Ex Parte Rinaldi et al

Patent Trial and Appeal Board

May 24, 2018

13388567 (P.T.A.B. May. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/388,567 02/02/2012
909 7590 05/29/2018
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
FIRST NAMED INVENTOR
David Rinaldi
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.
035112-0403192 8649
EXAMINER
USELDING, JOHN E
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
05/29/2018 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID RINALDI, EMMANUEL VILLARD,
STEPHANE VENON, and DENIS ROCCA
Appeal 2017-008411
Application 13/388,567
Technology Center 1700
Before CHRISTOPHER L. CRUMBLEY, WESLEY B. DERRICK, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134(a) of the Examiner's
final rejections of claims 1, 2, 6-9, 11, 13, 15-17, and 20-24. 1 We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Application No. 13/388,567, titled Fluidizing Mix for a Composition with a
Base of Hydraulic Binder, filed February 2, 2012 ("Spec."). The real party
in interest is identified as LAFARGE. Appeal Brief filed February 2, 2016
("App. Br."), 2.
Appeal 2017-008411
Application 13/388,567
CLAIMED SUBJECT MATTER
The claims are directed to "compositions with a base of hydraulic
binder in which at least one water-reducing agent is mixed." Spec. 1 :5---6.
Examples of such a composition include "a concrete which comprises a
hydraulic binder mixed with fine aggregates" including "sand, and
optionally coarse aggregates, for example ground stone." Id. at 1 :6-8. The
claims seek to address issues in the production of concrete related to the
length of setting time and other attributes. Id. at 1 :21-34.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A hydraulic composition comprising:
at least one hydraulic binder;
at least one first water-reducing additive comprising
at least one phosphonic amino-alkylene group;
at least one second water-reducing additive
comprising at least one polymer with a comb structure, the
at least one polymer with a comb structure being a
polycarboxylate of polyoxyalkylene of methacrylic acid
the concentration by weight of dry extract of the second
additive being in a range from 30% to 95% of the
concentration by weight of dry extract of the first additive;
wherein the setting delay is less than 6 hours 45
minutes.
App. Br. 35 (Claims Appendix) ( emphases added).
2
Appeal 2017-008411
Application 13/388,567
REJECTIONS 2
Claims 1, 2, 6-9, 11, 13, 15-17, 3 and 20-24 are rejected under
35 U.S.C. § 112, first paragraph (pre-AIA) for failing to comply with the
written description requirement. Final Act. 2. 4
Claims 1, 2, 6-9, 11, 13, 15-17, and 20-24 are rejected under
35 U.S.C. § 103(a) (pre-AIA) as being unpatentable over Guicquero. 5 Final
Act. 3.
OPINION
Written Description
The Examiner rejects claim 16 under 35 U.S.C. § 112, first paragraph
(pre-AIA) for failure to comply with the written description requirement,
finding the Specification does not allow a skilled artisan to recognize that
the inventors had possession of a "hydraulic composition" whose "setting
delay is less than 6 hours 45 minutes" as recited. Final Act. 2.
The Specification undisputedly provides examples whose setting
delay ranges between 4 hours 50 minutes and greater than 15 hours. See
2 A rejection of claim 11 under 35 U.S.C. § 112, second paragraph
(pre-AIA) has not been appealed. See App. Br. 15.
3 Appellants state "Claim 14 has been withdrawn" and therefore claim 14 is
not before us on appeal - although claim 14 is listed in the Appeal Brief as
one of the claims on appeal. See App. Br. 9, 39 (Claims Appendix).
4 We refer to the Final Action mailed January 23, 2015 ("Final Act.") and
the Examiner's Answer mailed June 23, 2016 ("Ans."). No Reply Brief has
been submitted.
5 WO 1999/047468, published September 23, 1999.
6 Appellants present arguments solely for independent claim 1 for this
rejection. App. Br. 11-15. Consistent with the provisions of 37 C.F.R.
