Ex Parte Sabio et alDownload PDFPatent Trial and Appeal BoardJan 25, 201713642263 (P.T.A.B. Jan. 25, 2017) Copy Citation 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. 13/642,263 10/25/2012 Serge Sabio 035112-0418473 4391 909 7590 Pillsbury Winthrop Shaw Pittman, LLP PO Box 10500 McLean, VA 22102 EXAMINER USELDING, JOHN E ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 01/27/2017 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_ip@pillsburylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SERGE SABIO, XIAOLIN PARDAL, and CHRISTINE CHAUMILLIAT Appeal 2016-001204 Application 13/642,263 Technology Center 1700 Before CHUNG K. PAK, JEFFREY T. SMITH, and WESLEY B. DERRICK, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1 through 5, 7, 9 through 11,13 through 16, and 18.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the Real Party in Interest as LAFARGE. (Appeal Brief filed May 18, 2015 (“App. Br”), 2.) 2 Final Office Action entered December 5, 2014 (“Final Act.”). Appeal 2016-001204 Application 13/642,263 STATEMENT OF THE CASE The subject matter on appeal is generally directed to a rapid hydraulic binder that comprises, inter alia, a first superplasticizer and a second superplasticizer that has a delayed plasticizing effect in comparison with the first superplasticizer. (Spec. 2,11. 6—16.) The second superplasticizer is a poly(alkylene oxide) polycarboxylate and comprises a monomer selected from acrylamide and its derivatives, acrylonitrile and its derivatives, alkyl acrylates, hydroxyalkyl acrylates, polyethylene glycol acrylates, copolymerizable carboxylic anhydrides, and copolymerizable imides. (Spec. 9,11. 21-28; 9,1. 36-10,1. 3.) RheoTEC™ Z-60 is the only second superplasticizer exemplified in Appellants’ Specification. (Spec. 15,1. 9; 17, 1. 34; 18,11. 25-26; 19,1. 18; 20,1. 17; 21,1. 12; 22,1. 1.) Details of the appealed subject matter are recited in representative claim 1, which is reproduced below from the Claims Appendix to the Appeal Brief: 1. A rapid hydraulic binder, comprising: from 99.5 to 90% by mass of cement, with respect to the mass of the hydraulic binder; from 0.5 to 10% by mass with respect to the mass of the hydraulic binder, of the combination of the following components: a setting and hardening accelerator comprising calcium silicate hydrate seeds; a first superplasticizer; and a second superplasticizer which is different from the first superplasticizer and which has a delayed plasticizing effect in comparison with the first superplasticizer so that a maximum plasticizing action at 20°C of the second superplasticizer is subsequent to the maximum plasticizing action at 20°C of the first superplasticizer, wherein the second superplasticizer 2 Appeal 2016-001204 Application 13/642,263 comprises a hydrolyzable polymer that is of the poly(alkylene oxide) polycarboxylate type. (App. Br. 22, Claims Appendix.) Appellants seek review of the following grounds of rejection maintained by the Examiner in the Answer entered September 4, 2015 (“Ans.”): 1. Claims 1, 2, 4, 5, 7, 9-11, 13—16, and 18 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of international patent application WO 2010/026155 Al, published in the name of Nicoleau et al. on March 11, 2010 (hereinafter referred to as “Nicoleau”) in view of the RheoTEC™ Z-60 Product Data Sheet (hereinafter referred to as “the Data Sheet”); and 2. Claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of Nicoleau, the Data Sheet, and U.S. Patent application publication 2007/0181040 Al, published in the name of Li et al. on August 9, 2007 (hereinafter referred to as “Li”). DISCUSSION Upon consideration of the evidence on this appeal record and each of Appellants’ contentions, we affirm the Examiner’s rejections of claims 1—5, 7, 9-11, 13—16, and 18 under 35 U.S.C. § 103(a) for the reasons set forth in the Final Action and the Answer. We add the discussion below primarily for emphasis and completeness. 3 Appeal 2016-001204 Application 13/642,263 Rejection of Claims 1, 2, 10, and 13—15 under § 103(a)3 Appellants do not dispute the Examiner’s finding that Nicoleau discloses a composition for a hydraulic binder (cement), which comprises calcium silicate hydrate (corresponding to the recited setting and hardening accelerator) and a plasticizer (corresponding to the recited first superplasticizer) in amounts corresponding to those recited in claim 1. (iCompare Final Act. 2, with App. Br. 6—14.) Nicoleau discloses that the composition is advantageously included in batching water which is to be mixed with cement to produce concrete and cementitious materials. (Nicoleau 17,11. 