Ex Parte Scott

Board of Patent Appeals and Interferences

Aug 28, 2009

10037630 (B.P.A.I. Aug. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte J. BLAKE SCOTT1
______________

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

Decided: August 28, 2009
_______________

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

WARREN, Administrative Patent Judge.

1 The Examiner has not had the USPTO official electronic files reflect the
change in inventorship of this Application as including Billy R. Scott, and
Dallas N. Little as specified in our Remand entered August 26, 2008, in
Appeal 2008-4703 in this Application (“Remand”). Rem. 2 and 3; see
Examiner’s Answer mailed December 24, 2008 at 3. Thus, only J. Blake
Scott is listed here.
Appeal 2009-009393
Application 10/037,630
2
DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 1 through 20 in the Office Action mailed
April 6, 2006. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a)
(2008).
Claim 1 illustrates Appellant’s invention of a process for constructing
load-bearing structures incorporating drilling cuttings, and is representative
of the claims on appeal:
1. A process for constructing load-bearing structures incorporating
drilling cuttings, said process comprising operations of:
(1) forming a particulate mixture comprising drilling cuttings; and
(2) at least one of groups (2.1) and (2.2) of suboperations, said group
(2.1) comprising suboperations of
(2.1.1) mixing said particulate mixture comprising drilling cuttings
with at least one stabilizer selected from the group consisting of:
(A) quicklime;
(B) hydrated lime;
(C) Portland Cement;
(D) Class C fly ash;
(E) cement kiln dust;
(F) lime kiln dust;
(G) Class F fly ash; and
(H) other pozzolans
to form a cementitious second mixture,
(2.1.2) forming said cementitious second mixture into the shape and
size of the load-bearing structure; and
(2.1.3) causing the shaped and sized second mixture formed in
suboperation (2.1.2) to undergo pozzolanic reaction to form said load-
bearing structure, said load-bearing structure having sufficient resistance to
Appeal 2009-009393
Application 10/037,630
3
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
inch;
and said group (2.2) comprising suboperations of: (2.2.1) mixing said
particulate mixture comprising drilling cuttings with at least one of formed
asphalt and emulsified asphalt to form an asphaltic second mixture; (2.2.2)
forming said emulsified asphalt second mixture into the shape of the load-
bearing surface; and
(2.2.3) causing the shaped and sized second mixture formed in
suboperation (2.2.2) to form said load-bearing structure by curing said
shaped asphaltic second mixture, said 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 inch.
The Examiner relies upon the evidence in this reference (Ans. 5): 2, 3
Polston US 6,706,108 B2 Mar. 16, 2004
Appellant requests review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner (App. Br. 9): appealed claims
1 through 5, 8 through 10, 13, and 16 through 20 over Polston (Ans. 5).
The Examiner withdrew the ground of rejection with respect to
appealed claims 6, 7, 11, 12, 14, and 15. Ans. 4.
Appellant argues the original ground of rejection of appealed claims 1
through 20 on groups of claims: claims 1 through 6 and

