Ex Parte Li

Patent Trial and Appeal Board

Jun 18, 2018

14651697 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/651,697 06/12/2015 JianLi
21898 7590 06/20/2018
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
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.
73118-US-PCT 2960
EXAMINER
USELDING, JOHN E
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
06/20/2018 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIAN LI
Appeal2017-008868
Application 14/651,697
Technology Center 1700
Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
10.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Application No. 14/651,697, titled Composition of Cellulose Ether and
Gluconate Salts for Use in Cement Containing Skim Coats, filed June 12,
2015 ("Spec."). The real party in interest is identified as Dow Global
Technologies LLC. Appeal Brief filed September 16, 2016 ("App. Br."), 4.
Appeal2017-008868
Application 14/651,697
CLAIMED SUBJECT MATTER
The claims are directed to a composition of cellulose ether and
gluconate salts for use in cement containing skim coats. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A composition for use in cement containing skim coat,
comprising an admixture of cement, filler and:
a) cellulose ether, and
b) gluconate salt in the amount of from 0.02-0.07 wt. %
gluconate salt by weight of total solids of said skim coat
comprising said composition and cement, wherein upon
application of the composition, said cement containing skim coat
has a pot life, the time after which the viscosity (Brookfield
viscometer using a T-bar spindle) at 5 rpm and at 23 °C of the
wet composition increases, of no less than 2 hours and a setting
time, the time after which a cylindrical Vicat needle having a 1
mm2 cross section will not penetrate downward past 25 mm into
a mass of a given wet composition that has been placed in a mold,
of no more than 20% longer than if no gluconate salt is added.
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Roberts
Galer
Nishikawa
Yamakawa
us 4,108,813
us 4,350,533
US 2008/0027177 Al
US 2008/0196629 Al
REJECTIONS
Aug. 22, 1978
Sept. 21, 1982
Jan. 31, 2008
Aug. 21, 2008
Claims 1-10 are rejected under 35 U.S.C. § 112, second paragraph
(pre-AIA) as indefinite. Final Act. 2. 2
2 We refer to the Final Action mailed April 19, 2016 ("Final Act.") and the
Examiner's Answer mailed November 3, 2016 ("Ans."). No Reply Brief has
been submitted.
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Application 14/651,697
Claims 1-7 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yamakawa. Final Act. 2-3.
Claims 8 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yamakawa in view of Nishikawa, Galer, and Roberts.
Final Act. 4.
OPINION
Indefiniteness
The Examiner rejects claim 13 under 35 U.S.C. § 112, second
paragraph (pre-AIA) as indefinite because "use of parenthesis in claim 1
makes it indefinite whether the material contained within the parenthesis is
intended as claim limitations." Final Act. 2.
"[W]hen the USPTO has initially issued a well-grounded rejection
that identifies ways in which language in a claim is ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention, and thereafter the applicant fails to provide a satisfactory
response, the USPTO can properly reject the claim as failing to meet the
statutoryrequirementsof§ 112(b)." In re Packard, 751 F.3d 1307, 1311
(Fed. Cir. 2014).
In this case, the record does not sufficiently support that the mere
inclusion of "(Brookfield viscometer using a T-bar spindle)" in claim 1
renders the claim ambiguous. As Appellant points out, under the broadest
reasonable interpretation, there is nothing in the claim language "that would
3 Appellant presents arguments solely for independent claim 1 for this
rejection. App. Br. 6. Consistent with the provisions of 37 C.F.R.
§ 4I.37(c)(l)(iv) (2013), claim 2-10 stand or fall with claim 1 with regard to
the indefiniteness rejection.
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Application 14/651,697
render the recited viscosity method in parentheses as optional." App. Br. 6.
The Examiner's interpretation of Appellant's argument is in error and we
reverse the indefiniteness rejection.
