Ex Parte Hong et al

Patent Trial and Appeal BoardFeb 25, 2019

14526480 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/526,480 10/28/2014 Keith C. Hong 20306 7590 02/25/2019 MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP 300 S. WACKER DRIVE 32NDFLOOR CHICAGO, IL 60606 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 18-367-US-CON 1024 EXAMINER FERRE, ALEXANDRE F ART UNIT PAPER NUMBER 1788 MAIL DATE DELIVERY MODE 02/25/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEITH C. HONG, GREGORY F. JACOBS, and VAN NHAN NGUYEN Appeal2017-004139 Application 14/526,480 Technology Center 1700 Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision to finally reject claims 1-8 and 10-15, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 In explaining our Decision, we refer to the Specification filed October 28, 2014 ("Spec."); Final Office Action dated February 8, 2016 ("Final Act."); Advisory Action dated June 23, 2016 ("Adv. Act."); Appeal Brief filed August 8, 2016 ("Appeal Br."); Examiner's Answer dated November 7, 2016 ("Ans."); and Reply Brief filed January 8, 2017 ("Reply Br."). 2 CertainTeed Corporation is identified as the real party in interest. Appeal Br. 1. Appeal2017-004139 Application 14/526,480 The Claimed Subject Matter Appellants' disclosure relates to functionalized roofing granules and a process for preparing functionalized roofing granules. Spec. 3--4. The claimed roofing granules, which are described as having a color coating layer, are covered with a clear, transparent or translucent outer coating composition including a functional material, such as nanoparticles of anatase titanium dioxide. Abstract; see also Spec. 7. Claim 1 is illustrative of the claimed subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief: 1. Functionalized roofing granules comprising: (a) base roofing granules having a first coating layer, the first coating layer including at least one coloring material; (b) a cured clear or transparent outer coating layer comprising an outer coating binder and at least one photocatalytic functional material, wherein said photocatalytic functional material comprises at least one photocatalytic metal oxide selected from a group consisting of titanium oxide, copper oxide and zinc oxide, and ( c) a second coating layer intermediate first coating layer and said outer coating layer, said second coating layer forming a barrier to sodium ions. Appeal Br. 12 (Claims App'x) (key disputed claim language italicized and bolded). The References The Examiner relies on the following prior art references as evidence in rejecting the claims on appeal: S uzue et al., ("Suzue") US 6,306,796 Bl 2 Oct. 23, 2001 Appeal2017-004139 Application 14/526,480 Sherman ("Sherman '145") Chopin et al., ("Chopin") Joedicke Sherman ("Sherman '884") Shiao et al., ("Shiao") US 2002/0005145 Al US 6,362,121 Bl US 6,548,145 B2 US 2004/0120884 Al US 2005/0072114 Al The Rejections Jan. 17,2002 Mar. 26, 2002 Apr. 15, 2003 June 24, 2004 Apr. 7, 2005 On appeal, the Examiner maintains (Ans. 2) the following rejections: 1. Claims 1-5, 10, 11, 13, and 15 are rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Joedicke in view of Sherman '884 and Chopin ("Rejection 1 "). Ans. 2. 2. Claim 6 is rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Joedicke in view of Sherman '884 and Chopin, and further in view of Sherman '145 ("Rejection 2"). Ans. 5. 3. Claims 7 and 8 are rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Joedicke in view of Sherman '884 and Chopin, and further in view of Suzue ("Rejection 3"). Ans. 5. 4. Claims 12 and 14 are rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Joedicke in view of Sherman '884 and Chopin, and further in view of Shiao ("Rejection 4"). Ans. 6. OPINION Having considered the respective positions advanced by the Examiner and Appellants in light of this appeal record, we affirm the Examiner's rejections based on the fact-finding and reasoning set forth in the Answer, 3 Appeal2017-004139 Application 14/526,480 Advisory Action, and Final Office Action, which we adopt as our own. We add the following. Rejection 1 Claims 1-5. 10. 11. 13. and 15 Appellants argue claims 1-5, 10, 11, 13, and 15 as a group. Appeal Br. 3. We select claim 1 as representative and claims 2-5, 10, 11, 13, and 15 stand or fall with claim 1. 