Ex Parte 5578663 et al

Board of Patent Appeals and Interferences

Jun 15, 2012

90009777 (B.P.A.I. Jun. 15, 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.
90/009,777 07/26/2010 5578663 128304.6g 8094
76809 7590 06/15/2012
Barbara E. Johnson, Esq.
555 Grant Street, Suite 323
Pittsburg, PA 15219
EXAMINER
JOHNSON, JERRY D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
06/15/2012 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 KAE Paving Consultants, Inc.,
Patent Owner and Appellant
____________________

Appeal 2012-008455
Reexamination control 90/009,777
Patent 5,578,663
Technology Center 3900
____________________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
KAE Paving Consultants, Inc. (hereinafter “Appellant”), the real party
in interest1 of Patent 5,578,663 (hereinafter the “‘663 patent”), appeals under
35 U.S.C. §§ 134(b) and 306 from the Examiner’s decision to reject claims
1-10 under 35 U.S.C. § 103(a) as unpatentable over McGovern ‘3782 in view

1 See Appellant’s Appeal Brief, filed September 6, 2011 (hereinafter “App.
Br.”) at 1.

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of either Vicenzi3 or Walaschek4 (Final Office Action, mailed May 6, 2011
(hereinafter “FOA”), pages 3-5; Examiner’s Answer, mailed January 5, 2012
(hereinafter “Ans.”), pages 5-6). We have jurisdiction under 35 U.S.C. §§
134(b) and 306.
We AFFIRM.
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed by Pavement Rejuvenation International, L.P.
(Request for Ex Parte Reexamination, filed July 26, 2010).
The ‘663 patent relates to a pavement rejuvenating and/or
conditioning composition in which particular coal tar derivatives and other
optional ingredients are supplemented with an elastomeric constituent,
preferably acrylonitrile-butadiene polymer, to reliably hold in place a top
layer of fine aggregate (‘663 patent, col. 2, ll. 21-28).
Representative claim 1 on appeal reads as follows (Claims App’x,
App. Br. 18) (indentations and bracketed material added):
1. A pavement treating composition comprising
[i] a quantity of bituminous pavement rejuvenator consisting
essentially of

2 McGovern, Edward W., US 4,661,378, issued April 28, 1987 (hereinafter
“McGovern ‘378”).

3 Vicenzi et al., US 5,362,314, issued November 8, 1994 (hereinafter
“Vicenzi”).

4 Walaschek, John P., US 3,835,117, issued September 10, 1974 (hereinafter
“Walaschek”).

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a coal tar derivative containing a mixture or [sic, of] di-,
tri- and tetracyclic aromatic compounds and their alkyl
homologs containing lower alkyl groups together with a
significant amount of phenolic and hydroxy derivatives,
said mixture having [1] a specific gravity at 25º/25° C. of
at least 1.08, [2] a maximum Brookfield viscosity at 25° C. of
30 cps, and [3] an initial boiling point of at least 180° C. and [4]
a continuous boiling range to at least 300° C., with [5] 70-40%
by volume of the material remaining as residue at 300° C.,
[ii] in admixture with a quantity of elastomer.
Appellant’s arguments are directed to all of the rejected claims on
appeal. Thus, we direct our comments toward representative claim 1.
II. ISSUES ON APPEAL
Appellant does not dispute the Examiner’s finding that McGovern
‘378 teaches a pavement treating composition including all of the
components of claim 1, but not a composition which is “in admixture with a
quantity of elastomer” as recited in the claim (FOA 3, Ans. 5; App. Br. 4, last
¶). The Examiner finds that
it would have been obvious to one having ordinary skill in the
art at the time the invention was made to add an
acrylonitrile/butadiene latex elastomer to a pavement treating
composition as taught by McGovern [‘378] so as to improve
one or more properties (e.g., solvent resistance, elasticity and
sand retention) as taught by Walaschek or Vicenzi. One skilled
in the art would have combined the elements as claimed by
known methods with no change in their respective functions,
and the combination yielding nothing more than predictable
results.
(Ans. 13).
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Appellant argues that the Examiner improperly combined the
teachings of McGovern ‘378 with the elastomer taught by Vicenzi or
Walaschek because (a) the underlying chemistries, goals, disclosures and
results of McGovern ‘378 do not conceptually align with the coatings of
Vicenzi or Walaschek and (b) Vicenzi teaches away from using the claimed
elastomer that is exhibited by Walaschek as being common in the art (see
generally App. Br. 5-8).
Accordingly, a first issue on appeal is:
Does the preponderance of the evidence of record taken as a whole
support the Examiner’s conclusion that a person of ordinary skill in the art at
the time of the invention would have used the elastomer, as described in
Vicenzi and Walaschek, in the pavement treating composition taught by
McGovern ‘378? We answer this question in the affirmative.
Appellant additionally argues that any prima face case of obviousness
established by the Examiner is overcome by the testimony provided by the
Kornfeind declaration5 that a new and unexpected property, namely an
improved ability to retain aggregate, is obtained that is only attributable to
the claimed invention (App. Br. 8-9).
Accordingly, a second issue on appeal is:
Does the evidence support the Appellants’ view that the claimed
invention would not have been obvious to one of ordinary skill in the art
considering Appellants’ evidence of improved aggregate retention achieved

