Ex Parte Gill

Patent Trial and Appeal Board

Aug 18, 2016

14035819 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/035,819 09/24/2013 IQBAL GILL
91029 7590 08/22/2016
CANAANLA W, P,C
PO Box 1860
Los Gatos, CA 95031-1860
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.
6500-0001.20 9326
EXAMINER
MAR CANTONI, PAUL D
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
08/22/2016 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):
karen@canaanlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IQBAL GILL
Appeal2015-003458
Application 14/035,819
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1 through 18, which are all of the claims
pending in the above-identified patent application. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant identifies the Real Party in Interest as the inventor, Iqbal Gill.
(Appeal Brief filed August 29, 2014 ("App. Br.") at 3.)
Appeal2015-003458
Application 14/035,819
STATEivIENT OF CASE
The subject matter on appeal is generally directed to a composition
comprising a cement admixture that comprises at least one complex of a
metal with a hydroxycarboxylic acid ligand. (Spec. i-fi-1 31, 73, 77, 81.)
When this cement admixture is added to a cement composition, it improves
the properties of the cement composition. (Spec. i-fi-122, 23, 154, 155.)
Details of the appealed subject matter are recited in representative
claims 1 and 13, reproduced below from the Claims Appendix to the Appeal
Brief.
1. A composition comprising a cement admixture
comprising at least one metal complex represented by the
formula Ma[Nb(HCA)c], wherein:
M is a metal selected from the group consisting of
lithium, sodium, potassium, magnesium, calcium, strontium,
barium and combinations thereof;
N is a metal selected from the group consisting of
aluminum, iron, bismuth and combinations thereof;
HCA is a hydroxycarboxylic acid selected from the
group consisting of glyoxylic acid hydrate, glycolic acid, lactic
acid, 2-hydroxybutyric acid and combinations thereof;
a is an integer with a value of 1 to 100;
bis an integer with a value of 1 to 10; and
c is an integer with a value of 1 to 100,
wherein the composition is capable of improving
properties of a hydraulic cement.
13. A composition comprising a cement admixture
comprising at least one metal complex represented by the
formula Ma[Nb(HCA)c], wherein:
M is a metal selected from the group consisting of
lithium, sodium, potassium, magnesium, calcium, strontium,
barium, and combinations thereof;
N is a metal selected from the group consisting of
aluminum, iron, bismuth and combinations thereof;
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HCA is a hydroxycarboxylic acid selected from the
group consisting of citric acid, isocitric acid, hydroxycitric acid
and combinations thereof;
a is an integer with a value of 1 to 100;
bis an integer with a value of 1 to 10; and
c is an integer with a value of 1 to 40,
wherein the composition is capable of improving
properties of a hydraulic cement.
(App. Br. 15, 17-18, Claims App'x.)
Appellant seeks review of the following grounds of rejection
maintained by the Examiner in the Answer entered on October 27, 2014
("Ans."):
Claims 1through6 under 35 U.S.C. § 102(a)(l) as anticipated by, or
in the alternative, under 35 U.S.C. § 103(a) as unpatentable over, the
disclosure of U.S. Patent Application Publication 2003/0143176 Al,
published in the name of Liu et al. on July 31, 2003, or the STN Chemical
Abstract of this reference (hereinafter referred to as "Liu"); and
Claims 7 through 18 under 35 U.S.C. § 102(a)(l) as anticipated by, or
in the alternative, under 35 U.S.C. § 103(a) as unpatentable over, the
disclosure of Ge, Q., et al., Hydroacid Complexes: A New Class of Draw
Solutes to Promote Forward Osmosis (FO) Processes, Chem. Commun., 49,
8471, 2013, or the STN Chemical Abstract of this reference (hereinafter
referred to as "Ge").
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Application 14/035,819
DISCUSSION
Upon consideration of the evidence on this appeal record and each of
Appellant's contentions, we determine that Appellant has not identified
reversible error in the Examiner's rejections of claims 1-18 under 35 U.S.C.
