Ex parte Mills et al.

Board of Patent Appeals and Interferences

Oct 30, 2001

08960576 (B.P.A.I. Oct. 30, 2001)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.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 PETER SHELLEY MILLS, ANTHONY CECIL PLAISTED,
and MICHAEL ROBERT AMICK
____________
Appeal No. 2000-2288
Application No. 08/960,576
____________
ON BRIEF
____________
Before CALVERT, FRANKFORT, and STAAB, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's
rejection of claims 1 through 24, all of the claims pending in
this application.
Appellants' invention relates to a mine stopping (claim
15), i.e., an air impermeable wall or partition which is
constructed and positioned to direct fresh air into selected
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Application No. 08/960,576
2
areas of a mine; a kit of components for installing a mine
stopping (claim 11) and a method for installing a stopping in
a mine opening (claims 1 and 19). Of concern to appellants is
the need for a mine stopping that can be installed in a quick
manner. More particular, appellants note (e.g.,
specification, page 2) that they have discovered that by use
of a critical size of mesh an effective stopping can be
prepared by applying the mortar material to the screen from
one side only, because at such critical mesh sizes the mortar
is able, when applied by spraying, to penetrate the mesh to a
small degree thereby causing the mesh to become well embedded
in the mortar and result in an effective stopping. The
critical mesh size is said to be about 2 to 24 mesh,
preferably about 10 to 20 mesh, most preferably about 12 to 16
mesh. On page 7, it is indicated that mesh measurements are
defined as the number of openings/inch from the center of the
wires making up the mesh. In addition to faster installation
time, the use of the critical size mesh described above is
also said (specification, page 8) to avoid the problem of
shrinkage cracking. Independent claims 1, 11, 15 and 19 are
representative of the subject matter on appeal and a copy of
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Application No. 08/960,576
3
those claims may be found in the Appendix to appellants' brief
(Paper No. 10).
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Burton 4,096,702 Jun. 27,
1978
Werthmann 4,398,451 Aug.
16, 1983
Plaisted et al. 5,165,958 Nov. 24,
1992
(Plaisted '958)
Additional prior art references of record relied upon by
this merits panel of the Board in new rejections entered infra
pursuant to 37 CFR § 1.196(b) are:
Bear 3,302,343 Feb.
7, 1967
Smith AU-A-67882/87 Aug. 20,
1987
(Australian Patent)