Obviousness
In rejecting claim 1 4 as unpatentable over Yamakawa, the Examiner
finds that Yamakawa provides an example of a cement composition having
cellulose ether and 0.075 parts by weight of sodium gluconate (which
Yamakawa uses as a setting retarder). Final Act. 3 (citing Yamakawa ,r,r 57,
63, Table 2). The Examiner finds that Yamakawa describes a preferred
amount of setting retarder "in a range of 0.005 to 50" parts by weight. Id.
( citing Yamakawa ,r 51 ). Because Yamakawa describes "a desire to have a
tile adhesive mortar having a long open time ( or long pot life) and a short
setting time" and the effect of "a setting retarder" on the log pot life "but at
the sacrifice of setting time," the Examiner finds that a skilled artisan would
have known to adjust the amount of the setting retardant to balance the pot
life and setting time. Ans. 3 (citing Yamakawa ,r,r 11, 12, 28).
Appellant does not dispute the Examiner's findings (compare App.
Br. 7, with Final Act. 3 and Ans. 3) but argues that Yamakawa describes
fifteen different retarders which amount to "15,000 possible choices" given
the prior art range of "0.005 to 50" weight percent. App. Br. 7. Appellant
argues that it would not have been obvious to choose "gluconate salt in the
amount of from 0.02-0.07 wt. %" as recited in claim 1 from the broad group
of prior art compounds. App. Br. 7. Appellant also argues that Yamakawa
4 Appellant presents arguments solely for independent claim 1 for this
rejection. App. Br. 7-9. Consistent with the provisions of 37 C.F.R.
§ 4I.37(c)(l)(iv) (2013), claim 2-7 and 9 stand or fall with claim 1 with
regard to the obviousness rejection based on Yamakawa.
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Application 14/651,697
does not show a reasonable expectation of success by adjusting the amount
of gluconate. Id. at 7-8.
"A prima facie case of obviousness typically exists when the ranges of
a claimed composition overlap the ranges disclosed in the prior art." In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). When "the claimed ranges
are completely encompassed by the prior art, the conclusion is even more
compelling than in cases of mere overlap." Id. at 13 3 0. 5 In this case,
example 10 in Yamakawa undisputedly discloses a cement composition
using 0.075 parts by weight of gluconate salt. Compare App. Br. 7, with
Final Act. 3 and Ans. 3; Yamakawa ,r,r 57, 63, Table 2. Moreover,
Appellant does not dispute that the prior art weight range of the setting
retardant encompasses the recited range. Compare App. Br. 7, with Final
Act. 3 and Ans. 3; Yamakawa ,r 51. "[D]iscovery of an optimum value of a
result effective variable in a known process is ordinarily within the skill of
the art." In re Boesch, 617 F.2d 272, 276 (CCPA 1980). The prior art
teaches that the amount of the setting retardant affects the pot life which may
be balanced with setting time. Yamakawa ,r,r 11, 12, 28; see Ans. 4--5
( explaining why the prior art teaches that the amount of the setting retardant
is a result effective variable). "A recognition in the prior art that a property
is affected by the variable is sufficient to find the variable result-effective."
In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012).
Appellant has not identified reversible error in the Examiner's finding here.
5 The Court in Peterson also points out they have held that "a prima facie
case of obviousness exists when the claimed range and the prior art range do
not overlap but are close enough such that one skilled in the art would have
expected them to have the same properties." Id. at 1329.
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As to Appellant's argument that certain examples in Yamakawa show
that there is no reasonable expectation of success, we note that the relevant
question on reasonable expectation of success is defined by the reason to
modify Yamakawa, which is to "to have a tile adhesive mortar having a long
open time ( or long pot life) and a short setting time" by adjusting
components including the amount of the setting retardant. Yamakawa ,r,r 11,
12, 28; see In re Langi, 759 F.2d 887, 897 (Fed. Cir. 1985) ("Only a
reasonable expectation of success, not absolute predictability, is necessary
for a conclusion of obviousness."). Appellant's examples, purported to
show that the prior art does not teach how to precisely arrive at the recited
properties - even if true - do not undermine the teaching that a skilled
artisan would know how to vary the amount of gluconate to adjust these
properties.
