Ex Parte ONG et al

Patent Trial and Appeal Board

Nov 6, 2018

14837575 (P.T.A.B. Nov. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/837,575 08/27/2015
23575 7590 11/08/2018
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
FIRST NAMED INVENTOR
Frank Shaode ONG
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.P72897 A 7212
EXAMINER
ZEMEL, IRINA SOPJIA
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
11/08/2018 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@patentandtm.com
cortese@patentandtm.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK SHAO DE ONG, STEP AN MUESSIG,
DARREN GAMBATESA, JAMES C. SMITH, RAYMOND PETE,
RICK PAPONETTI, and MARK A. BURY
Appeal2018-001230
Application 14/837,575
Technology Center 1700
Before GEORGE C. BEST, JEFFREY R. SNAY, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2018-001230
Application 14/837,575
The claimed invention is principally directed to a method of
expanding expandable polymeric microspheres and a method of
manufacturing a cementitious composition including expanding expandable
polymeric microspheres. Spec. 1. Independent claim 1 is illustrative of the
subject matter on appeal and is reproduced below:
1. A method of expanding expandable polymeric
microspheres comprising contacting an aqueous slurry
comprising unexpanded, expandable polymeric microspheres
with steam proximate to and/or during manufacture of a
cementitious composition.
Independent claims 9 and 11 are directed to methods of manufacturing
a cementitious composition or cementitious article by expanding expandable
polymeric microspheres as recited in claim 1.
Appellant1 (see generally App. Br.) requests review of the following
rejections from the Examiner's Final Action:
I. Claims 1-6 rejected under pre-AIA 35 U.S.C. § I02(b) as
anticipated by Masuda (US 2009/0149559 Al, published June 11, 2009).
II. Claims 1-6 and 8 rejected under pre-AIA 35 U.S.C. § 102(b) as
anticipated by Georgeau (US 4,005,033, issued January 25, 1977).
III. Claims 1-5 rejected under pre-AIA 35 U.S.C. § I02(b) as
anticipated by Edgren (US 4,513,106, issued April 23, 1985).
IV. Claims 1-5 rejected under pre-AIA 35 U.S.C. § I02(b) as
anticipated by Sasoi (WO 03/051793 A2, published June 26, 2003).
1 Construction Research & Technology, GmbH is the Applicant/ Appellant.
Construction Research & Technology, GmbH is also identified as the real
parties in interest. App. Br. 3. Appellant is a limited liability company
organized under the laws of the country of Germany, and is a subsidiary of
BASF SE, a corporation organized under the laws of the European Union.
Id.
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Application 14/837,575
V. Claims 1-7 and 9-13 rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Masuda.
VI. Claims 1-6 and 8-20 rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Georgeau.
Appellant relies on the same line of arguments to address all
anticipation rejections of independent claim 1 (Rejections I-IV) and of
dependent claim 6 (Rejections I and II). See generally App. Br. Appellants
also rely on this same line of argument to address the obviousness rejections
of independent claims 1, 9, 11, and dependent claim 6 (Rejections V and
VI). Id. Accordingly, we select claim 1 as representative of the subject
matter for review on appeal and decide the appeal as to all grounds of
rejection based on the arguments made by Appellant in support of
patentability of claim 1.
OPINION2
Anticipation Rejections I-IV
After review of the respective positions provided by Appellant in the
Appeal and Reply Briefs and the Examiner in the Final Action and the
Answer, we AFFIRM the Examiner's prior art rejections of claims 1---6 and 8
for the reasons presented by the Examiner. Because Appellant relies on the
same line of argument in addressing all anticipation rejections, we focus our
discussion on the anticipation rejection of claims 1 and 6 over Masuda for
the purposes of this opinion with the understanding that the discussion
2 We refer to the Examiner's Non-Final Action of February 2, 2017 for the
respective statements of the anticipation and obviousness rejections. See
Final Act. 2-3.
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Application 14/837,575
applies equally to all anticipation rejections of these claims, as respectively
presented by the Examiner. We add the following for emphasis.
Appellant does not dispute the Examiner's specific findings that
Masuda describes the claimed process. Non-Final Act. 4---6; see App. Br. 6-
8. Instead, Appellant argues the Examiner's interpretation of the recitation
"proximate to and/or during manufacture of a cementitious composition" in
claim 1 is unreasonable because the Examiner ignores that the contested
language, as defined on page 7 of the Specification, adds meaning and life to
the claim. App. Br. 7-8. According to Appellant, the cited portion of the
Specification defines the contested language by disclosing that the expansion
occurs at a time and place which substantially minimizes costs of providing
expanded microspheres for inclusion in cementitious compositions. App.
Br. 7-8. Appellant contends that the Examiner has not shown that Masuda
describes this feature of claim 1. App. Br. 8.
We are unpersuaded of Examiner error for the reasons provided in the
Final Action and the Answer. Moreover, in order to anticipate, a reference
must identify something falling within the claimed subject matter with
sufficient specificity to constitute a description thereof within the purview of
§ 102. In re Schaumann, 572 F.2d 312, 317 (CCPA 1978). It is well
established that specific examples of the claimed subject matter are not
necessary to establish anticipation. Rather, to anticipate, one skilled in the
art must be able to "at once envisage" the claimed subject matter in the prior
art disclosure. In re Petering, 301 F.2d 676,681 (CCPA 1962). Further, in
determining whether a reference anticipates the subject matter recited in a
claim, "it is proper to take into account not only specific teachings of the
reference but also the inferences which one skilled in the art would
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Application 14/837,575
reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826
(CCPA 1968).
Masuda discloses an exemplary process of making molded ceramic
articles via extrusion molding from a mixture of expanded microspheres and
ceramic material. Masuda ,r,r 282-284. Given this disclosure and that
Masuda discloses making a cementitious composition by mixing a base
component with heat-expandable microspheres and/or hollow particulates
(id. ,r 182), a person of ordinary skill would have drawn a reasonable
inference that Masuda envisages "contacting an aqueous slurry comprising
unexpanded, expandable polymeric microspheres with steam proximate to
and/or during manufacture of a cementitious composition" so the expansion
of the micro spheres occurs at a time and place desirable for inclusion in
cementitious compositions, as argued by Appellant. Thus, Appellant has not
adequately explained how the claimed invention distinguishes from this
disclosure.
Accordingly, we affirm the Examiner's anticipation rejections of
claims 1-6 and 8 (Rejections I-IV) for the reasons presented by the
Examiner and given above.
Obviousness Rejections V and VI
Because Appellant relies on the same line of argument used in the
anticipation rejections to address the obviousness rejections of claims 1, 6, 9,
and 11, we also affirm the Examiner's obviousness (Rejections V and VI)
for the reasons presented by the Examiner and given above. 3
3 Appellant presented a separate argument for claim 11 concerning the
prewetting of the microspheres. App. Br. 17. In response, the Examiner
directed Appellant's attention to page 8 of the Non-Final Action where the
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Appeal2018-001230
Application 14/837,575
DECISION
The Examiner's prior art rejections under 35 U.S.C. §§ 102(b) and
103(a) of claims 1-20 are affirmed.
TIME PERIOD
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
issue was addressed. Appellant did not rebut the Examiner's response in the
Reply Brief. See generally Reply Br. Therefore, we find no error in the
Examiner's response.
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