Ex Parte Langford

Board of Patent Appeals and Interferences

May 31, 2012

12124206 (B.P.A.I. May. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NATHANIEL P. LANGFORD
____________

Appeal 2011-004525
Application 12/124,206
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
HUBERT C. LORIN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejections of claims 2-17 under 35 U.S.C. § 102(b) as anticipated by, or
alternatively under 35 U.S.C. § 103(a) as unpatentable over, Piot (EP
530084, pub. March 3, 1993; as translated). We have jurisdiction under 35
U.S.C. § 6.
We REVERSE.

Appeal 2011-004525
Application 12/124,206

2
Appellant claims a joint compound composition comprising water,
filler, binder, and a dust reducing additive comprising synthetic wax, "the
joint compound composition . . . hardening when exposed to air, the
hardened joint compound generates dust when sanded" (independent claim
2; see also independent claim 16).
Representative claim 2 reads as follows:
2. A joint compound composition comprising:

water;

from 25 % by weight to about 95 % by weight filler;

from 1 % by weight to 45 % by weight binder; and

a dust reducing additive comprising synthetic wax,

the joint compound composition exhibiting a mud-like appearance and
hardening when exposed to air, the hardened joint compound generates dust
when sanded, the dust reducing additive being present in the joint compound
in an amount such that the amount of dust generated by sanding the
hardened joint compound is less than the amount of dust generated by
sanding the same hardened joint compound in the absence of the dust
reducing additive.

The Examiner determines that Piot teaches or would have suggested
mascara having ingredients and concentrations which satisfy the ingredients
and concentrations of the joint compound composition defined by the
appealed claims (Ans. 3-4).

Appeal 2011-004525
Application 12/124,206

3
Appellant argues that there is no evidence of record that the mascara
of Piot, or that mascara in general, hardens and will generate dust when
sanded as required by the appealed claims (App. Br. para. bridging 24-25).
In response, the Examiner contends that "make-up/mascara is known
to harden/dry after application, just as would the joint compound" (Ans. 5)
and that "once dry, it would inherently have the same sandability properties,
or lack there of [sic], as the claimed composition" (id.).
The Examiner has provided this record with no credible evidence or
technical reasoning in support of the contentions that mascara hardens when
exposed to air such that it would generate dust when sanded as required by
the rejected claims. Under this circumstance, the Examiner's contentions are
nothing more than conjectures which are inadequate to support the finding of
anticipation or conclusion of obviousness made in the rejections on appeal.
For this reason alone, we cannot sustain either of the above § 102 or
§ 103 rejections.
The decision of the Examiner is reversed.
REVERSED

ssl