Ex Parte Stark et al

Patent Trial and Appeal Board

Dec 31, 2014

12507042 (P.T.A.B. Dec. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOSEPH L. STARK,
TIMOTHY J. O’BRIEN, and THOMAS J. FALKLER
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Appeal 2013-002605
Application 12/507,042
Technology Center 1700
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Before CHARLES F. WARREN, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board under 35 U.S.C. § 134(a) from the
decision of the Primary Examiner finally rejecting claims 1–21: under
35 U.S.C. § 102(b), claims 1–6, 8–10, 14, 17, 19, and 20 over Cohrs (US
2007/0221539 A1),1 and claim 21 over Cohrs; and under 35 U.S.C. § 103(a),
claims 7 and 11–13 over Cohrs and De Groote (US 2,499,368), claims 15
and 16 over Cohrs, and claim 18 over Cohrs and Okada (US 4,499,215). Br.
16; Ans. 3, 4, 6, 7. We have jurisdiction. 35 U.S.C. § 6(b).
We reverse the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a process for modifying
bitumen with an additive (claim 1), which can be an alkylphenol

1 Appellants do not dispute the Examiner’s reliance on Cohrs as an English
language equivalent of Cohrs (EP 1 767 611 A2). Ans., e.g., 3; Br. 6, 7.
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Application 12/507,042
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formaldehyde resin, an oxyalkylated alkylphenol formaldehyde resin, or
mixtures thereof (claim 2), and a modified bitumen composition prepared by
the process (claim 21), is representative of the claims on appeal:
1. A process for modifying bitumen comprising admixing unmodified
bitumen with an additive to produce a modified bitumen wherein the
modified bitumen has a set up point that is at least 2ºC lower than the
unmodified bitumen.
Br. (Claims on Appeal App’x). Spec. ¶¶ 0002, 0007, 00011, 00016, 00018.
OPINION
We agree with Appellants, for the reasons stated in the Brief, that the
Examiner erred in finding that Cohrs would have described to one skilled in
the art an embodiment of a process that reasonably appears to be identical to
a process falling within claim 1 which requires admixing any unmodified
bitumen with any manner of additive, that includes Cohrs’ alkylphenol
formaldehyde resin (claim 2), to produce any manner of modified bitumen
which has a set up point, determined by any method, that is at least 2ºC
lower than the unmodified bitumen, and the modified bitumen composition
product prepared by that process falling within claim 21. Spec. ¶¶ 0007
(definition of “bitumen”), 00011, 00014, 00016 (“set up point”
determinations). Ans. 3–4, 4–5, 7–10 (citing Cohrs ¶¶ 0017, 0056, 0063,
Examples); Br. 7–9 (citing Cohrs ¶¶ 0017, 0028, 0030, 0044, 0056, 0063–
0065, Examples).
The Examiner has the burden in the first instance of finding that as a
matter of fact all elements of a process for modifying bitumen as specified in
claim 1 and a modified bitumen composition prepared by that process as
specified in claim 21, are described within the four corners of Cohrs, either
expressly or inherently, in a manner enabling one skilled in the art to
practice an embodiment of the claimed process and the claimed product
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Application 12/507,042
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without undue experimentation. See, e.g., ClearValue, Inc. v. Pearl River
Polymers, Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012); Therasence, Inc. v.
Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Sanofi-
Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008); In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
The Examiner contends that Cohrs anticipates claims 1 and 21
because Cohrs describes the addition of any alkylphenol formaldehyde resin
additive to bitumen in a range of 0.5 to 10,000 ppm, and Appellants
discloses a range of greater than 1,000 ppm of alkylphenol formaldehyde
resin additives in the Specification, such that “90 percent of the prior art
range has the claimed property,” and thus the addition of Cohrs’ alkylphenol
formaldehyde resin additives in the stated amounts to bitumen would
inherently result in a modified bitumen having a reduced set up temperature
as claimed. Ans. 3–4, 4–5, 7–10 (citing Cohrs ¶¶ 0017, 0056, 0063,
Examples).
Appellants submit, with respect to the process of claim 1, that Cohrs
teaches that any alkylphenol formaldehyde resins can be added to any crude
oil and any products derived from crude oil, which can include “bitumen”
(Cohrs ¶¶ 0063, 0065), to adjust a number of properties, and does not
illustrate the addition of alkylphenol formaldehyde resins to “bitumen” in an
example. Br. 7–8 (citing Cohrs ¶¶ 0017, 0028, 0030, 0044, 0056, 0063–
0065, Examples). Appellants contend that Cohrs “teaches that you may add
a resin additive to any hydrocarbon and it will improve a property.” Br. 9.
Appellants rely on the same arguments with respect to claim 21. Br. 9.
We find here that Appellants disclose three Examples of additives:
Additive “A,” containing ethyl benzene and an ethoxylated nonylphenol
formaldehyde resin having a molecular weight of about 5 to about 7
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Application 12/507,042
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thousand and a molar ratio of ethylene oxide to resin hydroxyl group of
about 6:1; Additive “B,” containing a nonylphenol formaldehyde resin
having a molecular weight of about 3,000 to about 5,000, triethyl tetra-
amine, and toluene; and Additive “C,” containing a nonylphenol
formaldehyde resin having a molecular weight of about 3,000 to about
5,000, triethyl tetra-amine, ethyl acetate and toluene. Spec. ¶ 00020. Each
of the Additives is reported to be effective when added to bitumen in the
range of 1,000 to 2,000 ppm. Spec. ¶ 00021–00023, Table. See Br. 9.
On this record, we are of the opinion the Examiner has not established
that Cohrs describes to one skilled in the art an embodiment of an identical
process for modifying bitumen and an identical modified bitumen
composition prepared by that process without undue experimentation. We
find that, as Appellants point out, Cohrs discloses that any of the disclosed
alkylphenol formaldehyde resins can be added to any crude oil and any
products derived from crude oil, including bitumen, to adjust any of the
properties disclosed by Cohrs. Cohrs ¶¶ 0014–0065. In this respect, the
Examiner has not established that Cohrs’ disclosure of the range of amounts
of any of the disclosed alkylphenol formaldehyde resins to be added to any
crude oil and any derivative of crude oil, including “bitumen,” for any
purpose, is alone sufficient to describe to one skilled in the an embodiment
of a process and a product produced therewith which reasonably appears to
be identical to the claimed process and product produced therewith.2 Indeed,

