Ex Parte Hong et al

Patent Trial and Appeal Board

Aug 15, 2017

13274605 (P.T.A.B. Aug. 15, 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.
13/274,605 10/17/2011 Keith C. Hong 2011-098 7320
27569 7590
PAUL AND PAUL
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
EXAMINER
PENNY, TABATHA L
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
08/17/2017 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, HUSNU M. KALKANOGLU and
MING L. SHIAO
Appeal 2016-000893
Application 13/274,605
Technology Center 1700
Before KAREN M. HASTINGS, JENNIFER R. GUPTA, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 request our review under 35 U.S.C. § 134(a) of a final
rejection of claims 1, 15, and 29-45. We have jurisdiction under 35 U.S.C.
§ 6(b).2
We AFFIRM.
STATEMENT OF THE CASE
The subject matter on appeal is generally directed to an algae-resistant
roofing product that comprises base granules adhered to a roofing product
1 Appellants identify the real party in interest as CertainTeed Corporation.
Appeal Brief filed March 9, 2015 (“App. Br.”), 1.
2 We heard oral arguments from Appellants’ representative on August 3,
2017.
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Application 13/274,605
stock material. The roofing granules are coated with a first coating layer
that includes a cuprous oxide algaecide and voids formed by a void -forming
material, and a second coating layer that includes a binder and a coloring
material, but does not include a void-forming material. App. Br. 2-4.
According to Appellants’ Specification, roofing granules are
conventionally prepared by coating granules with a mixture of clay, an
alkaline silicate binder, and a coloring pigment, and firing the coated
granules at high temperatures to provide a porous ceramic coating. Spec. 1,
1. 32—2,1. 13. Appellants’ Specification explains that although algaecides
have been added to such conventional porous ceramic coatings for roofing
granules, a need exists in the art for controlling the rate at which the
algaecide leaches from the porous ceramic coating. Spec. 2,11. 16—23.
Appellants’ Specification explains that their invention involves
controlling the rate at which an algaecide leaches from a roofing granule
coating by controlling the porosity of the coating through incorporation of a
void-forming material into the coating. Spec. 2,1. 26—3,1. 4. Appellants’
Specification explains that void forming materials release gas, decompose,
or evaporate at elevated temperature to form voids, and further explains that
an appropriate void-forming material can be selected for incorporation into
roofing granule coatings to provide a porosity that will yield a desired
leaching rate. Spec. 4,11. 10-12; 10,11. 6—7.
Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. An algae-resistant roofing product produced by a process
comprising producing algae-resistant roofing granules, and
adhering the granules to a roofing product stock material, the
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algae-resistant roofing granules being produced by a process
comprising:
(a) providing inert base particles;
(b) forming first intermediate particles by coating the
inert base particles with a first mixture including at least one
algaecidal material comprising cuprous oxide, and a void­
forming material, the void-forming material decomposing at a
temperature above 150 degrees C and releasing gaseous
material, and having an average particle size no larger than
2 mm, the void-forming material being selected to provide a
desired porosity, to form a first layer on the inert base particles;
(c) forming second intermediate particles by coating
the first intermediate particles with a second mixture including
a binder and a coloring material and not including a void­
forming material; and
(d) heating the second intermediate particles to release
the gaseous material and form pores in the first layer to produce
the roofing granules.
App. Br. 26 (Claims Appendix).
Appellants request review of the following rejections, which the
Examiner sets forth in the Final Office Action entered July 25, 2014 (“Final
Act.”) and maintains in the Answer entered August 14, 2015 (“Ans.”):
I. Claims 1, 29—35, 39-42, and 45 under 35 U.S.C. § 103(a) as
unpatentable over Skadulis (US 3,528,842, issued September 15, 1970) in
view of Jewett (US 2,379,358, issued June 26, 1945) as evidenced by
Weimer et al. (US 5,340,417, issued August 23, 1994) and Hettinger, Jr. et
al. (US 4,469,588, issued September 4, 1984);
II. Claims 15, 43, and 44 under 35 U.S.C. § 103(a) as unpatentable
over Skadulis in view of Jewett and MacNutt (US 2,138,456, issued
November 29, 1938);
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III. Claims 36 and 37 under 35 U.S.C. § 103(a) as unpatentable
over Skadulis in view of Jewett and McMahon (US 3,507,676, issued
April 21, 1970); and
IV. Claim 38 under 35 U.S.C. § 103(a) as unpatentable over
Skadulis in view of Jewett as evidenced by Weimer, and alternatively over
Skadulis in view of Jewett, Joedicke (US 4,378,408, issued March 29, 1983),
and Hettinger.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants’ contentions3, we affirm the Examiner’s rejections of
claims 1, 15, and 29-45 under 35 U.S.C. § 103(a) for the reasons set forth in
the Final Action, the Answer, and below.
