Ex parte Unsin

Board of Patent Appeals and Interferences

Sep 23, 1999

08091421 (B.P.A.I. Sep. 23, 1999)

Application for patent filed July 15, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOACHIM UNSIN
__________
Appeal No. 1996-0941
Application 08/091,4211
___________
HEARD: September 14, 1999
___________
Before KIMLIN, OWENS and SPIEGEL, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 8-26, which are all of the claims remaining in the
application.
THE INVENTION
Appeal No. 1996-0941
Application 08/091,421

2
Appellant’s claimed invention is a quick-setting
hydraulic binding agent which includes, inter alia, aluminous
cement in an amount less than 5 wt%. Appellant states that
including less than 5 wt% of aluminous cement in the binder,
rather than using a greater amount, produces improved cement
compressive strength and only slightly reduces the early
consistency (specification, page 3). Claim 15 is illustrative
and reads as follows:
15. A quick-setting hydraulic binding agent, comprising:
Portland cement;
aluminous cement in an amount less than 5 wt.%;
an alkali carbonate; and
an organic liquefication-facilitating and calcium
silicate hydration-inhibiting material.
THE REFERENCES
References relied upon by the examiner
Braunauer 3,689,294 Sep. 5,
1972
Braniski et al. (Braniski) 3,748,158 Jul. 24,
1973
Crinkelmeyer et al. (Crinkelmeyer) 4,131,578 Dec. 26,
1978
Kolar et al. (Kolar) 4,168,985 Sep. 25,
1979
Crocker 5,328,507 Jul. 12,
Appeal No. 1996-0941
Application 08/091,421

The examiner does not argue that the undated dictionary2
definitions and European standard relied upon by appellant are
not indicative of the meanings of the terms therein at the
time appellant’s application was filed. Accordingly, we
consider the meanings of the terms in those references to be
the meanings of those terms as of appellant’s filing date.
3
1994
(filed Sep. 23,
1992)
P. Barnes, Structure and Performance of Cements 376-77, 429
(Applied Science Publishers 1983).
References relied upon by appellants
McGraw-Hill Dictionary of Scientific and Technical Terms 73,
934 (McGraw-Hill, undated).
European Standard EN 197-10 (undated).2
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 102(b) as
follows: claims 15-18 over Braunauer, claims 15, 16 and 18
over Kolar, and claims 15-17 over Crinkelmeyer. The claims
stand rejected under 35 U.S.C. § 103 as follows: claim 14 over
Braunauer, claims 14 and 17 over Kolar, and claims 14 and 18
over Crinkelmeyer. Claims 8-26 stand rejected under 35 U.S.C.
§ 112, first paragraph, on the ground that the specification,
as originally filed, does not provide support for the
Appeal No. 1996-0941
Application 08/091,421

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invention as now claimed.
OPINION
We have carefully considered all of the arguments
advanced by appellant and the examiner and agree with
appellant that the rejection under 35 U.S.C. § 112, first
paragraph, is not well founded. Accordingly, we reverse this
rejection. However, we affirm the rejections under 35 U.S.C.
§ § 102(b) and 103.
Rejection under 35 U.S.C. § 112, first paragraph
The examiner argues that appellant’s claims 8-26 do not
have support in appellant’s original specification because the
original specification does not include the term “aluminous
cement” recited in appellant’s independent claims 8 and 15
which were added by amendment.
Regarding independent claim 14, the amendment (filed
October 25, 1994, Paper No. 12) in which this claim was
amended to include the term “aluminous cement” was not entered
by the examiner (advisory action mailed October 27, 1994,
Appeal No. 1996-0941
Application 08/091,421

“Do Not Enter” is written in the margin of the amendment3
and is initialed, apparently by the examiner or his
supervisor. Also, the examiner stated in an advisory action
(mailed October 27, 1994, paper no. 13) that the amendment
will not be entered, and stated in the examiner’s answer (page
6) that it has not been entered. This amendment, however, has
been clerically entered. Upon return of the application to
the examiner, the discrepancy between the instruction not to
enter the amendment and the entry of the amendment should by
resolved. Contrary to appellant’s argument (reply brief,
pages 1-2), denial of entry of an amendment is only a
petitionable matter, not an appealable matter. See Manual of
Patent Examining Procedure § 1002.02(c) (7th ed., July 1998);
Ex parte Des Granges, 162 USPQ 379, 380 (Bd. App. 1968).
5
Paper No. 13). Because “aluminous cement”, which is the only3
term objected to by the examiner, does not appear in claim 14,
we reverse the rejection of this claim under 35 U.S.C. § 112,
first paragraph.
As for claims 8-13 and 15-26, the examiner argues that
the disclosures in Barnes that typical high alumina cements
include 37-41% alumina (Table 2, page 377), and that aluminous
cements containing from below 40% to over 80% alumina (page
429) are used, indicate that high alumina cement is a specific
type of aluminous cement (answer, pages 7-8). Appellant
argues that these two passages are not contradictory (reply
brief, page 3), and the examiner provides no explanation as to
why Barnes’ teaching that high alumina cements typically
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Application 08/091,421

