Ex Parte LeFevre et al

Board of Patent Appeals and Interferences

Jan 31, 2012

11103788 (B.P.A.I. Jan. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/103,788 04/12/2005 Richard LeFevre DRVZ 200008US01 8579
27885 7590 02/01/2012
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
OSELE, MARK A
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
02/01/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte RICHARD LEFEVRE and CHANDER PATIL
________________

Appeal 2010-010278
Application 11/103788
Technology Center 1700
________________

Before TERRY J. OWENS, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims1, 2, 4-11 and 13-16, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a sizing material for securing a mesh to a
construction joint, a kit for covering a building construction joint, and a
method for sealing a construction joint. Claim 1 is illustrative:
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1. A method of sealing a construction joint comprising
applying a liquid polymeric sizing comprised of between 15 and 45 percent
by weight waterborne styrene-butadiene polymer to the substrate forming
the joint at least partially embedding a mesh into said sizing, and applying
an upper coating of said sizing to said embedded mesh, wherein said styrene
butadiene polymer has a specific gravity between about 1.00 and 1.70.

The References
Peiffer 4,054,483 Oct. 18, 1977
Perna 4,197,338 Apr. 8, 1980
Kaplan 5,494,947 Feb. 27, 1996
DiGate 6,088,986 Jul. 18, 2000
Murphy US 2001/0034984 A1 Nov. 1, 2000
Newton US 2003/0181114 A1 Sep. 25, 2003
Ayambem US 2004/0060480 A1 Apr. 1, 2004
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
2, 4 and 7-9 over Newton in view of Kaplan and Peiffer, claims 5 and 6 over
Newton in view of Kaplan, Peiffer and Perna, claim 10 over Newton in view
of Kaplan, Peiffer and Murphy, claims 11 and 15 over Kaplan in view of
Peiffer, claims 13 and 14 over Kaplan in view of Peiffer and Ayambem, and
claim 16 over DiGate in view of Newton, Kaplan and Peiffer.
OPINION
The rejections are affirmed as to claims1, 2, 4, 5, 7-11 and 13-16, and
reversed as to claim 6.
Claims 1, 2, 4, 5, 7-11 and 13-16
Kaplan discloses a joint compound which remains flexible upon
curing and to which, when it is still wet, a wet coating can be applied (col. 2,
ll. 41-42; col. 3, ll. 41-45). The joint compound’s components “must be
combined in a well defined compounding protocol” (col. 4, ll. 50-51) and
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include an acrylate in a preferred amount of approximately 40-60 wt% and a
styrene-butadiene copolymer latex in a preferred amount of approximately
20 wt% of the acrylate (col. 5, ll. 57-63; col. 6, ll. 23-29; col. 7, ll. 58-60).
Peiffer discloses a printed circuit board’s tacky photopolymerizable
layer containing an acrylonitrile/butadiene/styrene terpolymer having a
specific gravity of “~ 1.07” (col. 10, ll. 15, 26-30).
The Examiner argues that in view of Kaplan’s terms “preferred” and
“approximately”, Kaplan would have rendered prima facie obvious, to one
of ordinary skill in the art, an amount of acrylate somewhat above the 40-
60 wt% range, such as 65 wt%, and an amount of styrene-butadiene
copolymer somewhat above 20 wt% of the acrylate, such as 23 wt%, such
that the styrene- butadiene copolymer is 15 wt% (0.23 x 65 wt%) of the
composition as recited in the Appellants’ claims (Ans. 9-10).
The Appellants argue regarding Kaplan’s amount of acrylate that
Kaplan “does not teach an approximate range that may be broadened
slightly, but rather teaches that for this specific preferred range, the
workable amount falls somewhere in between 40 and 60 weight percent”
(Reply Br. 2) and that “‘[p]referred’, in the absence of a teaching of a
broader range, does not amount to a concept ‘teaching’ a broader range”
(Reply Br. 3).
The “approximately” in Kaplan’s disclosure that the amount of
acrylate can be “between approximately 40 percent and 60 percent” by
weight (col. 7, ll. 59-61) indicates that the amount of acrylate can be outside
the 40-60 wt% range.
The Appellants argue, in reliance upon Merriam Webster’s dictionary,
that “approximately” means “nearly correct or exact” and that “[c]ontrary to
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the Examiner’s assertion, 65 percent is not nearly or exactly 60 percent and
23 percent is not nearly or exactly 20 percent” (Br. 9). The Appellants argue
that Kaplan’s “approximately 20 percent by weight” with respect to the
styrene-butadiene copolymer (col. 6, ll. 27-29) may include 19-21 percent by
weight (Reply Br. 3).
The Examiner points out, and the Appellants do not dispute, that the
level of ingredient specificity in a joint composition is not as crucial as in
many other chemical formulations (Ans. 10). The Appellants’ Specification,
which states that “[t]he sizing composition can be comprised of any suitable
material” (Spec. 3), is consistent with that argument. Accordingly, Kaplan’s
term “approximately” appears to be sufficiently broad to have rendered
prima facie obvious, to one of ordinary skill in the art, amounts of acrylate
and styrene butadiene copolymer of, respectively, 65 wt% and 23 wt%.
The Appellants argue that “Kaplan fails to provide any teaching that
would suggest to one skilled in the art that modifying the styrene-butadiene
concentration would allow the sizing to be used as a mesh embedment
system” (Br. 9).
Kaplan does not indicate, and the Appellants do not argue, that
Kaplan’s joint compound is unsuitable for embedding mesh. Kaplan
discloses that the joint compound is useful as drywall paste (col. 4, ll. 17-18)
and, in the Background of the Invention section, discloses that joint tape
typically is embedded into drywall paste and that a finishing coat
subsequently is applied to cover all preceding coats (col. 1, ll. 22-35).
Moreover, Kaplan’s joint compound, modified as discussed above to contain
65 wt% acrylate and 23 wt% styrene-butadiene copolymer latex such that
the styrene-butadiene copolymer latex is 15 wt% of the composition as
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recited in the Appellants’ claims, would be inseparable from its properties,
one of which is its suitability for embedding mesh. See In re Papesch, 315
F.2d 381, 391 (CCPA 1963) (“From the standpoint of patent law, a
compound and all of its properties are inseparable; they are one and the same
thing”).
The Appellants argue that in Kaplan’s only example in which the
composition contains a styrene-butadiene copolymer (col. 7, ll. 18-33) the
amount of styrene-butadiene copolymer is only 9.4 wt% (Reply Br. 3).
Kaplan is not limited to its examples. See In re Fracalossi, 681 F.2d
792, 794 n.1 (CCPA 1982); In re Kohler, 475 F.2d 651, 653 (CCPA 1973);
In re Mills, 470 F.2d 649, 651 (CCPA 1972); In re Bozek, 416 F.2d 1385,
1390 (CCPA 1969). Instead, all disclosures therein must be evaluated for
what they would have fairly suggested to one of ordinary skill in the art. See
In re Boe, 355 F.2d 961, 965 (CCPA 1966).
The Appellants argue that one must select Kaplan’s styrene-butadiene
copolymer from a list including polystyrene, vinyl polymers and
copolymers, and other resin suspensions (col. 4, ll. 8-11) (Reply Br. 3).
The Appellants do not explain, and it is not apparent, why Kaplan’s
disclosure would not have led one of ordinary to consider a styrene-
butadiene copolymer latex to be suitable, particularly in view of Kaplan’s
disclosure of a preferred styrene-butadiene copolymer (col. 6, ll. 23-29).
The Appellants argue that Kaplan limits the use of the styrene-
butadiene copolymer latex to wet-on-wet applications (Br. 12).
The Appellants improperly are arguing a limitation which is not in the
claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). The Appellants’
claims do not exclude wet-on-wet applications.
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The Appellants argue that Peiffer is nonanalogous art (Br. 10-11;
Reply Br. 4).
In view of Kaplan’s lack of disclosure of the styrene-butadiene
copolymer latex specific gravity, one of ordinary skill in the art, through no
more than ordinary creativity, would have used a styrene-butadiene
copolymer latex having a conventional specific gravity. See KSR Int’l. Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an obviousness
determination one “can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ”). Because “about 1.00”
encompasses values somewhat less than 1.00, the Appellants’ styrene-
butadiene copolymer latex specific gravity range of between about 1.00 and
1.70 appears to encompass the entire specific gravity range of such
latexes.1,2 Thus, the use of a styrene-butadiene copolymer latex having a
specific gravity within the Appellants’ recited range would have been prima
facie obvious to one of ordinary skill in the art.
Accordingly, we are not persuaded of reversible error in the rejections
of claims 1, 2, 4, 5, 7-11 and 13-16.3

