Ex Parte Walloch et al

Patent Trial and Appeal Board

May 3, 2016

12632146 (P.T.A.B. May. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/632,146 12/07/2009 Craig Thomas WALLOCH
23599 7590 05/05/2016
MILLEN, WHITE, ZELANO & BRANIGAN, P,C
2200 CLARENDON BL VD.
SUITE 1400
ARLINGTON, VA 22201
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.
ACMC-0004 3283
EXAMINER
USELDING, JOHN E
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
05/05/2016 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG THOMAS WALLOCH, THEODORE GEORGE LIGHT,
and MARSHALL LEE BROWN1
Appeal2014-008740
Application 12/632,146
Technology Center 1700
Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 48 and 75-79. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellants identify ACM Chemistries, Inc. as the real party in interest.
App. Br. 1.
Appeal2014-008740
Application 12/632,146
BACKGROUND
The subject matter involved in this appeal relates to "water
penetration resistant" concrete masonry units (CMUs). Spec. 3.2 Claim 48
illustrates the subject matter on appeal and is reproduced from the Claims
Appendix of the Appeal Brief as follows: 3
48. A concrete masonry unit (CMU) made of a concrete or
cement composition, comprising
4-25% (s/s total dry weight) hydratable cement binder;
74-95% (s/s total dry weight) relatively fine aggregate
which is an aggregate blend or particle batch containing
aggregates as fine or finer than Size Number 8 coarse
aggregates as defined in ASTM C 33-07;
and a water penetration resistant admixture
wherein the said water penetration resistant admixture contains
(a) a hydrocarbon-based water repellent (HCWR) and (b) a
silane-siloxane composition (SS), wherein the s/s weight ratio
of (a) to (b) is from 90:10 (a):(b) to 60:40 (a):(b),
wherein the said hydrocarbon based water repellent is a
fatty acid derivative of the following Formula F Al:
RF A COO-A
wherein
RF A is a C7-C29 alkyl or alklene group; and
A is an alkali or alkaline earth metal cation, a polyvalent cation,
or a C1-C12 linear or branched alkyl or alkanol amine.
2 We cite to the Specification ("Spec.") filed Dec. 7, 2009; Final Office
Action ("Final Act.") dated Oct. 16, 2013; Examiner's Answer ("Ans."); and
Appellants' Appeal Brief ("App. Br.") and Reply Brief ("Reply Br."). We
additionally considered the Declaration of Craig Walloch, filed pursuant to
37 C.F.R. § 1.132 on Feb. 19, 2013 ("Deel.").
3 Claim 48 includes a period within the body of the claim after the word,
"amine," which we view as an apparent typographical error and disregard
accordingly.
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Application 12/632,146
wherein said water penetration resistant admixture is
present in said concrete masonry unit in a dosage of 0.10 to
1.25% ( s/ s hydratable cement binder)
wherein said concrete masonry unit has a value of 10%
or less dampness and 5 pinholes or less as determined by the
Standard Spray Bar Test and 60% or less water uptake as
determined by the Standard Water Uptake test.
REJECTION
The Examiner maintained the following ground of rejection: 4
Claims 48 and 75-79 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gobel, 5 Aldykiewicz6 and Kerkar. 7
DISCUSSION
Appellants argue the rejected claims as a group. App. Br. 3-12;
Reply Br. 1-9. We select claim 48, the sole independent claim, as
representative and decide the propriety of the rejection based on the
representative claim alone. See 37 C.F.R. § 41.37(c)(l)(iv)(2014). Claims
75-79 stand or fall with claim 48. Id.
With regard to claim 48, the Examiner found that Gobel discloses
cured concrete made from a composition containing hydratable cement,
aggregate, and an alkoxysilane emulsion. Final Act. 2. The Examiner also
found that Aldykiewicz discloses the addition of butyl stearate to hydratable
cement to improve water repellency in concrete. Id. Appellants do not
4 Ans. 2--4; Final Act. 2--4.
5 US 6,139,622, issued Oct. 31, 2000 ("Gobel").
6 WO 2006/041698 Al, published Apr. 20, 2006 ("Aldykiewicz").
7 JP 2000-203914 A, published Jul. 25, 2007 ("Kerkar"), as machine-
translated.
