Ex Parte Scartezina

Board of Patent Appeals and Interferences

Mar 22, 2010

10136948 (B.P.A.I. Mar. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EDWARD J. SCARTEZINA
____________

Appeal 2009-004310
Application 10/136,948
Technology Center 1700
____________

Decided: March 22, 2010
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
CHARLES F. WARREN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 4-11, 22-24, and 27-32. We have jurisdiction
under 35 U.S.C. § 6.
We AFFIRM for the reasons expressed in the Answer and below.
Appeal 2009-004310
Application 10/136,948

Appellant claims a cementing apparatus 50 comprising a truck chassis
52 which carries a rotatable drum mixer 60, a holding tank 80, a pump 96,
and an outflow conduit 108 wherein one embodiment of the apparatus
further includes an intermediate conduit 90 having a valve 85 therein and a
coupling of the pump 96 to a transmission of the truck powered by an engine
of the truck (claim 1; Fig. 5) and wherein another embodiment of the
apparatus requires the pump 96 to be capable of pressurizing cement slurry
to a pressure greater than about 700 psi and further includes a ball valve 234
for controlling introduction of materials into a bore hole 210 (claim 27; Figs.
5, 7).
Representative claims 1 and 27, the only independent claims on
appeal, read as follows:
1. Cementing apparatus, comprising:
a chassis of a truck;

a rotatable drum mixer supported by said chassis;

a holding tank supported by said chassis and positioned to receive a
cement slurry from said rotatable mixer;

an intermediate conduit in communication with said holding tank and
configured to transport said cement slurry therefrom;

a valve positioned at one end of or along a length of said intermediate
conduit for controlling flow of said cement slurry from said holding tank to

a pump in communication with said intermediate conduit, operably
coupled to a transmission of said truck and powered by an engine of said
truck, and configured to apply sufficient pressure to said cement slurry to
force said cement slurry down a drill hole; and

2
Appeal 2009-004310
Application 10/136,948

an outflow conduit in communication with said pump, said outflow
conduit configured to at least partially direct said cement slurry to a desired
location.

27. Cementing apparatus, comprising:

a single, readily transportable chassis;

a rotatable mixer supported by said chassis;

a holding tank supported by said chassis and positioned to receive a
cement slurry from said rotatable mixer;

an intermediate conduit in communication with said holding tank and
configured to transport said cement slurry therefrom;

a pump in communication with said intermediate conduit, said pump
configured to pressurize said cement slurry to a pressure of greater than
about 700 psi; and

an outflow conduit in communication with said pump, said outflow
conduit configured to at least partially direct said cement slurry to

a ball valve configured for assembly with an aperture of a cover for a
surface casing of a bore hole, said ball valve also being configured to control
introduction of materials through said cover and into an aperture of said
surface casing.

The Examiner relies upon the references set forth below as evidence
of obviousness:
Levake 3,206,171 Sept. 17, 1965
Cribb 4,199,262 Apr. 22, 1980
Lucore 5,050,995 Sep. 24, 1991
Stephens ‘632 5,419,632 May 30, 1995
Flood 5,730,523 Mar. 24, 1998
Stephens ‘596 5,803,596 Sep. 08, 1998
Dawson 5,868,327 Feb. 09, 1999
Kohli 6,488,088 B1 Dec. 03, 2002
3
Appeal 2009-004310
Application 10/136,948

Benckert (as translated) DE 42 04330 A1 Aug. 19, 1993
Ultimately, all appealed claims are rejected by the Examiner under 35
U.S.C. §103(a) as being unpatentable over various combinations of the
above-listed prior art. In contesting these rejections, Appellant presents no
separate arguments concerning any of the dependent claims including the
separately rejected dependent claims. Accordingly, in our assessment of this
appeal, we will focus on the rejections of independent claims 1 and 27.
Under 35 U.S.C. § 103(a), the Examiner rejects:
(a) independent claim 1 (and dependent claims 4-7) over Cribb
in view of Dawson and Flood;
(b) independent claim 27 (and dependent claims 28-30) over
Crib in view of Kohli and Lucore or Stephens ‘632;
(c) independent claim 1 (and dependent claims 4, 10, and 22-
24) over Benckert in view of Kohli and Flood;
(d) independent claim 27 (and dependent claims 28-30) over
Benckert in view of Dawson and Kohli and Lucore or
Stephens ‘632; and
(e) the remaining dependent claims on appeal over the above-
noted references in various combinations with the
previously listed prior art.
We will sustain each of the § 103 rejections advanced in this appeal
based on the findings of fact, conclusions of law, and rebuttals to argument
expressed by the Examiner in the Answer. We add the following comments
for emphasis.1

1 We observe that a number of Appellant’s arguments are not relevant to the
rejections proposed by the Examiner. For example, Appellant argues that
4
Appeal 2009-004310
Application 10/136,948

