Ex Parte Rooshenas

Board of Patent Appeals and Interferences

May 12, 2011

11039217 - (D) (B.P.A.I. May. 12, 2011)

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.
11/039,217 01/18/2005 Rezvan Rooshenas LCT110003000 9698
22891 7590 05/12/2011
LAW OFFICE OF DELIO & PETERSON, LLC.
121 WHITNEY AVENUE
NEW HAVEN, CT 06510
EXAMINER
SELLERS, ROBERT E
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
05/12/2011 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 REZVAN ROOSHENAS
____________

Appeal 2010-002602
Application 11/039,217
Technology Center 1700
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
MARK NAGUMO, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 2, and 15-18. We have jurisdiction
pursuant to 35 U.S.C. § 6.

Appeal 2010-002602
Application 11/039,217

2

Appellant’s claimed invention is directed to an epoxy based tile grout
composition. Appellant acknowledges that a variety of tile grout
compositions are known, including cement based and epoxy based tile grout
compositions (Spec. 1 and 2). Appellant explains that (Spec. 2, ll. 16-22):
The highly preferred tile grout is now essentially a non-
hydraulic grout and comprises a film-forming, water-
dispersible, cross-linkable polymer and a curing agent. The
preferred cross-linkable polymer is an epoxy and the epoxy
grout mortars are essentially free of the undesirable properties
which are characteristic of the aforementioned cement base
grout compositions. In general, they have minimal shrinkage
and become highly water and stain resistance after a period of
time.

Moreover, Appellant reports that epoxy grouts, while they are used for
tile, lack the workability and cleanup ease of cement-based grouts (Spec. 2).
Hence, epoxy grouts are not widely accepted by ceramic tile installers (id.).
In this regard, a typical epoxy grout, according to Appellant, comprises an
epoxy resin, a polyamine or polyamido-amine curing agent for reacting
(cross-linking) with the epoxy resin to form a hardened grout, and filler
(Spec. 2-3).
Appellant acknowledges a new class of polyamine adduct is known as
a curing agent for epoxy, such as water compatible polyamine adducts
formed by reacting polyamine with mixtures of monoepoxide and
polyepoxide (Spec. 3). Appellant indicates that this new class of polyamine
adduct was unknown by Appellant to have been previously used in water –
based epoxy tile grouts (Spec.4).
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Appellant’s tile grout composition employs a polyamine epoxy resin
adduct, such as that acknowledged to be known as an epoxy resin curing
agent, and the grout is said to achieve the objective of easy cleanup and
workability while retaining the stain and chemical resistance generally
associated with epoxy grouts (Spec. 4-5). Applicant’s tile grout composition
consists essentially of epoxy polymer that is cross-linkable and water-
dispersible, a polyamine epoxy resin adduct that is water compatible, a filler,
and a water repellant. Claim 1 is illustrative and reproduced below:

1. A tile grout composition consisting essentially of:

a film-forming, water-dispersible, room temperature, cross-linkable
epoxy polymer;

a water compatible polyamine epoxy resin adduct;

a filler; and

a water repellent component.

The Examiner maintains the following grounds of rejection:
Claims 1, 2, and 15-18 stand rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1-5 of
U.S. Patent No. 6,881,768.1 Claims 1, 2, and 15-18 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over EP ‘7822, Johansen3, and JP

1 U.S. Patent No. 6,881,768 issued from Application No. 10/339,148 filed on
January 09, 2003, which prior filed application is identified as a parent
application to the present continuation Application (Spec. 1).
2 Rooshenas , EP 0,586,782, Mar. 16, 1994.
3 Johansen, Jr., 5,362,322, Nov. 8, 1994.
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Application 11/039,217

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‘7554 in view of Air Products5, Walker6, the Condensed Chemical
Dictionary7, and Dow ‘3538.
We affirm the stated rejections for substantially the reasons set forth
in the Examiner’s Answer. We add the following for emphasis.
Concerning the obviousness-type double patenting rejection,
Appellant does not argue this rejection on the merits; but, merely offers to
submit a terminal disclaimer (Br. 6). Of course, the proffer to file a terminal
disclaimer is not effective to overcome this rejection.
Accordingly, we summarily affirm the Examiner’s obviousness-type
double patenting rejection on this record.
Regarding the Examiner’s obviousness rejection, Appellant argues the
claims together as a group. Consequently, we select claim 1 as the
representative claim on which we decide the appeal as to this rejection.
The Examiner has made specific findings as to how and/or where each
of EP ‘782, Johansen, and JP ‘755 teaches or suggests grout compositions
that include an epoxy polymer (resin) component, filler component, and
water repellant component substantially as required by representative claim
1 (Ans. 4 and 5). We concur with the above-referenced findings made by
the Examiner.