§ 102(a)(l) or alternatively under 35 U.S.C. § 103(a). Accordingly, we
affirm theses rejections for the reasons set forth in the Final Office Action
entered June 25, 2014 ("Final Act.") and the Answer. We add the discussion
below primarily for emphasis and completeness. 2
With respect to claim 1, Appellant does not dispute the Examiner's
finding that Liu discloses a composition comprising a sodium aluminum
lactate salt, and the Examiner's finding that this salt falls within formula
Ma[Nb(HCA)c] recited in claim 1. (Compare Ans. 3--4 with App. Br. 4--14.)
With respect to claim 13, Appellant does not dispute the Examiner's finding
that Ge discloses ferric complexes with hydroxyl acids, including a ferric
(Fe) complex with sodium citrate (Figure 1), and the Examiner's finding that
this salt falls within formula Ma[Nb(HCA)c] recited in claim 13. (Compare
Ans. 5 with App. Br. 4--14.)
2 We limit our discussion to those claims separately argued, and claims not
separately argued stand or fall with the argued claims. See 37 C.F.R. §
41.37(c)(l)(vii). Although claims 1-6 are separately rejected from claims
7-18, Appellant argues claims 1-18 as a group. (See generally App. Br. 4--
14.) Therefore, for the purposes of this appeal, we select claim 1 as
representative of claims 1---6, and select claim 13 as representative of claims
7-18, and decide the propriety of the rejections based claims 1 and 13 alone.
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Based on these undisputed factual findings, the Examiner concludes
the prior art references anticipate or would have rendered obvious the
compositions recited in claims 1 and 13, respectively, because the recitation
of a new use for a known composition as a cement admixture does not
impart patentabilty to the known composition. (Ans. 3---6.) According to the
Examiner, a "cement admixture" as recited in claims 1 and 13 is an intended
use of the metal complexes recited in these claims as an admixture for
cement. (Ans. 3, 5.)
Appellant argues that the term "cement admixture" recited in claims 1
and 13 refers to a cement admixture comprising a metal complex that, when
combined with a hydraulic cement, improves the properties of the cement,
and contends that the Examiner incorrectly interprets this phrase to be a
metal complex admixture. (App. Br. 6-7.) Appellant further argues that the
recitation of a "cement admixture" in claims 1 and 13 is not an intended use,
but instead is a term recited in the body of the claims that "refers to a
legitimate composition that is manufactured and sold." (App. Br. 6.)
However, Appellant acknowledges that a "cement admixture" does
not include cement. (App. Br. 6-7.) In addition, Appellant does not assert
that a "cement admixture" comprises anything other than one or more metal
complexes represented by formula Ma[Nb(HCA)c]. (App. Br. 4--14.)
Furthermore, Appellant does not identify any disclosure in the Specification
indicating that a "cement admixture" is anything other than one or more
metal complexes represented by formula Ma[Nb(HCA)c]. (Id.) On this
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record, therefore, Appellant does not identify any distinction between a
"cement admixture" represented by formula Ma[Nb(HCA)c], and the mixture
of metal complexes included by this formula taught or suggested by the prior
art references. (Id.) Thus, Appellant does not identify reversible error in the
Examiner's determination that the recitation of a cement admixture in claims
1 and 13 is merely an intended use for the metal complexes recited in the
claims and does not patentably distinguish over the mixture of such metal
complexes taught or suggested by the prior art references.
Appellant further argues that Liu discloses silicone oil-in-water
emulsions useful as additives in coating products, personal care products,
household care products, automotive care products, and petroleum products,
but Liu does not teach that the silicone oil-in-water emulsions are cement
admixtures comprising at least one metal complex represented by the
formula Ma[Nb(HCA)c]. (App. Br. 8-9.) Similarly, Appellant argues that
Ge discloses hydroacid complexes for forward osmosis, but Ge does not
teach that the hydroacid complexes are cement admixtures comprising at
least one metal complex represented by the formula Ma[Nb(HCA)c]. (App.
Br. 8.) Appellant argues that there is no suggestion in either Liu or Ge to
modify the complexes disclosed in the references into cement admixtures.
(App. Br. 8-9.)