Rejection I
Appellants argue claims 1, 29—35, 39-42, and 45 as a group. App.
Br. 5—15. Therefore, we select claim 1 as representative, and decide the
3 We do not consider any new argument raised in Appellants’ Reply Brief
that could have been raised in their Appeal Brief. 37 C.F.R. §
41.37(c)(l)(iv); 37 C.F.R. § 41.41(b)(2) (arguments raised for the first time
in the Reply Brief that could have been raised in the Appeal Brief will not be
considered by the Board unless good cause is shown); see also Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (explaining that
under the previous rules, which are similar to the current rules, “the reply
brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner’s rejections, but were
not.”); Optivus Technology, Inc. v. Ion Beam Applications S.A., 469 F.3d
978, 989 (Fed. Cir. 2006) (argument raised for the first time in the reply
brief that could have been raised in the opening brief is waived).
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appeal as to claims 1, 29—35, 39-42, and 45 based on claim 1 alone.
37 C.F.R. §41.37(c)(l)(iv).
Skadulis discloses base roofing granules coated with a porous,
moisture permeable coating composition that comprises an alkali metal
silicate, clay, Q12O (cuprous oxide), and a pigment. Col. 1,11. 13—17; col. 2,
11. 41—47; col. 3,11. 15—25, 29-32, 43—45, 51—54. Skadulis discloses that a
second coating composition can be applied to coated base granules that
comprises an alkali metal silicate, clay (binder)4, and a pigment. Col. 4,11.
13—46; col. 5,11. 13—31. Skadulis discloses preparing the coated granules by
applying a first coating composition to the granules, firing the coated
granules at high temperature, which Skadulis discloses may exceed 350-F,
applying a second coating composition to the granules, and firing the coated
granules a second time at high temperature. Col. 2,1. 71—col. 3,1. 3; col. 4,
11. 13—46; col. 5,11. 13—31. Skadulis discloses adhering the coated granules
to roofing shingles, and discloses that Q12O gradually leaches out of the
coatings when the shingles are installed on a roof, and in so doing,
effectively retards the growth of algae on the surface of the roof for a period
of years. Col. 1,11. 2A-36; col. 2,11. 41-50; col. 3,11. 8-10.
The Examiner finds that Skadulis does not explicitly disclose a first
coating composition comprising a material that releases gas at a temperature
of above 150-C to form voids, and the Examiner relies on Jewett’s
disclosure that suitable pigments for roofing granule coating compositions
that comprise sodium silicate and clay include carbon black. Final Act. 3^4;
Jewett pg. 3, col. 2,11. 16—22. The Examiner finds that one of ordinary skill
4 Appellants’ Specification discloses that suitable binders include a mixture
of an alkali metal silicate and clay. Spec. 7,11. 17—20.
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in the art would have been led at the time of Appellants’ invention to utilize
carbon black as a pigment as disclosed in Jewett in the first coating layer on
Skadulis’s roofing granules in view of Skadulis’s disclosure of first and
second coating layers for roofing granules that both include a pigment. Final
Act. 4.
The Examiner finds that in view of Weimer’s disclosure that carbon
black acts as a carbon source when heated, and in view of Hettinger’s
disclosure that carbon black decomposes to yield pores of a desired size, the
roofing granules disclosed in Skadulis having two coating layers, modified
as suggested by Jewett to include carbon black in the first coating layer,
would be identical to the product produced by the process recited in claim 11
because the carbon black would form voids in the first layer when the layer
is heated during production of the granules. Ans. 2—6; Weimer col. 1,11. 61—
65; col. 5,11. 3-7; col. 7,11. 21-23, 46-A7; col. 8,11. 3-7; Hettinger col. 7,11.
48-57.
Appellants argue that their claims require a void-forming material that
decomposes at temperatures above 150-C. App. Br. 11—13. Appellants
contend that carbon black does not meet this limitation because at elevated
temperatures in the presence of oxygen, carbon black combusts by reacting
with oxygen to form carbon monoxide and/or carbon dioxide. Id.
Appellants assert that carbon black cannot decompose in the sense of
breaking down into constituents because it has no constituents. Id.
Appellants further argue that Weimer does not actually disclose the
decomposition of carbon black itself. App. Br. 15.
