Ex Parte Griffin

Patent Trial and Appeal BoardApr 29, 2013

11879425 (P.T.A.B. Apr. 29, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/879,425 07/17/2007 Christopher J. Griffin 7683 3205 29602 7590 04/30/2013 JOHNS MANVILLE 10100 WEST UTE AVENUE PO BOX 625005 LITTLETON, CO 80162-5005 EXAMINER NORDMEYER, PATRICIA L ART UNIT PAPER NUMBER 1788 MAIL DATE DELIVERY MODE 04/30/2013 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 CHRISTOPHER J. GRIFFIN ____________ Appeal 2011-006225 Application 11/879,425 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and KAREN M. HASTINGS, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 seeks our review under 35 U.S.C. § 134(a) of a final rejection of claims 1-11 and 20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The Appellant identifies the real party in interest as “Johns Mansville.” Appeal Brief filed January 6, 2011 (“App. Br.”) at 2. Appeal 2011-006225 Application 11/879,425 2 STATEMENT OF THE CASE The invention relates to a roofing patch. Specification (“Spec.”) 1, l. 5. Representative claim 1 is reproduced below: 1. A patch for a roofing membrane, which comprises a substrate for application to the roofing membrane, with the substrate containing encapsulated adhesive on the side to be applied to the roofing membrane, and with the adhesive being encapsulated in rupturable cells which will rupture to release the adhesive when pressure is applied. App. Br. 8 (Claims App’x). The Examiner rejected the claims under 35 U.S.C. § 103(a) as follows: I. Claims 1-3, 7, 8, 11, and 20 as unpatentable over Nebesnak2 and Corston;3 II. Claims 4-6 as unpatentable over Nebesnak, Corston, and Kendall;4 and III. Claims 9 and 10 as unpatentable over Nebesnak, Corston, and Wasitis.5 Examiner’s Answer entered February 8, 2011 (“Ans.”) 4-12. 2 U.S. Patent 7,638,180 B2 issued December 29, 2009 and based on Application 11/055,148 filed February 10, 2005. 3 U.S. Patent 6,263,636 B1 issued July 24, 2001. 4 U.S. Patent 6,800,170 B2 issued October 5, 2004. 5 U.S. Patent 5,800,891 issued September 1, 1998. Appeal 2011-006225 Application 11/879,425 3 DISCUSSION I. The Appellant argues the claims subject to Rejection I (i.e., claims 1- 3, 7, 8, 11, and 20) together. App. Br. 3-4. Therefore, pursuant to 37 C.F.R. § 41.37(c)(1)(vii), we select claim 1 as representative and confine our discussion to this selected claim. Claims 2, 3, 7, 8, 11, and 20 stand or fall with claim 1. The Examiner found that Nebesnak describes a patch for a roofing membrane comprising a substrate including adhesive on the side to be applied to the roofing membrane. Ans. 4. The Examiner acknowledged, however, that Nebesnak does not describe the limitation “adhesive being encapsulated in rupturable cells which will rupture to release the adhesive when pressure is applied,” as recited in claim 1. Id. To account for this difference, the Examiner relied on Corston. Id. Specifically, the Examiner found that Corston teaches the use of adhesives encapsulated in rupturable cells in construction to allow the adhesive to permeate the interface between the two surfaces being adhered together. Id. at 4-5. Based on these findings, the Examiner concluded that a person of ordinary skill in the art would have been prompted to provide adhesives encapsulated in rupturable cells in Nebesnak’s roofing patch in order to allow the adhesive to permeate the interface between the two surfaces being adhered together as suggested by Corston. Id. at 5. Appeal 2011-006225 Application 11/879,425 4 The Appellant contends that a person of ordinary skill in the art would not have combined Nebesnak and Corston because the “[u]se of an adhesive on a [roofing] patch is not suggested in Corston, as Corston is directed to simply maintaining a foam tape situated between a beam and a panel as insulation.” App. Br. 4. According to the Appellant, “[t]he advantage of using an adhesive contained in rupturable cells in a roof patch . . . is nowhere disclosed or suggested in Corston.” Id. The Appellant further argues that even if a person of ordinary skill in the art would have combined the references, the resulting roofing patch would have required the use of Corston’s foam tape and anchoring fasteners. Id. Thus, the dispositive issue is: Did the Appellant show reversible error in the Examiner’s conclusion that a person of ordinary skill in the art would have been prompted to provide adhesives encapsulated in rupturable cells, as shown in Corston, as part of Nebesnak’s roofing patch in order to allow the adhesive to permeate the interface between the two surfaces being adhered together? The Appellant’s arguments are unpersuasive to show reversible error in the