Ex Parte Weibel

Patent Trial and Appeal Board

Apr 29, 2015

12307893 (P.T.A.B. Apr. 29, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
12/307,893 07/08/2009 Martin Weibel COC.P59920 6144
23575 7590 04/29/2015
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
EXAMINER
HIJJI, KARAM Y
ART UNIT PAPER NUMBER
1731
MAIL DATE DELIVERY MODE
04/29/2015 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 MARTIN WEIBEL
____________

Appeal 2013-007853
Application 12/307,893
Technology Center 1700
____________

Before CHUNG K. PAK, PETER F. KRATZ, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–11 and 13–21. We have jurisdiction
pursuant to 35 U.S.C. § 6.
Appellant’s claimed invention is directed to an accelerator for sprayed
concrete or sprayed mortar and a method of using same.
Claim 1 is illustrative and reproduced below:
1. Accelerator for sprayed concrete or sprayed mortar, which is
present as an aqueous dispersion which contains the following:
(a) 25 to 40% by weight of aluminium [sic] sulphate, based on the
total weight of the accelerator,
(b) at least one further aluminium [sic] compound, so that the molar
ratio of aluminium [sic] to sulphate in the dispersion is from 1.35 to 0.70,
and
(c) an inorganic stabilizer which comprises a magnesium silicate.
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The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Angelskar et al. US 5,935,318 Aug. 10, 1999
(hereinafter “Angelskar 2”)
Angelskar et al. WO 2005/028398 A1 Mar. 31, 2005
(hereinafter “Angelskar 1”)