2 See, e.g., In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[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 Thorpe, 777 F.2d 695, 697 (Fed.
Cir. 1985) (“If the product in a product-by-process claim is the same
as or obvious from a product of the prior art, the claim is unpatentable
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Application 12/507,042
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the Examiner has not even established that Cohrs describes an embodiment
using a nonylphenol formaldehyde resin or a derivative thereof along with
other ingredients as additive formulations in amounts disclosed by
Appellants in the Specification Examples to obtain modified bitumen
compositions which have the set up point property specified in claims 1 and
21. See, e.g., Spada, 911 F.2d at 708 (“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
polymerization techniques, would produce polymers having the identical
composition.”). Thus, the Examiner has not established that Cohr’s
disclosure would “clearly and unequivocally . . . direct those skilled in the
art to [the claimed invention] without any need for picking, choosing, and
combining various disclosures not directly related to each other by the
teachings of the cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA
1972).
Accordingly, in the absence of a prima facie case of anticipation, we
reverse the ground of rejection of claims 1–6, 8–10, 14, 17, and 19–21 under
35 U.S.C. § 102(b) over Cohrs. We also reverse the grounds of rejection of
claims 7, 11–13, 15, 16, and 18 under 35 U.S.C. § 103(a) over Cohrs alone

even though the prior art product was made by a different process.”);
In re Best, 562 F.2d 1252, 1254-56 (CCPA 1977) (“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.”).
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Application 12/507,042
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and as taken with each of De Groote and Okada because the Examiner relies
on Cohrs on the same basis in each of the rejections. Ans. 6–7, 9–10; Br.
10–11.
The Primary Examiner’s decision is reversed.
REVERSED