Ex Parte Scott

Board of Patent Appeals and Interferences

Feb 25, 2010

10037630 (B.P.A.I. Feb. 25, 2010)

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UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte J. BLAKE SCOTT
______________

Appeal 2009-009393
Application 10/037,630
Technology Center 1700

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Decided: February 25, 2010
_______________

Before CHARLES F. WARREN, TERRY J. OWENS, and
LINDA M. GAUDETTE, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant filed a Request For Rehearing pursuant to 37 C.F.R. § 41.52 on
October 21, 2009 (Request), of our Decision entered August 28, 2009, and mailed
September 1, 2009 (Decision), wherein we affirmed the Examiner’s ground of
rejection under 35 U.S.C. § 103(a). Req. 1.
A request for rehearing must comply with 37 C.F.R. § 41.52(a)(1) which
specifies in pertinent parts that “[t]he request for rehearing must state with
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particularity the points believed to have been misapprehended or overlooked by the
Board”; and that “[a]rguments not raised in the briefs before the Board and
evidence not previously relied upon in the brief and any reply brief(s) are not
permitted in the request for rehearing except as permitted by paragraphs (a)(2) and
(a)(3) of this section.” See also 37 C.F.R. § 41.37(c)(1)(vii) (“Any arguments or
authorities not included in the brief or a reply brief filed pursuant to § 41.41 will be
refused consideration by the Board, unless good cause is shown.”). Thus,
37 C.F.R. § 41.52(a)(1) limits “requests to the points of law or fact which appellant
feels were overlooked or misapprehended by the Board” and were raised in the
brief and any reply brief(s). Manual of Patent Examining Procedure (MPEP) §
1214.03 (8th ed., Rev. 3, August 2005).
Appellant submits that five points in the Decision have been
misapprehended or overlooked. Req. 1-5. We consider the points in the order
presented in the Request.
Point 1: Overbroad Construction of Claim 1
Appellant submits that our interpretation of claim 1 as encompassing
“‘shaping and sizing the mixture into any manner [] of load-bearing structure and
curing the load-bearing structure’” does not reflect that “claim 1 specifies [] [t]he
specific shape and size of the load bearing structure as cured must also satisfy the
rutting resistance specified in part (2.1.2) or (2.2.2) of claim 1.” Req. 1, citing
Dec. 5.
Appellant argues:
The Board does not point to any part of Polston, or any other prior art,
which teaches that forming and curing a mixture in the form of an
aggregate, or in any other shape, followed by breaking the cured
material into an aggregate, then spreading this aggregate on a base is
“equivalent or substantially equivalent” to adding aggregate, whether
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cured or not, to a still uncured cementitious mixture, shaping and
sizing this mixture into particles before the mixture is cured, and then
curing the latter into the load bearing structure actually to be used, to
fall within the scope of the claims on appeal.
Req. 1 (emphasis supplied).
Thus, Appellant contends that if the Board is of the opinion “that the process
taught by Polston is ‘identical or substantially identical to the claimed processes,’”
as we set forth in the Decision at page 14, we should “state so explicitly.” Req. 1-
2.
We are not persuaded of error in our Decision in these respects. With
respect to Appellant’s claim interpretation position, we did determine that claim 1
encompasses two mixtures, each formed by a different set of steps: “the
cementitious mixture [which] is shaped and sized into any manner of load-bearing
structure;” and the mixture containing “emulsified asphalt; shaping and sizing the
mixture into any manner of load-bearing structure.” Dec. 5. We determined that
claim 1 further specifies that “a pozzolanic reaction . . . forms the load-bearing
structure” with the “cementitious mixture;” and the “emulsified asphalt” mixture
forms the load-bearing structure by “curing the load-bearing structure.” Dec. 5.
Appellant overlooks our further determination that “claim 1 specifies only
that the ‘load-bearing structure’ is formed by shaping and sizing prior to curing in
either of the two sets of steps, and has at least the specified ‘resistance to rutting’
property.” Dec. 6. Indeed, we gave the claim terms the broadest reasonable
interpretation in light of the Specification: “[t]he terms ‘load-bearing structures’
and ‘load-bearing structure’ in the preamble of claim 1 and in the body of the
claims are not defined with respect to structure in the claims or in the
Specification, and thus encompass any manner of load-bearing structure, including
a single layer load-bearing structure, subject to other limitations in claim 1.” Dec.
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6. In doing so, we cited Spec., e.g., 4:25-30 and 24:17 to 25:7. Dec. 6. Appellant
does not contend that these parts of the Specification do not support our
