Ex parte Molloy et al.

Board of Patent Appeals and Interferences

Sep 30, 1998

08134002 (B.P.A.I. Sep. 30, 1998)

Application for patent filed October 12, 1993.1
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(2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HENRY J. MOLLOY
AND JOHN JONES
_____________
Appeal No. 95-1360
Application 08/134,0021
______________
ON BRIEF
_______________
Before WINTERS, HANLON, and WEIMAR, Administrative Patent
Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
Appeal No. 95-1360
Application No. 08/134,002
2
final rejection of claims 1-15, all of the claims pending in
the application. The claims are directed to a controlled set
cement product comprising rapid hardening hydraulic cement and
an additive package. Claim 1 is representative of the subject
matter on appeal and reads as follows:
1. A controlled set cement product comprising rapid
hardening hydraulic cement and an additive package of three
materials wherein the additive package consists essentially
of, based on the weight of cement:
Material Weight Percent
pozzolan up to 20%

set retarder up to 4%
plasticizer up to 3%
wherein all three materials are present in the additive
package.
The prior art relied upon by the examiner is:
Watanabe et al. (Watanabe) 4,861,378 Aug. 29, 1989
Mimura et al. (JP '127) 51-65127 June 5, 1976
(Japanese Kokai)
The following rejections are at issue in this appeal:
(1) Claims 1-6 are rejected under 35 U.S.C. § 103 as
being unpatentable over Watanabe.
(2) Claims 7-15 are rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Watanabe and JP
Appeal No. 95-1360
Application No. 08/134,002
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'127.
The claimed invention
The claims relate to a controlled set cement product
comprising rapid hardening hydraulic cement and an additive
package. The additive package “consists essentially of” a
specific amount of each of a pozzolan, set retarder, and
plasticizer. Pozzolans include silica fume, set retarders
include citric acid, and plasticizers include “a modified
lignosulphonate or other material” (Specification, p. 3, lines
25-28). Appellants’ claimed controlled set cement products
may further comprise alkali-resistant glass fiber
reinforcements (claim 7).
Discussion
Watanabe discloses a cement additive comprising a
superplasticizer, bentonite, and an inorganic strength
improving agent (col. 2, lines 46-48). Inorganic strength
improving agents include calcium sulfates, silica fume and
mixtures thereof (col. 3, lines 43-46). The cement
additive may further comprise organic acids and salts,
including citric acid (col. 4, line 62-col. 5, line 33).
Appellants argue that Watanabe does not suggest adding
Appeal No. 95-1360
Application No. 08/134,002
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the disclosed additive to rapid hardening hydraulic cement
(Brief, p. 4). However, the examiner points out that
Watanabe discloses that the additive may be added to various
Portland cements and hydraulic cements (Answer, p. 3; col. 5,
lines 48-51). According to the examiner (Answer, pp. 6-7):
The appellants argue that Watanabe et al. do
not teach a “rapid hardening” hydraulic cement and
directs the examiner to the appropriate passages
within their specification showing cements
containing calcium sulphoaluminate compounds which
are different than Portland cement. However, the
appellants err because they are arguing limitations
not present within their own claims. Nowhere do
appellants’ claims require that their rapid
hardening hydraulic cement contain a “calcium
sulphoaluminate compound”. While it is true that
the claims are “interpreted” in light of the
specification, it is improper to read the
limitations of the specification into the claims.
The appellants’ RHHC (rapid hardening hydraulic
cement) thus still reads on any hydraulic cement
including Portland cement.
We agree with the examiner that it is improper to read
limitations from the specification into the claims.
Nevertheless, a claim cannot be read in a vacuum but rather
must be read in light of the specification to thereby
interpret limitations explicitly recited in the claim. In re
Prater, 415 F.2d 1393, 1404, 162 USPQ 541, 550 (CCPA
1969). The Court in Prater, 415 F.2d at 1404, 162 USPQ at
Appeal No. 95-1360
Application No. 08/134,002
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550, makes a distinction between these two concepts:
“[R]eading a claim in the light of the
specification,” to thereby interpret limitations
