Sergio Vitomir

Patent Trials and Appeals Board

Sep 12, 2019

14422665 - (D) (P.T.A.B. Sep. 12, 2019)

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.
14/422,665 02/19/2015 Sergio Vitomir 102110.0003US1 1059
149344 7590 09/12/2019
Umberg Zipser LLP
1920 Main Street Suite 750
Irvine, CA 92614
EXAMINER
PHAM, THOMAS T
ART UNIT PAPER NUMBER
1713
NOTIFICATION DATE DELIVERY MODE
09/12/2019 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):
patents@umbergzipser.com
rdean@umbergzipser.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SERGIO VITOMIR1
____________

Appeal 2018-006920
Application 14/422,665
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This case is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3–8, and 15–20. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM-IN-PART.
BACKGROUND
The subject matter on appeal relates to methods of treating concrete.
E.g., Spec. ¶ 2; Claim 1. Claim 1 is reproduced below from page 19 (Claims
Appendix) of the Appeal Brief:

1 The Appellant is the Applicant, Protocol Environmental Solutions Inc.,
which is also identified as the real party in interest. See App. Br. 2.
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1. A method of treating concrete to remove water insoluble calcium
sulfate salts from the concrete, comprising:
contacting a surface of the concrete with a composition, wherein
the concrete includes the water insoluble calcium sulfate salts;
wherein the composition comprises an alkali hydroxide base and
at least one of gluconic acid and a salt of gluconic acid at a
weight ratio of the least one of gluconic acid and a salt of
gluconic acid to the alkali hydroxide base of at least 5:1;
wherein the step of contacting is performed for a time sufficient
to (a) convert the water insoluble calcium sulfate salts into water
soluble calcium gluconate to a depth of at least 3 mm, and (b)
neutralize residual acidity in the concrete to a depth of at least 3
mm; and
wherein (a) the at least one of gluconic acid and the salt of
gluconic acid and (b) the alkali hydroxide base are present in a
total amount of at least 30 wt% of the composition.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
1. Claims 1, 3, 4, 6, 7, 15, and 17–20 over Kinnaird
(US 2006/0040843 A1, published Feb. 23, 2006) and Pardal
(US 9,028,610 B2, issued May 12, 2015 and claiming priority to an
application dated Aug. 2, 2011);
2. Claim 5 over Kinnaird, Pardal, and Wilson (US 2005/0202989 A1,
published Sept. 15, 2005);
3. Claims 8 and 16 as unpatentable over Kinnaird, Pardal, and
Hoopes (US 5,422,141, issued June 6, 1995);
4. Claims 1, 3–7, 15, and 17–20 over Wilson, Kinnaird, and Pardal;
5. Claims 8 and 16 over Wilson, Kinnaird, Pardal, and Hoopes.
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ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in Rejections 1 and 3.
Accordingly, we affirm those rejections for reasons set forth below, in the
Non-Final Action dated Sept. 22, 2017 (“Office Act.”), and in the
Examiner’s Answer. See generally Office Act. 2–11; Ans. 3–13. However,
for reasons set forth below, we reverse as to Rejections 2, 4, and 5.
Rejection 1
The Appellant argues the claims as a group. We select claim 1 as
representative, and the remaining claims subject to Rejection 1 will stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Kinnaird teaches a method of cleaning
concrete that involves contacting the concrete with a composition
comprising an alkaline salt such as lithium hydroxide and a chelating agent
such as gluconic acid, and then “waiting for an efficacious amount of time
then rinsing the concrete, such as 4 hours.” Ans. 3 (internal citations
omitted). The Examiner finds that the alkaline salt may be present at
preferably about 1–10 wt% and that the chelating agent may be present at
about 0.1–30 wt%. Id. The Examiner finds that “the above concentration
ranges overlap the [claimed] ranges of gluconic acid:alkali hydroxide
base>5:1 . . . and the total concentration of gluconic acid + alkali hydroxide
base at least 30 wt%.” Id.
The Examiner finds that “Kinnaird fails to teach that the concrete road
structure may comprise calcium sulfate.” Id. The Examiner finds that
“Pardal teaches that most known concrete comprises Portland cement, which
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comprises Portland clinker and calcium sulfate.” Id. The Examiner finds
that Pardal teaches that the calcium sulfate in the cement accelerates
hardening. Id.
The Examiner determines:
[I]t would have been obvious to one of ordinary skill in the art at
the time the invention was made, in routine experimentations, to
use the concrete comprising the hydraulic binder taught by
Pardal in the road or bridge concrete structures in the invention
of Kinnaird because Pardal teaches that this would
advantageously accelerate hardening.
Id. at 4.
As to the claim limitations concerning contact time sufficient for
achieving certain results, in the Office Action, the Examiner finds that “since