Appeal No. 2000-2288
Application No. 08/960,576
4
Claim 7 stands rejected under 35 U.S.C. § 112, second
paragraph as being indefinite for failing to particularly
point out and distinctly claim that which appellants regard as
their invention.
In addition to the foregoing rejection, the appealed
claims stand rejected under 35 U.S.C. § 103(a) as follows:
a) claims 1 through 5 and 7 through 24 as being obvious
over Burton in view of Plaisted ‘958; and
b) claim 6 as being obvious over Burton in view of
Plaisted ‘958 and Werthmann.
Rather than reiterate the examiner's full statement of
the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellants regarding those
rejections, we make reference to the examiner's answer (Paper
No. 14, mailed March 9, 2000) for the examiner's reasoning in
support of the rejections, and to appellants’ brief (Paper No.
10, filed September 10, 1999), request to reinstate appeal
Appeal No. 2000-2288
Application No. 08/960,576
5
(Paper No. 13, filed January 5, 2000) and reply brief (Paper
No. 15, filed May 9, 2000) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants' specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellants and the examiner. As a
consequence of our review, we have made the determinations
which follow.
We turn first to the examiner's rejection of claim 7
under 35 U.S.C. § 112, second paragraph. After reviewing
appellants' specification and claim 7 in light thereof, and
also in light of appellants' arguments in their brief, it is
our opinion that the scope and content of the subject matter
embraced by appellants' claim 7 is reasonably clear and
definite, and fulfills the requirements of 35 U.S.C. § 112,
second paragraph. In our view, the examiner's criticism of
the language used in appellants' claim 7 is unwarranted. We
Appeal No. 2000-2288
Application No. 08/960,576
6
know of no requirement that alternative method steps like
those in claim 7 on appeal must be "equivalent" in the sense
urged by the examiner (answer, pages 8-9). In determining
whether a claim sets out and circumscribes a particular area
with a reasonable degree of precision and particularity, the
definiteness of the language employed in the claim must be
analyzed, not in a vacuum, but always in light of the
teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art. See In re
Johnson, 558 F.2d 1008, 1016 n.17, 194 USPQ 187, 194 n.17
(CCPA 1977). When that standard of evaluation is applied to
the language employed in claim 7 on appeal, we are of the
opinion that the claim sets out and circumscribes a particular
area with a reasonable degree of precision and particularity,
and that one of ordinary skill in the art would clearly
understand what is claimed. Accordingly, we will not sustain
the examiner's rejection of appellant's claim 7 under 35
U.S.C. § 112, second paragraph.
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Application No. 08/960,576
7
We next look to the examiner's prior art rejections of
the appealed claims, turning first to the rejection of claims
1 through 5 and 7 through 24 under § 103(a) as being
unpatentable over Burton in view of Plaisted '958. After a
careful assessment of appellants' independent claims 1, 11, 15
and 19 and of the Burton and Plaisted '958 references, we must
agree with appellants' position as set forth in the brief
(pages 5-14) and in the reply brief, that the combined
teachings of the applied references do not disclose, teach or
suggest the mine stopping, kit, or method of installing a mine
stopping as defined in the claims before us on appeal. While
Burton generally discloses a mine stopping formed by employing
a wire mesh or screening (16) and applying a cement or plaster
material (18) to the wire mesh by spreading the cement or
plaster over the wire mesh and in contact with the walls,
floor and ceiling of the tunnel (col. 1, lines 52-60), it says
nothing about spraying the cement or plaster on the wire mesh
and nothing about mesh size. Plaisted '958 discloses a ready-
to-use plaster/mortar composition used for sealing mine
stoppings. The plaster/mortar material is said to differ from
the prior art ready-made mortar sealants which function by
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evaporation of water and therefore need dry conditions before
setting hard, by being capable of setting in a predetermined
time in either wet or dry conditions. Each of the field tests
set forth in Plaisted '958 (column 4, line 60, et seq.)
relates to applying the plaster/mortar material therein to a
wet hollow concrete block stopping by spraying. Plaisted '958
says nothing about use of the plaster/mortar composition
therein on wire mesh or screening.
While it is certainly true that the wire mesh in Burton
must have mesh openings of some given size, there is nothing
in that reference which mentions or relates to the spraying of
a plaster/mortar material onto a wire mesh to form a mine
stopping. Burton merely mentions spreading the plaster/mortar
over the wire mesh, presumably by use of a hand trowel. Thus,
there is nothing in Burton which teaches or suggests a mesh
size like that claimed by appellants, and nothing to establish
that mesh size would have been viewed as being a result
effective variable for the construction of an appropriate mine
stopping by spraying of plaster/mortar onto a wire mesh,
especially where the spraying is intended to take place from
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Application No. 08/960,576
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only one side of the wire mesh as desired by appellants. As
for Plaisted '958, this patent deals with spraying a
plaster/mortar composition on a hollow concrete block mine
stopping and says nothing about spraying the composition
therein on a wire mesh or screening to form a mine stopping,
thus this patent does not supply that which is lacking in
Burton.
In light of the foregoing, we must refuse to sustain the