explicitly recited in the claim, is a quite
different thing from “reading limitations of the
specification into a claim,” to thereby narrow the
scope of the claim by implicitly adding disclosed
limitations which have no express basis in the
claim. This distinction is difficult to draw . . .
.
Appeal No. 95-1360
Application No. 08/134,002
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See also In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989) (“During patent examination the pending
claims must be interpreted as broadly as their terms
reasonably allow. When the applicant states the meaning that
the claim terms are intended to have, the claims are examined
with that meaning, in order to achieve a complete exploration
of the applicant’s invention and its relation to the prior
art.”).
Appellants take the position that “rapid hardening
hydraulic cement” is a term of art. Appellants argue that
they “have pointed out the differences between RHHC [rapid
hardening hydraulic cement] and ordinary Portland cement.
Page 2, lines 15-17 and lines 32 to 36 of the specification
defines RHHC” (Brief, p. 5). Appellants’ specification
discloses that rapid hardening cement, by definition, “is
based on Calcium sulphoaluminate compound” (Specification, p.
2, lines 32-33). Moreover, according to appellants (Brief, p.
5):
Appellants’ Information Disclosure Statement filed
October 27, 1993, discloses two patents which
disclose examples of cements containing calcium
sulphoaluminate compounds. They are U.S. Patent
Appeal No. 95-1360
Application No. 08/134,002
U.S. Patent No. 4,419,136 to Rice discloses an2
expansive cement containing a calcium alumino sulfate
compound.
U.S. Patent No. 4,798,628 to Mills et al. discloses3
a settable cementitious composition produced by mixing a
ground mineral composition containing the phase
4CaO.3Al O .SO , in the presence of water, with a source of2 3 3
alkali metal or alkaline earth metal under alkaline
conditions.
7
Nos. 4,419,136 and 4,798,628. RHHC is recent2 3
terminology for cements such as those in the cited
patents.
On these facts, we hold that “rapid hardening hydraulic
cement” is a term of art and defines cement “based on Calcium
sulphoaluminate compound” (Specification, p. 2, lines 32-33).
Having determined the meaning of “rapid hardening
hydraulic cement,” it is necessary to determine whether
Watanabe suggests using the claimed additive package in a
rapid hardening hydraulic cement. According to Watanabe (col.
5, lines 48-60):
The cements to which the cement additive of the
present invention may be added include various
Portland cements, mixed cements and hydraulic
materials containing slag particles as essential
components. The rapid hardening Portland cement is
not effective in view of high strength since it
contains alumina cement, 12CaO.7Al O ,2 3
11CaO.7Al O .CaF or amorphous calcium aluminate2 3 2
including CaO.Al O , 12CaO 7Al O , etc. as well as2 3 2 3
Appeal No. 95-1360
Application No. 08/134,002
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Type II anhydrous calcium sulfate. The rapid
hardening is accompanied by rapid heat evolution so
that the effect of the organic acids and salts
thereof in decreasing the amount of water necessary
for cement hydration and in improving the strength
is lost.
In view of the teachings in Watanabe, one having ordinary
skill in the art would have recognized that the disclosed
additive would not have been effective in cements containing
calcium sulphoaluminate compounds such as the rapid hardening
hydraulic cement of the claimed invention (Brief, p. 7).
Therefore, we agree with appellants that Watanabe teaches away
from using the claimed additive package in a rapid hardening
hydraulic cement (Brief, p. 5). Compare Gillette Co. v. S.C.
Johnson & Son, Inc., 919 F.2d 720, 724, 16 USPQ2d 1923, 1927
(Fed. Cir. 1990) (the closest prior art reference “would
likely discourage the art worker from attempting the
substitution suggested”).
For the reasons set forth above, the decision of the
examiner is REVERSED.
REVERSED
Appeal No. 95-1360
Application No. 08/134,002
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SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ADRIENE LEPIANE HANLON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ELIZABETH C. WEIMAR )
Administrative Patent Judge )
Appeal No. 95-1360
Application No. 08/134,002
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EMCH, SCHAFFER SCHAUB & PORCELLO CO.
P. O. Box 916
Toledo, OH 43697-0916