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contain 37-41% alumina indicates that the alumina content
range of high alumina cements is not that of aluminous cements
as disclosed by Barnes, i.e., from below 40% to over 80%.
The examiner points out that Branski uses the term “iron-
containing aluminous cements” (col. 1, line 46) and Crocker
uses the term “expansive ettringite forming sulfoalumina
cement” (col. 1, lines 51-52), and argues that these
disclosures indicate that “aluminous cement” is broader than
“high alumina cement” (answer, page 8). The examiner has not
explained, however, and it is not apparent, why these
disclosures indicate that one of ordinary skill in the art
would not have considered a sulfoalumina cement to be an
aluminous cement.
Appellant has provided a dictionary definition (McGraw-
Hill, page 73) which states: “aluminate cement . . . Also
known as aluminous cement; high alumina cement; high speed
cement.” Appellant also relies upon European Standard EN 197-
10 which states:
NOTE 2: Calcium aluminate cement has previously been
known by several alternatives in other countries:
- high alumina cement;
Appeal No. 1996-0941
Application 08/091,421

Citations herein to appellant’s brief are to the4
substitute appellant’s brief filed on April 26, 1995, (Paper
No. 21).
7
- aluminous cement;
- high alumina melted cement;
- etc.
These disclosures provide a sound indication that “high
alumina cement” and “aluminous cement” have the same meaning,
and the examiner sets forth no evidence or reasoning which
shows that these disclosures are in error.
For the above reasons, the evidence of record, on
balance, weighs in favor of a finding that “high alumina
cement” and “aluminous cement” are synonymous as argued by
appellant. Accordingly, we reverse the rejection of claims 8-
13 and 15-26 under 35 U.S.C. § 112, first paragraph.
Rejections under 35 U.S.C. § § 102(b) and 103
Appellant acknowledges that the components in the claimed
binding agent were known in the art at the time of appellant’s
invention (brief, pages 6-7). Appellant’s argument is that4
the prior art does not disclose or suggest a binding agent
which contains aluminous cement in an amount which is greater
than zero but less than 5 wt.% (brief, pages 7-8).
Appeal No. 1996-0941
Application 08/091,421

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Appellant’s argument is not well taken because “less than
5 wt.%”, as recited in appellant’s claims, encompasses amounts
of aluminous cement including zero. See In re Mochel, 470
F.2d 638, 640, 176 USPQ 194, 195 (CCPA 1972); In re Egbert,
298 F.2d 947, 948, 132 USPQ 456, 458 (CCPA 1962).
Appellant relies upon In re Kirsch, 498 F.2d 1389, 182
USPQ 286 (CCPA 1974). In that case, the court stated that
“the amount of unreacted olefin in the reaction mixture being
maintained at less than 7 mole percent based on the unreacted
isobutane” was not vague and indefinite. See Kirsch, 489 F.2d
at 1393-94, 182 USPQ at 290. The court stated that “[t]he
imposition of a maximum limit on the quantity of one of the
reactants without specifying a minimum does not warrant
distorting the overall meaning of the claim, to preclude
performing the claimed process.” See Kirsch, 498 F.2d at
1394, 182 USPQ at 290.
In the present case, the relevant issue is written
description rather than claim clarity. Nevertheless, to the
extent that the language in Kirsch regarding distorting the
overall meaning of a claim to preclude the claimed process is
Appeal No. 1996-0941
Application 08/091,421

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pertinent to the present case, appellant has not established,
or even asserted, that omitting the aluminous cement from
their claimed binder would prevent the binder from being quick
setting. Indeed, the “comprising” transition term opens the
claim to other components. See In re Baxter, 656 F.2d 679,
686, 210 USPQ 795, 802 (CCPA 1981). Appellant provides no
evidence that such components cannot be materials other than
aluminous cement which render the binder quick setting.
Appellant argues that his specification shows that the
claimed binding agent provides compressive strengths which are
superior to those of Braunauer (brief, page 7). The evidence,
however, is not commensurate in scope with appellant’s claims
which, as stated above, include an amount of aluminous cement
of zero. See In re Grasselli, 713 F.2d 731, 743, 218 USPQ
769, 778 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035,
206 USPQ 289, 296 (CCPA 1980).
For the above reasons, we affirm the rejections under 35
U.S.C. § § 102(b) and 103.
DECISION
Appeal No. 1996-0941
Application 08/091,421

10
The rejections under 35 U.S.C. § 102(b) of claims 15-18
over Braunauer, claims 15, 16 and 18 over Kolar, and claims
15-17 over Crinkelmeyer, and the rejections under 35 U.S.C.
§ 103 of claim 14 over Braunauer, claims 14 and 17 over Kolar,
and claims 14 and 18 over Crinkelmeyer, are affirmed. The
rejection of claims 8-26 under 35 U.S.C. § 112, first
paragraph, on the ground that the specification, as originally
filed, does not provide support for the invention as now
claimed, is reversed.
No time period for taking any subsequent action in
connec- tion with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED-IN-PART
)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Appeal No. 1996-0941
Application 08/091,421

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CAROL A. SPIEGEL )
Administrative Patent Judge )
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