Ex Parte Egan

Patent Trial and Appeal Board

Sep 29, 2014

11440843 (P.T.A.B. Sep. 29, 2014)

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.
11/440,843 05/25/2006 William F. Egan COC.SNR.P0554 7713
23575 7590 09/29/2014
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
EXAMINER
BUCKLE JR, JAMES J
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
09/29/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILLIAM F. EGAN
____________________

Appeal 2012-002844
Application 11/440,8431
Technology Center 3600
____________________

Before EDWARD A. BROWN, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1–28 under 35 U.S.C. § 103(a) as being unpatentable
over Irving (US 5,826,388, iss. Oct. 27, 1998) and Van Wagoner
(US 4,651,494, iss. Mar. 24, 1987). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 According to Appellant, the real party in interest is Construction Research
& Technology GmbH, a subsidiary of BASF SE. Appeal Br. 3.
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THE INVENTION
Appellant’s invention relates to an “exterior finishing system for use
in the building and construction industry.” Spec. 1, ll. 11–12. Claims 1 and
16 are the independent claims on appeal. Claim 1, reproduced below, is
illustrative of the claimed subject matter.
1. An exterior finish system for building walls
comprising:
a weather barrier;
a polymeric, raspable, moisture drainable
insulation layer having a plurality of openings
applied directly to a surface of the weather barrier;
and
an above-grade aesthetic exterior finish
layer applied to a surface of said insulation layer,
wherein the exterior finish system is vertically
disposed on a building wall.
ANALYSIS
We initially note that Appellant argues independent claims 1 and 16
together and does not present any separate arguments for the patentability of
dependent claims 2–15 and 17–28. Appeal Br. 15. As such, we treat
claims 1–28 as argued as a single group and select independent claim 1 as
the representative claim in accordance with 37 C.F.R. § 41.37(c)(1)(vii)
(2011).
The Examiner finds that Irving discloses all limitations of claim 1
except for “the polymeric insulation layers being moisture drainable, having
a plurality of openings and being applied directly to a surface of the weather
resistant barrier.” Answer 4–5. The Examiner finds that Van Wagoner
discloses using, in the building and construction industry, a moisture
drainable insulation layer (insulating drainage course 42) having a plurality
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of openings (voids 52) to permit water to migrate. Id. at 5. The Examiner
concludes that it would have been obvious to modify Irving’s polymeric
insulation layer “with the polymeric insulation layer as taught by Van
Wagoner to have an exterior insulation and finish system that has an
effective drainage system.” Id. The Examiner further concludes that the
“drainage insulation layer taught by Van Wagoner will eliminate the need
for the furring strips because the drainage channel will now be in the
insulation layer itself” such that the “combination of a moisture drainable
insulation layer affixed to an insulation board as taught by Van Wagoner
would have been obvious to one having ordinary skill in the art.” Id.
Appellant argues that the rejection is based on impermissible
hindsight, asserting the Examiner “is merely picking and choosing” and the
“rationale for combining the references is not taught or suggested in the
prior art, and in fact is gleaned only from the present application.” Appeal
Br. 9–11.
We do not agree that the Examiner’s proposed combination involves
impermissible hindsight. First, rather than “merely picking and choosing,”
the Examiner provides adequate reasoning in support of the proposed
combination. As noted above, the Examiner indicates that the proposed
combination would provide “an exterior insulation and finish system that has
an effective drainage system.” Answer 5. The Examiner also states the
proposed combination “would merely be exchanging one insulation panel
used in building systems . . . with another known insulation panel . . . used in
building systems” and would result in a “simplified and improved” system.
Answer 8. “[W]hen a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
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in the field, the combination must do more than yield a predictable result.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Second, and contrary to Appellant’s assertion, the Examiner’s
rejection does not include knowledge gleaned only from Appellant’s
disclosure. Rather, for the reasons discussed above, the rejection takes into
account the teachings of Irving and Van Wagoner, i.e., knowledge which
was within the level of ordinary skill at the time the claimed invention was
made. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Appellant also argues that the Examiner fails to “provide motivation
to remove the specifically disclosed drainage channel of Irving” because
“Irving discloses that ‘[i]t is a primary object of the invention to produce a
cavity wall exterior insulation and finish system that may be readily applied
to structural exterior wall substructures.’” Appeal Br. 12–13 (quoting
Irving, 1:51–56); see also id. at 14 (“However, the drainage cavity of Irving
is disclosed as being ‘a primary object’ of the system of Irving. Therefore,
there is no motivation to replace or remove the drainage cavity of Irving.”);
Reply Br. 5.
This argument is not persuasive. As discussed above, the Examiner
explains that one of ordinary skill in the art would have been led to make the
proposed modification because the “drainage insulation layer taught by Van
Wagoner will eliminate the need for the furring strips because the drainage
channel will now be in the insulation layer itself.” Answer 5. Moreover,
Appellant places too much significance on Irving’s statement that producing
a cavity wall exterior insulation and finish system is a primary object. This
statement merely indicates that a cavity wall system is a primary object and
does not specify a wall system having parallel, vertically extending cavities
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as being a primary object. We also note that the combination of Irving and
Van Wagoner proposed by the Examiner would have cavities in the form of
voids 52 and, thus, would be a cavity wall exterior insulation and finish
system.
We also disagree with Appellant’s arguments that “no rationale can be
properly used to omit the necessary result of a primary objective of an
invention disclosed in a prior art reference” (Appeal Br. 15) and “[b]ecause
production of a cavity wall system is a primary object of Irving, the principle
of operation of Irving can only be achieved by a cavity in the wall system of
Irving” (Reply Br. 4). The proposed combination would not change the
principle of operation of Irving. As discussed above, Irving as modified by
Van Wagoner would have cavities (i.e., voids 52) and thus fulfill the primary
object of providing a cavity wall exterior insulation and finish system.
Another argument presented by Appellant is:
Van Wagoner (col. 5, lines 25-26, col. 6, lines 45-
46) discloses that at least the insulating drainage course
42, adhesive 44, and closed cell insulation course 46 are
combined in a factory-assembled insulation panel 40.
Therefore, a person of skill in the art would not be
motivated to remove the insulating drainage course 42
from the insulation panel 40, because there is no teaching
or suggestion that the insulating drainage course 42
would perform as described without the other
components of the prefabricated insulation panel 40.
Appeal Br. 13. However, the test for obviousness is not whether the features
of a reference may be bodily incorporated into another reference to produce
the claimed subject matter; rather, it is what the combination of references
makes obvious to one of ordinary skill in the art. In re Keller, 642 F.2d 413,
425 (CCPA 1981); see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985)
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(en banc) (noting that the issue in an obviousness determination is not
“whether the references could be physically combined but whether the
claimed inventions are rendered obvious by the teachings of the prior art as a
whole”). In this case, one of ordinary skill in the art would recognize the
functionality of insulating drainage course 42 independent of panel 40 and
realize that insulating drainage course 42 could be used individually with
other systems to provide its drainage function.
Furthermore, Appellant argues that Van Wagoner’s panel 40 is
designed for horizontal systems and one of ordinary skill in the art would not
have been motivated to use insulating drainage course 42 for a vertical
system “because there is no teaching or suggestion that the drainage course
would function in a vertical orientation.” Appeal Br. 13.
This argument is not persuasive. First, insulating drainage course 42
is composed of a generally homogeneous association of
expanded synthetic polymeric spheres bonded together at
points of contact with random voids created throughout
the association. These voids render the insulating
drainage course 42 substantially porous to the passage of
water. Accordingly, water which penetrates to the
membrane 26 is free to migrate laterally through the
insulation and drainage course such as depicted by
directional arrows A and B in FIG. 2 to a roofing drain.
Van Wagoner, 5:36–45. This description strongly suggests that water still
would migrate freely through the voids when insulating drainage course 42
is oriented vertically. Furthermore, an obviousness analysis “need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418;
see also id. at 421 (“A person of ordinary skill is also a person of ordinary
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creativity, not an automaton.”). Accordingly, one of ordinary skill in the art
would have considered using Van Wagoner’s horizontal insulating drainage
course in Irving’s vertical system.
In view of the above, Appellant’s arguments do not apprise us of
error, and we sustain the rejection of claim 1, and of claims 2–28 grouped
therewith, under 35 U.S.C. § 103(a) as unpatentable over Irving and Van
Wagoner.
DECISION
We affirm the decision of the Examiner rejecting claims 1–28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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