Ex parte Omann

Board of Patent Appeals and Interferences

Apr 18, 2000

09072190 (B.P.A.I. Apr. 18, 2000)

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for publication in a law journal and (2) is not binding precedent of the Board.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 JAMES S. OMANN
____________
Appeal No. 2000-0027
Application No. 09/072,190
____________
ON BRIEF
____________
Before CALVERT, ABRAMS, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 19, which are all of the claims
pending in this application.
We AFFIRM-IN-PART.
BACKGROUND
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Application No. 09/072,190
The appellant's invention relates to a composition,
method and use of reduced roofing waste materials as a patch
for potholes and a paving for roads, driveways, walkways and
the like (specification, p. 1). A copy of the claims under
appeal is set forth in the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Bladykas 4,236,675 Dec. 2,
1980
Gaudio et al. 5,223,032 June 29,
1993
(Gaudio)
Grzybowski 5,236,497 Aug. 17,
1993
Claims 12 to 15 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellant regards as the invention.
Claims 12 to 15 stand rejected under 35 U.S.C. § 112,
first paragraph, as containing subject matter which was not
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Application No. 09/072,190
While the examiner has included Grzybowski in the1
statement of this rejection, Grzybowski has not been relied
upon in the body of this rejection. Thus, we consider this
rejection of claims 5, 12, 13 and 16 under 35 U.S.C. § 103 as
being based on Gaudio alone.
described in the specification in such a way as to reasonably
convey to one skilled in the relevant art that the appellant,
at the time the application was filed, had possession of the
claimed invention.
Claims 5, 12, 13 and 16 stand rejected under 35 U.S.C. §
103 as being unpatentable over Gaudio in view of Grzybowski.1
Claims 1 to 3, 6, 8 to 10, 14, 17 and 19 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Gaudio as
applied to claims 5, 12, 13 and 16 above, and further in view
of Grzybowski.
Claims 4, 7, 11, 15 and 18 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Gaudio as applied to claims
5, 12, 13 and 16 above, and further in view of Bladykas.
Appeal No. 2000-0027 Page 4
Application No. 09/072,190
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the final rejection (Paper
No. 5, mailed November 2, 1998) and the answer (Paper No. 11,
mailed May 4, 1999) for the examiner's complete reasoning in
support of the rejections, and to the brief (Paper No. 10,
filed April 2, 1999) and reply brief (Paper No. 13, filed July
6, 1999) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
The indefiniteness rejection
We sustain the rejection of claims 12 to 15 under 35
U.S.C. § 112, second paragraph.
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Application No. 09/072,190
In the final rejection (p. 3) and the answer (p. 5), the
examiner set forth his rationale as to why claims 12 to 15
were indefinite. Specifically, the examiner noted that the
phrase ".3 by weight" in line 5 of claim 12 should be --.3
percent by
weight --.
The appellant has not specifically contested this
rejection in the brief or reply brief. In fact, the appellant
agrees with the examiner that claim 12 should be corrected and
asks that this be corrected by an Examiner's Amendment (brief,
p. 5). Since
Appeal No. 2000-0027 Page 6
Application No. 09/072,190
claim 12 has not been amended to correct this error, we
summarily sustain the rejection of claims 12 to 15 under 35
U.S.C. § 112, second paragraph.
The written description rejection
We will not sustain the rejection of claims 12 to 15
under
35 U.S.C. § 112, first paragraph.
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the
later claimed subject matter, rather than the presence or
absence of literal support in the specification for the claim
language. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991) and In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983). The examiner has the initial burden of presenting
evidence or reasons why persons skilled in the art would not
recognize in the appellant's disclosure a description of the
Appeal No. 2000-0027 Page 7
Application No. 09/072,190
invention defined by the claims. See In re Wertheim, 541 F.2d
257, 265, 191 USPQ 90, 98 (CCPA 1976); Ex parte Sorenson, 3
USPQ2d 1462, 1463 (Bd. Pat. App. & Inter. 1987).
The examiner determined (answer, p. 5) that the written
description on page 17 of the originally filed application
fails to provide written description of the "95 to .5 percent
by weight aggregate" recited in claim 12.
The appellant argues (brief, p. 4) that the table called
"Rate" on originally filed page 17 provides the required
support for the claimed "95 to .5 percent by weight
aggregate." Moreover, the appellant argues (reply brief, pp.
2-3) that the range of 0% to 95% aggregate in the table called
"Rate" on originally filed page 17 supports the narrower range
claimed (i.e., 95 to .5 percent by weight aggregate) for the
reasons set forth in Wertheim.
It is our opinion that the claimed language in dispute
(i.e., 95 to .5 percent by weight aggregate) is described in
the original disclosure for the reasons set forth by the
Appeal No. 2000-0027 Page 8
Application No. 09/072,190
appellant. It is not necessary that the specification
specifically identify all claimed narrower values which fall
within the broader range as set forth in the original
disclosure. Therefore, as a factual matter, persons skilled
in the art would consider the claimed range to be part of
appellant's original disclosure. Note In re Wertheim, 541
F.2d at 264, 191 USPQ at 98. Additionally, we note
that original claim 12 recited "95 to .5 parts aggregate."
