Ex Parte Scharlemann et al

Patent Trial and Appeal Board

Mar 1, 2017

13697981 (P.T.A.B. Mar. 1, 2017)

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.
13/697,981 11/14/2012 Sonja Scharlemann 69383-US-PCT 7940
109 7590 03/03/2017
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
HIJJI, KARAM Y
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
03/03/2017 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SONJA SCHARLEMANN, JOERG NEUBAUER, and
MATTHIAS KNARR1
Appeal 2016-003796
Application 13/697,981
Technology Center 1700
Before CATHERINE Q. TIMM, WESLEY B. DERRICK, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—4 and 6—8.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and denominate our affirmance as including
NEW GROUNDS OF REJECTION insofar as our reasoning differs from
that of the Examiner.
STATEMENT OF THE CASE
Appellants’ invention is generally directed to a water-based inorganic
1 Appellants identify the Real Party in Interest as DOW Global Technologies
LLC. Appeal Brief filed April 9, 2015 (“Br”), 2.
2 Claims 9, 11, 12, 14, and 15 stand withdrawn from rejection. Final Office
Action entered November 6, 2014 (“Final Act”), 2.
Appeal 2016-003796
Application 13/697,981
binder composition. Spec. 2,11. 11—12. Claim 1 illustrates the subject
matter on appeal and is reproduced below:
1. A water-based inorganic binder composition comprising
inorganic binder, cellulose ether and microcrystalline cellulose
wherein the microcrystalline cellulose is present at a
concentration of 10—30 percent by weight based on the total
weight of cellulose ether and microcrystalline cellulose.
Br. 10 (Claims Appendix).
Appellants request review of the following rejections maintained by
the Examiner in the Answer entered December 30, 2015 (“Ans.”):
Claims 1, 2, 4, and 6—8 under 35 U.S.C. § 103(a) as unpatentable over
Nakanishi et al. (US 5,767,176, issued June 16, 1998, hereinafter
“Nakanishi”) and Fu et al., Effect of Methylcellulose Admixture on the
Mechanical Properties of Cement, 26 Cement and Concrete Research 535—
38 (1996) (hereinafter “Fu”).
Claims 1—4 and 6—8 under 35 U.S.C. § 103(a) as unpatentable over
Nakanishi and Hagen et al. (US 2005/0241539 Al, published November 3,
2005, hereinafter “Hagen”).
DISCUSSION
Upon consideration of the evidence on this appeal record and each of
Appellants’ contentions, we affirm the Examiner’s rejection of claims 1—4,
6, and 8 under 35 U.S.C. § 103(a) as unpatentable over Nakanishi and
Hagen. However, we designate our affirmance as including new grounds of
rejection because our reasons for affirmance differ materially from those
expressed by the Examiner. We reverse the Examiner’s rejections of claim 7
under 35 U.S.C. § 103(a) as unpatentable over Nakanishi and Fu, and as
unpatentable over Nakanishi and Hagen, for the reasons set forth in the
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Appeal Brief.3
We add the following for explanation and emphasis.
Claims 1—4, 6, and 84
We note initially that Appellants’ Specification indicates that the
inorganic binder recited in claim 1 is gypsum-based mortar or cement. Spec.
2,11. 11-15.
Appellants argue that Nakanishi and Hagen fail to disclose cellulose
ether and microcrystalline cellulose “together in any amount,” much less the
amounts recited in claim 1, because Nakanishi “fails to disclose in any way a
proportion of cellulose ether,” and Hagen fails to disclose microcrystalline
cellulose. Br. 4.
3 Having affirmed the rejection of claims 1—4, 6, and 8 over the combined
teachings of Nakanishi and Hagen, and reversed the rejections of claim 7
over Nakanishi and Hagen, and over Nakanishi and Fu, it is unnecessary for
us to address the cumulative § 103(a) rejection of claims 1, 2, 4, 6, and 8
based on the combined teachings of Nakanishi and Fu. Cf. In re Cleave, 560
F.3d 1331, 1338 (Fed. Cir. 2009) (holding that obviousness rejections need
not be reached upon affirming a rejection of all claims as anticipated); In re
Basel! Poliolefine Italia S.P.A., 547 F.3d 1371, 1379 (Fed. Cir. 2008)
(“Having concluded that the Board properly affirmed the rejection of claims
1—52 of the ‘687 patent based on obviousness-type double patenting in view
of the ‘987 patent, we need not address the remaining issues raised by Basell
regarding the §§ 102(b) and 103(a) rejections, as well as the additional
double patenting rejections. Accordingly, the Board’s decision is
affirmed.”); Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
1984) (having decided a single dispositive issue, the ITC was not required to
review other matters decided by the presiding officer).
