Hawley, George C.

Patent Trials and Appeals Board

Jul 17, 2020

14122208 - (D) (P.T.A.B. Jul. 17, 2020)

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.
14/122,208 11/25/2013 George C. Hawley 80189.00100 7573
166539 7590 07/17/2020
Snell & Wilmer (Denver)
400 East Van Buren Street
One Arizona Center
Phoenix, AZ 85004
EXAMINER
SHAH, SAMIR
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
07/17/2020 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):
IPDOCKET@swlaw.com
jjohnson@swlaw.com
ksandoval@swlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE C. HAWLEY

Appeal 2019-005091
Application 14/122,208
Technology Center 1700
Before KAREN M. HASTINGS, BRIAN D. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 8, 10–12, 14, 17, 21, 23, 25–28, 31,
33, 34, 40, and 41.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as American
Selenite, LLC, a subsidiary of Good Earth Minerals LLC. Appeal Br. 2.
2 Appellant withdrew claims 44 and 48. Appeal Br. A-3 (Claims App.).
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CLAIMED SUBJECT MATTER3
Appellant describes the invention as relating to cultured stone
materials using particulate calcium sulfate filler. Spec. 1:11–12. Appellant
describes cultured stone as being the product of powdered minerals being
added as filler to liquid resins (plastics). Id. at 1:15–17. Appellant seeks to
address problems with prior cultured stone materials such as flammability
and environmental issues. Id. at 1:15–3:7. Claim 1 is illustrative:
1. A cultured stone material, comprising from 3 weight
percent to 40 weight percent of a plastic component and at least 60
weight percent particulate calcium sulfate filler, the particulate
calcium sulfate filler having a weight average particle size in a range
of from 1 micron to 3 microns, and wherein:
at least 90 weight percent of the particles of the particulate
calcium sulfate filler are no larger than 10 microns.

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Elcik
Mizuno et al.
(“Mizuno”)
Bruckbauer et al.
(“Bruckbauer”)
US 3,983,290
US 4,284,550

