Ex parte Miller

Board of Patent Appeals and Interferences

May 12, 2000

08255010 (B.P.A.I. May. 12, 2000)

Application for patent filed June 7, 1994. According to1
appellant, this application is a continuation-in-part of
Application 08/056,608, filed May 3, 1993; which is a
continuation of Application 07/854,975, filed March 23, 1992.
1
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(2) is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOHN B. MILLER

_____________
Appeal No. 1997-1676
Application 08/255,0101
______________
ON BRIEF
_______________
Before JOHN D. SMITH, PAK, and KRATZ, Administrative Patent
Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1997-1676
Application No. 08/255,010
2
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 6 which are all of the claims
pending in the application.
Claim 1 is representative of the subject matter on appeal
and reads as follows:
1. A process for electrochemical treatment of a
predetermined portion of a contaminated concrete structure
having an exposed surface area and embedded steel
reinforcement, wherein an electroconductive material is
applied to said exposed surface area of the concrete to form a
distributed electrode, a source of DC voltage is applied to
said electroconductive material, as a positive terminal, and
to said embedded steel reinforcement, as a negative terminal,
and wherein said DC voltage is applied to impart a distributed
current flow, of predetermined current density in relation to
surface area of the steel reinforcement, between said applied
electroconductive material and said embedded steel
reinforcement, and wherein said DC voltage and said
distributed current flow are continued until a predetermined
current flow of at least about 500 ampere-hours of current per
square meter of surface area of said embedded steel
reinforcement has flowed between said terminals, and wherein
said treatment is terminated as a function of said
predetermined current flow in relation to the surface area of
said embedded steel reinforcement, the improvement
characterized by
(a) said electroconductive material being applied to
only a predetermined fractional portion of the exposed
surface area of said predetermined portion to be treated,
(b) said predetermined fractional portion being less
than the entire exposed surface area of said
predetermined portion to be treated,
(c) said distributed current flow being applied to
said predetermined fractional portion at a current
Appeal No. 1997-1676
Application No. 08/255,010
Manning et al. (Manning), “Electrochemical Removal of2
Chloride Ions from Concrete: Initial Evaluation of the Pier
S19 Field Trial,” TRB, Jan. 1991.
3
density which is in a ratio to said predetermined current
density which is inversely proportional to the ratio of said
predetermined fractional portion to the entire exposed
surface area of said predetermined portion to be treated,
(d) said treatment being continued until said
predetermined current flow has been reached with respect
to the surface area of embedded steel reinforcement for the
entire said predetermined portion to be treated, and
(e) said treatment being thereupon terminated as to
the entire said predetermined portion to be treated.
The appealed claims stand rejected or stand provisionally
rejected as follows:
1) Claims 1 through 6 under 35 U.S.C. § 102(b) as
anticipated by the disclosure of Manning ;2
2) Claims 1 through 6 under 35 U.S.C. § 103 as unpatentable
over the disclosure of Manning;
3) Claims 1 through 6 under 35 U.S.C. § 101 as claiming the
same invention as the claims of copending Application
08/342,636; and
4) Claims 1 through 6 under the judicially created doctrine
of obviousness-type double patenting over the claims of
copending Application 08/342,636 in view of Manning.
Appeal No. 1997-1676
Application No. 08/255,010
4
We have carefully reviewed the claims, specification and
applied prior art, including all of the arguments and evidence
advanced by the examiner and appellant in support of their
respective positions. This review leads us to conclude that
the examiner’s rejections are not well founded. We will not
sustain each of the foregoing rejections for those claim
interpretation and reasons set forth in the Brief. We add the
following primarily for emphasis.
In determining patentability of the claimed subject
matter, all limitations, including the claim language
“predetermined”, in claim 1 must be considered. Cf. In re
Geerdes, 491 F.2d 1260, 1262, 180 USPQ 789, 791 (CCPA 1974).
When the term “predetermined” in claim 1 is given its broadest
reasonable interpretation consistent with pages 1 through 7 of
the specification, we agree with appellant that it means
“determined in advance”. However, neither the claims of
Application 08/342,636 nor the content of Manning describes
determining a fractional area for the distribution of current
flow in advance based on the total area to be treated as
required by claim 1, steps (a) through (c). Accordingly, we
are constrained to agree with appellant that the examiner has
Appeal No. 1997-1676
Application No. 08/255,010
5
not established a prima facie case of anticipation under 35
U.S.C. § 102(b) or double patenting under 35 U.S.C. § 101.
Similarly, we agree with appellant that there is no
suggestion or motivation to determine a fractional area for
the distribution of current flow in advance based on the total
area to be treated and distribute current flow only to the
fractional portion of the total area to be treated at a
current density which is inversely proportional to the ratio
of the predetermined fractional portion to the total area to
be treated as required by the claims on appeal. Although
Manning states enhancement of an area in which the current has
not been distributed, it does not recognize that the
enhancement is caused by the so-called “spill over” effect as
alleged by the examiner. In fact, as pointed out by
appellant, Manning surmises that the enhancement may be
attributed to “temperature effects” or “the result of a
reduction of macrocell action in the column.” See page 9.
There simply is no evidence in the record to support a
conclusion that one of ordinary skill in the art was aware of
the so-called “spill over” phenomenon at the time of the
Appeal No. 1997-1676
Application No. 08/255,010
6
invention. Accordingly, we are also constrained to agree with
appellant that the examiner has not established a prima facie
case of obviousness under 35 U.S.C. § 103 over the Manning
disclosure or unpatentability under the judicially created
doctrine of obviousness-type double patenting over the claims
of Application 08/342,636 in view of Manning.
Appeal No. 1997-1676
Application No. 08/255,010
7
In view of the foregoing, the decision of the examiner is
reversed.
REVERSED
John D. Smith )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Chung K. Pak ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Peter F. Kratz )
Administrative Patent Judge )
CKP:tdl
Appeal No. 1997-1676
Application No. 08/255,010
8
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