Ex Parte Buras

Board of Patent Appeals and Interferences

Aug 23, 2006

10357977 (B.P.A.I. Aug. 23, 2006)

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The opinion in support of the decision being entered today was not written for
publication in a law journal and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PAUL J. BURAS
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Appeal No. 2006-2119
Application No. 10/357,977
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ON BRIEF
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Before GARRIS, TIMM, and JEFFREY T. SMITH, Administrative Patent Judges.

JEFFREY T. SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals the Examiner's final rejection of claims 2 to 6, 8, 9, 16, and 21 to 26,
all the of the pending claims. We have jurisdiction under 35 U.S.C. § 134.
Appeal No. 2006-2119
Application No. 10/357,977

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CITATION OF REFERENCES
The Examiner relies upon the following references in rejecting the claims on appeal:
Defoor et al. (Defoor) 6,025,418 Feb. 15, 2000
Liang 6,429,241 B1 Aug. 6, 2002
Rached et al. (Rached) 6,713,540 B2 Mar. 30, 2004
filed Mar. 8, 2002)

GROUNDS OF REJECTION

The Examiner has rejected the subject matter of claim 8 under 35 U.S.C. § 112, first and
second paragraphs (Answer, page 3). The Examiner has also rejected the subject matter of
claims 2 to 4, 8, 9, and 21 to 26 under 35 U.S.C. § 102(e) as anticipated by Liang; and claims 2
to 6, 8, 9, 16, and 21 to 26 under 35 U.S.C. § 103(a) as obvious over the combination of Liang
and either of Defoor or Rached (Answer, pages 4 and 5).
Upon careful consideration of the claims, specification, and applied prior art, including
all of the arguments advanced by both the Examiner and Appellant in support of their respective
positions, we affirm all of the above-stated rejections.
Appellant's invention relates to polymer modified asphalt compositions and methods of
preparing the same. Appellant asserts that improvements in rubber/asphalt compatibility may be
obtained by cross-linking with certain cross-linkers at temperatures higher than those normally
employed (Brief, page 2). Representative claim 22, as presented in the Appendix to the Brief,
appears below:
22. A polymer modified asphalt compositions formed from the method comprising:

mixing asphalt and an elastomeric polymer to form a mixture:

Appeal No. 2006-2119
Application No. 10/357,977

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adding a crosslinker to the mixture at a crosslinking temperature of between 185°C
and 190°C to form the polymer modified asphalt composition, wherein the crosslinker is selected
from the group consisting of a sulfur-containing derivative, elemental sulfur and mixtures
thereof; and

determining a top and bottom softening point of the polymer modified asphalt
composition and wherein the crosslinking temperature is adapted to control the compatibility of
the polymer modified asphalt composition, resulting in a difference between the top and bottom
softening points of 20°C or less.

Appellant has failed to respond to the Examiner's rejections under 35 U.S.C. § 112, first
paragraph or second paragraph (see Briefs, generally). Since Appellant has failed to address the
Examiner's rejections, we summarily sustain the afore-stated rejections (see the Manual of Patent
Examining Procedure (MPEP) § 1205.02 (8th ed., October 2005)).
Upon careful review of the respective positions advanced by the Appellant and the
Examiner regarding the rejections under §§ 102 and 103, we find that the Examiner's rejections
are well founded inasmuch as they are supported by the prior art evidence relied upon and in
accordance with the current patent jurisprudence. Accordingly, we will sustain the Examiner's
rejections for essentially those reasons expressed in the Answer.
Concerning the rejection under § 102 over Liang, Appellant's principal argument is that
Liang does not recognize controlling the compatibility of the composition via cross-linking
temperature. (Brief, page 3). However, we agree with the Examiner that Liang teaches the
addition of the cross-linker at a temperature of 185°C. (See Examples 3 to 6). Thus, the
invention of Liang produces a bituminous composition that is formed under the same conditions
as specified by the appealed claims.1 We note that a person of ordinary skill in the art repeating

1 Appellant has not presented separate arguments for the claims on appeal. Thus, we select claim 21 as
representative of the rejected claims.
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Examples 3 to 6 of Liang adding a cross-linker at a temperature of 185°C as specified in the
examples would have been practicing the claimed invention. See Mehi/Biophile Int'l Corp. v.
Milgraum, 192 F.3d 1362, 1366, 52 USPQ2d 1303, 1307 (Fed. Cir. 1999) ("Where, as here, the
result is a necessary consequence of what was deliberately intended, it is of no importance that
the article's authors did not appreciate the results."); In re Woodruff, 919 F.2d 1575, 1578,
16 USPQ2d 1934, 1936 (Fed. Cir. 1990) ("It is a general rule that merely discovering and
claiming a new benefit of an old process cannot render the process again patentable."); accord
In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). As such, Appellant's
description of the cross-linking temperature as "adapted to control the compatibility of the
modified polymer asphalt composition" does not serve to distinguish the claimed invention from
Liang.
Regarding the rejection under 35 U.S.C. § 103(a), Appellant presents the same argument
discussed above. As stated above, Liang's disclosure of adding the cross-linker at a temperature
of 185°C renders the claimed subject matter unpatentable. The examiner presented the
secondary references to Defoor and Rached as evidence of cross-linkers known in the art.
Appellant has not specifically addressed the Examiner's motivation for including the cited
references. Rather, Appellant argues that the additional references do not supply the missing
limitation of a narrow cross-linking temperature range to control the compatibility of the
composition. This argument is not persuasive for the reasons set forth above and in the Answer.
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Appellant asserts (Reply Brief, page 2) that the examples in the specification demonstrate
unexpected results are achieved at temperatures of between 185°C to 190°C. This argument and
evidence is not persuasive to overcome the Examiner's rejection under § 102.2
Based on consideration of the entire record, we affirm the Examiner's rejections under
§§ 102 and 103.
CONCLUSION
The examiner's rejection under 35 U.S.C. § 112, first and second paragraphs, and the
prior art rejections under 35 U.S.C. §§ 102 and 103 are affirmed.

2 Anticipation under § 102 is a question of fact which is not rebuttable by evidence of unexpected superior
properties. See, for example, In re Malagari, 499 F.2d 1297, 1302, 182 USPQ 549, 553 (CCPA 1974), wherein the
Court stated that anticipation cannot be overcome by evidence of unexpected results or teaching away in the art.
Appeal No. 2006-2119
Application No. 10/357,977

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No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a)(1)(iv) (2004).

AFFIRMED

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CATHERINE TIMM ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )

JTS:clm

Appeal No. 2006-2119
Application No. 10/357,977

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David J. Alexander
Fine Technology Inc.
P.O. Box 674412
Houston, TX 77267-4412