10-19.) Appellants do not dispute the Examiner’s finding that Nicoleau discloses that the batching water can also include additives such as an additional plasticizer and/or an air entrainer. (Compare Final Act. 2; Ans. 7, with App. Br. 6—14. The Examiner acknowledges that Nicoleau does not disclose that its additional plasticizer or air entrainer additive is a poly(alkylene oxide) polycarboxylate as recited in claim 1. (Final Act. 2.) To account for this missing feature in Nicoleau’s disclosures, the Examiner relies on the Data Sheet. (Id.) The Data Sheet discloses that RheoTEC™ Z-60, which, according to Appellants, is the recited second superplasticizer (poly(alkylene oxide) polycarboxylate), can be used for a wide range of concrete applications and gives the concrete producer the ability to consistently produce and deliver 3 We limit our discussion to those claims separately argued, and claims not separately argued stand or fall with the argued claims. 37 C.F.R. § 41.37(c)(l)(iv). Appellants argue claims 1, 2, 10, and 13—15 as a group. (See generally App. Br. 6—14.) Therefore, for the purposes of this appeal, we select claim 1 as representative, and decide the propriety of the rejection of claims 1,2, 10, and 13—15 based on claim 1 alone. 4 Appeal 2016-001204 Application 13/642,263 quality concrete mixtures. (Data Sheet 1.) In fact, Appellants do not dispute the Examiner’s finding that the Data Sheet discloses that RheoTEC™ Z-60 provides consistent air-entrainment, flexible levels of workability and slump retention without retardation, improved early compressive strengths, and minimizes re-dosing of high-range water-reducing admixture at the job site. (Compare Final Act. 2; Ans. 8, 13, with App. Br. 6—14.) The Data Sheet discloses that RheoTEC™ Z-60 can be added to initial batch water for concrete (Data Sheet 2), and Appellants do not dispute the Examiner’s finding that the Data Sheet discloses adding 3—12 fl. oz./cwt (195—750 ml/100 kg) of RheoTEC™ Z-60 to cementitious materials. (Compare Final Act. 2, with App. Br. 6—14.) Based on the above findings, the Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention to include RheoTEC™ Z-60 corresponding to the poly(alkylene oxide) polycarboxylate type recited in claim 1 as the second plasticizer or air entrainment additive of the composition disclosed in Nicoleau, with a reasonable expectation of successfully providing the numerous advantages disclosed in the Data Sheet, including workability retention without retardation and consistent air entrainment. (Final Act. 4; Ans. 11—12.) The Examiner finds that because RheoTEC™ Z-60 is exemplified in Appellants’ Specification as Appellants’ second superplasticizer, a delayed plasticizing effect relative to the first plasticizer (the recited first superplasticizer) of Nicoleau’s composition, as recited in claim 1, would have naturally or necessarily flowed from including RheoTEC™ Z-60 as one of the additives of Nicoleau’s composition used in batching water for cement as suggested by the combined disclosures of Nicoleau and the Data Sheet. (Ans. 5—7.) 5 Appeal 2016-001204 Application 13/642,263 Appellants argue that one of ordinary skill in the art would not have had a reason to combine RheoTEC™ Z60 as a second superplasticizer with Nicoleau’s composition because neither reference teaches or suggests using two superplasticizers in a formulation that includes a setting and hardening accelerator, much less using two superplasticizers having the relative relationship of an immediate and delayed superplasticizing effect. (App. Br. 11.) Appellants contend that the Examiner’s proffered motivation for the combination of RheoTEC™ Z60 and Nicoleau’s composition—to provide both workability retention without retardation and consistent air entrainment—is therefore a conclusory statement unsupported by facts. (App. Br. 11—13.) Appellants further contend that “in order to combine the teachings of Nicoleau and RheoTEC™ Z60, the Examiner appears to create a problem in Nicoleau in order to solve the problem with RheoTEC™ Z60 that did not exist within Nicoleau.” (App. Br. 14.) We do not agree. Nicoleau discloses a composition comprising a water-soluble comb polymer and calcium silicate hydrate. (Nicoleau 2,11. 