Ex Parte Hong et al

Patent Trial and Appeal Board

Sep 29, 2017

11379733 (P.T.A.B. Sep. 29, 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.
11/379,733 04/21/2006 Keith C. Hong 2006-042 1344
27569 7590
PAUL AND PAUL
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
EXAMINER
VETERE, ROBERT A
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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 MING L. SHIAO1
Appeal 2016-002215
Application 11/379,733
Technology Center 1700
Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and MERRELL C.
CASHION, JR, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision2 finally rejecting claims 1, 3-20, 25, 26, and 29-36,
which are all of the claims pending in the above-identified application. An
1 Appellants identify the real party in interest as “Certain Teed Corporation,
a Delaware corporation having a principal place of business at, 750 East
Swedesford Road, Valley Forge, PA 19482[.]” Appeal Brief filed July 20,
2015 (“Appeal Br.”) 2.
2 Final Action entered December 9, 2014 (“Final Act.”) 2-5; and Examiner’
Answer entered October 15, 2015 (“Ans.”) 2-5.
Appeal 2016-002215
Application 11/379,733
oral hearing was held on September 26, 2017.3 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The subject matter of the claims on appeal is directed to a process for
making “roofing granules having high coating coverage or coating
encapsulation^]” Claim 1; Spec. 1,11. 9-11. Details of the appealed subject
matter are recited in illustrative claim 1,4 which is reproduced below from
the Claims Appendix of the Appeal Brief (with disputed limitations
italicized):
1. A process for producing roofing granules having high
coating coverage or coating encapsulation, the process
comprising:
(a) suspending selected base particles in a first fluid
medium to separate the individual particles;
(b) depositing a continuous first coating material on
the surface of each of the individual particles', and
(c) curing the first coating material to form a
continuous first coating having a substantially uniform
thickness on the surface of each of the individual particles
resulting in coated particles,
3 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
4 Appellants argue common limitations in independent claims 1, 25, and 35
and do not separately argue the individual limitations of the remaining
claims on appeal. Appeal Br. 6-12. Therefore, for purposes of this appeal,
we limit our discussion to the common limitations in independent claims 1,
25, and 35. 37 C.F.R. § 41.37(c)(l)(iv) (2012).
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Application 11/379,733
(d) suspending the coated particles in a second fluid
medium to separate the individual coated particles;
(e) depositing a second coating material on the surface
of each of the coated particles', and
(f) curing the second coating material to form a second
coating on the surface of each of the coated particles resulting
in roofing granules.
Appeal Br. 14, Claims Appendix.
The Examiner maintains, and Appellants seek review of, the rejection
of claims 1, 3-20, 25, 26, and 29-36 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Shiao (US 2005/0072114 A1
published Apr. 7, 2005) and Sherman (US 6,653,356 B2 issued Nov. 25,
2003). Final Act. 2-5; Ans. 2-6; Appeal Br. 6-12; Reply Brief filed
December 15, 2015 (“Reply Br.”) at 2-7.
DISCUSSION
Upon consideration of the evidence relied upon by the Examiner and
Appellants in light of each of Appellants’ contentions,5 we find no reversible
error in the Examiner’s decision rejecting claims 1, 3-20, 25, 26, and 29-36.
5 Any new arguments raised in the Reply Brief, which could have been
raised in the Appeal Brief, will not be considered. 37 C.F.R. §
41.37(c)(l)(iv) (“Except as provided for in §§ 41.41,41.47 and 41.52, any
arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal.”); 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.”).
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Application 11/379,733
Accordingly, we sustain the Examiner’s § 103(a) rejection of the above
claims substantially for the reasons set forth in the Final Action and the
Answer. We add the following primarily for emphasis and completeness.
The Examiner finds, and Appellants do not dispute, that
Shiao teaches a method of forming roofing granules comprising
the steps of: coating inert mineral particles with a first coating,
curing the coating to form coated base particles, coating the
base particles with a second coating and curing the second
coating to obtain roofing granules 0014). Shiao also teaches
that the coating is uniform around the base particles
(i.e. continuous with a uniform thickness) 0032) and that
each coating covers the entire particles (Fig. 2).
Compare Final Act. 4, with Appeal Br. 6-12; see also Shiao 2, 14, 32,
and 52 (Table 1) and Fig. 2. The Examiner also finds, and Appellants do
not dispute, that Shaio teaches that “the particles are cured in a fluidized bed
fl[ 0033).” Compare Final Act. 4, with Appeal Br. 6-12. The Examiner
acknowledges that Shaio does not mention that its coating can be conducted
in a fluidized bed, where the particles are suspended, as required by claims
1, 25, and 35. Final Act. 4.
To account for this missing feature, the Examiner relies upon the
disclosure of Sherman. Id. The Examiner finds that Sherman teaches “that
[the] use of a fluidized bed is a suitable alternative to direct mixing when
applying a coating to roofing granules (17:39-57).” Id.; see also Sherman
col. 9,11. 50-58, col. 17,11. 39-57, and col. 29,11. 5-9.
Based on these findings, the Examiner concludes that one of ordinary
