Ex Parte Hong et alDownload PDFPatent Trial and Appeal BoardJan 31, 201712599890 (P.T.A.B. Jan. 31, 2017) 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. 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 Copy with citationCopy as parenthetical citation