Ex Parte JOHNSON

Patent Trials and Appeals BoardJan 31, 2019

14549303 - (D) (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/549,303 11/20/2014 28827 7590 02/04/2019 GABLE & GOTW ALS 100 WEST FIFTH STREET, 10TH FLOOR TULSA, OK 74103 FIRST NAMED INVENTOR WILLIAM L. JOHNSON SR. 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. 47410/14-291 3977 EXAMINER BOYLE, KARA BRADY ART UNIT PAPER NUMBER 1766 NOTIFICATION DATE DELIVERY MODE 02/04/2019 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): iplaw@gablelaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM L. JOHNSON SR. Appeal2018-002451 Application 14/549,303 Technology Center 1700 Before LINDA M. GAUDETTE, GEORGIANNA W. BRADEN, and JANEE. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests our review under 35 U.S.C. Â§ 134(a) of the Examiner's decision to finally reject claims 63-70, 72, 74, 75, and 78-872. We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 Appellant is the applicant, Ecopuro, LLC. Application Data Sheet filed November 20, 2014. According to the Appeal Brief, the real parties in interest are the sole inventor, William L. Johnson, Sr., and Ecopuro, LLC. Appeal Brief filed September 6, 2017 ("App. Br."), 2. 2 Final Office Action entered December 8, 2016 ("Final Act."). Appeal2018-002451 Application 14/549,303 STATEMENT OF THE CASE Appellant's invention is generally directed to composition for promoting kinetic mixing of additives within a non-linear viscosity zone of a fluid, such as a thermoplastic material. Spec. ,r 2. Sole independent claim 63 illustrates the subject matter on appeal and is reproduced below with emphases added to highlight contested subject matter: 63. A composition comprising a fluid having a boundary layer; particles in said boundary layer of said fluid, said particles having a sharp conchoidal swface and a complex three-dimensional surface area, said particles having a 2.5 Mohs scale hardness or greater and having a size from nano to micron; wherein said particles comprise from 0.5 wt% to 8 wt% of the composition. App. Br. 17 (Claims Appendix) (emphasis added). The Examiner maintains the rejection of claims 63-70, 72, 74, 75, and 78-87 under 35 U.S.C. Â§ 103(a) as unpatentable over Good3 in view of Palm4 in the Examiner's Answer entered November 3, 2017 ("Ans.") 5. 3 Good et al. (US 5,948,845, issued September 7, 1999). 4 Palm et al. (US 6,464, 770 B 1, issued October 15, 2002). 5 Although Appellant argues in the Reply Brief that the Examiner introduces a new ground of rejection in the Answer (Reply Br. 3), we do not address this issue because it is reviewable by petition under 37 C.F.R. Â§ 1.181 and, therefore, not within the jurisdiction of the Board. Ex Parte Frye, 94 USPQ2d 1072, 1078 (BPAI 2010) (precedential). 2 Appeal2018-002451 Application 14/549,303 DISCUSSION Upon consideration of the evidence relied upon in this appeal and each of Appellant's timely contentions 6, we affirm the Examiner's rejection of claims 63-70, 72, 74, 75, and 78-87 under 35 U.S.C. Â§ 103(a) for the reasons set forth in the Final Office Action, the Answer, and below. Appellant argues claims 63-70, 72, 74, 75, and 78-87 together on the basis of claim 63, to which we accordingly limit our discussion. App. Br. 6- 15; 37 C.F.R. Â§ 4I.37(c)(l)(iv). Good discloses an organic solvent-based insulative paint comprising a perlitic insulative agent. Col. 2, 11. 15-19, 34. Good discloses that the perlitic insulative agent is preferably an expanded perlitic material, such as, "[f]or example ... expanded perlite." Col. 4, 11. 46-51. Good discloses that "[p]referably, 1-2 10 micron-sized expanded perlite (CERAMIC SIL 42-18) is used," and Good exemplifies preparation of a solvent-based insulative paint that includes this material. Col. 6, 11. 27-31; col. 7, 11. 5-57. The Examiner finds that Good "does not expressly recite that the expanded perlite particles have a sharp conchoidal surface and a complex three-dimensional surface area," and the Examiner relies on Palm for suggesting this feature. Ans. 4--6. 6 We do not consider the arguments and evidence (http://www.engineeringtoolbox.com/ thermal- conductivity-d _ 429 .html) that Appellant presents pages 5-6 of the Reply Brief because Appellant does not show good cause for raising these arguments for the first time in the Reply Brief. 