Ex Parte Ingram

Patent Trials and Appeals Board

Feb 11, 2013

11001072 - (D) (P.T.A.B. Feb. 11, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/001,072 12/02/2004 James E. Ingram JR. DRI-001 8569
23353 7590 01/25/2013
RADER FISHMAN & GRAUER PLLC
LION BUILDING
1233 20TH STREET N.W., SUITE 501
WASHINGTON, DC 20036
EXAMINER
AUGHENBAUGH, WALTER
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
01/25/2013 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 JAMES E. INGRAM JR.
____________

Appeal 2011-012357
Application 11/001,072
Technology Center 1700
____________

Before BRADLEY R. GARRIS, MARK NAGUMO, and
DEBORAH KATZ, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 15, 22-37, and 39. We have jurisdiction under
35 U.S.C. § 6.

We AFFIRM.

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Application 11/001,072

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Appellant claims an elongated structural member comprising a filler
composite material including ground rubber particles and a binder of resin or
concrete, and a sleeve surrounding the filler composite material, wherein
steel components are absent from the ground rubber particles (claims 1, 15,
and 22).
Further details regarding the claimed subject matter are set forth in
representative claims 1, 15, and 22 which are the only independent claims on
appeal and which read as follows:
1. An elongated structural member comprising:

a filler composite material, said filler composite material
including ground rubber particles and a binder; and

a plastic sleeve surrounding said filler composite
material,

wherein the granular particle size for said ground rubber
particles ranges from 0.125 inches to 0.5 inches,

wherein said binder is a resin binder, ten percent by
volume of said filler composite material being said resin binder
and ninety percent by volume of said filler composite material
being said ground rubber particles, and

wherein steel components are absent from within said
ground rubber particles.

15. An elongated structural member comprising:

a filler composite material, said filler composite material
including ground rubber particles and a binder; and

a plastic sleeve surrounding said filler composite
material,
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wherein the granular particle size for said ground rubber
particles ranges from 0.125 inches to 0.5 inches,

wherein said binder is a concrete binder, ten to twenty
percent by volume of said filler composite material being said
concrete binder and eighty to ninety percent by volume of said
filler composite material being said ground rubber particles, and

wherein steel components are absent from within said
ground rubber particles.

22. An elongated structural member comprising:

a filler composite material including ground rubber
particles and a binder, said binder being from the group
consisting of a resin binder and a concrete binder; and

a sleeve surrounding said filler composite material,

wherein steel components are absent from within said
ground rubber particles.

Under 35 U.S.C. § 103(a), the Examiner rejects:
claims 1, 22-24, and 39 as unpatentable over Nevin (US 5,675,956,
issued Oct. 14, 1997) in view of Kvesic (US 6,821,623 B2, issued Nov. 23,
2004);
claims 15, 22, 25-29, 31-37, and 39 as unpatentable over Nevin in
view of Khais (US 5,634,599, issued Jun. 3, 1997); and
claim 30 as unpatentable over Nevin, Khais, and Shaneour (US
5,557,900, issued Sep. 24, 1996).
We will sustain each of these rejections for the reasons expressed in
the Answer and below.
Appeal 2011-012357
Application 11/001,072

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As a preliminary matter, we observe that the applied references evince
that the art under review would have been reasonably predictable to those
with ordinary skill at the time Appellant's invention was made. This
observation is consistent with the fact that Appellant does not present
evidence that the claimed invention yields unexpected results.

