Ex Parte Segars et al

Patent Trial and Appeal Board

Nov 29, 2018

12776844 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/776,844 05/10/2010
23859 7590 12/03/2018
Ballard Spahr LLP
SUITE 1000
999 PEACHTREE STREET
ATLANTA, GA 30309-3915
FIRST NAMED INVENTOR
Jeffery Segars
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
03269.0143U2 3176
EXAMINER
MELLOTT, JAMES M
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
12/03/2018 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):
USpatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFERY SEGARS,
JEFFREY J. WRIGHT, and JAMES JARRETT
Appeal 2018-000119 1
Application 12/776,844
Technology Center 1700
Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI,
and SHELDON M. McGEE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 2, 4--12, 14--20, 22-29, 31-35, 37-56, and 58---61. 2 We have
jurisdiction under 35 U.S.C. § 6.
1 Columbia Insurance Company is identified as the real party in interest.
(App. Br. 2).
2 Claim 57 has been withdrawn from consideration. (Final Act. 1 ).
Appeal 2018-000119
Application 12/776,844
Appellants' invention is generally directed to a method for reclaiming
inorganic filler from waste carpeting (Spec. ,r 2). Claim 1 illustrates the
subject matter on appeal and is reproduced below:
1. A method for reclaiming inorganic filler from waste
carpeting, comprising the steps:
providing a waste carpeting composition comprising an
inorganic filler component and an organic component;
heat treating the waste carpeting composition under conditions
effective to separate at least a portion of the organic component
from the waste carpeting composition and to provide a
reclaimed inorganic filler composition at least substantially free
of the organic component; and
wherein the heat treating is effective to form calcium oxide and
wherein the method further comprises reforming calcium
carbonate from the formed calcium oxide.
The Examiner maintains the following rejections from the final office
action for our review:
(1) Claims 1, 2, 5, 7-10, and 18 rejected as obvious under 35 U.S.C. §
I03(a) over U.S. Patent Application Publication No. 2009/0300982
Al to Mauldin et al. (hereinafter, "Mauldin") in view of U.S. Patent
No. 6,830,615 B2 to Lyons et al. (hereinafter, "Lyons");
(2) Claim 4 rejected as obvious under 35 U.S.C. § I03(a) over Mauldin in
view of Lyons and in further view of U.S. Patent Application
Publication No. 2002/0134486 Al to Brumbelow et al. (hereafter
"Brumbelow");
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Application 12/776,844
(3) Claims 6, 14, and 17 rejected as obvious under 35 U.S.C. § I03(a) over
Mauldin in view of Lyons and in further view of U.S. Patent
Application Publication No. 2010/0044480 Al to Lindsey et al.
(hereafter "Lindsey");
(4) Claims 11 and 12 rejected as obvious under 35 U.S.C. § I03(a) over
Mauldin in view of Lyons and in further view of U.S. Patent
Application Publication No. 2006/0053791 Al to Prentice, III.
(hereafter "Prentice");
(5) Claims 15 and 16 rejected as obvious under 35 U.S.C. § I03(a) over the
combination of Mauldin, Lyons, and Lindsey, and in further view of
U.S. Patent No. 5,535,945 to Sferrazza et al. (hereafter "Sferrazza");
(6) Claims 58 and 59 rejected as obvious under 35 U.S.C. § I03(a) over
Mauldin in view of Lyons and in further view of U.S. Patent
4,508,771 to Peoples Jr. et al. (hereafter "Peoples");
(7) Claims 1, 2, 4--10, 14, 17, and 18 rejected as obvious under 35 U.S.C. §
I03(a) over Lindsey in view of Mauldin and Lyons;
(8) Claims 11 and 12 rejected as obvious under 35 U.S.C. § I03(a) over
Lindsey in view of Mauldin and Lyons and in further view of
Prentice;
(9) Claims 15 and 16 rejected as obvious under 35 U.S.C. § I03(a) over
Lindsey in view of Mauldin and Lyons, and in further view of
Sferrazza;
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Application 12/776,844
(10) Claims 58 and 59 rejected as obvious under 35 U.S.C. § 103(a) over
Lindsey in view of Mauldin and Lyons, and in further view of
Peoples;
(11) Claims 19, 20, 22-27, 31, 34, 35, and 37-56 rejected as obvious under
35 U.S.C. § 103(a) over Brumbelow in view of Lindsey, Mauldin, and
Lyons;
(12) Claims 28 and 29 rejected as obvious under 35 U.S.C. § 103(a) over
Brumbelow in view of Lindsey, Mauldin, and Lyons, and in further
view of Prentice;
(13) Claims 32 and 33 rejected as obvious under 35 U.S.C. § 103(a) over
Brumbelow in view of Lindsey, Mauldin, and Lyons, and in further
view of Sferrazza; and
(14) Claims 60 and 61 rejected as obvious under 35 U.S.C. § 103(a) over
Brumbelow in view of Lindsey, Mauldin, and Lyons, and in further
view of Peoples.
OPINION
Appellants' arguments are directed to the combination of Mauldin
and Lyons and independent claim 1. Appellants do not provide substantive
separate arguments addressing the claims 2, 4--12, 14--20, 22-29, 31-35, 37-
56, and 58---61. We limit our discussion to independent claim 1 and the
combination of Mauldin and Lyons as argued by Appellants. (See generally
App. Br.).
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the prior art
rejections of claims 1, 2, 4--12, 14--20, 22-29, 31-35, 37-56, and 58---61 for
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Application 12/776,844
the reasons set forth in the Answer to the Appeal Brief and Final Office
Action appealed from, which we adopt as our own. We highlight and
address specific findings and arguments for emphasis as follows.
The Examiner finds Mauldin discloses a method for reclaiming
inorganic filler ( calcium carbonate) from waste carpeting and differs from