Examiner’s rejection. Because we find no error in the Examiner’s factual findings and legal conclusion, we adopt them as our own and add the following comments for emphasis. The Examiner’s findings regarding Nebesnak’s teachings are undisputed. App. Br. 3-4. With respect to Corston, the Examiner correctly found that Corston teaches the use of adhesives encapsulated in cells that Appeal 2011-006225 Application 11/879,425 5 rupture under applied pressure such that the released adhesive permeates the interface between the two surfaces being joined together. Col. 6, ll. 17-24. While Corston’s overall disclosure relates to the joining of a foam material to building materials such as a beam, a person of ordinary skill in the art would have reasonably expected that the implementation of adhesives in the form of rupturable cells in Nebesnak’s roofing patch would provide the same or similar advantage disclosed in Corston. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”). See also In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007) (“[A]n inventor considering a hinge and latch mechanism for portable computers would naturally look to references employing other ‘housings, hinges, latches, springs, etc.,’ which in that case came from areas such as ‘a desktop telephone directory, a piano lid, a kitchen cabinet, a washing machine cabinet, a wooden furniture cabinet, or a two-part housing for storing audio cassettes.’”) (quoting In re Paulsen, 30 F.3d 1475, 1481-82 (Fed.Cir.1994)). We find no persuasive merit in the Appellant’s argument that Corston does not disclose the same advantages for the adhesives encapsulated in the rupturable cells as discovered by the Appellant. Permeation of the adhesive at the interface, which is the advantage disclosed in Corston, appears to be Appeal 2011-006225 Application 11/879,425 6 one of the primary purposes disclosed in the current Specification. Spec. 2, ll. 30-32. Moreover, “[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee [or the applicant] controls.” KSR, 550 U.S. at 419. “Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. at 420. The Appellant’s argument that any possible combination of Nebesnak and Corston would have required the use of a foam tape and anchoring fasteners in a roof patch is misplaced because that is not the combination proposed by the Examiner. Ans. 5. It is the use of Corston’s adhesive encapsulated in rupturable cells that would have been implemented in Nebesnak in order to obtain the benefit disclosed in Corston. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). For these reasons, we uphold Rejection I. II. With respect to Rejection II, the Appellant relies on the same arguments offered against Rejection I, adding only that Kendall does not Appeal 2011-006225 Application 11/879,425 7 cure the perceived deficiencies in the combination Nebesnak and Corston. App. Br. 5. Because we found the Appellant’s arguments against Rejection I unpersuasive, we affirm Rejection II for the same reasons discussed above. III. With respect to Rejection III, the Appellant relies on the same arguments offered against Rejection I, adding that Wasitis does not cure the perceived deficiencies in the combination Nebesnak and Corston. App. Br. 5. The Appellant further contends that “[t]he prior art is devoid of any suggestion of . . . a roof patch designed for easy application around extending members from a roof,” as recited in claims 9 and 10. Id. Again, we find the Appellant’s arguments offered against Rejection I unpersuasive. As to claims 9 and 10, the Examiner relied on the additional teachings of Wasitis and concluded that a person of ordinary skill in the art would have found the subject matter of these claims obvious in view of the collective teachings of the prior art references. Ans. 7-8. The Appellant’s naked assertion that “[t]he prior art is devoid of any suggestion of” the claimed roof patch is not an argument for separate patentability and therefore fails to demonstrate any error in the Examiner’s factual findings and legal conclusion, let alone reversible error. In re Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011). For these reasons, we affirm Rejection III. Appeal 2011-006225 Application 11/879,425 8 SUMMARY The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1-3, 7, 8, 11, and 20 as unpatentable over Nebesnak and Corston is affirmed. The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 4-6 as unpatentable over Nebesnak, Corston, and Kendall is affirmed The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 9 and 10 as unpatentable over Nebesnak, Corston, and Wasitis is affirmed. 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 sld