Ex Parte Sorger et al

Patent Trial and Appeal Board

Jan 19, 2017

13132798 (P.T.A.B. Jan. 19, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/132,798 06/03/2011 Klas Sorger WAC-140US 7902
23122 7590 01/23/2017
RATNFRPRFSTTA
EXAMINER
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01/23/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KLAS SORGER and JURGEN BEZLER
Appeal 2015-001563
Application 13/132,798
Technology Center 1700
Before TERRY J. OWENS, ELIZABETH M. ROESEL, and
JENNIFER R. GUPTA, Administrative Patent Judges.
ROESEL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—12. An oral hearing was held on January 12,
2017. We have jurisdiction under 35 U.S.C. § 6(b).2
We REVERSE.
1 Wacker Chemie AG is identified as the real party in interest. App. Br. 1.
2 In our opinion below, we reference the Specification filed June 3, 2011
(Spec.), the Final Office Action mailed August 15, 2013 (Final Action), the
Appeal Brief filed May 19, 2014 (App. Br.), the Examiner’s Answer mailed
September 17, 2014 (Ans.), and the Reply Brief filed November 17, 2014
(Reply Br.).
Appeal 2015-001563
Application 13/132,798
STATEMENT OF THE CASE
Claimed Invention
The claimed subject matter relates to a pervious concrete composition.
App. Br. 11 (claim 1). According to the Specification, pervious concrete is
useful for paving roads and parking lots due to its low noise and drainage
characteristics. Spec. 1—2.
Claim 1 is the sole independent claim and is reproduced below from
Appellants’ Claims Appendix:
1. A pervious concrete composition with a cavity
volume between 10 and 35 vol.%, containing hydraulic binder,
filler and polymer, wherein a vinyl acetate-ethylene copolymer
with a glass transition temperature Tg of < 20°C is contained as
the polymer.
App. Br. 11.
References3
Schmitz US 5,747,578 May 5, 1998
Berg US 5,861,057 Jan. 19, 1999
Rejections
The Examiner maintains the rejection of claims 1—12 under 35 U.S.C.
§ 103(a) as unpatentable over Schmitz in view of Berg. Final Action 2-4.
ANALYSIS
We agree with Appellants that the Examiner errs in finding, as a
matter of fact, that a person of ordinary skill in the art, absent hindsight,
would have selected the copolymer binder disclosed in Schmitz for
3 For each reference, we list the first-named inventor only.
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Application 13/132,798
combination with a drainage concrete, as disclosed in Berg. Final Action 2;
App. Br. 2—7; Ans. 4—6.
The Examiner finds that Schmitz teaches a concrete composition
satisfying the elements of claim 1, except for a cavity volume between 10
and 35 vol. %. Final Action 2. The Examiner finds that Berg teaches
drainage concrete having a void volume from 10 to 35%, comprising
hydraulic binder, aggregates (filler), and a polymeric binder. Id. The
Examiner finds that it would have been obvious to make the concrete
composition of Schmitz using the method of Berg. Id. According to the
Examiner, the “motivation to do so would have been to develop a drainage
concrete which effects the required noise reduction in road surfacing, meet
all traffic safety requirements, has good adhesion to the base and possesses a
longlife.” Id. (citing Berg, 2:41^44). Responding to Appellants’
arguments, the Examiner asserts that a person of ordinary skill in the art
would have recognized that Schmitz’s polymeric binders are useful in many
types of hydraulically setting building materials, including those taught by
Berg. Ans. 4—5.
Appellants contend that Schmitz has no connection to pervious
concrete and the Examiner’s selection of Schmitz for combination with Berg
is based on hindsight. App. Br. 4; Reply Br. 1—3. Appellants identify
differences between the concrete compositions and polymeric binder
properties disclosed in Schmitz and Berg and argue that, in view of these
differences, a person of ordinary skill in the art would not have had a reason
to consider the polymeric binder of Schmitz for use in the pervious concrete
composition of Berg, or have had a reasonable expectation that Schmitz’s
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Application 13/132,798
polymer would produce any benefit if it were added to the composition of
Berg. App. Br. 4—7; Reply Br. 3—5.
We are persuaded that the Examiner’s selection of the copolymer
