Kemps, In re, 96-1130

Citation97 F.3d 1427,40 USPQ2d 1309
Decision Date08 October 1996
Docket NumberNo. 96-1130,96-1130
PartiesIn re Andreas G. KEMPS.
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Andrew J. Patch, Young & Thompson, Arlington, VA, argued, for appellant.

Linda Moncys Isacson, Associate Solicitor, Office of the Solicitor, Patent and Trademark Office, U.S. Department of Commerce, Arlington, VA, argued, for appellee. With her on the brief were Nancy C. Linck, Solicitor, Albin F. Drost, Deputy Solicitor, and Kevin Baer, Associate Solicitor.

Before ARCHER, Chief Judge, MAYER, and LOURIE, Circuit Judges.

ARCHER, Chief Judge.

Andreas G. Kemps appeals the decision of the United States Patent and Trademark Office (PTO) Board of Patent Appeals & Interferences (Board), Appeal No. 95-2635, dated September 28, 1995, affirming the examiner's rejection under 35 U.S.C. § 103 (1994) of all remaining claims of the patent application. We affirm.

BACKGROUND

The claimed invention in this application, No. 08/070,359, is a method of removing old asphalt concrete containing a stone fraction using two steps: (1) blowing steam onto the old asphalt concrete in order to soften it and (2) pushing off a thus-softened upper layer without crushing the stone fraction. The method is to be applied to two-layer road surfaces, with the upper layer containing drainage cavities and the lower layer being dense and generally impermeable. The porous upper layer facilitates the steam heating in two ways. First, the porosity affords a greater surface area upon which the steam can condense, allowing greater transfer of the heat generated by condensation of the steam. Second, the pores serve to drain the condensed water from the layer, facilitating the entry of more steam into the upper layer.

Specifically, claim 3 1 of Kemps' application states:

3 A method for removing from a road old asphalt concrete containing a stone fraction, comprising blowing steam onto the old asphalt concrete to soften the The examiner rejected Kemps' claims on the basis of United States Patent No. 4,226,552, issued to Moench (Moench), in view of United States Patent No. 4,793,730, issued to Butch (Butch). The examiner described Moench as teaching the heating of asphalt concrete with a hood heated by gas burners, the breaking up of the heated asphalt with a scarifying element, and the scraping away of the heated asphalt with a blade. Butch, according to the examiner, teaches a similar process in which steam is used to heat the asphalt surface. As a result, the examiner concluded that it would have been obvious to one of ordinary skill in the art to use steam, as per Butch, to heat the pavement before scraping it away, as per Moench.

old asphalt concrete, and then pushing off and removing only a thus-softened upper layer of the old asphalt concrete without crushing of said stone fraction, wherein said road comprises an upper layer of open asphalt concrete having cavities therein which ensure perfect drainage and a lower layer of dense asphalt concrete below said open asphalt concrete, and said old asphalt concrete is removed only from said upper layer.

The Board, in affirming the examiner's determination, noted Butch specifically teaches the use of steam to overcome complications of polymerization and oxidation associated with the use of flame burner units. Moreover, the Board rejected Kemps' contention that the concrete with drainage openings called for in the claim distinguished the claimed invention because, as admitted by the applicant, this type of surface is well-known in the art. One of ordinary skill in the art would have used the combination of Moench and Butch on any surface, including the one disclosed in Kemps' application. The claimed invention, therefore, would have been obvious to one skilled in the art.

DECISION
I.

The sole issue in this appeal is whether the Board erred in holding the claims unpatentable under 35 U.S.C. § 103. The ultimate determination of obviousness is a question of law that we review de novo; the factual inquiries upon which that determination is made, however, are binding on this court unless shown to be clearly erroneous. 2 In re Woodruff, 919 F.2d 1575, 1577, 16 USPQ2d 1934, 1935 (Fed.Cir.1990). Such factual determinations include what a reference teaches and whether a reference teaches toward or away from the claimed invention. In re Bell, 991 F.2d 781, 784, 26 USPQ2d 1529, 1531 (Fed.Cir.1993).

We have reviewed the examiner's findings and are not persuaded that they are clearly erroneous. We further agree with the conclusion that the claimed invention would have been obvious to one skilled in the art.

Kemps argues that one skilled in the art would lack motivation to combine the teachings of Moench and Butch in a manner not only to replace the use of gas burners with steam but also to remove the asphalt concrete without crushing the stone fraction 3 thereof. Kemps contends that, as Moench and Butch respectively use a scarifying element and breaking bars, the stone fraction must necessarily be crushed. By simply pushing away the heated layer, the claimed invention advantageously preserves the particle size distribution.

With respect to the replacement of gas burners with steam, the findings of the examiner and the Board as to the teachings of Moench and Butch as aforementioned are not contested nor are they clearly erroneous. The Board noted that Butch explicitly discusses the problems associated with the earlier gas burning units: the high temperatures associated with the gas burners contribute to additional oxidation and polymerization of the asphalt. These problems, according to the Board, provide the motivation for combining Moench and Butch.

There is no error in the Board's determination that there would be sufficient motivation to replace the gas burners with steam. Although the motivation to combine here differs from that of the applicant, the motivation in the prior art to combine the references does not have to be identical to that of the applicant to establish obviousness. In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed.Cir.1990) (in banc). Further support for the Board's contention is found within Butch itself. Butch makes specific reference to Moench, noting that the high temperatures associated with the Moench process "tend to further degrade the asphaltic material." Butch at col. 2, lines 11-16. Consequently, we find no error in the Board's determination that there is sufficient motivation to combine the two prior art references resulting in the replacement of gas burners with steam.

As to the preservation of the stone fraction, the PTO contends that the retention of the particle size distribution is taught by Moench. Specifically, Moench discloses that the invention provides an apparatus for "heating and breaking up old asphaltic pavement into a loose, aggregate-asphalt mixture that is of approximately the original aggregate size range...." Moench at col. 2, lines 16-19 (emphasis added). Similar statements are found throughout the Moench specification. Moreover, the PTO argues that the presence of the intermediate step in Moench, the use of the scarifying element, does not negate the teaching of removal of asphalt concrete without the crushing of the stone fraction.

We agree with the position of the PTO. Moench explicitly discloses the preservation of the stone fraction size, a contention that Kemps challenges with only the bare assertion that the stone fraction necessarily must be crushed. There is no reason why this assertion must be true. The scarifying element in Moench serves to break apart the asphalt binder, not to crush the stone...

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