2 We consider the Appeal Brief filed November 3, 2008, the Examiner’s
Answer mailed December 24, 2008, and the Reply Brief filed November 1,
2009. See Rem. 3.
3 We have not considered the United States Patents discussed at pages
16-17 of the Answer which have not been included in the statement of the
ground of rejection advanced on appeal. Ans. 5. See In re Hoch, 428 F.2d
1341, 1342 n. 3, (CCPA 1970); cf. Ex parte Raske, 28 USPQ2d 1304,
1304-05 (BPAI 1993).
Appeal 2009-009393
Application 10/037,630
4
8 through 10; claim 7; claim 11; claim 12; claim 14; and claims 13 and
15 through 20. App. Br. 10 and 18-20. In view of the ground of rejection
advanced by the Examiner and the new ground of rejection we enter below,
we decide this appeal based on claims 1, 6, 7, 11, 12, 14, and 15. 37 C.F.R.
§ 41.37(c)(1)(vii) (2008).
We affirm the ground of rejection of appealed claims 1 through 5, 8
through 10, 13, and 16 through 20. We further reinstate the ground of
rejection with respect to appealed claims 6, 7, 11, 12, 14, and 15 as a new
ground of rejection pursuant to our authority under 37 CFR § 41.50(b). See
Manual of Patent Examining Procedure § 1213.02 (8th ed., Rev. 3, August
2005).
Issue
The issue in this appeal is whether Appellant has shown that the
evidence in Polston does not support the Examiner’s conclusion of prima
facie obviousness with respect to the claimed process for constructing
load-bearing structures encompassed by representative appealed independent
claim 1 in the ground of rejection advanced by the Examiner as well as
encompassed by appealed dependent claims 6, 7, 11, 12, 14, and 15 which
we newly reject here.
Claim Interpretation
The issue entails the interpretation of claims 1, 6, 7, 11, 12, 14, and 15
by giving the terms thereof the broadest reasonable interpretation in their
ordinary usage in context as they would be understood by one of ordinary
skill in the art in light of the written description in the Specification unless
another meaning is intended by Appellant as established therein, and without
Appeal 2009-009393
Application 10/037,630
5
reading into the claims any disclosed limitation or particular embodiment.
See, e.g., In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004), and cases cited therein; In re Morris, 127 F.3d 1048, 1054-55
(Fed. Cir. 1997).
The plain language of independent claim 1 specifies a process which
comprises at least the operations or steps of forming any sized particulate
mixture comprising at least any manner of drilling cuttings that are
“produced by drilling through and/or into natural soil or rock” as defined in
the Specification (Spec. 1:22-24), and either of the following two sets of
suboperations or steps. The first set of steps “comprising” at least mixing the
particulate mixture with at least one stabilizer of the specified group
consisting of, among other things, quicklime, hydrated lime, Portland
Cement, Class C fly ash, cement kiln dust, lime kiln dust, and Class F
fly ash forming a cementitious mixture; the cementitious mixture is shaped
and sized into any manner of load-bearing structure; a pozzolanic reaction,
e.g., formation of calcium-silicate-hydrate and calcium-aluminate-hydrate
cementitious products, forms the load-bearing structure (Spec. 7:2-7). The
second set of steps “comprising” at least mixing the particulate mixture with
at least, among other things, an emulsified asphalt; shaping and sizing the
mixture into any manner of load-bearing structure; and curing the load-
bearing structure.
We note here that the open-ended term “comprising” in the preamble
and body of the claims opens the claims to include processes which contain
any manner of additional steps and components, such as, for example, the
Appeal 2009-009393
Application 10/037,630
6
inclusion of any asphalt component in the first set of steps and the inclusion
of any stabilizer(s) in the second set of steps. See, e.g., Exxon Chem. Pats.,
Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555 (Fed. Cir. 1995) (“The claimed
composition is defined as comprising - meaning containing at least - five
specific ingredients.”); In re Baxter, 656 F.2d 679, 686 (CCPA 1981) (“As
long as one of the monomers in the reaction is propylene, any other
monomer may be present, because the term ‘comprises’ permits the
inclusion of other steps, elements, or materials.”).
The 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. In this respect, 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. See Spec., e.g., 4:25-30 and 24:17
to 25:7. Dependent claims 12, 14, and 15 further specify an “unconfined
compressive strength of at least 100 psi” and a thicknesses based on the
resilient modulus of each of three subgrades on which the “load-bearing
structure” is “constructed.” The term “subgrade” appears from the
Specification to have its common, dictionary meaning of “[t]he level layer of
rock or earth upon which the foundation of a road or railway is laid.”4 See
Spec., e.g., 25:8-10.