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Application 12/632,146
dispute these findings. See App. Br. 3-12; Reply Br. 1-9. Neither do
Appellants dispute that Gobel's alkoxysilane emulsion is a silane-siloxane
composition (SS), or that Aldykiewicz' butyl stearate is a hydrocarbon-
based water repellent (HCWR), as those terms are used in Appellants' claim
48. See id. 8
In light of those findings, the Examiner determined that it would have
been obvious to one of ordinary skill to add butyl stearate to the
alkoxysilane-containing composition of Gobel, and to "optimize the amount
of alkoxysilane and stearate for the desired [water-proofing] properties."
Final Act. 3. The combination of silane-siloxane and stearate water-
proofing additives is particularly supported by the teaching in Aldykiewicz
that suitable water-proofing additives include butyl stearate, a silane
compound, a siloxane compound, "or a mixture of any of the foregoing."
Aldykiewicz 4, 11. 11-17.
Appellants argue that the combined teachings of Gobel and
Aldykiewicz do not disclose "the water penetrating resistance of the CMU s
claimed," namely, 60% or less water uptake as determined by the Standard
Water Uptake test, and 10% or less dampness and 5 pinholes or less as
determined by the Standard Spray Bar Test. App. Br. 6. Appellants further
argue that these references provide no direction to select the claimed ranges
of90:10 to 60:40 of (HCWR):(SS) and 0.10 to 1.25% (s/s hydratable cement
binder). Id. at 8.
8 See also Spec. 20 ("Silane-Siloxane emulsions are described, for instance,
in US Patent No. 6, 139,622 of Gobel."); id. at 12 ("Stearate dispersions are
HCWRs.").
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Application 12/632,146
Appellants' arguments are not persuasive. Gobel' s alkoxysilane and
Aldykiewicz' butyl stearate admittedly serve the same general purpose-
waterproofing concrete. See App. Br. 6 ("Gobel et al. describes adding 0.1
to 10 wt.% of alkoxysilane emulsion, relative to the cement present, to
obtain water proofed concrete."); id. at 7 ("Aldykiewicz, Jr. et al. describe
compositions for enhancing the water repellency of cementitious material
which comprise a hydrophobic material such as butyl stearate. "). Appellants
also acknowledge that the water uptake, dampness, and pinhole properties
recited in claim 48 correspond to industry standards measured by commonly
employed tests. Spec. 3, 11. 14--27. The fact that the cited references do not
expressly state relative dosage amounts for the two additives does not
countervail the Examiner's determination that one skilled in the art would
have found it obvious to optimize the relevant portions of these two known
water-proofing additives to achieve the industry standard water uptake,
dampness and pinhole values. 9 See In re Antonie, 559 F.2d 618, 620 (CCPA
1977) ("[T]he discovery of an optimum value of a variable in a known
process is normally obvious.").
Appellants contend, based upon the Walloch Declaration, that the
Examples illustrated in Tables 1--4 of the Specification demonstrate that
9 Appellants correctly observe that Aldykiewicz does not specify an amount
of butyl stearate to be added to achieve the desired water-proofing result.
App. Br. 7. That omission in Aldykiewicz further supports the Examiner's
determination that one of ordinary skill in the art would have had reason to
determine an optimal dosage amount through routine experimentation.
Gobel' s teaching that the incorporation of additives must be balanced
against their effect upon workability of the concrete mix (see col. 1, 11. 42-
4 7) is additionally supportive.
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Application 12/632,146
samples containing both HCWR and SS in accordance with the claimed
invention exhibit unexpected reduction in pinhole formation and water
uptake. App. Br. 4.
