Ex Parte Naus et al

Board of Patent Appeals and Interferences

Sep 25, 2008

10465100 (B.P.A.I. Sep. 25, 2008)

1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERTUS WILHELMUS MARINUS NAUS and
JOANNES LOUIS MARIE VAN MONTFORT
____________

Appeal 2008-1784
Application 10/465,100
Technology Center 3600
____________

Decided: September 26, 2008
____________

Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and LINDA E.
HORNER, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal from the Final Rejection of claims 1 and 4. Claims 2
and 3 have been cancelled. Claims 5-14 stand withdrawn from
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consideration. These are the only claims in the application. We have
jurisdiction under 35 U.S.C. §§ 134 and 6 (2002).
Claim 1 is directed to a method of constructing a road wherein a
bituminized fleece is placed on a foundation layer and the road surface is
bonded to the foundation layer by electromagnetically heating the binder of
bituminized fleece. Claim 4 is directed to a method of removing a road
wherein a binder course is heated to soften the binder and the road surface is
removed. Claims 1 and 4, reproduced below, are further illustrative of the
claimed subject matter:

1. A method of constructing a road
comprising the steps of:
disposing, by unwinding, a binder course for
holding a road surface to a foundation layer, the
binder course comprising electromagnetically
sensitive particles, directly upon the foundation
layer, the binder course comprising a roll of
prefabricated bituminized fleece; and
providing the road surface directly on top of
the binder course, such that the bonding of the road
surface on the foundation layer is realized upon
electromagnetically heating the binder course.

4. A method for the removal of a road
surface applied on a foundation layer comprising:
electromagnetically heating a binder course
that holds the road surface to the foundation layer,
the binder course comprising particles that are
sensitive to excitation by electromagnetic waves
and that is present between the road surface and
the foundation layer to soften the binder course
prior to its removal; and
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removing the road surface after
electromagnetically heating the binder
course.

The references of record relied upon by the Examiner as evidence of
obviousness are:
Jeppson US 4,594,022 Jun. 10, 1986
Shoesmith US 5,393,559 Feb. 28, 1995

Claims 1 and 4 stand rejected under 35 U.S.C. § 103 as unpatentable
over Shoesmith in view of Jeppson.

ISSUES
The two issues for our consideration in this appeal are whether the
Appellants have established the Examiner erred in rejecting claims 1 and 4
on the ground of obviousness.

FINDINGS OF FACT
Appellants’ Specification defines electromagnetic heating as heating
being effected by microwaves or by induction without being limited thereto.
Specification 2:14-16. Thus, electromagnetic heating is not limited to
merely microwaves and induction heating by Appellants’ definition, but also
includes other forms of heating such as infrared radiation which forms a part
of the electromagnetic spectrum. Infrared radiant heating of pavement is
well known in the art. Anderson's-Black Rock, Inc. v. Pavement Salvage
Co., 396 U.S. 57, 58 (1969)(finding that the use of a radiant-heat burner in
working asphalt pavement dates back to a patent issued in 1905).
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Shoesmith discloses a method for reinforcing pavement which
comprises the unwinding and applying of a prefabricated reinforcement of
continuous filament. The reinforcement is coated with an asphaltic resin
before it is applied to the foundation layer and it is adhered to the foundation
layer by an adhesive. Shoesmith, col. 2, ll. 33-43, col. 3, ll. 56-62, and col.
4, ll. 26-29. The resin that is used to preimpregnate the fiber can be asphalt,
rubber, modified asphalt, or the like. Shoesmith, col. 4, ll. 57-64. After the
preimpregnation with the resin, an adhesive coating is applied to the resin
impregnated grid. Shoesmith, col. 5, ll. 8-11. These adhesives can be
adhesives activatable by pressure, heat or other means. Shoesmith, col. 6, ll.
20-28.
Jeppson teaches a method of making and/or removing a road surface.
The road surface is the upper surface of overlayer 14. The overlayer is
placed on a foundation layer--underlayer 13. Jeppson uses the method of
electromagnetically heating the overlayer 14 as shown in Figure 3. Jeppson,
col. 1, ll. 30-34, col. 1, ll. 61-68, and col. 4, ll. 4-55. Jeppson teaches
heating the asphalt of the overlayer 14 desired to be removed, removing the
asphalt temporarily, and, after remixing in a drum mixer of the like,
returning it to overlie the underlayer 13 as a new riding surface. See col. 6, l.
57-col. 7, l. 52. Although Jeppson teaches the use of a reflective zone 12 of
conductive material (see e.g., Jeppson, col. 7, ll. 5-10), such a reflective zone
is not precluded by Appellants’ claims.