37 C.F.R. Â§ 4I.37(c)(l)(iv). The Examiner determines that the combination of Joedicke, Sherman '884, and Chopin suggests colored granules satisfying all of the limitations of claim 1 and thus, concludes that the combination would have rendered the claim obvious. Ans. 2--4 (citing Joedicke, 4:8-11, 4:44, 3:50- 53, 5:25-28, 5:40-6: 1--4, 6:63---67; Sherman '884, Abstract, ,r,r 10, 84, 114, 177, 184,214; Chopin, Abstract, 5:23-39, 9:46---61, 10:25-33). Appellants argue that the Examiner's rejection should be reversed because no prima facie case has been established. Appeal Br. 6. Appellants principally argue that the Examiner has not provided a reasoned explanation with rational underpinnings for the combination of Joedicke, Sherman '884, and Chopin. Id. at 6; see also Reply Br. 1 ("The Examiner has not provided a reasoned explanation for the rejection of claims 1-5, 10-11, 13 and 15 under 35 U.S.C. 103 over Joedicke, Sherman and Chopin."). In particular, Appellants contend that the "Examiner has not explained why one of ordinary skill in the art would expect 'an excessively large amount of alkali metals' to diffuse from the non-glass color coating of the present invention into the photocatalytic coating." Appeal Br. 6 ( quoting Chopin, 10:29-30). See also Reply Br. 2 ("The Examiner has not explained why one of ordinary skill in the art would expect migration of an 4 Appeal2017-004139 Application 14/526,480 'excessively large amount of alkali metals' from Joedicke's insolubilized sodium silicate at elevated temperatures."). Appellants also argue that Joedicke's disclosure regarding kiln filing granules at a very low temperature in order to produce as transparent a coating as possible (Joedicke, 3:1--4, 3:49--46) is inconsistent with the high temperatures employed by Sherman '884 (Sherman '884 ,r 177) and by Chopin ( Chopin, 10 :21-24) to anneal their photocatalytic coatings. Appeal Br. 6-7. Appellants contend that "[ n ]othing in the cited art teaches, discloses, or suggests that Joedicke's roofing granules should be annealed at high temperatures." Id. at 7. We do not find Appellants' arguments persuasive of reversible error in the Examiner's rejection. On the record before us, we find that a preponderance of the evidence and sound technical reasoning support the Examiner's analysis and determination (Ans. 2--4, 7-8) that the combination of Joedicke, Sherman '884, and Chopin suggests granules satisfying all of the limitations of claim 1, and the Examiner's conclusion that the combination would have rendered the claim obvious. Joedicke, 4:8-11, 4:44, 3:50-53, 5:25-28, 5:40-6:1--4, 6:63-67; Sherman '884, Abstract, ,r,r 10, 84, 114, 177, 184,214; Chopin, Abstract, 5:23-39, 9:46-61, 10:25-33. Contrary to what Appellants argue, the Examiner does provide a reasoned basis with rational underpinnings and identifies a preponderance of evidence in the record to evince why one of ordinary skill would have combined the teachings of the cited references to arrive at Appellants' claimed roofing granules. Ans. 3--4, 7-8. See also KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) ( explaining that any need or problem known 5 Appeal2017-004139 Application 14/526,480 in the art can provide a reason for combining the elements in the manner claimed). In particular, as the Examiner finds (Ans. 7), Chopin teaches that it was known in the art at the time of the invention that alkali ions, particularly sodium ions, diffuse into Ti02 layers and thereby harm the functionality of the layer. Chopin, 5:23-29. As the Examiner further finds (Ans. 7), Chopin teaches that the diffusion of the ions occurs when the substrate is a glass material or when the coatings are subjected to relatively long and/or high temperature heat treatment, which causes migration of the alkali ions, and also teaches inserting a layer which prevents migration of sodium ions between the substrate and the photocatalytic layer to prevent poisoning thereof. Chopin, 10:25-33 (disclosing that "a barrier layer to alkali metals can be useful between the substrate and the coating"). As the Examiner explains (Ans. 7-8), although Chopin is not directed to roofing granules, the reference is, nonetheless, analogous art because it solves a known problem in the art, i.e., harm to photocatalytic Ti02 materials from sodium ion migration, by applying a layer in between the photocatalytic material and the layer that would be the source the sodium ion migration. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) ( explaining that a reference may qualify as analogous art even "if the reference is not within the field of the inventor's endeavor"). Regarding the combined teachings of Joedicke and Sherman '884 with Chopin, as the Examiner finds (Ans. 8), at column 3, lines 27-56, Joedicke discloses color coatings that are made of a "sodium silicate" binder (Joedicke, 3:49-50 ("Si02/Na20")) which comprises a coloring pigment (id. at 3:36 ("Metallic Pigment Paste")); and Sherman '884 discloses that the 6 Appeal2017-004139 Application 14/526,480 application of a photocatalytic layer to a substrate requires annealing the layer "at a temperature of approximately between 400Â° C. and 650Â° C. for 30 minutes to 5 hours" (Sherman '884 ,r 177), which is similar to and actually overlaps the annealing temperature and time period ranges Chopin discloses for forming photocatalytic layers (compare Chopin, 10:21-24 (disclosing annealing "at a temperature of approximately 500 to 500Â° C. for a period of time which can range from 1 minute to 3 hours") with, Sherman '884 ,r 177). Thus, as the Examiner determines (Ans. 8), based on the combined teachings of the cited art, one of ordinary skill would have reasonably understood that the annealing step for the photocatalytic layer coated onto the sodium silicate binder of the color coating of Joedicke's roofing granules would have resulted in the migration of sodium ions from the color coating into the photocatalytic layer. It follows, therefore, as the Examiner concludes (Ans. 8), that it would have been obvious to one of ordinary skill to have placed a sodium ion diffusion blocking layer between the colored coating and the photocatalytic layer to prevent this effect. Appellants fail to direct us to persuasive evidence or provide an adequate technical explanation to establish why the Examiner's articulated reasoning for combining the teachings of the prior art to arrive at the claimed invention lacks a rational underpinning or is otherwise based on some other reversible error. Appellants' arguments at pages 6-7 of the Appeal Brief and pages 1- 2 of the Reply Brief are not persuasive of reversible error because Appellants attack the references individually rather than the combined teachings of the prior art as a whole. One cannot show non-obviousness by attacking references individually where the rejection is based on a 7 Appeal2017-004139 Application 14/526,480 combination of references. In re Keller, 642 F.2d 413,425 (CCPA 1981). Appellants' assertions are premised on what Appellants contend the Chopin and Joedicke references each teaches individually, and not the combined teachings of the cited references as a whole and what the combined teachings would have suggested to one of ordinary skill in the art. Moreover, as previously discussed above, we find that a preponderance of the evidence supports the Examiner's analysis and factual findings as to what the combined teachings of the prior art, considered as a whole, would have taught or reasonably suggested to one of ordinary skill in the art. Appellants' disagreement as to the Examiner's factual findings and reasoning for combining the references, without more, is insufficient to establish reversible error. Cf SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) ("[M]ere statements of disagreement ... as to the existence of factual disputes do not amount to a developed argument."). We do not find Appellants' argument that J oedicke' s disclosure regarding kiln filing granules at a very low temperature in order to produce as transparent a coating as possible is inconsistent with the high temperatures employed by Sherman '884 and by Chopin to anneal their photocatalytic coatings (Appeal Br. 6-7) persuasive of reversible error based on the fact-finding and reasoning provided by the Examiner at pages 8-9 of the Answer. Appellants' argument in this regard is misplaced and, again, appears to be premised on what the cited references each teaches individually, and not the combined teachings of the references as a whole. In particular, as the Examiner finds (Ans. 8), a separate, higher firing temperature would be required for the formation of the photocatalytic layer 8 Appeal2017-004139 Application 14/526,480 in both Sherman '884 and Chopin (Sherman '884 ,r 177; Chopin, 10:21-24), and would cause the migration of sodium ions as taught by Chopin (Chopin, 10:25-33). As the Examiner further finds (Ans. 8-9), Joedicke, on the other hand, does not contemplate a higher firing temperature because the coating formed is not a photocatalytic coating as disclosed in Sherman '884 and Chopin. Moreover, as the Examiner finds (Ans. 9), Appellants do not identify or direct us to persuasive evidence in the record to suggest that the higher firing temperature would adversely affect or render Joedicke's product unsatisfactory for its intended purpose. Attorney argument is not evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that mere lawyer's arguments or conclusory statements, which are unsupported by concrete factual evidence, are entitled to little probative value). Claims 2. 