§ 4I.37(c)(l)(iv) (2013), claims 2, 6-9, 11, 13, 15-17, and 20-24 stand or
fall with claim 1 with regard to the written description rejection.
3
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Application 13/388,567
Spec. 13 (Table 4), 14 (Table 5), 15 (Table 6); compare App. Br. 13-14
(showing Tables 4--6), with Ans. 2-3. The Examiner finds that the recited
setting delay "less than 6 hours 45 minutes" is broader than the setting delay
range provided in the Specification and therefore unsupported. Ans. 2-3.
An Examiner, after studying the Specification, can make out a prima
facie case of lack of adequate written description by identifying specific
claim limitations and stating that despite reviewing the Specification, the
Examiner could not find support for those limitations. See In re Alton, 7 6
F.3d 1168, 1175 (Fed. Cir. 1996). The burden is then shifted to the applicant
to rebut such a finding. Id.
In this case, we are not persuaded that the Examiner harmfully erred
in finding that the Specification does not provide support for a setting delay
of "less than 6 hours 45 minutes" as recited in claim 1. In the record before
us, the lowest setting delay provided in the Specification is 4 hours 50
minutes. App. Br. 13 (Table 4). 7 The disclosure therefore does not support
the broader claim language of a recited composition exhibiting a "setting
delay [of] less than 6 hours 45 minutes." See In re Wertheim, 541 F.2d 257,
263-64 (CCPA 1976) (holding that the limitation "at least 35%" violated the
written description requirement because it had no upper limit and caused the
claim to read literally on embodiments outside of the "25% to 60%" range
described in the specification as originally filed). Appellants' evidence is
insufficient to either identify harmful error in or rebut the Examiner's
7 This particular example shows "Optima 100/0ptima 206 % of 0/100" for a
"[s]etting start time" of "4 h 50 min." App. Br. 13 (Table 4). The record
before us does not clearly show the recited "concentration by weight of dry
extract of the second additive ... by weight of dry extract of the first
additive" for these examples.
4
Appeal 2017-008411
Application 13/388,567
finding here. The rejection under 35 U.S.C. § 112, first paragraph (pre-AIA)
is sustained.
Obviousness
In rejecting claim 18 over Guicquero, the Examiner acknowledges that
Guicquero describes a reaction for a hydraulic composition using polyacrylic
acid but finds that Guicquero teaches the interchangeability between using
"acrylic acid and/ or methacrylic acid." Final Act. 3 ( citing Guicquero 1-2,
examples 9 and 10).
Appellants do not dispute the finding that Guicquero teaches using
acrylic acid and methacrylic acid interchangeably but argue that the
reference does not teach a "setting delay less than 6 hours 45 minutes" by
using the methacrylic acid as recited in claim 1. Compare App. Br. 17, with
Final Act. 3. To the extent that Appellants assert that there is a "discovery
of a previously unappreciated property of a prior art composition," it has
been long established that such a discovery (if any in this case) "does not
render the old composition patentably new to the discoverer." Atlas Powder
Co. v. Ireco, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). We therefore are
not persuaded that the Examiner harmfully erred in this aspect of the
obviousness analysis. Appellants' unexpected results arguments are
addressed in further detail infra.
Appellants next argue that Guicquero teaches a large range of the
compositions of various additives but not a specific "concentration by
weight of dry extract of the second additive being in a range from 30% to
8 Appellants present arguments solely for independent claim 1. App. Br. 15-
26. Consistent with the provisions of 37 C.F.R. § 4I.37(c)(l)(iv) (2013),
independent claim 8 stands or falls with claim 1.
5
Appeal 2017-008411
Application 13/388,567
95% of the concentration by weight of dry extract of the first additive" as
recited in claim 1. App. Br. 17-18. Because Appellants agree that example
10 of Guicquero teaches that the concentration at issue is 33% (id. at 18, 19),
no harmful error has been identified in the Examiner's finding that the prior
art concentration is within the recited range of "from 30% to 95%." See
Wertheim, 541 F .2d at 267 (holding that where claimed ranges overlap with
data disclosed by the prior art, a prima facie case of obviousness exists).