4 See, e.g., subgrade, The American Heritage Dictionary of The English
Language 1724 (4th ed., Boston, Houghton Mifflin Company, 2000).
Appeal 2009-009393
Application 10/037,630
7
Dependent claims 6 and 11 specify that the stabilizer is a mixture of
Class C fly ash and Portland Cement, wherein Class C fly ash is first mixed
with the particulate mixture comprising drilling cuttings after which Portland
Cement is mixed therewith. Dependent claim 7 specifies the amount of
Portland Cement is at least 1.0% and the amount of Class C
fly ash is at least 2.0%, without specification of the unit of measure in either
instance, with the ratio of Class C fly ash to Portland Cement of at least
0.5:1.0 but not more than 10:1.0. The Specification discloses the amounts of
these ingredients “as a Percentage of Solids” without specifying either
weight or volume. Spec. 13, Table 1. For purposes of considering the
merits of the ground of rejection only, we will use the weight percent unit of
measure because we can do so without speculation, recognizing that our
conditional interpretation does not limit claim 7. Cf. In re Steele, 305 F.2d
859, 862-63 (CCPA 1962); Ex parte Saceman, 27 USPQ2d 1472, 1474
(BPAI 1993). The specified ranges of these stabilizers do not include an
upper limit.
In these respects, we find no basis in the language of the claims or in
the disclosure in the Specification on which to read any embodiment in the
Specification into the claims as a limitation. See, e.g., In re Zletz, 893 F.2d
319, 321-22 (Fed. Cir. 1989).

Findings of Fact
We find 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
Appeal 2009-009393
Application 10/037,630
8
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, 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.
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. Polston further discloses “adding such as portland cement (22) and a
binder such as asphalt emulsion (24),”wherein “Portland cement and asphalt
emulsion are added to waste mix (14) and mixed into the pug mill (18) or
may be added separately to the plug mill (18).” Polston col. 7, ll. 31-36 and
Fig. 2, and col. 9, ll. 29-31; see also col. 8, ll. 13-16 and
57-59.
Polston discloses “[s]olid waste from the oil and gas materials
typically contains naturally occurring aluminas and silicas found in soils and
clays” and “[t]he added pozzolan will typically contain either silica or
calcium ions necessary to create calcium-silica-hydrates and calcium-
aluminate-hydrates,” which “are essentially the same hydrates that form
during the hydration of Portland Cement.” Polston col. 2, ll. 51-61.
Polston discloses “[t]he aggregate including natural stone aggregate or
non-hazardous industrial waste adds structure strength and bulk to the final
mix.” Polston col. 2, ll. 62-65. The aggregate can range from ½" to 4" and
is added in varying amounts, preferably combined with the oil and gas waste
Appeal 2009-009393
Application 10/037,630
9
in an approximate ratio of one-to-one and 20/80 to 80/20. Polston col. 3, ll.
2-11, col. 7, ll. 57-66 and Fig. 2, col. 8, ll. 16-19, and col. 9,
ll. 3-10.
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. Polston discloses:
If an oil and gas waste treatment (28) is used, then the treated
oil and gas waste/road base composition material (29) are
mixed with the aggregate (61) and portland cement (22) and
emulsion (24) in a ratio that results in a stabilized road bed
product. That ratio is determined by testing leachability of the
roadbase for . . . [materials]; also for strength by testing for
compressive strength and vheem [sic] stability, pH and
chlorides. The ratio my be between 20/80 and 80/20, typically
50/50. . . .
. . . .
. . . The stabilizer (22) is, typically, comprised of portland
cement. A binder (24) is also provided, typically asphalt
emulsion. While the portland cement and asphalt can be added
in desired quantities, it has been found that portland cement
added in [sic] range of ½-10% of the final product weight and
asphalt emulsion added in [sic] range of ½-10% of the final
product weight provides good characteristics for the finished
product. The oil/aggregate waste mix (14), binder (24), and
stabilizer (22) are mixed and cured and the final product,
stabilized road base (20) as determined by compressive strength
testing and leachate testing results. Portland cement and asphalt
emulsion are added to waste mix (14) and mixed into the pug
mill (18) or may be added separately to the pug mill (18). . . .
Polston col. 8, l. 55 to col. 9, l. 31, and Fig. 2.
Appeal 2009-009393
Application 10/037,630
10

