Ex Parte Brower et al

Board of Patent Appeals and Interferences

Sep 23, 2010

11152957 (B.P.A.I. Sep. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte LYNN E. BROWER,
THOMAS M. VICKERS, JR., PATRICK MILLER, and
BRUCE J. CHRISTENSEN
________________

Appeal 2009-014112
Application 11/152,957
Technology Center 1700
________________

Before MICHAEL P. COLAIANNI, ADRIENE LEPIANE HANLON, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-014112
Application 11/152,957

2
A. Introduction2
Lynn E. Brower, Thomas M. Vickers, Jr., Patrick Miller, and Bruce J.
Christensen (“Brower”) timely appeal under 35 U.S.C. § 134(a) from the
final rejection3 of claims 1-15.4 We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
The subject matter on appeal relates to dry cast cementitious mixtures
said to have improved freeze-thaw durability due to the incorporation of
polymeric microspheres and, in some embodiments, gas generating
additives. Cementitious dry cast mixtures are said to have stiff consistencies
(Spec. 2, ll. 5-7) and to be useful for forming articles such as concrete pipe,
roof tiles, and masonry units (id. at ll. 11-13). Prior art dry cast mixtures are
said to be difficult to protect against freeze-thaw cycles due to the difficulty
of controllably entraining air into the concrete. (Id. at 1, ll. 24-30.) The
provision of polymeric microspheres is said to permit the easy and
reproducible formation of cementitious compositions with lower and less
variable voids content, and consequently articles having higher and more
uniform strength. (Id. at 2, ll. 26-29.)

2 Application 11/152,957, Freeze-Thaw Durability of Dry Cast
Cementitious Mixtures, filed 14 June 2005, claiming the benefit of
provisional applications filed 15 June 2004, and 15 August 2004. The
specification is referred to as the “957 Specification,” and is cited as “Spec.”
The real party in interest is listed as Construction Research & Technology
GmbH (Appeal Brief, filed 30 September 2008 (“Br.”), 3.)
3 Office action mailed 22 May 2008 (“Final Rejection”; cited as “FR”).
4 Claims 16-20 have been withdrawn from consideration (FR 1) and are not
before us.
Appeal 2009-014112
Application 11/152,957

3
Representative Claim 1 reads:
1. A cementitious freeze-thaw damage resistant dry cast
composition comprising
hydraulic cement,
polymeric microspheres, and optionally
gas generating additives.
(Claims App., Br. 18; paragraphing added.)
The Examiner has maintained the following grounds of rejection:5
A. Claims 1-9 and 14 stand rejected under and 35 U.S.C. § 102(e)
in view of Go Boncan.6
B. Claims 10-13 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Go Boncan and Gaines.7
C. Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Go Boncan and Sutton.8
Brower contends that the Examiner erred in finding anticipation of
claim 1 by Go Boncan. According to Brower, a dry cast composition within
the scope of the claim “includes ‘typical water/cement . . . ratios of about 0.2
to about 0.8’, which results in ‘stiff to extremely dry consistencies’ which
are not pumpable.” (Br. 10, last para.) In contrast, Brower argues,
Go Boncan discloses cement compositions that can be pumped into an oil
well. (Id., first para., citing Go Boncan at 3 [0031]-[0032].)

5 Examiner’s Answer mailed 1 April 2009. (“Ans.”).
6 Virgilio C. Go Boncan, Polymer Shell Encapsulated Gas as a Cement
Expansion Additive, U.S. Patent Application Publication
US 2004/0147406 A1 (29 July 2004), based on an application
filed 23 January 2003.
7 Robert W. Gaines, U.S. Patent 4,142,909 (1979).
8 David L. Sutton, U.S. Patent 3,979,217 (1976).
Appeal 2009-014112
Application 11/152,957