“[E]ven though product-by-process claims are limited by and defined
by the process, determination of patentability is based on the product itself.”
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In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985). “Where a product-by­
process claim is rejected over a prior art product that appears to be identical,
although produced by a different process, the burden is upon the applicants
to come forward with evidence establishing an unobvious difference
between the claimed product and the prior art product.” In re Marosi, 710
F.2d 799, 803 (Fed. Cir. 1983).
According to the plain language of claim 11, the product produced by
the recited process comprises inert base particles coated with a first layer
that includes cuprous oxide and pores formed from a void-forming material,
and a second layer that includes a binder and a coloring material, but does
not include a void-forming material. Contrary to Appellants’ arguments,
although claim 11 requires the first coating layer to include pores formed
from a void-forming material, the patentability of claim 11 does not depend
on the process by which the void-forming material forms the pores in the
first layer. Thorpe, 111 F.2d at 697.
On this record, the Examiner provides a sufficient factual basis to
establish that the algae-resistant roofing granules disclosed in Skadulis and
modified as suggested by Jewett, which have been fired at high temperature,
appear to be the same as the coated particles produced by the process recited
in claim 11. Specifically, Skadulis’s granules having a first coating layer
before firing that comprises CU2O and modified as suggested by Jewett to
include a carbon black pigment, and a second coating layer that includes a
pigment, an alkali metal silicate, and clay (binder), appears to be the same
after firing at high temperatures as the product produced by the process of
claim 11 that comprises inert base particles coated with a first layer that
includes cuprous oxide and pores formed from a void-forming material, and
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a second layer that includes a binder and a coloring material, but does not
include a void-forming material. The burden therefore shifts to Appellants
to establish an unobvious difference between the algae-resistant roofing
granules produced by the process recited in claim 11 and those suggested by
the combined disclosures of Skadulis and Jewett. Marosi, 710 F.2d at 803.
Appellants have not met this burden. Regardless of whether carbon
black decomposes or combusts at elevated temperatures, it would
nevertheless form voids under the conditions of an elevated temperature
used to form Skadulis’s first coating layer, as evidenced by the relied-upon
disclosures in Hettinger. Hettinger col. 7,11. 48—57. In addition, Appellants’
Specification indicates that carbon black is a suitable void-forming material.
Spec. 4,11. 1—7; 6,11. 9-30. Although Appellants assert that Weimer does
not disclose the “decomposition” of carbon black, Appellants do not directly
challenge Weimer’s disclosure that carbon black acts as a carbon source in a
carbothermal reduction process that involves heating the carbon black and a
silica source. App. Br. 15. One of ordinary skill in the art reasonably would
have understood from Weimer’s disclosures that carbon black, when heated,
yields carbon, whether through decomposition or some other process.
Therefore, Appellants’ arguments that carbon black does not
decompose at temperatures above 150-C are insufficient to meet Appellants’
burden of establishing a structural distinction between the algae-resistant
roofing granules produced by the process recited in claim 11 and those
suggested by the combined disclosures of Skadulis and Jewett.
Appellants further argue that porosity is a structural characteristic, and
contend that the step recited in claim 11 of selecting the void-forming
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material to provide a desired level of porosity provides a structural limitation
in the product so produced—the desired level of porosity. App. Br. 13.
However, as discussed above, although claim 11 does require the first
coating layer to include pores formed from a void-forming material,
claim 11 does not recite a particular level of porosity in the layer.
Accordingly, absent a required level of porosity, the recitation in claim 11 of
selecting a void-forming material to provide a desired porosity does not
structurally limit the coated roofing granules produced by the process recited
in the claim. Rather, claim 11 only requires the first coating layer on the
granules to include some unspecified level of pores formed from a void-
forming material.
Appellants further argue that “[t]here is nothing in the combined
references that would motivate or suggest to one of ordinary skill in the art
to employ carbon black as [a] pore-forming material.” App. Br. 14.
However, “[i]n determining whether the subject matter of a patent
claim is obvious, neither the particular motivation nor the avowed purpose
of the patentee controls.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007). Jewett’s disclosures set forth above would have suggested to one of
ordinary skill in the art at the time of Appellants’ invention that carbon black
would be a suitable pigment to include in Skadulis’s first coating layer, and
one of ordinary skill in the art need not have looked to Jewett’s disclosures
for the same reasons that prompted Appellants’ invention. In re Kemps,
97 F.3d 1427, 1430 (Fed. Cir. 1996) (“Although the motivation to combine
here differs from that of the applicant, the motivation in the prior art to
combine the references does not have to be identical to that of the applicant
to establish obviousness.”); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir.
