Ex Parte Martin

Patent Trials and Appeals Board

Jul 23, 2013

12260162 - (D) (P.T.A.B. Jul. 23, 2013)

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.
12/260,162 10/29/2008 Jean-Valery Martin 99342.00114 2282
21832 7590 07/24/2013
MCCARTER & ENGLISH, LLP
CITYPLACE I
185 ASYLUM STREET
HARTFORD, CT 06103
EXAMINER
BRUNSMAN, DAVID M
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
07/24/2013 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 JEAN-VALERY MARTIN
____________

Appeal 2012-007647
Application 12/260,162
Technology Center 1700
____________

Before CHUNG K. PAK, TERRY J. OWENS, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL
The named inventor (hereinafter “Appellant”)1 appeals under 35
U.S.C. § 134 from the Examiner’s final rejection of claims 1 through 3, 5
through 7, 19, and 20, all of the claims pending in the above-identified
application. A hearing was conducted on July 11, 2013. We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The subject matter on appeal is directed to “modified asphalt binders”
that “comprise neat asphalt, crumb rubber, one or more synthetic polymers,

1 Appellants identify the real party in interest as Innophos, Inc. (See Appeal
Brief filed August 9, 2011 (“App. Br.”) at 2.)
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Application 12/260,162
2
and one or more acids. The crumb rubber may be obtained from recycled
truck and/or automobile tires.” (Spec. 1, ¶ [0002].) Details of the appealed
subject mattered are recited in illustrative claim 1 reproduced below:
1. A modified asphalt binder composition, comprising:
(a) about 40% by weight to about 98.9% by weight asphalt binder
material;
(b) about 0.5% by weight to about 25% by weight crumb rubber;
(c) about 0.5% by weight to about 30% by weight of at least one
synthetic polymer; and
(d) about 0.05% by weight to about 5% by weight of at least one acid
selected from the group consisting of phosphoric acid, polyphosphoric
acid, sulfuric acid at more than 90% wt, boric acid, adipic acid, citric
acid, oxalic acid, tartaric acid, maleic acid, valeric acid, succinic acid,
fumaric acid, glutamic acid, phthalic acid, acetic acid, and combinations
thereof.
(App. Br. 9 (Claims App’x)).
Appellant seeks review of the following grounds of rejection
maintained by the Examiner in the Examiner’s Answer mailed November
15, 2011 (“Ans.”):
1. Claims 1-3 and 5-7 under 35 U.S.C. § 103(a) as unpatentable
over U.S. Patent 5,501,730 issued to Duong et al. on March 26, 1996
(“Duong”) in view of U.S. Patent 5,095,055 issued to Moran on March 10,
1992 (“Moran”);
2. Claims 19 and 20 under 35 U.S.C. § 103(a) as unpatentable
over Duong, Moran, and U.S. Patent Application Publication 2003/0018106
published in the name of Sylvester on January 23, 2003 (“Sylvester”);
Appeal 2012-007647
Application 12/260,162
3
3. Claims 19 and 20 on the ground of nonstatutory obviousness-
type double patenting as unpatentable over claim 1of U.S. Patent 7,446,139
B2 issued to Martin on November 4, 2008 (“Martin ‘139”) in view of
Sylvester; and
4. Claims 19 and 20 on the ground of nonstatutory obviousness-
type double patenting as unpatentable over claim 1of U.S. Patent 7,417,082
B2 issued to Martin on August 26, 2008 (“Martin ‘082”) in view of
Sylvester. (App. Br. 3.)

DISCUSSION
I. Obviousness under 35 U.S.C. § 103(a)
The Examiner found that Duong teaches an asphalt composition made
by a process which comprises mixing about 80 to 99% of asphalt with about
8% of crumb rubber having a particle size of 1mm, and l.5% of SBS (styrene
butadiene styrene) block copolymer and then subjecting the mixture to a
dehydrogenation treatment to increase the compatibility between the asphalt
and the polymers. (Ans. 4.) The Examiner recognized that Duong does not
teach employing at least one acid recited in claim 1 in its asphalt
composition. (Ans. 5.)
To remedy this deficiency, the Examiner relied on the disclosure of
Moran. (Id.) The Examiner found that Moran teaches treating an asphalt
composition containing similar ingredients as those included in Duong’s
asphalt composition with an inorganic acid, such as phosphoric acid. (Id.)
According to the Examiner:
It would have been obvious to one of ordinary skill in the
art to replace the high temperature dehydrogenation treatment
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Application 12/260,162
4
of Duong with [the] addition of an acid as taught by Moran
because both instrumentalities are taught by the art to be
effective to stabilize an asphalt /polymer blend. [(Id.)]

