Ex Parte Terzo

Board of Patent Appeals and Interferences

Oct 31, 2008

10774302 (B.P.A.I. Oct. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LAWRENCE J. TERZO
__________

Appeal 2008-4189
Application 10/774,302
Technology Center 1700
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Decided: October 31, 2008
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Before TERRY J. OWENS, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1, 3, 4, and 7-20. We have jurisdiction over the appeal pursuant to 35
U.S.C. § 6(b).
We AFFIRM.

INTRODUCTION
Appellant claims a method of accelerating the setting time of concrete
at low temperatures. Appellant also claims an admixture effective in
concrete at temperatures less than 60° F comprising a non-chloride type
Appeal 2008-4189
Application 10/774,302

accelerator and a nitrite-based corrosion inhibitor. Claims 1 and 10 are
illustrative:
1. A method of accelerating setting time of concrete at low
temperatures, the method comprising:

(a) preparing a concrete mixture effective at an ambient
temperature of less than 60° F and more than 0° F;

(b) adding an admixture to a cement either separately or
jointly, to produce a concrete mix with an accelerated setting time
compared to a concrete without the admixture, wherein said
admixture comprises a non-chloride type accelerator and a nitrite-
based corrosion inhibitor.

10. An admixture effective in concrete at temperatures of less than
60° F and greater than 0° F, the admixture comprising a non-chloride type
accelerator and a nitrite-based corrosion inhibitor.

The Examiner relies on the following prior art reference as evidence
of unpatentability:
Anderson US 2003/0127026 A1 Jul. 10, 2003

Appellant appeals the following rejections:
1. Claims 1, 3, 4, and 7-20 are rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
2. Claims 1, 3, 4, and 7-20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Anderson.

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Application 10/774,302

Appellant separately argues claims 1 and 10. Accordingly, we address
Appellant’s arguments with respect to rejections 1 and 2 with regard to
claims 1 and 10.1

OPINION
35 U.S.C. § 112, SECOND PARAGRAPH, REJECTION
The Examiner rejects all the appealed claims as being indefinite
because the meaning of the claim 1 phrase “a concrete mixture effective at
an ambient temperature of” is unclear (Ans. 2-3).2
Appellant argues that “effective” as used in the claims means that the
setting time of the concrete is reduced at low temperatures (App. Br. 4). We
agree.
The issue presented is whether Appellant has shown that the Examiner
erred in concluding that the claim term “effective” in claims 1-20 fails to
particularly point out and distinctly claim the subject matter which Appellant
regards as the invention? We answer this question in the affirmative.
The test for definiteness under 35 U.S.C. 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the

1 Appellant attaches a copy of a 132 Declaration by Lawrence J. Terzo
(hereinafter the “Terzo Declaration”) filed May 10, 2005. The Terzo
Declaration addresses a 35 U.S.C. § 112, first paragraph, rejection for lack
of enablement in the Non-Final Office Action mailed December 15, 2004,
which was withdrawn by the Examiner. The content of the Terzo
Declaration is not applicable to the pending 35 U.S.C. § 112, second
paragraph, rejection or the 35 U.S.C. § 103 rejection. Accordingly, the
Terzo Declaration is not relevant to the pending rejections.
2 Independent claim 10 recites a similar phrase “An admixture effective in
concrete”, on which, presumably, the Examiner’s 35 U.S.C. § 112, second
paragraph, rejection of claim 10 is based.
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Application 10/774,302

claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
The Specification describes that the claimed admixture of a non-
chloride accelerator and a nitrite-based corrosion inhibitor reduces the
setting time of concrete at an ambient temperature of about 60° F or less,
down to about 0° F whether or not the concrete mixture contains fly ash
(Spec. ¶¶ [0008], [0011], and [0017] to [0023]). Thus, a person of ordinary
skill in the art would have understood what the claim term “effective” means
(i.e., achieving a reduced setting time of the concrete at an ambient
temperature of less than 60° F and more than 0° F) when the claims are read
in light of the Specification.
We cannot sustain the Examiner’s § 112, second paragraph, rejection
of claims 1, 3, 4, and 7-20.