5 The Declaration under 37 C.F.R. § 1.132 of Glenn L. Kornfeind, dated
May 2, 2011, and entered into the record on May 3, 2011 (hereinafter the
“Kornfeind Declaration” or “Kornfeind Decl.”).

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by a pavement treating composition with the claimed elastomer? We answer
this question in the negative.
III. ANALYSIS
Findings of Fact
McGovern ‘378 teaches a composition that is used for “sealing,
reconditioning, and dressing[]” bituminous and concrete surfaces
(McGovern ‘378, col. 1, ll. 12-13). In particular, McGovern ‘378 describes
a composition that “protects both bituminous and concrete surfaces from the
deteriorative effects of solvents, chemicals and water by effectively sealing
the surface to prevent their penetration into the pavement” and “is believed
to rejuvenate or prolong the useful life of bituminous pavements by
plasticizing the binder” (McGovern ‘378, col. 4, ll. 23-30; see also col. 6, ll.
19-21 (“seals concrete and bituminous surfaces against fuel, oil, water and
ice removing chemicals”)).
McGovern ‘378 does not use the term “non-aqueous” and is silent
with respect to water. However, the composition is described as a mixture
of a topped coke oven tar, an aromatic solvent, and a bituminous pavement
rejuvenator derived from coal tar (McGovern ‘378, col. 1, ll. 12-24).
McGovern ‘378 does not mention, but does not expressly exclude, water or
water-based components (see generally McGovern ‘378).
McGovern ‘378 also describes that the composition may be mixed
with fine mineral aggregates, such as sand, where due to heavy traffic, a
coating having more body is desired (McGovern ‘378, col. 6, ll. 3-6).
McGovern ‘378 also teaches sprinkling the paving with sand to minimize the
pickup of rejuvenating composition on the tires of the cars, when traffic is to
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proceed immediately over the treated paving (McGovern ‘378, col. 6, ll. 16-
19).
Walaschek and Vicenzi describe coal tar compositions for sealing
bituminous pavement compositions (Walaschek, Abstract; Vicenzi, col. 1, ll.
10-15, col. 2, ll. 3-5). Walaschek teaches that “[i]t has also been found that
solvent resistance and elasticity of a coal tar film cast from a coal tar
emulsion might be improved by the incorporation of synthetic
acrylonitrile/butadiene latex into the emulsion” (Walaschek, col. 1, ll. 37-
40). Similarly, Vicenzi teaches “additives currently on the market to
improve the suspension and bonding of fillers are primarily latex/- [sic]
polymer additives including acrylonitrile butadiene based polymers”
(Vicenzi, col. 1, ll. 57-60).
Walaschek and Vicenzi both recognize that composition including
acrylonitrile butadiene latex have a tendency to “re-emulsify” when it is
subject to water, leading to an unsatisfactory product (Walaschek, col. 1, ll.
49-51; Vicenzi, col. 2, ll. 1-11).
Walaschek solves this problem by providing the acrylonitrile
butadiene copolymer with “an especially small particle size,” namely an
average particle size of about 500 angstroms or 0.05 microns (Walaschek,
col. 2, ll. 37-46). Walaschek teaches that such a composition has “superior
bonding qualities when compared to similar known compositions” and has
“the ability to maintain a heavy load of aggregate filler material, such as
sand, in matrix-like suspension” even where a higher than ordinary amount
of water is employed in pavement sealing compositions (Walaschek, col. 2,
ll. 9-19, col. 5, ll. 1-11).
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Vicenzi solves the problem of latex re-emulsifying, and other
problems associated with latex, by using a blend of amine and amidoamine,
as a cohesion promoting additive, instead of the conventional acrylonitrile
butadiene latex (Vicenzi, col. 3, ll. 9-13).
Discussion
The Examiner has provided sufficient rationales as to why the skilled
artisan would have added an acrylonitrile butadiene latex to the sealing and
rejuvenating composition of McGovern ‘378, namely for the solvent
resistance and elasticity benefits and/or the improvements of suspension and
bonding of fillers (sand) described by Walaschek and Vicenzi (Ans. 13).
Adding a latex additive would have been no more than the predictable use of
a prior art element (acrylonitrile butadiene latex) according to its established
function (as a solvent resistant, elasticity providing, and/or filler suspension
and bonding agent in a sealing composition, as taught by Walaschek and
