Ex Parte Gunther

Patent Trial and Appeal Board

Mar 31, 2017

13373335 (P.T.A.B. Mar. 31, 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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
889-P-4-USA 2627
EXAMINER
HARTMANN, GARY S
ART UNIT PAPER NUMBER
3671
MAIL DATE DELIVERY MODE
13/373,335 11/11/2011 Mike Gunther
71850 7590 03/31/2017
RUSSO & DUCKWORTH , LLP
9090 IRVINE CENTER DRIVE , SECOND FLOOR
IRVINE, CA 92618
03/31/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKE GUNTHER
Appeal 2015-005611
Application 13/373,335
Technology Center 3600
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mike Gunther (“Appellant”)1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1—5, which are all the pending
claims. Appeal Br. 1, 2. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Intecrete, LLC.
Appeal Br. 1.
Appeal 2015-005611
Application 13/373,335
CLAIMED SUBJECT MATTER
Appellant’s disclosed invention “relates to concrete construction and
to methods for producing concrete constructions.” Spec., p. 1,11. 10—11.
Claim 1, reproduced below, is the sole independent claim and is
representative of the subject matter on appeal.
1. A method of creating a surface seeded exposed aggregate
concrete resistant to alkali silica reactivity, the method
comprising:
(a) preparing a subgrade or formwork for concrete
placement;
(b) preparing an integral alkali silica reactivity
resistant concrete mixture by mixing a lithium nitrate solution
with concrete in a ratio of two (2) - eight (8) gallons of 5-50%
lithium nitrate solution with each cubic yard of concrete;
(c) pouring the alkali silica reactivity resistant
concrete mixture upon the subgrade or within the formwork to
create an exposed concrete surface;
(d) floating, screeding or troweling the concrete
surface utilizing bull floats, screeds or trowels so that the
concrete surface is consolidated and uniform, while in a plastic
state;
(e) broadcasting an aggregate reactive to concrete
upon the concrete surface;
(f) mixing the aggregate into the concrete surface by
troweling or floating the aggregate into the concrete surface;
and
(h) exposing the aggregate within the concrete surface
by either (1) applying a concrete surface retardant, allowing the
retardant to retard hardening of a layer of the concrete, and
washing away the surface retardant with water, or (2)
mechanically exposing the aggregates utilizing abrasive
mechanical apparatus to remove a surface layer of the concrete
surface.
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Application 13/373,335
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Shaw US 4,748,788 June 7, 1988
Appellant’s Admitted Prior Art (“AAPA”) regarding disclosure
of “Rasir from Grace Constructions” as an example of a known
lithium nitrate solution for mixing with concrete, as described on
page 6, lines 11—13 of Appellant’s Specification.
Grace Concrete Products, “RASIR™ — To mitigate and control
alkali-silica reactivity (ASR) in concrete,” W. R. Grace & Co.-Conn.
(2007), available at http://www.graceconstruction.com (“RASIR”).
Uncontested Official Notice that (1) the use of lithium nitrate
solutions in concrete is old and well known, as evidenced by RASIR,
and (2) the use of seashells, stone, or glass as an aggregate is old and
well known (see Final Act. 2—3) (“Official Notice”).
REJECTION
The following rejection is before us for review: Claims 1—5 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Shaw in view
of AAPA, RASIR, and Official Notice. Final Act. 2—3.
ANALYSIS
Appellant presents arguments against the rejection of claims 1—5 as a
group. See Appeal Br. 9—11; Reply Br. \-A. We select independent claim 1
as representative of the issues that Appellant presents in the appeal of this
rejection, with dependent claims 2—5 standing or falling therewith. See
37C.F.R. §41.37(c)(l)(iv).
The Examiner found that “Shaw discloses the steps of preparing a
subgrade, pouring concrete, screeding, broadcasting, mixing and exposing
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Application 13/373,335
(Figure 3 and claim 1, for example), but does not teach mixing a lithium
nitrate solution with concrete.” Final Act. 2. However, the Examiner found
that “it is well known to use lithium nitrate with concrete.” Id. (citing
AAPA and RASIR). The Examiner determined that, given the teachings of
the prior art, it would have been obvious to one of ordinary skill in the art at
the time of the invention to have used a lithium nitrate solution “with the
process of Shaw in order to obtain a durable finished substrate.” Id.
Appellant argues that “one skilled in the art of concrete construction
would not see a rationale for combining Shaw . . . and Official Notice.”
Appeal Br. 9 (emphasis omitted); see also Reply Br. 4. In particular,
Appellant asserts that “there has never been a suggestion to utilize lithium
nitrate solutions to control the reactivity of surface seeded aggregates.”