4—8; 3,11. 8—17.) Nicoleau discloses that the comb polymer functions as a plasticizer (first plasticizer) for hydraulic binders such as cement, and indicates that the calcium silicate hydrate acts as a hardening accelerator. (Nicoleau 1,11. 32— 36; 3,11. 8—9.) Nicoleau discloses including the composition in batch water used to produce cementitious materials along with additives, such as an additional plasticizer and/or an air entrainer. (Nicoleau 17,11. 10-19.) In other words, notwithstanding Appellants’ arguments to the contrary, Nicoleau discloses using additives, such as a second plasticizer and/or an air entrainer, along with a hardening accelerator and a first plasticizer, in batch water used to produce cementitious materials. Although Nicoleau does not 6 Appeal 2016-001204 Application 13/642,263 specify the additives used along with a hardening agent and a first plasticizer, the Examiner finds, and Appellants do not dispute that the Data Sheet discloses that RheoTEC™ Z-60 can also be added to batch water for a wide range of concrete applications, and provides consistent air-entrainment, improved workability and slump retention without retardation, and improved early compressive strengths. (Compare Final Act. 2; Ans. 8, 13, with App. Br. 6—14.) Thus, the collective teachings of Nicoleau and the Data Sheet would have provided ample reason, suggestion or motivation to direct one of ordinary skill in the art to add RheoTEC™ Z-60 as one of the additives (e.g., the additional plasticizer and/or air entrainer) of Nicoleau’s composition used in batching water for cement to arrive at the rapid hydraulic binder recited in claim 1, with a reasonable expectation of successfully providing the benefits disclosed in the Data Sheet. (Ans. 7, 11—12; Data Sheet 1—2); see also In re Beattie, 91A F.2d 1309, 1312 (Fed. Cir. 1992) (“As long as some [reason,] motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the reference be combined for the reasons contemplated by the inventor.”); In re Gershon, 372 F.2d 535, 537—39 (CCPA 1967)(“We think it is sufficient that the prior art clearly suggests doing what appellants have done, although an underlying explanation of exactly why this should be done, other than to obtain the expected superior beneficial results, is not taught or suggested in the cited references.”). As discussed above, RheoTEC™ Z-60 is utilized as the second superplasticizer in all of the binder compositions exemplified in Appellants’ Specification, reasonably indicating that RheoTEC™ Z-60 is a poly(alkylene oxide) polycarboxylate type superplasticizer as recited in 7 Appeal 2016-001204 Application 13/642,263 claim 1. In other words, RheoTEC™ Z-60 corresponds to the second superplasticizer having the functional properties (e.g., a delayed plasticizing effect) recited in claim 1. Thus, on this record, we determine that the mere recitation of the functional property of the second superplasticizer recited in claim 1 does not render the claimed composition patentably different from the composition suggested by Nicoleau and the Data Sheet. See also In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record explicitly discusses the [limitation], [applicants’] application itself instruct that [the limitation] is not an additional requirement imposed by the claims on the [claimed invention], but rather a property necessarily present in [the claimed invention]”). In any event, as correctly found by the Examiner, a delayed plasticizing effect (intrinsic or inherent) property of RheoTEC™ Z- 60 relative to the plasticizer (first superplasticizer) included in Nicoleau’s composition, as recited in claim 1, would have naturally flowed from following the suggestion stemming from the combined disclosures of Nicoleau and the Data Sheet to include RheoTEC™ Z-60 as one of the additives of Nicoleau’s composition used in batching water for cement. (Ans. 5-7.) Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.”); In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990) (explaining that a chemical composition and its properties are inseparable.). It follows that contrary to Appellants’ arguments, the Examiner provides a sound rationale grounded in correct factual findings for why the applied prior art would have led one of ordinary skill in the art to the 8 Appeal 2016-001204 Application 13/642,263 claimed rapid hydraulic binder, with a reasonable expectation of successfully improving Nicoleau’s composition. Therefore, Appellants’ arguments are unpersuasive of reversible error in the Examiner’s factual findings and conclusion of obviousness. Appellants further argue that the relied-upon disclosure in Nicoleau of including additives in batching water provides nothing more than a laundry list of possible additives, and Appellants contend that while the list does include plasticizers, it does not include superplasticizers. (App. Br. 9.) However, as recognized by Appellants, Nicoleau uses the terms “plasticizers” and “superplasticizers” interchangeably, and Nicoleau’s disclosure of including a plasticizer additive therefore would have suggested a superplasticizer additive. (App. Br. 9; Nicoleau 43,1. 27; 45 (Table 4).) Moreover, Nicoleau describes only six types of additives, two of which include air entrainers and plasticizers. (Nicoleau 17,11. 14—16.) One of ordinary skill in the art would have recognized, based on the disclosures in the Data Sheet discussed above, that including the RheoTEC™ Z-60 used in cement batching water as one of the additives, e.g., an air entrainer additive, of Nicoleau’s composition used in cement batching water would impart numerous benefits to the resultant cementitious material, and therefore would have been led to include it as part of Nicoleau’s composition used in batching water for producing cement or concrete. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the ’813 patent discloses a multitude of effective combinations does not render any particular formulation less obvious. This is especially true because the claimed composition is used for the identical purpose.”); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure 9 Appeal 2016-001204 Application 13/642,263 of the prior art was “huge, but it undeniably include [d] at least some of the compounds recited in appellant’s generic claims and [was] ... of a class of chemicals to be used for the same purpose as appellant’s additives”). Appellants’ arguments are therefore unpersuasive of reversible error. Appellants further argue that even if one of ordinary skill in the art would have combined the relied-upon disclosures of Nicoleau and the Data Sheet, one could not have known that he would have arrived at two superplasticizers having the relative relationship recited in claim 1 in a binder that includes a setting and hardening accelerator. (App. Br. 11.) However, Appellants’ mere discovery of a latent property or phenomenon exhibited by two known and desired additives (first and second superplasticizers)—their “relative relationship”—in the composition suggested by the applied prior art does not impart patentability to such composition.4 Ex parte Obiaya, 227 USPQ at 60; KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (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.”) Stated differently, as indicated above, the collective teachings of Nicoleau and the Data Sheet would have suggested using RheoTEC™ Z-60 as one of the additives of Nicoleau’s composition containing the recited first superplasticizer and the recited hardening accelerator. Beattie, 974 F.2d at 1312; Gershon, 372 F.2d at 537— 4 Appellants provide arguments directed to a rejection made in a Final Office Action entered February 10, 2014, which preceded the December 5, 2014, Final Action from which the present appeal was taken. (App. Br. 7—9.) Therefore, we do not consider these arguments to be relevant because the earlier Final Rejection is not before us. 10 Appeal 2016-001204 Application 13/642,263 39. RheoTEC™ Z-60 corresponds to the second superplasticizer having the functional properties recited in claim 1 relative to the first plasticizer of the composition taught by Nicoleau as indicated supra. Thus, we discern no difference between the composition recited in claim 1 and the composition suggested by Nicoleau and the Data Sheet. In any event, as also indicated supra, a delayed plasticizing effect caused by RheoTEC™ Z-60 relative to the first plasticizer (the recited first superplasticizer) included in Nicoleau’s composition would have naturally flowed from following the suggestion stemming from the combined disclosures of Nicoleau and the Data Sheet to include RheoTEC™ Z-60 as one of the additives of Nicoleau’s composition used in batching water for cement. We accordingly sustain the Examiner’s rejection of claims 