14402577 (P.T.A.B. Oct. 15, 2018)

Ex Parte Langlotz et al

Patent Trial and Appeal BoardOct 15, 2018

14402577 (P.T.A.B. Oct. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/402,577 11/20/2014 23575 7590 10/17/2018 CURATOLO SIDOTI CO., LPA 24500 CENTER RIDGE ROAD, SUITE 280 CLEVELAND, OH 44145 FIRST NAMED INVENTOR Jutta Karin Langlotz 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. COC.P72750 9686 EXAMINER USELDING, JOHN E ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 10/17/2018 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): docket@patentandtm.com cortese@patentandtm.com pair@patentandtm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUTTA KARIN LANGLOTZ, STEFAN FRIEDRICH, and CHRISTOPH HESSE Appeal 2017-011235 Application 14/402,577 Technology Center 1700 Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134 from a rejection of claims 1, 3-5, 7, and 20. 1 We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 The real party in interest is identified as Construction Research & Technology GmbH. Appeal Brief of April 27, 2017 ("App. Br."), 3. In this opinion, we also refer to the Final Action of October 17, 2016 ("Final Act."), the Examiner's Answer of July 10, 2017 ("Ans."), and the Reply Brief of August 31, 2017 ("Reply Br."). Appeal 2017-011235 Application 14/402,577 CLAIMED SUBJECT MATTER According to the Specification, the claims are directed to a composition "as setting accelerators in building material mixtures comprising (portland) cement, ... and/or calcium aluminate cement, or in building material mixtures comprising (portland) cement and calcium sulphate-based binders, preferably in building material mixtures which as hydraulic binder comprise substantially (portland) cement." Spec. 2:26-33. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A solid pulverulent composition comprising calcium silicate hydrate, where the calcium silicate hydrate does not originate from a hydration reaction of portland cement with water, and at least one water-soluble cationic ( co )polymer, the ( co )polymer comprising the following structural units: a) 0 to 100 mol% of cationic structural units according to the general Formula (I) in which R1 R2 and R3 (I) is in each case identical or different and is represented by hydrogen and/or a methyl radical, are in each case identical or different and independently of one another are each represented by hydrogen, an aliphatic hydrocarbon radical having 1 to 20 C atoms, branched or unbranched, a cycloaliphatic hydrocarbon radical having 5 to 8 C atoms, and/or an aryl radical having 6 to 14 C atoms, 2 Appeal 2017-011235 Application 14/402,577 R 4 is in each case identical or different and is represented by a substituent identical to R2 or R3 or b (CH ) So M -<''- SO M d/ .--,n-. y - 2 x- 3 k, '-/ 3 k an or '=' S03Mk, M is in each case identical or different and is represented by a monovalent or divalent metal cation, ammonium cation (NH4 +) and/or quaternary ammonium cation (NR1R2R3~)+, where R1, R2, R3 and~ have the definitions ofR1, R2, R3 and R4 respectively, k is in each case identical or different and is represented by 1/2 and/ or 1, Y is in each case identical or different and is represented by oxygen, -NH and/or -NR2, V is in each case identical or different and is --{,~- -0 represented by -(CH2)x-, \c.=1 and/or , x is in each case identical or different and is represented by an integer from 1 to 6, x- is in each case identical or different and is represented by a halide, optionally Cl or Br, C1- to C4-alkylsulphate, and/or C1- to C4-alkylsulphonate and/or where b) 0 to 100 mol % of cationic structural units according to the general Formula (II) -CHrCH-CH-CHr / ",, CH2 CH2 ~+/ .... N /"' X Rs Ra (11) R5, R6 = hydrogen, aliphatic hydrocarbon radical having 1 to 6 C atoms, or phenyl radical optionally substituted by methyl groups, and X has the definitions stated above, 3 Appeal 2017-011235 Application 14/402,577 with the proviso that the sum of the cationic structural units according to the general Formula (I) and/ or the general Formula (II) is at least 5 mol%, based on all structural units, characterized in that the ( co )polymer comprises no structural units which derive from monomers which have more than one radically polymerizable, ethylenically unsaturated vinyl group and/or other crosslinking structural units, and c) 1 to 95 mol% of anionic, sulpho-group- containing structural units according to the general Formula (III) (lU) k, R1, R5 and R6 each have the definitions stated above and R7 = hydrogen, aliphatic hydrocarbon radical having 1 to 6 C atoms, or phenyl radical optionally substituted by methyl groups, and M = hydrogen, monovalent or divalent metal cation, ammonium or an organic amine radical. App. Br. 17 (Claims Appendix). REFERENCES The prior art references relied upon by the Examiner in rejecting the claims on appeal are: Nicoleau Schinabeck US 2011/0269875 Al US 2004/0024154 Al 4 Nov. 3, 2011 Feb. 5,2004 Appeal 2017-011235 Application 14/402,577 REJECTION The Examiner rejects claims 1, 3-5, 7, and 20 under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Nicoleau and Schinabeck. Final Act. 3. 2 OPINION We review the appealed rejections for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("it has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections")). Having considered the evidence presented in this Appeal and each of Appellants' contentions, we are not persuaded that Appellants identify reversible error. Thus, we affirm the Examiner's Â§ 103 rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Claim J3 We address each argument raised by Appellants in tum. Appellants first argue that the Examiner erred in rejecting claim 1 because "one of 2 The Examiner rejects claims 1, 3-5, 7, and 20 for failure to comply with the definiteness requirement under 35 U.S.C. Â§ 112(b) or 35 U.S.C. Â§ 112 (pre-AIA), second paragraph. Final Act. 2. This rejection has been withdrawn (Ans. 2) and is not before us on appeal. 