HPC OKINAWA CO., LTD.

Patent Trials and Appeals Board

Mar 31, 2021

2020005346 (P.T.A.B. Mar. 31, 2021)

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.
15/314,611 11/29/2016 Masaki AHAGON 160286 3082
23850 7590 03/31/2021
KRATZ, QUINTOS & HANSON, LLP
1420 K Street, N.W.
4th Floor
WASHINGTON, DC 20005
EXAMINER
FIGUEROA, LUZ ADRIANA
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
03/31/2021 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 MASAKI AHAGON, KEN IIDA, YONEO OSHIRO,
HIROMI NISHIZONO, YUUOH MINO, JIN HOSOYA,
HIROTAKA HIGASHIONNA, NOBUO SHIMEGI, and SHUNJI ARIGA
____________

Appeal 2020-005346
Application 15/314,6111
Technology Center 3600
____________

Before BRUCE T. WIEDER, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–4, 9, and 13–17.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as HPC
OKINAWA CO., LTD. (Appeal Br. 3.)
2 Claims 18–27 were canceled by the amendment filed March 3, 2020, and
entered March 9, 2020.
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CLAIMED SUBJECT MATTER
Appellant’s “invention relates to a prestressed concrete for non-
primary structural members obtained by introducing a chemical stress
induced by a concrete expansive material and a mechanical stress using a
continuous fiber reinforcing wire.” (Spec. ¶ 1.)
Claim 1 is the sole independent claim on appeal. It recites (emphasis
added):
1. A prestressed concrete for non-primary structural
members, obtained by introducing a prestress into a concrete for
non-primary structural members, wherein a mechanical stress
induced by a tensional material and a chemical stress induced by
an expansive material for a concrete are introduced
simultaneously into the concrete, and the tensional material is a
rust-resistant wire,
the expansive material for a concrete is a mixture of one
or more kinds selected from a lime-based expansive material, an
ettringite-lime composite-based expansive material, an iron
powder-based expansive material, a shale-based expansive
material, and a silica-based expansive material,
the rust-resistant wire of the tensional material has a wire
diameter of 15 mm or less and a tensile load of 150 kN or less,
and
the concrete has a thickness of 50 mm or less.

REJECTIONS
Claims 1–4 and 13–17 are rejected under 35 U.S.C. § 103 as
unpatentable in view of Lura (US 9,353,006 B2, iss. May 31, 2016) and
Expansive Cement (Building Materials in Civil Engineering, Haimei Zhang,
ed., 2011) (available at https://www.sciencedirect.com/topics/engineering/
expansive-cement) (hereinafter “SD article”).
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Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable in view of
Lura, SD article,3 and Rice (US 3,455,074, iss. July 15, 1969).

ANALYSIS
Obviousness is a legal conclusion involving a determination of
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)). “[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” Id. at 418
(brackets in original) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
With regard to the scope and content of the prior art, the Examiner
finds that
Lura discloses a prestressed concrete capable of being used for
non-primary structural members (Col 6, Lines 27-34), obtained
by introducing a prestress into a concrete for non-primary
structural members, wherein a mechanical stress induced by a

3 We treat the omission of reference to the SD article in the Final Action
rejection of claim 9 to be a harmless, typographical error. (See Answer 6.)
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tensional material (Col 6 Lines 45-54) and a chemical stress
induced by an expansive material (Col 3, Lines 38-43) for a
concrete are introduced simultaneously into the concrete, (Col 6,
Lines 67, Col 7, Lines 1, 10-19).

(Final Action 2−3.) The Examiner finds that “Lura does not disclose the
expansive material is selected from a lime-based expansive material, an
ettringite-lime composite-based expansive material, an iron powder-based
expansive material, a shale-based expansive material, and a silica-based
expansive material.” (Id. at 3.) The Examiner also finds:
The prior art of Lura discloses a prestressed concrete
including calcium sulfoaluminate that is an ettringite-based
expansive material which is one of the listed expansive materials
in Applicant’s original disclosure. The [SD article] discloses
various types of expansive cements containing a lime-based
expansive material, silica-based material that according to
Applicant’s disclosure are equivalent materials to calcium
sulfoaluminate (ettringite-based expansive material) thus one of
ordinary skill in the art could have substituted the expansive
material of Lura for the expansive materials of the [SD article],
using known methods with no change in their respective
functions and it will perform equally well.

(Answer 4 (emphasis added); see also Final Action 3–4.) The Examiner
explains:
In the original disclosure in Par 0034 Applicant indicated
that “the expansive material for a concrete is a mixture of one or
more kinds selected from a lime-based expansive material such
as quick lime, an ettringite-based expansive material such as
calcium sulfoaluminate, an ettringite-lime composite-based
expansive material, an iron powder-based expansive material, a
magnesium-based expansive material, an aluminum powder-
based expansive material, a shale-based expansive material, and
a silica-based expansive material.[”] This description indicates
that these are all equivalent expansive materials and will
perform in the same manner.