1,2, 10, and 13—15 under § 103(a).5 Claims 4 and 5 Claim 4 depends from claim 1 and recites that the hydraulic binder does not comprise formaldehyde. Claim 5 depends from claim 4 and recites that the hydraulic binder does not comprise a formic derivative. Appellants argue that neither Nicoleau nor the Data Sheet explicitly discloses that the relied-upon compositions do not comprise formaldehyde or a formic derivative. (App. Br. 15.) However, we find no indication in the Data Sheet that RheoTEC™ Z-60 includes formaldehyde or a formic derivative, and no indication that the relied-upon composition disclosed in Nicoleau that comprises a water-soluble comb polymer plasticizer and 5 We do not consider the evidence Appellants present for the first time in Table 1 of their Reply Brief because this evidence is not of record. 37 C.F.R. § 41.33(d)(2). (Reply Br. 5-6.) 11 Appeal 2016-001204 Application 13/642,263 calcium silicate hydrate includes formaldehyde or a formic derivative. (Data Sheet 1—2; Nicoleau 3,11. 11—15.) Accordingly, the suggested combination of RheoTEC™ Z-60 and Nicoleau’s composition (discussed above) would be free of formaldehyde and formic derivatives. On this record, Appellants do not show otherwise. In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004) (“[W]hen the prior art evidence reasonably allows the PTO to conclude that a claimed feature is present in the prior art, the evidence ‘compels such a conclusion if the applicant produces no evidence or argument to rebut it.’” (quoting In re Spada, 911 F.2d at 708 n.3). Appellants’ assertions that the limitations of claims 4 and 5 are not met because Nicoleau and the Data Sheet do not explicitly state that the relied-upon compositions do not comprise formaldehyde or a formic derivative are insufficient to meet this burden. (App. Br. 15.) Appellants do not point to any teaching in Nicoleau and/or Data Sheet that requires or suggests the presence of formaldehyde or a formic derivative in Nicoleau’s composition. (Id.) Nor do Appellants proffer any evidence to show that RheoTEC™ Z-60 disclosed in Data Sheet or the relied-upon composition disclosed in Nicoleau includes formaldehyde or a formic derivative. (Id.) We therefore sustain the Examiner’s rejection of claims 4 and 5. Claim 7 Claim 7 depends from claim 1 and recites that the second superplasticizer comprises a monomer chosen from acrylamide and its derivatives, acrylonitrile and its derivatives, alkyl acrylates, hydroxyalkyl acrylates, polyethylene glycol acrylates, copolymerizable carboxylic anhydrides, and copolymerizable imides. 12 Appeal 2016-001204 Application 13/642,263 Appellants argue that the Data Sheet “does not offer any hint [] as to its chemical contents,” and it is therefore unclear how the RheoTEC™ Z-60 Data Sheet discloses the second superplasticizer recited in claim 7. (App. Br. 15.) However, as discussed above, Appellants’ Specification indicates that the second superplasticizer is a poly(alkylene oxide) polycarboxylate and comprises a monomer selected from acrylamide and its derivatives, acrylonitrile and its derivatives, alkyl acrylates, hydroxyalkyl acrylates, polyethylene glycol acrylates, copolymerizable carboxylic anhydrides, and copolymerizable imides. (Spec. 9,11. 21—28; 9,1. 36—10,1. 3.) Appellants’ Specification then exemplifies RheoTEC™ Z-60 as representing such second superplasticizer. (Spec. 15,1. 9; 17,1. 34; 18,11. 25—26; 19,1. 18; 20, 1. 17; 21,1. 12; 22,1. 1.) In fact, RheoTEC™ Z-60 is the only second superplasticizer exemplified in Appellants’ Specification as meeting the requirements of the second superplasticizer described in the Specification. (Id.) Hence, the Examiner has a reasonable basis to believe that RheoTEC™ Z-60 is a poly(alkylene oxide) polycarboxylate type comprising a monomer selected from acrylamide and its derivatives, acrylonitrile and its derivatives, alkyl acrylates, hydroxyalkyl acrylates, polyethylene glycol acrylates, copolymerizable carboxylic anhydrides, or copolymerizable imides as recited in claim 7. Therefore, the burden is on Appellants to show otherwise. Crish, 393 F.3d at 1259. Appellants’ argument that the Data Sheet does not provide the chemical contents of RheoTEC™ Z-60 is 13 Appeal 2016-001204 Application 13/642,263 insufficient to meet this burden,6 and we therefore sustain the Examiner’s rejection of claim 7. Claims 9 and 11 Claim 9 depends from claim 1 and recites