University of South Carolina

Patent Trials and Appeals Board

Jan 7, 2022

2021001045 (P.T.A.B. Jan. 7, 2022)

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. 15/674,645 08/11/2017 Dimitris Rizos USC-510 (1191) 6285 22827 7590 01/07/2022 DORITY & MANNING, P.A. POST OFFICE BOX 1449 GREENVILLE, SC 29602-1449 EXAMINER ABU ALI, SHUANGYI ART UNIT PAPER NUMBER 1731 NOTIFICATION DATE DELIVERY MODE 01/07/2022 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): USDOCKETING@DORITY-MANNING.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DIMITRIS RIZOS __________ Appeal 2021-001045 Application 15/674,645 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and SHELDON M. McGEE, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) the final rejection of claims 7-14. Claims 1-4, 6, 15, 16, and 18-24 have been withdrawn from consideration by the Examiner. Claims 5 and 17 have been canceled. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as the University of South Carolina (Appeal Br. 3). Appeal 2021-001045 Application 15/674,645 2 STATEMENT OF THE CASE Appellant’s invention is directed to High Performance Concrete (HPC), which refers to concrete that has been specifically designed to exceed particular characteristics of more typical concretes (Spec. ¶ 3). The characteristics in which HPC can excel can include one or more of strength, early strength, modulus of elasticity, abrasion resistance, low permeability, chemical resistance, temperature resistance, impact resistance, etc. (id.). Claim 7 is illustrative (emphasis added): 7. A structure having an aspect ratio of greater than 1, the structure comprising concrete having a compressive strength of 7 ksi or greater as determined according to ASTM C 39 (AASHTO T 22) and an elastic modulus of 4,300 ksi or less as determined according to ASTM C 469, the concrete comprising a coarse aggregate, the coarse aggregate comprising weathered granite aggregate having a cross-sectional dimension of 0.19 inches or greater. Appeal Br. 20 (Claims App.). Appellant appeals the rejection of claims 7-14 under 35 U.S.C. § 103 as unpatentable over Yang et al. (KR 101440551 B1, published Sept. 16, 2014, and relying on a machine translation, “Yang ’551”), in view of Richards (US 5,609,295, issued Mar. 11, 1997), and further in view of Lee et al. (KR 800000882 B1, published Aug. 30, 1980, and relying on a translation of the abstract, “Lee ’882”) (Final Act. 3-5). FINDINGS OF FACT & ANALYSIS After review of the respective positions provided by Appellant and the Examiner, we REVERSE the Examiner’s rejection of claims 7-14. Our reasons follow. Appeal 2021-001045 Application 15/674,645 3 Appellant’s arguments for reversal of the Examiner’s rejection of claims 7-14 focus on limitations recited in the independent claim 7 (see Appeal Br. 6-19; Reply Br. 1-5). We select claim 7 as representative of claims 8-14. 37 C.F.R. § 41.37(c)(1)(iv). With respect to claim 7, the Examiner’s findings and conclusions regarding Yang ’551, Richards, and Lee ’882 are located on pages 3-5 of the Final Office Action. The Examiner finds that Yang ’551’s concrete composition for a pre- stressed concrete (PC) tie teaches each limitation of the structure recited in claim 7, with the exception that Yang ’551 does not teach: (i) the aggregate size and (ii) the use of weathered granite (Final Act. 3-4). The Examiner finds that Richards’ aggregate material for use in a cement composition for a concrete tie teaches or suggests limitation (i) missing from Yang ’551 (Final Act. 3). The Examiner determines that it would have been obvious to one of ordinary skill in the art at the time of the invention “to use aggregate with the claimed size” in Yang ’551’s concrete composition because Richards teaches that the aggregate size in the range of less than about 1.27 cm and greater than about 0.32 cm provides a beneficial effect to the rail tie (id. at 3-4). The Examiner finds that Lee ’882’s weathered granite teaches or suggests limitation (ii) missing from Yang ’551 (Final Act. 4). The Examiner determines that it would have been obvious to one of ordinary skill in the art at the time of the invention “to use weathered granite motivated by the fact that [Lee] ’882 discloses using weathered granite in cement composition[s]” because “the compressive strength [is] higher than that containing river sand” (id.). Appeal 2021-001045 Application 15/674,645 4 Appellant argues, inter alia, that Yang ’551 requires certain amounts of coarse aggregate and fine aggregate along with a particular