Ex Parte WALLOCH et alDownload PDFPatent Trial and Appeal BoardMay 3, 201612632146 (P.T.A.B. May. 3, 2016) Copy Citation 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. 2 Appeal2014-008740 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. 3 Appeal2014-008740 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."). 4 Appeal2014-008740 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. 5 Appeal2014-008740 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 6 Appeal2014-008740 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 7 Appeal2014-008740 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 Copy with citationCopy as parenthetical citation