With regard to the purported unexpected results (such as limiting the
setting delay time) exhibited by the recited composition, Appellants present
test data using "Optima 100" as the first additive and "PCP" as the second
additive. App. Br. 20-21 ( citing ,r,r 8-9 of a Declaration by David Rinaldi
filed April 14, 2014 ("Rinaldi Declaration")). While the Examiner
maintains that the Rinaldi Declaration previously submitted includes
illegible data (Ans. 7), we note that a clean copy of the tabulated test data
was reproduced in a response filed January 8, 2015, at page 10.
Having considered the test data, we are not persuaded of harmful error
in the Examiner's determination that the evidence is not commensurate with
the scope of claim 1. For example, Appellants do not respond to the
Examiner's finding that the test data based solely on Optima 100 as the first
additive is not commensurate in scope with a "first water-reducing additive
comprising at least one phosphonic amino-alkylene group" as recited in
claim 1. Compare Final Act. 7, with App. Br. 20-25; see also Ans. 5.
Appellants do not explain why the test data based solely on Optima 100 as
the first additive provides a reasonable basis for concluding that the untested
embodiments encompassed by the claims would behave in the same manner
as those tested. See App. Br. 20-25, Rinaldi Deel. ,r,r 7-10; see also In re
6
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Application 13/388,567
Lindner, 457 F.2d 506, 508 (CCPA 1972). Nor do Appellants provide such
an explanation with regard to the test data which is based solely on a
substance identified as "PCP" as the second additive recited in claim 1.
Compare Final Act. 7, with App. Br. 20-25; see also Ans. 5, Rinaldi Deel.
,r,r 7-10. Appellants do not respond to the Examiner's finding that "PCP" is
an insufficient identification of a compound. Compare Final Act. 7, with
App. Br. 20-25; see also Ans. 5. "The burden of showing that the error is
harmful normally falls upon the party attacking the agency's determination."
In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (quoting Shinseki v.
Sanders, 556 U.S. 396, 409 (2009)). In this case, Appellants have not
explained why the Examiner harmfully erred in finding that the purported
unexpected results are not commensurate in scope with the claim.
Lastly, Appellants have not identified harmful error in the Examiner's
assessment with regard to the purported synergistic effect of the first and
second additives of the recited composition. From the outset, "[ s ]ynergism,
in and of itself, is not conclusive of unobviousness in that synergism might
be expected." In re Kollman, 595 F.2d 48, 55 n.6 (CCPA 1979). Neither
Appellants nor the declarant explains why evidence based solely on Optima
100 and Optima 200 supports the purported synergy for the entire range of
the recited first and second additives. See App. Br. 24--25; see also
Declaration by Martin Mosquet filed on November 15, 2013 ("Mosquet
Deel.") ,r 7. In addition, while Appellants argue that the prior art teaches
that "the amount of Optima 100 should be kept lower than the amount of'
the second additive, neither Appellants nor the declarant explains why
example 10 of Guicquero showing an amount of Optima 100 higher than
that of the second additive supports this argument. See App. Br. 24--25; see
7
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Application 13/388,567
also Mosquet Deel. ,r 7. For these reasons, we are not persuaded of harmful
error in the Examiner's determination that the proffered evidence is
insufficient to support the non-obviousness of the claims.
Appellants' arguments for dependent claims 2, 6, 7, 9, 11, 13, 15-17,
and 20-24 are entirely based on their respective dependency from claim 1 or
claim 8. App. Br. 26-33. The obviousness rejection of the dependent
claims are sustained for the reasons provided with regard to claim 1. See
37 C.F.R. § 4I.37(c)(l)(iv) (2013) ("A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim.").
DECISION
The Examiner's rejections of claims 1, 2, 6-9, 11, 13, 15-17, and 20-
24 are sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
8