Kinnaird teaches to wait for an efficacious amount of time, the time is a
result-effective variable, and it is obvious for one of skill in the art to wait
for a time that is sufficient for such result to be accomplished during routine
experimentations.” Office Act. 4–5. In the Answer, the Examiner further
explains that the Appellant’s Specification teaches a four hour contact time,
and that, “[i]n this case, the cleaning composition taught by Kinnaird is the
same as Appellant’s, the concrete taught by Kinnaird modified by Pardal is
the same as Appellant’s, and the soaking time, i.e. 4 hours, is within the
range taught by Appellant’s; therefore, the cleaning method taught by
Kinnaird modified by Pardal must produce the results recited by Claim 1
above in routine experimentations, whether intentionally or unintentionally.”
Ans. 11.
In view of those findings, the Examiner concludes that the subject
matter of claim 1 would have been obvious to a person of ordinary skill in
the art. Id. at 3–4.
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The Appellant argues that Kinnaird’s disclosures concerning lithium
hydroxide and gluconic acid are too broad and that, because Kinnaird does
not recognize the same problem addressed by the Appellant (“sulfuric acid
attacks and deposits of calcium sulfate,” App. Br. 8–9), Kinnaird would not
have led to the claimed gluconic acid:alkali hydroxide ratio of 5:1. App. Br.
8–15. The Appellant also argues that Kinnaird fails to disclose the contact
time limitation, that Kinnaird’s working examples have more alkali
hydroxide than gluconic acid and therefore teach away from the claimed
invention, that the Examiner fails to resolve the level of ordinary skill in the
art, and that the Examiner fails to establish both a reason to combine the
references and a reasonable expectation of success. Id.
Those arguments are not persuasive of reversible error. Kinnaird
discloses concrete-cleaning compositions that comprise alkaline salts and
chelating agents. See Kinnaird ¶¶ 42, 65–66. Kinnaird teaches that
preferred alkaline salts are lithium hydroxide, lithium oxide, and lithium
carbonate. Id. ¶ 42. Kinnaird teaches that the preferred range of such salts
in the cleaning composition is “about 1 to about 10 percent of the total
formulation.” Id. Thus, Kinnaird teaches only three preferred salts and a
preferred amount of 1–10 wt%.
As to chelating agents, Kinnaird provides a list of approximately
twenty examples, one of which is gluconic acid. Id. ¶ 66. Kinnaird teaches
that the chelating agent is typically present “in an amount from about 0.1
percent by weight to about 30 percent by weight.” Id. ¶ 65.
Kinnaird teaches “applying an efficacious amount of said cleaning
composition to the dirty concrete surface . . . and after waiting an efficacious
amount of time,” rinsing and/or vacuuming the surface. Id. ¶ 69. In one
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example, Kinnaird discloses four hours of contact time before rinsing. Id.
¶ 76.
In view of those disclosures, Kinnaird teaches or suggests that the
ratio of chelating agent to alkaline salt can be as high as 30:1 (i.e., 30 wt%
chelating agent and 1 wt% alkaline salt), which is well with the scope of the
“at least 5:1” ratio recited by claim 1. See App. Br. 10 (agreeing that “some
combinations of concentration in those concentration ranges of alkali
hydroxide base and chelating reagent may be at least 5:1”). Thus, Kinnaird
teaches or suggests concentrations and ratios that fall within the scope of
claim 1. “[E]ven a slight overlap in range establishes a prima facie case of
obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Although we recognize that, in disclosing preferred amounts of
chelating agents and alkaline salts, Kinnaird teaches or suggests the
suitability of a wide range of chelating agent to alkaline salt ratios, some of
which do not fall within the scope of claim 1, “[t]hat the [prior art] discloses
a multitude of effective combinations does not render any particular
formulation less obvious.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989). Even assuming that Kinnaird’s cleaning
compositions are not designed to address precisely the same problem of
concrete cleaning that the Appellant asserts that it identified, Kinnaird’s
disclosed amounts and resulting ratios fall within the scope of claim 1 and
establish a prima facie case of obviousness. See Peterson, 315 F.3d at 1329;
see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“In
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.
What matters is the objective reach of the claim.”); cf. also In re Kahn, 441
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F.3d 977, 989 (Fed. Cir. 2006) (“[T]he skilled artisan need not be motivated
to combine [a prior art reference] for the same reason contemplated by [the
inventor]”); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“As long as
some motivation or suggestion to combine the references is provided by the