Appeal Br. 9. According to Appellant, Shaw and Official Notice “do not
provide a rationale for this combination.” Id. at 11; see also Reply Br. 3
(asserting that RASIR “does not refer to decorative concrete having a
surface seeded aggregate”). This line of argument is not persuasive for two
reasons. First, Appellant appears to urge us to apply a strict teaching,
suggestion, or motivation (“TSM”) test for obviousness. Rigid application
of the TSM test was explicitly disavowed by the Supreme Court in KSR
International Co. v. Teleflex Inc., 550 U.S. 398, 415, 419 (2007). Second,
the argument does not address the Examiner’s articulated reasoning for the
conclusion of obviousness. Here, the Examiner articulated adequate
reasoning based on rational underpinnings for modifying Shaw’s surface
seeded exposed aggregate concrete process to include a lithium nitrate
solution (namely, “in order to obtain a durable finished substrate”). Final
Act. 2; see also Ans. 4—5 (explaining that one of ordinary skill in the art
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Application 13/373,335
would have been motivated to use a concrete-strengthening product, such as
RASIR, to maximize the durability of Shaw’s surface seeded exposed
aggregate concrete).
With respect to the Examiner’s proposed combination, Appellant
points to Declarations submitted under 37 C.F.R. § 1.132—by Mike
Gunther,2 dated July 9, 2013 (the “Gunther Declaration”); by Mike Carver,
dated July 30, 2013 (the “Carver Declaration”); by Mario Aroz, dated July
30, 2013 (the “Aroz Declaration”); and by Mike Bolen, dated August 13,
2013 (the “Bolen Declaration”)—and argues that “using a lithium nitrate
solution such as RASIR [with] a surface seeded concrete would be
counterintuitive.” Appeal Br. 10 (italics omitted). Appellant asserts that the
Declarations demonstrate that “lithium nitrate solutions[,] such as RASIR[,]
have been utilized within ‘structural concrete’, not decorative concrete
having surface seeded aggregates.” Id. at 9 (italics omitted); see also Reply
Br. 2 (asserting that “RASIR has been used to increase . . . durability and
control ASR in structural concrete”). According to Appellant, “durability of
decorative concrete is not as important [as it is with structural concrete].”
Appeal Br. 10; see also Gunther Declaration 111 (stating that, “[i]n
decorative surface seeded aggregate concrete, durability and increased safety
are not of primary concern”). Appellant’s argument and accompanying
evidence are not persuasive.
The Gunther Declaration states that “[l]ithium nitrate solutions are
traditionally added to ‘structural’ concrete such as for roads, bridges,
runways, parking garages, and other load bearing structures to provide
2 Declarant Mike Gunther is the named inventor in the present
application. See Gunther Declaration 11.
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Application 13/373,335
durability and increased safety,” and that “[ljithium nitrate solutions have
not been traditionally used to control ASR in decorative surface seeded
aggregate.” Gunther Declaration 111; see also Carver Declaration 14; Aroz
Declaration 14; Bolen Declaration, p. 1 (all including similar statements).
Although Appellant’s evidence demonstrates that lithium nitrate solutions
“traditionally” have been used to control ASR and increase durability in
concrete used for structural applications, such a fact does not establish that a
person having ordinary skill in the art would have no reason to consider
using a lithium nitrate solution to control ASR and increase durability in
surface seeded exposed aggregate concrete.
We note that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR Int’l, 550 U.S. at 416. Appellant acknowledges
that “it is known that surface seeded decorative aggregates may have a high
ASR.” Appeal Br. 10; see also Gunther Declaration 17 (stating that “it is
known that the ASR of the decorative aggregates may be high”). Appellant
also acknowledges that it is known in the art to use lithium nitrate solutions
to control ASR and increase durability of concrete used in one type of
application. See Appeal Br. 9-10; see also Gunther Declaration 111; Carver
Declaration | 6; Aroz Declaration | 6; Bolen Declaration, p. 2 (all including
similar statements). Even if a lithium nitrate solution (e.g., RASIR) has
been “traditionally” added to concrete used in structural applications,
Appellant does not offer any factual evidence or persuasive technical
reasoning to explain why combining a lithium nitrate solution with a surface
seeded exposed aggregate concrete process, such as Shaw’s, would yield
anything other than the predictable result of a surface seeded exposed
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Application 13/373,335
aggregate concrete having controlled ASR and increased durability.
Additionally, to the extent that durability of surface seeded exposed
aggregate concrete may not be a “primary concern,” or “as important” as it
is in structural concrete, Appellant does not point to any evidence that
durability is of no concern or importance in surface seeded exposed
aggregate concrete.
Appellant asserts that “the known process to combat ASR in
decorative aggregate is to apply a sealant upon the surface of the concrete
after the slab has been poured.” Reply Br. 2—3 (emphasis omitted); see also
Gunther Declaration 111. However, the evidence before us shows that
mixing a lithium nitrate solution with concrete was a known alternative for
reducing ASR and increasing durability of concrete, and we discern no error
in the Examiner’s reasoned explanation that, “if a known product can
perform a known function, there is nothing patentable in using that product
for the same purpose in another situation.” Ans. 6; see also id. (explaining
that the proposed combination is simply “using a product for its intended
purpose in a process ‘known’ to result in a product having properties the
product is designed to control and mitigate”). In this regard, the Examiner’s
proposed modification of Shaw’s surface seeded exposed aggregate concrete
process to include a lithium nitrate solution, which is known to reduce ASR
and increase durability of concrete, does not amount to “more than the
simple substitution of one known element for another or the mere
application of a known technique to a piece of prior art ready for the
improvement,” and is therefore obvious. KSR Int’l, 550 U.S. at 417.
