Ex Parte BrienDownload PDFPatent Trial and Appeal BoardMar 15, 201713803316 (P.T.A.B. Mar. 15, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/803,316 03/14/2013 Joshua V. Brien ZR930-13004 7891 136255 7590 Montague Law PLLC 163 East Main Street Suite 300 Lexington, KY 40507 EXAMINER USELDING, JOHN E ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 03/17/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): david.mcclure@wmlex.com docketing @pacificpatentgroup. com eofficeaction @ appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSHUA V. BRIEN Appeal 2016-002544 Application 13/803,316 Technology Center 1700 Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 1, 3, and 10. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. Appeal 2016-002544 Application 13/803,316 Appellant’s invention is best illustrated by independent claim 1, reproduced below: 1. A cured cementitious material made by steps comprising: preparing a composition comprising, as ingredients, water, calcium sulfoaluminate cement, a latex polymer, lithium carbonate, a plasticizing admixture and optionally a retarding admixture or a rheology modifier or another ingredient, by placing the ingredients in proximity to one another, thereby forming a prepared composition; mixing the prepared composition, thereby forming a mixed composition; curing the mixed composition at a temperature below zero degrees Celsius for a first period of time of between about eighteen and twenty hours, thereby forming a cured cementitious material; wherein the cured cementitious material formed at the end of the first period of time and thereafter permitted to equilibrate for a second period of time to an ambient temperature of from about twenty degrees Celsius to about thirty degrees Celsius possesses: (i) a compressive strength of at least about lOOOpsi when tested according to ASTM C39 at the ambient temperature; (ii) a compressive strength of at least about lOOOpsi when tested according to ASTM Cl09 at the ambient temperature; or (iii) a direct tensile strength of at least about 200psi when tested according to ASTM C307 at the ambient temperature. Appellant appeals the Examiner’s rejection of claims 1,3, and 10 under 35 U.S.C. § 103(a) as unpatentable over Farrington (US 2004/0149174 Al, published August 5, 2004), Chen (Chen, Irvin Allen 2 Appeal 2016-002544 Application 13/803,316 Synthesis of Portland Cement and Calcium Sulfoaluminate-Belite Cement for Sustainable Development and Performance. 2009) and Yamakawa (US 2008/0196629 Al, published August 21, 2008). Final Act. 2; App. Br. 2. Appellant presents arguments only for independent claim and relies on these arguments to address the rejection of claims 3 and 10. See Appeal Brief, generally. Accordingly, we select claim 1 as representative of the subject matter before us on appeal. Claims 3 and 10 stand or fall with claim 1. OPINION We have reviewed each of Appellant’s arguments for patentability and agree with the Examiner that the subject matter of representative claim 1 is unpatentable. Accordingly, we sustain the Examiner’s prior art rejection. Our reasons follow. Independent claim 1 is a product-by-process claim directed to a cured cementitious material comprising, as ingredients, water, calcium sulfoaluminate (CSA) cement, a latex polymer, lithium carbonate, and a plasticizing admixture. We refer to the Examiner’s Final Action for a statement of the rejection. Final Act. 2-4. Appellant’s arguments focuses on the Examiner’s substitution of Chen’s CSA cement and Yamakawa’s lithium carbonate setting accelerator for Farrington’s Portland cement and alkali metal set accelerators, respectively. See Appeal Brief and Reply Brief, generally. With respect to the cement component, Appellant argues Farrington teaches Portland cement 3 Appeal 2016-002544 Application 13/803,316 rather than the claimed CSA cement. App. Br. 3; Farrington 1206. Appellant further argues Chen teaches CSA cement as an additive to Portland cement and not as an art-recognized equivalent for the same. In addition, Appellant argues the disclosure of Chen suggests both the Portland and the CSA cement systems contain different reactants ultimately reacting to form different chemical products with different chemical properties and different physical properties. App. Br. 3^4; Reply Br. 2; Chen 10-27, 90- 180. With respect to the set accelerators, Appellant argues Yamakawa only teaches the use of a lithium carbonate set accelerator with ordinary Portland cement. App. Br. 4; Yamakawa Examples. Thus, Appellant asserts one skilled in the art would not have used Chen’s CSA cement to replace Farrington’s Portland cement or use Yamakawa’s lithium carbonate set accelerator in Chen’s CSA cement system. App. Br. 4; Reply Br. 3; Chen 10-27, 90-180. Lastly, Appellant argues the Examiner offers no evidence that the cured cementitious material resulting from the combined teachings of the prior art has identical properties to the claimed cured cementitious material. App. Br. 4—5; Reply Br. 2—3. We are unpersuaded by these arguments and agree with the Examiner’s determination of obviousness. Ans. 2—5. Moreover, as noted above, representative claim 1 is drafted in a product-by-process format. The patentability of this type of claim does not depend on the process steps, except to the extent that the process steps are shown to result in properties not possessed by prior art products. It has long been held that “‘[i]f 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 even though the prior product was made by a different process.’” Smithkline Beecham Corp. v. 4 Appeal 2016-002544 Application 13/803,316 Apotex Corp., 439 F.3d 1312, 1317 (Fed. Cir. 2006)(quoting In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985)). It is also well settled that when a claimed product reasonably appears to be substantially the same as a product disclosed in the prior art, the burden of proof is on the applicants to prove that the prior art product does not inherently or necessarily possess the characteristics attributed to the claimed product. In re Best, 562 F.2d 1252, 1255, (CCPA 1977) (“Where, as here, the claimed and prior art products are identical or substantially identical, ... the PTO can require an applicant to prove that the prior products do not necessarily or inherently possess the characteristics of his claimed product.”). It is of no moment whether the rejection is based on § 102 or § 103 since the burden is on the applicant is the same. Id. In this case, the Examiner found Farrington teaches a cured cement material using Portland cement instead of the claimed CSA cement. Final Act 2-4; Farrington 1206, Examples, claim 1. The Examiner found Chen teaches CSA cement as an environmentally friendly alternative to Portland cement that leads to less energy consumption. Final Act. 4; Chen iv, 4. Chen also discloses CSA cements have shown good dimensional stability and comparable compressive strength to Portland cement concrete in field practices in cold environments (emphasis added). Chen 15. That is, Chen recognizes the use of CSA cement by itself and not just as an additive to Portland cement. With respect to the use of lithium carbonate, the Examiner found Farrington teaches alkali metal accelerators but fails to teach lithium carbonate. Final Act. 4; Farrington 1177. The Examiner found Yamakawa teaches lithium carbonate as a known alkali setting accelerator for cements. 5 Appeal 2016-002544 Application 13/803,316 Final Act. 4; Yamakawa 121. Furthermore, Chen discloses CSA cement systems react much faster in the presence of alkalis. Chen 157, 174, 178. Thus, given Chen’s disclosure on the impact of alkalis in CSA cement systems, one skilled in the art would have expected that the use of known alkali salt set accelerators for cement systems, such as Yamakawa’s lithium carbonate, would have predictably accelerated the reaction of CSA cement systems. In view of the above, there is a reasonable basis for substituting the Portland cement of Farrington with Chen’s CSA cement as well as for using known alkali containing cement set accelerators, such as Yamakawa’s lithium carbonate, in Chen’s CSA cement systems. Moreover, given Chen’s disclosure that CSA cements have shown adequate compressive strength in field practices (Chen 15), there is reason to believe that the cured cementitious material from the combined teachings of the prior art would possess the claimed compression strength property. See Best, 562 F.2d at 1255. Accordingly, the burden is shifted to Appellant to demonstrate that the claimed cured cementitious material differs from the cured cementitious material of the prior art. Id. Appellant has not proffered evidence showing any difference in the properties between the claimed cured cementitious material and the one of the prior art. Therefore, we affirm the Examiner’s prior art rejection of claims 1, 3 and 10 under 35 U.S.C. § 103(a) for the reasons given above. ORDER The Examiner’s prior art rejection of claims 1,3, and 10 under 35 U.S.C. § 103(a) is affirmed. 6 Appeal 2016-002544 Application 13/803,316 TIME PERIOD 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). AFFIRMED 7 Copy with citationCopy as parenthetical citation