Ex Parte Ramme

Patent Trial and Appeal Board

Dec 16, 2014

12138019 (P.T.A.B. Dec. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BRUCE W. RAMME
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Appeal 2012-010517
Application 12/138,019
Technology Center 1700
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Before CHARLES F. WARREN, MARK NAGUMO, and
DONNA M. PRAISS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board under 35 U.S.C. § 134(a) from the
decision of the Primary Examiner finally rejecting claims 1, 2, 5–20, and
22–28 over Bland (US 6,334,895 B1), Gray (US 6,046,255), Pacanovsky
(US 5,634,972), Soroushian (US 5,935,317), and Schumacher (US
2008/0178770 A1). App. Br. 5; Ans. 4. We have jurisdiction. 35 U.S.C.
§ 6(b).
We reverse the decision of the Primary Examiner.
Claim 1 illustrates Appellant’s invention of a process for preparing a
controlled low-strength material having a compressive strength of 1200 psi
or less (Spec. ¶¶ 0019–0022), and is representative of the claims on appeal:
1. A process for preparing a controlled low-strength material having
as compressive strength of 1200 psi or less, the process comprising:
Appeal 2012-010517
Application 12/138,019
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preparing a mixture including water and a cementitious material,
wherein the cementitious material is selected from the group consisting of
cement-kiln dust, lime-kiln dust, and slag cement;
recovering exhaust gas from a combustion chamber, wherein the
exhaust gas includes carbon dioxide;
forming a foam including a foaming agent and the exhaust gas;
mixing the foam into the mixture to form a foamed mixture; and
thereafter allowing the foamed mixture to set to form the controlled
low-strength material,
wherein during the step of allowing the foamed mixture to set, the
carbon dioxide in the exhaust gas reacts with hydration products in the
controlled low-strength material to sequester carbon dioxide.
App. Br. A-1 (APP’X A Claims of Patent Application No. 12/138,019).
OPINION
We agree with Appellant that the Examiner erred in concluding that
the combination of Bland and Gray,1 as relied on by the Examiner, would
have led one of ordinary skill in the art to combine an exhaust gas containing
carbon dioxide with a foam forming agent to form a foamed mixture, and to
then combine the foamed mixture with a mixture of water and cementitious
material, thus arriving at a process for preparing a controlled low-strength
material encompassed by claim 1. Ans. 4–6, 9–10; App. Br. 6–11; Reply Br.
6.
The Examiner finds that Bland would have disclosed the
preconditioning of ash by contact with flue gas containing carbon dioxide,
and that the density of the aggregate material can be reduced by adding a
foaming agent which generates gas bubbles. Ans. 5 (citing Bland col.14

1 The Examiner relies on Pacanovsky and Schumacher with respect to the
cementitious material selected from cement-kiln dust, lime-kiln dust, and
slag cement with respect to claim 1, and on Soroushian with respect to claim
10. Ans. 4–7.
Appeal 2012-010517
Application 12/138,019
3
ll.6–14). The Examiner finds that Gray would have disclosed an aerated
cement formed from a liquid concrete, containing cement, water, and
aggregate, by a process in which the liquid concrete is mixed with a foamed
mixture formed by mixing a foaming agent with “a suitable gas such as air;”
and that Bland would have disclosed that “other suitable gases for foaming
include flue gas.” Ans. 5 (citing Gray col.7 ll.11–15; Bland col.6 ll.1–3).
Appellant contends that Bland uses flue gas containing carbon dioxide in an
ash preconditioning step and does not disclose the use of this flue gas to
form a foamed mixture. App. Br. 6–7, 10–11; Reply Br. 6.
We find that, as Appellant points out, Bland would have disclosed to
one of ordinary skill in the art a process in which the step of preconditioning
the ash, including the use of flue gas containing carbon dioxide, occurs
before the addition of other materials including foaming agents and air
entraining agents. Bland col.14 ll.5–19, col.18 ll.10–18, col.19 ll.31–35.
We further find that, as Appellant points out, Gray would have disclosed to
one of ordinary skill in the art a foam material which is prepared from a
foaming agent or surfactant and any suitable gas, such as air, for entraining
in a cement mixture. Gray col.2 l.31–col.3 l. 2, col.5 l.65–col.6 l.6.
On this record, we agree with Appellant that the Examiner has not
established that the combination of Bland and Gray would have suggested to
or otherwise motivated one of ordinary skill in the art to modify Bland’s
process, which includes a step in which ash is preconditioned with flue gas
before other materials are added thereto, by combining the flue gas with a
foaming agent to form a foamed mixture, and then using the foamed mixture
as the source of flue gas in the ash preconditioning step, in the absence of
Appellant’s Specification. Indeed, we are of the opinion that the Examiner
has not adduced evidence or otherwise explained the basis which would
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Application 12/138,019
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have motivated one of ordinary skill in the art to use a foamed mixture
including flue gas in Bland’s ash preconditioning step on which the
Examiner relies. Thus, the Examiner has not explained why the
modifications would have been made in the absence of Appellant’s
Specification and claims, which is tantamount to impermissible hindsight.
See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can
be important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.”); In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”); In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998)
(“hindsight” is inferred when the specific understanding or principal within
the knowledge of one of ordinary skill in the art leading to the modification
of the prior art in order to arrive at appellant’s claimed invention has not
been explained); In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing
In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (“The mere fact that the
prior art may be modified in the manner suggested by the Examiner does not
make the modification obvious unless the prior art suggested the desirability
of the modification.” (citation omitted)); see also, e.g., In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992).
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the ground of rejection of claims 1, 2, 5–20, and 22–28 under
35 U.S.C. § 103(a).

Appeal 2012-010517
Application 12/138,019
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The Primary Examiner’s decision is reversed.
REVERSED

cdc