Ex Parte Wiercinski

Patent Trial and Appeal Board

Dec 21, 2012

11314325 (P.T.A.B. Dec. 21, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/314,325 12/21/2005 Robert A. Wiercinski L3833-01 5487
33250 7590 12/24/2012
W. R. GRACE & CO.-CONN
ATTENTION: PATENT DEPARTMENT
62 WHITTMORE AVENUE
CAMBRIDGE, MA 02140
EXAMINER
SALVITTI, MICHAEL A
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
12/24/2012 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 ROBERT A. WIERCINSKI
____________________

Appeal 2011-011704
Application 11/314,325
Technology Center 1700
____________________

Before FRED E. McKELVEY, CHUNG K. PAK and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

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Statement of the case
W.R. Grace & Co.-Conn. (“applicant”), the real party in interest (Brief, 1
page 3), seeks review under 35 U.S.C. § 134(a) of a final rejection dated 12 July 2
2010. 3
The application on appeal claims priority of Provisional Application 4
60/642,880, filed 11 Jan. 2005. 5
The application has been published as U.S. Patent Application Publication 6
2006/0155031 A1. 7
In support of prior art rejections, the Examiner relies on the following 8
evidence. 9
Jasperson U.S. Patent 4,146,672 27 Mar. 1979
Barsotti U.S. Patent 4,411,951 25 Oct. 1983
Kyminas et al.
“Kyminas”
U.S. Patent 4,859,723 22 Aug. 1989
Geissler et al.
“Geissler”
U.S. Patent 5,679,735 21 Oct. 1997
Sigma-Aldrich Methyl Cellulose
Product Information
3 June 1997
Innovative
Technology Report
“RTC”
Controlling Viscosity in
High-Solids Paints
Jan. 1997
Talc Mineral Data Mineral News
http://webmineral.com/data/Talc.shtml
Original publication
date unknown;
downloaded on
25 July 2009

Williams Email to USPTO from Stephan
Williams, counsel for applicant
Received in the
USPTO on 17 Nov.
2009

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Applicant cites the following document on page 16 (6-7 lines from bottom) 1
of the Brief: 2
The Dow Chemical Co.
Brochure
Methocel®
Cellulose Ethers
Published digitally
March 2001

Applicant does not contest the prior art status of the evidence relied upon by 3
the Examiner. 4
We have jurisdiction under 35 U.S.C. § 134(a). 5
Claims on appeal 6
Claims 1-5 and 8-24 are on appeal. Brief, page 5; Answer, page 2. 7
Claim 1, which we reproduce from page 21 of the Claims Appendix of the 8
Brief, reads [matter in brackets and indentation added]: 9
A liquid composition for providing a vapor permeable air 10
barrier membrane by spray coating onto a construction surface, 11
comprising: 12
[1] an emulsion comprising at least one hydrophobic acrylic 13
polymer having 14
[1.1] a repeating group represented by the formula 15
─(─CH2─CH2COOR─)─ wherein R represents a C2-C8 alkyl group, 16
[1.2] said at least one acrylic polymer having a glass 17
transition temperature of -55ºC to 0ºC and 18
[1.3] being present in an amount no less than 50% and no 19
greater than 97% by weight based on total solids in the composition; 20

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[2] said liquid composition further comprising at least one 1
inorganic filler selected from the group [consisting] of calcium 2
carbonate, talc, clay, silica, and titanium dioxide, 3
[2.1] said at least one inorganic filler being present in an 4
amount of 5% to 30% by weight based on total solids in said liquid 5
composition; 6
[2.2] the total amount of all inorganic filler contained 7
within said liquid composition being present in an amount such that 8
pigment volume concentration (PVC) is no greater than 16%; 9
[3] said liquid composition further comprising water in an 10
amount no less than 30% and no greater than 50% by total weight of 11
said liquid composition; and 12
[4] said liquid composition further comprising at least one 13
water-soluble polymer 14
[4.1] being present in an amount no less than 5% and no 15
greater than 17% by weight based on total solids in said liquid 16
composition, and 17
[4.2] said at least one-water-soluble polymer having a 18
solution viscosity, at 4% by weight in water, of no less than 19
2 centipoise and no greater than 50 centipoise. 20
Analysis 21
Geissler 22
The Examiner rejected Claim 1 as being unpatentable under § 103 over 23
Geissler, Mineral Talc and an email from counsel for applicant. Answer, page 4. 24

