Ex Parte Butler et al

Board of Patent Appeals and Interferences

Dec 22, 2008

10749259 (B.P.A.I. Dec. 22, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES R. BUTLER, PAUL J. BURAS,
and WILLIAM LEE
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Appeal 2008-2800
Application 10/749,259
Technology Center 1700
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Decided: December 22, 2008
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Before THOMAS A. WALTZ, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Pursuant to 37 C.F.R. § 41.52, on September 10, 2008, Appellants
timely requested a rehearing (hereafter “Request”) of our August 29, 2008,
Decision on Appeal (“Decision”), wherein this merits panel affirmed the
Appeal 2008-2800
Application 10/749,259

Examiner’s rejection of claims 1-3, 5-11, 12-20, 23-24, 26, 28, 30-32, 35-37,
39-47, 49 and 50 under 35 U.S.C. § 103(a) as unpatentable over Guo.
Appellants request a rehearing on grounds that this panel overlooked
the fact that claims 23, 24, 26, 35-37, and 39 require that the asphalt mixture
includes ground tire rubber, while Guo does not teach, show or suggest
utilizing ground tire rubber in an asphalt mixture (Request 2). Appellants
assert this lack of teaching in Guo was discussed in the Appeal Brief filed
December 22, 2006, third paragraph. Id.
An Appellant may request a rehearing, and the request “must state
with particularity the points believed to have been misapprehended or
overlooked by the Board.” 37 C.F.R. § 41.52(a)(1). But, “[a]rguments not
raised in the briefs before the Board and evidence not previously relied upon
in the brief and any reply brief(s) are not permitted in the request for
rehearing except as permitted in paragraphs (a)(2) and (a)(3) of this section.”
Id.
In the relevant portion of their Brief (third paragraph), Appellants had
stated,
Third, Guo does not teach that adding from about
0.05 wt% up to 5 weight % of a metal oxide
selected from Groups IIA and IIB of the Periodic
Table to an asphalt, polymer, and ground tire
rubber (GTR) composition improves the
homogeneity of the asphalt composition as
compared with the compatibility of an identical
asphalt composition having a lesser metal oxide
amount, as recited in the pending claims. See
Butler Claim 23 et seq. and Claim 49 et seq.
App. Br. 7 (Dec. 22, 2006) [emphasis in original], see also Supp. App. Br.
10 (Mar. 13, 2007).

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Appeal 2008-2800
Application 10/749,259

Appellants’ argument in their Brief clearly was directed to whether
the prior art taught improving the homogeneity of an asphalt composition by
adding an excess of metal oxides. Appellants did not dispute or argue
whether the prior art taught or suggested an asphalt mixture comprising
ground tire rubber. Furthermore, Appellants recognized that “[t]he
Examiner further states that the incorporation of the ground tire rubber
(GTR) is suggested by the dry rubber at ‘column 3 lines 34+’,” citing page
4, ll. 2-4, of the Office action dated Dec. 12, 2005 (Supp. App. Br. 9).
However, Appellants did not dispute or contest this factual finding in any
brief before the filing of this Request.
Accordingly, we determine that Appellants are seeking to introduce a
new argument not previously raised in their Briefs. We further determine
that neither of the exceptions in paragraphs (a)(2) or (3) of 37 C.F.R. § 41.52
apply. This new argument is not permitted in this Request. Thus, we do not
find any points overlooked or misapprehended in our Decision.
Therefore, the Request for Rehearing is denied.
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)(1)(iv).

DENIED

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FINA TECHNOLOGY INC
P.O. BOX 674412
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