Ex Parte Mohmeyer et al

Patent Trial and Appeal Board

Apr 26, 2017

12677545 (P.T.A.B. Apr. 26, 2017)

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.
12/677,545 03/11/2010 Nils Mohmeyer 355057US0PCT 1475
22850 7590 04/28/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
LI, AIQUN
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
04/28/2017 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):
patentdocket @ oblon. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NILS MOHMEYER, OLIVER REESE,
ANDREA EISENHARDT, MARCUS LEBERFINGER, and
HEINRICH MOHMEYER
Appeal 2015-004915
Application 12/677,545
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner rejecting claims 1, 2, 4, 5, and 7—22 of Application
12/677,545. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing
was held on April 18, 2017. We affirm.
BACKGROUND
The subject matter on appeal relates to a process for producing a top
layer, such as for roads, by producing a mixture comprising mineral material
1 Appellants identify the real party in interest as BASF SE. App. Br. 1.
Appeal 2015-004915
Application 12/677,545
and a polyurethane reaction mixture, applying it to a substrate material, and
compacting and hardening it by applying a pressure of at least 5 N/cm2.
Spec. 1. Claim 1, the sole independent claim on appeal, is illustrative of the
subject matter:
1. A process for producing a top layer, the process comprising
applying a top layer mixture to a substrate material, and compacting
and hardening the top layer mixture by applying a pressure of at least
5 N/cm2
wherein:
the top layer mixture comprises a mineral material and a
polyurethane reaction mixture;
the process is carried out in the absence of solvents;
the polyurethane reaction mixture is obtained by mixing
a) an isocyanate,
b) a compound having at least two hydrogen atoms
which is reactive toward isocyanate, and
optionally
c) at least one of a chain extender, a crosslinking
agent, or both
d) a catalyst, and
e) at least one additive;
the compound b), having at least two hydrogen atoms which is
reactive toward isocyanate, comprises a hydroxy-functional
compound comprising at least one hydrophobic group;
the substrate material is a material employed in the construction
of bituminous roads; the top layer is suitable for roads, tracks, and
other areas used by traffic;
neither the polyurethane reaction mixture nor the top layer
mixture comprise a blowing agent; and
a proportion of the polyurethane reaction mixture in the top
layer is from 1 to 9% by weight, based on the total weight of the top
layer mixture.
2
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Application 12/677,545
THE REJECTIONS
The Examiner maintains the following rejections on appeal:
1. Claims 1, 4, 5, 7, 9—13, 15—18, 21, and 22 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Petrovic2
and Hartenburg;3
2. Claims 1, 2, 4, 5, 7—12, and 14—22 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Leitner4 and
Hartenburg; and
3. Claims 1, 2, 4, 5, and 7—22 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.5
DISCUSSION
Rejection 1
Appellants present argument directed to sole independent claim 1 and
do not present argument for separate patentability of any dependent claims,
except for claims 16—17. App. Br. 3. Therefore, we limit our discussion to
claims 1 and 16; the dependent claims stand or fall with claim 1 or 16.
37 C.F.R. § 41.37(c)(l)(iv) (2012).
2 Petrovic et al., US 2003/0090016 Al, published May 15, 2003
(“Petrovic”).
3 Hartenburg, US 2007/0223998 Al, published Sept. 27, 2007
(“Hartenburg”).
4 Leitner et al., DE 102 41 293 Al, published Mar. 18, 2004 (“Leitner”).
Citations herein are to the machine translation of Leitner relied upon by the
Examiner in making the rejection.
5 The Examiner designated this rejection as a new ground in the Answer.
Ans. 8—9. Appellants responded in the Reply Brief pursuant to 37 C.F.R.
§ 41.37(c)(l)(iv).
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Application 12/677,545
The Examiner finds that Petrovic teaches a method of pouring a
polymer concrete road with soy-based polyurethane concrete comprising an
aggregate composition and 10-20 wt% of polyurethane, which abuts the
claimed range of 1—9 wt% polyurethane. Ans. 2, citing Petrovic H 21, 22,
29. The Examiner acknowledges that Petrovic does not teach compacting
the polyurethane/aggregate mixture by applying a pressure of at least 5
N/cm2; the Examiner determines, however, that it would have been obvious
to a person of ordinary skill in the art to use Hartenburg’s compacting
technique applying pressure of 10—50 N/cm2 in Petrovic’s production
process, because it would have involved application of a known technique to
a known method to yield a predictable result of intensive bonding of the
layers. Ans. 3—4, citing Hartenburg 135.
Regarding claim 16, the Examiner determines that the combination of
Petrovic and Hartenburg teaches the same composition produced by the
same process as claimed, and therefore absent evidence to the contrary, a
person of ordinary skill in the art would have a reasonable basis to expect
that the composition of the Petrovic/Hartenburg combination would
intrinsically have the same load-bearing properties (i.e., “suitable for
construction classes V to I”) as recited in claim 16. Ans. 4, citing inter alia
In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Appellants argue that “a highly compacted foam free structure having
from 1 to 9% by weight of polyurethane is important to the present
invention” but based on Petrovic’s teaching, a person of ordinary skill in the
art would not have attempted to use less than 15 wt% polyurethane resin to
produce a top layer suitable for roads and tracks. App. Br. 4—5, citing Spec.
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Application 12/677,545
p. 10,11. 28—34; Mohmeyer Decl.61 8. Specifically, Appellants argue that
Petrovic does not contemplate a highly compacted polymer concrete
containing less than 10 wt% polyurethane resin, explicitly discourages the
use of less than 15 wt% polyurethane due to coating issues, and teaches that
at least 15 wt% polyurethane is necessary for high load applications. App.
Br. 4—5, citing Petrovic Tflf 19, 154—56. Appellants further argue that
Hartenburg’s compacting pressure is applied to a sublayer, not a top layer as
recited in claim 1, and a person of ordinary skill in the art would not look to