4 Miyazaki, JP 2002-241755, Aug. 8, 2002 (as translated).
5 Air Products Technical Bulletin, Epoxy Curing Agents and Modifiers,
Anquanine® 701 Curing Agent (Feb. 2001).
6 CAPLUS accession No. 1996:496309, Walker et al., Proceedings of the
International Waterborne, High-Solids, and Powder Coatings Symposium,
(1966).
7 The Condensed Chemical Dictionary, 8th Edition, Gessner G. Hawley
(Revisor), Von Nostrand Reinhold Company, New York, NY, wax, p.
936(1971).
8 Dow Product Information Sheet, D.E.R.™ 353 Liquid Epoxy Resin (1985).
Appeal 2010-002602
Application 11/039,217

5
As for the required polyamine epoxy resin adduct component of the
claimed composition, the Examiner turns to Air Products and Walker to
teach this admittedly known curing agent (Ans. 5). The Examiner has
found, without dispute, that each of Air Products and Walker teaches using a
polyamine epoxy resin adduct curing agent for an epoxy resin provides
certain advantages (id.).
Based on the combined disclosures of the applied references, the
Examiner maintains that it would have been obvious to one of ordinary skill
in the art to employ the polyamine epoxy resin adduct taught by Air
Products and/or Walker in the grout composition of EP ‘782, Johansen,
and/or JP ‘755 as a curing agent with the reasonable expectation of obtaining
a grout composition having at least some of the advantageous characteristics
that Air Products and/or Walker disclose (Ans. 6).
Appellant argues, inter alia, that EP ‘782, Johansen, and JP ‘755
provide for an epoxy component that is either water insoluble or otherwise
technically not an epoxy component within the scope of claim 1, and/or that
the epoxy-containing compositions of these references include components
excluded by the “consisting essentially of” transitional language employed
in claim 1.
The principal issue before us is whether Appellant has indicated
substantive error in the Examiner’s obviousness determination based on the
arguments furnished in the Appeal Brief.
It is our judgment that Appellant has not done so for the reasons
advanced by the Examiner. In this regard, we note our agreement with the
Examiner’s determination that Appellant has not established that the
transitional term “consisting essentially of” as it appears in representative
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Application 11/039,217

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claim 1 excludes any necessary ingredients of the grout compositions of EP
‘782, Johansen, and/or JP ‘755 (Ans. 7-9, 11). The claim term “consisting
essentially of”, when used in a composition claim of a U.S. Patent or U.S.
Patent Application, is generally understood as indicating that “the invention
necessarily includes the listed ingredients and is open to unlisted ingredients
that do not materially affect the basic and novel properties of the invention.”
PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998).
During examination, "claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In assessing a broadest
reasonable claim construction wherein a potentially exclusionary “consisting
essentially of” transitional phrase is put in the claim by Appellant, it is
appropriate that Appellant bears the burden of: (1) showing the basic and
novel characteristics of their claimed invention, and (2) establishing how
those characteristics would be materially changed by any allegedly excluded
component of an applied reference. See In re DeLajarte, 337 F.2d 870,
873-74 (CCPA 1964); Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (BPAI
1989).
Here, Appellant has not persuasively established that any necessary
ingredients of the compositions of EP ‘782, Johansen, and/or JP ‘755 would
be inimical to the basic and novel characteristics of their tile grout
composition. In this regard, we note that Appellant’s Specification incudes
passages that indicate that a variety of polymers, alternatives, and/or
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Application 11/039,217

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modifications may be made to their tile grout composition without affecting
the basic and novel characteristics thereof (Spec. 14).
By arguing insolubility, Appellant has not established that the epoxy
resin of EP’782, Johnson, and/or JP ‘755 are not water dispersible, as
claimed (Br. 8-9). Moreover, Appellant’s arguments concerning this recited
epoxy polymer (resin) characteristic are undercut by Appellant’s disclosure
indicating that one of ordinary skill in the art knows how to disperse epoxy
resin (Spec. 6, ll. 15-23). See In re Herz, 537 F.2d 549, 551-52 (CCPA
1976) (“[I]t is necessary and proper to determine whether [the] specification
reasonably supports a construction” that would exclude or include particular
ingredients.).
Appellant comments that JP ‘755 is directed to steel reinforcing bar
grout material, not a tile grout (Br. 8-9). However, the epoxy composition is
the same whether it is used for tile or steel reinforcing bars.
We have considered the evidence adduced by the Examiner and the
Examiner’s reasoned application thereof to the subject matter embraced by
representative claim 1 and Appellant’s argument there against. Having
weighed the evidence and argument presented by the Examiner together
with the countervailing argument furnished by Appellant, we determine that
the evidence and argument weighs in favor of an obviousness determination.

CONCLUSION/ORDER
The Examiner’s decision to reject the appealed claims 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).
AFFIRMED

Appeal 2010-002602
Application 11/039,217

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LAW OFFICE OF DELIO & PETERSON, LLC.
121 WHITNEY AVENUE
NEW HAVEN CT 06510