Ex Parte Karkare et al

Board of Patent Appeals and Interferences

Jan 28, 2008

10683366 (B.P.A.I. Jan. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MILIND V. KARKARE, CHIA-CHIH OU, CRAIG T.
WALLOCH and ARA A. JEKNAVORIAN
____________

Appeal 2007-3842
Application 10/683,366
Technology Center 1700
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Decided: January 28, 2008
____________

Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
THOMAS A. WALTZ, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

Appeal 2007-3842
Application 10/683,366

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Primary Examiner’s final rejection of claims 30-45, which are the only
claims pending in this application. We have jurisdiction pursuant to 35
U.S.C. § 6(b).
According to Appellants, the invention is directed to a method of
enhancing flexural bond strength in a masonry mortar brick or block wall
assembly, where masonry mortar is combined with specified fatty acid,
polymer, and air-entraining additives (App. Br. 2-3).1 Independent claim 30
is illustrative of the invention and a copy of this claim is reproduced below:
30. A process for enhancing flexural bond strength in a brick or block
wall assembly, comprising:
combining a masonry mortar having a cementitious binder, sand, and
water with a premixed masonry mortar admixture composition comprising
(A) at least one C8 - C30 fatty acid or salt thereof in the amount not less than
5 % and not greater than 97% based on total weight of said premixed
masonry mortar admixture composition; (B) a polymer having a carbon-
containing backbone to which are attached cement-anchoring members and
oxyalkylene groups attached by linkages selected from the group consisting
of an amide, an imide, and an ester, said polymer being present in an amount
not less than 1% and not greater than 95% based on total weight of said
premixed masonry mortar admixture composition; and (C) an air entraining
agent in an amount not less than 0.01% and not greater than 10.0%, all
percentages herein based on the total weight of said premixed masonry
mortar admixture composition; and
trowel-applying said combined masonry mortar and premixed
masonry mortar admixture composition between brick or block units of a
stacked brick wall or stacked concrete block wall, whereby the force or load
required to twist or wrench the bricks or blocks apart is increased when

1 We refer to and cite from the “SUBSTITUTE APPEAL BRIEF” dated
May 1, 2006.
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Application 10/683,366

compared to bricks or blocks in a wall using trowel-applied masonry mortar
that does not contain both of said premixed components (A) and (B)
together.
The Examiner has relied on the following prior art references as
evidence of obviousness:
Newberry US 851,247 Apr. 23, 1907
Horn US 1,088,022 Feb. 24, 1914
Scripture, Jr. US 2,003,613 Jun. 4, 1935
Scripture, Jr. US 2,305,113 Dec. 15, 1942
Moraru US 4,094,691 Jun. 13, 1978
Shu US 4,699,822 Oct. 13, 1987
Blounts US 4,842,650 Jun. 27, 1989
Shah US 4,878,948 Nov. 7, 1989
Arfaei US 4,948,429 Aug. 14, 1990
Sanchez US 5,112,405 May 12, 1992
Weigand US 5,294,256 Mar. 15, 1994
Takeshita US 5,352,290 Oct. 4, 1994
Smetana US 5,356,446 Oct. 18, 1994
Darwin US 5,393,343 Feb. 28, 1995
Berke US 5,634,966 Jun. 3, 1997

Ozawa JP 68-007631 Mar. 22, 1968
Moraru RO 82258 Sep. 30, 1983
Saito JP 60-228586 Nov. 13, 1985
Hughes GB 2 230 772 A Oct. 31, 1990

