Ex Parte ONG et alDownload PDFPatent Trials and Appeals BoardJun 24, 201915019294 - (D) (P.T.A.B. Jun. 24, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/019,294 02/09/2016 23575 7590 06/26/2019 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.P75081A 8631 EXAMINER ZEMEL, IRINA SOPJIA ART UNIT PAPER NUMBER 1765 NOTIFICATION DATE DELIVERY MODE 06/26/2019 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, JAMES C. SMITH, RAYMOND PETE and RICK PAPONETTI Appeal2018-007674 Application 15/019,294 Technology Center 1700 Before MICHAEL P. COLAIANNI, JEFFREY R. ROBERTSON, and GRACE KARAFFA OBERMANN, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal2018-007674 Application 15/019,294 Appellants 1 appeal under 35 U.S.C. § 134 the final rejection of claims 1-20. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ). We AFFIRM. Appellants' invention is directed to a cementitious admixture comprising polymeric microspheres and superabsorbent polymer (SAP) which provides adequate resistance to freeze-thaw damage and/or scaling damage. (Spec. 3 :2-30; 4: 1-2; claim 1 ). Claim 1 is illustrative of the subject matter on appeal: 1. A freeze-thaw damage resistance and scaling damage resistance admixture for a cementitious composition comprising an aqueous slurry comprising a water insoluble superabsorbent polymer and unexpanded, expandable polymeric microspheres, wherein the unexpanded, expandable polymeric microspheres are expanded prior to incorporation into the cementitious composition, resulting in expanded polymeric microspheres, and wherein the expanded polymeric microspheres have an average diameter of from about 24 µm to about 900 µm. Appellants appeal the following rejections: 1. Claims 1-13 are rejected under 35 U.S.C. § 103 as unpatentable over Vickers (US 2005/0284340 Al, published Dec. 29, 2005) in view of Jensen (Ole Mejlhede Jensen et al., Water-entrained cement-based materials II. Experimental observations, 32 CEMENT AND CONCRETE RESEARCH 973-978 (2002)). 2. Claims 1-20 are rejected under 35 U.S.C. § 103 as unpatentable over de Rook (US 4,057,526, issued Nov. 8, 1977) in view of Jensen. 1 The Appeal Brief on page 3 identifies "Construction Research & Technology GmbH" as the real party in interest. 2 Appeal2018-007674 Application 15/019,294 FINDINGS OF FACT & ANALYSIS Rejection (1) The Examiner's findings and conclusions regarding Vickers and Jensen are located on pages 6 to 9 of the Non-Final Action dated August 8, 20172. Appellants argue Vickers discloses that unexpanded or expanded microspheres may be used, but Vickers insists that the size of either of these types of microspheres must be less than 10 µm ( Appeal Br. 7). Appellants argue that Vickers' disclosure of expanded micro spheres is constrained by the teaching that the particle size is less than 10 µm (Appeal Br. 7). Appellants contend that Vickers exemplifies particles sizes of 0.4 µm, 1 µm and 5 µm, which Appellants contend further supports that the maximum microsphere particle size is less than 10 µm (Appeal Br. 8). We agree. The Examiner finds that the microsphere particle size in claim 1 is limited to the expanded particle size range (Non Final Act. 7; Ans. 8-9). The Examiner finds that the unexpanded polymeric micro spheres of 10 µm or less in diameter are inherently capable of being expanded several folds to meet the claim limitation of expanded microspheres (Ans. 9). We find that the preponderance of the evidence favors Appellants' argument of nonobviousness. Although the Examiner finds that Vickers' 2 The Examiner refers in the Final Action to the Non-Final Action dated August 8, 2018 for a full statement of the rejections (Final Act. 4) ("The rejection stand as per reasons of record."). Accordingly, we cite to the Non- Final Action for the Examiner's finding and conclusions regarding the applied prior art. 3 Appeal2018-007674 Application 15/019,294 microspheres are inherently capable of expanding to a size within the claimed range (i.e., 20 to 90 µm), the Examiner has not established that Vickers' microspheres are in fact capable of expanding to that size. As pointed out by Appellants, Vickers teaches to use very small (i.e., less than 10 µm) liquid filled (unexpanded) polymeric microspheres (i116). Vickers further teaches that the average sphere size of a diameter of less than 10 µm can produce favorable results with higher microsphere survivability after mixing than when larger microspheres are used (i1 21 ). Vickers teaches that the smaller the diameter of the polymeric microspheres, the less is required to achieve the desired spacing factor to improve freeze-thaw performance (i123). Vickers' disclosures all point to using a microsphere size below 10 µm. Moreover, the Examiner has not explained why it would have been obvious to ignore Vickers' disclosure and use microspheres sizes within the range of 20 to 90 µmas required by the claim. On this record, we reverse the Examiner's § 103 rejection of claims 1- 13 over Vickers and Jensen. Rejection (2) Appellants argue the subject matter common to independent claims 1 and 14 (App. Br. 9-11). We select claim 1 as representative. 