Moreover, Appellant compares Yamakawa comparative examples 9
and 10 and comparative examples 5 and 6, respectively, and argues that
these prior art examples show that there is no reasonable expectation of
success based on the inclusion or absence of sodium gluconate. App. Br. 7-
8 (citing Yamakawa ,r,r 57, 58, 69, 74, Tables 4---6). As the Examiner points
out, these examples differ in composition in ways more than the presence of
sodium gluconate. For example, comparative example 9 uses hydroxyethyl
methyl cellulose and example 6 uses hydroxyethyl ethyl cellulose whereas
comparative examples 5 and 10 both use hydroxypropyl methyl cellulose.
Ans. 5 (citing Yamakawa Table 4). Appellant's argument has not identified
reversible error in the Examiner's findings with regard to the primafacie
case of obviousness.
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To show criticality of a claimed range, "'it is not inventive to discover
the optimum or workable ranges by routine experimentation.' In re Aller,
220 F.2d 454, 456 (CCPA 1955). Only if the 'results of optimizing a
variable' are 'unexpectedly good' can a patent be obtained for the claimed
critical range. In re Antonie, 559 F.2d 618,620 (CCPA 1977)." In re
Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997).
In this case, Appellant argues that tables 1 and 2 in the Specification
show unexpected results are exhibited by the recited composition. App. Br.
8-9. These tables show a comparison between compositions without sodium
gluconate and compositions with sodium gluconate in the amount of 0.02,
0.04, 0.06, 0.08, and 0.1 percent. Tables 1 & 2 of the Specification. As the
Examiner points out, these results are not commensurate in scope with claim
1 at least because: (1) some sodium gluconate compositions are outside of
the recited range of 0.02 to 0.07 percent; and (2) all compositions in tables 1
and 2 use WalocelTM MW 40000 PFV not commensurate in scope of the
cellulose ether recited in claim 1. Ans. 7-8. These results, based on
comparisons with compositions without sodium gluconate, are not evidence
of "unexpected results relative to the closest prior art." Id; see Bristol-Myers
Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014)
("To be particularly probative, evidence of unexpected results must establish
that there is a difference between the results obtained and those of the closest
prior art, and that the difference would not have been expected by one of
ordinary skill in the art at the time of the invention."). Appellant's evidence
therefore does not identify reversible error in the Examiner's finding against
unexpected results.
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Application 14/651,697
Appellant argues that claim 8 ( dependent from claim 1) is patentable
because "Yamakawa fails to disclose any composition having any of the
fillers dolomite, talc, or their mixture." App. Br. 9. Appellant's argument is
not directed to the language of claim 8 which recites that "the filler is
selected from the group consisting of calcium carbonate, dolomite, talc,
silica sand, and their mixture." The Examiner finds that Yamakawa
describes a cement composition having silica (e.g., "river sand, mountain
sad, ... and other sand") and Appellant does not address this finding.
Compare Final Act 4 ( citing Yamakawa ,r 57), with App. Br. 9; Ans. 9;
Yamakawa ,r 43. No reversible error has been identified here.
Appellant argues that claim 10 is patentable because Yamakawa does
not teach or suggest "70-80 wt.% of calcium carbonate" as recited. App.
Br. 10. Appellant, however, does not dispute that the prior art range of 25 to
85 percent of aggregates ( of which calcium carbonate is an example)
encompasses the recited range. Compare id., with Final Act. 5 ( citing
Yamakawa ,r 88); see also Ans. 10 (citing Yamakawa ,r,r 44, 88). No
reversible error has been identified with regard to the obviousness rejection
of claim 10.
DECISION
The Examiner's rejection of claims 1-10 under 35 U.S.C. § 112,
second paragraph is reversed.
The Examiner's rejections of claims 1-10 under 35 U.S.C. § 103(a)
are affirmed.
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Appeal2017-008868
Application 14/651,697
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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