particle size distribution (Appeal Br. 15). Appellant contrasts the aggregate requirements of Yang ’551 with Richards’ aggregate, which “includes an unknown amount of fine aggregate with limited information of the particle size distribution of any fine aggregate included in the total aggregate” (id.). Appellant argues that a person having ordinary skill in the art would not have the information necessary “as to how or whether to modify the fine aggregate component of [Yang] ’551 so as to meet the particle size distribution and add-in amount of fine aggregate as required by [Yang] ’551” (id.). Appellant argues that Richards’ aggregate requires that “it must be in an irregular form with multi-faceted faces and upon combination with [a plastic] binder, opposed pieces must have at least partial contact” (Appeal Br. 15; see Richards Abstract (disclosing that “the binding constituent,” which “comprises a plastic material, . . . holds the aggregate material together in this interlocked fashion, so as to provide for a strong railway tie.”)). Appellant argues that the Examiner provides a “mere conclusory statement . . . as rationale for the selection [of Richards’ aggregate], i.e., ‘to provide beneficial effect to the rail tie’” (Appeal Br. 16). Appellant also attacks the Examiner’s rationale for combining the teachings of Yang ’551 and Lee ’882 (Appeal Br. 17-18). Appellant argues that Yang ’551’s “concrete composition must have a compressive strength of at least 35 MPa and a 28-day compressive strength of 50 MPa” (id. at 17 (citing Yang ’551 ¶ 3)). Appellant contends that Yang ’551’s mere statement “that use of the weathered granite fine aggregate in place of river Appeal 2021-001045 Application 15/674,645 5 sand increased the compressive strength of some undefined cement mortar” is unsupported by any scientific analysis or evidence (id. at 17-18). Appellant’s arguments are persuasive. The Examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (discussing the initial burden is on the PTO to set forth the basis for any rejection so as to put the patent applicant on notice of the reasons why the applicant is not entitled to a patent on the claim scope that they seek). The Examiner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis.”). When the references cited by the Examiner fail to establish a prima facie case of obviousness, the rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). Here, the rationale for combining Yang ’551, Richards, and Lee ’882 fails to provide the requisite notice and “articulated reasoning with some rational underpinning.” See Piasecki, 745 F.2d at 1472; Kahn, 441 F.3d at 988. The Examiner has not provided Appellant the requisite notice because, inter alia, it is unclear whether the proposed modification of Yang ’551’s concrete requires: (i) substitution of an unspecified amount of the concrete composition of Yang ’551’s aggregate (see Yang ’551 ¶ 6) for an Appeal 2021-001045 Application 15/674,645 6 unspecified amount of weathered granite aggregate having the requisite size (Appeal Br. 15) or (ii) an addition of this weathered granite aggregate. Furthermore, the Examiner’s conclusion that Richards’ aggregate size would have provided beneficial effect to a rail tie lacks a rational underpinning (see Richards Abstract (disclosing that it is the plastic binding constituent and the aggregate material that “provide[s] for a strong railway tie.”)). Contrary to the Examiner’s findings (Ans. 21), Richards’ polymeric binding constituent is not described as an equivalent to Yang ’551’s cement binding agent (see Richards, col. 2, ll. 28-29 (disclosing that “[c]oncrete railway ties do have problems associated with them . . . and can crack or spall.”)). The Examiner also fails to elaborate or provide additional findings as to: (i) the degree Lee ’882’s weathered granite increases compressive strength as compared to cement containing river sand and (ii) how such an increase relates to Yang ’551’s compressive strength of at least 35 MPa and a 28-day compressive strength of 50 MPa (Ans. 21; Yang ’551 ¶ 3). Without such findings, the Examiner has not provided the necessary articulated reasoning in concluding that it would have been obvious to combine the teachings of Yang ’551 and Lee ’882. On this record, we reverse the Examiner’s § 103 rejection over Yang ’551, in view of Richards, and further in view of Lee ’882. Appeal 2021-001045 Application 15/674,645 7 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 7-14 103 Yang ’551, Richards, Lee ’882 7-14 REVERSED