Scott Hacker et al.

Patent Trials and Appeals Board

Jul 31, 2019

14096873 - (D) (P.T.A.B. Jul. 31, 2019)

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.
14/096,873 12/04/2013 Scott Hacker H0038501-4000 (070.0079) 3813
89955 7590 07/31/2019
HONEYWELL/LKGLOBAL
Patent Services
115 Tabor Road
P.O.Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
HARTMANN, GARY S
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
07/31/2019 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):
DL-PMT-SM-IP@Honeywell.com
honeywell@lkglobal.com
patentservices-us@honeywell.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SCOTT HACKER, CYNTHIA KOSTELANSKY,
and YONGHONG RUAN
____________

Appeal 2017-0117981
Application 14/096,8732
Technology Center 3600
____________

Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1–10. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Our decision references the Appeal Brief (“Appeal Br.,” filed June 13,
2017), the Reply Brief (“Reply Br.,” filed Sept. 27, 2017), the Examiner’s
Answer (“Ans.,” mailed Sept. 12, 2017), and the Final Office Action (“Final
Act.,” mailed Apr. 7, 2017).
2 According to Appellants, the real party in interest is Honeywell
International Inc. Appeal Br. 3.
Appeal 2017-011798
Application 14/096,873

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BACKGROUND
The Specification discloses that “[t]he technical field generally relates
to methods for forming asphalt paving materials, and more particularly
relates to methods for reducing asphalt pavement thickness, increasing the
total number of aggregate-to-aggregate contact points of asphalt paving
materials, and improving low temperature cracking performance of asphalt
paving material.” Spec. ¶ 1.
ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. A method for producing thin asphalt pavement, the
method comprising the steps of:
combining a base asphalt, an oxidized polyolefin, and an
aggregate to form an asphalt paving material;
establishing, at a predetermined thickness, a high
temperature rutting measurement of a comparative compacted
asphalt paving material comprising the aggregate and the base
asphalt with no oxidized polyolefin; and
depositing a layer of the asphalt paving material on a
substrate layer and compacting the asphalt paving material to a
thickness that is less than the predetermined thickness of the
comparative compacted asphalt paving material while achieving
the same amount or less of high temperature rutting than the high
temperature rutting measurement of the comparative compacted
asphalt paving material.
Appeal Br., Claims App.
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REJECTION
The Examiner rejects claims 1–10 under 35 U.S.C. § 103(a) as
unpatentable over Stuart3 in view of Yi.4
DISCUSSION
We are persuaded of error in the rejection of independent claim 1
because the Examiner has not established that the specific method steps
claimed are taught or otherwise rendered obvious by the art of record.
With respect to claim 1, the Examiner first finds that Stuart discloses
combining base asphalt, oxidize polyolefin, and aggregate to form asphalt
material, as claimed. Final Act. 2 (citing Stuart col. 6, ll. 29–36). The
Examiner also takes Official Notice “that it is standard pavement
construction procedure to deposit and compact asphaltic material in order to
make asphaltic paving material.” Final Act. 2. From this, the Examiner
determines that it would have been obvious “to have deposited the material
on a substrate and compact the material in order to obtain a pavement
surface, as is standard pavement making procedure and a purpose of the
composition of Stuart.” Id. Next, the Examiner finds that Stuart teaches that
polyolefins improve the asphalt material’s resistance to rutting as compared
to material without added polyolefins. Id. (citing Stuart col. 1, l. 52–col. 2,
l. 5).
However, the Examiner acknowledges that Stuart does not provide a
teaching regarding the thickness of an asphalt material with an additive as
compared to the material without the additive. Id. The Examiner relies on

3 Stuart, Jr. et al., US 7,144,933 B2, iss. Dec. 5, 2006.
4 Yi, US 8,470,437 B2, iss. June 25, 2013.
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Yi regarding this deficiency. Specifically, the Examiner finds that Yi
teaches that when using a stronger roadway material “the thickness can be
reduced compared to a comparatively weaker unmodified roadway material
thickness.” Id. (citing Yi col. 6, ll. 42–45). The Examiner concludes:
Because Stuart teaches that pavement is stronger with the
oxidized polyolefin, and because Yi teaches that a stronger
material can be used to make a thinner pavement, it would have
been obvious to one of ordinary skill at the time of the invention
to have used Stuart to make a thinner pavement than a
comparative non-modified pavement in order to reduce costs, as
taught by Yi.
Id. at 2–3.
Even if we were to agree that the Examiner’s findings and conclusions
are correct and supported on the record before us, the Examiner has failed to
establish adequately that these findings and conclusions show that the
method claimed would have been obvious. At best, the Examiner has
established that one of ordinary skill in the art would have understood that
using Stuart’s asphalt material including a polyolefin additive results in a
stronger pavement than asphalt material without polyolefin and that
thickness of a road surface generally can be reduced by using a stronger
material. The Examiner appears to equate the capability of using the
material disclosed in Stuart to create a thin asphalt payment with the actual
method of creating an asphalt pavement claimed. To wit, the Examiner
finds that “[p]atentability is based upon materials; not for the reasons of
mixing these same materials.” Final Act. 3.
However, the claim requires more than the specific materials
disclosed in Stuart or the mere capability of using those materials in a thin
asphalt material. Rather, the claim requires specific steps for creating a thin
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asphalt material, and the rejection does not adequately address those steps.
For example, the Examiner does not address the specific requirement that
the thickness of the asphalt paving material with oxidized polyolefin is
determined based on providing a pavement with the same amount or less of
high temperature rutting when compared to the paving material that does not
include oxidized polyolefin.
On this point, we note that the Examiner has not pointed to any
specific teaching in Stuart that shows how a polyolefin additive affects
rutting. Regarding rutting, Stuart only discloses that permanent
deformation, such as rutting, is generally a problem with hot mix asphalts
and that the stiffness of the asphalt can be increased using polymers to
reduce the probability of rutting. Stuart col. 1, ll. 52–65. Although Stuart
goes on to disclose that oxidized polyolefins are one of the group of
additives used in Stuart’s material, the Examiner does not cite to any portion
of Stuart that specifically addresses how the oxidized polyolefins used affect
rutting in the final asphalt product. See Stuart col. 6, ll. 9–21.
Furthermore, the Examiner does not establish using the rutting
measurement as a basis for what the thickness of the modified asphalt should
be, as required by the claim. The claim requires depositing and compacting
combined asphalt material with added oxidized polyolefin to a thickness that
achieves the same rutting measurement as pavement without added oxidized
polyolefin. Thus, the claim requires more than a finding that the art includes
the same materials and suggests making a thinner pavement – it requires
making a pavement that matches or exceeds this particular quality of the
unmodified pavement. The Examiner has not established that it would have
been obvious to create a thinner pavement in this manner, and as discussed,
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the mere capability of creating a thinner road with this material is not
sufficient to meet the method claimed.
Based on the foregoing, we do not sustain the rejection of claim 1.
For the same reasons, we do not sustain the rejection of dependent claims 2–
10.
CONCLUSION
We REVERSE the rejection of claims 1–10.

REVERSED