Ex Parte Vincent et alDownload PDFPatent Trial and Appeal BoardFeb 19, 201613058410 (P.T.A.B. Feb. 19, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/058,410 02/10/2011 33250 7590 02/19/2016 W. R. GRACE & CO.-CONN ATTENTION: PA TENT DEPARTMENT 62 WHITTMORE A VENUE CAMBRIDGE, MA 02140 FIRST NAMED INVENTOR Dany Vincent 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. L3995-0l 1070 EXAMINER WEDDLE, ALEXANDER MARION ART UNIT PAPER NUMBER 1712 MAILDATE DELIVERY MODE 02/19/2016 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 PATENT TRIAL AND APPEAL BOARD Ex parte DANY VINCENT, ERIC DANANCHE, RALF QUERN, and BYONG-W A CHUN 1 Appeal2014-000476 Application 13/058,410 Technology Center 1700 Before BEYERL YA. FRANKLIN, MARK NAGUMO, and JEFFREY W. ABRAHAM, Administrative Patent Judges. ABRAHAM, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the decision of the Examiner finally rejecting claims 1, 4--9, 11, 12, 14, and 15. We have jurisdiction pursuant to 35 U.S.C. § 6(b ). We affirm. BACKGROUND Appellants' claimed invention relates to a method for retarding the setting of the surface of a concrete or other hydratable cementitious material using ester-based surface retarders. Abstract. 1 According to the Appeal Brief, the Real Party in Interest is W.R. Grace & Co.-Conn. Br. 3. Appeal2014-000476 Application 13/058,410 Claim 1 is the only independent claim on appeal and is reproduced below from the Claims Appendix (Br. 11 ): 1. A method for retarding the surface of a concrete, mortar, or other hydratable cementitious material, comprising: spray-applying onto a surface of a hydratable concrete or mortar or other cementitious material so as to retard the setting thereof, or otherwise spray-applying onto a surface of a mold against which a hydratable concrete or mortar or other cementitious material is subsequently cast, a liquid-spray-applied surface-retarder composition comprising at least one oil- or solvent-soluble or oil- dispersible alkyl-ester compound in the form of particles or as a discontinuous liquid phase distributed within a continuous non- aqueous carrier phrase [sic] which is spray-applied in liquid form; said alkyl-ester compound comprising an alkyl ester of citric acid, an alkyl ester of tartaric acid, an alkyl ester of malic acid, an alkyl ester of gallic acid, an alkyl ester of glycolic acid, an alkyl ester of gluconic acid, an alkyl ester of lactic acid, an alkyl ester of mandelic acid, an alkyl ester of salicylic acid, an alkyl ester of 4- hydroxybutanoic acid, or mixtures thereof; and said continuous non-aqueous liquid spray-applied carrier phase comprising a petroleum based solvent, a vegetable oil, an animal oil, a mineral oil, or mixture or derivative of any of the aforesaid continuous non-aqueous carrier phases. The Examiner maintains, and Appellants appeal, the rejection of claims 1, 4--9, 11, 12, and 14 under 35 U.S.C. § 103(a) over Mauchamp (US 2005/0081751 Al, published Apr. 21, 2005) in view of Curschellas (GB 405,508, published Feb. 8, 1934) and Guritza (US 2002/0045057 Al, published Apr. 18, 2002), and the rejection of claim 15 under 35 U.S.C. § 103(a) over Mauchamp, Curschellas, and Guritza, and further in view of Aoyama (US 4,205,040, issued May 27, 1980). 2 Appeal2014-000476 Application 13/058,410 Appellants do not separately argue the patentability of any dependent claim, and, therefore, dependent claims 4--9, 11, 12, 14, and 15 will stand or fall with independent claim 1. OPINION We sustain the above rejection based on the Examiner's findings of fact, conclusions of law, and rebuttals to Appellants' arguments, as expressed in the Final Action and Answer. The following comments are added for emphasis. The Examiner finds that Mauchamp teaches all of the steps recited in claim 1, but does not disclose a surface-retarder composition comprising at least one oil-dispersible alkyl ester compound, such as an alkyl ester of citric acid or tartaric acid, as required by claim 1. Final Act. 3; Br. 11 (Claims App.). The Examiner, however, finds (1) that Mauchamp discloses a surface-retarder composition comprising an oil-dispersible hydroxycarboxylic acid or its salt (e.g., c1tnc acid); (2) that Curschellas teaches that citric acid and its ester substitution products can be used