Ex Parte Fritz

Patent Trial and Appeal Board

Sep 17, 2012

11651786 (P.T.A.B. Sep. 17, 2012)

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.
11/651,786 01/10/2007 Todd D. Fritz 1597.3059.003 2657
23399 7590 09/17/2012
REISING ETHINGTON P.C.
P O BOX 4390
TROY, MI 48099-4390
EXAMINER
JAYNE, DARNELL M
ART UNIT PAPER NUMBER
3637
MAIL DATE DELIVERY MODE
09/17/2012 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 TODD D. FRITZ
____________

Appeal 2010-8902
Application 11/651,786
Technology Center 3600
____________

Before, HOWARD B. BLANKENSHIP, RICHARD M. LEBOVITZ, and
JOSIAH C. COCKS, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims to a roofing system. The Examiner has
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 134.
We affirm the rejections.

Appeal 2010-8902
Application 11/651,786

2
STATEMENT OF THE CASE
The claims are drawn to a single ply membrane roofing system
secured to a roof deck. Claims 1-3 are pending and stand rejected as
follows:
1. Claim 1 under 35 U.S.C. § 103(a) as obvious in view of Hulsey
1

and Barksdale
2
(Answer 4); and
2. Claims 2 and 3 under 35 U.S.C. § 103(a) as obvious in view of
Hulsey, Barksdale, and Smith
3
(Answer 6).
Claims 1 is representative and reads as follows:
A single ply membrane roofing system secured to a roof
deck, said system comprising:
a first flexible membrane with a longitudinally extending
first membrane free edge secured to said roof deck by
transversely spaced fasteners, said roofing system having a
second flexible membrane with a second membrane edge
portion overlapping said first membrane free edge and weld
bonded to said first membrane via a continuous weld bond
along the second membrane edge portion such that said first
membrane free edge projects forwardly from said bond to
define a fastening projection for said fasteners extending
forwardly from said weld bond; and
an adhesive coating continuously over said fastening
projection and fasteners from said weld bond forwardly over
the first membrane free edge to provide a substantially
monolithic bond comprising said weld bond and said adhesive
coating.

1
Tommy Ray Hulsey, U.S. 6,250,034 B1 (Jun. 26, 2001).
2
Daniel Leon Barksdale et al., U.S. 2004/0002414 A1 (pub. Jan. 1, 2004).
3
O. A. Smith et al., U.S. 259,228 (Jun. 6, 1882).
Appeal 2010-8902
Application 11/651,786

3
1. OBVIOUSNESS IN VIEW OF HULSEY AND BARKSDALE
The claim
Claim 1 is drawn to a single ply membrane roof system comprising a
first flexible membrane and a second flexible membrane which is weld
bonded to the first membrane:
said first membrane free edge projects forwardly from said
bond to define a fastening projection for said fasteners
extending forwardly from said weld bond; and
an adhesive coating continuously over said fastening
projection and fasteners from said weld bond forwardly over
the first membrane free edge to provide a substantially
monolithic bond comprising said weld bond and said adhesive
coating.

Figure 4 of the instant application illustrating such features is
reproduced below:

Appeal 2010-8902
Application 11/651,786

4
Figure 4 shows the following elements of the claim: 10 is the first
flexible membrane; 11 is the second flexible membrane; 12 is the weld
bond; 13 are the fasteners; 10c is the “fastening projection” of the “first
membrane” which “projects forwardly from [said bond] to define a fastening
projection [for said fasteners]”; 17a is the adhesive coating. Spec. ¶¶ [0017-
18], [0021]; App. Br. 4.

The rejection
The Examiner found the Hulsey described almost all the limitations of
claim 1, but not an adhesive coating covering the fasteners and fastening
projection. Answer 4-5. For this feature, the Examiner cited the Barksdale
patent. The Examiner found that Barksdale describes an adhesive coating
over a fastening projection and fasteners to provide a monolithic bond as
claimed. Id. at 5. The Examiner concluded it would have been obvious to
modify Hulsey “by including an adhesive coating over said fastening
projection and fasteners as taught by BARKSDALE ET AL. in order to
provide better gripping of the membrane against uplift forces.” Id.
Appellant contends that “Barksdale fails to cure the[ ] deficiencies of
Hulsey.” App. Br. 6 (September 3, 2009).
4
We have considered Appellant’s
arguments but do not find them persuasive.
Appellant argues that a weld is not taught by Barksdale. App. Br. 7.
However, the Examiner did not rely upon Barksdale for the weld, but rather
Hulsey. Answer 4 (citing 60,70 of Figure 4 of Hulsey).

