Ex Parte JOHNSON

Patent Trial and Appeal Board

Jan 31, 2019

14549303 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/549,303 11/20/2014
28827 7590 02/04/2019
GABLE & GOTW ALS
100 WEST FIFTH STREET, 10TH FLOOR
TULSA, OK 74103
FIRST NAMED INVENTOR
WILLIAM L. JOHNSON SR.
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.
47410/14-291 3977
EXAMINER
BOYLE, KARA BRADY
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
iplaw@gablelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM L. JOHNSON SR.
Appeal2018-002451
Application 14/549,303
Technology Center 1700
Before LINDA M. GAUDETTE, GEORGIANNA W. BRADEN, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 63-70, 72, 74, 75, and 78-872.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the applicant, Ecopuro, LLC. Application Data Sheet filed
November 20, 2014. According to the Appeal Brief, the real parties in
interest are the sole inventor, William L. Johnson, Sr., and Ecopuro, LLC.
Appeal Brief filed September 6, 2017 ("App. Br."), 2.
2 Final Office Action entered December 8, 2016 ("Final Act.").
Appeal2018-002451
Application 14/549,303
STATEMENT OF THE CASE
Appellant's invention is generally directed to composition for
promoting kinetic mixing of additives within a non-linear viscosity zone of a
fluid, such as a thermoplastic material. Spec. ,r 2. Sole independent claim
63 illustrates the subject matter on appeal and is reproduced below with
emphases added to highlight contested subject matter:
63. A composition comprising
a fluid having a boundary layer;
particles in said boundary layer of said fluid, said
particles having a sharp conchoidal swface and a complex
three-dimensional surface area, said particles having a 2.5
Mohs scale hardness or greater and having a size from nano to
micron;
wherein said particles comprise from 0.5 wt% to 8 wt%
of the composition.
App. Br. 17 (Claims Appendix) (emphasis added).
The Examiner maintains the rejection of claims 63-70, 72, 74, 75, and
78-87 under 35 U.S.C. § 103(a) as unpatentable over Good3 in view of
Palm4 in the Examiner's Answer entered November 3, 2017 ("Ans.") 5.
3 Good et al. (US 5,948,845, issued September 7, 1999).
4 Palm et al. (US 6,464, 770 B 1, issued October 15, 2002).
5 Although Appellant argues in the Reply Brief that the Examiner
introduces a new ground of rejection in the Answer (Reply Br. 3), we do not
address this issue because it is reviewable by petition under 37 C.F.R.
§ 1.181 and, therefore, not within the jurisdiction of the Board. Ex Parte
Frye, 94 USPQ2d 1072, 1078 (BPAI 2010) (precedential).
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Application 14/549,303
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's timely contentions 6, we affirm the Examiner's rejection
of claims 63-70, 72, 74, 75, and 78-87 under 35 U.S.C. § 103(a) for the
reasons set forth in the Final Office Action, the Answer, and below.
Appellant argues claims 63-70, 72, 74, 75, and 78-87 together on the
basis of claim 63, to which we accordingly limit our discussion. App. Br. 6-
15; 37 C.F.R. § 4I.37(c)(l)(iv).
Good discloses an organic solvent-based insulative paint comprising a
perlitic insulative agent. Col. 2, 11. 15-19, 34. Good discloses that the
perlitic insulative agent is preferably an expanded perlitic material, such as,
"[f]or example ... expanded perlite." Col. 4, 11. 46-51. Good discloses that
"[p]referably, 1-2 10 micron-sized expanded perlite (CERAMIC SIL 42-18)
is used," and Good exemplifies preparation of a solvent-based insulative
paint that includes this material. Col. 6, 11. 27-31; col. 7, 11. 5-57.
The Examiner finds that Good "does not expressly recite that the
expanded perlite particles have a sharp conchoidal surface and a complex
three-dimensional surface area," and the Examiner relies on Palm for
suggesting this feature. Ans. 4--6.
6 We do not consider the arguments and evidence
(http://www.engineeringtoolbox.com/ thermal- conductivity-d _ 429 .html)
that Appellant presents pages 5-6 of the Reply Brief because Appellant does
not show good cause for raising these arguments for the first time in the
Reply Brief. 37 C.F.R. § 4I.37(c)(l)(iv); 37 C.F.R. § 41.41(b)(2)
(arguments raised for the first time in the Reply Brief that could have been
raised in the Appeal Brief will not be considered by the Board unless good
cause is shown).
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Application 14/549,303
Palm discloses "[ a ]n expanded perlite product having a controlled
particle size distribution" that "retains the intricate cellular structure unique
to perlite, as shown in FIG. 1," and is prepared by "milling and classifying
expanded perlite." Col. 5, 11. 36-37; col. 8, 11. 19--21; col. 8, 11. 27-32.
Appellant does not dispute the Examiner's finding that Figure 1 of Palm
shows "fractured milled perlite particles [that] have smooth, sharp, blade-
like conchoidal edges." Compare Ans. 4, with App. Br. 6-15. Palm's
"SUMMARY OF THE INVENTION" indicates that "provided are ...
insulating materials ... comprising the expanded perlite product." Col. 5, 1.
66-col. 6, 1. 1. Palm further discloses that "the expanded perlite products
disclosed herein may be used as insulating fillers." Col. 8, 11. 1-2. Palm
discloses that the expanded perlite product of Palm's invention is useful "in
paint filler applications" and "has superior top size control, offering the
advantage of comparatively smooth-surfaced paint and coating films, and
smoothness in related applications." Col. 18, 11. 56-59; col. 19, 11. 1-5.
In view of these disclosures in Good and Palm, the Examiner
concludes that it would have been obvious to one of ordinary skill in the art
at the time of the invention to use the fractured expanded perlite of Palm,
which is milled and has smooth, sharp, blade-like conchoidal surfaces, as the
expanded perlite in Good's insulative paint "to control particle size
distribution and create superior top size control, which offers the advantage
of producing a more smooth surfaced paint and coating film." Ans. 5.
Appellant argues that "a core feature of Good's insulative paint is
expanded 'hollow' perlite and the proposed combination with Palm would
eliminate that core feature." App. Br. 7. Appellant argues that Good
describes an exemplary perlitic insulative agent, CERAMIC SIL 42-18,
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Application 14/549,303
which Appellant argues is hollow glass microspheres, as indicated in a web
page cited by Appellant. App. Br. 8 (citing http://revchem.com/2012/l
l/05/silcell-42-1 8-34lb-bag/). Appellant argues that Good's example
describes adding this material to a batch in increments at a rate such that the
expanded perlite goes into the batch and does not float on the surface, which
Appellant argues demonstrates that "Good's expanded perlite are 'floaters."'
App. Br. 8; Reply Br. 7.
As discussed above, Good discloses an organic solvent-based
insulative paint that comprises a perlitic insulative agent, which Good
discloses is preferably expanded perlite, such as CERAMIC SIL 42-18. As
also discussed above, Good exemplifies use of this expanded perlite material
in the production of insulative paint. The web site relied upon by Appellant
to show that CERAMIC SIL 42-18 is hollow glass microspheres is not of
record, and we therefore do not consider it. 37 C.F.R. § 4I.33(d)(2).
Nonetheless, even if CERAMIC SIL 42-18 does constitute hollow glass
microspheres as Appellant asserts, we find no disclosure in Good indicating
that this material, or any type of hollow glass micro sphere, must be used as
the expanded perlite in Good's insulative paint, and Appellant does not
direct us to any such disclosure. Rather, Good broadly discloses that the
insulative paint of Good's invention includes a perlitic insulative agent, and
indicates that use of expanded perlite, such as CERAMIC SIL 42-18, is only
a preference.
Thus, on this appeal record, we find insufficient evidence to
demonstrate that a "core feature" of Good's insulative paint is expanded
"hollow" perlite, and, accordingly, the Examiner's proposed combination of
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Application 14/549,303
Good and Palm would not eliminate a "core feature" of Good's invention as
Appellant argues.
Appellant argues Palm teaches that the improved perlite product of
Palm's invention reduces floater content and preferably has a floater content
of less than 10 percent by volume. App. Br. 10. Appellant argues that
"Palm expressly teaches away from 'floaters', i.e., Palm teaches away from
the expanded perlite of Good." App. Br. 8.