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1992) (“[T]he law does not require that the references be combined for the
reasons contemplated by the inventor.”).
Therefore, Appellants’ arguments are unpersuasive of reversible error,
and we accordingly sustain the Examiner’s rejection of claims 1, 29-35, 39-
42, and 45 under 35 U.S.C. § 103(a).
Rejection II
Appellants argue claims 15, 43, and 44 as a group on the basis of
independent claim 15, to which we limit our discussion. App. Br. 15—18.
37C.F.R. §41.37(c)(l)(iv).
Claim 15 is similar to claim 1 and further requires the first coating to
include a binder, and requires the second coating to have a thickness of from
about 2 micrometers to about 25 micrometers.
The Examiner relies on MacNutt’s disclosure of controlling the
thickness of a coating applied to roofing granules in order to achieve
substantial transparency and substantial absence of color in the coating.
Ans. 7—8; MacNutt page 3, col. 2,11. 10-20. The Examiner finds that
MacNutt thus suggests that the thickness of roofing granule coatings is a
result-effective variable, and finds that one of ordinary skill therefore would
have optimized the thickness of the second coating suggested by the
combined disclosures of Skadulis and Jewett based on the desired color or
transparency. Ans. 7—8.
Appellants argue that MacNutt discloses filling the pores of the
granules and “is silent on how porosity could or should be controlled in the
granule coating.” App. Br. 16—17.
However, regardless of whether MacNutt discloses how porosity
could or should be controlled in a roofing granule coating, the combined
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disclosure of Skadulis and Jewett would have suggested algae-resistant
roofing granules having a first coating that includes pores after firing at high
temperatures, as discussed above. Because Appellants’ arguments do not
address the basis for the Examiner’s reliance on MacNutt, they are
unpersuasive of reversible error in the Examiner’s rejection.
Appellants further argue that the coatings for roofing granules
disclosed in MacNutt are casein-based materials applied as aqueous
suspensions. App. Br. 17. Appellants contend that one of ordinary skill in
the art would not have expected that application techniques suitable for
applying aqueous dispersions and controlling their thickness would be
applicable to the semi-ceramic coating materials disclosed in Skadulis and
Jewett. Id.
However, Appellants’ argument lacks persuasive merit because it
does not address the rejection as set forth by the Examiner, which is not
based on using MacNutt’s coating application techniques to apply, and
control the thickness of the coatings of Skadulis as modified by Jewett.
Rather, as discussed above, the rejection is based on MacNutt’s disclosure
that the thickness of a coating applied to roofing granules affects the
coatings’ transparency and color, establishing that the thickness of a roofing
granule coating is a result-effective variable. In re Applied Materials, Inc.,
692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A recognition in the prior art that a
property [or a result] is affected by the variable is sufficient to find the
variable result-effective.”) Therefore, an ordinarily skilled artisan seeking to
produce coated roofing granules as suggested by the combined disclosures
of Skadulis and Jewett would have determined the optimum thickness of the
second coating layer, such as the thickness recited in claim 15, through
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nothing more than non-inventive, routine experimentation. In re Boesch,
617 F.2d 272, 276 (CCPA 1980) (“[DJiscovery of an optimum value of a
result effective variable in a known process is ordinarily within the skill of
the art.”); In re Alter, 220 F.2d 454, 456 (CCPA 1955) (“[WJhere the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.”).
Appellants’ arguments are therefore unpersuasive of reversible error.
Appellants further argue that MacNutt does not disclose optimizing
the thickness of the coating described in the reference, but instead “assumes
that a specific thickness is sought, and notes that the amount of liquid
coating composition which must be applied depends on the nature of the
coating material, and the porosity of the granules to be treated.” App.
Br. 17-18.
However, contrary to Appellants’ arguments, MacNutt explicitly
discloses that the thickness of a coating applied to roofing granules affects
the coatings’ transparency and color, establishing that the thickness of
roofing granule coatings is a result-effective variable. MacNutt page 3,
col. 2,11. 10—20. Accordingly, optimizing the thickness of the second
roofing granule coating layer suggested by the combined disclosures of
Skadulis and Jewett to arrive at a suitable thickness, such as the thickness
recited in claim 15, would have involved nothing more than non-inventive
routine experimentation. Boesch, 617 F.2d at 276.
