Ex Parte Neubauer et al

Patent Trials and Appeals BoardApr 10, 2019

14362954 - (D) (P.T.A.B. Apr. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/362,954 06/05/2014 Joerg Neubauer 21898 7590 04/12/2019 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. 71725-US-PCT 4025 EXAMINER HUFF,MARKF ART UNIT PAPER NUMBER 1737 NOTIFICATION DATE DELIVERY MODE 04/12/2019 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): FFUIMPC@dow.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOERG NEUBAUER and SONJA SCHARLEMANN Appeal2018-003602 Application 14/362,954 1 Technology Center 1700 Before LINDA M. GAUDETTE, WESLEY B. DERRICK, and SHELDON M. McGEE, Administrative Patent Judges. McGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134, Appellant seeks our review of the Examiner's rejection of claims 1 and 3-9. Br. 4. We have jurisdiction. 35 U.S.C. Â§ 6. We affirm-in-part. 1 Appellant is the Applicant, Dow Global Technologies LLC, which is also identified as the real party in interest. Br. 4. Appeal2018-003602 Application 14/362,954 BACKGROUND The subject matter on appeal is directed to a method of preparing a gypsum plaster containing a cellulose ether. Br. 10 (Claims App'x., Claim 1 ). According to the Specification, water soluble cellulose ethers are well- known water retention additives in gypsum mortars. Spec. 1 :31-32. "When cellulose ether particles included in [] gypsum mortars become solubilized upon combination with water, the composition is thickened [and] .... the aqueous phase tends not to wet the gypsum particles uniformly" which can cause agglomeration. Id. at 2:15-18. "Such agglomeration can provide an unsatisfactory finish to the hardened composition, and consequently, once identified, can necessitate removal and intensive reworking of the wet gypsum composition to attempt to remove or reduce such agglomerate structures in the composition." Id. at 2:22-25. The inventive method purports to impart a reduction in agglomeration in a gypsum plaster composition compared to a composition comprising a water soluble cellulose ether in a specified amount. Spec. 3: 18-21. Sole independent claim 1 is illustrative of the appealed subject matter, and is copied below from the Claims Appendix to the Appeal Brief: 1. A method for providing a modified gypsum plaster or filling composition having reduced agglomeration in comparison to a gypsum plaster or filling composition comprising a water soluble cellulose ether in a specified amount X, where the specified amount is from 0.1 to 1.0 weight percent based on the total dry weight of said composition components, said method compnsmg: a) forming a dry mortar comprising gypsum binder; water soluble cellulose ether in an amount of X minus Y; and gelatin in an amount Y, wherein Y is from 0.02X to 0.30X; and b) combining said dry mortar with water to form a modified gypsum plaster or filling composition; 2 Appeal2018-003602 Application 14/362,954 wherein said cellulose ether is an alkylhydroxy- alkylcellulose, a hydroxyalkyl cellulose, or a mixture thereof. Br. 15. STATEMENT OF THE CASE The Examiner rejects claims 1 and 3-9 under 35 U.S.C. Â§ I03(a) as unpatentable over Hohn (US 2005/0241541 Al, published Nov. 3, 2005). Final Act. 2. 2 The Examiner finds, and Appellant does not dispute, that Hohn teaches a composition comprising gypsum binder, cellulose ether, and gelatin in overlapping amounts to the individual components recited in claim 1. Non-Final Act. 2 (citing Hohn, claims 1, 5, 6, and 9). 3 The Examiner determines that, even though "Hohn does not explicitly teach reducing agglomeration," the claimed property of "reduced agglomeration" would have been expected by the skilled artisan because Hohn discloses the same components in overlapping amounts to those claimed. Final Act. 2; Ans. 5- 6. The Examiner also points to Hohn' s disclosure that its plaster mortar 2 The Final Office Action does not include a full statement of the rejection, so our Decision also refers to the fact-findings and determinations set forth in the Non-Final Office Action dated March 4, 2016 ("Non-Final Act."). We observe that the Non-Final Office Action does not contain page numbers, so we refer to such pages chronologically. 3 Although Appellant does not contest this finding, claim 1, and claims 5, 6, and 9 dependent therefrom, are drawn to "a mixture composition" and do not appear to contain gypsum. Rather, Hohn's "mixture composition" is added to "a dry gypsum based plaster formulation." Hohn ,r,r 27-28. Hohn does disclose, however, a gypsum based plaster formulation comprising gypsum, a cellulose ether in an amount of "about 0.01 to 1.0 wt%," and at least one additive, such as gelatin, in an amount of "about 0.0001 to 10%." Id. ,r,r 29, 25. See also id. claims 19, 26, and 29 (identifying gypsum and gelatin as component parts of "[a] gypsum-based dry mortar composition"). 