ISSUES ON APPEAL
Claims 30-45 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Berke or Darwin in view of Newberry, Horn, Scripture, Jr. ‘613,
Scripture, Jr. ‘113, Moraru (US ‘691), Sanchez, Ozawa, Moraru (RO ‘258),
Shah, or Saito (collectively referred to as “the secondary references”),
further in view of Shu, Blounts, Arfaei, Smetana, Weigand, Takeshita, or
Hughes (collectively referred to as “the tertiary references”) (Ans. 5).
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Appellants contend that neither primary reference specifically
mentions carboxylic polymers for enhancing flexural bond strength in brick
and mortar wall assembly, nor suggest fatty acids additives (App. Br. 4).
Appellants contend that it has been established that a rejection based
on a large number of reference combinations must explain with “reasonable
specificity” at least one rejection to establish a prima facie case of
obviousness, and the Examiner has failed to do this (App. Br. 4-5; Reply Br.
2).
Appellants contend that the Examiner has ignored the evidence in the
Specification, as well as the rebuttal evidence in the Berke Affidavit (App.
Br. 10-11, 14-16; Reply Br. 4-5).
Finally, Appellants contend that the rejection on appeal is “at odds”
with the issuance of US 5,736,600, which patent claims a composition of a
bond strength enhancing polymer and calcium stearate as a water repellant
for use in mortar (App. Br. 21-22).
The Examiner contends that numerous secondary references have
been cited to establish that fatty acids or derivatives have been used as
conventional additives in cementatious mortar compositions for the purpose
of obtaining improved water repellency in the final cement product (Ans. 10,
12). The Examiner contends that the numerous tertiary references have been
cited to establish that the amount of air-entraining agent used in mortar
compositions was well known in the art (Ans. 8). The Examiner further
contends that, even without the citation of the tertiary references, the
optimum amount of additive would have only involved routine
experimentation for one of ordinary skill in this art (id.).
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The Examiner contends that the rejection has been explained with
reasonable specificity, with citations to the pertinent portions of each
reference, and with a description of where every claim limitation is taught by
the applied prior art (Ans. 12).
The Examiner contends that the Berke Affidavit has been specifically
considered (Ans. 14-15).
The Examiner contends that issued Application No. 08/693,769 (US
5,736,600) is not claimed as a parent to this application, and the Examiner
will not comment on the validity of an issued US Patent (Ans. 18).
Accordingly, we determine the following issues presented from the
record in this appeal: (1) Has the Examiner explained the rejection with
“reasonable specificity” for all of the references cited?; (2) Have Appellants
established that the Examiner erred in any factual findings and resulting
conclusion of law?; and (3) Assuming a prima facie case of obviousness has
been established by the Examiner, does the evidence submitted by
Appellants (in the Specification and the Berke Affidavit) overcome this
prima facie case?
We determine that the Examiner has explained the rejection with
reasonable specificity, and has established a prima facie case of obviousness
in view of the reference evidence. We further determine that this prima
facie case of obviousness has not been adequately rebutted by Appellants’
arguments and evidence. Therefore we AFFIRM the rejection on appeal
essentially for the reasons stated in the Answer, as well as those reasons set
forth below.
OPINION
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We determine the following Factual Findings (FF) from the record
presented in this appeal:
(1) Both Berke and Darwin disclose cementatious compositions for
use with brick or concrete, with additives including a carboxylic
polymer within the scope of the polymer as recited in claim 302,
and other conventional additives such as air-entraining agents and
water proofing agents (Ans. 5-6; Berke, col. 2, ll. 14-18; col. 2, l.
62-col. 3, l. 17; col. 6, ll. 8-11; and col. 6, ll. 58-65; Darwin, col. 1,
ll. 5-34; col. 1, l. 64-col. 2, l. 34; col. 2, ll. 64-66; col. 4, ll. 18-49
and 65-68; col. 5, ll. 14-18; col. 5, ll. 44-50; and col. 8, ll. 27-34);
(2) The secondary references disclose fatty acid salts or derivatives
such as calcium stearate (and some also disclose aluminum
stearate) as conventional additives for cementatious compositions
for the purpose of “waterproofing” or as a “water repellant” agent
(e.g., see Moraru ‘691, col. 1, l. 30 (“water-repellant agents such
as calcium stearate”); Scripture, Jr. ‘613, p. 1, right col., ll. 53-55,
and p. 2, left col., ll. 40-52, “water-proofing” effected by calcium
stearate; Scripture, Jr. ‘113, p. 1, ll. 27-50, and p. 3, left col.,
equating “water repellants” and “waterproofing” using stearate
salts; and Moraru ‘258, p. 2, ll. 3-7 and 24-25, using 6-8 wt.% of
calcium stearate “to prevent the penetration of water into and/or
from the exterior of the construction”);

2 We determine that Appellants present no arguments to any particular claim
with reasonable specificity, and therefore we select the broadest independent
claim (claim 30) and decide the ground of rejection based on consideration
of this claim alone. See 37 C.F.R. § 41.37(c)(1)(vii)(2005).
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(3) Appellants admit that it was known in the art to incorporate into
the masonry unit and/or the mortar a water-repellant material such
as calcium stearate (Specification 1; 26-29);
(4) Takeshita and Weigand teach that well known fatty acid
derivatives conventionally used as water repellants may also
entrain some air and thus be used as air-entraining agents
(Takeshita, col. 5, ll. 42-49, and col. 6, ll. 1-24; Weigand, col. 3, l.
61-col. 4, l. 8);
(5) Appellants admit that air entraining agents may “overlap” with the
claimed fatty acids used for obtaining water repellency
(Specification 14:3-7);
(6) The tertiary references disclose the well known use and amount of
air entraining agents needed for cementatious compositions (e.g.,
see Arfaei, col. 4, ll. 23-39, teaching that “Air entraining agents
are conventionally used in hydraulic cement compositions, and are
well known to those skilled in the art”; “the level of addition will
range from 0.01% to 0.10%” but the air content of the composition
can easily be adjusted by varying the amount of the agent); and
(7) Arfaei also teaches that “water reducing agents” or
“superplasticizer” are “terms of art” and both are capable of
reducing the water content of the composition, and the
superplasticizer (such as the polymer recited in claim 30 on
appeal) may also act to entrain air in the composition (Arfaei, col.
1, l. 22-col. 2, l. 9).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
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differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations (e.g.,
unexpected results). See Graham v. John Deere Co. of Kansas City, 383
U.S. 1, 17-18 (1966). The Supreme Court has stressed the need for caution
in granting a patent based on a combination of elements found in the prior
art. The Court has held that a “patent for a combination which only unites
old elements with no change in their respective functions … obviously
withdraws what is already known into the field of its monopoly and
diminishes the resources available to skillful men.” KSR Int’l Co. v.
Teleflex, Inc., 127 S. Ct. 1727, 1740 (2007) (quoting Great Atlantic &
Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152
(1950)). The Supreme Court further concluded that “when a patent ‘simply
arranges old elements with each performing the same function it had been
known to perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR, 127 S. Ct. at 1740 (quoting
Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976)). The Court in KSR also
held that “[u]nder the correct analysis, any need or problem known in the
field of endeavor at the time of the invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” KSR,
127 S. Ct. at 1741. To facilitate review, any obviousness analysis should be
made explicit. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). It is
axiomatic that admitted prior art in an applicant’s specification may be used
in determining the patentability of the claimed invention. See In re Nomiya,
509 F.2d 566, 570-71 (CCPA 1975). Consideration of the prior art cited by
the Examiner may include consideration of the admitted prior art found in an
applicant’s specification. See In re Davis, 305 F.2d 501, 503 (CCPA 1962);
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cf., In re Hedges, 783 F.2d 1038, 1039-40 (Fed. Cir. 1986). It is immaterial
to our consideration whether the same or similar claims have been patented
in another application. See In re Wertheim, 541 F.2d 257, 263-64 (CCPA
1976).
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness, which prima facie case has not been
adequately rebutted by Appellants’ arguments and evidence. As shown by
FF (1) listed above, and not contested by Appellants, we determine that
Berke or Darwin disclose a masonry mortar including a cementitious binder,
sand, and water, with a polymer within the scope of claim 30 on appeal, as
well as suggesting the incorporation of conventional additives such as air-
entraining agents and water reducing or water proofing agents. As shown by
FF (2) above, and admitted by Appellants (FF (3) listed above), we
determine that the incorporation of a fatty acid or its salt was well known