Therefore, Appellants’ arguments are unpersuasive of reversible error,
and we accordingly sustain the Examiner’s rejection of claims 15, 43, and 44
under 35 U.S.C. § 103(a).
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Rejection III
Appellants argue claims 36 and 37 as a group. App. Br. 19-20.
Therefore, we select claim 36 as representative, and decide the appeal as to
claims 36 and 37 based on claim 36 alone. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 36 depends from independent claim 30 and requires the
algaecidal material to comprise zinc oxide. The Examiner relies on
McMahon’s disclosure of the suitability of using zinc oxide as an algaecide
in roofing granule coatings. Final Act. 6; McMahon col. 1,11. 13—15.
Appellants argue that McMahon does not suggest altering the
permeability of the roofing granule coatings described in the reference.
App. Br. 20. However, regardless of whether McMahon discloses how
porosity could or should be controlled in a roofing granule coating, the
combined disclosures of Skadulis and Jewett would have suggested algae-
resistant roofing granules having a first coating that includes pores after
being fired at high temperature, as discussed above.
In addition, one of ordinary skill in the art would have been led to
utilize zinc oxide as an algaecide in Skadulis’s roofing granule coatings
modified as suggested by Jewett, in view of zinc oxide’s known suitability
for this intended purpose, as discloses in McMahon. Therefore, the
combined disclosure of Skadulis, Jewett, and McMahon would have
suggested algae-resistant roofing granules having the same structure as the
roofing granules formed by the process recited in claim 36.
Consequently, Appellants’ arguments are unpersuasive of reversible
error, and we accordingly sustain the Examiner’s rejection of claims 36 and
37 under 35 U.S.C. § 103(a).
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Rejection IV
Claim 38 depends from independent claim 30 and requires the void­
forming material to comprise ground walnut shells or sugar.
The Examiner finds that Skadulis and Jewett do not explicitly disclose
including ground walnut shells or sugar in Skadulis’s first coating
composition modified as suggested by Jewett to include carbon black. Final
Act. 8. To address this feature, the Examiner relies on Weimer’s disclosure
that carbon black and sugar both act as a carbon source—or form carbon
residues—under thermal processing conditions. Final Act. 8; Ans. 8—9;
Weimer col. 7,11. 20-42. The Examiner finds that because carbon black and
sugar both form carbon residues when thermally processed as evidenced by
Weimer, the roofing granules suggested by the combined disclosures of
Skadulis and Jewett having carbon black in the first coating composition
would inherently have the same structure after firing at high temperature as
the product produced by the process of claim 3 8 in which pores in the first
layer are formed by sugar.5 Final Act. 8; Ans. 8—9.
Appellants argue that Weimer discloses only that vinylidene chloride
polymer is capable of forming a carbon residue on thermal decomposition,
and Appellants contend that Weimer does not evidence that carbon black
and sugar provide a carbon residue on thermal decomposition. App. Br. 23.
However, Weimer explicitly discloses that carbon black and sugar
both act as a carbon source when heated in a carbothermal reduction process.
Weimer col. 1,11. 61—65; col. 5,11. 3—7; col. 7,11. 21—23, 31, 46-47; col. 8,
5 Although the Examiner provides an alternate rationale for the rejection of
claim 38 (Final Act. 8—9), which Appellants dispute in their Appeal Brief
(App. Br. 24—25), we do not base our Decision on the Examiner’s alternate
rationale.
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11. 3—7. Accordingly, one of ordinary skill in the art reasonably would have
understood from Weimer’s disclosures that both carbon black and sugar,
when heated, yield carbon, whether through decomposition or some other
process. In addition, Appellants’ Specification discloses that sugar is a void­
forming material that decomposes at elevated temperatures, and discloses
that carbon black is also a suitable void-forming material. Spec. 4,11. 1—7; 9,
11. 9-30. Appellants’ unsupported arguments do not directly refute
Weimer’s disclosures, and Appellants do not provide any evidence that
contradicts the Examiner’s basis for relying on Weimer. App. Br. 23.
Accordingly, Appellants do not meet their burden of establishing a structural
distinction between the algae-resistant roofing granules produced by the
process recited in claim 3 8 and those suggested by the combined disclosures
of Skadulis and Jewett. Marosi, 710 F.2d at 803.
Appellants’ arguments are therefore unpersuasive of reversible error,
and we accordingly sustain the Examiner’s rejection of claim 38 under 35
U.S.C. § 103(a).
DECISION
We affirm the Examiner’s rejections of claims 1,15, and 29-45 under
35 U.S.C. § 103(a).
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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