37 C.F.R. Â§ 4I.37(c)(l)(iv); 37 C.F.R. Â§ 41.41(b)(2) (arguments raised for the first time in the Reply Brief that could have been raised in the Appeal Brief will not be considered by the Board unless good cause is shown). 3 Appeal2018-002451 Application 14/549,303 Palm discloses "[ a ]n expanded perlite product having a controlled particle size distribution" that "retains the intricate cellular structure unique to perlite, as shown in FIG. 1," and is prepared by "milling and classifying expanded perlite." Col. 5, 11. 36-37; col. 8, 11. 19--21; col. 8, 11. 27-32. Appellant does not dispute the Examiner's finding that Figure 1 of Palm shows "fractured milled perlite particles [that] have smooth, sharp, blade- like conchoidal edges." Compare Ans. 4, with App. Br. 6-15. Palm's "SUMMARY OF THE INVENTION" indicates that "provided are ... insulating materials ... comprising the expanded perlite product." Col. 5, 1. 66-col. 6, 1. 1. Palm further discloses that "the expanded perlite products disclosed herein may be used as insulating fillers." Col. 8, 11. 1-2. Palm discloses that the expanded perlite product of Palm's invention is useful "in paint filler applications" and "has superior top size control, offering the advantage of comparatively smooth-surfaced paint and coating films, and smoothness in related applications." Col. 18, 11. 56-59; col. 19, 11. 1-5. In view of these disclosures in Good and Palm, the Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention to use the fractured expanded perlite of Palm, which is milled and has smooth, sharp, blade-like conchoidal surfaces, as the expanded perlite in Good's insulative paint "to control particle size distribution and create superior top size control, which offers the advantage of producing a more smooth surfaced paint and coating film." Ans. 5. Appellant argues that "a core feature of Good's insulative paint is expanded 'hollow' perlite and the proposed combination with Palm would eliminate that core feature." App. Br. 7. Appellant argues that Good describes an exemplary perlitic insulative agent, CERAMIC SIL 42-18, 4 Appeal2018-002451 Application 14/549,303 which Appellant argues is hollow glass microspheres, as indicated in a web page cited by Appellant. App. Br. 8 (citing http://revchem.com/2012/l l/05/silcell-42-1 8-34lb-bag/). Appellant argues that Good's example describes adding this material to a batch in increments at a rate such that the expanded perlite goes into the batch and does not float on the surface, which Appellant argues demonstrates that "Good's expanded perlite are 'floaters."' App. Br. 8; Reply Br. 7. As discussed above, Good discloses an organic solvent-based insulative paint that comprises a perlitic insulative agent, which Good discloses is preferably expanded perlite, such as CERAMIC SIL 42-18. As also discussed above, Good exemplifies use of this expanded perlite material in the production of insulative paint. The web site relied upon by Appellant to show that CERAMIC SIL 42-18 is hollow glass microspheres is not of record, and we therefore do not consider it. 37 C.F.R. Â§ 4I.33(d)(2). Nonetheless, even if CERAMIC SIL 42-18 does constitute hollow glass microspheres as Appellant asserts, we find no disclosure in Good indicating that this material, or any type of hollow glass micro sphere, must be used as the expanded perlite in Good's insulative paint, and Appellant does not direct us to any such disclosure. Rather, Good broadly discloses that the insulative paint of Good's invention includes a perlitic insulative agent, and indicates that use of expanded perlite, such as CERAMIC SIL 42-18, is only a preference. Thus, on this appeal record, we find insufficient evidence to demonstrate that a "core feature" of Good's insulative paint is expanded "hollow" perlite, and, accordingly, the Examiner's proposed combination of 5 Appeal2018-002451 Application 14/549,303 Good and Palm would not eliminate a "core feature" of Good's invention as Appellant argues. Appellant argues Palm teaches that the improved perlite product of Palm's invention reduces floater content and preferably has a floater content of less than 10 percent by volume. App. Br. 10. Appellant argues that "Palm expressly teaches away from 'floaters', i.e., Palm teaches away from the expanded perlite of Good." App. Br. 8. Although Palm does disclose that the expanded perlite product of Palm's invention has a floater content of less than 10 percent by volume (col. 5, 11. 