12163578 (B.P.A.I. May. 24, 2012)

Ex Parte Butler et al

Board of Patent Appeals and InterferencesMay 24, 2012

12163578 (B.P.A.I. May. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/163,578 06/27/2008 James Butler COS-879CON 8883 25264 7590 05/24/2012 FINA TECHNOLOGY INC PO BOX 674412 HOUSTON, TX 77267-4412 EXAMINER SZEKELY, PETER A ART UNIT PAPER NUMBER 1761 MAIL DATE DELIVERY MODE 05/24/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte JAMES BUTLER, PAUL BURAS, and WILLIAM LEE ________________ Appeal 2010-012400 Application 12/163,578 Technology Center 1700 ________________ Before TERRY J. OWENS, CATHERINE Q. TIMM, and MICHAEL P. COLAIANNI, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1 and 3-23, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim an asphalt paving composition and a method for preparing an asphalt composition. Claim 13 is illustrative: Appeal 2010-012400 Application 12/163,578 2 13. An asphalt paving composition comprising an asphalt base material and a water insoluble soap in an amount effective to provide a pressure aging vessel-dynamic sheer rheometer (PAV-DSR) temperature which is lower than the PAV-DSR temperature of said asphalt base material without the additional of said water insoluble soap by an incremental amount of at least 1º C. The References Burk US 2,282,703 May 12, 1942 Pitchford US 3,986,887 Oct. 19, 1976 Wiercinski US 4,595,636 Jun. 17, 1986 Weaver US 4,617,227 Oct. 14, 1986 Hayner US 6,133,351 Oct. 17, 2000 Buras (Buras ‘245) US 6,927,245 B2 Aug. 9, 2005 Buras (Buras ‘504) US 2009/1043504 A1 Jun. 4, 2009 (effective filing date Dec. 31, 2003) Gruetzke (abstract) DD 205177 A Dec. 21, 1983 Muller (Exxon) EP 0 121 377 A1 Oct. 10, 1984 The Rejections The claims stand rejected as follows: claims 1 and 3-22 under 35 U.S.C. § 102(b or e) over Burk, Wiercinski, Weaver, Buras ‘245, Buras ‘504, Gruetzke, or Exxon, and claims 1 and 3-23 under 35 U.S.C. § 103 over Burk, Wiercinski, Weaver, Gruetzke or Exxon, in view of Hayner or Pitchford. OPINION We affirm the rejections involving Exxon, Buras ‘245 and Buras ‘504 and reverse the other rejections. Rejections involving Exxon, Buras ‘245 and Buras ‘504 The Appellants argue the claims as a group (Br. 9-10, 12-14). We therefore limit our discussion to one claim, i.e., claim 13. The other claims stand or fall with that claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2007). Appeal 2010-012400 Application 12/163,578 3 It is undisputed that Exxon (abstract; p. 3, ll. 8-10), Buras ‘245 (col. 1, l. 15; col. 2, ll. 42-44; col. 6, ll. 48-49; col. 12, ll. 17-19) and Buras ‘504 (¶¶ 0002, 0044, 0084, 0088-89) disclose asphalt paving compositions comprising an asphalt base material and a water insoluble soap. The Appellants argue that Exxon, Buras ‘245 and Buras ‘504 do not disclose that the water insoluble soap effectively reduces the asphalt base material’s PAV-DSR temperature (Br. 9-10, 12-13). The Exxon, Buras ‘245 and Buras ‘504 compositions which fall within the Appellants claim 13 have the properties, including the property of reduced PAV-DSR temperature, possessed by the compositions which fall within that claim. See In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing”). “The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from the prior art, can not impart patentability to claims to the known composition.” See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)). Thus, we are not persuaded of reversible error in the rejections involving Exxon, Buras ‘245 or Buras ‘504. Other rejections Burk discloses an asphalt for application to roofs and walls (p. 1, right col., ll. 21-24), Wiercinski discloses a bitumen-based pressure sensitive adhesive (abstract), Weaver discloses an asphalt-containing waterproof membrane useful as a roof flashing or a container liner (abstract), and Gruetzke discloses a bitumen-containing coating for protecting cables against corrosion (abstract). Appeal 2010-012400 Application 12/163,578 4 The Examiner argues that “‘[a]sphalt paving composition’ designates the intended use and as such it has no patentable significance” (Ans. 5). The claim 13 preamble limitation “asphalt paving composition” limits the composition to one which is capable of functioning as a paving composition. The Examiner has not established that the compositions of Burk, Wiercinski, Weaver or Gruetzke have that capability. Nor has the Examiner established that those compositions have the reduced PAV-DSR temperature property required by the Appellants’ claims 1 and 13 which, the Appellants’ Specification indicates (¶ 0008), is a characteristic of an asphalt paving composition. Accordingly, we do not sustain the rejections involving Burk, Wiercinski, Weaver or Gruetzke. DECISION/ORDER The rejections of claims 1 and 3-22 under 35 U.S.C. § 102(b or e) over Burk, Wiercinski, Weaver, and Gruetzke are reversed. The rejections of claims 1 and 3-22 under 35 U.S.C. § 102(b or e) over Buras ‘245, Buras ‘504 and Exxon are affirmed. The rejections of claims 1 and 3-23 under 35 U.S.C. § 103 over Burk, Wiercinski, Weaver, and Gruetzke, in view of Hayner or Pitchford are reversed. The rejection of claims 1 and 3- 23 under 35 U.S.C. § 103 over Exxon in view of Hayner or Pitchford is affirmed. It is ordered that 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). AFFIRMED Appeal 2010-012400 Application 12/163,578 5 sld