binder disclosed in Schmitz for combination with the drainage concrete of
Berg is based on impermissible hindsight and is not adequately supported by
the evidence.
First, the Examiner errs in finding that a person of ordinary skill in the
art would have modified the concrete composition of Schmitz to have the
void volume disclosed in Berg. Final Action 2 (citing Berg, 2:41^44). The
copolymer taught by Schmitz is for use in “building material formulations,
in particular in sealing slurries.” Schmitz, 1:9—10. The concrete
compositions cited by the Examiner are characterized by Schmitz as “sealing
slurries.” Schmitz, 15:23; see Final Action 2 (citing Schmitz 15:22—27). In
contrast, Berg discloses “drainage concrete” having a “void volume of from
10 to 35%,” which is “water-permeable” and useful for “open-pored road
surfacing.” Berg, Abstract, 1:5—10. We agree with Appellants that the
object of a sealing slurry—to provide an impermeable barrier—is the
opposite of the object of a drainage concrete—to eliminate an impermeable
barrier. Reply Br. 4. Accordingly, we are persuaded that there is
insufficient evidentiary basis for the Examiner’s finding that a person of
ordinary skill in the art would have modified the sealing slurry of Schmitz to
have the void volume disclosed in Berg.
Second, the Examiner errs in finding that a person of ordinary skill in
the art would have recognized that Schmitz’s polymeric binder would be
useful in many types of hydraulically setting building materials. Ans. 4—5.
As support for this finding, the Examiner cites Schmitz’s disclosure that
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Application 13/132,798
“[cjopolymers have been employed for many years in the building sector as
a polymer improving agent for hydraulically setting systems, preferably in
the form of dispersion powders.” Schmitz 1:13—16 (Description of Related
Art); see Ans. 4. That disclosure, however, pertains to copolymers in
general, not to the specific copolymer disclosed by Schmitz. The Examiner
does not direct us to evidence sufficient to support a finding that Schmitz’s
polymeric binder would be useful in many types of hydraulically setting
building materials, including the drainage concrete disclosed in Berg.
Third, the differences between the concrete compositions and
polymeric binder properties disclosed in Schmitz and Berg, as identified by
Appellants, persuade us that the Examiner errs in finding that a person of
ordinary skill in the art would have found it obvious to use a polymeric
binder of the type disclosed in Schmitz in a drainage concrete, as disclosed
in Berg. The first such difference relates to the minimum film-forming
temperature (MFT) and glass transition temperature (Tg) of the polymeric
binder. Berg teaches that the MFT of the polymeric binder is preferably
above 30°C. Berg, 3:38—39. Appellants assert, without disagreement from
the Examiner, that Tg would be correspondingly high. App. Br. 5. Schmitz,
on the other hand, discloses a copolymer having a Tg of -40°C to 10°C and a
MFT of preferably < 5°C, in particular < 0°C. Schmitz, 2:25—26, 4:23—27.
The second such difference relates to the particle size of the aggregate
(filler). Berg discloses a particle size in the range from 2 to 32 mm, with a
particle size distribution as uniform as possible. Berg, 4:56—60. Schmitz, on
the other hand, discloses sand having a particle size of 0.1—0.4 mm.
Schmitz, 15:25. In view of these differences, we find that the Examiner’s
rationale for combining a polymeric binder, as disclosed in Schmitz, with a
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drainage concrete, as disclosed in Berg, is not sufficiently supported by the
evidence.
The foregoing deficiencies in the Examiner’s findings and conclusions
regarding claim 1 are not remedied by the Examiner’s findings or
conclusions regarding claims 2—12, which depend from claim 1. We
therefore determine that a preponderance of the evidence does not support
the Examiner’s conclusion of obviousness with respect to independent
claim 1 and its dependent claims 2—12, and we do not sustain the rejection of
these claims over Schmitz and Berg.
The Examiner’s decision is REVERSED.
REVERSED
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