Ex Parte Aardema et al

Patent Trial and Appeal Board

Oct 18, 2016

13308497 (P.T.A.B. Oct. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/308,497 11130/2011 James A. Aardema
58982 7590 10/20/2016
CATERPILLAR/FINNEGAN, HENDERSON, L.L.P.
901 New York A venue, NW
WASHINGTON, DC 20001-4413
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
08350.0340-00000 2316
EXAMINER
RISIC, ABIGAIL ANNE
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
10/20/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
regional-desk@finnegan.com
us_docket_clerk@cat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES A. AARDEMA and AARON KENNETH AMSTUTZ
Appeal2014-007955
Application 13/308,497 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, KENNETH G. SCHOPPER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1-8 and 15-20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
BACKGROUND
According to Appellants, "[t]he present disclosure relates generally to
a paving system, and more particularly, to a paving system utilizing capsules
enclosing a dye." Spec. i-f 1.
1 According to Appellants, the real party in interest is Caterpillar Paving
Products Inc. Appeal Br. 3.
Appeal2014-007955
Application 13/308,497
CLAHvIS
Claims 1-8 and 15-20 are on appeal. Claim 1 is illustrative of the
appealed claims and recites:
1. A method of controlling a paving process, comprising:
mixing at least one capsule that at least partially encloses
a dye within a paving material;
dispensing the paving material at a desired location;
performing a compacting process on the paving material;
monitoring for a presence of the dye at a surface of
dispensed paving material; and
controlling the compacting process based on the presence
of the dye.
Appeal Br. 23.
REJECTIONS
1. The Examiner rejects claims 1-7 and 15-20 under 35 U.S.C.
§ 103(a) as unpatentable over Congdon2 in view of Sommer3 and
Turner. 4
2. The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Congdon in view of Sommer, Turner, and Walt. 5
2 Congdon et al., US 7,731,450 B2, iss. June 8, 2010.
3 Dustin Sommer & Nick Deming, "Real Time Quality Control Spring
2007 ," Design Construction and Material Pavement Enterprise (unpublished
report, Pavement Design, Construction, and Materials Enterprise of
Michigan Technological University) (on file with Michigan Technological
University).
4 Turner et al., US 2012/0115719 Al, pub. May 10, 2012.
5 Walt et al., US 2009/0232901 Al, pub. Sept. 17, 2009.
2
Appeal2014-007955
Application 13/308,497
DISCUSSION
With respect to claim 1, the Examiner finds:
Congdon teaches a method of controlling a paving process,
comprising: a sensor (26), dispensing the paving material at a
desired location; perfonning a compacting process on the paving
material; monitoring for a presence of an aberrant compaction
response of dispensed paving material; and controlling the
compacting process based on the presence of the aberrant
response. Congdon fails to teach monitoring for the presence of
a dye and controlling the compactor based on the presence of the
dye. Sommer teaches it is known to embed a sensor in asphalt
pavement for determining the conditions of the asphalt based on
temperature and/or pressure. Turner teaches a material with dye
capsules embedded which release dye when the material
experiences a predetermined compressive force (paragraphs
[0037] [0038]). Since Sommer teaches it is known to embed a
sensor in asphalt, it would have been obvious to one of ordinary
skill in the art to mix a dye capsule within the paving material of
Congdon as taught by Turner to provide simple visual indicator
of when the pavement has reached a predetermined compression.
Congdon as modified by Turner teaches mixing a capsule with
paving materiai, monitoring for the presence of dye and
controlling the process based on the presence of dye.
Final Act. 2-3. The Examiner relies on substantially similar findings and
conclusions in rejecting independent claim 15. Id. at 15.
We are persuaded by Appellants' argument that the combination of
Congdon, Sommer, and Turner fails to disclose or render obvious
controlling a compacting process or including a dye capsule in a paving
material mixture as claimed. See Appeal Br. 16-17, 19. In particular, we
find that the Examiner erred in finding that it would have been obvious to
include a sensor in a paving material as claimed based on the teachings of
Sommer. Sommer relates to a Roadbed Assessment Transmitter and is more
specifically concerned with designing such a transmitter to withstand
3
Appeal2014-007955
Application 13/308,497
temperature and pressure related to use in an asphalt mix. See Sommer 5.
However, although Sommer is concerned with developing a casing that
protects the transmitter from "the pressures of a vibratory compactor," the
Examiner has not pointed to any specific teaching or suggestion that the
sensor could or would be used to control a compacting process. We find that
the Examiner's findings that Sommer shows it is known to embed a sensor
in a paving material to control compaction or that Sommer's teachings
would have led a person of ordinary skill in the art to include a sensor,
including a dye capsule, in a paving material are not supported on the record
before us. Thus, we further find that the Examiner fails to provide a
sufficient articulated reasoning with rational underpinnings required to
support the conclusion of obviousness. See KSR Int 'l Co. v. Teleflex, Inc.,
550 U.S. 398, 418 (2007).
Based on the foregoing we do not sustain the rejection of claims 1 and
15. We also do not sustain the rejection of claims 2-8 and 16-20, which
rely on the same reasoning and do not correct the deficiencies in the
rejection of the independent claims.
CONCLUSION
For the reasons set forth above, we REVERSE the rejections of claims
1-8 and 15-20.
REVERSED
4