The Examiner maintains the following grounds of rejection:
Claims 1–11 and 13–21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Angelskar 1 in view of Angelskar 2.
Appellant’s arguments identify no reversible error in the Examiner’s
obviousness rejection. Accordingly, we affirm the stated rejection for
substantially the reasons set forth by the Examiner in the Final Rejection and
the Examiner’s Answer. We add the following for emphasis.
Appellant argues the rejected claims together as a group with the
exception of dependent claims 8 and 18. Accordingly, we select claim 1 as
the representative claim in which we decide this appeal as to claims 1–7, 9–
11, 13–17, and 19–21. We consider claims 8 and 18 separately to the extent
separately argued.
The Examiner has determined that Angelskar 1 teaches or suggests a
liquid accelerator including aluminum sulfate and aluminum hydroxide with
a molar ratio of aluminum to sulfate that overlaps the ratio specified in
representative claim 1 (Ans. 3). The Examiner relies on Angelskar 2 for a
teaching of the use of an inorganic stabilizer comprising sepiolite
magnesium silicate in a liquid accelerator admixture comprising aluminum
sulfate to prolong shelf life and enhance performance (Ans. 4). Based on the
teachings of Angelskar 2 and Angelskar 1, the Examiner has determined that
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one of ordinary skill in the art would have been led to employ the stabilizer
of Angelskar 2 in the liquid accelerator of Angelskar 1 to obtain the benefits
taught by Angelskar 2 (id.).
Concerning representative claim 1, Appellant contends that Angelskar
2 teaches away for the Examiner’s proposed combination of Angelskar 1 and
Angelskar 2 because Angelskar 2 discloses a liquid accelerator composition
for mortar or concrete that includes, inter alia, aluminum sulfate as a
component in the absence of added aluminum hydroxide whereas Angelskar
1 is drawn to a liquid accelerator that includes, inter alia, aluminum sulfate
and aluminum hydroxide among its constituents (App. Br. 6–9; Reply Br. 1–
3). The accelerator of Angelskar 1 further includes hydrofluoric acid and
one or more specified lithium salts.
However and as countered by the Examiner, Appellant has not
established how the existence of the teachings of Angelskar 2 with respect to
the formation of a liquid accelerator in the absence of added aluminum
hydroxide would have discouraged one of ordinary skill in the art from
pursuing the formation of a liquid accelerator that includes both aluminum
sulfate and aluminum hydroxide as taught by Angelskar 1 as another
alternative (Ans. 5–7). Whether the prior art teaches away from the claimed
invention is a question of fact, DyStar Textilfarben GmbH v. C.H. Patrick
Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006), In re Harris, 409 F.3d 1339,
1341 (Fed. Cir. 2005). “A reference does not teach away, . . . if it merely
expresses a general preference for an alternative invention but does not
criticize, discredit, or otherwise discourage investigation into the invention
claimed.” Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed.
Cir. 2013), cert. denied, 134 S. Ct. 2740 (U.S. 2014). Here, Angelskar 2
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teaches that the use of amorphous aluminum hydroxide has provided good
results as an accelerator (col. 1, ll. 18–21). The mere fact that Angelskar 2
further teaches that an effective accelerator composition can also be formed
using aluminum sulfate in the absence of added aluminum hydroxide does
not discourage, discredit, or criticize the pursuit of effective liquid
accelerators that include aluminum sulfate and aluminum hydroxide as
taught by Angelskar 1. Consequently, we are not persuaded of substantive
error in the Examiner’s obviousness rejection by Appellant’s teaching away
contentions.
Appellant argues that the applied references are not properly
combinable and that the Examiner has engaged in impermissible hindsight
reasoning in selectively choosing the magnesium silicate inorganic stabilizer
component of the accelerator of Angelskar 2 for combining with the
accelerator of Angelskar 1 (App. Br. 9–11; Reply Br. 3–4). Contrary to
Appellant’s argument, however, the Examiner has furnished a reasoned basis
for the proposed addition of a stabilizer as taught by Angelskar 2 to the
accelerator of Angelskar 1; that is, to prolong shelf life and enhance
performance as taught by Angelskar 2 (Ans. 4). Appellant has not
sufficiently explained why one of ordinary skill in the art would not have
reasonably expected the stabilizer for the aluminum sulfate-containing
accelerator of Angelskar 2 to function to increase shelf life for the aluminum
sulfate–containing accelerator of Angelskar 1 as determined by the
Examiner. In this regard, Appellant has not furnished any reasoned basis for
establishing that one of ordinary skill in the art would have expected the
stabilizer of Angelskar 2 to be incompatible with or not function as a
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stabilizer when the accelerator includes aluminum hydroxide as taught by
Angelskar 1.
It follows that, on this record, the impermissible hindsight and non-
combinability arguments proffered by Appellant are skeletal and lack
persuasive merit.
As for the Declaration of Dr. Alfonso1 under 37 C.F.R. § 1.132,
Appellant bears the burden of establishing unexpected results for the
claimed subject matter that is commensurate in scope with the claims. See
In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
We concur with the Examiner’s conclusion in that Appellant has not
met this burden and that Appellant’s evidence of non-obviousness is
insufficient to outweigh and overcome the evidence of obviousness brought
to bear in the obviousness rejection (Ans. 7–8).
In particular, Dr. Alfonso compares five inventive example
accelerator compositions reported as having aluminum to sulfate (Al/S)
ratios within the claimed range with five comparative example accelerator
admixtures with AL/S ratios that are higher than the claimed range but
within the portion of the Al/S ratio disclosed by Angelskar 1 that is outside
the claimed range (the entire claim 1 range of 0.70 to 1.35 is within the
disclosed range of 0.70 to 2.0 of Angelskar) (Decl. ¶¶ 10, 16–19).
In addition to the difference in the Al/S ratio, however, the
comparative examples differ from the examples described as being in
accordance with the claimed invention in that the comparative examples
include hydrofluoric acid and lithium carbonate in the accelerator whereas
the examples disclosed as being in accordance with the invention include no

1 Declaration of Montserrat Alfonso, submitted on May 2, 2012.
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acid or alkali metal compound components. In this regard, representative
claim 1 employs open “contains” language and, as such, does not exclude
the inclusion of acid and alkali compound components in the claimed
accelerator.
Consequently and given the multiple unfixed variables, including
variables that are embraced by the claimed subject matter, no conclusions
can be reached as to the effect of the differences in the A/S ratios and the
reported compressive strength results set forth in Table 2 between the two
sets of examples (Decl. ¶¶ 22–23). Thus, the results have not been shown by
Declarant and/or Appellant to establish unexpected results for an accelerator
commensurate in scope with the claimed subject matter. See In re Dill, 604
F.2d 1356, 1361 (CCPA 1979).
The same defect in the test comparisons is present for the argued
unexpected results asserted for separately argued claims 8 and 18.
Based on the totality of the record, including due consideration of
Appellant’s evidence and arguments, we determine that the preponderance
of evidence weighs most heavily in favor of an obviousness determination
for the claimed subject matter.
Accordingly, we affirm the Examiner’s decision to reject the appealed
claims for the reasons stated in the Final Rejection, the Answer and above.

CONCLUSION
The Examiner’s decision to reject the appealed claims is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

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AFFIRMED

cdc