However, the claims are directed to a composition, rather than to a
process of using such composition. Language in a composition claim
directed to an intent-of-use, which does not patentably differentiate the
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claimed compos1t10n from an otherwise identical prior art compos1t10n, does
not support patentability. See, e.g., In re Tuominen, 671F.2d1359, 1361
( CCP A 1982) ("The only distinction to which Tuominen can aver is a
difference in use, which cannot render the claimed composition novel."); In
re Hack, 245 F.2d 246, 248 (CCPA 1957) ("These cases are merely
expressive of the principle that the grant of a patent on a composition or
machine cannot be predicated on a new use of that machine or
composition."). On this record, Appellant does not identify any
compositional differences between Liu's composition comprising sodium
aluminum lactate salt and the cement admixture composition comprising one
or more metal complexes recited in claim 1. (App. Br. 4--14.) Nor does
Appellant identify any compositional differences between Ge's composition
comprising a ferric (Fe) complex with sodium citrate and the cement
admixture composition comprising one or more metal complexes recited in
claim 13. (Id.) Nowhere in this appeal record does Appellant demonstrate
that the intent-of-use limitation "cement admixture" recited in claims 1 and
13 would have rendered the claimed compositions patentably distinguishable
over the compositions disclosed in each of Liu and Ge. (Id.) Moreover,
Appellant does not show that Liu's and Ge's compositions having
ingredients encompassed by the ingredients recited in the claims would not
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"1 "1 "1 Ct• • ,"1 , • £"O "'1 "1 "1 • , 1. / T "1 \. T
oe capao1e or nnprovmg tne propen1es or a nyaraunc cement. J va.J; 1n re
Schreiber, 128 F.3d 1473, 1477-79 (Fed. Cir. 1997).
Accordingly, we sustain the Examiner's§ 102(a)/§ 103(a) rejections
of claims 1-18.
Reply Brief
We decline to consider Appellant's numerous arguments raised for the
first time in the Reply Brief that could have been raised in the Appeal Brief,
in the absence of Appellant's showing of good cause. (Rep. Br. 2-9); 37
C.F.R. § 41.37(c)(l)(iv); see also Ex parte Borden, 93 USPQ2d 1473, 1474
(BP AI 2010) (Informative) (explaining that under the previous rules, which
are similar to the current rules, "the reply brief [is not] an opportunity to
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner's rejections, but were not."). For instance, Appellant
argues that the Examiner did not properly make Ge of record until the
Examiner cited the reference in a PT0-892 attached to the Examiner's
Answer, and Appellant asks the Board to disregard Ge that was made of
record through a USPTO's Scientific and Technical Information Center
("STIC") Search Report during prosecution. (Rep. Br. 2-3.)
However, Appellant indicated earlier in prosecution that Appellant
obtained a copy of the STIC Search Report from PAIR and responded to the
Examiner's rejection based on Ge set forth in the April 4, 2014 Non-Final
Office Action. (Appellant's Response filed June 9, 2014, at 15-17.)
Appellant again responded to the Examiner's rejection based on Ge repeated
3 The functional limitations recited in claims 1 and 13 are "wherein the
composition is capable of improving properties of a hydraulic cement."
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in the Final Office Action entered June 25, 2014 in the Appeal Brief. (App.
Br. 8.) Nothing in the record indicates that Appellant was unaware of Ge
being used in the Examiner's rejection of record. Nor was Appellant
unaware that Ge was cited in the STIC Search Report, rather than in a PT0-
892. Nevertheless, Appellant did not timely raise this issue during
prosecution or in the Appeal Brief.
In any event, the propriety of the STIC Search Report as a means for
citing prior art and the Examiner's failure to properly enter Ge and certain
other prior art references into the record are reviewable by a petition under
3 7 C.F .R. § 1.181 and therefore are not within the jurisdiction of the Board.
In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) ("There are a host of
various kinds of decisions an examiner makes in the examination
proceeding-mostly matters of a discretionary, procedural or nonsubstantive
nature-which have not been and are not now appealable to the board or to
this court when they are not directly connected with the merits of issues
involving rejections of claims, but traditionally have been settled by petition
to the Commissioner."): see also Ex Parte Frye, 94 USPQ 2d 1072, 1078
(BP AI 2010) (precedential).
CONCLUSION
In view of the reasons set forth above and the reasons set forth in the
Final Action and the Answer, we affirm the Examiner's decision rejecting
claims 1-18 under§ 102(a), or alternatively under§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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