Ex parte Freed

Board of Patent Appeals and Interferences

Dec 22, 1999

08336529 (B.P.A.I. Dec. 22, 1999)

Application for patent filed November 9, 1994. 1
According to appellant, the application is a continuation of
Application No. 08/112,431, filed August 26, 1993, now
abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte W. WAYNE FREED
____________
Appeal No. 1997-2071
Application No. 08/336,5291
____________
ON BRIEF
____________
Before JOHN D. SMITH, PAK, and WALTZ, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1 through 16, 18 through
29, 43 and 44, which are the only claims remaining in this
application.
Appeal No. 1997-2071
Application No. 08/336,529
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According to appellant, the invention is directed to a
method for inhibiting organisms throughout a concrete product,
and the resultant product, by introducing an antimicrobial
agent into a plurality of fibers before the fibers are blended
with the concrete to form a reinforced concrete product
(Brief, page 2). Claims 1 and 18 are illustrative of the
subject matter on appeal and are reproduced below:
1. A reinforced concrete product comprising:
concrete; and
a plurality of fibers, said fibers individually
including an effective amount of at least one
antimicrobial agent and uniformly dispersing said
antimicrobial agent throughout the concrete product to
inhibit organisms therein.
18. A method for inhibiting organisms throughout a concrete
product comprising the steps of:
introducing at least one antimicrobial agent to a
plurality of fibers; and
subsequently distributing said fibers throughout the
concrete product during formation of the concrete
product, thereby uniformly dispersing said antimicrobial
agent throughout said the concrete product.
The examiner has relied upon the following references as
evidence of obviousness:
Zonsveld et al. (Zonsveld) 3,591,395 July 6, 1971
Goldfein 3,645,961 Feb. 29, 1972
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Application No. 08/336,529
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Morrison (Morrison ‘556) 3,959,556 May 25, 1976
Morrison (Morrison ‘853) 4,343,853 Aug. 10, 1982
This merits panel of the Board cites and discusses the
following two references of record:
Smith et al. (Smith) 4,961,790 Oct. 9,
1990
Valle et al. (Valle) 5,203,629 Apr. 20,
1993
All of the appealed claims stand rejected under 35 U.S.C.
§ 103 as unpatentable over Zonsveld in view of Morrison ‘556
(Answer, page 3) or Goldfein in view of Morrison ‘853 (Answer,
page 4). We reverse both of the examiner’s rejections and
remand this application to the examiner for reasons which
follow.
OPINION
A. The Rejections under 35 U.S.C. § 103
The examiner finds that Zonsveld discloses products with
improved strength made of concrete with polymeric fibers used
for reinforcement (Answer, page 4). Similarly, the examiner
applies Goldfein for the disclosure of a concrete product with
a plurality of fibers uniformly distributed throughout the
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Application No. 08/336,529
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mixture (Answer, page 5). Appellant does not contest these
findings and admits that “[i]ncorporating fibers into concrete
has long been known in the art.” (Brief, page 5). However,
appellant argues that his invention uses fibers as a carrier
for the antimicrobial agent so that this agent can be
effectively and efficiently dispersed throughout the concrete
(Id.).
The examiner applies Morrison ‘556 to show “antimicrobial
fibers particularly polypropylene and polyethylene” (Answer,
page 4). From the reference evidence of Zonsveld and Morrison
‘556, the examiner concludes
It would have been obvious to one of ordinary skill
in the art at the time the invention was made to use
the anti microbial fibers of Morrison [sic, ‘556] in
Zonsveld because they would provide
reinforcement and would be equivalent to the fibers of
Zonsveld but they would be inherently antimicrobial and
thus provide fungicidal action within the concrete
product and would be expected to function as the claimed
product. (Answer, page 4).
The examiner similarly applies Morrison ‘853 to show
antimicrobial fibers with the ability of the antimicrobial
agent to migrate to the surface of the fiber in the presence
of moisture (Answer, page 5). From this reference evidence of
Goldfein and Morrison ‘853, the examiner concludes
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It would have been obvious to one of ordinary skill
in the art at the time the invention was made to use
the fibers, antimicrobial fibers, of Morrison ‘853
in Goldfein and produce the claimed reinforced concrete
product because each reference suggests the same
kind of fibers with about the same length which are
known to reinforce concrete compositions but those
fibers of Morrison ‘853 are antimicrobial and would
be expected to function as fungicides in the claimed
composition of applicant. (Answer, page 5).
We agree with appellant’s argument that the examiner has
failed to present any motivation, teaching or suggestion to
combine the references as proposed (Brief, page 5). In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999); In re Rouffet, 149 F.3d 1350, 1356, 47 USPQ2d 1453,
1456 (Fed. Cir. 1998). Whether the evidence of a teaching or
suggestion to combine comes from the references themselves,
the knowledge of one of ordinary skill in the art, or from the
nature of the problem to be solved, the showing of evidence