interpretation of the claim terms. Req. 1-2.
Thus, contrary to Appellant’s position, we interpreted claim 1 in light of the
Specification as encompassing any manner of load-bearing structure that can be
shaped and sized to any extent with either the “cementitious mixture” or the
“emulsified asphalt” mixture, as respectively produced by the two sets of steps
specified in this claim, which shaped and sized structure is then “cured” by
“pozzolanic reaction” or “curing,” respectively, to form any load-bearing structure
which satisfies the specified “resistance to rutting” property. Dec. 5-6. See, e.g.,
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language
carrying a narrow meaning, the PTO should only limit the claim based on the
specification or prosecution history when those sources expressly disclaim the
broader definition.”).
With respect to Appellant’s fact finding position, we did not find that
Polston teaches a method of “forming and curing a mixture in the form of an
aggregate, or in any other shape,” “breaking the cured material into an aggregate,”
and “spreading this aggregate on a base,” as Appellant contends. Appellant neither
points out where we made such findings in our Decision, nor cites to teachings in
Polston which support Appellant’s asserted findings.
Indeed, we clearly found that:
Polston would have disclosed to one of ordinary skill in this art, as
illustrated by embodiments depicted in Figure 2, a method for making
a road base material by mixing, among other things, oil and gas waste
materials, such as well drilling cuttings, aggregate material, and at
least one binder. Polston, e.g., Abstract, col. 1, ll. 10-18 and 42-57,
col. 2, ll. 1-49, col. 2, l. 66 to col. 3, l. 18, col. 4, ll., 21-24, and 35-42,
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col. 7, ll. 32-36, col. 8, ll. 28-40, col. 11, ll. 26-53, and col. 12, l. 57 to
col. 14, l. 7.
Dec. 7-8; see also Dec. 8-9. We find no teaching in Polston, including the steps of
forming “stabilized road base 20” illustrated in Polston’s Figure 2, in which an
aggregate containing mixture is formed and cured, the cured aggregate mixture
broken, and the broken aggregate mixture spread on a road base location, as
Appellant asserts.
Indeed, we found that “Polston discloses the road base material provides ‘an
environmentally safe roadbed’ when the composition is applied ‘to a road base
location,’ which is ‘a stabilized road base . . . of superior grade,’” and that the
material is tested for “compressive strength and vheem [sic] stability.” Dec. 9.
Thus, on this basis, we explicitly stated that
we determine that as the Examiner submits, one of ordinary skill in
this art routinely following the teachings of Polston would have
arrived at a process for constructing road base load-bearing structures
that incorporate drilling cuttings in a particulate mixture which
includes stabilizers, that reasonably appears to be identical or
substantially identical to the claimed process for constructing road
base load-bearing structures that incorporate drilling cuttings in a
particulate mixture which includes stabilizers encompassed by
appealed claim 1, even though the claimed resistance to rutting
property obtained with the claimed process is not expressly taught by
Polston.
Dec. 14. see, e.g., In re Spada, 911 F.2d 705, 708-09 (Fed. Cir. 1990) ((“The Board
held that the compositions claimed by Spada ‘appear to be identical’ to those
described by Smith. While Spada criticizes the usage of the word ‘appear’, we
think that it was reasonable for the PTO to infer that the polymerization by both
Smith and Spada of identical monomers, employing the same or similar
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polymerization techniques, would produce polymers having the identical
composition.”).
We maintain this determination on reconsideration in light of Appellant’s
position.
Point 2: Apparently Insufficient Finding of Fact
Appellant submits that we “did not find as a fact that Polston . . . teaches
other important limitations of claim 1, i.e., shaping and sizing the load-bearing
structure and subsequently curing it so that it has the rutting resistance specified in
parts (2.1.1) and (2.1.2) of claim 1, for example.” Req. 2, citing Dec. 7. Appellant
contends that this “process difference” was “explained” in the “Second
Supplemental Reply Brief.” Req. 2.
We find that the “Second Supplemental Reply Brief” is the “Reply Brief To
The Second Corrected Supplemental Examiner’s Answer” filed January 27, 2009.1
We fail to find in this Reply Brief the argument quoted in the Request at page 2,
and thus, we have not considered it. 37 C.F.R. § 41.52(a)(1); see above pp. 1-2.
Appellant submits that Polston discloses a “road base composition . . . at
column 4, lines 38-42 [which] is already ‘cured’, as indicated in Figure 2, and has
typically been stored, as indicated at column 3, lines 26-30.” Req. 3. Thus,
Appellant argues “[t]here is therefore no suggestion in [Polston] that the final size
and shape of the load-bearing structure that it teaches undergoes a pozzolanic or

