Ex Parte Hong et al

Patent Trial and Appeal Board

Jan 31, 2017

12599890 (P.T.A.B. Jan. 31, 2017)

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.
12/599,890 11/12/2009 Keith C. Hong 2009-152 4141
27569 7590
PAUL AND PAUL
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
EXAMINER
OLSEN, KAJ K
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
02/02/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
INFO @PAUL ANDPAUL.COM
claire @paulandpaul.com
fpanna@paulandpaul.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEITH C. HONG and GREGORY F. JACOBS
Appeal 2015-001562
Application 12/599,890
Technology Center 1700
Before TERRY J. OWENS, ELIZABETH M. ROESEL, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1, 5, 9—11, 15, 19, 20, and 31—40. An oral
hearing was held on January 12, 2017.3 We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
1 In this decision, we refer to the Final Office Action mailed December 19,
2013 (“Final Act.”), the Appeal Brief filed August 22, 2014 (“App. Br.”),
the Examiner’s Answer mailed September 17, 2014 (“Ans.”), and the Reply
Brief filed November 17, 2014 (“Reply Br.”).
2 Appellants identify the real party in interest as CertainTeed Corporation.
App. Br. 1.
3 The record will include a transcript of the oral hearing when it becomes
available.
Appeal 2015-001562
Application 12/599,890
The subject matter on appeal relates to photocatalytic roofing
granules. Spec.411. Claim 1, reproduced below, is illustrative of the
claims on appeal.
1. Photocatalytic roofing granules comprising a composite
of:
(a) a binder;
(b) inert mineral particles; and
(c) photocatalytic particles selected from the group
consisting of anatase titanium dioxide and zinc oxide; the inert
mineral particles and the photocatalytic particles being
dispersed in the binder, the granules having an average particle
size from about 0.1 mm to 3 mm, the photocatalytic particles
having an average particle size from about 5 nanometers to
100 nanometers.
DISCUSSION
Claims 1, 5, 9—11, 15, 19, 20, and 31—40 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Hong et al. (US 2004/0258835 Al,
published Dec. 23, 2004) (hereinafter “Hong”) in view of Jacobs
(US 6,881,701 B2, issued Apr. 19, 2005).
The Appellants argue the claims as a group. We select claim 1 as
representative of the rejected claims, and the remaining claims on appeal
will stand or fall with claim 1.
The Examiner finds that Hong discloses algae-resistant roofing
granules formed by extruding a mixture of mineral particles and a binder to
form porous granule bodies, and algaecide distributed in the pores (Final
4 Application 12/599,890, Photocatalytic Roofing Granules, Photocatalytic
Roofing Products, and Process for Preparing Same, filed Nov. 12, 2009
(hereinafter “Spec.”).
2
Appeal 2015-001562
Application 12/599,890
Act. 2 (citing Hong Abstract)). The Examiner finds that the porous granules
formed are a size suitable for use in manufacturing roofing shingles, such as
up to about 2 mm (Final Act. 2 (citing Hong 114)). The Examiner further
finds that the mineral particles employed in Hong’s process are made of a
chemically inert material, and the algaecide particles employed are
preferably made of zinc materials, such as French process zinc oxide (Final
Act. 2 (citing Hong || 38, 48)). The Examiner acknowledges that Hong
does not teach the algaecide (zinc oxide) distributed in the porous granule
bodies are photocatalytic particles having an average particle size from
about 5 nanometers to 100 nanometers. The Examiner finds that zinc oxide
inherently works as a photocatalyst material (Final Act. 2—3). The Examiner
relies on Jacobs for teaching the claimed average particle size of zinc oxide.
Jacobs teaches a coating composition for roofing granules that
contains photocatalytic particles (Jacobs 1:14—18). The Examiner finds that
the photocatalytic particles act as an algaecide—preventing the growth of
algae on the substrates containing the coating (Final Act. 3 (citing
Jacobs 2:39-40)). The Examiner finds that the photocatalytic particles
include zinc oxide and preferably anatase titanium dioxide, and have a mean
particle size in a range of about 1 to 1000 nm, preferably about 1 nm to
about 100 nm (Final Act. 3 (citing Jacobs 3:52—56; Final Act. 5, citing
Jacobs 3:26—28)).
The Examiner finds that one of ordinary skill in the art would have
used zinc oxide or anatase titanium oxide having a particle size of about
1 nm to about 100 nm, as taught in Jacobs, as the algaecide in Hong’s
roofing granules, and the results would have been predictable (Final
Act. 3, 5).
3
Appeal 2015-001562
Application 12/599,890
Appellants first argue that the Examiner erred by not providing a
reasoned explanation as to why one of ordinary skill in the art would include
Jacobs’ nanoparticulate photocatalytic particles in Hong’s granules. App.
Br. 10. Appellants contend that the zinc oxide in Hong and Jacobs are not
equivalent because the zinc oxide used by Hong is much larger than the
photocatalytic zinc oxide used by Jacobs. Id. at 10-11. More specifically,
citing U.S. Patent No. 5,411,803 (hereinafter “U.S. ’803”), Appellants
distinguish photocatalytic zinc oxide from “conventional” zinc oxide, which
provides algae resistance by leaching. Id. at 11. Appellants contend that
one of ordinary skill in the art would not have used Jacobs’ nanoparticulate
zinc oxide in Hong’s roofing granules because “one of ordinary skill in the
art would expect that particle size may have a significant effect on the
physical properties of materials such as zinc oxide, and in particular, would
expect nanoparticulate zinc oxide, such as employed by Jacobs, to have
different physical properties than the conventional oxide implicitly required
by the porous structure of Hong’s granules . . . .” Reply Br. 3.
Appellants’ arguments are not persuasive of reversible error in the
Examiner’s rejection because they are not sufficiently supported by factual
evidence. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (argument by
