Ex Parte Shendy et al

Board of Patent Appeals and Interferences

Aug 24, 2011

11099075 (B.P.A.I. Aug. 24, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/099,075 04/05/2005 Samy M. Shendy MBC-0370B 6484
23575 7590 08/24/2011
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
EXAMINER
SZEKELY, PETER A
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
08/24/2011 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 SAMY M. SHENDY, JEFFREY R. BURY,
FRANK ONG, and THOMAS M. VICKERS, JR.
____________

Appeal 2010-006157
Application 11/099,075
Technology Center 1700
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH and
KAREN M. HASTINGS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006157
Application 11/099,075

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1 through 20. We have jurisdiction under 35 U.S.C. § 6.
Appellants’ claimed invention relates to “an admixture composition
for cementitious compositions.” App. Br. 8. Claim 1 is illustrative:
1. An admixture composition for cementitious compositions
comprising a stable micellar solution of a water insoluble
defoamer; an amine salt solubilizing agent capable of
solubilizing the water insoluble defoamer in an acidic medium,
said amine salt solubilizing agent comprising at least one of
(mono, di, or tri)alkyl amine, alkyl (di, tri or tetra)amine or
mixtures thereof and being present in an amount sufficient to
obtain a thermodynamically stable micellar solution stabilized
by an interfacial layer of surfactants; and optionally a dispersant
for cementitious compositions.
The Examiner relied on the following references in rejecting the
appealed subject matter:

Darwin et al. (Grace) WO 98/31643 July 23, 1998
Mosquet et al. (Chryso) FR 2,760,004 August 28, 19981

1 The Examiner cited French Patent No. 2,760,004 (Chryso) in the rejection
and relied on USPTO English translation PTO 02-1860, entered into the
record on November 25, 2008, to interpret the French patent. Appellants
rely on International Publication No. WO 98/38142 A1, made of record on
August 5, 2005, as the English translation of the same French patent in
addressing the Examiner’s rejection. The International Publication No. WO
98/38142 A1 was not utilized in the statement of the rejection. Therefore,
we will limit consideration of the rejection to French Patent No. 2,760,004
and will cite to the USPTO translation relied on by the Examiner in our
discussion of the rejection.
Appeal 2010-006157
Application 11/099,075

3
Appellants request review of the following rejection (App. Br. 9) from
the Examiner’s final office action:
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Grace in view of Chryso.

OPINION
The prior art rejection2
The dispositive issue for this rejection is: Did the Examiner err in
determining that the combination of Grace and Chryso would have led one
skilled in the art to modify the cementitious composition of Grace by adding
the amine salt surfactants of Chryso to arrive to the subject matter of
independent claim 1?
We answer this question in the affirmative and REVERSE.
The Examiner found that Grace discloses an admixture composition
for cement compositions comprising a defoamer and a surfactant. Ans. 3;
Grace 3. The Examiner also found that Chryso discloses a hydraulic binding
agent for cement mixtures including amine salt surfactants and antifoaming
agents. Ans. 3; Chryso 1, 8, and 10. The Examiner also found that Chryso’s
hydraulic binding agents can be clear stable mixtures. Ans. 3; Chryso
Examples 5 and 11. The Examiner concluded that it would have been
obvious “to use the surfactants of Chryso [] in the composition of [] Grace,
in order to limit the air entrained into the aqueous suspensions of mineral
particles and mixtures based upon a hydraulic binding agent.” Ans. 3.
We agree with Appellants that there is no reasonable expectation that
the admixture of Grace could be successfully modified by the addition of the

2 We will limit our discussion to independent claim 1.
Appeal 2010-006157
Application 11/099,075

4
surfactant of Chryso to arrive to the claimed invention. App. Br. 16.
Appellants argue that there is no disclosure in Grace to use an amine salt.
Id. at 17. We also agree with Appellants that the Examiner’s rejection
appears to be premised on hindsight reasoning. Id. Grace specifically
discloses the surfactant-stabilizers are:
selected from the group comprising (1) an esterified fatty acid
ester of a carbohydrate selected from the group consisting of a
sugar, sorbitan, a monosaccharide, a disaccharide, and a
polysaccharide, (2) a C2 - C20 alcohol containing ethylene oxide
and propylene oxide (“EO/PO”) groups, and (3) mixtures of
such.
(Grace 3, ll. 18-22). The Examiner has not adequately explained how the
properties of the surfactants of Chryso are the same or reasonably the same
as the surfactants of Grace. The Examiner has failed to explain why a
person of ordinary skill in the art would have reasonably expected that the
amine salt surfactants of Chryso could have been substituted for the
surfactants of Grace. The Examiner has also failed to explain why a person
of ordinary skill in the art would have reasonably expected that that
Chryso’s amine salt surfactant could have been used together in combination
with Grace’s required surfactants in order to limit the air entrained into the
aqueous suspensions of mineral particles and mixtures based upon a
hydraulic binding agent. In other words, the Examiner failed to explain how
one of ordinary skill in the art would have had an expectation of success in
combining the teachings of Chryso (amine salt surfactant) with the teachings
of Grace to arrive at the claimed invention.
The mere fact that the prior art could be modified as proposed by the
Examiner is not sufficient to establish a prima facie case of obviousness.
See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992). The Examiner must
Appeal 2010-006157
Application 11/099,075

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explain why the prior art would have suggested to one of ordinary skill in
the art the desirability of the modification. See Fritch, 972 F.2d at 1266.
The Examiner has not provided such an explanation.
For the foregoing reasons, we reverse the stated rejection.
ORDER
The rejection of claims 1-20 under 35 U.S.C. § 103(a) as unpatentable
over Grace in view of Chryso is reversed.

REVERSED
bar