1 We inadvertently indicated in our Decision that we considered the Reply Brief
filed “November 1, 2009.” Dec. 3, n.2. The Reply Brief we considered was filed
January 27, 2009, subsequent to the Examiner’s Answer mailed December 24,
2008, which was in response to the Appeal Brief filed November 3, 2008. See
Dec. 3, n.2., citing p. 3 of our Remand entered August 26, 2008, in this
Application.
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asphaltic cure after being put into place as a load bearing structure, as required by
all pending claims.” Req. 3.
We find Polston discloses “[t]he result of the novel process is to provide a
novel road base composition which is made up of treated oil and gas waste material
and an aggregate and to apply such composition to a road base location,” and
“[t]he manufactured road base typically is mixed, processed, and likewise stored
surrounded by earthen berm and on a cement and/or other physical barrier that will
prevent leaching of liquid contaminates into the soil.” Polston, col. 4, ll. 38-42,
and col. 3, ll. 26-30.
We found, among other findings, that “Polston discloses the binder(s) can be
‘cement, fly ash, lime, kiln dust or the like, [which] will achieve an irreversible
pozzolanic chemical reaction necessary for a road base,’ and ‘[a]n asphalt emulsion
may be included in the binder to manufacture asphalt stabilized road base.’
Polston col. 2, ll. 45-49.” Dec. 8. We further found that “Polston discloses the
road base material provides ‘an environmentally safe roadbed’ when the
composition is applied ‘to a road base location,’ which is ‘a stabilized road base
. . . of superior grade . . . that will not leach’ substances in violation of the Clean
Water Act.’ Polston, e.g., col. 3, ll. 13-18, col. 4, ll., 21-24 and 35-42.” Dec. 9.
We also found that Polston adds, among other things, Portland cement as a
stabilizer and an asphalt emulsion as a binder that “results in a stabilized road bed
product,” and tests the cured product for, among other things, “compressive
strength.” Dec. 9-10, quoting Polston col. 8, l. 55 to col. 9, l. 31, and Fig. 2.
On this record, we determine that one of ordinary skill in this art, armed with
knowledge of road construction, would have recognized from Polston’s teachings
that the formation of a bound, stabilized road bed with Polston’s composition
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would require shaping and sizing of Polston’s composition to form the road bed
which can be compression tested. Thus, contrary to Appellant’s contention,
knowledge of Appellant’s invention would not be necessary for this person to
arrive at a process for construction of a load-bearing structure following the
teachings of Polston that falls within appealed claim 1. Req. 3.
Point 3: Another Apparently Insufficient Finding of Fact of Citation of Art
Appellant submits that we “apparently accepted[] only the possibility of
making . . . a modification” in Polston’s disclosure in order to arrive “at a process
for constructing road base load-bearing structures . . . encompassed by appealed
claim 1, even though the claimed resistance to rutting property obtained with the
claimed process is not expressly taught by Polston.” Req. 3, quoting Dec. 14.
Appellant argues that Polston’s disclosure would not have provided the suggestion
and reasonable expectation of success to one of ordinary skill in this art to arrive at
the claimed process encompassed by claim 1. Req. 3-4. In this respect, Appellant
contends that “neither the examiner nor the Board has ever cited any evidence that
it was known in the prior art that any measurement of compressive strength could
be correlated with rutting resistance, expect in the special case of continuous
pavement layers,” citing “footnote 1 of the Little Declaration.” Req. 4. Thus,
Appellant contends that we relied on “common knowledge” with respect to
“resistance to rutting” without citing evidentiary support. Req. 4.
We set forth our findings leading to our determination that one of ordinary
skill in this art routinely following the teachings of Polston, including the disclosed
testing for compressive strength, would have arrived at the claimed process for
constructing load-bearing structures falling within claim 1. Dec. 10-14. We
further addressed Appellant’s contrary position:
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We disagree with Appellant’s position that one of ordinary skill in the
load-bearing structure arts, inclusive of civil engineers of ordinary
skill, would not have reasonably expected to arrive at the claimed
resistance to rutting property specified in claim 1. App. Br. 10-14.
We agree with Appellant that, as established by Declarant Little’s
testimony, a civil engineer of ordinary skill would not find in Polston
specific disclosure of compress strength testing methods or rut
resistance data obtained by laboratory testing leading to the claimed
resistance to rutting property. App. Br. 10-11, citing Little Decl. ¶
8(1).
However, in this respect, we find that ASTM test methods for