35 U.S.C. § 103 REJECTION OVER ANDERSON
Appellant argues that Anderson does not teach combining a non-
chloride type accelerator and a nitrite-based corrosion inhibitor to reduce
concrete set time at low temperature (App. Br. 4). Appellant contends that
Anderson does not discloses that the nitrite based corrosion inhibitor, alone
or in combination with other additives, has properties other than retarding
corrosion of reinforcing steel (App. Br. 5).
The Examiner finds that Anderson discloses accelerators for concrete
“include non-chloride type accelerators and/or calcium nitrate [sic calcium
nitrite]” (Ans. 3). The Examiner finds that the only difference between the
instant claims and the reference disclosure is the intended use language “for
use in concrete at temperatures of” and “accelerating the set time” (Ans. 4).
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Application 10/774,302

The Examiner concludes that the claimed invention would have been
obvious because the “for use” feature is simply an intended use that does not
confer patentability on the claims, and because Anderson’s composition
contains the same materials as claimed, the two compositions would
inherently have the same properties (Ans. 4).
The issue presented is: whether Appellant has shown that the
Examiner erred in concluding that the claimed invention would have been
obvious over Anderson? We answer that question in the negative.
Anderson discloses a high early-strength cementitious composition
containing a combination admixture system which comprises a
polycarboxylate high range water reducing dispersant, an accelerator, and a
retarder (Anderson ¶ [0010]). Anderson further discloses that the
accelerator may include a “nonchloride type accelerator and/or
RHEOCRETE® CNI calcium nitrite-based corrosion inhibitor” (Anderson ¶
[0142]). The cementitious composition may include corrosion inhibitors and
fly ash, among other additives (Anderson ¶¶ [0159] to [0162]). Anderson
discloses an embodiment where the cementitious compositions may set
between 50 to 100 degrees Fahrenheit (Anderson ¶ [0175]).
Based on the above disclosures, we agree with the Examiner that the
claimed invention would have been obvious in view of Anderson.
Specifically, Anderson discloses a cementitious composition that may
include an accelerator comprised of a nonchloride type accelerator and a
calcium nitrite corrosion inhibitor; the same composition claimed by
Appellant. Accordingly, because Anderson’s composition and method
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appear to be identical to Appellant’s claimed composition and method3, the
burden was properly shifted to Appellant to show that Anderson’s
composition and method of using the composition do not inherently possess
the claimed characteristics (i.e., a reduced setting time at lower
temperatures). In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
However, Appellant has not provided any persuasive evidence or
argument that Anderson’s cementitious composition does not possess the
reduced setting time at lower temperatures. Appellant’s only argument is
that the Examiner has not established that Anderson’s concrete inherently
sets more rapidly at low temperatures (Reply Br. 2-3). Appellant’s argument
misses the point. The Examiner has established that the claimed composition
and Anderson’s composition appear to be identical. Accordingly, in view of
the court’s holding in Best cited supra, the burden was properly shifted to
Appellant to show that Anderson’s admixture and method of using the
admixture to accelerate the setting time for a cementitious composition
would not result in a reduced setting time at lower temperatures. Best, 562
F.2d at 1255. Appellant has not satisfied that burden.
In fact, Anderson discloses a cementitious composition that sets at
temperatures as low as 50°F (Anderson ¶ [0175]), which falls within and
overlaps with Appellant’s claimed range of “less than 60° F and more than
0° F” (claims 1 and 10) further supporting the Examiner’s inherency finding.
In view of the foregoing, we sustain the Examiner’s § 103 rejection of
claims 1, 3, 4, and 7-20 over Anderson.

3 Appellant’s claims 1 and 10 use the open-ended transitional claim language
“comprising”, which does not exclude other materials that may be present in
Anderson’s composition. In re Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004).
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Application 10/774,302

DECISION
The Examiner’s decision 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)(1)(iv).

AFFIRMED

PL Initial:
sld

Alice O. Martin
Barnes & Thornburg
P.O. Box 2786
Chicago, IL 60690-2786
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