The Rejection based on Nevin and Kvesic

It is undisputed that independent claim 22 distinguishes from Nevin
solely by the requirement that "steel components are absent from within said
ground rubber particles." In Nevin, the rubber particles, which are obtained
by shredding used tires, contain steel components if the tires contain steel
components (col. 3, ll. 9-28). The Examiner concludes that it would have
been prima facie obvious to make the elongated structural member of Nevin
with rubber particles which do not contain steel components in view of the
Kvesic evidence that it was known in the prior art to make recycled rubber
products from recycled steel-free rubber particles (e.g., from tires) (Ans. 4).
Appellant argues that Nevin teaches away from steel components
being absent from within the ground rubber particles because Nevin
discloses that the tire components are believed to aid in bonding the cement
to the rubber chips or particles (see, e.g., App. Br. 22-23).
This argument is unpersuasive. As correctly explained by the
Examiner, Nevin's disclosure, including the above noted belief, does not
require the presence of steel components in the rubber particles and does not
criticize, discredit or otherwise discourage the use of rubber particles which
do not contain steel (Ans. para. bridging 12-13). Therefore, we share the
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Examiner's determination that Nevin does not teach away from using steel-
free rubber particles as urged by Appellant (id., citing In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004) (a disclosure which does not criticize, discredit,
or otherwise discourage the claimed solution does not teach away from the
solution)).
On the other hand, prima facie obviousness is supported by the
undisputed facts mentioned earlier and by established legal precedent. In
this latter regard, we assess the obviousness of a claim to a combination of
prior art elements by asking "whether the improvement is more than the
predictable use of prior art elements according to their established
functions." KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Here,
Nevin shows that the prior art included the claim 22 elements of an
elongated structural member (e.g., a pole) comprising a plastic sleeve
containing rubber particles and cement binder whereas Kvesic shows the
prior art included the claim 22 elements of a product comprising bound
rubber particles which do not contain steel components. Based on the record
before us, the claimed combination of these prior art elements yields no
more than the predictable use of such elements according to their established
functions.
Therefore, it is our determination that the Examiner has established a
prima facie case of obviousness for the subject matter defined by claim 22.
It is likewise undisputed that independent claim 1 also distinguishes
from Nevin by use of steel-free rubber particles and further by requiring
rubber particle sizes ranging from 0.125 inches to 0.5 inches (as
distinguished from Nevin's particle sizes ranging from ¾ inch minus), by
requiring a resin binder (as distinguished from Nevin's cement binder), and
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by requiring 10:90 volume % binder:rubber particles (as distinguished from
Nevin's preferred 25:75 volume % binder:rubber particles). With respect to
this claim, the Examiner additionally concludes that it would have been
prima facie obvious to replace Nevin's cement binder with the resin binder
taught by Kvesic and to provide Nevin with optimized rubber particle sizes
and volume percentages of resin binder:rubber particles (Ans. 4-5).
Appellant argues that the applied references teach away from using
Kvesic's resin for binding rubber particles in the plastic (e.g., PVC)
container (i.e., cylinder) of Nevin because no evidence has been presented
that the plastic such as PVC used by Nevin would have been able to
withstand the about 200°F to about 400°F molding temperatures used by
Kvesic (see, e.g., App. Br. 11-12).
Appellant's argument is unpersuasive for multiple reasons. As
correctly explained by the Examiner, the PVC referred to by Appellant is not
required by Nevin, and the molding temperatures referred to by Appellant
are not required by Kvesic (Ans. 10-11). Moreover, Appellant has not
supported this argument with any evidence that PVC would be incapable of
withstanding such molding temperatures. Finally, the argument is contrary
to the established principle that "[a] person of ordinary skill is also a person
of ordinary creativity, not an automaton." KSR at 420-21. In combining
Nevin with Kvesic in the manner proposed by the Examiner, such a person
would have utilized a plastic for Nevin's sleeve which would be compatible
with the processing temperatures required for Kvesic's resin binder.
In addition, Appellant argues that it would not have been obvious to
provide Nevin with the rubber particle sizes and percentages of resin binder:
rubber particles required by claim 1 because neither Nevin nor Kvesic
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recognizes such variables as being result effective (see, e.g., App. Br. 12-
20).
However, as acknowledged by Appellant, each of Nevin and Kvesic
expressly discloses a range of effective values for rubber particle sizes as
well as amounts of resin binder and rubber particles (id. at 13-14, 16-19).
These disclosures support a finding that both Nevin and Kvesic recognize
that a property of their respective products is affected by particle sizes and
binder:particle amounts, otherwise these references would not have
disclosed effective values for such variables. Contrary to Appellant's
argument, "[a] recognition in the prior art that a property is affected by the
variable [in question] is sufficient to find the variable result-effective." In re
Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012).
Appellant's argument is further undermined by the legal principle that
the discovery of optimum values for recognized result effective variables is
ordinarily within the skill of the art. See Applied Materials at 1295. This
argument is yet further undermined by the fact that the claimed particle size
range overlaps Nevin's particle size range and concomitantly by the legal
principle that a prima facie case of obviousness typically exists when the
claimed range overlaps the prior art range. Id.
It follows that the Examiner also has established a prima facie case of
obviousness for the subject matter defined by independent claim 1 as well as
the corresponding subject matter defined by separately argued dependent
claims 23 and 39.
For the reasons stated above and in the Answer, we sustain the
Examiner's § 103 rejection of claims 1, 22-24, and 39 as unpatentable over
Nevin in view of Kvesic.
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The Rejection based on Nevin and Khais