prior art taken as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventor.”).
In the Appeal Brief, the Appellant does not argue that criticality or
unexpected results support a conclusion of nonobviousness in this case.
Although the Appellant does make a conclusory assertion of unexpected
results in the Reply Brief, see Reply Br. 5, that argument is untimely
because it was not presented in the Appeal Brief, and the Appellant has not
attempted to show good cause for presenting it for the first time in the Reply
Brief, see 37 C.F.R. § 41.41(b)(2). We decline to consider it.
As to the Appellant’s argument concerning Kinnaird’s working
examples, see App. Br. 8, “a reference is not limited to the disclosure of
specific working examples,” In re Mills, 470 F.2d 649, 651 (CCPA 1972),
and, as set forth above, Kinnaird teaches or suggests ratios that fall within
the scope of the claim even if Kinnaird’s specific working examples do not
fall within the scope of the claim.
As to the contact time limitation, the Appellant does not dispute the
Examiner’s finding that Kinnaird teaches a contact time of four hours, which
is a preferred contact time disclosed by the Appellant’s Specification. See
Spec. ¶ 24. The Appellant does not address or otherwise show error in the
Examiner’s determination that, because Kinnaird teaches or suggests
concrete-cleaning compositions that fall within the scope of claim 1, and
because Kinnaird teaches contact times that the Specification discloses as
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preferred, a person of ordinary skill in the art using the method taught or
suggested by Kinnaird would have expected to achieve the results recited by
claim 1, i.e., “convert the water insoluble calcium sulfate salts into water
soluble calcium gluconate to a depth of at least 3 mm” and “neutralize
residual acidity in the concrete to a depth of at least 3 mm.” See Ans. 11.
As to the Appellant’s argument concerning the Examiner’s failure to
expressly identify the level of ordinary skill in the art, App. Br. 11, the
Appellant fails to identify a need for specific evidence on that issue and has
not made any showing that a finding regarding the level of ordinary skill
would impact the conclusion in this case. We are not apprised of error based
on the Appellant’s argument because “the absence of specific findings on the
level of skill in the art does not give rise to reversible error where the prior
art itself reflects an appropriate level and a need for testimony is not shown.”
See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (internal
quotation marks omitted). Here, we consider the cited prior art as reflective
of the level of ordinary skill in the art. See id.; see also In re GPAC Inc., 57
F.3d 1573, 1579 (Fed. Cir. 1995); In re Chaganti, 554 F. App’x 917, 922
(Fed. Cir. 2014).
As to the Appellant’s argument concerning motivation to combine, we
understand the Examiner’s reliance on Pardal principally to concern Pardal’s
disclosure that “[m]ost known concretes comprise Portland cement.
Portland cement mainly comprises Portland clinker and calcium sulphate.”
Pardal at 1:49–51; see also Ans. 3–4 (finding that Kinnaird does not “teach
that the concrete road structure may comprise calcium sulfate” and
immediately following that finding with a finding that “Pardal teaches that
most known concrete comprises . . . calcium sulfate”). The Appellant does
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address or otherwise dispute Pardal’s disclosure that most known concretes
comprise calcium sulfate.2 Given that Kinnaird broadly discloses the use of
its composition for cleaning concrete, and Kinnaird does not exclude
concretes that comprise calcium sulfate, we discern no error in the
Examiner’s determination that a person of ordinary skill in the art would
have been motivated to use Kinnaird’s concrete cleaning compositions on
any known concrete including concrete that includes calcium sulfate,
particularly given that there is no dispute on this record that most concretes
comprise calcium sulfate.
As to the Appellant’s argument concerning reasonable expectation of
success, it is repetitive of arguments discussed and found unpersuasive
above. Namely, the Appellant repeats the argument about the breadth of
Kinnaird’s disclosure and the argument that Kinnaird is not specifically
concerned with the same concrete cleaning problem identified by the
Appellant. See App. Br. 15. A reasonable expectation of success is found in
Kinnaird itself. As set forth above, Kinnaird renders obvious concrete-
cleaning compositions that possess the ingredients and weight ratio of
claim 1, and Kinnaird provides no indication that such a composition would
not function successfully on concretes that include calcium sulfate salts.
Kinnaird teaches contact times that are consistent with those disclosed by the
Specification (i.e., four hours). On this record, we are not persuaded that a
person of ordinary skill in the art would have lacked a reasonable

