James Welshimer et al.

Patent Trials and Appeals Board

Jul 31, 2019

15229183 - (D) (P.T.A.B. Jul. 31, 2019)

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.
15/229,183 08/05/2016 James Welshimer 1-24183 5848
1678 7590 07/31/2019
MARSHALL & MELHORN, LLC
FOUR SEAGATE - EIGHTH FLOOR
TOLEDO, OH 43604
EXAMINER
FUBARA, BLESSING M
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
07/31/2019 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JAMES WELSHIMER and JEFFREY WIGDAHL1
__________

Appeal 2019-002319
Application 15/229,183
Technology Center 1600
__________

Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
DAVID COTTA, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a granular
substrate, which have been rejected for anticipation, obviousness, and
obviousness-type double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
STATEMENT OF THE CASE
The Specification discloses “granular materials used as carriers for
pesticides, soil amendments, and as animal bedding (e.g. cat litter).” Spec.

1 Appellants identify the Real Party in Interest as The National Lime and
Stone Company. Appeal Br. 3.
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1:5–6. “[E]ach granule [is] a mixture including an inert mineral component,
a mineral cement, and optionally a light weight additive.” Id. at 2:10–12.
The inert mineral component can be dolomite or limestone. Id. at
4:13–14. The mineral cement can be Portland cement. Id. at 5:6. The light
weight additive can be perlite or cellulose. Id. at 6:1–2.
Claims 1–9, 11, 12, 14–19, and 21–26 are on appeal. Claim 1 is
illustrative and reads as follows:
1. A granular substrate comprised of a plurality of granules,
each granule being comprised of a mixture comprising an inert
mineral component, a mineral cement, and a light weight
additive to reduce the bulk density of each granule, the mixture
comprising 15% to 42% mineral cement, and wherein each
granule is non-dispersible in water.

Claims 18 and 26 are the other independent claims. Claim 26 is
identical to claim 1 except that it requires “30% to 42% mineral cement.”
Claim 18 is directed to a method of making a granular substrate having the
limitations recited in claim 1.
The claims stand rejected as follows:
Claims 1–4, 6, 7, 9, 17, and 26 under 35 U.S.C. § 102(a)(1) as
anticipated by Zember2 (Ans. 3);
Claims 1 and 8 under 35 U.S.C. § 103 as obvious based on Zember
(Ans. 8);

2US 2013/0289168 A1, pub. Oct. 31, 2013.
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Claims 1–9, 11, 12, 14–19, and 21–26 under 35 U.S.C. § 103 as
obvious based on either Welshimer ’1383 or Welshimer ’660,4 combined
with Forseen5 and Clavaud6 (Ans. 5); and
Claims 1–9, 11, 12, 14–19, and 21–26 for obviousness-type double
patenting based on claims 1–18 of Welshimer ’138 and claims 1–19 of
Welshimer ’660, both combined with Forseen (Ans. 10).
I
The Examiner has rejected claims 1–4, 6, 7, 9, 17, and 26 as
anticipated by Zember, and rejected claims 1 and 8 as obvious based on
Zember. The same issue is dispositive for both rejections.
The Examiner finds that Zember discloses a particle or aggregate that
comprises Portland cement, dolomite or limestone, and perlite, and therefore
“teaches all the elements of claims 1–4, 6, 7, 9, 17 and 26.” Ans. 4.
Appellants argue that “Zember lacks any suggestion that the dry
mixture referenced therein be pelletized or otherwise formed into granules.
Instead, Zember teaches that the ‘dry mixtures and water are stirred together
onsite, preferably using a drill motor, to a “self”-leveling consistency. . . .’”
Appeal Br. 5. “Zember thus fails to teach or suggest a plurality of granules,
each granule being comprised of a mixture comprising an inert mineral
component, a mineral cement, and a light weight additive.” Id. at 6.

