Ex Parte Tontrup et al

Patent Trial and Appeal Board

Apr 22, 2016

12298425 (P.T.A.B. Apr. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/298,425 0710712009
23575 7590 04/22/2016
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
FIRST NAMED INVENTOR
Christoph Tontrup
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.P59944 7902
EXAMINER
HIJJI, KARAM Y
ART UNIT PAPER NUMBER
1731
MAILDATE DELIVERY MODE
04/22/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte CHRISTOPH TONTRUP,
WOLFGANG LORTZ, KAI SCHUMACHER, CHRISTIAN HUBSCH,
PHILIPP WIELAND, HARALD GRASSL, KERSTIN BECHER,
STEPANIE SCHEUL, and EV A JETZLSPERGER
Appeal2014-006434
Application 12/298,425
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-5 of Application 12/298,425
under 35 U.S.C. § 103(a) as obvious. Final Act. 1 (Sept. 6, 2013).
Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
1 Construction Research & Technology GmbH, a subsidiary of BASF SE, is
identified as the real party in interest. Appeal Br. 3.
Appeal2014-006434
Application 12/298,425
BACKGROUND
The '425 Application describes a process for the preparation of
hydraulic binders. Spec. 1. The Specification describes the process as
including titanium dioxide in the hydraulic binder product to provide an
increase in strength within hours of product hardening. Id. at 1 and 2.
Claim 1 is representative of the '425 Application's claims and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A process for the preparation of products of high early
strength comprising hydraulic binders,
wherein a hydraulic binder, water and 0.1 to 2% by weight,
based on the hydraulic binder, of a finely divided titanium
dioxide are mixed with agitation and in any desired sequence,
wherein the product reaches compressive strengths within 6
to 8 hours of hardening of the product, which are at least 30%
higher than the reference value of a corresponding product
without titanium dioxide.
Appeal Br. 18.
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1--4 and 62 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schneider. 3 Final Act. 2; Ans. 2.
2 Claim 6 has been cancelled. See Amendment 3 (February 9, 2012). We
assume that the Examiner's inclusion of claim 6 in the summary statements
of rejections in the Final Action and Answer is an inadvertent error.
3 WO 2005/123623 Al, published Dec. 29, 2005.
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Application 12/298,425
2. Claim 5 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Schneider and Hodgson. 4
Final Act. 3; Ans. 3.
DISCUSSION
Appellants argue for the reversal of claims 1--4 on the basis of
limitations present in independent claim 1. See Appeal Br. 6-13, 17; Reply
Br. 2--4. We, therefore, limit our analysis to claim 1. Dependent claims 2--4
will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants separately argue for the reversal of the rejection of
dependent claim 5. See Appeal Br. 14--17; Reply Br. 4--5.
Rejection 1. The Examiner rejected claims 1--4 as unpatentable over
Schneider. Final Act. 2; Ans. 2. The Examiner found Schneider teaches all
the limitations of claim 1, including a range of titanium dioxide by percent
weight that overlaps the recited range. Final Act. 2 (citing Schneider 3, 11.
29-31 ("[T]he amount of f11med metal oxide powder in the cement
composition, based on the amount of cement, is less than 15 wt.[]%, in
particular between 4 and 10 wt.[]%.")).
Appellants argue that this rejection should be reversed because:
( 1) "Schneider[' s admixture with sorbent] does not necessarily form a
product which reaches compressive strengths within 6 to 8 hours of
hardening of the product, which are at least 30% higher than corresponding
products without titanium dioxide", Appeal Br. at 9-10 (original emphasis),
4 Shell S. Hodgson, The Effects of Water/Cement Ratio and Air Entraining
on Portland Cement Concrete Freeze/Thaw Durability, Civil and
Environmental Engineering Department, University of Wisconsin-Madison
(May 10, 2000).
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Application 12/298,425
(2) the claimed range of 0.1-2% by weight of titanium dioxide "does not
overlap [Schneider's] range of 4 to less than 15 percent by weight", id. at 7
(original emphasis), and (3) "the Declaration of Dr. Bokem shows
unexpected results which overcome the Office's allegations of obviousness
in view of Schneider." Id. at 13. We address these arguments seriatim
below.
First, Appellants argue that the Examiner reversibly erred because
Schneider's admixture "requires a sorbent, whereas the product of claim 1 ..
. does not require a sorbent." Id. at 11. Appellants further argue that
Schneider's admixture would not necessarily form a product which provides
the property of attaining the requisite compressive strengths early. Id. at 9-
10; see also Reply Br. 3. Appellants' arguments are not persuasive for the
following reasons.
The open transition "comprising" means that claim 1 reads on
processes for making hydraulic binders described in Schneider that include
additional materials, such as sorbents. See Schneider 3, 11. 7-10 and 17-31.
Appellants, furthermore, misdirect their focus on Schneider's composition
because claim 1 is drawn to a process for the preparation of products-not to
a composition of matter. Thus, Appellants' arguments do not identify
reversible error in the Examiner's finding that Schneider teaches a method of
mixing a hydraulic binder, water, and titanium dioxide to form cement.
Final Act. 2; Ans. 2.
Appellants' arguments, likewise, misplace their focus on whether
Schneider's admixture would necessarily form a product which has the
claimed properties. The Examiner did not find Schneider anticipates the
claims. Rather, the Examiner determined that Schneider rendered these
claims obvious. Final Act. 2-3; Ans. 2. The Examiner, therefore, is not
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Application 12/298,425
required to establish inherency by showing that Schneider's admixture
would necessarily form a product which reaches compressive strengths
early. See, e.g., In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Moreover,
"it is not required ... that the prior art disclose or suggest the properties
newly-discovered by an applicant in order for there to be a prima facie case
of obviousness." In re Dillon, 919 F.2d 688, 697 (Fed. Cir. 1990) (en bane).
Second, Appellants argue that 4% by weight is the minimum amount
of fumed metal oxide powder present in Schneider's cement composition to
provide Schneider's required properties. Appeal Br. 8; Reply Br. 2-3. The
Examiner found, however, that Schneider teaches the use of fumed metal
oxide powder in amounts between 0.1-5% by weight, exemplifies the use of
1 % by weight of fumed metal oxide powder, and lists titania as a preferred
fumed metal oxide powder. Final Act. 2 (citing Schneider 2, 11. 18-20);
Ans. 4 (citing Schneider 9, Figs. 1 and 2; 4, 11. 19-20); see also Schneider 7,
11. 7-9 (claiming an "amount of fumed metal oxide powder ... less than 15
wt.[]%."). Thus, Schneider describes the process of preparing a hydraulic
binder comprised of titanium dioxide in ranges that overlap with ranges of
titanium dioxide specified by claim 1.
Schneider alone, therefore, establishes the prima facie obviousness of
claim 1. See, e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003) ("A prima facie case of obviousness typically exists when the ranges
of the claimed composition overlap the ranges disclosed in the prior art."); In
re Malagari, 499 F.2d 1297, 1303 (CCPA 1974) (concluding that a claimed
invention was rendered prima facie obvious by a prior art reference whose
disclosed range (0.020--0.035% carbon) overlapped the claimed range
(0.030--0.070% carbon)).
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Application 12/298,425
Third, Appellants submit evidence alleging that the preparation of the
hydraulic binder specified in claim 1 provides new and unexpected results
relative to the prior art. See Bokem Deel. Table 1; i-fi-f l 0-11 (executed June
25, 2012).
Appellants' evidence, however, is not commensurate in scope with the
claims. See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035(CCPA1980). Appellants' claim 1 requires
that the product reaches compressive strengths at least 30% higher than the
reference value of a corresponding product without titanium dioxide within
6 to 8 hours of product hardening. The Bokem Declaration provides
evidence of testing across the claimed range of 0.1-2% titanium dioxide.
Bokem Deel. Table 1. Of the tested examples, however, only cement
compositions comprised of 1 % and 2% titanium dioxide provided the
requisite compressive strength. Id. Appellants' evidence, furthermore, lacks
compressive strength testing from 6 hours to less than 8 hours. Id.
It is not enough, moreover, for Appellants to show that the results for
Appellants' invention and a hydraulic binder without titanium dioxide are
different. The difference must be shown to be an unexpected difference.
See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455
F.2d 1077, 1080 (CCPA 1972). Appellants have not provided evidence that
the relied-upon results in the Bokem Declaration would have been
unexpected by one of ordinary skill in the art. Appellants have provided
mere attorney argument to that effect. Appeal Br. 12-13; Reply Br. 4.
Arguments of counsel, however, cannot take the place of evidence. See In
re De Blauwe, 736 F.2d 699, 705; In re Payne, 606 F.2d 303, 315 (CCPA
1979); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974).
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Application 12/298,425
For the reasons set forth above, we are not persuaded by any of
Appellants' arguments for reversal of the rejection of claims 1--4. Thus, we
affirm Rejection 1.
Rejection 2. Appellants argue that the Examiner's combination of
Schneider and Hodgson is improper because Schneider discloses a
water/cement ratio of 0.2---0.3 and the Examiner has provided no motivation
to increase this ratio to 0.4, as taught by Hodgson. Appeal Br. 14--15; Reply
Br. 4--5. According to Appellants, Hodgson teaches away from increasing
the water/cement ratio because this would render the composition
unsatisfactory for its intended purpose. Appeal Br. 15. In other words,
Appellants contend that this would result in a finished concrete product with
an undesirable reduction in strength. Id.; Reply Br. 5.
We are not persuaded of reversible error in the Examiner's rejection.
Although increasing the ratio of water to cement may reduce cement
strength, Hodgson teaches increasing the water/cement ratio to thereby
provide the benefit of improved workability. See Hodgson, Background 2-
3. The Examiner found that Hodgson discloses a suitable water/cement ratio
range of 0.35---0.4 or higher with the caveat that one of ordinary skill needs
to monitor how high this range goes in order to not diminish the strength.
Ans. 7. A person of ordinary skill in the art would have understood and
weighed this tradeoff in benefits. Winner Int 'l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating benefit
comes at the expense of another benefit, ... should not nullify its use as a
basis to modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another."); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed.
Cir. 2006) ("a given course of action often has simultaneous advantages and
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Application 12/298,425
disadvantages, and this does not necessarily obviate the motivation to
combine"). Thus, we are not persuaded that modifying Schneider to
increase the water/cement ratio from 0.2---0.3 to 0.4 or higher would have
rendered the cement composition inoperable or unsatisfactory for its
intended purpose.
For the reasons set forth above, we are not persuaded by any of
Appellants' arguments for reversal of the rejection of claim 5. Thus, we
affirm Rejection 2.
CONCLUSION
For the reasons set forth above, we affirm the rejections of claims 1-5
of the '425 Application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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