Ex Parte EganDownload PDFPatent Trial and Appeal BoardSep 29, 201411440843 (P.T.A.B. Sep. 29, 2014) Copy Citation 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. Appeal 2012-002844 Application 11/440,843 2 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 Appeal 2012-002844 Application 11/440,843 3 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 Appeal 2012-002844 Application 11/440,843 4 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 Appeal 2012-002844 Application 11/440,843 5 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) Appeal 2012-002844 Application 11/440,843 6 (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 Appeal 2012-002844 Application 11/440,843 7 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 hh Copy with citationCopy as parenthetical citation