3 Appeal2018-003602 Application 14/362,954 exhibits improved or maintained "water retention, sag resistance, and workability" when compared to plasters "using conventional similar cellulose ethers." Ans. 5 (citing Hohn ,r 13). The Examiner notes that similar properties are present in Appellant's Examples 1 and 2. Id. OPINION Appellant presents arguments only directed to independent claim 1 and dependent claims 5 and 6. Under 37 C.F.R. Â§ 4I.37(c)(l)(iv), we select claim 1 as representative for claims 1, 3, 4, and 7-9 and decide the appeal of the rejection of these claims on the basis of claim 1 alone. We separately consider Appellant's arguments as to claims 5 and 6 pursuant to this rule. Claim 1 Appellant first argues that the rejection is in error because Hohn neither recognizes, nor proposes a solution to, the problem of agglomeration. Br. 6. This argument is unpersuasive because the Examiner determines that the skilled artisan would have understood that the "workability" and "water retention" of a plaster or cement is related to the agglomeration property. Ans. 5-6, 7-8. Significantly, this determination is not contested by Appellant, i.e., no Reply Brief was filed. Therefore, we are unpersuaded by Appellant's argument that Hohn failed to appreciate the agglomeration problem purportedly addressed by Appellant's claimed method. Br. 6. Appellant also avers that selecting the claimed gypsum binder, cellulose ether and gelatin "is far too remote for the ordinary skilled artisan to consider as obvious." Br. 6. Specifically, Appellant avers that "the likelihood of arriving at the combination of the instant claims when judging 4 Appeal2018-003602 Application 14/362,954 each possibility ... is ... 1 in over 105,000 possibilities." Id. at 7. This argument is unpersuasive. First, from our reading of Hohn, Appellant's calculation (Br. 6-7) of over 105,000 possible combinations within Hohn does not appear to be accurate. Specifically, Appellant has not shown persuasively that Hohn's gelatin is "a selection of one additive from a combination of 15 ( families of intended uses) x 3 (groups of additives) x 32 specific additives" listed in paragraphs [0023] - [0025]. Br. 6. In fact, claim 9 of Hohn suggests that the additives listed therein, including gelatin, are specific additives that fall within the broad categories set forth in Hohn' s claim 1. See Hohn, claim 9 ("The mixture composition of claim 1, wherein the at least one additive is selected from the group consisting of ... gelatin[]" (emphasis added)). See also Hohn, claim 29 (listing gelatin as a specific example of "the one or more additives" broadly set forth in claim 26 ( emphasis added)). Indeed, the overlapping nature of Hohn' s disclosure regarding possible "additives" is further evidenced by Hohn' s listing of" organic or inorganic thickening agents" as a class of possible "additive[ s ]" to be included in the mixture composition, and then listing "polysaccharides" as examplary "organic thickening agents." Hohn ,r,r 12, 22. Thus, the class of polysaccharides listed in Hohn's paragraph 24 (i.e., one of Appellant's alleged "3 (groups of additives)") are not mutually exclusive from the alleged "15 (families of intended uses)" as set forth in Appellant's calculation. Br. 6. In other words, "polysaccharides" are a sub-genus of "organic thickening agents," and it is therefore inaccurate to classify the "polysaccharides" listed in paragraph 24 separately from "organic thickening agents" listed in paragraph 22 for purposes of determining the number of possibilities from which the skilled artisan would have selected. Thus, on this record, we are not 5 Appeal2018-003602 Application 14/362,954 persuaded the number of "additive" choices the skilled artisan would have been confronted with is as large as Appellant avers. Furthermore, Hohn teaches that one or more of the disclosed additives is present in a gypsum-based mortar composition that exhibits "water retention, sag-resistance, and workability [that is] comparable or improved as compared to" mortar compositions using conventional cellulose ethers. Hohn ,r 12, claims 1, 19. Thus, the skilled artisan would have recognized gelatin as one of a number of potential