that the hydraulic binder comprises, with respect to the mass of the hydraulic binder, from 0.1 to 9% of the setting and hardening accelerator; from 0.1 to 5% by mass on a dry basis of the first superplasticizer; and from 0.01 to 1% by mass on a dry basis of the second superplasticizer. Claim 11 depends from claim 1 and recites that the amount on a dry basis of the second superplasticizer with respect to the setting and hardening accelerator is from 1 to 10% of the amount of the setting and hardening accelerator. Appellants argue that the Data Sheet does not provide the concentration of any superplasticizer that the RheoTEC™ Z-60 product may contain, and Appellants contend that neither the Data Sheet nor Nicoleau provides guidance as to how much RheoTEC™ Z-60 and a first plasticizer to include in a composition that comprises two plasticizers in addition to a setting and hardening accelerator. (App. Br. 15—17.) However, by virtue of disclosing that the comb polymer in Nicoleau’s composition functions as a plasticizer for cement, Nicoleau implicitly indicates that the amount of the comb polymer added to cement affects the level of plasticity imparted to the cement. (Nicoleau 3,11. 8—9.) Similarly, 6 It seems odd that Appellants, who utilize RheoTEC™ Z-60 in all of the experimental Examples included in their Specification, question the chemical contents of RheoTEC™ Z-60. Based on Appellants’ own disclosure, it appears that Appellants are in the best position to know the chemical contents of RheoTEC™ Z-60 disclosed in the Data Sheet. 14 Appeal 2016-001204 Application 13/642,263 the Data Sheet indicates that RheoTEC™ Z-60 provides, inter alia, air entrainment for cement, and thus implicitly indicates that the amount of RheoTEC™ Z-60 added to cement affects the level of air entrainment achieved. (Data Sheet 1.) Stated differently, Nicoleau and Data Sheet indicate that the amounts of comb polymer (first plasticizer) and RheoTEC™ Z-60 added to batching water for cement are result-effective variables. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”). Therefore, one of ordinary skill in the art would have been led by the disclosures of Nicoleau and the Data Sheet to add the optimum amounts of the first plasticizer (first superplasticizer) and RheoTEC™ Z-60, such as those claimed, to batching water for cement. In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[DJiscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.”); In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[WJhere the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”). We accordingly sustain the Examiner’s rejection of claims 9 and 11 under 35 U.S.C. § 103(a). Claim 16 Claim 16 depends from claim 1 and recites that the second superplasticizer is a delayed effect superplasticizer having a plasticizing action that increases over time. Appellants argue that neither Nicoleau nor the Data Sheet teaches or suggests that RheoTEC™ Z-60 is a delayed effect 15 Appeal 2016-001204 Application 13/642,263 superplasticizer having a plasticizing action that increases over time. (App. Br. 18.) However, as discussed above, the collective teachings of Nicoleau and the Data Sheet would have suggested using RheoTEC™ Z-60 as one of the additives of Nicoleau’s composition containing the first plasticizer (the recited first superplasticizer) and the recited hardening accelerator. As indicated supra, there is no dispute that RheoTEC™ Z-60 has the functional properties of the second superplasticizer recited in claim 16. On this record, Appellants do not show that the recitation of the functional properties in claim 16 would have rendered the claimed composition patentably different from the composition suggested by Nicoleau and the Data Sheet. In any event, as also indicated supra, a delayed plasticizing effect for RheoTEC™ Z-60 relative to the first plasticizer (the recited first superplasticizer) included in Nicoleau’s composition would have naturally flowed from following the suggestion stemming from the combined disclosures of Nicoleau and the Data Sheet to include RheoTEC™ Z-60 as one of the additives of Nicoleau’s composition used in batching water for cement. We accordingly sustain the Examiner’s rejection of claim 16 under 35 U.S.C. § 103(a). Claim 18 Claim 18 depends from claim 1 and recites that a reduced concentration of the first superplasticizer is used in the presence of the second