The Examiner found Appellants' evidence wanting on the basis that
the data presented in Tables 1--4 is not commensurate in scope with
Appellants' claims. Ans. 5. We agree. The Examiner determined, and
Appellants do not dispute, that the amount of water penetration resistant
admixture reported in the tables range from 0.31 to 0.54%, whereas
Appellants' claim 48 encompasses a range from 0.1 to 1.25%. Compare
Ans. 5 with Reply Br. 2-3. Neither do Appellants dispute the Examiner's
determination that the range of HCWR:SS ratios for the reported samples is
less than the range recited Appellants' claims. See id. Appellants' sole
responsive argument-that "there is no basis for one skilled in the art [to]
doubt that improvements are obtained for the entire claimed range"-is
unavailing. See In re Greenfield, 571 F .2d 1185, 1189 (CCP A 1978)
(showing of unexpected results must be commensurate in scope with the
breadth of the claim). See also In re Kulling, 897 F.2d 1147, 1149 (Fed. Cir.
1990); In re Lindner, 457 F.2d 506, 508 (CCPA 1972). Moreover, the
showing must be based on evidence, not argument or speculation. In re
Mayne, 104 F.3d 1339, 1343--44 (Fed. Cir. 1997); In re Schulze, 346 F.2d
600, 602 (CCPA 1965).
We additionally find Appellants' evidence deficient for the following
reasons. With regard to pinhole formation, Appellants' point to the data in
Table 3 of the Specification where it is reported that a sample containing
HCWR and SS exhibited a pinhole reduction from 1 to 0 even though the SS
content was reduced from 0.12 to 0.09 wt.%. Id. However, in each of
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Application 12/632,146
Tables 1 and 2, it is reported that other samples containing HCWR and SS,
and the same reduction of SS, exhibited an increase from 0 to 2 pinholes
formed. See Spec. 23-24 (Table 1, samples B and D); id. at 24 (Table 2,
samples G and I). We find these inconsistent data points insufficient to
substantiate Appellants' claim of unexpected results with regard to pinhole
formation.
Appellants' Declarant opined that the data in Tables 1--4 of the
Specification "surprisingly show that excessive pinholes did not result from
the combinations of HCWR and SS," and that "[l]ow pinhole formation
resulted although HCWR was present." Deel. 2 (emphasis added).
However, neither Declarant nor Appellants point us to any evidence which
would suggest that one of ordinary skill would have expected the addition of
HCWR to cause an increase of pinhole formation. Rather, Appellants
characterize HCWRs as "not sufficiently effective at preventing water
penetration through pinholes.'' Spec. 3--4 (emphasis added). Moreover,
Appellants contend elsewhere that there is no record evidence of a
relationship between the addition of HCWR and pinhole formation. Reply
Br. 3.
With regard to water uptake, Appellants point to Tables 2 and 3 of the
Specification as evidence that combining HCWR and SS provided an
unexpected reduction in water uptake as compared with samples containing
a greater amount of either HCWR or SS alone. App. Br. 4; Deel. 3.
However, we cannot discern, and Appellants do not explain, how the
reported data reflect more than a predictable, cumulative contribution of two
known water-proofing additives. See In re Kerkhoven, 626 F.2d 846, 850
(CCPA 1980)(stating that it is prima facie obvious to combine two different
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Application 12/632,146
materials useful for the same purpose to form a third material which is to be
used for the very same purpose). Neither do Appellants point us to any
evidence that the reported water uptake rates for samples containing both
HCWR and SS would have been unexpected, other than the Declarant's
unsubstantiated opinion.
Considering the totality of the evidence before us, we are not
persuaded that the data presented in Tables 1--4 demonstrate unexpected
results sufficient to outweigh the Examiner's determination that it would
have been obvious to one of ordinary skill to add butyl stearate to Gobel' s
SS-containing composition, and to optimize the relative amounts of those
additives through routine experimentation.
For the foregoing reasons, we sustain the Examiner's rejection of
claims 48 and 75-79 as unpatentable over Gobel and Aldykiewicz. 10
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended 35 C.F.R. § 1.136.
AFFIRMED
10 Because we fully resolve the issues involved in this appeal based on an
alternative obviousness rationale set forth by the Examiner that does not rely
upon Kerkar, we need not reach Appellants' arguments set forth at pages 8-
12 of the Appeal Brief concerning purported deficiencies in Kerkar or the
combination of Kerkar with Gobel.
8