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(Answer 4 (italicized emphasis added).)
Appellant argues that Lura “is directed to the technical field of
concrete fire resistance, while the [SD Article] is related to the field of self-
stressing cement.” (Appeal Br. 11.) Appellant also argues that
the Examiner’s argument is not proper, because it is directed to
how materials will perform in the presently claimed invention as
presented in the present specification. This does not provide
any information on how materials would have been expected to
perform by one of skill in the art at the time of the present
application, and Applicant’s specification provides no
motivation for modification of the prior art.

(Reply Br. 3.)
The invention disclosed in Lura “relates to improved concrete
elements, particularly to high-performance self-compacting concrete (HP-
SCC); to cementitious compositions suitable for producing such concrete
elements; to methods of manufacturing such concrete elements and such
cementitious compositions; to the use of specific additives in concrete
elements and cementitious mixtures.” (Lura, Abstract.) Lura discloses that
“in a first aspect, the invention relates to a cementitious mixture comprising
(a) cement, (b) aggregate, (c) water, (d) polymer fibres, (e), superabsorbent
polymer (f) optionally mineral admixtures and (g) optionally additives.”
(Id., col. 2, ll. 41–45.) Lura further discloses that “[i]n an advantageous
embodiment, component (a) is selected from the group of Portland cements,
blended cements (additionally containing next to Portland cement
pozzolanic or inert mineral admixtures (f) or blends thereof), calcium
aluminate cements, calcium sulfoaluminate cements, alkali-activated
binders, supersulfated slag cements.” (Id., col. 3, ll. 38–43 (emphasis
added).)
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The SD Article discloses that “[e]xpansive cement can generate
volume expansion in the hydration process, and it does not shrink but also
expand[s] to some extent.” (SD Article ¶ 4.3.2.) The SD Article also
discloses that “[t]he major components of expansive cement include:
silicate-type, aluminate-type, sulphoaluminate-type and calcium
aluminoferrite-type. The expansion mechanism is the expansion of ettringite
generated in cement paste. And the setting and hardening of silicate
expansive cement is relatively slow; but that of the aluminate one is fast.”
(Id.) The SD article explains that sulphoaluminate expansive cement “is
made by iron phase, anhydrous calcium sulphoaluminate and dicalcium
silicate as well as gypsum.” (Id. ¶ 4.3.2.3.)
The cited prior art discloses improved concrete elements using
calcium sulfoaluminate cements (Lura, col. 3, ll. 38–43), that
sulfoaluminate-type cement is a major component of expansive cement, and
that the expansion of ettringite generated in the cement paste is the
expansion mechanism (SD Article ¶ 4.3.2). The Examiner then relies on the
disclosure in paragraph 34 of Appellant’s Specification to establish that an
ettringite-based expansive material such as calcium sulfoaluminate, as
disclosed in Lura and the SD Article, is an equivalent expansive material and
will perform in the same manner as the claimed ettringite-lime composite-
based expansive material. (See Answer 4 (citing Spec. ¶ 34).) We note that
paragraph 34 in the Specification is not part of a background-type section,
rather, it appears under the heading “Solution to Problem.” (Spec. 7.)
In order to rely on equivalence as a rationale supporting an
obviousness rejection, the equivalency must be recognized in the
prior art, and cannot be based on applicant’s disclosure or the
mere fact that the components at issue are functional or
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mechanical equivalents. In re Ruff, 256 F.2d 590, 118 USPQ
340 (CCPA 1958) (The mere fact that components are claimed
as members of a Markush group cannot be relied upon to
establish the equivalency of these components. However, an
applicant’s expressed recognition of an art-recognized or
obvious equivalent may be used to refute an argument that such
equivalency does not exist.).

MPEP § 2144.06.
Here, the Examiner does not sufficiently explain the reasoning with
rational underpinnings why one of skill in the art would have modified Lura
in the manner claimed, i.e., why one of skill in the art would have
substituted an ettringite-lime composite-based expansive material for the
calcium sulfoaluminate cements in Lura, absent the disclosure in Appellant’s
Specification.
Therefore, we will reverse the rejection of claim 1. For the same
reason, we will reverse the rejection of dependent claims 2–4, 13–21, and
23–27. The additional reference relied on in the rejection of dependent
claim 9 does not cure the above note deficiency. Therefore, we will also
reverse the rejection of claim 9.

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CONCLUSION
The Examiner’s rejections of claims 1–4, 9, and 13–17 under
35 U.S.C. § 103 are reversed.
Specifically:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4,
13–17
103 Lura, SD article 1–4,
13–17
9 103 Lura, SD article, Rice 9
Overall
Outcome
1–4, 9,
13–17

REVERSED