Ex Parte ONG et al

Patent Trial and Appeal Board

Dec 28, 2018

14560250 (P.T.A.B. Dec. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/560,250 12/04/2014
23575 7590 01/02/2019
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
FIRST NAMED INVENTOR
Frank Shaode ONG
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.P76340 4282
EXAMINER
ROSEBACH, CHRISTINA HW
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
01/02/2019 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):
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 FRANK SHAODE ONG,
RICK PAPONETTI, JAMES C. SMITH,
and STEFAN MUESSIG
Appeal2018-002196
Application 14/560,250
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 21 and 22 of Application
14/560,250 under 35 U.S.C. § l 12(b) as indefinite. Final Act. 2, 3 (Feb. 13,
2017). The Examiner further rejected claims 1, 3-9, and 16-22 under
35 U.S.C. § 103 as obvious. Id. at 3, 8, 9. Appellants 1 seek reversal of these
1 Construction Research and Technology GmbH is identified as the applicant
and real party in interest. Appeal Br. 3.
Appeal2018-002196
Application 14/560,250
rejections2 pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
For the reasons set forth below, we reverse the § 112(b) rejection for
indefiniteness and affirm the § 103 rejections.
BACKGROUND
The '250 Application describes methods of manufacturing
cementitious compositions, which include expanded polymeric
microspheres. Spec 1 :7-8. The '250 Application further describes these
expanded polymeric microspheres as providing void spaces in cementitious
compositions prior to final setting. Id. at 7-8. Such void spaces are said to
increase the freeze-thaw durability of the cementitious material. Id. at 4:8-
9.
Claims 1, 21 and 22 are representative of the '250 Application's
claims and are reproduced below from the Claims Appendix to the Appeal
Brief:
1. A method of manufacturing a cementitious composition
compnsmg:
dispersing expanded polymeric microspheres into a
liquid dispersion; and
incorporating the liquid dispersion comprising expanded
polymeric microspheres into the cementitious composition;
wherein the liquid dispersion is incorporated into a
majority of mixing water, to which other ingredients of the
cementitious composition are subsequently added;
2 Claims 1, 3-9, and 11-22 are pending in the '250 Application. Of these,
claims 1, 3-9, and 16-22 are rejected and claims 11-15 are withdrawn from
consideration. Final Act. 1.
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Application 14/560,250
wherein the expanded polymeric microspheres are
present in the liquid dispersion in an amount of about 0.1 to
about 15 percent by weight, based on the total weight of the
dispersion, prior to incorporation into the cementitious
composition; and
wherein the expanded polymeric microspheres are added
to the cementitious composition in an amount of from about 0.1
% to about 3 % by volume, based on the total volume of the
cementitious composition.
21. The method of claim 1, wherein the liquid dispersion
comprising expanded polymeric microspheres is incorporated
into from about 70 to about 85 percent of mixing water, to
which other ingredients of the cementitious composition are
subsequently added.
22. The method of claim 1, comprising expanding
unexpanded, expandable polymeric microspheres proximate to
and/or during manufacture of the cementitious composition,
prior to said dispersing expanded polymeric microspheres into a
liquid dispersion.
Appeal Br. 15, 17 (emphasis added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claim 22 is rejected under 35 U.S.C. § 112(b) as indefinite.
Final Act. 2; Answer 2.
2. Claim 21 is rejected under 35 U.S.C. § 112(b) as indefinite.
Final Act. 3; Answer 3.
3. Claims 1, 3-7, 9, and 16-22 are rejected under 35 U.S.C. § 103
as unpatentable over Kems. 3 Final Act. 3; Answer 3.
3 US 2006/0281836 Al, published Dec. 14, 2006.
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Application 14/560,250
4. Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Kerns and Ong. 4 Final Act. 8; Answer 8.
5. Claim 1, 3, 9, and 16-22 are rejected under 35 U.S.C. § 103 as
unpatentable over de Rook. 5 Final Act. 9; Answer 9.
DISCUSSION
Rejection 1. The Examiner rejected claim 22 as indefinite. Final
Act. 2; Answer 2.
Claim 22 recites "proximate." The Examiner determined that this
claim is indefinite because the "proximate" requirement is a relative term.
Answer 2. The Examiner further determined that because the Specification
merely "states what proximate 'may' mean" without defining it, that "one of
ordinary skill in the art would not be reasonably apprised of the scope of the
invention." Id. The Examiner concluded that "the broadest reasonable
interpretation of 'proximate' [is] adopted- i.e.[,] at any point prior to or after
making the cementitious composition." Id. (emphasis added).