5. and 11 Appellants present an additional argument in response to the Examiner's rejection of claims 2, 5, and 11. In particular, Appellants assert that the Examiner's rejection of claims 2, 5, and 11 should be reversed because "one of ordinary skill in the art would have no motivation to provide a barrier layer to prevent alkali ions from migrating to a layer which already contains alkali." Appeal Br. 7. We do not find Appellants' contention persuasive of reversible error because it is conclusory and Appellants do not provide an adequate technical explanation to support it. De Blauwe, 736 F.2d at 705. Moreover, based on the fact-finding and reasoning provided by the Examiner at pages 2--4 and 7-9 of the Answer, we determine that a 9 Appeal2017-004139 Application 14/526,480 preponderance of evidence supports the Examiner's determination that it would have been obvious to use an alkali ion barrier beneath the photocatalytic layer in order to prevent migration of sodium ions from the granule and inner colored layer into the photocatalytic layer. In particular, as the Examiner finds (Ans. 9), the alkali metal binder is one of many materials within the scope of claim 2 and the binder material used in Sherman '884 does not contain alkali metals (see Sherman '884 ,r,r 177, 184, 214). Thus, as the Examiner explains and concludes (Ans. 4, 9), it would have been obvious to one of ordinary to provide a barrier layer to prevent migration alkali ions from migrating into the layer. Appellants' assertions at page 7 of the Appeal Brief, without more, are insufficient to rebut or otherwise establish reversible error in the Examiner's determination in this regard. Claims 13 and 15 Appellants appear to raise an additional argument in response to the Examiner's rejection of claims 13 and 15. Appeal Br. 7. In particular, Appellants assert that the "Examiner's explanation of the rejection of claims 13 and 15 is not understood as neither claim requires a colloidal silica binder." Id. at 7. We do not find this argument persuasive because Appellants do not adequately explain or specify what findings or aspects of the Examiner's rejection they claim are unclear or to have misunderstood. Moreover, a naked assertion regarding what the claims recite, without more, is not an argument in support of separate patentability. Cf In re Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011); 37 C.F.R. Â§4I.37(c)(l)(iv). 10 Appeal2017-004139 Application 14/526,480 Accordingly, we affirm the Examiner's rejection of claims 1-5, 10, 11, 13, and 15 under 35 U.S.C. Â§ 103(a) as obvious over the combination of Joedicke, Sherman '884, and Chopin. Rejections 2, 3, and 4 In response to the Examiner's Rejections 2, 3, and 4, respectively, Appellants rely on the same arguments previously presented above in response to the Examiner's rejection of claim 1 (Rejection 1 ). See Appeal Br. 8 ("Since the independent claim is not obvious over the cited art, dependent claim 6 including further limitations must also be patentable over the cited art.") (Rejection 2); Appeal Br. 8 ("Since claims 7 and 8 merely add further limitations [to claim 1 ], they must also be patentable over the cited art.") (Rejection 3); Appeal Br. 11 ("Since claims 12 and 14 merely add further limitations [to claim 1 ], they must also be patentable over the cited art."). Accordingly, based on the findings and technical reasoning provided by the Examiner and for principally the same reasons discussed above for affirming the Examiner's Rejection 1, we affirm the Examiner's Rejections 2, 3, and 4. DECISION/ORDER The Examiner's rejections of claims 1-8 and 10-15 are affirmed. It is ordered that the Examiner's decision is affirmed. 11 Appeal2017-004139 Application 14/526,480 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 12