Ex Parte Brien

Patent Trial and Appeal Board

Mar 15, 2017

13803316 (P.T.A.B. Mar. 15, 2017)

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