baltimore Street
Baltimore, MD 21202-1643
EXAMINER
NILAND, PATRICK DENNIS
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
06/05/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL GOSSELIN
____________________

Appeal 2012-004152
Application 11/478,372
Technology Center 1700
____________________

Before FRED E. McKELVEY, RICHARD TORCZON and DEBORAH KATZ,
Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

Statement of the case
Michael Gosselin (“applicant”), the inventor and real party in interest 1
(Brief, page 1), seeks review under 35 U.S.C. § 134(a) of a final rejection 2
dated 21 December 2010. 3
The application on appeal was filed in the USPTO on 29 June 2006. 4
The application on appeal claims priority of U.S. Provisional 5
Application 60/694,957, filed 29 June 2005. 6
The application has been published as U.S. Patent Application 7
Publication 2007/0004841 A1. 8

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In support of prior art rejections, the Examiner relies on the following 1
evidence. 2

Fischer

U.S. Patent 3,219,604

23 Nov. 1965

Rex et al.
“Rex”

European Patent Application
0 553 495 A1

04 Aug. 1993

Applicant does not contest the prior art status of the Examiner’s 3
evidence, all of which is prior art under 35 U.S.C. § 102(b). 4
Applicant relies on at least the following evidence. 5

Hesse et al.
“Hesse”

U.S. Patent 5,326,822 5 July 1994

RBH (Richard
Baker Harrison
Ltd)

Safety Data Sheet (3 pages)

03/2005

We have jurisdiction under 35 U.S.C. § 134(a). 6
Claims on appeal 7
Claims 1 and 3-8 are on appeal. Brief, page 2. According to the 8
Answer, the claims on appeal are Claims 1-8. Answer, page 3. However, 9
Claim 2 has been cancelled. Brief, pages 2 and 9; Amendment filed 10
1 September 2010. 11

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The rejections 1
In the Answer, the Examiner has maintained the following rejections: 2
Rejection 1: Claims 1 and 3-8 stand rejected under § 112 as being 3
indefinite. Answer, page 5. 4
Rejection 2: Claims 1 and 3-8 stand rejected as being unpatentable 5
under § 103 over Rex and Fischer. Answer, page 6. On appeal, applicant 6
does not argue the patentability of Claims 3-8 apart from Claim 1. 7
Accordingly, we decide the appeal as to Rejection 2 on the basis of 8
Claim 1. 37 C.F.R. § 41.37(c)(1)(vii). 9
Invention 10
The invention is readily understood from Claim 1 on appeal. 11
Claim 1, which we reproduce from the Claim Appendix of the Brief 12
(page 9), reads [matter in brackets and some indentation added]: 13
A thickening agent for use in a thickening polyester 14
thermoset resin in Cured-In-Place-Pipe molding processes, 15
comprising: 16
[Element 1] a neutral polyester resin binder; and 17
[Element 2] an active thickener added to said polyester 18
resin binder, 19
said active thickener further comprising a mixture of 20
Magnesium Oxide (MgO) paste and Calcium Chloride; 21
wherein said polyester resin binder and active thickener 22
are mixed to provide said thickening agent in a concentrated 23

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resinous form to be added to said polyester thermoset resin 1
prior to curing to facilitate thickening. 2
Analysis 3
Rejection 2 4
The Examiner found that Rex (the European Patent Application) 5
describes a product identified as PG-9033. Answer, page 6; Rex, 8:23-24 6
and 12:14. According to Rex, “PG-9033 is a proprietary magnesium oxide 7
dispersion in a low molecular weight unsaturated polyester carrier resin, 8
available from Plasticolors Inc.” Rex, 8:23-24. Element 1 of applicant’s 9
Claim 1 can be PG-9033. Specification, page 7:11. 10
Rex differs from Claim 1 in that it does not include Element 2 of 11
applicant’s Claim 1—calcium chloride. Brief, sentence bridging pages 6 12
and 7; Answer, page 6. 13
To overcome the difference, the Examiner relies on Fischer. 14
The Examiner found that Fischer describes a reaction between 15
(1) magnesium oxide and (2) a polyester. Answer, page 6; Fischer, 16
col. 2:43:60 (the reaction is shown in equations at lines 55 and 60). 17
Fischer describes reaction times of between 5 minutes and 40 hours 18
depending on reaction temperature and particular ingredients used. 19
Col. 3:48-58. According to Fischer, the reaction can be facilitated by using 20
a small amount of a dehydrating agent, such as calcium chloride. 21
Col. 3:59-62. Applicant appears to have made a similar discovery; reaction 22
times increase significantly producing results in 2-8 hours depending on the 23
resin used and concentration. Specification, page 7:15-18. 24