3 Appellants do not present arguments separate from those for claim 1 for the obviousness rejection of claims 3, 4, and 7. App. Br. 15. These claims therefore stand or fall with claim 1 for the obviousness rejection. See id.; see also 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2013). 5 Appeal 2017-011235 Application 14/402,577 ordinary skill in the art would understand that the claim 1 composition does not include a hydraulic binder, such as cement." App. Br. 10. The plain language of open-ended claim 1, however, does not preclude "a hydraulic binder" from the recited composition. To the extent that Appellants argue that Nicoleau does not teach or suggest a composition "comprising calcium silicate hydrate, where the calcium silicate hydrate does not originate from a hydration reaction of portland cement with water," it is well-established that "the patentability of a claim to a product does not rest merely on a difference in the method by which that product is made. Rather, it is the product itself which must be new and unobvious." In re Pilkington, 411 F.2d 1345, 1348 (CCPA 1969) (emphasis in original). Appellants reasoning that "[i]f a binder such as cement was present while forming the claim 1 composition, then at least some portion of the calcium silicate hydrate in the composition would have originated from the hydration of cement" (App. Br. 10) is without supporting evidence and does not structurally distinguish the prior art. See also Reply Br. 2 ( arguing, without supporting evidence, that the structure of calcium silicate hydrate is "influence[d]" by how it is formed). We further note that the Specification at multiple locations, for example, at 3:26, 3:35, 6:8, provides that the chemical structure of calcium silicate hydrate is "C-S-H" notwithstanding the method from which it is produced. See also Spec. 14: 1-3 ( discussing producing calcium silicate hydrate not from a hydration reaction of portland cement and water but without providing that there is any structural difference in the end product). Moreover, as the Examiner points out, "the calcium silicate hydrate in Nicoleau does not originate from a hydration reaction of Portland cement with water"-a finding not disputed by Appellants. Compare Ans. 3 ( citing 6 Appeal 2017-011235 Application 14/402,577 Nicoleau ,r 147), with Reply Br. 3 (acknowledging that "[p]aragraph [0147] [ of Nicoleau] merely discloses forming calcium silicate hydrate in the presence of a comb polymer"). We further note that the Specification repeatedly refers to Nicoleau for various teachings including the preparation of calcium silicate hydrate "in the presence of a comb polymer plasticizer, as described in WO 2010/026155Al." 4 Spec. 5:26-20. Based on the foregoing, no reversible error has been identified with regard to the Examiner's finding for the claim limitation "the calcium silicate hydrate does not originate from a hydration reaction of portland cement with water." Appellants' argument that "the present claims are directed to forming a cement-free admixture" (App. Br. 11) likewise fails to distinguish the claim because claim 1 does not recite "a cement-free admixture." As the Examiner points out, the obviousness rejection is not based on "add[ing] the Schinabeck polymer compound to admixture systems"-as argued by Appellants (id. }-but rather based on the rationale that a skilled artisan would use the polymer in Schinabeck as the viscosity enhancing ( constant thickening) polymer in Nicoleau to provide a product that may minimize the disadvantages of polysaccharides. Final Act. 4 ( citing various portions of Schinabeck including ,r,r 5, 18 in support of the reason to combine). Appellants' attorney argument that a skilled artisan would not have combined these prior art teachings for various asserted reasons (e.g., the function and characteristics of the thickening polymer, as speculated upon at App. Br. 13) are not supported by evidence which is what "is required to 4 The "TRANS MITT AL LETTER FOR PA TENT APPLICATION" dated February 25, 2011 for the application for Nicoleau is submitted with a copy of WO 2010/026155Al which is also identified as "PCT /EP2009/061334" shown at Nicoleau (86). See also WO 2010/026155Al (21). 7 Appeal 2017-011235 Application 14/402,577 rebut a primafacie case of obviousness." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Appellants' argument that the Examiner erred by finding that a person having ordinary skill in the art would have been motivated to combine Schinabeck with Nicoleau (App. Br. 14; see also Reply 4)- for example - "Schinabeck only discloses adding its polymer directly to cement" (id. at 14) does not persuade us of reversible error in the Examiner's finding that Schinabeck does not limit its application as such and "[ w ]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007) (citing United States v. Adams, 383 U.S. 39, 50-51 (1966)). Appellant's remaining argument that the prior art teaching of "mixing a comb polymer promoter with a water- soluble calcium compound and a water-soluble silicate compound to form a resulting product does not provide any motivation to form an accelerator composition defined in claim 1 which includes pre-formed calcium silicate hydrate particles that are modified by the claimed polymer" (App. Br. 13) ( emphasis in original) likewise does not identify reversible error in the Examiner's determination that it is within the