and conventional in the masonry mortar art for water repellency or water
proofing. As shown by FF (6) listed above, and suggested by Berke and
Darwin (FF (1) listed above), we determine that the incorporation of air-
entraining agents into masonry mortar compositions was well known and
conventional in this art, as was the amount of agent for its intended and
desired benefits. Accordingly, we determine that the evidence relied upon
by the Examiner establishes a prima facie case of obviousness, as adding
conventional additives or agents for their well known function would have
been obvious to one of ordinary skill in this art. Furthermore, as admitted by
Appellants (FF (5) listed above), we determine that many of the
conventional additives known in this art may achieve several functions, i.e.,
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act as a water reducer/repellant and an air-entraining agent (see FF (4) and
(7) listed above). Therefore it would also have been obvious that the air-
entraining agent taught by Berke or Darwin could also a fatty acid or salt
that additionally functions as a water repellant or water proofing agent.
For the foregoing reasons and those stated in the Answer, we
determine that the Examiner has established a prima facie case of
obviousness. Contrary to Appellants’ contention (App. Br. 4-5; Reply Br.
2), we determine that the Examiner has explained the rejection with
“reasonable specificity” as to each reference applied (Ans. 5-9). We note
that the number of references applied by the Examiner is unnecessary since
Appellants admit that calcium stearate is a conventional water repellant
additive for masonry mortar compositions (FF (3) listed above) and the
optimum amounts of any additive, such as air-entraining agents, would be
well within the ordinary skill in this art (FF (6) listed above. Ans. 8; see In
re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)).
Appellants’ contention that neither primary reference mentions the
addition of carboxylic polymers for enhancing flexural bond strength is not
persuasive. As held by the Supreme Court in KSR, 127 S. Ct. at 1741, any
need or problem may serve as the basis for combining well known elements.
Similarly, we find that Appellants’ contention regarding the issuance of US
5,736,600 is not persuasive since the allowance of claims in another
application is immaterial to our consideration.
Appellants contend that unexpected results have been shown by the
evidence in the Specification and the Berke Affidavit (App. Br. 10-11, 14-
16; Reply Br. 4-5). Accordingly, we begin anew and consider the evidence
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for and against patentability. See In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992).
We determine that Appellants’ evidence is unpersuasive for the
following reasons. The Berke Affidavit refers to the absence of any
disclosure in Berke or Darwin regarding enhancing flexural bond strength
(¶¶ 8 and 9). This contention has been addressed above. The Berke
Affidavit also discusses the terms “water repellents,” “water proofing” and
“water reducing agents” (¶¶ 8 and 9) but these views appear contrary to the
applied prior art (see FF (2) and (7) listed above). We agree with the
Examiner (Ans. 14) that the remainder of the Berke Affidavit is
conclusionary and does not contain any objective comparative data to rebut
the prima facie case of obviousness.
With regard to Appellants’ evidence presented on pages 14-21 of the
Specification (App. Br. 10-11), we determine that Appellants have not
presented any explanation why these results, which are directed to specific
polymers (such as BP-1 and BP-2; Specification 15:15-16), specific water
reducing agents (calcium stearate; Specification 16:19-20), and an
unspecified air-entraining agent (Specification, Example 4), all in particular
amounts, would be commensurate in scope with the subject matter of claim
30 on appeal, which is not so limited. See In re Dill, 604 F.2d 1356, 1361
(CCPA 1979) (Evidence presented to rebut prima facie obviousness must be
commensurate in scope with claims to which it pertains).
Accordingly, based on the totality of the record, including due
consideration of Appellants’ arguments and evidence, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness
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within the meaning of § 103(a). Therefore the decision of the Examiner 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)(1)(iv).
AFFIRMED

tc

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