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As is readily apparent from the equations at col. 2:55 and 60, a 1
reaction between magnesium oxide and the polyester will produce water—2
note the oxygen atom and the two hydrogen atoms in the dotted square 3
which become water. The Examiner found, and applicant does not dispute, 4
that removal of water from the reaction will cause the reaction to proceed 5
beyond equilibrium by favoring production of magnesium oxide modified 6
polyester. Answer, page 11. 7
Those skilled in the art interested in making magnesium oxide 8
modified polyesters would understand from Fischer that addition of calcium 9
oxide to a magnesium oxide/polyester reaction mixture serves the useful 10
purpose of controlling the reaction. In essence, applicant has used a 11
known material (the calcium chloride of Fischer) for its known use (in a 12
magnesium oxide/polyester reaction) to achieve an expected result (a 13
reaction to make a thickening agent). Use of known materials for their 14
intended purpose is evidence of obviousness. KSR Intl’l Co. v. Teleflex 15
Inc., 550 U.S. 398, 416 (2007). 16
Applicant argues that Rex does not disclose a neutral polyester resin 17
binder. Brief, page 7. Rex describes PG-9033. Applicant states 18
that PG 9033 is a suitable neutral polyester resin carrier. Specification, 19
page 7:10-11. Since Rex describes the use of the same neutral resin 20
which applicant says is suitable in the claimed invention, it follows that 21
PG-9033 describes the limitations of Element 1 of Claim 1. 22
Applicant further argues that Rex does not describe the use of a 23
thickening agent in a Cured-In-Place-Pipe application. Brief, page 7. 24

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Claim 1 is not directed to a Cure-In-Place-Pipe. We voice no opinion on 1
whether a claim directed to use of applicant’s thickening agent in a Cured-2
In-Place-Pipe arrangement would or would not have been obvious. 3
Claim 1 is not limited to a Cured-in-Place-Pipe. 4
Applicant still further argues that the cited art does not suggest that it 5
can accomplish applicant’s results. Brief, page 7. What matters is the 6
objective reach of the claim. KSR, at 419. While applicant’s purpose and 7
that of Rex may differ, the subject matter claimed would have been obvious 8
for the purpose of making thickening agents suitable for the Rex use. In re 9
Dillon, 919 F.2d 688 (Fed. Cir. 1990) (en banc) (it is not necessary in order 10
to establish a prima facie case of obviousness that there be a suggestion in 11
or expectation from the prior art that the claimed compound or composition 12
will have the same or a similar utility as one newly discovered by applicant); 13
In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (“Although the motivation 14
to combine here differs from that of the applicant, the motivation in the prior 15
art to combine the references does not have to be identical to that of the 16
applicant to establish obviousness.”). Given similar technological contexts 17
of Rex and the claimed invention, the Examiner has made out a sufficient 18
case to shift the burden to the appellant to explain why it would be 19
unsuitable for a Cured-In-Place Pipe. 20
Rejection 1 21
Affirmance of Rejection 2 disposes of the appeal. Hence, we do 22
not reach the rejection based on Rejection 1. Beloit Corp. v. Valmet Oy, 23
742 F.2d 1421 (Fed. Cir. 1984) (ITC having decided a dispositive issue, 24

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there was no need for the Commission to decide other issues decided by 1
the presiding officer). 2
Decision 3
Upon consideration of the appeal, and for the reasons given herein, it 4
is 5
ORDERED that the decision of the Examiner rejecting claims 6
1 and 3-8 over the prior art is affirmed. 7
ORDERED that we do not reach Rejection 1. 8
FURTHER ORDERED that no time period for taking any 9
subsequent action in connection with this appeal may be extended under 10
37 C.F.R. § 1.136(a)(1)(iv). 11
AFFIRMED 12
bar 13