4
The Examiner finds that Go Boncan describes compositions
comprising mixtures of Portland cement and polymeric microspheres
(Ans. 3, citing Go Boncan at 2 [0026]-[0027]) that can be dry [lacking
water] or wet [mixed with water] (id., citing Go Boncan at 2 [0029]). The
Examiner responds to Brower’s criticism by noting that Go Boncan
describes a cement having a water content of about 0.47, based on cement,
and that “the features on which applicant relies (i.e., the water/cement) are
not recited in the rejected claim(s).” (Ans. 6.)
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The issue dispositive of this appeal is the weight to be given to the
preamble of claim 1. More precisely, what is the meaning of a
“cementitious dry cast composition”?
The 957 Specification defines the term “dry cast cementitious
mixtures” in the following words:
Dry cast cementitious mixtures are any mixture of
cementitious binder, such as pastes, mortars, and concrete
compositions characterized generally by a very low (< 1 inch)
to zero value of slump (ASTM C-143) and consistencies
ranging from stiff to extremely dry, as defined
in ACI 211.3R, Table 2.3.1. Dry cast mixtures are also
known as low-slump, no-slump or zero-slump mixtures.
(Spec. 4, ll. 1-6.)
Appeal 2009-014112
Application 11/152,957

5
The 957 Specification teaches further that:
The reduced paste content provides cementitious dry
cast mixtures with stiff to extremely dry consistencies, with
typical water/cement (w/c) ratios of about 0.2 to about 0.8.
Low paste to aggregate ratios (on a volume basis) produce
mixtures, which do not flow under gravity and require
additional vibration and pressure to compact the mixture into
a final form. The non-flowing consistency and mechanically
enhanced compaction allow the final product item to be
immediately removed from a mold or extruded from a die
with the correct final shape and dimensions.
(Spec. 30, ll. 25-32.)
We conclude that “cementitious dry cast mixtures” comprise water
and cementitious binders, and have low values of slump as defined by the
ASTM G-143 standard. Thus, the mixtures covered by claim 1 comprise
water, hydraulic cement as a binder, and polymeric microspheres, and have
the required low values of slump. In the context of the appealed claims, we
note that, according to the 957 Specification, the terms “stiff” and
“extremely dry” defined in Table 2.3.1(a) of ACI 211.3.9 (Spec. 4, ll. 1-4.)

9 The full text of ACI 211.3 is provided by Appellants in the Evidence
Appendix attached to the Principal Brief on Appeal “for . . . completeness.”
(Br. 9, 3d. para.) Under 37 C.F.R. § 41.33(d)(2) (2007), in effect when the
Brief was filed, “[a]ll other affidavits or other evidence filed after the date of
filing an appeal pursuant to § 41.31(a)(1) . . . will not be admitted except as
permitted by §§ 41.39(b)(1) [new ground of rejection in the Examiner’s
Answer], 41.50(a)(2)(i) [supplemental Examiner’s Answer in response to a
remand by the Board] and 41.50(b)(1) [new ground of rejection by the
Board].” Because none of the exceptions are met, the Evidence submitted in
the appendix is untimely. Because Brower has not shown good cause why
the ACI documentation was not presented during prosecution, we shall not
consider it.
Appeal 2009-014112
Application 11/152,957

6
The terms “stiff” and “extremely dry” are therefore terms of art
presumptively familiar to persons of ordinary skill in the cement art.
The Examiner appears to have given little or no weight to the
preamble in the present claims. This is entirely proper when the preamble
merely recites, for example, an intended use of the claimed subject matter.
When, however, the preamble is “necessary to give life, meaning and vitality
to the claims,” the preamble is limiting. Kropa v. Robie, 187 F.2d 150, 152
(CCPA 1951). In the present case, the entire reason for Brower’s efforts, as
disclosed in the supporting 957 Specification, was to provide “no slump”
cementitious mixtures with improved freeze-thaw properties. Under these
circumstances, the preamble cannot be ignored.
The weight of the evidence placed before us by the Examiner and by
Brower indicates that Go Boncan is concerned with pumpable cements. The
Examiner has not come forward with any credible evidence that pumpable
cements contemplated by Go Boncan have a slump of less than one inch,
which we have found to be a defining characteristic of the dry cast mixtures.
We therefore REVERSE the rejection of claim 1 as anticipated by Go
Boncan.
The obviousness rejections build on, but do not cure, the defects of the
rejection of claim 1, which is the only independent claim. Accordingly, we
REVERSE the obviousness rejections as well.
C. Order
We REVERSE the rejection of claims 1-9 and 14 under and
35 U.S.C. § 102(e) in view of Go Boncan.
Appeal 2009-014112
Application 11/152,957

7
We REVERSE the rejection of claims 10-13 under 35 U.S.C. § 103(a)
in view of the combined teachings of Go Boncan and Gaines.
We REVERSE the rejection of claims 14 and 15 under
35 U.S.C. § 103(a) in view of the combined teachings of Go Boncan and
Sutton.
REVERSED

kmm

CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145