4 Appellants argue claims 1—4, 6, and 8 together. Br. 4—5. Therefore, we
select claim 1 as representative, and claims 2-4, 6, and 8 will stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
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Application 13/697,981
However, Appellants’ arguments are contrary to the express
disclosures of Nakanishi. Specifically, Nakanishi discloses a mortar
composition comprising 3 to 35 parts by weight of an aqueous dispersion of
an epoxy resin, 50 to 500 parts by weight of an aggregate, and 100 parts by
weight of cement. Nakanishi col. 2,11. 28—33. Nakanishi discloses that the
aqueous dispersion comprises, in addition to the epoxy resin,
microcrystalline cellulose, a surface active agent, and a polyamine curing
agent. Nakanishi col. 2,11. 13—18.
Nakanishi discloses that the proportion of microcrystalline cellulose in
the aqueous dispersion is preferably 0.1 to 5.0 parts by weight per 100 parts
by weight of the epoxy resin. Nakanishi col. 2,11. 13—18; col. 3,11. 32—34.
Nakanishi explains that if less than 0.1 part by weight of microcrystalline
cellulose is included in the aqueous dispersion, the epoxy resin will not
sufficiently disperse in water and will precipitate and separate, whereas if
more than 5.0 parts by weight are included, the cured polymer dispersion
will not withstand practical use. Nakanishi col. 3,11. 34-41. As discussed
above, Nakanishi discloses that the aqueous dispersion is included in a
mortar composition. Nakanishi col. 2,11. 28—33. Accordingly, Nakanishi
indicates that the amount of microcrystalline cellulose in the aqueous
dispersion used in a mortar composition affects the mortar composition’s
properties—whether it will withstand practical use—establishing that the
amount of microcrystalline cellulose in the mortar composition is a result-
effective variable. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed.
Cir. 2012) (“A recognition in the prior art that a property [or a result] is
affected by the variable is sufficient to find the variable result-effective”)
Nakanishi further discloses that the effects of the mortar composition
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may be enhanced by including a water-retaining agent in the composition,
and Nakanishi indicates that methyl cellulose is a suitable water-retaining
agent. Nakanishi col. 6,11. 46—50. Nakanishi discloses including 0.05 to 2.0
parts by weight of the water-retaining agent per 100 parts by weight of
cement in the mortar composition. Nakanishi col. 6,11. 51—53. Nakanishi
explains that if less than 0.05 part by weight of a water-retaining agent is
included in the mortar composition, no enhancement occurs, but if more than
2.0 parts by weight are included, the workability of the mortar decreases, as
does its water-resistant strength (Nakanishi col. 6,11. 53—59), thus,
establishing that the amount of water-retaining agent in the mortar
composition is a result-effective variable. Applied Materials, 692 F.3d at
1297.
In addition, Hagen, like Nakanishi, indicates that the amount of
cellulose ether in cement mortar is a result-effective variable by disclosing
cellulose ethers that affect the water retention, sag resistance, and correction
time of mortar. Hagen || 2, 10, 13,25. Applied Materials, 692 F.3d at
1297.
Therefore, one of ordinary skill in the art at the time of Appellants’
invention reasonably would have been led to include a methyl cellulose
water-retaining agent in the mortar composition comprising microcrystalline
cellulose disclosed in Nakanishi to enhance the effects of the mortar, as
taught by Nakanishi. One of ordinary skill in the art would have had
sufficient skill to determine a suitable amount of microcrystalline cellulose
to include in the composition to ensure that the composition would withstand
practical use, and also would have had sufficient skill to determine a suitable
amount of methyl cellulose to include in the composition to achieve a
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desired level of water retention. Accordingly, we are of the opinion that one
of ordinary skill in the art at the time of the invention would have been led to
use in an inorganic binder composition including suitable amounts of the
microcrystalline cellulose and methyl cellulose, such as the concentration of
microcrystalline cellulose recited in claim 1, through nothing more than
routine experimentation. In re Boesch, 617 F.2d 272, 276 (CCPA 1980)
(“[DJiscovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art”). Appellants’ arguments are
therefore unpersuasive of reversible error.
Appellants further argue that experimental examples set forth in their
Specification demonstrate that a combination of cellulose ether and
microcrystalline cellulose at the concentration recited in claim 1 results in an
unexpected reduction in lump formation in gypsum-based joint mortar
compositions, unexpected increase in leveling in gypsum spray plaster, and a
dramatic increase in freeze-thaw stability in cement-based tile adhesives.
Br. 4-5 (citing Spec. 7,1. 7-8,1. 14; 9,1. 28-10,1. 19; 10,1. 20-12).