The rejection of independent claim 1 over Cribb, Dawson, and Flood
In making this rejection, the Examiner concludes that it would have
been obvious for an artisan (1) “to have provided the intermediate conduit of
Cribb with a valve therein as taught by Dawson for the purpose of
controlling discharge of liquid from the respective mixing chamber/holding
tank to the intermediate conduit” (Ans. 5) and (2) “to have coupled the pump
in Cribb to a truck transmission carried by the truck chassis and powered by
the engine of the truck as taught by Flood for the purpose of powering the
portable vehicle and driving the pump without the need for an additional
pump driving means” (Ans. 6).
Appellant argues that “there would have been no motivation for one
of ordinary skill in the art to have used a valve [as taught by Dawson] from
an apparatus for mixing low viscosity, lightweight materials in the apparatus
of Cribb because the peristaltic pump of Cribb acts as a valve, particularly
when used with the type of slurries disclosed in Cribb” (App. Br. 10). This
argument is unpersuasive. As stated in the Examiner’s above-quoted
obviousness conclusion, providing Cribb’s intermediate conduit with a valve
would have been motivated by the desire to control discharge of liquid
through the intermediate conduit. Furthermore, this motivation would not be
negated by Appellant’s assertion that “the peristaltic pump of Cribb acts as a

the rejection of claim 1 over Cribb, Dawson, and Flood is improper because
“one of ordinary skill in the art wouldn’t have been motivated to use either
[the Cribb or the Dawson] apparatus to pump a relatively viscous and heavy
cement slurry, such as the concrete mixed by the portable plant of Flood”
(App. Br. 10, first full para.). However, in making this rejection, the
Examiner does not propose using the apparatus of Cribb (or of Dawson) to
pump cement slurry. We will not separately address such irrelevant
arguments in our disposition of this appeal.
5
Appeal 2009-004310
Application 10/136,948

valve” (id.). This is because, even if a peristaltic pump acts a valve,
independently controlling discharge through Cribb’s intermediate conduit
with a valve still would be desirable, for example, during pump replacement
or repair.
For the reasons set forth above and in the Answer, Appellant has
revealed no error in the Examiner’s rejection of independent claim 1 over
Cribb, Dawson, and Flood.
The rejection of independent 27 over Cribb, Kohli,
and Lucore or Stephens ‘632
According to the Examiner,
it would have been obvious and mere common sense to one
having ordinary skill in the art, at the time applicant’s
invention was made, to have substituted the pump in Cribb
with a triplex type pump as taught by Kohli for the purposes
of allowing convenient control of slurry flow rates and
pressures

(Ans. 10).
In contesting this rejection, Appellant challenges only the above-
quoted obviousness conclusion based on Cribb and Kohli. Appellant’s
argument concerning this rejection follows:
Since the mixing drum of Cribb and the concrete pump of
Kohli both occupy the majority of a truck chassis, one of
ordinary skill in the art would have had no reason to expect
that both of these apparatus could be carried by the same
chassis. Nor, for the same reason, would one of ordinary
skill in the art have been motivated to combine the mixing
drum of Cribb and the concrete pumping system of Kohli
onto a single, readily transportable chassis.

(App. Br. 12, second para.).
6
Appeal 2009-004310
Application 10/136,948

This argument is unpersuasive because it is based on a legally
erroneous test for obviousness. Contrary to Appellant’s belief, the test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. In re Keller,
642 F.2d 413, 425 (CCPA 1981). Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. Id.
For the reasons well stated by the Examiner in the Answer, the
combined teachings of the applied references would have suggested
replacing Cribb’s pump with a triplex type pump as taught by Kohli.
The rejections of independent claims 1 and 27 over, inter alia, Benckert and
Kohli (claim 1) and Dawson (claim 27)
The Examiner concludes that
it would have been obvious and mere common sense to one
having ordinary skill in the art, at the time applicant’s
invention was made, to have substituted the pump in
Benckert with a triplex type pump as taught by Kohli for the
purposes of allowing convenient control of slurry flow rates
and pressures

(Ans. 16, 18).
Appellant argues that the Examiner’s proposed combination of
Benckert and Kohli would not have been obvious since the apparatus
components of these references could not be carried by the same truck
chassis (App. Br. 13). This argument corresponds to the unsuccessful
argument against the rejection of claim 27 based on the combination of
Cribb and Kohli. It follows that the argument under consideration is
unpersuasive for the reasons explained above.
7
Appeal 2009-004310
Application 10/136,948

Conclusion
We sustain each of the Examiner’s § 103 rejections before us in this
appeal.
The decision of the Examiner 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) (2008).

AFFIRMED

ssl

TRASKBRITT, P.C.
P.O. BOX 2550
SALT LAKE CITY, UT 84110
8