Ex Parte Hagens et al

Patent Trial and Appeal Board

Sep 29, 2017

12637250 (P.T.A.B. Sep. 29, 2017)

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.
12/637,250 12/14/2009 Rodger Graham Hagens G2033/20009 2953
3000 7590
CAESAR RIVISE, PC
7 Penn Center, 12th Floor
1635 Market Street
Philadelphia, PA 19103-2212
EXAMINER
WALTERS JR, ROBERT S
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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 @ crbcp .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODGER GRAHAM HAGENS, DOUG BILBIJA,
and JEREMY HAGENS
Appeal 2016-006065
Application 12/637,250
Technology Center 1700
Before JEFFREY T. SMITH, MONTE T. SQUIRE,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—5 and 8—18 of Application
12/637,250 under 35 U.S.C. § 103(a) as obvious. Final Act. (Jan. 8, 2015)
3—8. Appellants1 seek reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 Cantech Industrial Research Corporation is identified as the real party in
interest. Appeal Br. 2.
Appeal 2016-006065
Application 12/637,250
BACKGROUND
The present application generally relates to waterproofing
compositions based on polymer modified tall oil pitch. Spec. 11. More
particularly, the present application is concerned with polymer modified tall
oil pitch compositions that are used for the purpose of shielding buildings
and structures against water, moisture and rust, or other damaging aspects of
the environment. Id. The application further indicates that it is directed to
the use of modifying the properties of tall oil pitch emulsions by means of
alkali carbonates and soluble elastomeric polymers in order to confer
superior strength, flexibility and resistance to environmental degradation.
Id. 13.
Claim 1 is representative of the pending claims and is reproduced
below with certain language bolded and italicized for emphasis:
1. A two-part sprayable waterproofing system comprising,
as a first part thereof, a mixture of a tall oil pitch (TOP)
emulsion, alkali metal carbonate and a polymeric latex and as
a second part thereof an aqueous solution of a curing agent
effective, when said two parts are separately sprayed through a
twin-nozzle spray unit onto a surface, to effect curing of the
sprayed material to a protective coating on the surface.
Appeal Br. 9 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejection:
Claims 1—5, and 8—18 are rejected under 35 U.S.C. § 103(a) as
obvious over Hagens et al. (US 2008/0038470 Al, Feb. 14, 2008)
(hereinafter “Hagens”) in view of Hjelte (US 2,434,243, iss. Jan. 13, 1948)
(hereinafter “Hjelte”). Final Act. 3—8.
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Application 12/637,250
DISCUSSION
The Examiner rejected claims 1—5 and 8—18 as obvious over Hagens
in view of Hjelte. Final Act. 3—8. In support of such rejection, the Examiner
finds that Hagens teaches each limitation of the claims at issue except that
the first part of the system comprises an alkali metal carbonate. Id. at 5.
The Examiner further finds that Hjelte teaches the inclusion of sodium
carbonate (an alkali metal carbonate) in bituminous emulsions or tall oil and
pitchy emulsions. Id.
Hjelte teaches to include “a slightly alkaline substance . . . e.g., a
double salt of calcium carbonate and sodium carbonate.” Hjelte 2:51—54.
Hjelte further teaches that “relatively weak organic acids are slowly but
continuously formed in the . . . bituminous material of the applied emulsion.
These acids split a portion of the double salt CaCO3.Na2CO3.2H2O and are
neutralized as soon as they are formed, by the alkaline component Na2C03.”
Id. at 3:41—47.
The Examiner determines that a person of ordinary skill in the art
would have been motivated to modify the teachings of Hagens by inclusion
of the sodium carbonate of Hjelte in order to increase the stability of the
composition when subjected to weather conditions. Final Act. 5.
Appellants argue that the rejection is in error on several bases. First,
Appellants argue that a person of ordinary skill in the art “would have lacked
motivation to have substituted into the method of Hagens only the alkali
metal carbonate component of the double salt.” Appeal Br. 5. Similarly,
Appellants argue that “the Examiner is improperly reconfiguring the
structure” of Hjelte. Id. at 5. In the Answer, however, the Examiner
clarifies that the proposed combination includes the “double salt”
(CaCO3.Na2CO3.2H2O) of Hjelte rather than “just including the alkali metal
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Application 12/637,250
carbonate.”2 Answer 5; Hjelte 3:44-47. Accordingly, the Examiner does
not propose that a person of skill in the art would have incorporated only the
sodium carbonate component of Hjelte nor engaged in the reconfiguration of
Hjelte.
Appellants next argue that Hjelte teaches away from the proposed
combination. Appeal Br. 5—6. Specifically, they argue that Hjelte teaches
that CaCCE is undesirable as a neutralizing agent and that, “when
Applicants’ two-part system comprises IS^CCE as the alkali metal carbonate
and CaCE as the curing agent, the IS^CCE reacts with the CaCE to form