counsel cannot take the place of evidence). Appellants have not provided
evidence sufficient to support their contention that the zinc oxide used by
Hong is so-called “conventional” zinc oxide having a much larger particle
size than that used by Jacobs. The Examiner is correct in finding that Hong
is silent as to the particle size of the algaecide, e.g., zinc oxide. Final Act. 3.
The Examiner finds that Jacobs and Hong are both directed to
formation of roofing granules, and both teach using zinc oxide as an
4
Appeal 2015-001562
Application 12/599,890
algaecide. Ans. 3; see also Hong Abstract and 148, and Jacobs 1:14—18 and
2:38-41. The Examiner further finds that one of ordinary skill in the art
would have used zinc oxide or anatase titanium oxide having a particle size
of about 1 nm to about 100 nm, as taught in Jacobs, as the algaecide in
Hong’s roofing granules, and the results would have been predictable. Final
Act. 3,5. Thus, the Examiner has provided a sufficient reason to combine
Hong and Jacobs. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007) (In assessing the obviousness of claims to a combination of prior art
elements, the question to be asked is “whether the improvement is more than
the predictable use of prior art elements according to their established
functions.”). Appellants have not identified an error in the Examiner’s
reasoning and we find none.
Appellants point out that Jacobs discloses the optional incorporation
of French process zinc oxide in its outer coating layer of the granules
(Jacobs 4:44-46 (incorporating by reference U.S. ’803)), which Appellants
contend is “conventional” zinc oxide that provides algae resistance by
leaching. App. Br. 11. U.S. ’803 discloses that its French process zinc
oxide particles have an average particle size of less than about 0.13
micrometers (130 nanometers), more preferably less than about 0.10
micrometers (100 nanometers) (U.S. ’803, 3:32—36). The zinc oxide
disclosed by Hong is termed “French process zinc oxide.” Hong 148.
Thus, contrary to Appellants’ contentions, Hong’s zinc oxide is
nanoparticulate just like Jacobs’ photocatalytic zinc oxide. Consequently, a
preponderance of the evidence supports the Examiner’s finding that one of
ordinary skill in the art could have used Jacobs’ nanoparticulate zinc oxide
5
Appeal 2015-001562
Application 12/599,890
(or nanocrystalline anatase titanium dioxide)5 as the algaecide in Hong’s
roofing granules and the results would have been predictable. Moreover,
because the “French process zinc oxide” used in Hong appears to have the
same average particle size as Jacobs’ nanoparticulate zinc oxide, one of
ordinary skill in the art would reasonably expect Hong’s zinc oxide to be
photocatalytic. Compare U.S. ’803, 3:32—36 (particle size of French process
zinc oxide), with Jacobs, 3:52—56 (particle size of photocatalytic zinc oxide).
Appellants argue that because adding Jacobs’ nanoparticulate
photocatalyst to Hong’s mix would significantly increase the viscosity of the
mix and adversely affect the rheological characteristics, one of ordinary skill
in the art would not modify Hong as proposed by the Examiner. App.
Br. 12.
As with Appellants’ first argument, Appellants’ contention here is
unpersuasive because it is merely unsupported attorney argument.
Appellants do not offer any evidence to support their contention that Hong’s
porous granule bodies would be adversely affected by including
nanoparticulate zinc oxide as used in Jacobs. In fact, Hong discloses
“French process zinc oxide” (Hong 148), which is nanoparticulate just like
Jacobs’ zinc oxide. Compare U.S. ’803, 3:32—36, with Jacobs, 3:52—56.
Thus, a preponderance of the evidence supports the Examiner’s finding that
one of ordinary skill in the art could have used Jacobs’ nanoparticulate zinc
oxide as the algaecide in Hong’s roofing granules and the results would have
been predictable.
5 We note that the claims 31 and 36, which recite only anatase titanium
dioxide photocatalytic particles, are not separately argued. See App. Br. 10-
13.
6
Appeal 2015-001562
Application 12/599,890
Appellants argue that the photocatalytic zinc oxide must obviously be
on the particle surface, as in Jacobs, not in porous granules, as in Hong, to be
effective as a photocatalyst.” See Reply Br. 2. We do not find this argument
to be persuasive. Appellants’ Specification describes an embodiment of a
photocatalytic roofing granule 31 according to their invention having an
inert mineral body 32 with a plurality of pores 34 formed therein, and a
plurality of photocatalytic particles 36 dispersed in the pores. Spec. 15:14—
18, and Figure 3 of the application; see also claims 11 and 36, which recite
that the photocataytic particles are within the pores of the porous body of the
roofing granules. According to Appellants’ Specification, photocatalytic
activity is provided to the photocatalytic roofing granules 31 by virtue of the
photocatalytic particles 36 provided at or proximate the exterior surface 38
of the photocatalytic roofing granule. The embodiment depicted in
Appellants’ Figure 3 is similar to the porous roofing granules depicted in
Hong. Compare Appellants’ Figure 3 with Hong’s Figure 2 (depicting zinc
oxide at or proximate the exterior surface of the roofing granule). Thus,
based on this record, one of ordinary skill in the art would reasonably expect
Jacobs’ nanoparticulate zinc oxide to be an effective photocatalyst when
incorporated into Hong’s porous granule body.
In sum, upon consideration of the evidence on this appeal record and
each of Appellants’ contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of Appellants’
claims is unpatentable over the applied prior art. Accordingly, we sustain
the Examiner’s § 103 rejection of claims 1, 5, 9—11, 15, 19, 20, and 31—40.
7
Appeal 2015-001562
Application 12/599,890
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 5, 9-11,
15 19, 20, and 31—40 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
8