determining Unconfined Compress Strength (UCS) were known in the
art as disclosed in the Specification. Spec., e.g., 18:22-24, 20:27-29,
25:25 to 26:12, 27: 8-11, and Table 2. Thus, one of ordinary skill in
this art armed with knowledge of such known test methods would
have applied the same following the direction in Polston to determine
appropriate amounts of ingredients in the particulate mixtures by
compress strength testing to arrive at the desired compress strength
properties for the road base load-bearing surface, with a reasonable
expectation of success in obtaining the desired properties. See, e.g., In
re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For
obviousness under § 103, all that is required is a reasonable
expectation of success.” (citations omitted)). Indeed, Appellant does
not argue and Declarant Little does not attest that testing methods
known in the art would be expected by one of ordinary skill in this art
to require more than routine experimentation to arrive at a desired
compressive strength for Polston’s road base.
Thus, we are not convinced by Appellant’s arguments and
Declarant Little’s testimony that explicit directions for load bearing
and rutting resistance testing and laboratory data based thereon must
be disclosed by Polston in order for one of ordinary skill in this art to
follow Polston’s direction to compress strength test the road base with
a reasonable expectation of success when this person would have
inferred that art recognized ASTM procedures can be used for such
purposes with a reasonable expectation of success. See, e.g., KSR,
550 U.S. at 421; Fritch, 972 F.2d at 1264-65; O’Farrell, 853 F.2d at
903-04; Sovish, 769 F.2d at 742-43; Preda, 401 F.2d at 826-27.
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We do agree with Appellant that not every road base within
Polston’s teachings would have the claimed rutting resistance property
specified in claim 1. App. Br. 12-14. However, Appellant does not
argue that a road base exhibiting the claimed resistance to rutting
property cannot be obtained by routinely following Polston’s process
for constructing road base load-bearing structures that incorporates
drilling cuttings in a particulate mixture and employing compress
strength testing methods as directed by Polston.
Dec. 15-16.
Appellant has not explained in the Request how our opinion in these respects
does not establish that one of ordinary skill in this art with knowledge of
compression test methods known in the art would not have employed such methods
in following the direction in Polston to conduct testing for compressive strength.
Indeed, we recognized that there is no evidence in this record that the ATSM test
methods employed in the Specification were known in the art to correlate to
“resistance to rutting” per se. However, we also recognized that the claimed
process encompassed by claim 1 is defined therein by mixing certain ingredients in
amounts such that when the composition sets up as a shaped and formed load-
bearing structure, that structure must exhibit compressive strength to the extent of
the claimed resistance to rutting property. Dec., e.g., 5-6 and 13-16.
In other words, the limitations of claim 1 are met if one of ordinary skill in
this art, routinely following the teachings of Polston, mixes the ingredients taught
by Polston so as to obtain a load-bearing structure having a compressive strength at
least equivalent to the claimed resistance to rutting property. Indeed, claim 1
specifies the construction of any “load bearing structure having sufficient
resistance to rutting that any rut formed in such surface by 10,000 applications of a
single axle load of 18,000 pounds will have a depth of rutting that is less than 1
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inch,” regardless of the “suboperations” employed to prepare the mixture, not that
testing for such property is part of the claimed process. See Dec. 6.
The fact that Appellant expressed the compressive strength requirement in
terms of resistance to rutting and thus, in a manner not stated in the art, does not
confer patentability. See, e.g., In re Skoner, 517 F.2d 947, 950-51 (CCPA 1975)
(“Appellants have chosen to describe their invention in terms of certain physical
characteristics. . . . Merely choosing to describe their invention in this manner
does not render patentable their method which is clearly obvious in view of [the
reference].” (citation omitted)). Thus, since we have no means to resolve the
compress strength issue because the USPTO has no facilities to test compositions
prepared according to the teachings of Polston with respect to a level resistant to
rutting, it is Appellant’s burden to patentably distinguish the claimed invention
over Polston. See, e.g., Spada, 911 F.2d at 708 (“[W]hen the PTO shows sound
basis for believing that the products of the applicant and the prior art are the same,
the applicant has the burden of showing that they are not.”); In re Best, 562 F.2d
1252, 1254-56 (CCPA 1977).2 Accordingly, we remain of the view that Appellant
has not carried this burden in the request.