ordinary skill to combine known structures to arrive at claim 1. Appellants in this case, asserting unexpected results as evidence of nonobviousness, failed to carry the burden of proving that the results are unexpected. See In re Geisler, 116 F.3d at 1469-70 (Fed. Cir. 1997). "[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Such burden 8 Appeal 2017-011235 Application 14/402,577 requires Appellants to proffer factual evidence that actually shows unexpected results relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388,392 (Fed. Cir. 1991), and that is reasonably commensurate in scope with the protection sought by claim 1 on appeal, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972). Appellants' argument that the recited composition "exhibits a surprising strengthening effect" does not explain why the four comparative examples shown in Table 2 in the Specification are the closest prior art, nor does it explain why the seven inventive samples reasonably encompass the scope of claim 1. See App. Br. 13; compare Ans. 7 (explaining various reasons why the results in Table 2 of the Specification have not shown to be unexpected to which Appellants do not respond). Appellants have not carried their burden to show unexpected results. Claims 5 and 20 With regard to dependent claims 5 and 20 reciting, "weight ratio of the ( co )polymer to the calcium silicate hydrate is from 5: 1 to 1: 3" and "from 2: 1 to 1 :2," respectively, Appellants argue that the combined prior art teaching does not specifically teach or suggest the particular weight ratios of the (co)polymer recited in each of the claims. App. Br. 15. Appellants, however, do not dispute Nicoleau's teachings of overlapping ranges cited by the Examiner. Compare id., with Final Act. 5. Appellants do not respond to the Examiner's reasoning that "choosing the overlapping portion, of the range taught in the prior art and the range claimed by the Appellant, has been held to be a prima facie case of obviousness" and that no criticality of the recited rations has been shown. Compare Ans. 9, with Reply Br. 2-8. 9 Appeal 2017-011235 Application 14/402,577 "[T]he existence of overlapping or encompassing ranges shifts the burden to the applicant to show that his invention would not have been obvious." In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). As the Federal Circuit has explained, where there is a range disclosed in the prior art, and the claimed invention falls within that range, there is a presumption of obviousness. But the presumption will be rebutted if it can be shown: (1) That the prior art taught away from the claimed invention, In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997); or (2) that there are new and unexpected results relative to the prior art, In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) ( emphasis added); see also In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1080 n.7 (Fed. Cir. 2012) (explaining that a two-part, burden-shifting inquiry is appropriate in the prosecution context); Tyco Healthcare Group LP v. Mut. Pharm. Co., 642 F.3d 1370, 1372-73 (Fed. Cir. 2011) (quoting Iron Grip Barbell). In cases where the relevant comparison between the claimed invention and the prior art involves overlapping ranges, the Federal Circuit has "consistently held that even a slight overlap in range establishes a prima facie case of obviousness." In re Peterson, 315 F.3d at 1329; see also In re Brandt, 886 F.3d 1171, 1177-78 (Fed. Cir. 2018) (abutting ranges); In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (overlap only at end points). Appellants' argument that "MPEP Â§ 2144.08 notes 'if the reference's disclosed range is so broad as to encompass a very large number of possible distinct compositions, this might present a situation analogous to the obviousness of a species when the prior art broadly discloses a genus"' is not 10 Appeal 2017-011235 Application 14/402,577 persuasive of reversible error. App. Br. 15.5 From the outset, the MPEP only provides that such a scenario "might"-but does not necessarily always-present the situation of a narrower claim in view of a broader prior art genus. Appellants do not respond to the Examiner's finding that there has been no showing of the criticality of the recited weight ratios. Compare Ans. 9, with Reply Br. 2-7. The record before us is indeed devoid of any evidence establishing that the large number of compositions said to be encompassed by the prior art are patentably distinct - as opposed to merely obvious variants as determined by the Examiner. Similar to the argument raised for claim 1, Appellants argue that "the pending claims are directed to pre-formed calcium silicate hydrate particles that are modified by (not made in the presence of) a polymer" (App. Br. 16) ( emphasis in original) without sufficiently explaining why this argument is commensurate in scope with the claim which does not recite "pre-formed calcium silicate hydrate particles" but only "calcium silicate hydrate does not originate from a hydration reaction of portland cement with water." We also note that claim 1 is a composition claim and not a method claim. Appellants' argument directed to how the composition is made, i.e., modifying "pre-formed calcium silicate hydrate particles" (App. Br. 16) does not structurally distinguish the recited composition. Because Appellants in this case have not proffered evidence or case law supporting their patentability argument, no reversible error has been identified in the Examiner's findings here. 5 We note that the quoted statement is from MPEP Â§ 2144.05(!). 11 Appeal 2017-011235 Application 14/402,577 DECISION The Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 12