US 5,244,941
Sept. 28, 1976
Aug. 18, 1981

Sept. 14, 1993
Holmes et al.
(“Holmes”)
US 6,235,367 B1 May 22, 2001

3 In this Decision, we refer to the Final Office Action dated March 5, 2018
(“Final Act.”), the Appeal Brief filed January 7, 2019 (“Appeal Br.”), and
the Examiner’s Answer dated April 18, 2019 (“Ans.”).
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REJECTIONS
The Examiner maintains (Ans. 3) the following rejections on appeal:
A. Claims 1, 8, 10–12, 17, 21, 23, 27, 28, 40, and 41 under 35 U.S.C.
§ 103 as obvious over Bruckbauer. Final Act. 2.
B. Claim 14 under 35 U.S.C. § 103 as obvious over Bruckbauer in view
of Mizuno. Id. at 5.
C. Claims 25, 26, 31, and 33 under 35 U.S.C. § 103 as obvious over
Bruckbauer in view of Holmes. Id. at 6.
D. Claim 34 under 35 U.S.C. § 103 as obvious over Bruckbauer in view
of Holmes and Elcik. Id. at 7.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellant argues claims 1, 10, 11, 27, and 28 separately and also
addresses each of the Examiner’s four rejections individually. See Appeal
Br. passim. Therefore, consistent with the provisions of 37 C.F.R.
§ 41.37(c)(1)(iv) (2013), we consider claims 1, 10, 11, 14, 25, 27, 28, and 34
individually. Claims 26, 31, and 33 stand or fall with claim 25 because
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Appellant argues those claims as a group. Appeal Br. 14–15. All other
claims on appeal stand or fall together with the claim they depend from.
Rejection 1, claim 1, obviousness. The Examiner rejects claim 1 as
obvious over Bruckbauer. The Examiner finds that Bruckbauer teaches
cultured stone comprising 10 to 25 weight percent polyester resin (i.e., a
plastic component) and 50 to 80 weight percent calcium sulfate dehydrate as
a particulate filler. Final Act. 2; see also Bruckbauer Abstract. The Examiner
finds that Bruckbauer does not teach the weight average particle size as
claim 1 recites. Final Act. 3. The Examiner, however, finds that, as
Bruckbauer teaches, viscosity of the molding composition and visual
characteristics of the cultured stone can be modified by adjusting the size of
particles. Id.; see also Bruckbauer 5:47–51. The Examiner thus determines
that particle size is a result effective variable and determines it would have
been obvious to modify particle size to reach a desired viscosity and visual
characteristics. Final Act. 3.
Appellant extensively argues that Bruckbauer does not teach claim 1’s
particle size recitations. Appeal Br. 4–12. This argument is unpersuasive
because it does not squarely address the Examiner’s rejection. The Examiner
agrees that Bruckbauer does not explicitly teach claim 1’s particle size
recitations. Final Act. 3. Rather than relying on an explicit teaching of
Bruckbauer, the Examiner determines that particle size is a result effective
variable that would have been obvious to optimize. As explained below,
Appellant’s arguments do not identify error in the Examiner’s result
effective variable rationale.
It has long been held that “where the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
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workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456
(CCPA 1955); see also In re Boesch, 617 F.2d 272, 276 (CCPA 1980)
(“[D]iscovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art.”). Here, Bruckbauer
explicitly teaches that filler particle size impacts viscosity of the molding
composition, visual characteristics of the product, amount of filler that can
be employed, and strength and stain resistance of the product. Bruckbauer
5:47–51. We agree with the Examiner that, based on this teaching, a person
of skill in the art would have known to adjust filler particle size distribution
to discover optimum or workable ranges by routine experimentation. “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 emphasizes that Bruckbauer teaches a filler particle size
profile different than claim 1’s recitations. Appeal Br. 3–11. Appellant,
however, focuses on Bruckheimer’s discussion of filler at columns 5 and 6.
This discussion begins by identifying calcium sulfate dehydrate as one
appropriate filler. Bruckheimer 5:8–14. Bruckheimer explains that it is
generally desirable to maximize loading of the filler because the filler is less
expensive than resin and to achieve fire resistance. Id. at 5:25–29. (We note
that Appellant’s invention is also interested in achieving fire resistance.
Spec. 1:27–2:23; 3:6–7.) Bruckheimer then states that loading is a function
of viscosity of the molding composition (Bruckheimer at 5:29–32) and that
particle size and configuration affects, for example, viscosity, visual
characteristics of the product, and strength (id. at 5:47–51).
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After providing these more general teachings, Bruckheimer then
introduces an example “homogeneous-appearing marble-like product” by
stating “[t]he filler particle size for a homogenous-appearing marble-like
product is usually desired to be a maximum of about 25–30 microns in
length.” Id. at 5:53–55. Bruckheimer then proceeds to further discuss
preferable filler size teachings. Id. at 5:55–6:18; see also Ans. 4
(emphasizing that Bruckbauer’s more narrow particle size discussion relates
to preferred embodiments). Bruckheimer does not suggest that any of the
particular filler sizes it discusses are required for all applications. Rather,
Bruckheimer is clear that filler size has many effects on the end product.
Bruckbauer at 5:47–51. The Examiner, therefore, correctly determined that a
person of skill in the art would have understood, based on Bruckheimer, that
particle size distribution is a result effective variable. Ans. 4–5. Optimization
of a known result effective variable is not sufficient to confer patentability
absent some showing of criticality or unexpected results. See, e.g., In re
Boesch, 617 F.2d at 272. Appellant here makes no such showing.
Because Appellant’s arguments do not identify error in the
Examiner’s rejection, we sustain the Examiner’s rejection of claim 1 and
grouped claims 8, 12, 17, 21, 23, and 41.
Rejection 1, claim 27, obviousness. The second independent claim on