4
We also have considered the Combined Appeal and Reply Brief of January
20, 2010.
Appeal 2010-8902
Application 11/651,786

5
Appellant contends that Barksdale discloses that fasteners are not
suitable to secure a membrane to the roof and therefore a person of ordinary
skill in the art would not have had reason to utilize them in a roofing system
as claimed. App. Br. 6 & 9; Reply Br. 7 (May 26, 2010).
Although Appellant did not cite to a specific portion of Barksdale for
this teaching, we have reviewed Barksdale and found such disclosure in
paragraph 2. While Barksdale does appear to disparage “[m]echanical
fasteners” on one hand, on the other hand Barksdale describes a system in
which fasteners could be used (“One method of application utilizes fasteners
that pass through a narrow width of a scrim reinforced membrane, through
the insulation and into the concrete or other substrate.” Barksdale, ¶ 2).
Thus, despite Barksdale’s apparent disparagement of mechanical fasteners,
Barksdale in fact describes a fastener system that works.
In addition to this, Hulsey teaches a roof membrane fastening system
– comprising lances 14, opening 16, and fastening device 68 – which are
said by Hulsey as suitable for fastening a membrane to a roof. Hulsey, col.
3, ll. 35-45; Figs 3-4. Thus, roof membrane fastening systems were known
in the art to be suitable for securing membranes to roofs. Nothing in
paragraph 2 of Barksdale casts doubt on the suitability of Hulsey’s fastener
system.
Appellant also contends that Barksdale does not teach “an adhesive
coating applied continuously over a fastening projection secured to a roof
deck by fasteners and extending forwardly from a weld bond between two
membranes to provide a substantially monolithic bond comprising the weld
bond and the adhesive coating.” App. Br. 7-8.
Appeal 2010-8902
Application 11/651,786

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This argument is not persuasive. Barksdale teaches applying adhesive
64 to the bottom surface 52B of a membrane 52A, and then rolling the
membrane over the underlying membrane strip 53, including the fasteners 58
and edges.
See Figs. 4 and 5 of Barksdale; ¶ [0027]. Figure 5 is reproduced below:

Figure 5 shows roofing membrane 52A adhered to reinforced membrane 53,
covering washer 58 (not labeled but part of fastener 54) and the edge of
membrane 53, the latter which corresponds to a “fastening projection” of
claim 1. ¶ [0025]
The following passage expressly teaches coating the surface of the
membrane 53:
The adhesive coating 64 assists in the adhesion of the
membrane 52 to the pressure sensitive adhesive tapes 61 and 62
as well as the other surfaces of the strip 53 and washer 58 with
which it makes contact.
Barksdale, ¶ 27. Figure 5 of Barksdale shows the second membrane (top)
over washer 58 and extending over the edge of the first membrane 53
Appeal 2010-8902
Application 11/651,786

7
(bottom). Appellant contends that there is no adhesive over the fastening
projection of the first membrane in Barksdale, but Barksdale shows adhesive
over the entire first membrane which would reasonably suggest placing
adhesive over the projecting edge of Hulsey to provide better gripping of the
membrane against uplift forces. Answer 5.
Appellant repeatedly states that Barksdale does not show adhesive
over a fastening projection. Reply Br. 3. However, the Examiner did not
rely on Barksdale for a fastening projection, but rather cited Barksdale as
reasonably suggesting putting an adhesive on the fastening projection of
Hulsey.
Appellant also contends that Barksdale does not teach adhesive over
the entire surface of the bottom membrane, pointing to apparent gaps in the
adhesive as shown in Figure 5. Combined Appeal and Reply Brief 7-8;
Reply Br. 4.
Paragraph 27 of Barksdale, reproduced above, explicitly teaches that
the adhesive coating assists in the adhesion of the membrane to surfaces
with which it makes contact. Consequently, a person of ordinary skill in the
art would have recognized the advantage of coating the projecting edge and
fastener of Hulsey with an adhesive. An obviousness rejection asks the
question of whether the teachings of one publication would reasonably
suggest to one of ordinary skill in the art modifying the teachings of another
publication. The Examiner gave an explicit and rational reason for the
modification, which Appellant has not suitably demonstrated is flawed. It is
commonsense that an adhesive coating along the entire surface of the first
member of Hulsey would make it adhere better to provide enhanced gripping
power. See also Supplemental Examiner’s Action, pages 3-6.
Appeal 2010-8902
Application 11/651,786