must be clear and particular. Dembiczak, 175 F.3d at 999, 50
USPQ2d at 1617. Morrison ‘556 discloses the use of
antimicrobial synthetic fibers with natural fibers in
producing garments where the antimicrobial agent will transfer
from the synthetic to the natural fiber (column 2, lines 14-
34). Morrison ‘853 is a variation of Morrison ‘556 (see
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column 1, lines 39-67) and achieves the same antimicrobial
effect in garments by constructing a two-face fabric using
synthetic yarn which has been treated with an antimicrobial
agent as one face (column 1, line 67-column 2, line 11). We
determine that the examiner has failed to present any
reasoning or evidence of any suggestion, teaching or
motivation in the references to support the proposed
combination, i.e., why would one of ordinary skill in the art
have used the antimicrobial fibers of the garments of Morrison
‘556 or ‘853 in the concrete compositions of Zonsveld or
Goldfein, respectively. The examiner has only pointed to
generalities such as the fiber material, the fiber length, and
the ability of the antimicrobial agent to migrate to the
surface of the fiber in the presence of moisture (Answer,
pages 4-5) but has failed to present any particular reasons or
evidence to support the proposed combination of references.
For the foregoing reasons, we determine that the examiner
has failed to establish a prima facie case of obviousness in
view of the reference evidence presented. Accordingly, the
rejections of the claims on appeal under 35 U.S.C. § 103 are
reversed.
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B. Remand
This application is being remanded to the examiner for
appropriate action. The examiner should determine the scope
of the claimed subject matter, especially claims 1, 43 and 44,
directed to the reinforced concrete product, and compare the
claimed subject matter with the disclosure and teachings of
Smith and Valle, previously made of record. The examiner
should also note the product-by-process form of claims 43 and
44 and the lesser burden of proof needed to establish a prima
facie case of obviousness. See In re Fitzgerald, 619 F.2d 67,
70, 205 USPQ 594, 596 (CCPA 1980); In re Fessman, 489 F.2d
742, 744, 180 USPQ 324, 326 (CCPA 1974).
Smith discloses that compositions of fiber reinforcement
and hydraulic cement are well known (column 1, lines 21-26;
see also Brief, page 5). Smith further teaches the addition
of admixtures to these well known compositions, with an
admixture used to modify the properties of the concrete in
such a way to make it more suitable for a particular purpose
(column 1, lines 26-28). Smith teaches that fungicidal,
germicidal and insecticidal admixtures can be used in
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reinforced concrete compositions (column 6, lines 16-21).
Smith further teaches that the ingredients of the admixture
are suspended or dissolved in the concrete mixture by
sufficient agitation or stirring (column 7, lines 56-64).
Valle similarly discloses adding admixtures to concrete
compositions (column 1, lines 21-26), including fungicidal,
germicidal and insecticidal admixtures (column 5, line 67-
column 6, line 4). Valle further teaches that the admixture
is uniformly distributed in the concrete mixture (column 3,
lines 4-10).
Smith and Valle do not disclose or teach the method of
producing the concrete product as claimed by appellant (e.g.,
see claim 18). However, with regard to claims 1, 43, and 44
on appeal, appellant is claiming a product. The examiner
should compare the scope of the independent product claims,
and claims dependent thereon, with the product disclosed by
the prior art Smith and Valle references. If the prior art
discloses a product that appears to be either identical with
or only slightly different from the products claimed, a
rejection is proper. Fitzgerald, 619 F.2d at 70, 205 USPQ at
596; see also In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
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1657 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255, 195
USPQ 430, 433 (CCPA 1977).
Accordingly, this application is remanded to the examiner
for review and consideration of the foregoing matters.
C. Summary
The rejection of the appealed claims under § 103 as
unpatentable over Zonsveld in view of Morrison ‘556 is
reversed. The rejection of the appealed claims under § 103 as
unpatentable over Goldfein in view of Morrison ‘853 is
reversed.
The decision of the examiner is reversed. This
application is remanded to the examiner for appropriate action
as noted above.
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Application No. 08/336,529
10
This application, by virtue of its "special" status
requires an immediate action. Manual of Patent Examining
Procedure
§ 708.01 (7th ed., July 1998). It is important that the Board
be informed promptly of any action affecting the appeal in
this case.
REVERSED/REMANDED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Appeal No. 1997-2071
Application No. 08/336,529
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lp
Appeal No. 1997-2071
Application No. 08/336,529
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DONALD J BOBAK
RENNER KENNER GRIEVE BOBAK
TAYLOR & WEBER
1610 FIRST NATIONAL TOWER
AKRON OH 44308-1456
Leticia
Appeal No. 1997-2071
Application No. 08/336,529
APJ WALTZ
APJ PAK
APJ JOHN D. SMITH
DECISION: REVERSED/REMAND
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: January 19, 2001
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT