Appeal 2006-1080
Application 10/109,343
ll. 41-42). The Examiner fails to identify any teaching in Jackson or offer
any explanation to establish that one of ordinary skill in the art would have
selected a bituminous composition having all of the claimed features.
Likewise, the Examiner fails to provide a convincing explanation as to why
one of ordinary skill in the art would have been motivated to apply the
bituminous coating in a manner which achieved at least 10% penetration into
the board.4 The Examiner does not provide an evidentiary basis to support
his finding that the term “penetration value,” when used in the context of
coal tar pitch, provides a measure of the amount of penetration of the coating
into the substrate.5 See In re Ahlert, 424 F.2d 1088, 1091,
4 The phrase “penetration into the substrate” as used in the present
claims defines the portion of pitch which actually soaks into the wood or
porous material and binds with it. See Specification 8, ll. 40-41 (“The most
significant constraint is applying the coating in such a way that a significant
portion of the pitch actually soaks into the wood or other porous material
and binds with it.”). “The person of ordinary skill in the art is deemed to
read the claim term not only in the context of the particular claim in which
the disputed term appears, but in the context of the entire patent, including
the specification.” See Phillips v. AWH Corp., 415 F.3d 1303, 1313,
75 U.S.P.Q.2d 1321, 1326 (Fed. Cir. 2005) (en banc), cert. denied,
126 S.Ct. 1332 (2006).
5 The term “penetration value” appears to refer to a measure of the
depth of penetration of a needle into an asphalt sample. See, e.g., ASTM D
5, “Standard Test Method for Penetration of Bituminous Materials” ASTM
International, June 1, 2006. See Jackson, p. 2, ll. 41-42 (“Bituminous
compositions can be formulated so as to retain a permanently tacky surface
on drying by including in the composition bitumens having a low
penetration value.”).
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