Vicenzi). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (The
question to be asked is “whether the improvement is more than the
predictable use of prior art elements according to their established
functions.”). Thus, we are not persuaded by Appellant’s argument that one
of ordinary skill in the art would not have looked to Vicenzi and Walaschek
to improve the composition of McGovern ‘378, as each reference relates to
compositions for sealing pavement.
We are not persuaded by Appellant’s position that the “solvent
resistance” taught by Walaschek teaches away from combining an elastomer
with the non-aqueous “aromatic solvent” base of McGovern ‘378 (App. Br.
5). The “solvents” that the composition in Walaschek is specifically
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designed to protect against are “jet fuel, gasoline, and the like” that have
readily attacked the sealing film (Walaschek, col.1, ll. 22-24). These
solvents are similar to the “fuel,” “oil,” and “ice removing chemicals” which
the sealing composition in McGovern ‘378 also protects against (McGovern
‘378, col. 6, ll. 19-21).
Moreover, McGovern ‘378 teaches the aromatic solvent as “a
compatible vehicle” for the coat tar components that permits uses where
odor was a problem, uses at ambient temperatures, and promotes rapid
penetration and drying at the surface (McGovern ‘378, col. 5, ll. 60-67).
The problems with water taught by Walaschek and Vicenzi would have
suggested to the skilled artisan using an aromatic solvent as a preferred
vehicle, as taught by McGovern ‘378.
Appellant contends that Vicenzi “teaches away” from using
acrylonitrile butadiene latex as an additive because the latter provides
evidence it is unsuitable and inferior to amino and amidoamine additives
(App. Br. 4 & 7). We agree with the Examiner that the problems identified
by Vicenzi with respect to acrylonitrile butadiene latex do not teach away
from using it as a known and conventional component in the composition of
McGovern ‘378 (Ans. 12). As stated by the Examiner, “a known or obvious
composition does not become patentable simply because it has been
described as somewhat inferior to some other product for the same purpose”
(Ans. 12) (citing In re Gurley, 27 F.3d 551,554 (Fed. Cir. 1994)). Moreover,
Vicenzi mentions nothing about the particle size of the acrylonitrile
butadiene polymer, and Walaschek teaches successful use of acrylonitrile
butadiene latex in a sealing composition when the particle size is very small.
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Accordingly, one of ordinary skill in the art would have expected success in
using acrylonitrile butadiene latex, particular with a very small particle size,
in the composition of McGovern ‘378.
We agree with the Examiner that McGovern ‘378 does not exclude
additional components, even the addition of a water based component such
as latex (Ans. 7 and 11). We are likewise unpersuaded by the testimonial
evidence of Dr. Glenn Kornfeind that “based on my expertise with tar
products and the observation of the [‘663 patent’s] disclosed elastomer
behavior with solvent used in the production of PDC [i.e., the composition
of McGovern ‘378], it would not have been obvious that the disclosed
elastomers would be compatible in such tar products as PDC” (Kornfeind
Decl. ¶ 10). Appellant does not describe his observations regarding
“elastomer behavior” and does not explain what about his “expertise with tar
products” would lead him to this conclusion. Appellant’s declarant
identifies no underlying facts or technical reasoning to support his allegation
that the elastomer was obviously “incompatible” with the McGovern ‘378
composition. Mere allegations or conclusory statements in a specification or
affidavit do not take the place of factual evidence. See, e.g., In re Lindner,
457 F.2d 506, 508 (CCPA 1972) (“[M]ere conclusory statements in the
specification and affidavits are entitled to little weight when the Patent
Office questions the efficacy of those statements.”).
Appellant also presents evidence of improved aggregate retention of
the claimed composition in which samples of equal amounts of test
compositions are brushed over bituminous pavement core samples, and then
slag aggregate is distributed over the cores, held upside down and tapped
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over a sheet of paper to determine if the treated core samples would reliably