Opinion
We considered the totality of the record in light of Appellant’s
arguments with respect to claims 1, 6, 7, 11, 12, 14, and 15 and the ground
of rejection advanced on Appeal. See, e.g., In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006) (“‘On appeal to the Board, an applicant can
overcome a rejection by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.’”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(“After evidence or argument is submitted by the applicant in response,
patentability is determined on the totality of the record, by a preponderance
of evidence with due consideration to persuasiveness of argument.”) (citing,
inter alia, In re Spada, 911 F.2d 705, 707 n.3 (Fed. Cir. 1990)).
We are of the opinion Appellant has not shown that the evidence in
Polston does not support the Examiner’s conclusion of prima facie
obviousness with respect to the claimed process for constructing load-
bearing structures encompassed by representative appealed independent
claim 1 and by newly rejected appealed dependent claims 6, 7, 11, 12, 14,
and 15.
Claim 1
Appellant submits that one of ordinary skill in the civil engineering
arts would understand that Polston’s term “road base” does not fall within
the claim term “load bearing structure” in claim 1 because “Polston uses the
Appeal 2009-009393
Application 10/037,630
11
term ‘road base’ as a short form for ‘road base material’ or ‘road base
composition.’” App. Br. 14-17; see also Reply Br. 6--8. Appellant points to
the Little Declaration under 37 C.F.R. § 1.132 “[f]or . . .[an] authoritative
explanation of the normal meaning of the term ‘road base’ in civil
engineering.”5 App. Br. 16.
We find Declarant Little attests:
A civil engineer of ordinary skill would recognize that [Polston]
teaches the manufacture of “road bases” and of compositions
for making road bases by spreading the compositions on a road
base site and that the practical use of a road base is to support
an overlaying material, usually called “surface layer”, that
constitutes the final outer surface of a road ready to be used.
The road base, together with the overlying surface, and the
natural earth subgrade and any other intermediate layers that
may be present also supports traffic loads after the construction
of the road is competed and the road begins to be used. After a
road base is surfaced, the surface as well as the road base will
be the part of the road that is susceptible to being rutted or
plastically deformed by traffic loads. Therefore, rutting
resistance is not confined to the base layer but affects all layers
as they interact as a system. . . .
Decl. ¶ 8(2).
The Examiner submits that one of ordinary skill in this art would have
understood from Polston “that a road base can still be construed or
interpreted to mean a load bearing structure,” and argues the claimed
resistance to rutting limitation “would have been a property expected
because [Polston] mixes the same components to form a road base which is a
load bearing structure.” Ans. 5-6. The Examiner further submits that
Appeal 2009-009393
Application 10/037,630
12
“[e]ven if a road base is a sublayer, it still bears the load underneath the road
top layer,” and points to the disclosure at page 4, lines 25-30, of the
Specification that the composition encompassed by claim 1 “can be
converted and/or incorporated into excellent high-load-bearing civil
engineering structures such as vehicle roads and drilling pads.” Ans. 8.
We interpreted the claim term “load bearing structure” in claim 1 to
include any manner of structure, including a single layer load-bearing
structure, which can be formed by shaping and sizing the mixed particulate
composition prior to curing by either or both sets of steps, and have the
specified resistance to rutting property. See above pp. 5-6. We are not
persuaded by Appellant’s arguments and Declarant Little’s testimony that
the claim term “load bearing structure” is limited to multi-layer structures, as
indeed, on this record, there is no basis in either the language of claim 1 or
the disclosure in the Specification to impart such a limitation into claim 1, as
the Examiner points out. See above p. 7.
With respect to the teachings one of ordinary skill in this art would
find in Polston, it is well settled that a reference stands for all of the specific
teachings thereof as well as the inferences one of ordinary skill in the art
would have reasonably been expected to draw therefrom, see In re Fritch,
972 F.2d 1260, 1264-65 (Fed. Cir. 1992); In re Preda, 401 F.2d 825, 826-27
(CCPA 1968), presuming skill on the part of this person, In re Sovish,

