Ex Parte Sabio et al

Patent Trial and Appeal Board

Jan 25, 2017

13642263 (P.T.A.B. Jan. 25, 2017)

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
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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.
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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.
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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.)
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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
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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
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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
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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
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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.
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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.)
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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.
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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
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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.
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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
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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
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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
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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
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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
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