49-50), as discussed above, we find insufficient evidence on this appeal record to establish that Good requires the use of hollow microspheres as the perlitic insulative agent in Good's insulative paint. Rather, as discussed above, Good broadly discloses that the insulative agent included in Good's paint is a perlitic insulative agent, and is preferably expanded perlite. In view of Palm's explicit disclosure that the expanded perlite product of Palm's invention "may be used as insulating fillers," and may be used "in paint filler applications," we find that one of ordinary skill in the art would have been led to use Palm's expanded perlite product as the perlitic insulative agent in Good's insulative paint, with a reasonable expectation of successfully producing a paint having "superior top size control, offering the advantage of comparatively smooth-surfaced paint" as disclosed in Palm (discussed above). App. Br. 13; Palm col. 18, 1. 56; col. 19, 11. 3--4. Contrary to Appellant's argument, Palm thus does not "teach[] away from the expanded perlite of Good." App. Br. 8. Appellant argues that Good's expanded perlite is necessarily expanded, but not milled or fractured, and it therefore would not have been 6 Appeal2018-002451 Application 14/549,303 obvious to use Palm's milled, sharp, blade-like, fractured, expanded perlite in Good's paint to provide thermal resistance 7. App. Br. 10. Appellant argues that "Good's lack of an explicit negative teaching re[garding] fracturing or milling is only because Good thoroughly and consistently teaches the opposite, i.e., Good teaches an expanded perlitic material capable of functioning as an insulator." App. Br. 12. Appellant argues that "Palm does not teach that his 'improved perlite product' or milled/crushed perlite classified by size is suitable for use as an insulator." App. Br. 13-15. Appellant argues that although Palm discusses "expanded perlite products" and their use as insulating materials, this discussion does not refer to the milled perlite of Palm's invention. App. Br. 14--15. Appellant argues that "it is [therefore] not proper to combine the teachings of Good, which requires expanded insulative perlite, with the teachings of Palm, which requires milled or crushed improved perlite product with controlled particle size distribution." App. Br. 15. Although Palm does include background discussion of conventional "expanded perlite products," as discussed above, the "SUMMARY OF THE INVENTION" section of Palm explicitly indicates that "provided are ... insulating materials ... comprising the expanded perlite product" of Palm's invention. Compare col. 5, 11. 1-34, with col. 5, 1. 66-col. 6, 1. 1. Palm further explicitly discloses that "the expanded perlite products disclosed 7 Although Appellant cites https://perlite.orgllibrary-perliteinfo/general- info/Why_Perlite_ Works.pdf "[f]or further explanation of the different forms ofperlite and their respective uses" (App. Br. 10--11), we do not consider the information presented in this web site because it is not of record in the present application. 37 C.F.R. Â§ 4I.33(d)(2). 7 Appeal2018-002451 Application 14/549,303 herein may be used as insulating fillers." Col. 8, 11. 1-2. Contrary to Appellant's arguments, one of ordinary skill in the art would have understood from these disclosures that the expanded perlite product of Palm's invention functions as an insulating agent. Accordingly, regardless of whether the expanded perlite disclosed in Good is "not milled or fractured," one of ordinary skill in the art reasonably would have expected that the expanded perlite product of Palm's invention could be successfully used as the perlitic insulative agent in Good's paint. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (emphasis omitted) (citing In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) ("[O]bviousness does not require absolute predictability of success ... all that is required is a reasonable expectation of success."). Accordingly, considering the totality of the evidence relied upon in this appeal, a preponderance of the evidence weighs in favor of the Examiner's conclusion of obviousness. We accordingly sustain the Examiner's rejection of claims 63-70, 72, 74, 75, and 78-87 under 35 U.S.C. Â§ 103(a). DECISION We affirm the Examiner's rejection of claims 63-70, 72, 74, 75, and 78-87 under 35 U.S.C. Â§ 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8