hold the layer of aggregate (aggregate retention) (Kornfeind Decl. ¶ 7, 8, and
9). In a first test, the Kornfeind Declaration describes the preparation and
testing of (a) a composition said to be according to McGovern ‘378 that also
includes 2% of an acrylonitrile butadiene elastomer (referred to as “PDC”),
which is also said to be according to claim 1 of the ‘663 patent, (b) a
composition said to be according to Vicenzi (referred to as “V”), and (c) a
composition said to be according to Walaschek (referred to as “W”)
(Kornfeind Decl. ¶ 6). We do not find the results of this test to be particular
relevant to the issue of obviousness as the results do not compare the
claimed invention (which is said to be composition (a)) to the closest prior
art, which Appellant and the Examiner agree, in this case, is the comparison
to McGovern ‘378 without an elastomer (see Ans. 15, first full ¶; App. Br.
13, last ¶).
However, in a second test, the Kornfeind Declaration describes
preparing and testing of (a) a composition said to be according to Vicenzi,
but with 2% Tarmax (an acrylonitrile butadiene elastomer) instead of “tall
oil fatty acid” said to be the amine/amidoamine blend alternative of Vicenzi
(referred to as “V1”), (b) a composition said to be according to Vicenzi, but
without either the 2% Tarmax or the “tall oil fatty acid (TOFA)” (referred to
as “V2”), (c) a composition said to be according to McGovern ‘378 (referred
to as “PDC2”) and (d) a composition said to be according to McGovern ‘378
and further including 2% Tarmax (referred to as “PDC1”), which is also said
to be according to the claimed invention of the ‘663 patent (Kornfeind Decl.
¶ 9). According to the Kornfeind Declaration, the various compositions
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exhibited the following loss of the slag aggregate from the pavement core
sample (Kornfeind Decl. ¶¶ 7 & 9):
Composition Aggregate Loss
V1 (containing elastomer) 25%
V2 (no elastomer) 39%
PDC1 (containing elastomer) 0.1%
PDC2 (no elastomer) 6%
According to the Kornfeind Declaration, “[t]he claimed PDC
composition [PDC1], therefore, contains an inherent feature – twelve-fold
improvement in aggregation retention - over the claimed composition
without the added elastomer . . . and much better than twelve-fold
improvement as compared to any other prior art” (Kornfeind Decl. ¶ 10).
We agree that the data provided by Appellant’s declarant
demonstrates an improvement in aggregate retention when an elastomer is
provided, whether to the composition of McGovern ‘378 (6% vs. 0.1%
aggregate loss) or to the composition of Vicenzi (39% loss vs. 25% loss).
However, the Examiner provided evidence that the function of the elastomer
described by both Vicenzi and Walaschek similarly provides for retention of
aggregate, namely sand, in a composition, as discussed above (Ans. 15-16).
Appellant’s declarant relies only on the improvement data as evidence of
unexpected results, but has not adequately explained why such
improvements would have been unexpected, in view of the similar function
of the elastomer as retaining sand, which is described in the cited prior art.
Although we recognize that the aggregate retention described in Vicenzi and
Walaschek represents aggregate (sand) provided in the composition itself
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and not to aggregate applied across the surface of a sealing layer, as
described in the testing procedure of the Kornfeind Declaration (Kornfeind
Decl. ¶ 9), the skilled artisan would have expected known aggregate (sand)
binding properties to be present in compositions comprising the elastomer,
as taught by Vicenzi and Walaschek. The property relied upon for the basis
of unexpected results appears to be one which was possessed and recognized
in the cited prior art and is therefore not a persuasive basis upon which to
rebut obviousness. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed.
Cir. 1991):
The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness under the law.
IV. CONCLUSION
On the record before us, we affirm the rejections maintained by the
Examiner.
V. TIME PERIOD FOR RESPONSE
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
cu

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FOR PATENT OWNER:

BARBARA E. JOHNSON, ESQ.
555 GRANT STREET, SUITE 323
PITTSBURGH, PA 15219

FOR THIRD-PARTY REQUESTER:

JACKSON WALKER, LLP
112 E. PECAN
SUITE 2400
SAN ANTONIO, TX 78205