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Geissler relates to aqueous polymer dispersions stabilized by protective 1
colloids. Col. 1:7-9. 2
The Examiner found that Example 1 describes preparation of a 3
composition including (1) acrylate polymers [col. 5:45-46], (2) water soluble 4
polymers [col. 5:26-32] and (3) water. Answer, pages 4-5. 5
The Examiner also found that the composition also includes talc. Answer, 6
page 4; Geissler, col. 6:33 (“aggregate of white talc with dolomite”). Talc is a 7
filler said by applicant to be useful in its invention (Specification, page 2:27) and is 8
described in Talc Mineral Data cited by the Examiner. 9
Applicant and the Examiner have differing views of a relevant passage in 10
Geissler. The passage states (col. 6:29-34) (italics added): 11
The dispersions were diluted to a solids content of 40% with 12
deionized water and spray dried (spray dryer from Niro), entry 13
temperature: 130 ºC., exit temperature: 65 ºC., throughput: 1 14
kg/hour) with the addition of an anticaking agent (aggregate of white 15
talc with dolomite). The anticaking agent content was 12%. 16
The “dispersions” appears to refer to the compositions described according 17
that portion of Example 1 beginning at col. 5:21 and ending at col. 6:28. 18
The Examiner found that “the addition of an anticaking agent” occurs before 19
spray drying. Answer, page 4, last full paragraph. 20
Applicant maintains that “the addition of an anticaking agent” occurs after 21
spray drying. Brief, page 10:3-4. 22
The Examiner response to applicant’s “after” argument is that applicant’s 23
after interpretation “would require a drying step prior to the addition of anticaking 24

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agent, which is not disclosed as an intermediate step in the Geissler reference.” 1
(Underlining and italics in original). Answer, page 13. 2
We are unable to determine whether addition of the anticaking agent (which 3
is a filler within the meaning of applicant’s use of “filler”) occurs before or after 4
spray drying. 5
If a prior art reference is subject to two interpretations, then it is ambiguous 6
and will not support an anticipation rejection. In re Hughes, 345 F.2d 184, 188 7
(CCPA 1965). See also In re Turlay, 304 F.2d 893, 899 (CCPA 1962) (same) and 8
In re Cramblet, 62 F.2d 358, 359 (CCPA 1932) (same). We believe the rule 9
applicable to anticipation also should apply to a finding that a reference describes a 10
particular feature. In other words, if a prior art reference is subject to two 11
reasonable interpretations, the reference does not support by a preponderance of 12
the evidence one of those two reasonable interpretations. Cf. Yamaha Int'l Corp. v. 13
Hoshino Gakki Co., 840 F.2d 1572, 1580 n.11 (Fed. Cir. 1988) (“the ultimate 14
[preponderance of the evidence] burden of persuasion is only critical in the 15
situation where the evidence is so evenly balanced that no preponderance emerges. 16
In that event, the party having the burden of persuasion necessarily loses.”). 17
Under the circumstances, the Examiner’s finding that Geissler describes 18
addition of the filler before the spray drying is not supported by sufficient 19
evidence. The Examiner’s observation that Geissler does not describe an 20
intermediate drying step is not found convincing because it is, in our view, equally 21
plausible that (1) a mixture of spray dried dispersion and a mixture of dry talc was 22
redispersed (col. 6:45) or (2) a mixture of dispersion mixed with talc was spray 23
dried. 24

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The Examiner recognized that applicant did not agree with the finding. 1
Accordingly, the Examiner set forth two alternative rationales assuming 2
applicant’s interpretation is the proper interpretation. The two alternative 3
rationales are: 4
(1) Rationale 1 relies on a description of a redispersion of a mixture 5
of spray dried dispersion and talc. Answer, page 13; Geissler, col. 6:43-56. 6
(2) Rationale 2 relies on a combination of Geissler and Jasperson. 7
Answer, page 5 et seq. 8
Alternate rationale 1 9
Geissler states (col. 6:44-49): 10
25 parts of dispersion powder [i.e., the combination of spray 11
dried material and talc] were stirred into 25 parts of deionized water 12
with a glass rod [to make a “first” mixture] and the [first] mixture was 13
then homogenized at 2,000 rpm for 10 minutes. 2 parts of this 14
[homogenized] redispersion were diluted with 198 parts of deionized 15
water [to form a “second” mixture] so that a 0.5% strength 16
redispersion was formed. 17
The Examiner found that Geissler “thereby . . . [describes] a composition 18
meeting the limitations of applicant’s claim 1.” Answer, page 13; see also Final 19
Rejection, page 11. 20
It is not altogether clear to which “composition meeting the limitations of 21
applicant’s claim 1” the Examiner refers. The “second” mixture would have more 22
than 50% water, thus falling outside the scope of Claim 1. The Examiner has not 23
provided sufficient information to establish how the “first” mixture meets the 24

