Ex Parte Kim et al

Patent Trials and Appeals Board

Jan 30, 2019

14384813 - (D) (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/384,813 09/12/2014 DongkyuKim
76104 7590 02/01/2019
The Dow Chemical Company/Brooks Cameron & Huebsch
1201 MARQUETTE A VENUE SOUTH, SUITE 400
Minneapolis, MN 55403
UNITED ST A TES OF AMERICA
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.
71827-US-PCT 3371
EXAMINER
WEYDEMEYER, ETHAN
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
02/01/2019 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):
DOW.DOCKETING@BIPL.NET
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONGKYU KIM,
CHAN HAN, ROBERT C. CIESLINSKI,
GIUSEPPE V AIRO, and LUIGI BERTUCELLI
Appeal 2017-011422
Application 14/3 84,813 1
Technology Center 1700
Before ADRIENE LEPIANE HANLON, N. WHITNEY WILSON, and
JANEE. INGLESE, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134(a) from an Examiner's
decision finally rejecting claims 1, 3, 4, 6, and 15-29. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest, and the Applicant, is said to be DOW GLOBAL
TECHNOLOGIES LLC. Appeal Brief dated April 6, 2017 ("App. Br."), at 3.
Appeal 2017-011422
Application 14/3 84,813
Representative claim 1 is reproduced below from the Claims Appendix to
the Appeal Brief. The limitation at issue is italicized.
1. A fire resistant composite structure comprising:
a foam material;
a geopolymer thermal protection layer adhered to the foam
material, wherein the geopolymer thermal protection layer is formed
by curing geopolymer precursors having a silicon to aluminum molar
ratio in a range of 1.0:2.65 to 1.0:3.3; and
a facing adhered to the geopolymer layer.
App. Br. 11.
The Examiner maintains the following rejections on appeal:
(1) claims 1, 3, 4, and 6 under 35 U.S.C. § I03(a) as unpatentable over
Blackstock et al.; 2
(2) claims 15-22 under 35 U.S.C. § I03(a) as unpatentable over
Vahlbrauk3 in view of Blackstock;
(3) claims 23 and 24 under 35 U.S.C. § I03(a) as unpatentable over
Vahlbrauk in view of Blackstock, and further in view of Munzenberger; 4
(4) claim 25 under 35 U.S.C. § I03(a) as unpatentable over Vahlbrauk in
view of Blackstock, and further in view of Buckingham et al.; 5
(5) claim 26 under 35 U.S.C. § I03(a) as unpatentable over Vahlbrauk in
view of Blackstock, and further in view of Ohnuma et al.; 6 and
(6) claims 27-29 under 35 U.S.C. § I03(a) as unpatentable over
Vahlbrauk in view of Blackstock, and further in view of Comrie. 7
2 GB 2471765 A, published January 12, 2011 ("Blackstock").
3 DE 4108644 (Al), published September 17, 1992 ("Vahlbrauk").
4 US 2002/0068775 Al, published June 6, 2002 ("Munzenberger").
5 US 6,992,027 B 1, issued January 31, 2006 ("Buckingham").
6 US 2004/0054022 Al, published March 18, 2004 ("Ohnuma").
7 US 2004/0255823 Al, published December 23, 2004 ("Comrie").
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Application 14/3 84,813
B. DISCUSSION
The Examiner finds that Blackstock discloses a fire resistant composite
structure comprising, inter alia, a geopolymer thermal protection layer, wherein
the silicon to aluminum atomic ratio (mole ratio) in the layer is less than or equal
to 1.3: 1, which overlaps or encompasses the claimed range. Final 2-3 ( citing
Blackstock 11, 11. 17-23). 8
The Appellants argue:
[A] ssuming for the sake of argument that Appellants' molar ratio is an
analogous term to Blackstock[']s atomic ratio,[9J when normalized to
1.0 [Al] to ease comparison to the format [in] Blackstock[,]
Applicant[']s values correspond to ratios of approximately
0.377[Si]: 1.0[ Al] and 0.303 [Si]: 1.0[ Al] that notably are not
overlapped by Blackstock's atomic ratio of 1.3[Si]:1.0[Al]. Further,
such values are not even overlapped by Blackstock's claim 2's 'ideal'
Si:Al atomic ratio between 0.5:1 and 1.3:1. In short, Blackstock's
ratios do not overlap nor suggest Appellant's claimed ratios.
App. Br. 7 ( emphasis omitted).
The Appellants' argument is not persuasive of reversible error. Blackstock
discloses:
The present invention utilises a weathered basaltic type rock
with a relatively high alumina content to form an alkaline alumino-
silicate geopolymer cement material. Throughout this specification,
by "relatively high alumina content", we mean having a Si:Al atomic
ratio of less than or equal to 1.3:1.
Blackstock 11, 11. 20-23 ( emphasis added).
We recognize that Blackstock discloses that "[i] deally, the geopolymer
cement is formed from a precursor having a Si: Al atomic ratio in the range of
8 Final Office Action dated October 4, 2016.
9 According to Blackstock, "in the geopolymer art, Si02:Ab03molar ratios are
referred to as well as Si:Al atomic ratios." Blackstock 11, 11. 11-12.
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Application 14/3 84,813
between 0.5:1 and 1.3:1." 10 Blackstock 13, 11. 30-31 (emphasis added).
Nonetheless, it is well-settled that "all disclosures of the prior art, including
unpreferred embodiments, must be considered." In re Lamberti, 545 F.2d 747, 750
( CCP A 197 6); see also Final Act. 15 ("the existence of narrower ranges in
Blackstock, even if such ranges are more preferable, do not negate a case of
obviousness established by broader ranges taught by Blackstock").
In sum, we find that the broad range disclosed in Blackstock (i.e., less than
or equal to 1.3:1) encompasses the claimed range (i.e., 1.0:2.65 to 1.0:3.3 or
0.377:1.0 to 0.303:1.0) and thus renders the claimed range prima facie obvious.
See In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("a prior art reference
that discloses a range encompassing a somewhat narrower claimed range is
sufficient to establish a prima facie case of obviousness").
Having established a prima facie case of obviousness, the burden shifts to
the Appellants to show that the claimed invention would not have been obvious to
one of ordinary skill in the art. See id. ("the existence of overlapping or
encompassing ranges shifts the burden to the applicant to show that his invention
would not have been obvious"). That burden can be met "either by a showing that
the prior art taught away from the invention or by a showing of new and
unexpected results relative to the prior art." Tyco Healthcare Group LP v. Mutual
Pharmaceutical Co., Inc., 642 F.3d 1370, 1373 (Fed. Cir. 2011).
The Appellants do not direct our attention to any evidence of unexpected
results. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) ("an applicant
relying on comparative tests to rebut a prima facie case of obviousness must
10 In the Advisory Action, the Examiner finds that "'just below 0.5: 1' is still
substantially close to 0.377: 1, in that both endpoints are within rounding or
experimental error." Advisory Action dated February 1, 2017, at 3. The
Appellants do not direct us to any evidence to the contrary.
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Application 14/3 84,813
compare his claimed invention to the closest prior art"). The Appellants, however,
rely on the following disclosure in Blackstock to show that Blackstock teaches
away from the claimed range: "'Research has been carried out which found that
precursors with a high alumina content would result in a low compressive strength
material with little geopolymeric properties."' App. Br. 8 ( original emphasis
omitted); Blackstock 9, 11. 31-33. Based on that disclosure, the Appellants argue
that one of ordinary skill in the art would not have increased the relative amount of
Al beyond the amounts expressly described in Blackstock (i.e., reduced the Si:Al
ratio lower than 0.5: 1) because he/she would believe that varying the relative ratio
of Si:Al would result in a low compressive strength material with little
geopolymeric properties. App. Br. 8.
The Appellants' argument is not persuasive of reversible error. The portion
of Blackstock relied on by the Appellants describes the prior art, not the invention
disclosed in Blackstock. See Ans. 15 (pointing out that "Applicant appears to be
relying upon the background information of Blackstock to establish a teaching
away, which contradicts the discovery of Blackstock"). 11 Blackstock discloses:
The present invention seeks to alleviate the disadvantages
associated with the prior art. In particular, the present invention
provides a geopolymer cement produced from a precursor material
having a relatively high alumina content [i.e., less than or equal to
1.3: 1] which surprisingly, in accordance with the present invention,
produces structural building units having relatively high compressive
strength.
Blackstock 10, 11. 1-5 (emphasis added). Thus, Blackstock does not teach away
from the claimed range but rather teaches that a relatively high compressive
strength can be achieved with an alumina content having a Si:Al ratio of less than
or equal to 1.3: 1, which encompasses the claimed range.
11 Examiner's Answer dated July 13, 2017.
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Based on the foregoing, we find that a preponderance of the evidence of
record supports the Examiner's conclusion of obviousness. Therefore, the
obviousness rejection of claim 1 is sustained.
The Appellants do not present arguments in support of the separate
patentability of any of claims 3, 4, 6, and 15-29. Therefore, the obviousness
rejections of claims 3, 4, 6, and 15-29 also are sustained.
C. DECISION
The Examiner's decision 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)(l ).
AFFIRMED
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