Ex Parte Hampton

Patent Trial and Appeal Board

Mar 27, 2015

12330882 (P.T.A.B. Mar. 27, 2015)

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.
12/330,882 12/09/2008 Jonathan E. Hampton X-9738 1605
615 7590 03/27/2015
JOHN S. HALE
GIPPLE & HALE
6718 Whittier Avenue
Suite 200
MCLEAN, VA 22101
EXAMINER
ROYSTON, ELIZABETH
ART UNIT PAPER NUMBER
1747
MAIL DATE DELIVERY MODE
03/27/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JONATHAN E. HAMPTON
____________

Appeal 2013-002714
Application 12/330,882
Technology Center 1700
____________

Before JEFFREY T. SMITH, GEORGE C. BEST,
and JEFFREY W. ABRAHAM, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 through 19 and 25 through 28. We have jurisdiction under
35 U.S.C. § 6.
Appellant’s invention is directed to methods of preparing aggregate
material. App. Br. 3–8. Claim 1 illustrates the subject matter on appeal and
is reproduced below:
1. A method of preparing aggregate material, said
method comprising:
providing a waste material in granular form;
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then mixing the waste material with an acid to obtain a
first resultant product in which the waste material is thoroughly
wetted by the acid;
then mixing the first resultant product with a metal oxide
to obtain a second resultant product; and
then pelletizing the second resultant product to obtain the
aggregate material.

The Examiner relied on the following references in rejecting the
appealed subject matter:
Gustin US 5,196,620 Mar. 23, 1993
Wagh (Wagh ’815) US 5,830,815 Nov. 3, 1998
Singh US 5,846,894 Dec. 8, 1998
Wagh (Wagh ’258)1 US 2006/0235258 A1 Oct. 19, 2006
As a preliminary matter, the Examiner maintains2 the following
rejections not appealed by Appellant (Ans. 4–5, 38):
I. Claims 26–28 rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
II. Claim 27 rejected under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
Because Appellant has not rebutted these rejections (see Appeal Brief,
generally), we summarily affirm the Examiner’s rejections of claims 26–28
under 35 U.S.C. § 112, first paragraph (Rejections I and II). Appellant must
identify reversible error in the Examiner’s rejections. See In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (“[E]ven assuming that the examiner had

1 Both the Examiner and Appellant acknowledge Wagh ’258 incorporates
Wagh ’815 by reference. Final Act. 16; App. Br. 8.
2 The Examiner withdrew a rejection of claims 2, 6, 17, 19, and 26–28 under
35 U.S.C. § 112, 1st paragraph (written description) on a different basis. See
Ans. 38 (citing Advisory Action (April 24, 2012).
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failed to make a prima facie case, the Board would not have erred in framing
the issue as one of ‘reversible error.’”).
Appellant (App. Br. 8) requests review of the following rejections
from the Examiner’s final office action:
III. Claims 1–10, 12, 14–19, 25, 26, and 28 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Singh and Gustin.
IV. Claims 11 and 13 rejected under 35 U.S.C. § 103(a) as unpatentable
over Singh, Gustin, Wagh ’258, and Wagh ’815.
V. Claims 1–19, 25, 26, and 28 rejected under 35 U.S.C. § 103(a) as
unpatentable over Singh, Wagh ’258, Wagh ’815, and Gustin.
VI. Claims 26–28 rejected under 35 U.S.C. § 103(a) as unpatentable over
Wagh ’258, Wagh ’815, Gustin, and Singh.