Appellant also asserts that “[njever before had anyone thought to
integrally mix a material into the concrete prior to pouring the concrete in an
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effort to reduce the reaction of the aggregates found only in the upper
surface of the concrete slab.” Appeal Br. 10-11; see also Gunther
Declaration | 5 (stating that the “invention is different in that the lithium
nitrate solution is NOT introduced to control the ASR reactivity of the
concrete, though that may be an added benefit,” but, “[i]nstead[,] ... is
introduced to control the ASR of the alkali-silica decorative aggregate”). To
the extent that Appellant appears to argue that the lithium nitrate solution is
added to the concrete mixture only to reduce ASR in the aggregate seeded
upon the concrete surface, such an argument is not consistent with
Appellant’s Specification.
The Specification describes that “[a]n ASR resistant concrete mixture
is prepared by mixing a lithium solution (preferably 5-50% lithium nitrate
solution) with concrete,” which is then poured. Spec., p. 6,11. 7—8, 16
(emphasis added). “After the ASR resistant concrete surface has been
floated or screed to a desired uniform and consolidated condition, but while
the ASR resistant concrete surface is still in a plastic state, selected
aggregates are then broadcast onto the surface of the ASR resistant
concrete.” Id. at p. 7,11. 4—6. According to the Specification, “these
[aggregate] materials have varying degrees of reactivity to the alkalis
typically found in concrete.” Id., 11. 8—9. Thus, according to the
Specification, and consistent with the language of the claim,3 the lithium
3 Claim 1 is directed to “[a] method of creating a surface seeded
exposed aggregate concrete resistant to alkali silica.” Appeal Br., Claims
App. (emphasis added). The method includes “preparing an integral alkali
silica reactivity resistant concrete mixture by mixing a lithium nitrate
solution with concrete.” Id. (emphasis added).
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Application 13/373,335
nitrate solution is used to prepare a concrete4 that resists ASR resulting from
the introduction of aggregate into the surface of the concrete.
The result is a surface seeded exposed aggregate concrete surface that
is resistant to ASR and, therefore, more durable. Appellant does not
identify, nor do we discern, any disclosure in the Specification indicating
that the lithium nitrate solution is added only to the control ASR of the
aggregate. Nevertheless, Appellant does not offer any evidence or technical
reasoning to establish a meaningful distinction between adding the lithium
nitrate to the concrete mixture for the purpose of controlling ASR of the
concrete versus controlling ASR of the aggregate. In this regard, we note
that the reason to modify a reference may often prompt a person of ordinary
skill in the art to do what the inventor has done, but for a different purpose
or to solve a different problem; it is not necessary that the prior art suggest
the modification to achieve the same advantage or result discovered by an
applicant. See, e.g., In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006).
In the Reply Brief, Appellant further argues that the rejection is based
upon “impermissible hindsight reconstruction.” Reply Br. 4 This argument
is not persuasive because Appellant does not identify any knowledge relied
upon by the Examiner that was gleaned only from Appellant’s disclosure
and that was not otherwise within the level of ordinary skill at the time of the
4 We note that the Carver Declaration (as well as the Aroz Declaration
and the Bolen Declaration) states that “seeding concrete with a decorative
aggregate decreases the durability of the concrete by introducing a material
that can react to concrete,” and that a lithium nitrate solution, such as
RASIR, “is used to increase the durability ... by decreasing the reactivity of
the concrete.” Carver Declaration | 6 (emphasis added); see also Aroz
Declaration | 6; Bolen Declaration, p. 2 (same).
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invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (so
long as a conclusion of obviousness is based on a reconstruction that “takes
into account only knowledge which was within the level of ordinary skill at
the time the claimed invention was made and does not include knowledge
gleaned only from [Appellant’s] disclosure, such a reconstruction is
proper”). Thus, Appellant’s assertion of hindsight is unsupported.
After careful consideration of all the evidence, including the
statements made in the Declarations, Appellant’s arguments do not apprise
us of error in the Examiner’s conclusion of obviousness with respect to
claim 1. Accordingly, we sustain the rejection of independent claim 1, and
of dependent claims 2—5 falling therewith, under 35 U.S.C. § 103(a) as being
unpatentable over Shaw in view of AAPA, RASIR, and Official Notice.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1—5 under
35 U.S.C. § 103(a) as being unpatentable over Shaw in view of AAPA,
RASIR, and Official Notice.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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