Ex Parte Sanaobar et al

Patent Trial and Appeal Board

Jan 30, 2019

13807528 (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/807,528 03/07/2013
23122 7590
RATNERPRESTIA
2200 Renaissance Blvd
Suite 350
King of Prussia, PA 19406
02/01/2019
FIRST NAMED INVENTOR
Mohammed Sanaobar
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.
WAC-178US 7373
EXAMINER
HANDVILLE, BRIAN
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
02/01/2019 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):
PCorrespondence@ratnerprestia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOHAMMED SANAOBAR,
JURGEN BEZLER, and HERMANN LUTZ
Appeal2017-003165
Application 13/807,528 1
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-10, 12, and 13.2 We have jurisdiction under 35 U.S.C. § 6(b).
The claimed invention relates to coating systems comprising three
layers based on mineral binders, fillers, polymers wherein the middle layer
contains additionally light weight aggregates as well as processes for the
1 According to Appellants, the real party in interest is Wacker Chemie AG.
See App. Br. 2.
2 The Examiner has indicated that the subject matter of claim 11 is
allowable. Final Act. 1.
Appeal2017-003165
Application 13/807,528
preparation of such coating systems. (Spec 2). Independent claim 1 is
representative of the subject matter on appeal and reproduced below:
1. A coating system comprising an underlying surface
including at least
one of concrete, screed, rock, and boulders, a) a base layer on
top of the underlying surface, b) a middle layer on top of the
layer a), and c) a top layer on top of layer b ),
wherein each of the layers a), b) and c) contains one or more
mineral binders selected from the group consisting of cement,
gypsum, waterglass and lime hydrate;
one or more fillers selected from the group consisting of
carbonates, silicates, quartz flour, quartz sand, highly disperse
silica, feldspar, heavy spar, light spar, fillers having a
pozzolanic reaction, rubber shreds and fibrous fillers;
one or more polymers of one or more ethylenically unsaturated
monomers selected from the group consisting of vinyl esters of
carboxylic acids having from 1 to 15 carbon atoms, methacrylic
esters or acrylic esters of carboxylic acids with unbranched or
branched alcohols having from 1 to 15 carbon atoms, olefins,
dienes, vinylaromatics and vinyl halides; and
optional further additives;
wherein the middle layer additionally contains one or more
light weight aggregates selected from the group consisting of
vermiculite, perlite, poraver glass beads, hollow glass spheres,
pumice, expanded clays, shales and sintered pulverized fuel
ash, and
wherein layers a), b ), and c) are configured to set sequentially
from bottom to top and the coating system is configured to set
in 10 days or less after the application of the layer a) to the
underlying surface.
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Application 13/807,528
Claims Appendix to App. Br.
Appellants (see App. Br., generally) request review of the rejection of
claims 1-10, 12, and 13 as being unpatentable over the combination of
Haberle (US 2003/0088045 Al), in view of Weitzel (US 2010/0041796 Al)
and Bellamy (US 2010/0143696 Al). The complete statement of the
rejection on appeal appears in the Final Office Action. (Final Act. 2-11).
OPINI0N3
After consideration of Appellants' arguments and evidence and the
Examiner's position in the Final Office Action and Answer, we REVERSE
the appealed prior art rejection. Our reasons follow.
The Examiner finds Haberle discloses a three-layer coating system
comprising a first cover layer (base layer), a second cover layer (middle
layer) on top of the first cover layer, and a sealing (top layer) on top of the
second cover layer, wherein the layers are set sequentially from bottom to
top. (Final Act. 3). The Examiner finds Haberle does not teach the emulsion
polymers comprising one or more protective colloid stabilized polymer of
one or more ethylenically unsaturated monomers as required by the claimed
invention. The Examiner relies on Weitzel to address this difference. The
Examiner finds Haberle does not teach the middle layer additionally
containing one or more light weight aggregates as required by the claimed
invention. The Examiner finds Bellamy describes the use of particles made
from one or more of pumice, expanded glass, perlite, vermiculite,
3 Our discussion applies to both independent claims 1 and 12.
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Application 13/807,528
polystyrene, stabilized foam and plastic fibers provides a cementitious body
with improved thermal and acoustic insulating properties. The Examiner
relies upon this motivation to modify the base, middle, and top layers from
Haberle with the particles disclosed by Bellamy. (Final Act. 5; Bellamy ,r
57). The Examiner concludes it would have been obvious to modify each of
Haberle' s layers with the relative thicknesses where the middle contains
light weight aggregates of Bellamy to improve thermal and acoustic
insulating properties of the coating system. (Final Act. 6-7).
Appellants argue a person of ordinary skill in the art would not have
been motivated to modify the multi-layer system of Haberle because
Bellamy teaches compositions that are intended to form a cementitious body
in single pour systems, not multi-layered systems. (App. Br. 3-5).
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). "Rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." KSRint'l v. Teleflex, Inc., 550 U.S. 398,418
(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see also,
Ball Aerosol and Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d
984, 993 (Fed. Cir. 2009) ("[T]he analysis that 'should be made explicit'
refers not to the teachings in the prior art of a motivation to combine, but to
the court's analysis.").
Haberle is directed to aqueous polyurethane dispersions in
formulations for crack-sealing coating systems. (Haberle ,r 1 ). Haberle
discloses the crack-sealing formulations have a variety of utilities such as
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Application 13/807,528
coatings for floors of parking areas, bridge crown ceilings, balcony coatings
and flat roof coatings. (Haberle ,r ,r 185-192). Haberle discloses the
inventive crack-sealing formulations exhibited good tensile strength,
elongation at tensile strength, elongated in at break that were at least equal
to, in general even clearly better than in conventional isocyanate-containing
systems. (Haberle ,r 262). Bellamy teaches stratified cementitious body
formed in a single pour from a cementitious slurry comprising a
cementitious binder which have been poured into a cast of mould. (Bellamy
,r,r 7-8, 51 ). Bellamy teaches stratified cementitious body can comprise an
insulating layer having a less dense aggregate material that provides
improved thermal and acoustic insulating properties. (Bellamy ,r 54). The
Examiner contends it would have been obvious to modify Haberle to
incorporate the less dense aggregate described by Bellamy to obtain
improved thermal and acoustic insulating properties. (Final Act. 6-7).
However, the Examiner has failed to provide a reason supported by evidence
why this arrangement would have been obvious. The Examiner has not
adequately explained why a person of ordinary skill in the art would have
sought to provide thermal and acoustic insulation to crack sealing
formulations.
Since we reverse because the Examiner has not established that the
relied-upon disclosures are sufficient to support obviousness, we need not
reach the issue of the sufficiency of the evidence of unexpected results
presented by Appellants. Cf In re Geiger, 815 F.2d 686, 688 (Fed. Cir.
1987).
For the foregoing reasons, we determine that the Examiner's
conclusion of obviousness is not supported by facts. "Where the legal
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Application 13/807,528
conclusion [ of obviousness] is not supported by facts it cannot stand." In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967). Accordingly, we cannot
sustain the Examiner's decision to reject claims 1-10, 12, and 13.
DECISION
The rejection under 35 U.S.C. § 103(a) of claims 1-10, 12, and 13 is
reversed.
REVERSED
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