Appellants assert that the Examiner "should not consider the term
'proximate' separately from the phrase 'proximate to and/or during
manufacture of the cementitious composition."' Appeal Br. 7. To support
their argument, Appellants direct our attention to the following description
in the Specification:
"Proximate to and/ or during manufacture of the cementitious
composition" may include at least one of: (i) expanding
unexpanded, expandable polymeric microspheres immediately
prior to dispersing the expanded polymeric microspheres into
4 US 2006/0281835 Al, published Dec. 14, 2006.
5 US 4,057,526, issued Nov. 8, 1977.
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Application 14/560,250
the liquid dispersion at the cementitious composition
manufacturing facility; or (ii) expanding unexpanded,
expandable polymeric microspheres and reserving the expanded
polymeric microspheres for dispersing into the liquid dispersion
at a later time, at the cementitious composition manufacturing
facility.
Spec. 8 :20-26; see also Appeal Br. 7.
Whether a claim is indefinite under 35 U.S.C. § 112(b) requires giving
the claims the broadest reasonable interpretation and then determining
whether the metes and bounds of the claimed invention are unclear. In re
Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014). The Board has explained
that "[t]he Office 'determines the scope of claims ... not solely on the basis
of the claim language, but upon giving claims their broadest reasonable
construction 'in light of the specification as it would be interpreted by one of
ordinary skill in the art."' Ex parte McAward, No. 2015-006416, slip op. at
5 (PTAB August 25, 2017) (precedential in relevant part) (alteration in
original) (quoting Phillips v. AWHCorp., 415 F.3d 1303, 1316 (Fed. Cir.
2005) (en bane) (available at http://bit.ly/2xEGpee)).
In this case, we agree with Appellants that, based on the Specification,
the ordinary skilled artisan would understand that the disputed claim term is
intended to be comprehended within the context of the phrase "proximate to
and/or during manufacture of the cementitious composition." See Appeal
Br. 7.
Appellants, moreover, persuasively argue that claims 1 and 22 require
that the microspheres are expanded prior to dispersing the expanded
microspheres and incorporating the dispersion into the cementitious
composition. Id. at 8. Thus, the Examiner's interpretation of claim 22 as
encompassing the expansion of polymeric microspheres after making the
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cementitious composition impennissibly eviscerates the term "proximate"
from claim 22.
Thus, we conclude that the rejected claim meets the necessary
thresholds of clarity and precision when read through the eyes of a skilled
artisan and in view of this disclosure. We, therefore, reverse Rejection 1.
Rejection 2. The Examiner rejected claim 21 as indefinite. Final
Act. 3; Answer 3.
The Examiner determined that "[ c ]laim 21 is not clear as to the
mixing water" because "[t]he claim could be interpreted as the dispersion is
70-85% mixing water OR that 70-85% of the total mixing water is added in
the dispersion." Answer 3. The Examiner further determined that "[ f]rom
the [S]pecification, ... it is clear that applicant intends the later." Id. (citing
Spec. ,r 79).
We, however, agree with Appellants that "if the claim language is
clear based on the Specification, then it is not indefinite." Appeal Br. 8.
We, therefore, conclude that the Examiner has not provided sufficient
fact finding to support the legal conclusion that claim 21 is indefinite. Thus,
we conclude that the rejected claim meets the necessary thresholds of clarity
and precision when read through the eyes of a skilled artisan and in view of
the Specification. We, therefore, reverse Rejection 2.
Rejection 3 and Rejection 4. Appellants argue for the reversal of
these obviousness rejections to claims 1, 3-9, and 16-22 on the basis of
limitations present in independent claim 1. See Appeal Br. 9-13; Reply Br.
3-5. We, therefore, limit our analysis for these rejections to claim 1.
Rejection 3. The Examiner rejected claims 1, 3-7, 9, and 16-22 as
obvious over Kerns. Final Act. 3; Answer 3.
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The patent examiner bears the initial burden of establishing a prima
facie case that an application's claims would have been obvious based upon
what was known in the prior art. See In re Dillon, 919 F.2d 688, 701 (Fed.
Cir. 1990). An applicant facing an obviousness rejection may argue that the
examiner erred in determining that there was a prima facie case of
obviousness. Id. If the examiner correctly determined that there was a
prima facie case of obviousness, the applicant may present rebuttal evidence.
Id. Upon submission of rebuttal evidence, the determination of obviousness
vel non is made on the entire record. Id.
In rejecting claim 1, the Examiner found that Kerns describes or
suggests every step and limitation except for the claimed order of steps.
