Ex Parte Kelly

Patent Trial and Appeal Board

Dec 19, 2012

10940267 (P.T.A.B. Dec. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS L. KELLY
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Appeal 2010-011981
Application 10/940,267
Technology Center 3600
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Before STEVEN D. A. MCCARTHY, RICHARD E. RICE, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Thomas L. Kelly (“Appellant”) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1, 4-11, and 14. We have
jurisdiction under 35 U.S.C. § 6(b).

The Claimed Subject Matter
Claim 1 is representative of the claimed subject matter and is
reproduced below.
1. A low cost roof system comprising:
a roof deck including overlapping flutes;
a sealant material disposed only at locations on the roof
deck that would otherwise be fluid transmissive, said locations
consisting of:
areas created by penetration of a fastener through said
roof deck and into a structural carrying member of the roof
deck, said sealant material surrounding an upper extent of said
fastener in a manner that substantially fills said overlapping
flutes of said roof deck, [and]1 areas created by at least one of
an opening defined by an upper extent of a C-channel, a closed
end of said C-channel, a lower extent of said C-channel, and
portions of a weight board, insulation material, and the roof
deck disposed in proximity to an open end of said C-channel,
and
an opening defined by at least one edge nailer and
portions of said weight board, said insulation material, the roof
deck and an additional nailer disposed in proximity to said edge

1 Appellant has indicated agreement with an amendment proposed by the
Examiner to claim 1 in order to address informalities. See App. Br. 11.
Since the proposed amendment does not affect our decision in this appeal,
we have indicated the two changes to which Appellant agrees in brackets in
the quoted claim above. We express no opinion as to any claim objections
entered by the Examiner. See Ex parte Frye, 94 USPQ2d 1072, 1077-78
(BPAI 2010).
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nailer, said additional nailer being disposed upwardly adjacent
of said [weight] board;
wherein said opening defined by said C-channel and said
opening defined by said edge nailer are both substantially
enclosed, filled with said sealant material such that each
defining element of each of said openings is in contact with said
sealant material, and disposed adjacent to an edge of the roof;
wherein said insulation is upwardly adjacent the roof
deck, wherein at least a portion of said insulation is disposed
upwardly adjacent of said sealant material, wherein at least a
portion of said sealant material is disposed upwardly of and in
contact with said upper extent of said fastener, and wherein at
least a portion of said insulation is disposed upwardly
of said upper extent of said fastener;
wherein said weight board is disposed upwardly adjacent
the insulation; and
a waterproofing membrane upwardly adjacent the weight
board.

References
The Examiner relies upon the following prior art references:
Williamson US 5,950,383 Sept. 14, 1999
Kelly B2 US 6,006,482 Dec. 28, 1999
Kelly C US 6,092,344 July 25, 2000
Kelly A US 6,256,957 B1 July 10, 2001

Rejections
The Examiner makes the following rejections:
I. Claims 1, 4, 5, 8, and 11 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Williamson and Kelly C;

2 The Examiner and Appellant refer to three of the cited prior art references
as “Kelly A,” “Kelly B,” and “Kelly C,” or “KA,” “KB,” and “KC,”
respectively. See, e.g., Ans. 4; App. Br. 11. To avoid confusion we adopt
the Examiner’s use of “Kelly A,” “Kelly B,” and “Kelly C.”
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II. Claims 6, 7, 9, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Williamson, Kelly C, and Kelly A; and
III. Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Williamson, Kelly C, and Kelly B.

SUMMARY OF DECISION
We REVERSE.
We enter a NEW GROUND OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.50(b) against claims 4 and 5 under 35 U.S.C.
§ 112, second paragraph, as indefinite. Claims 4 and 5 depend from claim 3.
Appellant, however, cancelled claim 3 prior to filing this appeal without
amending claims 4 and 5 to remove dependency on claim 3. See
Amendment (dated Apr. 28, 2009) at 3, 5 (cancelling, inter alia, claim 3).
Thus, we are presented with two claims for which we are unable to
determine each and every element of the claims.
Accordingly, we conclude that claims 4 and 5 are indefinite for failing
to particularly point out and distinctly claim the subject matter which
Appellant regards as the invention. 35 U.S.C. § 112, ¶ 2. Since claims 4
and 5 are indefinite, the prior art rejections must fall, pro forma, because
they necessarily are based on speculative assumptions as to the scope of the
claims. See In re Steele, 305 F.3d 859, 862-63 (CCPA 1962).