2 Claim 1 recites “calcium sulfate salts” rather than “calcium sulfate.” The
Examiner appears to assume that concrete that includes calcium sulfate
would necessarily include calcium sulfate salts. The Appellant does not
raise any issues concerning a distinction between calcium sulfate and
calcium sulfate salts.
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expectation of success in achieving the subject matter of claim 1 in view of
Kinnaird and Pardal.
We affirm the Examiner’s rejection of claim 1.
Rejection 2
Claim 5 depends from claim 1 and increases the required amount of
gluconic acid/salt of gluconic acid and alkali hydroxide from 30 wt%
(claim 1) to 60 wt% (claim 5).
The Examiner finds that Wilson is “directed to a method of treating a
concrete surface,” Ans. 5, using a composition comprising an alkali such as
sodium hydroxide and gluconic acid, and that Wilson teaches the alkali
concentration may be 0.1–35 wt% and the gluconic acid concentration may
be 0.2–60 wt%. The Examiner determines:
Therefore, it would have been obvious to one of ordinary skill in
the art at the time the invention was made, in routine
experimentations, to use a composition having a total
concentration of lithium hydroxide and gluconic acid at about 60
wt.% because Kinnaird teaches that the concentration of the
alkali salt need to be 0.1–99 wt.% depending on the nature and
concentration of the soil on the surface of the concrete and the
exact amount of the chelating agent is determined by the exact
requirements of the formulation and substrate to be cleaned, and
Wilson teaches that a composition for treating a concrete surface
may comprise alkali, such as NaOH, at 0.1–35 wt.% and gluconic
acid at 0.2–60 wt.%.
Ans. 5.
The Appellant argues that “there is no motivation . . . to add high
concentration of chelating reagents (including gluconic acid),” and that
“Wilson fails to contemplate any solutions” to the concrete-cleaning
problems with which the inventors were concerned. App. Br. 16.
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We agree with the Appellant that the record does not adequately
support the Examiner’s rejection of claim 5. The Examiner cites only
Wilson’s abstract and ¶ 12 in support of the Examiner’s finding that “Wilson
teaches a method of using a cleaning composition to treat concrete.” See
Ans. 11. We do not discern a disclosure in either location of the use of a
cleaning composition to treat concrete; rather, it appears that Wilson
discloses the use of a cleaning composition “to treat equipment” that is used
in the concrete industry. E.g., Wilson at Abstract, ¶ 12 (emphasis added).
The Examiner has not adequately explained why a person of ordinary skill in
the art would have been motivated to use the amounts and ratios of Wilson’s
equipment-treating compositions in the context of Kinnaird’s method of
cleaning concrete. Accordingly, we must reverse the Examiner’s rejection
of claim 5.
Rejection 3
Claims 8 and 16 recite an additional step requiring application of “a
protecting composition or a primer.”
The Examiner finds that Kinnaird “is silent about any process after the
rinsing,” but that Hoopes, which is “also directed to a method of treating a
concrete structure . . . teaches that after the treatment the concrete surface is
to be coated with a sealer.” The Examiner determines that it would have
been obvious “to coat the surface of the concrete in the invention of
Kinnaird with a sealer after rinsing because Kinnaird is silent about any
process after the rinsing and Hoopes teaches that to perform such step after
surface treatment.” Ans. 5.
The Appellant argues that “Hoopes is concerned with inhibiting
corrosion of metal reinforcements in concrete due to attacks by chloride
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deicing salts,” and that “Hoopes fails to realize the problem identified in the
current application and also fails to provide solutions as claimed.” App.
Br. 16–17.
That argument is not persuasive. The Examiner relies on Hoopes for
the general disclosure that “[a] penetrating sealer” can be applied to concrete
after curing “for further protection.” Hoopes at 6:62–65. That Hoopes is
principally concerned with inhibiting corrosion of rebar in concrete rather
than the specific problem with which the inventors were concerned does not
suggest error in the Examiner’s finding that a person of ordinary skill in the
art would have been motivated to add a sealer to Kinnaird’s concrete to add
protection to the concrete after cleaning it. We are not persuaded of
reversible error in the Examiner’s rejection. In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an
applicant to identify the alleged error in the examiner’s rejections . . . .”).
Rejections 4 and 5
Rejections 4 and 5 are premised on the Examiner’s finding that
“Wilson teaches a method of using a cleaning composition to treat
concrete.” Ans. 6. As set forth above in our discussion of Rejection 2, the
Examiner’s finding is not supported by the cited portions of the record, and
the Examiner has not adequately explained why a person of ordinary skill in
the art would have been motivated to use the amounts and ratios of Wilson’s
equipment-treating compositions in the context of concrete cleaning.
Accordingly, we reverse as to Rejections 4 and 5.
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CONCLUSION
In summary:
Claims Rejected Basis  Affirmed Reversed
1, 3–8, 15–20 § 103(a)  1, 3, 4, 6–8, 15–20 5
Overall Outcome 1, 3, 4, 6–8, 15–20 5
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART