Ex Parte Immordino et al

Patent Trial and Appeal Board

Mar 15, 2013

11639793 (P.T.A.B. Mar. 15, 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.
11/639,793 12/14/2006 Salvatore C. Immordino JR. 2033.74621/3888 7749
45455 7590 03/15/2013
GREER, BURNS & CRAIN, LTD.
300 SOUTH WACKER DRIVE
SUITE 2500
CHICAGO, IL 60603
EXAMINER
BARCENA, CARLOS
ART UNIT PAPER NUMBER
1724
MAIL DATE DELIVERY MODE
03/15/2013 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 SALVATORE C. IMMORDINO JR., RONALD E. SCHENCK,
and CHARLES MILLER
____________

Appeal 2012-00308
Application 11/639,793
Technology Center 1700
____________

Before TERRY J. OWENS, PETER F. KRATZ, and
ROMULO H. DELMENDO, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-4, 7, 8, and 10-12. We have
jurisdiction pursuant to 35 U.S.C. § 6.

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Application 11/639,793

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Appellants’ claimed invention is directed to a method of making a
joint compound wherein a water soluble synthetic wax dedusting agent is
presolubilized in water only so as to form a pre-solubilized dedusting agent
that can be used in forming the joint compound (Spec. 6). The joint
compound that is formed can be typically used in wall repairs and for
finishing the joints between sheets of drywall (id. at 1-3).
Claim 1 is illustrative and reproduced below:
1. A method of making a joint compound comprising:
selecting a dedusting agent which is a solid at room
temperature but which liquefies under friction of sanding,
cutting or abrading, wherein the dedusting agent is a water-
soluble synthetic wax.;
presolubilizing the dedusting agent in water only to make
a presolubilized dedusting agent;
combining dry components, including at least one filler,
to make a dry mixture;
pumping process water into a vessel;
introducing the presolubilized dedusting agent to the
vessel;
adding the dry mixture to the vessel; and
blending the dry mixture, water and presolubilized
dedusting agent to make a homogeneous product.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Ball US 3,650,785 Mar. 21, 1972
Langford US 2001/0011112 A1 Aug. 2, 2001
Immordino, Jr. US 6,673,144 B2 Jan. 6, 2004

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Claims 1-3, 7, 8, and 10-12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Langford in view of Immordino. Claim 4 stands
rejected under 35 U.S.C. § 103(a) as being unpatentable over Langford in
view of Immordino and Ball.
We affirm the stated rejections. Our reasoning follows.
Concerning the first stated rejection, Appellants argue claims 1, 7, 8,
and 10-12 as a group. Accordingly, we select claim 1 as the representative
claim on which we decide this appeal as to this claim grouping. We
consider dependent claims 2 and 3 separately to the extent separately argued.
The Examiner relies on Langford for teaching a method of making a
low dust joint compound by combining water, a dust reducing additive such
as Carbowax1 synthetic wax, a binder, filler, etc. (Ans. 4, 5, and 7). The
Examiner notes that Langford discloses that Carbowax is soluble or miscible
in water (id. at 4; Langford, para. 0080).
The Examiner relies on Immordino for teaching, inter alia, a method
of making a low dust joint compound wherein the dry ingredients can be
combined in a mixer (Ans. 5; Immordino, col. 8, ll. 50-52).
Based on the combined teachings of the applied references, the
Examiner basically maintains that it would have been obvious for one of
ordinary skill in the art to combine dry ingredients of Langford’s joint
compound formula, as taught by Immordino, in forming the joint compound
of Langford. Moreover, the Examiner indicates that the rejection is further
founded on an assertion to the effect that employing a pre-solubilizing step
for the dust reducing agent of Langford in water only for forming a

1 Carbowax 540 is a polyethylene glycol synthetic wax available from Union
Carbide Corp., Danbury, Conn. (Langford, paras. 0047 and 0080).
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homogenous joint compound product would have been an obvious
arrangement of the order of the steps for bringing together Langford’s joint
compound ingredients to one of ordinary skill in the art seeking to make the
desired product mixture (joint compound) of Langford given the disclosures
of Langford (Ans. 8).
Appellants do not challenge the Examiner’s rejection based on an
argued lack of combinability of Langford and Immordino, as proposed by
the Examiner (see generally App. Br.). Rather, Appellants urge that
Langford does not teach or suggest pre-solubilizing dedusting agent in water
only, as required by representative claim 1 (id. at 10-15: Reply Br. 2 and 3).
In this regard, Appellants correctly observe that neither of Langford’s
Examples 2 and 3 describe the claimed pre-solubilizing of a synthetic wax
dedusting agent in water only, as required by appealed claim 1 (App. Br. 11-
13).
While the Examiner may have erred by categorically stating that
“Langford teaches . . . presolubilizing Carbowax 540 in water only (Table 2,
Formulation 3, para 0079)” (Ans. 4), Appellants’ argument to this effect
does not indicate that the Examiner was mistaken in concluding that the
applied prior art would have led one of ordinary skill in the art to a method
embraced by representative claim 1; that is, a method that includes such a
presolubilizing step, by exercising routine skill in arranging the bringing
together of the product joint compound ingredients of Langford and with a
reasonable expectation of success in so doing (App. Br. 11-14).
After all, “[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007). In making an obviousness determination one “can take account
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of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id. at 418.
In arguing that the Examiner’s rejection was made in error, the
Appellants rely on their Specification, which includes a discussion of the
problems in the prior art. Spec. 4, l. 16 -5, l. 22; Reply Brief filed August
29, 2011. That discussion must be considered for all purposes in our review
of the Examiner’s obviousness conclusion.2 Specifically, Appellants
acknowledge that water soluble synthetic waxes known to be useful as
dedusting agents, such as polyethylene glycol (PEG 750), take time to
dissolve in water and are known to clog dry additive transfer equipment
(Spec. 4, l. 16-5, l. 6). Such facts would, of course, have been readily
observable by one of ordinary skill in the art adding the known water soluble
synthetic wax to a joint compound mixture by way of dry or wet addition.
One of ordinary skill in the art, through no more than ordinary creativity,
would have been led by Langford, taken with Immordino, to employ pre-
solubilizing of the synthetic wax dedusting additive of Langford as an option
in ordering the steps of bringing together the joint compound ingredients of
Langford with the expectation of successfully producing a uniform product
joint compound with the expected benefit of not having to wait for the
dedusting agent to dissolve in water as would have been the case if a known
slowly dissolvable dedusting agent was not pre-solubilized.

2 Cf. In re Hedges, 783 F.2d 1038, 1039 (Fed. Cir. 1986) (“Hedges had
relied on these references before the Board, as he does before us, for his
argument that viewed as a whole the body of prior art teaches away from
conducting this reaction at high temperatures. The Solicitor should not be
constrained from pointing to other portions of these same references in
contravention of Hedges’ position.”).
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As we noted above, Langford teaches that the Carbowax 540 additive
is soluble or miscible in water (para 0080). Langford’s disclosure of the
water miscibility properties of the synthetic wax dust reducing agent at least
partially undergirds the Examiner’s obviousness determination as to the
obviousness of pre-solubilizing the synthetic wax dust reducing agent in
forming a joint compound homogenous product. Appellants have not shown
that the application of a pre-solubilizing step would be beyond the skill level
of an ordinarily skilled artisan. KSR, 550 U.S. at 417 (“[I]f a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.”).
Moreover, Appellants have not reasonably substantiated the argument
that one of ordinary skill in the art would have narrowly read and inflexibly
applied paragraph 0079 of Langford as necessarily requiring that the dust
reducing additive must be brought in contact with water that already has the
binder and, any thickener, added thereto, as urged by Appellants (Reply Br.
3). Nor have Appellants established that one of ordinary skill in the art
would have avoided pre-solubilizing the dust reducing additive in water only
simply because other options may be available to try (App. Br. 15).
As a final point, Appellants have not substantiated that any reduction
of a delay in producing a homogenous product joint compound by using a
pre-solubilizing step, as broadly claimed, is unexpected, or that the claimed
method is a method that solves a long felt need in the art which previously
was continuously sought to be solved but found unresolvable, or that the
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claimed process results from the discovery of a previously unrecognizable
problem to one of ordinary skill in the art (Reply Br. 4).
On this record, we shall sustain the Examiner’s obviousness rejection
of representative claim 1.
As for separately argued dependent claim 2, the arguments Appellants
present for claim 2 (claim 2 requires adding the dedusting agent to water) are
unpersuasive for substantially the same reasons that we are not persuaded by
the arguments presented against the Examiner’s rejection of claim 1.
Similarly, the broadly recited preheating step of dependent claim 3 has not
been indicated by Appellants unsubstantiated argument to be beyond the
skill level of one of ordinary skill in the art seeking to solubilize the
dedusting agent in water where the dedusting agent may have been kept at a
relatively cold temperature (Spec. 5).
Concerning the Examiner’s separate obviousness rejection of
dependent claim 4, which claim requires transportation of the presolubilized
dedusting agent, Appellants’ arguments appear to be off the mark. The
added Ball reference is merely cited by the Examiner to show that
commercial processes can entail partial production at a remote facility or in
transit, such as in the case of cement (Ans. 6 and 8). Here, Appellants have
not persuasively indicated why the imposition of a transportation step for the
presolubilized dedusting agent, (preparing same at a different location than
that location of the manufacturing facility where the joint compound is
prepared) represents an independent basis for the non-obviousness of
dependent claim 4.
On this record, we shall likewise sustain the Examiner’s separate
obviousness rejection of claim 4.
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ORDER
The Examiner’s decision to reject the appealed claims is affirmed.
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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