examiner's rejection of independent claims 1, 11, 15 and 19,
and claims 2 through 5, 7 through 10, 12 through 14, 16
through 18 and 20 through 24 which depend therefrom, under §
103(a) as being unpatentable over Burton in view of Plaisted
'958.
As for the examiner's rejection of claim 6 under § 103(a)
as being unpatentable over Burton in view of Plaisted '958 and
Werthmann, we have reviewed the Werthmann patent, but find
nothing therein that provides for the deficiencies noted above
in the basic combination of Burton and Plaisted '958.
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Application No. 08/960,576
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Accordingly, we will not sustain the examiner's rejection of
dependent claim 6 under 35 U.S.C. § 103(a).
To summarize our decision, we note that 1) the examiner's
rejection of claim 7 under 35 U.S.C. § 112, second paragraph,
has not been sustained, 2) the examiner's rejection of claims
1 through 5 and 7 through 24 under § 103(a) as being obvious
over Burton in view of Plaisted '958 has not been sustained,
and
3) the examiner's rejection of claim 6 under 35 U.S.C. §
103(a) based on Burton in view of Plaisted '958 and Werthmann
has not been sustained.
As should be apparent from the foregoing, the decision of
the examiner rejecting claims 1 through 24 of the present
application is, accordingly, reversed.
Under the provisions of 37 CFR § 1.196(b), we enter the
following new grounds of rejection.
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Application No. 08/960,576
11
Claims 15 and 17 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Smith. Smith discloses a mine stopping
comprising a screen/mesh (9) having a mesh size of from 1.5 x
1.5 mm to 2.5 x 2.5 mm (within appellants' claimed range of
10-24 mesh), and an airtight coating of an acrylic polymer or
copolymer mortar composition covering the screen/mesh. The
mesh size of Smith also falls within the smaller range (12-16
mesh) set forth in appellants' claim 17.
Claims 1 through 3, 7, 11 and 21 are rejected under
35 U.S.C. § 103 as being unpatentable over Bear in view of
Smith. Bear discloses a method of installing a mine stopping
wherein a screen mesh (46) is securely fixed in a mine opening
by fasteners (44) that engage structural supports mounted to
the roof, floor and side walls of the mine opening and wherein
a plastic foam mortar composition (48) is spray applied to the
screen mesh from one side thereof to form a coating on the
screen, and the spraying is continued until the stopping is
substantially airtight. Bear does not disclose a mesh size
for the screen panels (46) like that claimed by appellants.
Smith discloses a mine stopping comprising a screen/mesh (9)
Appeal No. 2000-2288
Application No. 08/960,576
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having a mesh size of from 1.5 x 1.5 mm to 2.5 x 2.5 mm
(within appellants' claimed ranges of 10-24 mesh, 10-20 mesh
and 12-16 mesh), and a spray applied airtight coating of an
acrylic polymer or copolymer mortar composition covering the
screen/mesh. In our opinion, it would have been obvious to
one of ordinary skill in the art at the time of appellants'
invention to have used a screen mesh in Bear having a mesh
sized as taught in Smith so that the sprayed plastic foam
mortar in Bear would readily adhere to the screen and be
impregnated through the openings of the screen as desired in
Bear (col. 3, lines 33-47) when sprayed from only one side of
the screen panels as seen in Figures 2, 4 and 5 of Bear. As
for the kit of claim 11, we are of the view that it would have
been obvious to one of ordinary skill in the art to assemble a
"kit" of components like that set forth in claim 11 on appeal
prior to entering the mine to construct a mine stopping of the
type suggested by the collective teachings of Bear and Smith.
As is clear from Bear (col. 7, lines 8-18), both prefabricated
screen panels and the containers of foam plastic mortar
composition are portable components that can be assembled
together in a "kit" and then transported into the mine.
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Application No. 08/960,576
13
As for the remaining claims on appeal, we urge the
examiner to carefully consider those claims in light of the
art applied in the above noted rejections and any other prior
art the examiner may be aware of so as to ascertain whether
the remaining claims may also be subject to an obviousness
rejection under 35 U.S.C.
§ 103(a). For example, certain of the remaining claims on
appeal set forth that the screen is formed of a steel wire
having a diameter of about 0.010 to 0.030 inches or having a
tensile strength of at least 150 lbs/inch (? lbs/in ), which2
limitations are not found in Bear and Smith. Also some of the
remaining claims call for a particular mortar composition
which is not taught or suggested in Bear and Smith.
This decision contains new grounds of rejection pursuant to
37 CFR § 1.196(b). 37 CFR § 1.196(b) provides that "[a] new
ground of rejection shall not be considered final for purposes
of judicial review."
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
Appeal No. 2000-2288
Application No. 08/960,576
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one of the following two options with respect to the new
grounds of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)

IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
Appeal No. 2000-2288
Application No. 08/960,576
15
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
CEF/LBG
Appeal No. 2000-2288
Application No. 08/960,576
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NIXON & VANDERHYE
1100 NORTH GLEBE ROAD
8TH FLOOR
ARLINGTON, VA 22201-4714
Lesley
Appeal No. 2000-2288
Application No. 08/960,576
APJ FRANKFORT
APJ CALVERT
APJ STAAB
DECISION: REVERSED; 1.196(b)

Prepared: November 6, 2002
Draft Final
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