OPINION
Rejection I – Williamson and Kelly C
The Examiner concluded that Williamson and Kelly C render obvious
the subject matter of claims 1, 4, 5, 8, and 11. Ans. 3-8. With respect to
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claim 1, the Examiner found that Williamson discloses a roof system
including some elements of the claim. Id. at 4. The Examiner, however,
found that Williamson did not
expressly disclose an area created by an opening defined by a
C-channel and portions of a weight board, insulation, and a roof
deck, wherein the C-channel opening is substantially enclosed,
the C-channel disposed adjacent the edge of a roof, the weight
board disposed above the insulation, or a membrane above the
weight board.
Id. at 4-5. The Examiner thus relied on Kelly C for the disclosure of these
elements. Id. at 5. The Examiner concluded that
it would have been obvious to a person of ordinary skill in the
art to modify the roof of Williamson by adding a weight board
between the insulation and the membrane as taught by Kelly C,
in order to prevent the insulation from being lifted up by the
wind . . . [and] by providing a C-channel adjacent the roof edge
and enclosing the deck, insulation, and weight board as taught
by Kelly C, in order to provide the system with a clean,
common ending structure for the various roofing layers as is
common in the art.
Id. The Examiner acknowledged that neither Williamson nor Kelly C
discloses that the “C-channel opening” is “substantially filled with sealant
such that each defining element of the opening is in contact with the
sealant,” but concluded that
[i]t would have been obvious to a person of ordinary skill in the
art to additionally apply sealant as taught by Williamson into
the space between the C-channel and the members it surrounds
such that the sealant contacts each member of the group, in
order to ensure a strong and secure connection between the
members and to seal the joint from any moisture which may
penetrate the space between the C-channel and the roofing
layers.
Id. at 5-6.
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Appellant makes two principal arguments in response. First,
Appellant asserts that Kelly C does not disclose the claimed “opening”
because Kelly C teaches that “the enclosed weight board 32, insulation
material 30, and roof deck 22 are disposed to abut the closed end of the C-
channel 40” and that “this abutment precludes any formation of the opening
defined and recited in [Appellant’s] claims.” App. Br. 14. Thus, the
claimed opening that is substantially filled with sealant is not taught by the
proposed combination of Williamson and Kelly C. Id. at 14-15.
Second, Appellant asserts that the Examiner failed to provide a
sufficient reason why one of ordinary skill in the art would have created the
claimed “opening” simply to fill it with sealant. Id. at 15; Reply Br. 3-4.
While Appellant accepts that the use of sealants in a roofing system is well
known,
it would be counterintuitive to one of ordinary skill in the art to
intentionally create the opening recited in [Appellant’s] claims.
On the contrary, sealant in the prior art (and the cited art in
particular) is only used to seal openings/joints that cannot be
avoided. Intentional creation of an opening for the purpose of
using additional sealant . . . is not contemplated in the prior art
in general, and certainly not taught in the cited art of record.
Reply Br. 4.
We disagree with the Examiner’s conclusion that Williamson and
Kelly C render the subject matter of claims 1, 8, and 11 obvious for at least
two reasons. First, Kelly C discloses that the deck, insulation, and weight
board abut the C-channel adjacent the roof edge. See, e.g., Kelly C, fig. 3.
In contrast, Appellant’s Figure 1, illustrating the claimed “opening,” shows
sealing material 22 disposed in an opening between the closed end of the C-
channel 42 and portions of deck 14, insulation 24 and cover board 30. See
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Spec., fig. 1. Thus, we find that the Examiner has not shown by a
preponderance of the evidence that Kelly C discloses the claimed “opening.”
Second, even assuming that Kelly C discloses an opening, the
Examiner has not explained why one of ordinary skill in the art would have
been prompted to combine Kelly C’s opening with the roofing system of
Williamson when the intentional creation of openings in a roofing system
would have been counterintuitive. The Examiner’s finding that it would have
been obvious to fill openings in a roofing system with sealant does not
explain why the skilled artisan would intentionally create an opening in the
first place.
Accordingly, we do not sustain Rejection I as applied to claims 1, 8,
and 11.3
Rejections II and III
Claims 6, 7, 9, 10, and 14 depend from claims 1 or 8 and thus also
require an “opening” as discussed supra. Rejection II, based on Williamson,
Kelly C, and Kelly A, and Rejection III, based on Williamson, Kelly C, and
Kelly B, relied on Kelly C for the disclosure of this element of the claims.
Neither rejection, however, provides any additional rationale as to why one
of ordinary skill in the art would have been prompted to create an “opening”
as claimed.
Accordingly, for the same reasons discussed with respect to Rejection
I, we do not sustain Rejections II and III.

3 We do not reach whether Rejection I as applied to claims 4 and 5 should be
sustained because we do not know whether those claims also contain the
“opening” element as discussed in our new ground of rejection supra.
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DECISION
The Examiner’s decision rejecting claims 1, 4-11, and 14 as reflected
in Rejections I, II, and III are reversed.
We enter a new ground of rejection of claims 4 and 5 as indefinite
under 35 U.S.C. § 112, second paragraph, for failing to particularly point out
and distinctly claim the subject matter which Appellant regards as the
invention.

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that an Appellant:
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)
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