Ex Parte Shiao et al

Patent Trial and Appeal Board

Apr 15, 2016

12950460 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/950,460
27569 7590
PAUL AND PAUL
FILING DATE
11/19/2010
04/19/2016
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
Ming Liang Shiao
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.
2010-119 7790
EXAMINER
PENNY, TABATHAL
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
04/19/2016 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@PAULANDPAUL.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 MING LIANG SHIAO, GREGORY F. JACOBS, and
SEANX.ZHOU
Appeal2014-002686
Application 12/950,460
Technology Center 1700
Before PETER F. KRATZ, MARK NAGUMO, and GEORGE C. HOUSEL,
Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1, 2, 4, 5, 10, 11, and 13-17. We have
jurisdiction pursuant to 35 U.S.C. § 6. An Oral Hearing was conducted on
April 12, 2016.
Appellants' claimed invention is directed to a process of preparing
roofing granules comprising the step of including composite nanoparticles in
the coating layer. Claim 1 is illustrative and reproduced below:
1. A process for preparing roofing granules, the process comprising:
(a) providing granule cores;
(b) providing a coating material;
( c) coating the granule cores with the coating material to form a
Appeal2014-002686
Application 12/950,460
coating layer having an exterior surface;
( d) including composite nanoparticles in the coating layer; and
( e) curing the coating layer.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Joedicke
V ampoulle
Shiao
US 2007/0065641 Al
US 2008/0026183 Al
US 2008/0241472 Al
Mar. 22, 2007
Jan. 31, 2008
Oct. 2, 2008
The Examiner maintains the following grounds of rejection:
Claims 1, 4, 10, 11, and 13-17 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Shiao. Claim 2 stands rejected under 35
U.S.C. § 103(a) as being unpatentable over Shiao in view of Joedicke.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Shiao in view of Vanpoule.
We reverse the stated rejections. Our reasoning follows.
The Examiner has determined that Shiao describes a method of
preparing roofing granules that includes providing a granule core, providing
coating material, coating the granule core with the coating material to form a
coating layer, and curing the coating layer in a manner that corresponds to
steps (a) through (c) and (e) of claim 1 (Final Office Action 2; Shiao,
abstract, i-fi-f l 02, 103). Furthermore, the Examiner has determined that Shiao
does not explicitly teach including composite nanoparticles in the coating
layer as required by step (d) of claim 1 (id.).
However, the Examiner maintains that (id.):
Shiao teaches combining the same materials as those
claimed and taught by applicant in the same manner as is taught
by applicant (see pending claims 4, 10, 13, 15, and 17 as well as
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Application 12/950,460
spec. examples) therefore the agglomeration between the
particles in the coating, i.e. formation of composite particles
within the coating, which occurs as a result of the claimed
mixture would be inherent to the process of Shiao.
Moreover, the Examiner finds that "the prior art exemplifies the
applicant's claimed process and composition, so the claimed aggregation
among particles such as to form composite particles relating to the process
and composition are present in the prior art" (Final Action 3). In other
words, the Examiner interprets the claim term "composite nanoparticles" to
embrace aggregated nanoparticles and finds that the applied teachings of
Shiao are sufficient to establish the inherency of the inclusion of composite
nanoparticles in the coating layer of Shia, as required by claim 1, step ( d). 1
The Examiner further reasons that "[a]bsent an objective evidentiary
showing to the contrary, the addition of the physical properties to the claim
language fail to provide patentable distinction over the prior art of record"
(id.).
Appellants, on the other hand, argue that Shiao' s disclosure of using
dispersed nanoparticles as part of the coating layer is not accompanied by
sufficient fact findings and explanation so as to establish that the
nanoparticles used in the coating of Shiao would necessarily aggregate to
form composite particles particularly given that the Examiner has not shown
that Shiao describes a process that is the same as Appellants' process (App.
Br. 8-14; Reply Br. 1-2). Consequently, Appellants urge that the Examiner
1 The subject Specification supports the Examiner's interpretation of the
claim term "composite nanoparticles" in so far as at least being inclusive of
aggregated nanoparticles (Spec. 6, 11. 3---6; 7, 11. 18-22).
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Appeal2014-002686
Application 12/950,460
has not established that Shiao inherently describes "including composite
nanoparticles in the coating layer" as a method step as required by step ( d)
of claim 1.
We concur with Appellants because the Examiner has not furnished
an adequate factual foundation to establish that the nanoparticles included
with the coating binder in the coating composition of Shiao necessarily
results in aggregation/ agglomeration of the nanoparticles so as to furnish a
method step of including composite nanoparticles in Shiao' s coating layer.
For example, the Examiner has not detailed how any of Shiao's examples
provide a substantially identical process to that disclosed/exemplified by
Appellants in their Specification so as to establish the inherency of Shiao
practicing a method that provides for a step of including composite
nanoparticles in the coating layer of Shiao. In particular and to the extent
the Examiner references Shiao's Example 1 by referring to paragraph 130 of
Shiao in addressing commonly rejected dependent claim 4, we observe that
Example 1 of Shiao does not indicate the inclusion of aggregated/composite
nanoparticles in the coating layer. The Examiner does not present a
comparison of Example 1 of Shiao with any of Appellants' specifically
disclosed embodiments/examples so as to reasonably establish sufficient
correspondence in the materials and method of Example 1 of Shiao with any
of Appellants' disclosed embodiments or exemplified methods so as to
support an inherency determination. For instance and in Appellants'
example 1, a nanoparticle aggregate powder available from HeiQ AGS-20
powder2 is employed in admixture with sodium silicate binder and kaolin
2 Nanoparticle aggregates available from HeiQ Materials AG, Zurzach,
Switzerland (Spec. 13, 11. 4--7).
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Application 12/950,460
clay as a coating material whereas the referenced example 1 of Shiao does
not provide a step of including such a nanoparticle aggregate powder
material as part of the coating material (Spec. 15; Example 1 ).
It follows that we shall reverse the Examiner's anticipation rejection.
Each of the Examiner's separate obviousness rejections pertaining to
certain dependent claims rely on an additional cited prior art. However, the
Examiner does not articulate how the additional references obviate the
deficiency in the base anticipation rejection, on which the obviousness
rejections are predicated (Final Office Action 4--5; App. Br. 16, 23).
Accordingly, we reverse the Examiner's obviousness rejections.
CONCLUSION
The Examiner's decision to reject the appealed claims is reversed.
REVERSED
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