Hartenburg to obtain guidance to harden a top layer mixture. App. Br. 6.
Appellants’ arguments are not persuasive of reversible error. A
preponderance of the evidence supports the Examiner’s determination that a
person of ordinary skill would have been led by Petrovic’s teaching of a 10-
20 wt% polyurethane to the claimed method using 1—9 wt% polyurethane,
particularly because Appellants have not pointed to any evidence that the
claimed range is critical. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990) (where the difference between the claimed invention and the prior art
is some range, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range). Further, Appellants’ argument that Petrovic
discourages use of less than 15 wt% polyurethane disregards the Examiner’s
finding that Petrovic expressly states that “[sufficient strength may be found
in many instances where the resin content ranges from 10% to 15% of the
polymer concrete composition by weight” and teaches an embodiment
having resin content ranging from 10—15 wt% of the concrete composition.
Ans. 9—10, citing Petrovic Tfl[ 19, 21—22. With regard to Hartenburg,
6 Declaration of Nils Mohmeyer, dated March 20, 2014.
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Appellants provide no evidence that Hartenburg’s compacting pressure
would not be applicable to Petrovic’s process. Accordingly, we affirm the
rejection of claims 1, 4, 5, 7, 9—13, 15—18, 21, and 22 as unpatentable under
35 U.S.C. § 103(a) for the reasons given above and stated by the Examiner.
Rejection 2
The Examiner finds that Leitner teaches a process comprising
applying a compact polyurethane mixture onto the mineral surface of an
embankment, wherein the mineral surface includes stones, rocks, gravel, and
crushed granite. Ans. 5, citing Leitner || 9, 12—13, 33, 38, 39. The
Examiner further finds that Leitner’s Embodiment 1 describes a top layer
mixture comprising granite and a polyurethane mixture, which the Examiner
calculates to contain 1.1 wt% of polyurethane mixture based on the density
of granite and the volume of the mold into which the top layer mixture is
poured. Ans. 6, citing Leitner || 43—47. The Examiner determines it would
have been obvious for a person of ordinary skill in the art to use
Hartenburg’s compacting pressure in Leitner’s process for the same reasons
as discussed for Rejection 1, above.
Appellants argue that the Examiner’s calculation is erroneous because
it assumes complete filling of the mold by the granite gravel, even though a
person of ordinary skill would expect significant open space between the
rocks. App. Br. 8. Appellants further argue that it would not have been
obvious to a person of ordinary skill that Hartenburg’s tamping step would
have improved Leitner’s process, because Hartenburg’s gravel is between 2
and 5 mm and significantly smaller than Leitner’s gravel, and thus more
readily compactable. Id. at 9, citing Hartenburg 144.
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Having considered Appellants’ arguments and reviewed all record
evidence, we are not persuaded of reversible error in the Examiner’s
determination of obviousness. As the Examiner notes (Ans. 11), even
assuming the mold were only half full of crushed granite, the amount of
polyurethane would still be well within the claimed range. Appellants do
not dispute this calculation but respond that Leitner does not disclose the
grain size of the crushed granite or depth and fill content of the mold (Reply
Br. 4), even though the Examiner’s calculation does account for those
variations. Accordingly, Appellants’ argument is not persuasive. With
regard to the combination of Leitner and Hartenburg, Appellants offer no
evidence that Hartenburg’s tamping step would be unable to compact
Leitner’s granite gravel. The Examiner’s determination that it would have
been within the knowledge of a person of ordinary skill in the art at the time
of the invention to apply at least the pressure of Hartenburg’s step is
reasonable. See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton”).
Accordingly, we affirm the rejection of claims 1, 2, 4, 5, 7—12, and
14—22 as unpatentable under 35 U.S.C. § 103(a) for the reasons given above
and stated by the Examiner.
Rejection 3
The Examiner finds that the appealed claims fail to comply with the
written description requirement under 35 U.S.C. § 112, first paragraph
because the limitation “neither the polyurethane reaction mixture nor the top
layer mixture comprise a blowing agent,” which Appellants added during
prosecution, purportedly does not have support in the Specification. Ans. 9.
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Appellants argue that the originally filed Specification supports the
limitation, especially in the following statement (Spec. p. 8,11. 39—40):
A polyurethane is termed compact polyurethane if it is
substantially free from gas inclusions.
Reply Br. 1. Appellants further argue that a person of ordinary skill in the
art would have understood that a blowing agent would not be added to a
mixture where a compact structure free from gas inclusions is sought. Id. at
2.
We are persuaded that the Examiner harmfully erred in finding that the
appealed claims fail to comply with the written description requirement. The
Examiner has not met the burden of presenting evidence or reasons why the
Specification would not have conveyed to a person of ordinary skill that the
inventors had possession of a mixture which did not comprise a blowing
agent. See In re Marzocchi, 439 F.2d 220, 224 (CCPA 1971). It has been
established that the claimed subject matter need not be described in haec
verba in the specification in order for the specification to satisfy the
description requirement. In re Smith, 481 F.2d 910, 914 (CCPA 1973).
The Examiner has not responded to Appellants’ citation of page 8 of
the Specification, or directed us to any evidence that a person of ordinary
skill in the art would have understood that the inventors did not have
possession of a mixture which did not comprise a blowing agent.
Accordingly, we reverse the § 112 rejection.
CONCLUSION
We affirm the rejections of claims 1, 2, 4, 5, and 7—22 as unpatentable
under 35 U.S.C. § 103(a).
We reverse the rejection of claims 1, 2, 4, 5, and 7—22 under
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35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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