Although Palm does disclose that the expanded perlite product of
Palm's invention has a floater content of less than 10 percent by volume
(col. 5, 11. 49-50), as discussed above, we find insufficient evidence on this
appeal record to establish that Good requires the use of hollow microspheres
as the perlitic insulative agent in Good's insulative paint. Rather, as
discussed above, Good broadly discloses that the insulative agent included in
Good's paint is a perlitic insulative agent, and is preferably expanded perlite.
In view of Palm's explicit disclosure that the expanded perlite product of
Palm's invention "may be used as insulating fillers," and may be used "in
paint filler applications," we find that one of ordinary skill in the art would
have been led to use Palm's expanded perlite product as the perlitic
insulative agent in Good's insulative paint, with a reasonable expectation of
successfully producing a paint having "superior top size control, offering the
advantage of comparatively smooth-surfaced paint" as disclosed in Palm
(discussed above). App. Br. 13; Palm col. 18, 1. 56; col. 19, 11. 3--4.
Contrary to Appellant's argument, Palm thus does not "teach[] away from
the expanded perlite of Good." App. Br. 8.
Appellant argues that Good's expanded perlite is necessarily
expanded, but not milled or fractured, and it therefore would not have been
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obvious to use Palm's milled, sharp, blade-like, fractured, expanded perlite
in Good's paint to provide thermal resistance 7. App. Br. 10. Appellant
argues that "Good's lack of an explicit negative teaching re[garding]
fracturing or milling is only because Good thoroughly and consistently
teaches the opposite, i.e., Good teaches an expanded perlitic material
capable of functioning as an insulator." App. Br. 12. Appellant argues that
"Palm does not teach that his 'improved perlite product' or
milled/crushed perlite classified by size is suitable for use as an insulator."
App. Br. 13-15. Appellant argues that although Palm discusses "expanded
perlite products" and their use as insulating materials, this discussion does
not refer to the milled perlite of Palm's invention. App. Br. 14--15.
Appellant argues that "it is [therefore] not proper to combine the teachings
of Good, which requires expanded insulative perlite, with the teachings of
Palm, which requires milled or crushed improved perlite product with
controlled particle size distribution." App. Br. 15.
Although Palm does include background discussion of conventional
"expanded perlite products," as discussed above, the "SUMMARY OF THE
INVENTION" section of Palm explicitly indicates that "provided are ...
insulating materials ... comprising the expanded perlite product" of Palm's
invention. Compare col. 5, 11. 1-34, with col. 5, 1. 66-col. 6, 1. 1. Palm
further explicitly discloses that "the expanded perlite products disclosed
7 Although Appellant cites https://perlite.orgllibrary-perliteinfo/general-
info/Why_Perlite_ Works.pdf "[f]or further explanation of the different
forms ofperlite and their respective uses" (App. Br. 10--11), we do not
consider the information presented in this web site because it is not of record
in the present application. 37 C.F.R. § 4I.33(d)(2).
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Application 14/549,303
herein may be used as insulating fillers." Col. 8, 11. 1-2. Contrary to
Appellant's arguments, one of ordinary skill in the art would have
understood from these disclosures that the expanded perlite product of
Palm's invention functions as an insulating agent. Accordingly, regardless
of whether the expanded perlite disclosed in Good is "not milled or
fractured," one of ordinary skill in the art reasonably would have expected
that the expanded perlite product of Palm's invention could be successfully
used as the perlitic insulative agent in Good's paint. In re Kubin, 561 F.3d
1351, 1360 (Fed. Cir. 2009) (emphasis omitted) (citing In re O'Farrell, 853
F.2d 894, 903-04 (Fed. Cir. 1988) ("[O]bviousness does not require absolute
predictability of success ... all that is required is a reasonable expectation of
success.").
Accordingly, considering the totality of the evidence relied upon in
this appeal, a preponderance of the evidence weighs in favor of the
Examiner's conclusion of obviousness. We accordingly sustain the
Examiner's rejection of claims 63-70, 72, 74, 75, and 78-87 under
35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejection of claims 63-70, 72, 74, 75, and
78-87 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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