On the other hand, Appellant contends that one of ordinary skill in the
art would not have been led to add the acid, in lieu of the high temperature
dehydrogenation treatment, in forming the asphalt composition of the type
taught by Duong because the acid and dehydrogenation treatments are not
taught to be interchangeable. (App. Br. 4-7 and Reply Br. 4-5.)
Thus, the dispositive question here is: Did the Examiner err in
determining that one of ordinary skill in the art would have been led to
employ the acid treatment taught by Moran, in lieu of Duong’s high
temperature dehydrogenation treatment, in forming the asphalt composition
of the type taught by Duong? 2 On this record, we answer this question in
the affirmative.
It is well established that the Examiner can demonstrate a prima facie
case of obviousness if two known alternatives are shown to be
interchangeable for providing a desired function. In re Fout, 675 F.2d 297,
301 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 568 (CCPA 1967).
However, on this record, the Examiner failed to demonstrate that Moran’s
acid treatment and Duong’s high temperature dehydrogenation treatment are
interchangeable in forming the asphalt composition of the type taught by

2 The Examiner did not rely on the disclosure of Sylvester or US Patent
Application Publication 2006/0250886 A1 issued Dupuis et al. on November
9, 2006 to demonstrate that the acid treatment taught by Moran and the high
temperature dehydrogenation treatment taught by Duong are functionally
equivalent or interchangeable for the purpose of treating crumb-rubber
containing asphalt compositions. (Ans. 5-6.)
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Duong. Duong teaches solving various problems associated with employing
crumb rubbers in an asphalt composition via homogenizing and completely
dehydrogenating such crumb rubber containing asphalt composition.
(Duong, col.1, ll. 26-46 and col. 3, l. 18 to col. 4, l. 56.) Although the
Examiner correctly found that Moran teaches adding an acid to its modified
asphalt composition to enhance the storage stability of such asphalt
composition, the Examiner did not show that the acid taught by Moran can
be used for dehydrogenating an asphalt composition or can be used to
overcome the problems associated with using crumb rubbers in an asphalt
composition. (Ans. 4-9 and Moran, col. 2, ll. 10-55.) In other words, the
Examiner did not show that the acid treatment taught by Moran and the high
temperature dehydrogenation treatment taught by Duong are functionally
equivalent or interchangeable for the purpose of treating crumb-rubber
containing asphalt compositions.
It follows that the Examiner erred in determining that one of ordinary
skill in the art would have been led to employ the acid treatment taught by
Moran, in lieu of Duong’s high temperature dehydrogenation treatment, in
forming the asphalt composition of the type taught by Duong.

II. Obviousness-Type Double Patenting
Appellant has not challenged the Examiner’s obviousness-type double
patenting rejections in question. (App. Br. 7 and Reply Br. 1-7.) Rather,
Appellant states that “applicant will submit a terminal disclaimer if this is
the sole remaining grounds for rejection.” (App. Br. 7.)
It follows that Appellant has not shown any error in the Examiner’s
rejection of claims 19 and 20 on the ground of obviousness-type double
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Application 12/260,162
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patenting as unpatentable over either claim 1 of Martin ‘139 or claim 1 of
Martin ‘082, in view of the disclosure of Sylvester. In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011); see also Manual of Patent Examining
Procedure § 1205.02 (8th ed., Rev. 3, August 2005) (“If a ground of
rejection stated by the examiner is not addressed in the appellant’s brief, that
ground of rejection will be summarily sustained by the Board.”)

ORDER
Upon consideration of the record, and for the reasons given above, it
is
ORDERED that the decision of the Examiner rejecting claims 1-3, 5-
7, 19, and 20 under 35 U.S.C. § 103(a) is REVERSED;
FURTHER ORDERED that the decision of the Examiner rejecting
claims 19 and 20 on the ground of obviousness-type double patenting as
unpatentable over either claim 1 of Martin ‘139 in view of Sylvester or claim
1 of Martin ‘082 in view of Sylvester is AFFIRMED; and
FURTHER ORDERED that 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-IN-PART

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