CaCCE andNaCl.” Id. at 5.
In this regard, Hjelte teaches as follows:
It is worthy of mention that calcium carbonate is itself also a
neutralizing agent for strong acids but has only a very slightly
neutralizing effect on weak organic acids present in or formed
in bituminous materials such as asphalt and tar. The admixture
of calcium hydroxide for neutralizing purposes leaves much to
be desired, for in such cases a violent neutralization of organic
acids will take place where few grains of calcium oxide are
situated but no neutralization will occur where the grains of
calcium carbonate are situated.
Hjelte 1:36-47 (emphasis added). That is, Hjelte states that calcium
carbonate tends to react only with strong acids then indicates that the use of
calcium hydroxide “leaves much to be desired” due to its violent reaction
with organic acids. Thus, Hjelte teaches away from the use of calcium
hydroxide. Hjelte’s statements regarding calcium carbonate, however, do
2 Appellants did not refute the Examiner’s clarification in a responsive brief.
Appellants also did not seek to have any part of the Examiner’s Answer
designated as a new ground of rejection. Accordingly, any such argument is
waived. 37 C.F.R. § 41.40(a).
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Appeal 2016-006065
Application 12/637,250
not rise to the level of teaching away. Moreover, Hjelte cannot be said to
teach away from the use of the very double salt that it prescribes.
Appellants similarly argue that a person of ordinary skill in the art
would not have been motivated to combine the teachings of Hagens and
Hjelte because sodium carbonate “is soluble in water” and would “adversely
affect the waterproofing qualities of the coating.” Appeal Br. 6—7. Again,
however, the Examiner does not find that a person of ordinary skill in the art
would have been motivated to combine extracted sodium carbonate with the
teachings of Hagens. Rather, the Examiner finds that such person would
have been motivated to combine the double salt of Hjelte (described as
having “a relatively low solubility in water”) with the teachings of Hagens.
Answer 5; Hjelte 3:52—53. Thus, the present argument is inapt.
Appellants additionally argue that the prima facie case, if established,
is rebutted by evidence of criticality of the claimed components. Appeal Br.
7—8. Appellants assert that “[tjhere is no suggestion in the cited art that
Na2C03, for example, is a better hardening agent in a two-part system in
combination with CaCE than previously known compounds.” Appeal Br. 7.
In general, an applicant may overcome a prima facie case of
obviousness by establishing “that the [claimed] range is critical, generally
by showing that the claimed range achieves unexpected results relative to the
prior art range.” In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997)
(alteration in original) (citation omitted). “Although it is well settled that
comparative test data showing an unexpected result will rebut a prima facie
case of obviousness, the comparative testing must be between the claimed
invention and the closest prior art.” In re Fenn, 639 F.2d 762, 765 (CCPA
1981). Moreover, “[i]t is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements in
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Application 12/637,250
the specification does not suffice.” In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984), quoted with approval in In re Soni, 54 F.3d 746, 750 (Fed.
Cir. 1995).
Here, Appellants cite to a statement in the Specification that
membranes made according to the teachings of the application “were found
to possess greater strength and solvent resistance than are known from
conventional asphalt emulsion-based surface coatings, or any tall oil based
membranes heretofore disclosed.” Appeal Br. 7 (citing Spec. 127).
Appellants further cite to statements in the Specification regarding the
strength and hardness of the membranes being increased by addition of
Na2C03. Appeal Br. 8. This is an inadequate comparison to prior art
technology, does not show criticality throughout the full range of the claims,
and lacks any evidence that the claimed results would have been surprising
to those of skill in the art. Accordingly, we determine that Appellants have
failed to rebut the prima facie case of unpatentability on this basis.
Appellants make several statements in their brief to the effect that
Hjelte’s double salt is not an alkali metal carbonate as claimed. See, e.g.,
Appeal Br. 4, 6. Appellants, however, have not directed us to a technical
explanation supported by evidence which explains why the claimed alkali
metal carbonate excludes Hjelte’s double salt.
In view of the foregoing, Appellants have failed to show reversible
error by the Examiner in rejecting claims 1—5 and 8—18 as obvious over
Hagens in view of Hjelte.
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Application 12/637,250
CONCLUSION
The rejection of claims 1—5 and 8—18 as obvious over Hagens in view
of Hjelte 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).
AFFIRMED
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