8
To the extent there are gaps in the adhesive coating in Figure 5 of
Barksdale, Appellant has not provided any meaningful reason why the
existence of such gaps would have led the ordinary skilled worker to exclude
adhesive from the fastener and fastening projection of Hulsey, when such
surfaces are the same type of surfaces which are taught in paragraph 27 of
Barksdale to be covered by adhesive. Appellant’s argument to the contrary
fails to take into consideration what would be reasonably suggested by the
combination of the cited prior art, but rather focuses woodenly on what is
missing individually from Hulsey and Barksdale. Reply Br. 2-5.
Moreover, there is no disclosure in Barksdale that there are gaps in the
adhesive coating. Appellant’s assertion that there are gaps is based on a
Figure 5 of Barksdale which does not clearly show either the presence or
absence of adhesive. Combined Appeal and Reply Brief 7. Nonetheless, for
the reasons set forth by the Examiner, it would have been obvious to have
provided a continuous, monolithic coating as claimed. Supplemental
Examiner’s Action, pages 3-6.
Appellant contends that Barksdale and Hulsey having cross-purposes
with respect to “uplift” of the membrane from the roof, but has provided no
factual support for this argument. Reply Br. 7. Appellant states “Barksdale
seeks to prevent uplift of a roof membrane when winds pass thereover,
whereas Hulsey specifically teaches that despite uplift of a roof membrane,
Hulsey's improved fastener will not tear the membrane.” Reply Br. 7
(emphasis in original). However, Appellant did not identify disclosure in
either publication to support these allegations nor any evidentiary support
for the premises on which they are based. It does not even appear this
argument was made in the Appeal Brief; it is rather late in the game to make
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Application 11/651,786

9
new, unsupported arguments that the Examiner did not have the chance to
consider.
Appellant argues that the combination of Hulsey and Barksdale would
not result in the subject matter of the claimed invention, but would instead
suggest a different “result.” App. Br. 8.
Whether more than one configuration is possible when Hulsey and
Barksdale are combined is not the issue. The question is whether the
Examiner provided a logical, fact-based reason for combining Hulsey and
Barksdale to have arrived at the claimed invention. As discussed above, the
Examiner properly found all the elements of the claimed invention in the
cited prior art and gave a logical reason for combining that prior art to have
made the subject matter of the claims. That is, the Examiner found all the
element of the roofing system in Hulsey except for the adhesive, which the
Examiner found in Barksdale, and plausibly explained that the skilled
worker would have applied adhesive to Hulsey to provide better gripping.
Appellant did not identify a defect in this reasoning. Thus, even was it true
that other combinations could be made, the combination set forth by the
Examiner is supported by a preponderance of the evidence.

2. OBVIOUSNESS IN VIEW OF HULSEY, BARKSDALE, AND SMITH
The Examiner stated that the rejection of claims 2 and 3 as obvious in
view of Hulsey, Barksdale, and Smith is not on appeal because it was not
presented for review in Appellant’s Brief. Answer 3.
Although Appellant stated that the “appeal covers claims 1-3,”
Appellant did not separately address the rejection of claims 2 and 3 over the
combination of Hulsey, Barksdale, and Smith. App. Br. 1 & 4. In fact,
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Application 11/651,786

10
Appellant did not include this rejection as a ground of rejection to be
reviewed on Appeal. App. Br. 4. Rather, Appellant stated in their
conclusion to the Appeal Brief that “Claims 2 and 3 are ultimately
dependent on independent claim 1 and, under principles of claim
dependency, define novel and nonobvious subject matter for at least the
foregoing reasons.” App. Br. 10. Thus, we conclude that the Examiner was
correct that this rejection was not presented for review.
In accordance with M.P.E.P. § 1205.02, we shall summarily sustain
the rejection of claims 2 and 3 as obvious in view of Hulsey, Barksdale, and
Smith for the reasons given by the Examiner on pages 6 and 7 of the
Answer. We note that Appellant did not identify a flaw in the Examiner’s
reasoning nor findings in rejecting claims 2 and 3.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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