Once again, it is undisputed that independent claim 15 distinguishes
from Nevin by requiring steel-free rubber particles, rubber particle sizes
ranging from 0.125 inches to 0.5 inches, and rubber particles:concrete binder
amounts of 10-20:80-90 volume %.
In contesting the Examiner's conclusion that it would have been prima
facie obvious to make the elongated structural member of Nevin using steel-
free rubber particles in view of Khais (Ans. 6), Appellant reiterates the
argument that Nevin teaches away from the proposed combination (see, e.g.,
App. Br. 35-36). This argument remains unpersuasive for the reasons
discussed above. Appellant also argues that Khais fails to teach or suggest
steel components being absent from within the ground rubber particles and
in particular fails to explain how stainless steel, if present, would have been
separated from the ground rubber particles since Khais refers to stainless
steel as a non-magnetic material (id. at 34). Appellant's argument lacks
convincing merit because it is directly contradicted by Khais' express
teaching that "fiber material and steel particles are removed from the
pulverized tire or polymeric material" (col. 2, ll. 37-39).
In contesting the Examiner's prima facie obviousness conclusion
regarding the claim 15 rubber particle sizes and rubber particles:concrete
binder amounts, Appellant again argues that the applied prior art fails to
recognize such variables as being result effective (see, e.g., App. Br. 25-30).
This argument conflicts with Appellant's acknowledgment that Nevin and/or
Khais disclose a range of effective values for these variables (id. at 25-26,
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28-29). For the reasons previously explained, such disclosures support a
finding that the variables in question are recognized by Nevin and/or Khais
as being result effective and concomitantly support a conclusion that it
would have been prima facie obvious to optimize these variables.
In light of the foregoing, we determine that the Examiner has
established a prima facie case of obviousness for the subject matter defined
by independent claim 15 as well as the corresponding subject matter defined
by separately argued independent claim 22 and dependent claim 39.
Appellant separately argues that Nevin is silent regarding the solid-
core steel bar of dependent claim 27, the uniform outer dimension sleeve of
dependent claim 31, and the variable outer dimension sleeve of dependent
claim 32 (see, e.g., App. Br. 38-40). These arguments are unpersuasive. For
the reasons expressed in the Answer, we share the Examiner's conclusion
that it would have been prima facie obvious to provide Nevin with these
claim features (Ans. 7, 16-17). Moreover, it is appropriate to emphasize that
a prima facie case of obviousness for claims 27, 31, and 32 respectively is
supported by Nevin's disclosures of a metal rod (col. 4, ll. 2-6, Fig. 4), a
uniform outer dimension sleeve (as shown in Fig. 5), and a variable outer
dimension sleeve (as shown in Figs. 6-7).

The Rejection based on Nevin, Khais, and Shaneour

The Examiner concludes that it would have been prima facie obvious
to make the plastic sleeve of Nevin from high-density polyethylene as
required by claim 30 in view of Shaneour (Ans. 9).
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Appellant argues that the Examiner's obviousness conclusion is not
supported by articulated reasoning with some rationale underpinning (see,
e.g., App. Br. 45-46).
Appellant's argument is not persuasive for the reasons detailed in the
Answer (Ans. 17). An artisan would have made Nevin's plastic sleeve from
Shaneour's high-density polyethylene in view of the undisputed disclosure in
Shaneour that such material is suitable for use in the outdoor pole
environment of Nevin. Based on the record before us, the improvement
resulting from the Examiner's proposed combination is no more than the
predictable use of prior art elements according to their established functions.
See KSR at 417.
Conclusion
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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