additives from which to select when preparing a gypsum-based mortar composition with the properties of "water retention, sag-resistance, and workability." Id. ,r,r 12, 25, claims 9, 29. When, as here, an obviousness rejection is predicated on the selection of one or more components from numerous possible choices, the rejection may be appropriate if the prior art provides direction as to which of many possible choices is likely to be successful. See PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1364 (Fed. Cir. 2007); In re Arkley, 455 F.2d 586, 587-88 (CCP A 1972) (noting that "picking and choosing may be entirely proper in the making of a [35 U.S.C. Â§] 103, obviousness rejection, where the applicant must be afforded an opportunity to rebut with objective evidence any inference of obviousness which may arise from the similarity of the subject matter which he claims to the prior art"). Moreover, the fact that a reference "discloses a multitude of effective combinations does not render any particular formulation less obvious." Merck & Co., Inc. v. Biocraft Labs, 874 F.2d 804, 808 (Fed. Cir. 1989) (citing In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) ( obviousness rejection of claims affirmed in light of prior art teaching that "hydrated zeolites will work" in detergent formulations, even though "the inventors selected the zeolites of the claims from among 'thousands' of compounds")). Under these circumstances, we 6 Appeal2018-003602 Application 14/362,954 cannot agree with Appellant that the selection of the components of claim 1 - i.e., gypsum binder, a water-soluble cellulose ether, and gelatin - "is far too remote for the ordinary artisan to consider as obvious." Br. 6. Finally, we discern no persuasive merit in Appellant's argument regarding the data set forth in the Specification at Tables 1 and 2. Br. 7. At a minimum, this data is unpersuasive of non-obviousness because it is not commensurate in scope with the claims. For example, the claims are open to cellulose ethers that are selected from "alkylhydroxyalkylcellulose, a hydroxyalkyl cellulose, or a mixture thereof' whereas the data in Tables 1 and 2 are limited to just two species of "alkylhydroxyalkylcellulose," i.e., "MHEC" and "MHPC." Spec. 12:9-14:10. Also, Examples 1.2 and 2.2 do not reflect the lowest claimed ratio of gelatin to cellulose ether (i.e., 2%) but instead substitute 5% of the cellulose ether concentration with gelatin. Id. "[O]bjective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support." In re Tiffin, 448 F.2d 791, 792 (CCPA 1971). Furthermore, Appellant has not shown how such results would have been unexpected in view of Hohn's disclosure that specifically lists gelatin in a limited list of additives (Hohn ,r 25) to be included in a gypsum-based mortar composition that has properties ( e.g., "workability") that are undisputedly related to the property recited in claim 1 ("reduced agglomeration"). "Expected beneficial results are evidence of obviousness of a claimed invention." In re Skoner, 517 F.2d 947, 950 (CCPA 1975). For these reasons, and those provided by the Examiner, Appellant has failed to identify reversible error in the Examiner's rejection of claim 1. We, therefore, sustain the rejection of claim 1, as well as claims 3, 4, and 7-9, not separately argued. 7 Appeal2018-003602 Application 14/362,954 Claims 5 and 6 Appellant separately argues claims 5 and 6 (Br. 8) which each recite a specific "median particle diameter" of the cellulose ether of claim 1. Br. 10, 11. The Examiner determines that "control of particle size [is] within the control of one of ordinary skill in the art and can be routinely optimized." Non-Final Act. 2. Appellant argues that Hohn does not disclose the recited particle sizes, and further argues that the Examiner's position regarding routine optimization is unsupported by evidence. Br. 8. We agree with Appellant. A particular parameter must first be recognized as a result effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 620 (CCPA 1977); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable ... is ordinarily within the skill of the art."). Because the Examiner has failed to factually establish that the particle size of the water soluble cellulose ether is a result-effective variable, we reverse the rejection of claims 5 and 6. DECISION The Examiner's decision to reject claims 1, 3, 4, and 7-9 is affirmed. The Examiner's decision to reject claims 5 and 6 is reversed. 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). AFFIRMED-IN-PART 8