to retard the setting of concrete; and (3) that Guritza teaches that in producing cements and concretes, plasticizers such as alkyl esters ofhydroxycarboxylic acids (e.g., triethyl citrate and diethyl tartrate) may be added to "prevent vitrification of the concrete." Final Act. 3--4. The Examiner thus determines that It would have been obvious to the person of ordinary skill in the art at the time of invention to modify the process of [Mauchamp] in view of [ Curschellas] by including an alkyl ester of a hydroxycarboxylic acid taught in [Mauchamp ], such as triethyl citrate or diethyl tartrate, in vegetable oil because [Curschellas] suggests that esters of citric and tartaric acids will provide typical plasticity with less water, good strength, and 3 Appeal2014-000476 Application 13/058,410 setting retardation and [Guritza] suggests that the alkyl esters triethyl citrate and diethyl tartrate act as plasticizers of cementitious materials. Id. at 4. Appellants argue that a person of ordinary skill in the art would not have looked to Curschellas to modify Mauchamp because Curschellas teaches mixing ester substitution products of citric acid into the cement itself as opposed to using these products in non-aqueous coatings applied only to the surface of the concrete. Br. 7. Appellants further argue that Curschellas teaches away from selecting and using its ester substitution products in Mauchamp in view of "Curschellas' emphasis on achieving 'imperviousness' to water and decreased 'porosity' (page 1, lines 29, 65-69, 7 5-85) and achieving 'rapid setting, great strength and increased chemical resistance' (page 2, lines 33-34)." Id. Appellants' arguments lack persuasive merit. It is not contested that Curschellas teaches that its ester substitution products "influence the time of setting, in that they retard the setting of the mortar and concrete, cement or the like." Curschellas 1:91-95. In view of this, we agree with the Examiner that Curschellas' suggestion that its ester substitution products can be used to control other properties "does nothing to eliminate the clear teaching that they are known set retarders, and Mauchamp teaches using set retarders to retard the setting of concrete in the process claimed by Appellant[s]." Ans. 5---6; see Mauchamp i-f 6 (referring to the inclusion of "at least one cement retarding active component"). We likewise agree with the Examiner's statement that "[i]t is not clear how Curschellas teaches away from using an ester of citric acid as a setting retardant of concrete when it discloses that it retards the setting of concrete." Ans. 6. 4 Appeal2014-000476 Application 13/058,410 Appellants also argue that a person of ordinary skill in the art would not have been motivated to modify Mauchamp and Curschellas in view of the teachings of Guritza because Guritza never states or suggests the use of the claimed alkyl ester compounds as plasticizers for hydratable concrete, and does not employ the term "vitrification" in the context of concrete. Br. 8-9. As noted by the Examiner, however, Guritza teaches that plasticizers such as triethyl citrate and diethyl tartrate may be added to a media formed from a "composite," which, according to Guritza, includes "pozzolans or quick lime composites such as cements and concretes which form composites with aggregates, cementitious aggregates using zinc particulates, slags, [and] portland cement." Guritza i-fi-f 165, 187, 188; Ans. 6. For all of these reasons, we hold the Examiner reasonably determined that the combination of Mauchamp, Curschellas, and Guritza was nothing more than the "simple substitution of one known element for another to obtain predictable results" in view of Mauchamp 's disclosure of the use of c1tnc acid and/or its citrate salt in a spray treatment for retarding the setting of a concrete surface, as well as Curschellas and Guritza's suggestions of closely-related chemicals also recognized as performing the same function of retarding the setting of concrete. Ans. 2 (citing KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398 (2007)). CONCLUSION We affirm the Examiner's final rejection of claims 1, 4--9, 11, 12, 14, and 15. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 5 Copy with citationCopy as parenthetical citation