skill in the art would have led to use either a known direct mixing coating
technique or a known fluidized bed coating technique (utilizing a fluidized
bed to suspend and coat the particles) for coating particles in the method
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Appeal 2016-002215
Application 11/379,733
taught by Shiao, with a reasonable expectation of successfully coating
Shiao’s roofing particles. Final Act. 4-5.
Appellants contend that Sherman does not disclose that the fluidized
bed and direct coating methods or techniques “are generally equivalent for
applying any coating to the roofing granules. Instead, the disclosure [of
Sherman] is specific to ‘nano-particulates of the sole coatings.’” Appeal Br.
6-7. However, we are not persuaded by this contention.
As the Examiner indicates, Sherman discloses that both the fluidized
bed and direct coating methods for coating particles were known at the time
of the invention. Final Act. 4; Sherman, col. 17,11. 44-47 (“Coatings may
be applied to particles, such as powders and granules, by direct mixing, fluid
bed application, or other suitable application procedures.”) Rather than
specifying the type of coating conditions used in the fluidized or direct
coating methods (e.g., sufficient air flow to suspend particles, the viscosity
of a coating solution, etc.), Sherman leaves it to one of ordinary skill in the
art to employ the optimum conditions for the nano-particulate titanium
dioxide of the sole coatings. Id. Although Sherman mentions forming
uniform surface coatings of nano-particulate titanium dioxide on powders or
granules bymaintaining the powders or granules and the nano-particulate
titanium dioxide of the sole coatings at both above or below their respective
isoelectric points, nothing in Sherman indicates that these conventional
coating techniques or methods for coating particles, such as granules, are not
suitable for coating the roofing granules taught by Shiao. Id. at col. 17,11.
44-57. Moreover, implicit in Sherman’s disclosure of “coatings.. .particles,
such as powders and granules, by [conventional] direct mixing, fluid bed
application, or other suitable application procedures[,]” without specifying
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Application 11/379,733
mixing and coating conditions, is that the determination of optimum
conditions for coating particles with a given coating solution in such
conventional coating methods is well within the ambit of one of ordinary
skill in the art. In re Preda, 401 F.2d 825, 826-27 (CCPA 1968) (“[I]n
considering the disclosure of a reference, it is proper to take into account not
only specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom.”); KSR
Inti Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[Analysis [of whether
the subject matter of a claim would have been obvious under § 103] need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”)
(Emphasis added.)
Appellants contend that “[o]ne of ordinary skill in the art looking to
form continuous coatings of the type described in [SJhiao could not expect
that the coatings of Shiao could be formed using the fluidized bed mentioned
by Sherman.” Appeal Br. 7. In support of this contention, Appellants refer
to Chen, Xiaobet al., Titatium Dioxide nanomaterials: Synthesis, Properties,
Modifications, and Applications,” Chem. Rev., vol. 107, No. 7, pp. 2891-
2959 (2007) for the proposition that “the physical and chemical properties of
materials change as their size approaches the nanoscale[,]”; “Importance of
Particle Size in Liquid Coatings,” Product Finishing Article Archive,
http;/www.pfonline.com/119802.html for the proposition that “the suitability
of coating processes (e.g., brush, roller, airless spray, etc.) depend upon the
viscosity and rheology of a coating composition” and L.H. Hakim, et al.,
“Nanocoating Individual Silica Nanoparticles by Atomic Layer Deposition
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Application 11/379,733
in Fluidized Bed,” Chem. Vap. Deposition, Vol. 11, pp. 420-425 (October
2005) for the proposition that “the use of the atomic layer deposition
(‘ALD’) technique to apply conform coating to nanoparticulates, such as
nano silica.” Appeal Br. 7-8. However, nothing in these references
indicates that the conventional fluidized bed coating method for coating
granules discussed in Sherman is not suitable for coating the roofing
granules taught by Shiao. Nor do these reference indicate that the
determination of the optimum conditions for given granules and coating
compositions in the conventional fluidized bed coating method for coating
granules discussed in Sherman is not within the ambit of one of ordinary
skill in the art. We also note that Shiao, like Sherman, discloses using
titanium oxide pigment and aluminum oxide solar-reflective additive
particles in its coating solution containing an alkali metal silicate binder,
wherein the particles may have a size between 0.1 micrometer (100
nanometer) and 5 micrometers. Compare Shiao lfi|70, 73, 82, 87, and 91,
with Sherman, col. 23,11. 29-39, and col. 28,11. 15-32.
Under the above circumstances, we determine that a
preponderance of the evidence weighs in favor of obviousness of the
claimed subject matter within the meaning of 35 U.S.C. § 103(a).
ORDER
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 1, 3-20,
25, 26, and 29-36 under 35 U.S.C. § 103(a) is AFFIRMED; and
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Application 11/379,733
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R. §
1.136(a)(l)(iv).
AFFIRMED
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