Ex Parte Vincent et al

Patent Trial and Appeal Board

Feb 19, 2016

13058410 (P.T.A.B. Feb. 19, 2016)

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).
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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
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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.
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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
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