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limitation of Claim 1. Obviously a mixture of 25 parts of water and 25 parts of 1
dispersion powder would seem to indicate that the second mixture contains 50% 2
water. Since Claim 1 states “no greater than 50%” water, it is possible to find that 3
the water limitation of Claim 1 is met by the “first” mixture. Not apparent is how 4
the water soluble polymer amounts set out in Claim 1 are met by the “first” 5
mixture. Neither the final rejection nor the Answer explain precisely how the 6
“first” mixture meets the limitations of Claim 1. We decline in the first instance to 7
analyze Geissler’s disclosure to determine factually how the “first” mixture might 8
meet the limitations of Claim 1. To do so would not be fair to applicant who 9
would have no opportunity to address any first instance analysis. 1 10
The water content of the “second” mixture manifestly exceeds the water 11
amount set out in Claim 1. 12
Alternate rationale 2 13
The Examiner’s alternate rationale 2 involves a rejection under § 103 based 14
on Geissler and Jasperson. 15
At the outset, we note a difference in the utilities of the Geissler 16
compositions vis-à-vis the Jasperson compositions. Geissler describes the use of 17
dispersions “as binders in environment-friendly wood preservative paints” 18
(col. 5:7) and “in hydraulically setting building materials and in powder coatings” 19
(col. 5:12-13). Jasperson describes the use of compositions for waterproofing 20
roofs, cement walls and the like. Col. 7:10-19. 21

1 Nothing in our opinion should be viewed as precluding the Examiner from
reopening prosecution and providing an explanation to applicant of how the “first”
mixture meets the limitations of Claim 1.

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Jasperson describes coating compositions containing [1] acrylic polymers, 1
[2] water and [3] fillers. Seemingly missing from Jasperson is a water soluble 2
polymer in the amount required by Claim 1. It is true that Jasperson mentions 3
Dow Chemical product J12 MS, identified as a hydropropylmethycellulose. 4
Col. 10:1-4. See also The Dow Chemical Co. Brochure cited by applicant. 5
J12 MS can be characterized as a water soluble polymer. However, J12 MS is said 6
to have a viscosity (700 centipoise at a 1% concentration on a dry basis—Dow 7
Brochure, page 9) which exceeds by a considerable amount the viscosity required 8
of the water soluble polymer of Claim 1 (“solution viscosity, at 4% by weight in 9
water, of no less than 2 centipoise and no greater than 50 centipoise”) (italics 10
added). 11
The Examiner’s basis for the prior art combination is bottomed on Geissler 12
Example 2. Answer, page 6. Example 2 does not describe the use of a filler. Id. 13
Jasperson is said to describe coatings having a “pigment volume concentration” 14
(“PVC”) of < 10. Col. 3:20-25. Jasperson Example 1 describes a composition 15
including, inter alia, titanium dioxide (a filler said by applicant to be useful in its 16
invention). Jasperson, col. 9:40; Specification, page 2:27. Based on Jasperson, the 17
Examiner reasons that it would have been obvious to add a filler to the Geissler 18
Example 2 composition to achieve anti-fungal properties (col. 8:54-62) in 19
compositions having a PVC < 10 (col. 3:20-22) described by Jasperson. Answer, 20
page 6. 21
Applicant suggests, and we agree, that the Examiner’s combination of 22
various known elements from Geissler and Jasperson, in this case, amount to 23
impermissible hindsight. It is true that all the elements called for by Claim 1 are 24

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known. However, the mere fact that the elements are known does not per se render 1
obvious a combination using those known elements. Rather, a § 103 rejection 2
must be based on “some articulated reasoning with some rational underpinning to 3
support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 4
U.S. 398, 418 (2007). On the record before us, we have not found the necessary 5
“reason” to use the various prior art elements to make the composition defined by 6
Claim 1. 7
Additional observations 8
We have concluded that independent Claim 1 is not unpatentable under 9
§ 103 based on Geissler or Geissler in combination with Jasperson. Since all other 10
claims on appeal depend directly or indirectly from Claim 1, they too are not 11
unpatentable over Geissler or Geissler in combination with Jasperson. 12
When the application on appeal was filed, applicant called to the attention of 13
the Office a Grace Construction Products BETEC® Flex document having a 14
copyright date of 2004. The relevance of the document is not apparent since Grace 15
has not favored the Office with the nature of the BETEC® Flex composition 16
described in the document. Applicant may wish to provide a description of the 17
composition for such consideration as the Examiner may deem appropriate. 18
Nor upon taking up the appeal could we find in the record a Henry Technical 19
Data Sheet dated 07/15/2002 (Specification, page 1:14). In response to an 20
informal request by the Board, applicant has submitted a copy of the Data Sheet 21
and it is now in the record for such consideration as the Examiner may deem 22
appropriate. 23

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While we ultimately disagree with the Examiner’s rejections, we agree with, 1
and encourage in the future, presentation of alternate rationales as was done by the 2
Examiner in this case. 3
Decision 4
Upon consideration of the appeal, and for the reasons given herein, it is 5
ORDERED that the decision of the Examiner rejecting the claims on 6
appeal over the prior art is reversed. 7
8
REVERSED 9
10
bar 11