2 Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially
identical processes, the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the
characteristics of his claimed product. Whether the rejection is based
on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’
under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is
the same, and its fairness is evidenced by the PTO’s inability to
manufacture products or to obtain and compare prior art products.
(footnote and citations omitted).
Best, 562 F.2d at 1254-56.
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Point 4: Arguments Against the pertinence of Some Authorities
Applied by the Board
Appellant submits that several cases we cited are inapplicable based on
Appellant’s conclusion that the facts establish that the claimed invention is
patentable over Polston. Req. 4-5. We disagree. See Dec. 14-18. We cited Spada,
911 F.2d at 708, and Skoner, 517 F.2d at 950-51. We note with respect to Merck &
Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the ‘813
patent discloses a multitude of effective combinations does not render any
particular formulation less obvious. This is especially true because the claimed
composition is used for the identical purpose.”), that both the claimed process and
those of Polston involve formulations containing the same ingredients that are used
for the same purpose of forming load-bearing structures. With respect to In re
Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a
result effective variable in a known process is ordinarily within the skill of the
art.”), a result effective variable in the claimed process and those of Polston is the
compressive strength imparted by the drilling cuttings. We cited In re O’Farrell,
853 F.2d 894, 903-04 (Fed. Cir. 1988), as an example of a case illustrating the
proposition that “[f]or obviousness under § 103, all that is required is a reasonable
expectation of success (citations omitted).”
Point 5: Rebuttal of Other Arguments in the Opinion
Appellant submits that it is
Appellant’s position . . . [and] that of Declarant Little as well: “This
reference [Polston] can not give a civil engineer of ordinary skill any
reasonable expectation the rutting or plastic deformation resistance
required by the pending claims can be achieved by following the
teachings of this reference.” (p. 4-5 of the Declaration). The Board
apparently believes that its knowledge of the ordinary skill of persons
in the load-bearing structure arts is greater than Dr. Little’s. In view
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of Dr. Little’s eminent qualifications, this appears to be a dubious
conclusion, particularly in view of the statements of Dr. Little on
pages 2-3 of the Declaration that at least three things would be
required to give a civil engineer of ordinary skill such reasonable
expectation. None of these things is in the Polston reference, and no
prior art, excluding the specification whose claims are here on appeal,
has ever been cited to show that a person of ordinary skill would
known the specific correlation between rutting resistance and
compressive strength, layer thickness, and resilient moduli of all of
the layers in the road as taught in the specification and claimed in
claims 12, 14, and 15. Without a teaching of these correlations, there
is no reasonable expectation of success. [Citation omitted.]
Instead the Board has used the teachings of the specification to
guide a search of the prior art in the correct direction. This is contrary
to precedent. . . . The fact that the testing methods are known in the
art is not helpful until one knows what and what value(s) to test for.
Req. 5-6.
Appellant further argues, with respect to our statement “Appellant does not
argue that a road base exhibiting the claimed resistance to rutting property cannot
be obtained by routinely following Polston’s process for constructing road base
load-bearing structures that incorporates drilling cuttings in a particulate mixture
and employing compress [sic] strength testing methods as directed by Polston”
(Dec. 16), that “[i]f the modifying phrase ‛as directed by Polston’ is restricted to
modifying test ‘methods’ and if ‘routinely’ includes making and testing every
possible variation of compressive strength, with unlimited time available, this
statement may be correct.” Req. 6.
We have addressed Appellant’s contentions that Polston must disclose the
claimed resistance to rutting property in order to be relied on under § 103(a). Req.
5-7; see above pp. 8-11. We disagree with Appellant’s position that one of
ordinary skill in this art would not have arrived at the claimed processes
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encompassed by claim 1 following Polston’s direction to conduct compressive
testing without express disclosure of the property of resistance to rutting in Polston
for reasons we have stated. See above pp. 8-11.
We further note here that one of ordinary skill in the art is presumed to be
aware of all the pertinent prior art, and as a person of ordinary creativity in the art,
is presumed to have skills apart from what Polston expressly teaches. See, e.g.,
KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007); Custom Accessories, Inc.
v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); In re Sovish, 769
F.2d 738, 742 (Fed. Cir. 1985); In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).
Thus, in routinely following Polston’s teachings, the person of ordinary skill in the
art would have looked to tests for determining compressive strength known in the
art which reasonably include the ASTM test methods as disclosed in the
Specification. The fact that Appellant included such art recognized test methods in
the Specification does not remove those tests from the prior art applicable to the
claimed invention.
In conclusion, based on the foregoing, we have granted Appellant’s Request
to the extent we have reconsidered our decision, but we deny it with respect to
making any change therein.
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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a)(1)(iv).

DENIED

kmm

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