Hawley, George C.

Patent Trials and Appeals BoardJul 17, 2020

2019005091 (P.T.A.B. Jul. 17, 2020)

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. 14/122,208 11/25/2013 George C. Hawley 80189.00100 7573 166539 7590 07/17/2020 Snell & Wilmer (Denver) 400 East Van Buren Street One Arizona Center Phoenix, AZ 85004 EXAMINER SHAH, SAMIR ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 07/17/2020 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): IPDOCKET@swlaw.com jjohnson@swlaw.com ksandoval@swlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEORGE C. HAWLEY Appeal 2019-005091 Application 14/122,208 Technology Center 1700 Before KAREN M. HASTINGS, BRIAN D. RANGE, and MERRELL C. CASHION, JR., Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 8, 10–12, 14, 17, 21, 23, 25–28, 31, 33, 34, 40, and 41.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as American Selenite, LLC, a subsidiary of Good Earth Minerals LLC. Appeal Br. 2. 2 Appellant withdrew claims 44 and 48. Appeal Br. A-3 (Claims App.). Appeal 2019-005091 Application 14/122,208 2 CLAIMED SUBJECT MATTER3 Appellant describes the invention as relating to cultured stone materials using particulate calcium sulfate filler. Spec. 1:11–12. Appellant describes cultured stone as being the product of powdered minerals being added as filler to liquid resins (plastics). Id. at 1:15–17. Appellant seeks to address problems with prior cultured stone materials such as flammability and environmental issues. Id. at 1:15–3:7. Claim 1 is illustrative: 1. A cultured stone material, comprising from 3 weight percent to 40 weight percent of a plastic component and at least 60 weight percent particulate calcium sulfate filler, the particulate calcium sulfate filler having a weight average particle size in a range of from 1 micron to 3 microns, and wherein: at least 90 weight percent of the particles of the particulate calcium sulfate filler are no larger than 10 microns. REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Name Reference Date Elcik Mizuno et al. (“Mizuno”) Bruckbauer et al. (“Bruckbauer”) US 3,983,290 US 4,284,550 US 5,244,941 Sept. 28, 1976 Aug. 18, 1981 Sept. 14, 1993 Holmes et al. (“Holmes”) US 6,235,367 B1 May 22, 2001 3 In this Decision, we refer to the Final Office Action dated March 5, 2018 (“Final Act.”), the Appeal Brief filed January 7, 2019 (“Appeal Br.”), and the Examiner’s Answer dated April 18, 2019 (“Ans.”). Appeal 2019-005091 Application 14/122,208 3 REJECTIONS The Examiner maintains (Ans. 3) the following rejections on appeal: A. Claims 1, 8, 10–12, 17, 21, 23, 27, 28, 40, and 41 under 35 U.S.C. § 103 as obvious over Bruckbauer. Final Act. 2. B. Claim 14 under 35 U.S.C. § 103 as obvious over Bruckbauer in view of Mizuno. Id. at 5. C. Claims 25, 26, 31, and 33 under 35 U.S.C. § 103 as obvious over Bruckbauer in view of Holmes. Id. at 6. D. Claim 34 under 35 U.S.C. § 103 as obvious over Bruckbauer in view of Holmes and Elcik. Id. at 7. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner’s rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Appellant argues claims 1, 10, 11, 27, and 28 separately and also addresses each of the Examiner’s four rejections individually. See Appeal Br. passim. Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we consider claims 1, 10, 11, 14, 25, 27, 28, and 34 individually. Claims 26, 31, and 33 stand or fall with claim 25 because Appeal 2019-005091 Application 14/122,208 4 Appellant argues those claims as a group. Appeal Br. 14–15. All other claims on appeal stand or fall together with the claim they depend from. Rejection 1, claim 1, obviousness. The Examiner rejects claim 1 as obvious over Bruckbauer. The Examiner finds that Bruckbauer teaches cultured stone comprising 10 to 25 weight percent polyester resin (i.e., a plastic component) and 50 to 80 weight percent calcium sulfate dehydrate as a particulate filler. Final Act. 2; see also Bruckbauer Abstract. The Examiner finds that Bruckbauer does not teach the weight average particle size as claim 1 recites. Final Act. 3. The Examiner, however, finds that, as Bruckbauer teaches, viscosity of the molding composition and visual characteristics of the cultured stone can be modified by adjusting the size of particles. Id.; see also Bruckbauer 5:47–51. The Examiner thus determines that particle size is a result effective variable and determines it would have been obvious to modify particle size to reach a desired viscosity and visual characteristics. Final Act. 3. Appellant extensively argues that Bruckbauer does not teach claim 1’s particle size recitations. Appeal Br. 4–12. This argument is unpersuasive because it does not squarely address the Examiner’s rejection. The Examiner agrees that Bruckbauer