However, Appellants do not meet their burden of demonstrating that
the claimed water-based inorganic binder composition imparts results that
would have been unexpected by one of ordinary skill in the art at the time of
Appellants’ invention relative to the closest prior art. In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) (“the burden of showing unexpected results rests
on he who asserts them”); In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art”). The experimental examples relied on by Appellants
compare the characteristics of gypsum mortar compositions, gypsum spray
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Application 13/697,981
plaster, and cement-based tile adhesives that include a cellulose ether—but
do not include microcrystalline cellulose—to the characteristics of gypsum
mortar compositions, gypsum spray plaster, and cement-based tile adhesives
that include both a cellulose ether and varying amounts of microcrystalline
cellulose. Spec. 7,1. 7—8,1. 14; 9,1. 28—10,1. 19; 10,1. 20-12. As discussed
above, Nakanishi is the closest prior art, and the relied-upon experimental
examples do not provide a comparison between the claimed water-based
inorganic binder composition and the closest prior art compositions of
Nakanishi. Appellants’ arguments are therefore insufficient to rebut the
Examiner’s prima facie showing of obviousness. In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990) (“The law is replete with cases in which the
difference between the claimed invention and the prior art is some range or
other variable within the claims. These cases have consistently held that in
such a situation, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range.”) (internal citations omitted).
Claim 7
Claim 7 depends from claim 1 and recites that the inorganic binder
composition is in a form of a dry powder. We note initially that the
Examiner provides the same basis and explanation for the rejection of claim
7 under 35 U.S.C. § 103(a) as obvious over Nakanishi and Fu as he or she
provides for the rejection of claim 7 as obvious over Nakanishi and Hagen.
Final Act. 5,8. We accordingly address both rejections of together.
The Examiner finds that “Nakanishi teaches that the agents can be
added separately without water and in any order.” Final Act. 5, 8 (citing
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Nakanishi col. 5,11. 59—65). The Examiner determines that one of ordinary
skill in the art thus could have formed the mortar composition disclosed in
Nakanishi as a dry powder and added water to the powder subsequently, and
the Examiner concludes that the “order of steps is considered prima facie
obvious.” Final Act. 5, 8; Ans. 9. The Examiner further concludes that it
would have been obvious to prepare the mortar composition disclosed in
Nakanishi as a dry powder to allow the material to be easily stored and
transported. Final Act. 5,8; Ans. 9.
However, as Appellants point out, the portion of Nakanishi cited by
the Examiner does not disclose that the components of the mortar
composition can be combined without water in any order. Br. 7—8. Instead,
this portion of Nakanishi describes preparing a coating composition, rather
than a mortar composition, and indicates that a coating composition can be
prepared by mixing the components of the composition with an epoxy resin
aqueous dispersion that includes a curing agent, or alternatively, can be
prepared by mixing the components of the coating composition with an
epoxy resin aqueous dispersion and separately adding the curing agent.
Nakanishi col. 5,11. 59—65. The Examiner’s reliance on the cited disclosure
to support mixing components of a mortar composition in the absence of
water is, accordingly, ill-founded on this record.
In addition, the Examiner’s reasoning that the order of steps, including
the addition of water, is of no import as to the prima facie case ignores
Nakanishi’s requirement for the mortar composition to be formed by mixing
components that include an aqueous dispersion, which one of ordinary skill
in the art would have understood to differ from a simple mixture of the listed
components with water without regard to the order in which they were
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combined. The Examiner fails to provide an adequate explanation of how
Nakanishi’s process for producing a mortar composition that involves
preparing an aqueous dispersion of microcrystalline cellulose and other
components and adding the dispersion to the remaining ingredients of the
mortar differs only in the order of addition of water from preparing a dry
powder of the components of the mortar and subsequently adding water to
the dry powder. Nakanishi col. 5,11. 5—16; col. 6,11. 46—51; col. 7,11. 32—38;
col. 13,11.38-61.
Accordingly, on this record, the Examiner’s evidence and explanation
are insufficient to establish a prima facie case of obviousness of the subject
matter recited in claim 7 within the meaning of 35 U.S.C. § 103(a). We
therefore do not sustain the rejections of this claim.
DECISION
The rejections of claims 1—4, 6, and 8 under 35 U.S.C. § 103(a) are
affirmed, and our affirmance of these rejections is designated as including
new grounds of rejection. The rejections of claim 7 under 35 U.S.C.
§ 103(a) are reversed.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
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examiner, in which event the proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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; NEW GROUNDS OF REJECTION PURSUANT
TO 37 C.F.R. $ 41.50(b)
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