superplasticizer relative to use of the first superplasticizer alone, to achieve the same or a better acquisition of early strength. Appellants argue that “[t]his is an unexpected result and could not possibly be gleaned 16 Appeal 2016-001204 Application 13/642,263 from the teachings regarding the RheoTEC™ Z-60 Data Sheet alone or when combined with the teachings of Nicoleau.” (App. Br. 18.) However, as discussed above, one of ordinary skill in the art would have added RheoTEC™ Z-60 to batching water for cement with Nicoleau’s composition comprising a water-soluble comb polymer (first superplasticizer) and calcium silicate hydrate (hardening accelerator) to impart the benefits of RheoTEC™ Z-60 disclosed in the Data Sheet, including improved early compressive strength. One of ordinary skill in the art would have reasonably expected that a reduced amount of Nicoleau’s composition could be used when including RheoTEC™ Z-60 in the batching water to achieve the same or better early compressive strength relative to the use of Nicoleau’s composition alone in view of the Data Sheet’s disclosure that RheoTEC™ Z-60 improves early compressive strength. Accordingly, the result recited in claim 18 appears to articulate a result that one of ordinary skill in the art would have reasonably expected from the suggestion of the combined disclosures of Nicoleau and the Data Sheet. On this record, Appellants’ unsupported arguments do not demonstrate that such a result actually would have been unexpected by one of ordinary skill in the art at the time of Appellants’ invention. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (to show unexpected results, applicant must establish: “(1) that there actually is a difference between the results obtained through the claimed invention and those of the prior art,. . . and (2) that the difference actually obtained would not have been expected by one skilled in the art at the time of invention”) (citation omitted); In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (“Geisler made no such assertion [that results were unexpected] in his application. Nor did Geisler submit any such statement 17 Appeal 2016-001204 Application 13/642,263 through other evidentiary submissions, such as an affidavit or declaration under Rule 132 ... . Instead, the only reference to unexpected results was a statement by Geisler’s counsel. . . that Geisler’s results were ‘surprising.’”). Moreover, even assuming that the result recited in claim 18 would have been unexpected to one of ordinary skill in the art at the time of Appellants’ invention as Appellants contend, the evidence of obviousness discussed above outweighs any such evidence of non-obviousness. As indicated supra, including RheoTEC™ Z-60 taught by the Data Sheet as one of the additives of Nicoleau’s composition is expected to provide various beneficial properties, thus establishing a very strong prima facie case of obviousness. From our perspective, these expected beneficial results taught or suggested by Nicoleau and the Data Sheet outweigh the unexpected beneficial properties relied upon by Appellants. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) (Evidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness.); see also e.g., In re Nolan, 553 F.2d 1261, 1267 (CCPA 1977) (“Considering all of the evidence, we are not persuaded that the evidence of the unexpected higher luminous efficiency and lower peak discharge current rebuts the strong showing of obviousness.”). We accordingly sustain the Examiner’s rejection of claim 18 under 35 U.S.C. § 103(a). Rejection of Claims 2 and 3 under § 103(a) Appellants rely on their contentions that the Examiner erred in rejecting the base claim, independent claim 1, from which claims 2 and 3 depend, and argue that Li fails to remedy the deficiencies of Nicoleau and 18 Appeal 2016-001204 Application 13/642,263 the Data Sheet. (App. Br. 18—19.) Because we are unpersuaded of reversible error in the Examiner’s rejection of claim 1, Appellants’ position as to this ground of rejection is also without merit. Accordingly, we sustain the rejection of claims 2 and 3 under 35 U.S.C. § 103(a). ORDER In view of the reasons set forth above and in the Final Action and the Answer, we affirm the Examiner’s decision rejecting claims 1—5, 7, 9-11, 13—16, and 18 under § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 19 Copy with citationCopy as parenthetical citation