does not explicitly teach claim 1’s particle size recitations. Final Act. 3. Rather than relying on an explicit teaching of Bruckbauer, the Examiner determines that particle size is a result effective variable that would have been obvious to optimize. As explained below, Appellant’s arguments do not identify error in the Examiner’s result effective variable rationale. It has long been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or Appeal 2019-005091 Application 14/122,208 5 workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955); see also In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.”). Here, Bruckbauer explicitly teaches that filler particle size impacts viscosity of the molding composition, visual characteristics of the product, amount of filler that can be employed, and strength and stain resistance of the product. Bruckbauer 5:47–51. We agree with the Examiner that, based on this teaching, a person of skill in the art would have known to adjust filler particle size distribution to discover optimum or workable ranges by routine experimentation. “A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Appellant emphasizes that Bruckbauer teaches a filler particle size profile different than claim 1’s recitations. Appeal Br. 3–11. Appellant, however, focuses on Bruckheimer’s discussion of filler at columns 5 and 6. This discussion begins by identifying calcium sulfate dehydrate as one appropriate filler. Bruckheimer 5:8–14. Bruckheimer explains that it is generally desirable to maximize loading of the filler because the filler is less expensive than resin and to achieve fire resistance. Id. at 5:25–29. (We note that Appellant’s invention is also interested in achieving fire resistance. Spec. 1:27–2:23; 3:6–7.) Bruckheimer then states that loading is a function of viscosity of the molding composition (Bruckheimer at 5:29–32) and that particle size and configuration affects, for example, viscosity, visual characteristics of the product, and strength (id. at 5:47–51). Appeal 2019-005091 Application 14/122,208 6 After providing these more general teachings, Bruckheimer then introduces an example “homogeneous-appearing marble-like product” by stating “[t]he filler particle size for a homogenous-appearing marble-like product is usually desired to be a maximum of about 25–30 microns in length.” Id. at 5:53–55. Bruckheimer then proceeds to further discuss preferable filler size teachings. Id. at 5:55–6:18; see also Ans. 4 (emphasizing that Bruckbauer’s more narrow particle size discussion relates to preferred embodiments). Bruckheimer does not suggest that any of the particular filler sizes it discusses are required for all applications. Rather, Bruckheimer is clear that filler size has many effects on the end product. Bruckbauer at 5:47–51. The Examiner, therefore, correctly determined that a person of skill in the art would have understood, based on Bruckheimer, that particle size distribution is a result effective variable. Ans. 4–5. Optimization of a known result effective variable is not sufficient to confer patentability absent some showing of criticality or unexpected results. See, e.g., In re Boesch, 617 F.2d at 272. Appellant here makes no such showing. Because Appellant’s arguments do not identify error in the Examiner’s rejection, we sustain the Examiner’s rejection of claim 1 and grouped claims 8, 12, 17, 21, 23, and 41. Rejection 1, claim 27, obviousness. The second independent claim on appeal, claim 27, includes recitations similar to claim 1 but also recites, among other things, that “the calcium sulfate filler has a purity of at least 98 weight percent.” Appeal Br., Claims App. 2. The Examiner finds that because Bruckbauer does not state that its calcium sulfate dehydrate includes an impurity, its calcium sulfate dehydrate would be pure. Final Act. 4. Appeal 2019-005091 Application 14/122,208 7 To the extent Appellant raises the same arguments raised with respect to claim 1 (Appeal Br. 12), those arguments are unpersuasive for the reasons explained above. Appellant also argues that Bruckbauer’s silence regarding impurities is not adequate to teach pure calcium sulfate. Appeal Br. 12–13. Appellant’s argument is unpersuasive. By not referring to any impurities as being desirable or required, Bruckbauer reasonably suggests that there is no need to introduce impurities. “[A] reference must be considered not only for what it expressly teaches, but also for what it fairly suggests.” In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 70 (CCPA 1979). Moreover, the Examiner finds that Appellant’s Specification admits that calcium sulfate dehydrate is inherently highly pure (Ans. 12), and Appellant does not dispute this finding. Because