5 Declaration under 37 C.F.R. § 1.132 by Dr. Dallas N. Little (“Little
Declaration”), executed January 13, 2006, and submitted February 6, 2006.
App. Br. 31.
Appeal 2009-009393
Application 10/037,630
13
769 F.2d 738, 742-43 (Fed. Cir. 1985). Indeed, a person of ordinary skill is
not an automaton but is a person of ordinary creativity. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007).
We found above that Polston would have disclosed to one of ordinary
skill in the load-bearing structure arts, inclusive of civil engineers of
ordinary skill as Declarant Little attests, a road base composition and the use
of that road base composition to form a road base when the composition is
applied to a road base location. Polston would have provided this person
with the direction to arrive at workable and optimum amounts of ingredients
in the compositions which can be adjusted based on, among other things,
compressive strength testing to obtain desired properties. See above p. 9.
Indeed, we find that even Declarant Little attests that a civil engineer of
ordinary skill would recognize Polston “teaches the manufacture of ‘road
bases’ and of compositions for making road bases by spreading the
compositions on a road base site.” See above p. 11. Thus, Appellant’s
contention that Polston’s disclosure is limited to “road base materials” and
“compositions” but not to the “road base” produced therewith is without
merit.
Consequently, on this record, we are of the opinion that Polston’s road
base layer produced with the disclosed road base composition is a “load-
bearing structure” as this term is used in the appealed claims. Furthermore,
Appellant does not dispute that Polston’s road base material or composition
falls within the claimed particulate mixtures that include one or more
stabilizers and can include emulsified asphalt as specified in the two sets of
Appeal 2009-009393
Application 10/037,630
14
steps encompassed by claim 1, as we interpreted this claim. See above pp.
5-6. See App. Br., e.g., 10-18.
Accordingly, 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. Thus, the burden shifts to Appellant to
patentably distinguish the claimed process over that taught by Polston by
convincing argument and/or objective evidence. 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); 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)); see also, e.g., 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
Appeal 2009-009393
Application 10/037,630
15
particular formulation less obvious. This is especially true because the
claimed composition is used for the identical purpose.”).
We are of the opinion Appellant has not carried this burden. 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
Appeal 2009-009393
Application 10/037,630
16
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.
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.
Claims 6 and 11
Appellant does not submit separate argument with respect to appealed
claim 6. App. Br. 10-18. Appellant does submit separate arguments with
respect to claim 11. App. Br. 18-19. We interpreted these claims as
Appeal 2009-009393
Application 10/037,630
17
encompassing similar stabilizer ingredients and thus consider these claims
together. See above pp. 6-7.
We determine one of ordinary skill in this art routinely following the
teachings of Polston would have reasonably been led to use more than one
stabilizer from among the categories disclosed in admixture with the other
ingredients. See above pp. 7-8. See, e.g., KSR, 550 U.S. at 420-421 (a
patent claiming a combination of elements known in the prior art is obvious
if the improvement is no more than the predictable use of the prior art
elements according to their established functions); Merck v. Biocraft Labs.,
874 F.2d at 807; In re Corkill, 771 F.2d 1496, 1497-1500 (Fed. Cir. 1985);
In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (“It is prima facie
obvious to combine two compositions each of which is taught by the prior
art to be useful for the same purpose, in order to form a third composition
which is to be used for the very same purpose. In re Susi, . . . 440 F.2d 442,
445, 169 USPQ 423, 426 ([CCPA] 1971); In re Crockett, . . . 279 F.2d 274,
276-77, 126 USPQ 186, 188 ([CCPA] 1960). As this court explained in
Crockett, the idea of combining them flows logically from their having been
individually taught in the prior art.”); O’Farrell, 853 F.2d at 903-04. This
person would have further have been led by Polston to mix the stabilizers
with the other ingredients in any order. See above pp. 7-8.
We determine Polston’s generic disclosure of “fly ash” would have
reasonably suggested to one of ordinary skill in this art to use any known fly
ash which is capable of participating in a pozzolanic reaction, including the
known Class C fly ash.
Appeal 2009-009393
Application 10/037,630
18
On this record, and contrary to Appellant’s position, Polston provides
the teachings which would have led one of ordinary skill in this art to the
claimed processes encompassed by these claims. App. Br. 18-19.
Claim 7
Contrary to Appellant’s position, this claim is directly dependent on
claim 6. App. Br. 18.
We conditionally interpreted claim 7 to specify the weight percent
unit of measure for the stated percent amounts. See above p. 7.
We found that the weight percent of each of Portland Cement and
asphalt emulsion taught by Polston range from ½% to 10%. See above p. 9.
We determine that one of ordinary skill in this art would have used
Polston’s weight percent range for an additional stabilizer in view of the
same ranges disclosed therein for the Portland Cement and asphalt emulsion
stabilizers. See above p. 9. We are of the view one of ordinary skill in this
art would been led to use any weight percent within Polston’s range in
formulating the amounts of stabilizers used in the particulate mixtures,
including ratios of the amounts of two stabilizers, in determining workable
and optimum ranges for these ingredients which are identified in the
reference as result effective variables. See, e.g., 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.”); In re
Aller, 220 F.2d 454, 456 (CCPA 1955)(“[W]here the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.”).
Appeal 2009-009393
Application 10/037,630
19
The claimed ranges encompassed by claim 7 overlap with Polston’s
Portland Cement range, thus requiring evidence to establish nonobviousness.
See, e.g., In re Harris, 409 F.3d 1339, 1343 (Fed. Cir. 2005); In re Peterson,
315 F.3d 1325, 1329-30 (Fed. Cir. 2003); In re Geisler, 116 F.3d 1465,
1469-70 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1577-78 (CCPA
1990), and cases cited therein. Appellant does not present such evidence.
App. Br. 18.
Claims 12, 14, and 15
We interpreted these dependent claims as specifying the same
limitations. See above p. 6. Appellant submits the same argument with
respect to each claim. App. Br. 19-20.
We determined above that one of ordinary skill in this art would have
been led by 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
above p. 15. We found that Polston would have further led this person to
apply the road base composition to any road base location, including any
subgrade, and determine the desired compress strength properties for the
road base load-bearing surface by compress strength testing. See above p. 9.
On this record, and contrary to Appellant’s position, Polston provides
the teachings which would have led one of ordinary skill in this art to the
claimed processes encompassed by these claims. App. Br. 19-20.