OPINION
Appealed Prior Art Rejections
Rejections IV‒VI (Claims 1‒19 and 25‒28)3
The dispositive issue on appeal is: Did the Examiner err in
determining that the combined teachings of Singh, Wagh ’258, Wagh ’815,
and Gustin would have led one skilled in the art to a method comprising a

3 Rejections V–VI both rely on the combined teachings of Singh, Wagh
’258, Wagh ’815, and Gustin, and the Examiner follows a similar line of
reasoning in presenting the rejections. See Final Act. 18–36, generally.
With respect to Rejection IV, The Examiner relies on the Wagh references to
primarily meet limitations of claim 11 (moisture sensor) and 13 (auger
mixer). Id. at 16–18. Appellant, however, presents substantially the same
line of arguments in addressing these rejections, particularly with respect to
the Wagh references not teaching the claimed order for the addition of the
acid and the oxide. See Appeal Brief, generally. Therefore, we focus our
discussion on Rejection V, which encompasses the majority of the claims
before us on appeal, with the understanding that our analysis also applies to
Rejections IV and VI.
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stepwise addition of an acid to waste material to wet the waste material and
then mixing a metal oxide with the wetted waste material as required by the
subject matter of independent claims 1, 9, and 26?
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s prior art rejections of claims 1–19
and 25–28 (Rejections IV–VI) for the reasons presented by the Examiner.
Independent claims 1, 9, and 26 require the step-wise addition of an
acid to waste material followed by the addition of an oxide prior to
pelletizing the waste material to obtain an aggregate material.4
The Examiner found Singh teaches a method of preparing a shaped
material by providing waste material in granular form, mixing the waste
material with a metal oxide followed by mixing the waste and metal oxide
with an acid to completely encapsulate or coat the waste and forming the
resultant product into a desired shape. Final Act. 18; Singh col. 4, ll. 41–60;
col. 5, ll. 8–12. The Examiner found Singh does not disclose the steps of
mixing the waste material with an acid to obtain a first resultant product,
mixing the first resultant product with a metal oxide to obtain a second
resultant product. Final Act. 18. The Examiner further found Singh does
not disclose pelletizing the second resultant product to obtain the aggregate
material. Final Act. 20.
With respect to the order of addition of the oxide and acid to the
waste, the Examiner found the Wagh references disclose two methods of
preparing shaped material, where one method follows the step-wise addition
of the oxide and acid (phosphoric acid) as disclosed in Singh (Wagh ’815