1 The Appellants’ independent claims recite that the styrene-butadiene
copolymer has a specific gravity between about 1.00 and 1.70. The
Appellants’ Specification indicates that it is the waterborne styrene-
butadiene copolymer which has that specific gravity (Spec. 3-4).
2 The Appellants acknowledge that a styrene-butadiene copolymer latex
having a specific gravity of 1.70 may not be commercially available (Reply
Br. 4). Perhaps, in the Appellants’ Specification and claims, “1.70” should
be “1.07”.
3 The Appellants address claims 5, 10, 13, 14 and 16 in separate sections of
their Brief (pp. 13-14) but do not provide a substantive argument as to the
separate patentability of those claims.
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Claim 6
Claim 6, which depends indirectly from claim 1, requires that the
mesh is smoothed by a brush or a roller.
The Examiner argues that “[i]t would have been obvious to one of
ordinary skill in the art at the time the invention was made to use a roller in
the method of the references as combined above because Perna teaches that
a roller makes is [sic] easier for a laymen [sic] to perform the job (column 1,
lines 38-43) and saves time for a professional (column 1, lines 44-45)”
(Ans. 6).
The Examiner does not point out where the relied-upon portions of
Perna disclose the use of a brush or a roller to smooth a mesh. Perna
smooths tape with a finishing tool (col. 4, ll. 5-10). The Examiner has not
established that Perna’s term “finishing tool” includes or would have
rendered prima facie obvious, to one of ordinary skill in the art, a brush or a
roller.
Hence, we do not sustain the rejection of claim 6.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1, 2, 4 and 7-9 over
Newton in view of Kaplan and Peiffer, claim 10 over Newton in view of
Kaplan, Peiffer and Murphy, claims 11 and 15 over Kaplan in view of
Peiffer, claims 13 and 14 over Kaplan in view of Peiffer and Ayambem, and
claim 16 over DiGate in view of Newton, Kaplan and Peiffer are affirmed.
The rejection of claims 5 and 6 over Newton in view of Kaplan, Peiffer and
Perna is affirmed as to claim 5 and reversed as to claim 6.
It is ordered that the Examiner’s decision is affirmed-in-part.
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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-IN-PART

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