HPC OKINAWA CO., LTD.Download PDFPatent Trials and Appeals BoardMar 31, 20212020005346 (P.T.A.B. Mar. 31, 2021) 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. 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. Appeal 2020-005346 Application 15/314,611 2 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”). Appeal 2020-005346 Application 15/314,611 3 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.) Appeal 2020-005346 Application 15/314,611 4 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. Appeal 2020-005346 Application 15/314,611 5 (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).) Appeal 2020-005346 Application 15/314,611 6 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 Appeal 2020-005346 Application 15/314,611 7 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. Appeal 2020-005346 Application 15/314,611 8 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 Copy with citationCopy as parenthetical citation