37 CPR§ 4I.37(c)(l)(iv). Any claims not argued separately will stand or fall with our analysis of the rejection of claim 1. The Examiner's findings and conclusions regarding de Rook and Jensen are located on pages 9 to 12 of the Non Final Action. Appellants argue that Jensen teaches using superabsorbent polymers (SAP) with concrete, but Jensen does not teach to use polymeric 4 Appeal2018-007674 Application 15/019,294 microspheres with the SAP (Appeal Br. 10). Appellants' argument attacks the references individually instead of addressing what the combined teachings of de Rook and Jensen would have suggested to the ordinarily skilled artisan. Indeed, the Examiner finds that de Rook teaches using polymeric microspheres to aid the frost performance of cementitious compositions (Non Final Act. 9-10; de Rook col. 1, 11. 53-59). The Examiner finds that Jensen teaches using SAP in cementitious compositions to improve properties thereof (Non-Final Act. 10). The Examiner concludes that it would have been obvious to add Jensen's SAP to de Rook's cement composition to improve the properties of the resulting compositions (Non Final Act. 10). Appellants have not shown reversible error in the Examiner's prima facie case of obviousness. Appellants contend that the Specification establishes unexpected results (Appeal Br. 9). Appellants argue that the Specification discloses that the water insoluble SAP captures free water in the cementitious composition and reduces bleeding thereby increasing scaling damage resistance (Appeal Br. 9). Appellants argue that the Specification discloses that water insoluble SAP polymers stabilize aqueous slurries comprising expandable polymeric particles (Appeal Br. 9). Appellants contend that these properties disclosed on page 7, lines 15-18 and page 9, lines 8-1 7 of the Specification establish unexpected results in using the SAP for scaling damage resistance and admixture stabilization (Appeal Br. 9-10). Although Appellants refer to statements in the Specification, they do not explain how the evidence cited in tabular form on page 9 of the Specification established unexpected results. Cf Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (BP AI 1992) ("Appellants have the burden of 5 Appeal2018-007674 Application 15/019,294 explaining the data in any declaration they proffer as evidence of non- obviousness. "). The Examiner correctly finds that, although Appellants' Specification includes statements as to the benefits of the using the SAP and microspheres in the cement composition, Appellants have not discussed in any meaningful way the evidence on page 9 of the Specification (Ans. 13). Contrary to Appellants' arguments, Jensen teaches that by adding SAP to a cementitious composition the amount of free water is reduced and, thereby, reduces self-desiccation shrinkage of the hardening concrete (Jensen 973; "Introduction"). In other words, Jensen teaches that by adding SAP more water is maintained in the concrete during curing. The same water retention is achieved by using the SAP in Appellants' invention where bleeding of the free water is prevented to the surface (i.e., water is retained in the concrete). Similarly, de Rook discloses that using microspheres in the cementitious composition enhances frost resistance of the cement ( co 1. 3, 11. 65-68). Therefore, it appears that Appellants' results simply achieve what de Rook and Jensen each individually achieves. In other words, it does not appear that the results are necessarily unexpected. Nevertheless, the Examiner is correct that the evidence in the table on page 9 of the Specification is not commensurate in scope with claim 1 where no limits are placed on the amount of superabsorbent polymer (SAP) or microspheres in the cementitious composition (Ans. 11-12). Claim 1 is very broad and the evidence in the table on page 9 of the Specification is not commensurate in scope with the claim. Therefore, Appellants have not established unexpected results. On this record, we affirm the Examiner's rejection of claims 1-20 over de Rook in view of Jensen. 6 Appeal2018-007674 Application 15/019,294 DECISION The Examiner's decision is affirmed. 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)(l )(iv). ORDER AFFIRMED 7 Copy with citationCopy as parenthetical citation