appeal, claim 27, includes recitations similar to claim 1 but also recites,
among other things, that “the calcium sulfate filler has a purity of at least 98
weight percent.” Appeal Br., Claims App. 2. The Examiner finds that
because Bruckbauer does not state that its calcium sulfate dehydrate includes
an impurity, its calcium sulfate dehydrate would be pure. Final Act. 4.
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To the extent Appellant raises the same arguments raised with respect
to claim 1 (Appeal Br. 12), those arguments are unpersuasive for the reasons
explained above.
Appellant also argues that Bruckbauer’s silence regarding impurities
is not adequate to teach pure calcium sulfate. Appeal Br. 12–13. Appellant’s
argument is unpersuasive. By not referring to any impurities as being
desirable or required, Bruckbauer reasonably suggests that there is no need
to introduce impurities. “[A] reference must be considered not only for what
it expressly teaches, but also for what it fairly suggests.” In re Burckel, 592
F.2d 1175, 1179, 201 USPQ 67, 70 (CCPA 1979). Moreover, the Examiner
finds that Appellant’s Specification admits that calcium sulfate dehydrate is
inherently highly pure (Ans. 12), and Appellant does not dispute this
finding.
Because Appellant does not identify error, we sustain the Examiner’s
rejection of claims 27 and 40.
Rejection 1, claim 10, obviousness. Claim 10 further narrows claim 1
according to filler particle size. Appeal Br. Claims App. 1. Appellant argues
that, because of this narrower range, claim 10 is even less obvious than
claim 1. As explained above, however, the evidence supports the Examiner’s
position that filler particle size distribution is a result effective variable and
that it would have been obvious to optimize this variable to achieve desired
results. We sustain the Examiner’s rejection of claim 10.
Rejection 1, claim 11, obviousness. Claim 11 includes a purity
recitation similar to the recitation of claim 27. Appellant argues that this
claim is patentable for the reasons raised with regard to claims 1 and 27.
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Appeal Br. 13. We disagree for the reasons explained above. We sustain this
rejection.
Rejection 1, claim 28, obviousness. Claim 28 depends from claim 27
and recites more narrow criteria for filler particle size. Appellant’s argument
is similar to that of claim 10. Appeal Br. 13–14. The argument is
unpersuasive for the reasons explained above, and we sustain this rejection.
Rejection 2, claim 14, obviousness. The Examiner rejects claim 14 as
obvious over Bruckbauer in view of Mizuno. Final Act. 5. Appellant raises
the same arguments as raised with regard to claim 1. Appeal Br. 14. Those
arguments are unpersuasive for the reasons explained above. We sustain this
rejection.
Rejection 3, claims 25, 26, 31, and 33. The Examiner rejects claims
25, 26, 31, and 33 as obvious over Bruckbauer in view of Holmes. Final Act.
6. Appellant argues these claims as a group, and we therefore focus on claim
25. Claim 25 recites the material according to claim 8 “comprising a
particulate decorative component that is different than the particulate
calcium sulfate filler.”
Appellant raises arguments raised with regard to claims 1 and 27.
Those arguments are unpersuasive for the reasons explained above.
Appellant also argues that Holmes does not identify its materials as
being decorative. Appeal Br. 15. The Examiner, however, finds that the
Holmes materials are the same as those described in the present
Specification (Ans. 9) and determines that a person of skill in the art would
have combined the Holmes materials with Bruckbauer’s composition to
obtain stiffness and rigidity as taught by Holmes (Final Act. 6 (citing
Holmes)). Appellant does not dispute the Examiner’s stated reason to
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combine, and Appellant’s motivation for including the materials does not
control the obviousness analysis. See KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 419–420 (2007) (“In determining whether the subject matter of a
patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls.”). Appellant’s argument is, thus,
unpersuasive.
Because Appellant’s arguments do not identify error, we sustain the
Examiner’s rejection of claims 25, 26, 31, and 33.
Rejection 4, claim 34, obviousness. The Examiner rejects claim 34 as
obvious over Bruckbauer in view of Holmes and Elcik. Final Act. 7. To the
extent Appellant again raises arguments raised with respect to claims 1 and
27 (Appeal Br. 15–16), those arguments are unpersuasive for the reasons we
explain above. To the extent Appellant argues that the Examiner improperly
combines teachings of the three references (id.), this argument is
unpersuasive because Appellant does not dispute the Examiner’s stated
reason why a person of skill in the art would have combined the reference’s
teaching. Final Act. 6–7. We, thus, sustain this rejection.
Objections. The Examiner objects to certain claims based on an
informality. Final Act. 2. Appellant disputes the objection. Appeal Br. 16.
Decisions an examiner makes during examination of a discretionary,
procedural, or nonsubstantive nature not directly connected with the merits
of issues involving rejections are typically reviewable by petition under 37
CFR § 1.181 to the Director, not by appeal. In re Berger, 279 F.3d 975,
984‒85 (Fed. Cir. 2002). Here, we decline to address the Examiner’s
objection because it is of a discretionary, procedural, or nonsubstantive
nature.
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DECISION SUMMARY
In summary:4
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 8, 10, 11,
12, 17, 21,
23, 27, 28,
40, 41
103 Bruckbauer 1, 8, 10,
11,12, 17, 21,
23, 27, 28,
40, 41

14 103 Bruckbauer, Mizuno 14
25, 26, 31,
33
103 Bruckbauer, Holmes 25, 26, 31, 33
34 103 Bruckbauer, Holmes,
Elcik
34
Overall
Outcome
1, 8, 10, 11,
12, 14, 17,
21, 23, 25–
28, 31, 33,
34, 40, 41

TIME PERIOD FOR RESPONSE
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)(1)(iv).

AFFIRMED

4 As explained above, we decline to address the Examiner’s objection.