Answer 4 (citing Kerns ,r,r 23, 28, 29, 55; Table 1 (Example 6)). In
particular, the Examiner found that Kerns does not disclose dispersing
expanded polymeric microspheres into a liquid dispersion before this
dispersion is incorporated into the cementitious composition. Answer 4.
The Examiner determined, however, that because Kerns describes adding all
of the claimed "majority of mixing water" recited in claim 1 directly to the
cement composition (id. (citing Kerns Table 1 (Example 6))), it would have
been obvious to the ordinary skilled artisan to add water "to the dispersion
containing the micro spheres before adding it to the cement composition."
Answer 4.
Appellants' principal argument on appeal is that the Examiner erred
by concluding that the declaration of Dr. Frank Ong, one of the '250
Application's co-inventors, was insufficient to rebut any prima facie case of
obviousness. See generally Appeal Br. 9--14; Reply Br. 3-5. In particular,
Appellants argue that the Ong Declaration establishes that "the order of
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process steps recited in claim 1 ... provide[s] unexpected results." Appeal
Br. 9.
In response, the Examiner argues that one of ordinary skill in the art
may not extrapolate from the data presented in the Ong Declaration to "all
other cementitious mixtures" because Appellants have only tested "specific
cementitious ingredients- cement, sand, specific kinds of stone." Answer
14; see Ong Declaration ,r 14. As the Examiner determined, the claimed
"cementitious compound" is "a broad category which includes any
composition which contains cement." Answer 14.
Appellants counter by asserting that "a person of ordinary skill in the
art would extrapolate based on the experimentation described in the
Declaration." Appeal Br. 11. To support this position, Appellants argue that
"Dr. Ong explicitly states in his Declaration that 'it is necessary to limit the
number of experiments performed, and to extrapolate from the results based
on a limited number of experiments."' Reply Br. 3.
Appellants' arguments are not persuasive.
"Commensurate in scope" means that the evidence provides a
reasonable basis for concluding that the untested embodiments encompassed
by the claims would behave in the same manner as the tested
embodiment(s). See In re Lindner, 457 F.2d 506, 508 (CCPA 1972) ("Here,
only one mixture of ingredients was tested. . . . The claims, however, are
much broader in scope, ... and we have to agree with the Patent Office that
there is no 'adequate basis for reasonably concluding that the great number
and variety of compositions included by the claims would behave in the
same manner as the [single] tested composition."') (bracketed material in
original).
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In this case, the Examiner persuasively concluded that the data
presented in the Ong Declaration was not commensurate in scope because
"the claims cover any amount of water and any amount of other
'cementitious' ingredients, which could include any number of common
items in any ratio" Final Act. 14. We, therefore, agree with the Examiner
that the Ong Declaration's limited evidence cannot be reasonably
extrapolated to the freeze-thaw behavior of untested embodiments in the
claimed cementitious composition. See Lindner, 457 F.2d 508.
In view of the foregoing, we affirm the Examiner's rejection of claim
1 as unpatentable over Kerns. Dependent claims 3-9 and 16-22 fall with
claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). Accordingly, we affirm the
Examiner's Rejection 3 and Rejection 4.
Rejection 5. The Examiner rejected claims 1, 3, 9, and 16-22 as
obvious over de Rook. Final Act. 9; Answer 9.
Appellants argue for the reversal of this obviousness rejection to
claims 3, 9, and 16-22 on the basis of limitations present in independent
claim 1. See Appeal Br. 14.
In rejecting claim 1, the Examiner determined that "[i]t would [have]
be[en] obvious to one of ordinary skill to add the mixing water and
microsphere dispersion together before the other ingredients because de
Rook describes them as ingredients and any order of mixing is obvious
absent unexpected results." Final Act. 10.
Appellants' arguments for reversal of Rejection 5 to claim 1 are
substantially similar to the arguments set forth above urging reversal of
Rejection 3. Compare Appeal Br. 13-14 with id. at 9-11. Namely,
Appellants assert that the Ong Declaration establishes that "the order of
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process steps recited in claim 1 does in fact provide unexpected results." Id.
at 14.
For the reasons set forth above, the Ong Declaration does not include
evidence that is commensurate in scope with claim 1.
In view of the foregoing, we affirm the Examiner's rejection of claim
1 as unpatentable over de Rook. Claims 3, 9, and 16-22 fall with claim 1.
37 C.F.R. § 4I.37(c)(l)(iv). Accordingly, we affirm the Examiner's
Rejection 5.
CONCLUSION
For the reasons set forth above, we reverse the § 112(b) indefiniteness
rejection of claims 21 and 22 of the '250 Application. We affirm the § 103
obviousness rejections of claims 1, 3-9, and 16-22.
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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