the claimed invention because Mauldin does not explicitly state the heat
treating step is effective to form calcium oxide, and the method of further
reforming calcium carbonate from the formed calcium oxide. (Final Act. 4 ).
The Examiner cites Lyons for establishing that it was known to persons of
ordinary skill in the art that the preparation of calcium carbonate filler from
waste effluent which includes a heat treatment step that decomposes calcium
carbonate to calcium oxide, and the subsequent use of a termination heat
treating step to convert the calcium oxide back to calcium carbonate. (Final
Act. 4).
Appellants argue the Examiner has relied upon impermissible
hindsight to formulate the obviousness rejection; the Examiner failed to
properly articulate motivation to combine the teachings of Mauldin and
Lyons; and Mauldin teaches the process of Lyons can be avoided and
therefore teaches away from their combination. (App. Br. 6-11 ).
Appellants argue Mauldin discloses a process that effectively
produces the desired result of a calcium carbonate filler without the need for
an additional carbonation step, one of ordinary skill in the art would not
have been motivated to tum to Lyons for a process that is not only more
expensive but also requires additional steps to achieve the desired product.
(App. Br. 6). Appellants also argue Mauldin (i-f 10) explicitly states that the
decomposition of calcium carbonate is not desirable and that the heat
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Application 12/776,844
treatment must be at temperatures low enough to avoid this decomposition.
(App. Br. 6).
These arguments lacks persuasive merit. Mauldin specifically states:
a free-flowing material predominantly composed of calcium
carbonate and having a low Volatile Organic Compounds
(VOCs) content can be produced from the backing component
of collected waste carpet through heat treatment at temperatures
low enough to avoid substantial decomposition of the calcium
carbonate present in the carpet backing.
(Mauldin ,r 10, emphasis added).
In other words, Mauldin recognizes that there is some decomposition
of the calcium carbonate that occurs due to the heat treatment. A person of
ordinary skill in the art that desired reversal of the decomposed calcium
carbonate would have looked to carbonation processes such as described by
Lyons to reformulate the lost calcium carbonate. A person of ordinary skill
in the art would have recognized that the treating process of Lyons would
have been a predictable method of recovering calcium carbonate.
Appellants argue the economic feasibility as well as the additional
step of carbonation makes the Lyons process more complicated and less
efficient than the Mauldin process. (App. Br. 7-8). The economic
feasibility and complexity resulting from the additional steps would not have
detracted a person of ordinary skill in the art from utilizing known processes
for achieving a desired result. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006) ("a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine"); Winner Int 'l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating benefit
comes at the expense of another benefit, however, should not nullify its use
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Application 12/776,844
as a basis to modify the disclosure of one reference with the teachings of
another. Instead, the benefits, both lost and gained, should be weighed
against one another.").
A person of ordinary skill in the art would have recognized the
process of Lyons would have been suitable for a combination with the
process of Mauldin to reclaim the calcium carbonate from carpet waste that
was converted to calcium oxide, recognizing and accepting the known
economic disadvantages. See Orthopedic Equipment Company, Inc. et al. v.
United States, 702 F.2d 1005, 1013 (1983) (explaining that "the fact that the
two disclosed apparatus would not be combined by businessmen for
economic reasons is not the same as saying that it could not be done because
skilled persons in the art felt that there was some technological
incompatibility that prevented their combination. Only the latter fact is
telling on the issue of nonobviousness."); In re Farrenkopf, 713 F.2d 714,
718 (Fed. Cir. 1983) ("additional expense associated with the addition of
inhibitors would not discourage one of ordinary skill in the art").
Appellants have not established that the Examiner's rejection was
premised upon hindsight. The present record establishes that carbonation
techniques for converting calcium oxide to calcium carbonate was known by
persons of ordinary skill in the art. A person of ordinary skill in the art,
using no more than ordinary creativity would have been led to incorporate
the carbonation process, such as described by Lyons, into the process of
Mauldin for the purpose of converting any formed calcium oxide to calcium
carbonate. KSRint'l. Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (In
making an obviousness determination one "can take account of the
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inferences and creative steps that a person of ordinary skill in the art would
emp 1 oy").
For the foregoing reasons and those presented by the Examiner, we
sustain the appealed rejections.
DECISION
The appealed prior art rejections of claims 1, 2, 4--12, 14--20, 22-29,
31-35, 37-56, and 58-61 under 35 U.S.C. § 103(a) are affirmed.
TIME PERIOD
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 ).
AFFIRMED
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