Appellant does not identify error, we sustain the Examiner’s rejection of claims 27 and 40. Rejection 1, claim 10, obviousness. Claim 10 further narrows claim 1 according to filler particle size. Appeal Br. Claims App. 1. Appellant argues that, because of this narrower range, claim 10 is even less obvious than claim 1. As explained above, however, the evidence supports the Examiner’s position that filler particle size distribution is a result effective variable and that it would have been obvious to optimize this variable to achieve desired results. We sustain the Examiner’s rejection of claim 10. Rejection 1, claim 11, obviousness. Claim 11 includes a purity recitation similar to the recitation of claim 27. Appellant argues that this claim is patentable for the reasons raised with regard to claims 1 and 27. Appeal 2019-005091 Application 14/122,208 8 Appeal Br. 13. We disagree for the reasons explained above. We sustain this rejection. Rejection 1, claim 28, obviousness. Claim 28 depends from claim 27 and recites more narrow criteria for filler particle size. Appellant’s argument is similar to that of claim 10. Appeal Br. 13–14. The argument is unpersuasive for the reasons explained above, and we sustain this rejection. Rejection 2, claim 14, obviousness. The Examiner rejects claim 14 as obvious over Bruckbauer in view of Mizuno. Final Act. 5. Appellant raises the same arguments as raised with regard to claim 1. Appeal Br. 14. Those arguments are unpersuasive for the reasons explained above. We sustain this rejection. Rejection 3, claims 25, 26, 31, and 33. The Examiner rejects claims 25, 26, 31, and 33 as obvious over Bruckbauer in view of Holmes. Final Act. 6. Appellant argues these claims as a group, and we therefore focus on claim 25. Claim 25 recites the material according to claim 8 “comprising a particulate decorative component that is different than the particulate calcium sulfate filler.” Appellant raises arguments raised with regard to claims 1 and 27. Those arguments are unpersuasive for the reasons explained above. Appellant also argues that Holmes does not identify its materials as being decorative. Appeal Br. 15. The Examiner, however, finds that the Holmes materials are the same as those described in the present Specification (Ans. 9) and determines that a person of skill in the art would have combined the Holmes materials with Bruckbauer’s composition to obtain stiffness and rigidity as taught by Holmes (Final Act. 6 (citing Holmes)). Appellant does not dispute the Examiner’s stated reason to Appeal 2019-005091 Application 14/122,208 9 combine, and Appellant’s motivation for including the materials does not control the obviousness analysis. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419–420 (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.”). Appellant’s argument is, thus, unpersuasive. Because Appellant’s arguments do not identify error, we sustain the Examiner’s rejection of claims 25, 26, 31, and 33. Rejection 4, claim 34, obviousness. The Examiner rejects claim 34 as obvious over Bruckbauer in view of Holmes and Elcik. Final Act. 7. To the extent Appellant again raises arguments raised with respect to claims 1 and 27 (Appeal Br. 15–16), those arguments are unpersuasive for the reasons we explain above. To the extent Appellant argues that the Examiner improperly combines teachings of the three references (id.), this argument is unpersuasive because Appellant does not dispute the Examiner’s stated reason why a person of skill in the art would have combined the reference’s teaching. Final Act. 6–7. We, thus, sustain this rejection. Objections. The Examiner objects to certain claims based on an informality. Final Act. 2. Appellant disputes the objection. Appeal Br. 16. Decisions an examiner makes during examination of a discretionary, procedural, or nonsubstantive nature not directly connected with the merits of issues involving rejections are typically reviewable by petition under 37 CFR § 1.181 to the Director, not by appeal. In re Berger, 279 F.3d 975, 984‒85 (Fed. Cir. 2002). Here, we decline to address the Examiner’s objection because it is of a discretionary, procedural, or nonsubstantive nature. Appeal 2019-005091 Application 14/122,208 10 DECISION SUMMARY In summary:4 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 8, 10, 11, 12, 17, 21, 23, 27, 28, 40, 41 103 Bruckbauer 1, 8, 10, 11,12, 17, 21, 23, 27, 28, 40, 41 14 103 Bruckbauer, Mizuno 14 25, 26, 31, 33 103 Bruckbauer, Holmes 25, 26, 31, 33 34 103 Bruckbauer, Holmes, Elcik 34 Overall Outcome 1, 8, 10, 11, 12, 14, 17, 21, 23, 25– 28, 31, 33, 34, 40, 41 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 4 As explained above, we decline to address the Examiner’s objection.