Conclusion
Appeal 2009-009393
Application 10/037,630
20
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in Polston
with Appellant’s countervailing evidence of and argument for
nonobviousness and conclude, by a preponderance of the evidence and
weight of argument, that the claimed invention encompassed by appealed
claims 1 through 5, 8 through 10, 13, and 16 through 20 would have been
obvious as a matter of law under 35 U.S.C. § 103(a).
With respect to appealed claims 6, 7, 11, 12, 14, and 15, having
considered Appellant’s arguments as they pertain to the new ground of
rejection of these claims, we are of the opinion that the claimed invention is
prima facie obvious over Polston as we have applied this references to these
claims. Thus, the burden of going forward with respect to the new ground of
rejection of appealed claims 6, 7, 11, 12, 14, and 15 under 35 U.S.C.
§ 103(a) over Polston remains with Appellant.
Summary
The Primary Examiner’s decision is affirmed, and we have entered a
new ground of rejection pursuant to our authority under 37 C.F.R.
§ 41.50(b).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection shall not
be considered final for purposes of judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of

Appeal 2009-009393
Application 10/037,630
21
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the claims so
rejected or new evidence relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which event the proceedings will
be remanded to the examiner. . . .
(2) Request rehearing. Request that the application be reheard under
§ 41.52 by the Board upon the same record. . . .
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)(v) (2008).
AFFIRMED
37 C.F.R. § 41.50(b)

cam

PAUL AND PAUL
2000 MARKET STREET
SUITE 2900
PHILADELPHIA, PA 19103