4 We limit our discussion to the independent claims 1, 9, and 26. However,
claims argued separately will be addressed separately.
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col. 4, ll. 43–61), and the other method reverses the order of the addition of
the components (Wagh ’258 Table IV, ¶¶ 24–25). Final Act. 18–19.
Further, Wagh ’258 discloses the order of addition of the oxide and the acid
is dependent on the pH of the waste treated. Final Act. 19; Wagh ’258 ¶ 25.
The Examiner found it would have been obvious to one skilled in the art to
modify the process of Singh by adding the acid to the waste material having
high pH to stabilize the waste before adding the oxide, as disclosed by Wagh
’258. Final Act. 19; Wagh ’258 ¶ 25.
With respect to pelletizing the waste material, the Examiner found
Gustin teaches pelletizing waste (fly ash/bottom ash) mixed with binders to
form aggregate material. Final Act. 20; Gustin Abstract, col. 4, ll. 62–68,
col. 11, ll. 53–60. The Examiner found it would have been obvious to one
skilled in the art to form aggregate material with the coated waste material of
the combined teachings of Singh and the Wagh references with Gustin’s
method because Singh and Gustin are directed to making construction
material out of waste. Final Act. 20; Singh col. 2, ll. 20–43; Gustin col. 5,
ll. 18–32.
Appellant argues Singh discloses an extremely fast reaction that forms
Newberyite and that Singh adds boric acid to slow down the reaction to
permit the addition of the powder waste material prior to the Newberyite
hardening. App. Br. 17–18. According to Appellant, Singh does not
agglomerate the material but instead makes a flowable or blowable mixture
for molding and, by slowing down the reaction between the oxide particles
and phosphoric acid, the mixture can be molded before setting. Id. at 18.
Appellant also argues the claimed invention does not add boric acid. Id.
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We are unpersuaded by this argument and agree with the Examiner’s
finding that the addition of boric acid in the process of Singh is optional. As
noted by the Examiner, Singh discloses addition of boric acid when a slower
reaction is desired. Ans. 38–39; Singh col. 4, ll. 3–5; col. 5, ll. 1–3. Given
this disclosure, Appellant has not adequately explained why one skilled in
the art would have understood Singh’s disclosure as requiring the presence
of boric acid. Moreover, Appellant’s claim language does not exclude the
addition of boric acid.
Appellant argues Gustin makes pelletized aggregates out of already
formed particles using a completely different binder. App. Br. 18.
We are also unpersuaded by this argument and agree with the
Examiner’s finding that Gustin discloses pelletizing of treated waste
material. Ans. 47; Gustin Abstract, col. 4, ll. 62–68, col. 11, ll. 53–60.
Appellant argues Wagh ’258 does not disclose the claimed order of
addition of acid and oxide components. App. Br. 18. Instead, Appellant
argues Wagh ’258 was cited to meet limitations present in claims 11
(moisture sensor) and 13 (auger mixer), both dependent from independent
claim 9. Id. at 18–19.
We are unpersuaded by these arguments as well and agree with the
Examiner’s determination of obviousness. Final Act. 18–20; Ans. 46. As
noted by the Examiner, Wagh ’258 discloses treating waste material before
shaping it by first adding an acid and subsequently adding an oxide. Final
Action 19; Wagh ’258 Table IV. As also noted by the Examiner, Appellant
did not address the reasons for which the Examiner relied on Wagh ’258.
Ans. 46. Given that Wagh ’258 discloses the order of addition of the oxide
and the acid as dependent on the pH of the waste material (Wagh ’258 ¶ 25),
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Appellant has not presented arguments or analysis establishing error in the
Examiner’s obviousness rejection.
With respect to claims 6 and 19, Appellant argues Wagh ’258 does
not teach the claimed weight ratio of oxide to phosphoric acid. App. Br. 19.
We are again unpersuaded as the Examiner did not rely on Wagh ’258
to meet this limitation. Ans. 46. Instead, the Examiner relied principally on
the disclosure by Singh to teach the claimed ratio of oxide to phosphoric
acid. Ans. 41–43; Singh claims 4–7.
Appellant attached a Declaration under 37 C.F.R. § 1.132 by Terry L.
Mitchell (Declaration)5 to the Appeal Brief. However, Appellant provides
no discussion in the Appeal Brief of how the Declaration impacts the
rejections before us on appeal. The burden of showing unexpected results
rests on the person who asserts them. See In re Baxter Travenol Labs., 952
F.2d 388, 392 (Fed. Cir. 1991); In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). Appellant has not adequately met this burden. Thus, we do not reach
the sufficiency of the declaration.
Accordingly, we sustain the Examiner’s prior art rejections of claims
1–19 and 25–28 under 35 U.S.C. § 103(a) (Rejection IV–VI) for the reasons
given above and presented by the Examiner.

Rejection III (Claims 1–10, 12, 14–19, 25, 26, and 28)
Having determined that the teachings of Wagh ’258 and Wagh ’815
were necessary in sustaining the rejections discussed above, we reverse the
Examiner’s rejection of claims 1–10, 12, 14–19, 25, 26, and 28 under 35

5 The Declaration was made of record by the Examiner in the Final Office
Action of August 9, 2011. Final Act. 39–40.
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U.S.C. § 103(a) as unpatentable over Singh and Gustin (Rejection III)
because the rejection does not include the teachings of the Wagh references.
ORDER
The Examiner’s rejections of claims 26–28 under 35 U.S.C. § 112,
first paragraphs (Rejections I and II), are summarily affirmed.
The Examiner’s prior art rejections of claims 1–19 and 25–28 under
35 U.S.C. § 103(a) (Rejections IV–VI) are affirmed.
The Examiner’s prior art rejection of claims 1–10, 12, 14–19, 25, 26,
and 28 under 35 U.S.C. § 103(a) as unpatentable over Singh and Gustin
(Rejection III) is reversed.

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)(1).

AFFIRMED

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