Where an original claim supports the subject matter now being
claimed, nothing more is required for compliance with the
description requirement of the first paragraph of § 112. See
In re Gardner, 475 F.2d 1389, 1391, 177 USPQ 396, 397,
supplemental opinion, 480 F.2d 879, 879-80, 178 USPQ 149 (CCPA
1973) and In re Smith, 481 F.2d 910, 914, 178 USPQ 620, 624
(CCPA 1973).
For the reasons set forth above, the decision of the
examiner to reject claims 12 to 15 under 35 U.S.C. § 112,
first paragraph, is reversed.
The obviousness rejections
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Application No. 09/072,190
We sustain the rejection of claims 12 to 19 under 35
U.S.C. § 103, but not the rejection of claims 1 to 11.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a case of obviousness.
See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956
(Fed. Cir. 1993). A case of obviousness is established by
presenting evidence that would have led one of ordinary skill
in the art to combine the relevant teachings of the references
to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
Claims 5 to 7
Claim 5 recites a method of manufacturing and applying a
pavement and patch material mixture comprising, inter alia,
(a) reducing sticky abrasive roof waste to roof waste granules
of a size on average of up to one inch; (b) mixing superheated
aggregate to the shingle granules; (c) mixing rejuvenating oil
to the granules and aggregate; (d) mixing an emulsifier to the
rejuvenating oil, granules and aggregate; (e) mixing asphalt
Appeal No. 2000-0027 Page 10
Application No. 09/072,190
concrete oil to the granules, aggregate, rejuvenating oil and
emulsifier; (f) evenly applying the material mixture of
asphalt concrete oil, granules, aggregate, rejuvenating oil
and emulsifier to the surface to be paved; and (g) evenly
applying compaction to the applied material mixture.
Gaudio discloses a particulated asphalt composition
comprised generally of roughage, asphalt particulate and
solvent.
Gaudio teaches that the roughage is formed from rubble
comprised of crushed concrete, asphalt pavement, sand and/or
stone, or any combination thereof. The roughage is crushed
and screened to a gradient size ranging from 1/4" minus to 2"
minus and
preferably sized to approximately 5/8" minus gradient. The
roughage then can be heated to eliminate moisture, although
cold process preparation is viable at ambient temperatures
exceeding 32 degrees Fahrenheit. Asphalt, the second
component of the present invention, then is granulated into
asphalt particulate. This is achieved by processing the
asphalt through size reduction
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Application No. 09/072,190
equipment. The asphalt can be either virgin asphalt blocks or
reclaimed asphalt-containing material such as roofing refuse.
The asphalt particulate is sized from between 1/4" minus
gradient to 2" minus gradient, preferably sized to
approximately 3/4" minus gradient. The particulated asphalt
and crushed roughage then are mixed together to form an
asphalt-aggregate.
The asphalt-aggregate of Gaudio is then mixed with the
third component of his invention which is a solvent. The
solvent additive preferably is varied to correspond to
construction or repair weather temperatures. In warmer
temperatures, a water-based solvent is the preferable solvent
additive. In pavement applications, the water constituent of
the water-based solvent relatively rapidly evaporates from the
cold mix composition after pavement construction or repair
application, to leave a rigid compound capable of withstanding
roadway pressures. In colder temperatures, an oil-based
solvent is preferable to
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Application No. 09/072,190
prevent freezing of the solvent constituent within the
composition and mixing equipment used to carry the solvent to
the asphalt-aggregate for preparation of the end composition.
Gaudio discloses that in warmer temperatures, the
preferred solvent is comprised of a water-based emulsion type
rejuvenator, such as that known by the trade name "Reclaimite
[sic, Reclamite]" by Witco Oil Co. of Oildale, Calif.
According to Gaudio at column 5, lines 4-19, "Reclaimite" is a
blend of oils suspended in water to form an emulsion capable
of dispersing the oils to lubricate the product to which it is
applied. With water as the carrier of these oils, the water
is left to evaporate, leaving the oils to be absorbed by the
subject product, thereby causing softening, reconditioning and
rejuvenating of the subject asphalt product. Thus, after
mixing the water-based solvent with the asphalt-aggregate, the
final asphalt composition of the present invention can be
stockpiled for thirty to sixty days to allow the water portion
of the emulsion to evaporate.
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Application No. 09/072,190
The examiner's determination of obviousness (answer, p.2
10) regarding the mixing of the components of "Reclaimite" is
not part of the rejection under appeal and will not be
considered by this panel of the Board. Likewise, the
examiner's determination of obviousness (answer, p. 11)
regarding the adding of additional emulsifier is not part of
the rejection under appeal and will not be considered by this
(continued...)
Gaudio teaches that the percentage weights of component
per composition vary from 75% weight composition roughage to
96% weight composition roughage, 2% weight asphalt particulate
to 20%
weight asphalt particulate, and 1% weight solvent to 3% weight
solvent.
With respect to claim 5, the examiner determined (answer,
pp. 6-7) that it would have been obvious to evenly apply the
particulated asphalt composition of Gaudio to a surface to be
paved and to evenly apply compaction to the applied
particulated asphalt composition in order to produce an evenly
paved surface in view of Gaudio's teaching that his
particulated asphalt composition was capable of being used for
repairing or constructing paved areas. Implicit in this2
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Application No. 09/072,190
(...continued)2
panel of the Board.
Such a water-based emulsion type rejuvenator would3
inherently include a rejuvenating oil, water and an
emulsifier. Note page 8, lines 5-6, of the brief wherein the
appellant admits an emulsifier is present in Reclamite.
rejection is the examiner's view that the above noted
modifications of Gaudio would result in a method which
corresponds to the method recited in claim 5 in all respects.
The appellant argues (brief, pp. 6-8) that Gaudio does
not disclose step (d) of claim 5 (mixing an emulsifier to the
rejuvenating oil, granules and aggregate). We agree. While
Gaudio does teach the step of mixing a water-based emulsion
type rejuvenator (e.g., "Reclaimite") with the particulated3
asphalt (i.e., granules) and crushed roughage (i.e.,
aggregate), Gaudio does not teach or suggest the step of
mixing an emulsifier to an already mixed mixture of
rejuvenating oil, granules and aggregate. Thus, the examiner
has failed to establish that the claimed subject matter of
claim 5 would have been obvious at the time the invention was
made to a person having ordinary skill in the art.
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Application No. 09/072,190
For the reasons set forth above, the decision of the
examiner to reject claim 5, and claims 6 and 7 dependent
thereon, under 35 U.S.C. § 103 is reversed.
Claims 1 to 4 and 8 to 11
Independent claim 1 includes the step of mixing
emulsifier to the aggregate, roof waste granules and
rejuvenating oil. Independent claim 8 includes the step of
mixing emulsifier to the combined material mixture of
granules, aggregate and rejuvenating oil.
We have reviewed the references to Grzybowski and
Bladykas but find nothing therein which makes up for the
deficiency of Gaudio discussed above regarding claim 8.
Likewise, the teachings of the applied prior art are not
suggestive of the above-noted mixing steps of claims 1 and 8.
Accordingly, the decision of the examiner to reject claims 1
and 8, and claims 2 to 4 and 9 to 11 dependent thereon, under
35 U.S.C. § 103 is reversed.
Claim 12
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Application No. 09/072,190
We note that a disclosure that anticipates under 354
U.S.C. § 102 also renders the claim unpatentable under 35
U.S.C. § 103, for "anticipation is the epitome of
obviousness." Jones v. Hardy, 727 F.2d 1524, 1529, 220 USPQ
1021, 1025 (Fed. Cir. 1984). See also In re Fracalossi, 681
(continued...)
The examiner determined (answer, p. 7) that Gaudio
teaches in Example 1, a pavement and patch material that
appears to meet the limitations of claim 12. The examiner
noted that from the disclosure in column 5, lines 8-20, that
"Reclaimite" in Example 1 would necessarily include an
emulsifier.
The appellant argues (brief, p. 8) that claim 12 is
allowable for the reasons provided with regard to claim 5. We
do not agree. Claim 12 does not require the emulsifier to be
added (i.e., mixed) to the combined material mixture of
granules, aggregate and rejuvenating oil as recited in claim
5. Thus, the appellant's argument is not commensurate in
scope with claim 12. Clearly, the pavement and patch material
disclosed by Gaudio in Example 1 includes recycled asphalt
roof waste, aggregate and "Reclaimite" (a solution of water,
rejuvenating oil and an emulsifier). 4
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Application No. 09/072,190
(...continued)4
F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982); In re Pearson,
494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974).
For the reasons set forth above, the decision of the
examiner to reject claim 12 under 35 U.S.C. § 103 is affirmed.
Claims 13 to 19
The decision of the examiner to reject claims 13 to 19
under 35 U.S.C. § 103 is also affirmed since the appellant has
not argued separately the patentability of any particular
claim apart from the others, thus allowing claims 13 to 19 to
fall with claim 12 (see In re Young, 927 F.2d 588, 590, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Wood, 582 F.2d 638,
642, 199 USPQ 137, 140 (CCPA 1978); and 37 CFR § 1.192(c)(7)
and (8)(iv)).
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Application No. 09/072,190
CONCLUSION
To summarize, the decision of the examiner to reject
claims 12 to 15 under 35 U.S.C. § 112, second paragraph, is
affirmed; the decision of the examiner to reject claims 12 to
15 under
35 U.S.C. § 112, first paragraph, is reversed; the decision of
the examiner to reject claims 1 to 19 under 35 U.S.C. § 103 is
affirmed with respect to claims 12 to 19 and reversed with
respect to claims 1 to 11.
Appeal No. 2000-0027 Page 19
Application No. 09/072,190
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2000-0027 Page 20
Application No. 09/072,190
MACKALL CROUNSE AND MOORE
1400 AT AND T TOWER
901 MARQUETTE AVENUE
MINNEAPOLIS, MN 55402
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Application No. 09/072,190
JVN/ks