3 US 6,613,138 B2, iss. Sept. 2, 2003.
4 US 6,231,660 B1, May 15, 2001.
5 US 4,011,061, iss. Mar. 8, 1977.
6 US 6,080,234, iss. June 27, 2000.
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We agree with Appellants that Zember does not support a finding of
anticipation. Zember discloses a “cementitious sloping material” for use in
roofing. Zember ¶ 1. “The sloping compound . . . comprises a dry mixture of
aggregate, cement and a redispersible dry polymer that is mixed with water
to a self-leveling consistency, enabling the resultant compound to be readily
screeded into place in a desired thickness/slope.” Id. ¶ 3.
The aggregate in Zember’s composition is dolomite or limestone, and
the cement is preferably Ordinary Portland Cement. Id. ¶ 4. The dry polymer
in Zember’s composition is irrelevant to the instant claims, but Zember
discloses a light weight embodiment that includes “light weight fillers
compris[ing] perlite and low density . . . glass granules.” Id. ¶ 6.
Thus, the light weight embodiment of Zember’s composition
comprises all of the components recited in claim 1 but, as Appellants point
out, Zember does not disclose that those components are granulated or
pelletized or otherwise made into granules so that “each granule [is]
comprised of” those components, as required by the instant claims. Rather,
Zember discloses that “[a]ll of the ingredients are typically added together in
a batch mix, blended,” sampled for quality control, and bagged. Id. ¶ 9.
Zember therefore does not disclose a “granular substrate” in which “each
granule” comprises the claimed ingredients.
The Examiner responds that a reference of record by “America’s
Cement Manufacturers describe[s] aggregates as granular materials,” and
therefore “Zember teaches granules because as per the disclosure of
America’s Cement Manufacture[r]s, aggregates are granules.” Ans. 12.
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However, we agree with Appellants that, “[w]hile one might say that
the Portland cement or dolomite/limestone of Zember are each individually
in the form of ‘granules,’ Zember still clearly does not suggest the existence
of any granules comprised of a mixture comprising an inert mineral
component, a mineral cement, and a light weight additive, as claimed.”
Appeal Br. 6.
We therefore reverse the rejection of claims under 35 U.S.C.
§ 102(a)(1) over Zember. The rejection of claims 1 and 8 under 35 U.S.C.
§ 103 based on Zember relies on the Examiner’s finding that Zember
anticipates claim 1; we therefore reverse the § 103 rejection based on
Zember for the reasons discussed above.
II
The Examiner has rejected all of the claims on appeal as obvious
based on either Welshimer ’138 or Welshimer ’660, combined with Forseen
and Clavaud. The Examiner finds that both Welshimer patents include the
same relevant disclosure, and cites only to Welshimer ’138. Ans. 5. We will
do the same.
The Examiner finds that “Welshimer discloses granular substrate
comprising one or more mineral components . . . [and] light weight
additive.” Id. “[T]he mineral component is selected from limestone and
dolomite and gypsum; the light weight additive is one or more compounds
selected from hydrated lime, wheat flour, wood flour, wheat straw, cellulose
and soy flour.” Id. “The composition also contains binder . . . [and] is used
as carrier for Herbicide or plant growth regulator or insecticide or
fungicide.” Id.
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The Examiner finds that “the composition in Welshimer does not
contain mineral cement.” Id. However, the Examiner finds that Forseen
discloses that “granulate composition containing clays such as bentonite and
kaolin clay; cements such as plaster of Paris, Portland Cement and colloidal
magnesium silicate have been used as carrier for fertilizers, herbicides,
pesticides, plant growth regulators.” Id. at 5–6.
The Examiner concludes that the “compositions of Welshimer and
Forseen have been used as carrier for Herbicide or plant growth regulator or
insecticide or fungicide. Therefore, the composition of Welshimer and
Forseen could be combined to form a third composition that would be used
. . . for the same purpose.” Id. at 6 (citing In re Kerkhoven, 626 F.2d 846
(CCPA 1980)).
Therefore, for claims 1 and 26, the composition of Welshimer
modified by combining with the composition of Forseen and
comprising inert mineral component such as limestone and
dolomite and gypsum, binder, lightweight additives such as
hydrated lime, wheat flour, wood flour, wheat straw, cellulose
and soy flour and mineral cement such as Portland cement and
gypsum renders the composition prima facie obvious.
Id. The Examiner cites Clavaud as evidence that using 3–20% Portland
cement as a binder is known. Id.
Appellants argue that the “articles of Forseen ‘comprise agglomerate
particles comprising an organophobic water-soluble nucleus particle
surrounded by smaller, clinging organophilic particles,’” and bound together
with an organic binder. Appeal Br. 7–8. “Forseen teaches only that the
organophilic particles themselves could be formed of Portland cement . . . ,
but there is no suggestion in Forseen of the formation of granules comprised
of a mixture of a mineral cement and other components. . . . Thus, the
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organophilic particles of Forseen are discrete particles and do not act as a
binder.” Id. at 8
We agree with Appellants that the Examiner has not persuasively
shown that a granular substrate meeting the limitations of claim 1 would
have been obvious based on the cited references. “In rejecting claims under
35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima
facie case of obviousness.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir.
1993).
Welshimer discloses a “manufactured granular substrate composition
that is suitable for use as a carrier for active chemical agents . . . [and]
includes one or more mineral components, one or more light weight
additives, and one or more binders.” Welshimer ’138 2:43–49. The mineral
component can be dolomite or limestone, and the light weight additive can
be wood flour or cellulose. Id. at 2:50–55. Welshimer states that “[t]he
binder may preferably be one or more materials selected from the group
consisting of brewers condensed solubles, lignosulfonate,” etc. but does not
suggest including a mineral cement in its composition. Id. at 2:55–62.
Forseen discloses “agglomerate particles each comprising
organophobic, water-soluble nucleus paritcles [sic] surrounded by a
discontinuous layer of organophilic wetting agent comprising organophilic
particles clinging to . . . the organophobic nucleus particles.” Forseen 2:7–
12. Forseen discloses that materials suitable for use as organophilic particles
include “cement compositions, such as plaster of Paris and Portland
cement.” Id. at 5:5–6; see also id. at 4:40–68.
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“The agglomerate particles are coated and maintained as a solid,
coherent mass by a water-permeable matrix of water-insoluble binder which
is preferably a film-forming organic resin binder.” Id. at 2:14–17. Suitable
binders include film-forming polyethylene resins. Id. at 5:61; see also id. at
5:32 to 6:5.
The Examiner has not adequately explained why a person of ordinary
skill in the art would have found a reason to include Portland cement in
Welshimer’s particles, based on Forseen’s disclosure that it is suitable for
use as an organophilic wetting agent that will cling to organophobic nucleus
particles. As Appellants have pointed out in the Appeal Brief on page 8,
Forseen suggests organic, film-forming resins, not Portland cement, as a
binder. Thus, even if a skilled artisan “would look to Forseen to alter the
binder of Welshimer [], . . . they would look to the organic film-forming
resins taught by Forseen as the binder, rather than to the Portland cement
utilized in Forseen for a completely unrelated purpose.” Id.
The Examiner cites Clavaud as disclosing that “Portland cement has
been known to be used in amounts of 3–20% hydraulic binder.” Ans. 6.
Similarly, in responding to Appellants’ arguments, the Examiner cites
Scranton7 as evidence that “Portland cement, kaolin, starch, bentonite and
lignosulfonate are all binders.” Id. at 14.
However, as Appellants point out, “Clavaud relates to concrete
compositions” in which Portland cement is used as a binder for the overall

7 Scranton, Jr. et al., US 7,563,424 B2, issued July 21, 2009. Scranton was
not cited in the statement of the rejection but we have considered the
disclosure that was cited by the Examiner.
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composition, rather than being a component of the granules in a granular
substrate. Appeal Br. 10–11. And “Scranton ‘relates to a compressed metal
oxide composition particle comprised of metal oxide and an organic binder,
with the binder preferably being a water insoluble cellulose composition.’
Scranton’s only mention of Portland cement is a passing reference to a prior
art patent.” Id. at 10 (quoting Scranton, abstract). The Examiner has not
adequately explained why the disclosure of either Clavaud or Scranton
would have led a skilled artisan to substitute Portland cement for the binders
expressly suggested by Welshimer.
As to the Examiner’s reasoning that it would have been obvious to
combine the separate compositions of Welshimer and Forseen to form a
third composition, the Examiner has conceded that Welshimer’s granules do
not contain a mineral cement (Ans. 5), and the Examiner has not pointed to
any disclosure in Forseen that its particles contain an inert mineral or a light
weight additive. Thus, even if the compositions of Welshimer and Forseen
were combined, the evidence does not show that the resulting composition
would include “a plurality of granules, each granule being comprised of” the
three components recited in the instant claims.
III
The Examiner has rejected all of the claims on appeal for
obviousness-type double patenting based on the claims of the Welshimer
patents, combined with Forseen. This rejection relies on the same rationale
as the rejection under 35 U.S.C. § 103. See Ans. 10–11. We therefore
reverse the rejection for obviousness-type double patenting for the same
reasons discussed above with regard to obviousness.
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SUMMARY
We reverse all of the rejections on appeal.

REVERSED