Ex Parte Martin et al

Patent Trial and Appeal Board

Sep 24, 2013

12419851 (P.T.A.B. Sep. 24, 2013)

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.
12/419,851 04/07/2009 Jean-Valery Martin 99342.00120 1389
21832 7590 09/24/2013
MCCARTER & ENGLISH, LLP
CITYPLACE I
185 ASYLUM STREET
HARTFORD, CT 06103
EXAMINER
SZEKELY, PETER A
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
09/24/2013 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, GAYLON LYNN BAUMGARDNER,
ANDREW MICHAEL MENAPACE and JOHN MEDFORD DUMAS
______________

Appeal 2012-009307
Application 12/419,851
Technology Center 1700
_______________

Before ADRIENE LEPIANE HANLON, CHARLES F. WARREN and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1, 3-5 and 7 under 35 U.S.C. § 103(a) over
Falkiewicz (US 7,678,467 B2) and over Ruan (US 2007/0131578 A1). Am.
App. Br. 4; Ans. 4. We have jurisdiction. 35 U.S.C. §§ 6 and 134(a) (2002).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a process for producing an
air blown asphalt, and is representative of the claims on appeal:
1. A process for producing an air blown asphalt comprising the steps
of:
(a) providing a neat asphalt;
(b) treating the neat asphalt by air blowing for a period of time of
about 250 minutes at an air temperature of about 450ºF;
Appeal 2012-009307
Application 12/419,851
2
(c) following the air blowing treatment, adding polyphosphoric acid to
the air blown neat asphalt while stirring, wherein the resulting asphalt
composition has a softening point of less than 181ºF and a penetration value
of at least 37 dmm at 77ºF.
Am. App. Br. 8 (Claims App’x).
We decide this appeal on independent claim 1 argued by Appellants.
Am. App. Br. 2, 6. 37 C.F.R. § 41.37(c)(1)(vii).
OPINION
We cannot agree with Appellants that the Examiner erred in finding
that Falkiewicz would have disclosed to one of ordinary skill in the art a
process for producing an air blown asphalt wherein polyphosphoric acid is
added to the asphalt before, during or after the step of treating the asphalt by
air blowing, and in determining that the reference thus would have led one
of ordinary skill in the art to add the polyphosphoric acid to the asphalt after
the step of treating the asphalt by air blowing as specified in claim 1. Ans.
4-5; Am. App. Br. 5-6; Reply Br. 2-4.
We find that, as the Examiner finds and contrary to Appellants’
position, Falkiewicz would have clearly disclosed to one of ordinary skill in
the art that “the process comprises air blowing the asphalt and mixing
polyphosphoric acid with the asphalt before, during, or after the air blowing
or a combination thereof to form a chemically-modified air-blown asphalt.”
Falkiewicz col.2 ll.9-14; see also col.2 ll.18-21, col.2 ll.35-38. Ans. 4-5;
Am. App. Br. 5-6; Reply Br. 2-4. Indeed, we find that, contrary to
Appellants’ position, one of ordinary skill in the art would have found that
Falkiewicz’s disclosure of several preferred embodiments of mixing
polyphosphoric acid and asphalt that do not include mixing polyphosphoric
acid after the air blowing step per se, are variations on the disclosure that the
Appeal 2012-009307
Application 12/419,851
3
mixing can occur “before, during or after the air blowing or a combination
thereof” which do not limit the teachings of the reference. See, e.g., In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“[T]he fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.”).
Furthermore, we are not persuaded by Appellants’ unsupported
contention that Falkiewicz would have disclosed to one of ordinary skill in
the art “that the process does not change the softening point of the asphalt at
all” in disclosing that “[t]he treated asphalts . . . all have softening points of
223ºF or more, which are approximately the same as the untreated asphalts,
and the penetration depth of the treated asphalt increases.” Am. App. Br. 6
(citing Falkiewicz col.13 ll.10-25, Table A); Reply Br. 4. Indeed, we find
that, as the Examiner points out, Falkiewicz would have disclosed to one of
ordinary skill in the art that the samples shown in Falkiewicz’s Table A were
prepared by adding and mixing the asphalt and polyphosphoric acid “using a
spatula” and “[t]he mixture was heated to about 450º F. and air was injected
through the bottom of the still.” Falkiewicz col.12 ll.57-62. Ans. 5. Thus,
Falkiewicz’s disclosure in this respect would not have led one of ordinary
skill in the art to expect the same result with the other methods of mixing the
asphalt and the polyphosphoric acid.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
teachings of Falkiewicz with Appellants’ countervailing evidence of and
argument for nonobviousness and conclude, by a preponderance of the
evidence and weight of argument, that the claimed invention encompassed
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Application 12/419,851
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by appealed claims 1, 3-5 and 7 would have been obvious as a matter of law
under 35 U.S.C. § 103(a).
We do not reach the same conclusion with respect to the ground of
rejection over Ruan. We agree with Appellants that the Examiner erred in
determining that one of ordinary skill in the art would have reasonably been
led by Ruan’s disclosure that the described method of adding
polyphosphoric acid to air blow asphalt obtained an asphalt composition
having a softening point in the range of 185ºF to 250ºF and a penetration
rate of at least 15 dmm at 77ºF to an asphalt composition having a softening
point of less than 181ºF and a penetration value of at least 37 dmm at 77ºF
as specified in claim 1. Ruan abstract, ¶¶ 0008, 0010, 0011, claims 6, 10.
Ans. 4-5; Am. App. Br. 6-7; Reply Br. 4.
The Examiner has the burden in the first instance of establishing that
one of ordinary skill in the art following the teachings of Ruan would have
reasonably arrived at an asphalt mixture having the combination of a
softening point and a penetration value falling within the claimed ranges in
order to shift the burden to Appellants to establish otherwise. Here, the
Examiner has not carried the burden of establishing that one of ordinary skill
in the art would have recognized that Ruan’s penetration value range of at
least 15 dmm at 77ºF would extend to include the claimed penetration value
of at least 37 dmm at 77ºF particularly since Ruan’s softening point is
outside the claimed range (i.e., less than 181°F). Ans. 4, 5. See, e.g., In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound
basis for believing that the products of the applicant and the prior art are the
same, the applicant has the burden of showing that they are not.”); In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985), and cases cited therein (“even
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Application 12/419,851
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though product-by-process claims are limited by and defined by the process,
determination of patentability is based on the product itself”); In re Best, 562
F.2d 1252, 1255-56 (CCPA 1977); In re Sebek, 465 F.2d 904, 907 (CCPA
1972) (“Where, as here, the prior art disclosure suggests the outer limits of
the range of suitable values, and that the optimum resides within that range,
and where there are indications elsewhere that in fact the optimum should be
sought within that range, the determination of optimum values outside that
range may not be obvious.”).
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the ground of rejection of appealed claims 1, 3-5 and 7 under 35
U.S.C. § 103(a) over Ruan.
The Primary Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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