Ex Parte Hong et al

Patent Trial and Appeal BoardAug 26, 2014

11924805 (P.T.A.B. Aug. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KEITH C. HONG, GREOGRY F. JACOBS, and VAN NHAN NGUYEN ____________ Appeal 2013-002684 Application 11/924,805 Technology Center 1700 ____________ Before JEFFREY T. SMITH, KAREN M. HASTINGS, and CHRISTOPHER M. KAISER, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is in response to a Request for Rehearing (“Request”), dated August 15, 2014, of our Decision, mailed June 17, 2014 (“Decision”), wherein we affirmed the Examiner’s § 103 rejection based on combination of Joedicke and Sherman of all of the appealed claims. We have reconsidered our Decision of June 17, 2014, in light of Appellants’ comments in the Request for Rehearing, and we find no error in the disposition of this § 103 rejection. Appeal 2013-002684 Application 11/924,805 2 Appellants contend that “the Board has failed to properly consider all the arguments” (Request 1) and that “the teachings of Joedicke and Sherman would have been considered incompatible by those of ordinary skill in the art” (Request 2). We disagree. Appellants have not presented any persuasive reasoning or evidence to support their position that the teachings of these references are incompatible when the applied prior art is considered as a whole for reasons discussed in the Decision and in the Examiner’s Answer. As stated at page 6 of the Decision: Appellants have not provided persuasive reasoning or credible evidence why one of ordinary skill in the art would not have, using no more than ordinary creativity, predictably used the transparent photocatalytic coating with binder, such as exemplified in Sherman for use on roofing granules, on the roofing granules of Joedicke (e.g., Ans. 13, 14; App. Br. 20-23; generally Reply Br.). See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Indeed, it appears that Sherman alone renders the claimed subject matter obvious. “If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person's skill.” KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appellants have not presented any evidence that one of ordinary skill would not have been able to have applied the photocatalytic coating with binder of Sherman, which is taught to be useful on roofing granules, on roofing granules as exemplified in Joedicke, in such a manner that the function of the photocatalytic coating and the roofing granules would have been preserved. Appeal 2013-002684 Application 11/924,805 3 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. Thus, the standard for motivation is not whether the reference discloses a specific problem, but whether the prior art discloses a reason for combining elements in the manner claimed because of any problem. As stated in Kubin, “[r]esponding to concerns about uncertainty in the prior art influencing the purported success of the claimed combination, this court [in O'Farrell] stated: ‘[o]bviousness does not require absolute predictability of success … all that is required is a reasonable expectation of success.”’ In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O'Farrell, 853 F.2d 894, 903-904 (Fed. Cir. 1988)). Accordingly, no persuasive merit is present in Appellants’ arguments that there is no motivation and no reasonable expectation of success for modification of Joedicke’s roofing granules with known transparent photocatalytic coating with binder as exemplified in Sherman for use on roofing granules (Request 1-3). Thus, we decline to modify our decision to affirm the Examiner’s §103 rejection based on Joedicke and Sherman of the appealed claims. In conclusion, based on the foregoing, Appellants’ Request is granted to the extent that we have reconsidered our Decision, but is denied with respect to making changes to the final disposition of the rejections therein. This Decision on the Request for Rehearing incorporates our Decision, mailed June 17, 2014, and is final for the purposes of judicial review. See 37 C.F.R. 41.52 (a)(1). Appeal 2013-002684 Application 11/924,805 4 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v)(2010). DENIED lp