PRINCIPLES OF LAW
We determine the scope of the claims in patent applications “not
solely on the basis of the claim language, but upon giving claims their
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broadest reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005)(en banc) (quoting In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). We must be careful not
to read a particular embodiment appearing in the written description into the
claim if the claim language is broader than the embodiment. See Superguide
Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004)
(“Though understanding the claim language may be aided by explanations
contained in the written description, it is important not to import into a claim
limitations that are not part of the claim. For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”). The
challenge is to interpret claims in view of the specification without
unnecessarily importing limitations from the specification into the claims.
See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir.
2003).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of ordinary skill in the art, and (4) where in evidence,
so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1,
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17-18 (1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of
these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. The Court
explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.

Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to the appellant.
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Id. at 1445. See also Piasecki, 745 F.2d at 1472. Obviousness is then
determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See Oetiker, 977 F.2d at 1445; Piasecki,
745 F.2d at 1472.

ANALYSIS
We affirm the rejection of claim 1. As noted above, Shoesmith
discloses unwinding a binder course on a road foundation layer wherein the
binder course comprises fabric coated with bituminized resins and an
adhesive. The adhesive can be activated by pressure, heat, or other means.
Jeppson discloses that it is old and well known to use microwave energy as
the heating source when applying hot melt asphalt. Therefore, using a
microwave energy source as the electromagnetic heating means to activate
the heat activatable adhesive of Shoesmith is merely applying a known
technique to a known article ready for improvement that would yield
predictable results. See KSR at 1740.
Additionally, Appellants’ definition of electromagnetic heating
encompasses heating by infrared radiation which is a part of the
electromagnetic spectrum. Therefore, it can be seen that the use of the heat
activatable adhesive disclosed in Shoesmith with an infrared heater to active
that adhesive anticipates the subject matter of claim 1. See Shoesmith, col.
6, ll. 25-27. Accordingly, we also affirm the rejection of claim 1 on the
ground that novelty is the epitome of obviousness. In re McDaniel, 293
F3d. 1379, 1385 (Fed. Cir. 2002)(quoting Connell v. Sears Roebuck & Co.,
722 F.2d 1542, 1548 (Fed. Cir. 1983)); In re Fracalossi, 681 F.2d 792, 794,
(CCPA 1982).
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We note Appellants’ argument that the asphalt coated fabric layer of
Shoesmith is not prefabricated bituminized fleece. Brief 4:19-5:1. This
argument by Appellants fails to convince us of error on the Examiner’s part.
The prefabricated bituminized fleece is described only to the extent that the
particles embedded therein are activated by the electromagnetic radiation
Spec. 3:22-31. The fleece is generally a fabric not otherwise described in
Appellants’ Specification. Giving this claimed subject matter the broadest
reasonable interpretation, the asphalt coated fabric with heat activatable
adhesive of Shoesmith fully corresponds thereto.
We also reject Appellants’ characterization of Shoesmith as “Glass
impregnated with asphalt.” Brief 5:1-2. Shoesmith discloses a grid of
strands of glass fibers or filaments, essentially a fabric, that can be sewn or
knitted to form intersections. Shoesmith, col. 3, l. 56-col. 4, l. 25.
Appellants also argue that there is no motivation to combine the
references. While the Supreme Court has stated that a rigid insistence on
teaching, suggestion, or motivation is incompatible with its precedent
concerning obviousness, we are of the view that there is sufficient
motivation in the applied prior art so that one of ordinary skill would have
found it obvious to use the microwave heater to activate the reinforcing and
binding layer disclosed in Shoesmith. Furthermore, we merely point out that
we have further determined that Shoesmith is anticipatory to claim 1. No
motivation is needed for § 102.
Turning to a consideration of claim 4, we also affirm the obviousness
rejection of this claim. With respect to the language of the claim, we note
that the claim requires the electromagnetic heating of a binder course. The
binder course is the course that is present between the road surface and the
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foundation layer and is sensitive to excitation by electromagnetic waves.
The overlayer 14, or at least a portion thereof, is present between the road
surface of Jeppson and Jeppson’s foundation layer. Furthermore, the
overlayer 14 is disclosed as comprised of a binder that is sensitive to
electromagnetic excitation and becomes semi-liquid. Jeppson, col. 7, ll. 40-
42. The overlayer may be removed temporarily from the underlayer 13 for
mixing and the like. Jeppson, col. 7, ll., 45-47. Thus, Jeppson, by itself,
teaches the method steps of heating a binder course by electromagnetic
radiation and removing the road surface. Accordingly, we affirm the
obviousness rejection of claim 4, anticipation being the epitome of
obviousness.
Appellants argue that Jeppson does not teach that it would be
desirable to combine electromagnetic energy with a binder course. This
argument is contradicted by our findings, above, that Jeppson performs these
steps, at least with respect to the embodiment of Figure 3.

CONCLUSION
The Appellants have not established that the Examiner erred in
rejecting claim 1. The rejection of claim 1 is affirmed.
The Appellants have not established that the Examiner erred in
rejecting claim 4. The rejection of claim 4 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)(1)(iv) (2007).

AFFIRMED

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Application 10/465,100

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hh

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