Ex Parte Shiao et al

Patent Trial and Appeal BoardJun 15, 2016

13043036 (P.T.A.B. Jun. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/043,036 27569 7590 PAUL AND PAUL FILING DATE 03/08/2011 06/17/2016 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. 2011-002 8112 EXAMINER VAN SELL, NATHAN L ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 06/17/2016 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 and HUSNU KALKANOGLU1 Appeal2014-004932 Application 13/043,036 Technology Center 1700 Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134, Appellants appeal from the Examiner's rejections under 35 U.S.C. Â§ 103(a) of claims 1, 2, 5, 7-11, 14, 21-26, 28, 32, 34, and 39 as unpatentable over Hong et al. (US 2006/0251807 Al, published Nov. 9, 2006) ("Hong") in view of Skelhom (US 2005/0126441 Al, published June 16, 2005) and of claims 40 and 41 as unpatentable over these references in combination with Fensel et al. (US 2005/0238848 Al, 1 CertainTeed Corporation is identified as the real party in interest. App. Br. 1. Appeal2014-004932 Application 13/043,036 published Oct. 27, 2005) ("Fensel"). 2 We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. Appellants claim solar heat-reflective roofing granules comprising a base particle having thereon a uniform coating layer comprising a coating binder and at least one solar heat-reflective pigment providing a solar heat reflectance of greater than 70 percent (independent claim 1; see also independent claims 10, 24, and 25). A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, appears below. 1. Solar heat-reflective roofing granules comprising: a) a base particle having a flake-like geometry, and an average particle size from #5 US mesh to #50 US mesh, b) a uniform coating layer on the base particle, the coating layer having a thickness of at least one mil, the coating layer comprising a coating binder and at least one solar heat-reflective pigment, the solar heat-reflective pigment providing a solar heat reflectance of greater than 70 percent to the granules, the base particles being selected from the group consisting of crushed slate, slate granules, shale granules, mica granules, and flake-like synthetic particles. Appellants do not present separate arguments specifically directed to the dependent claims under rejection (App. Br. 9-14). Therefore, the dependent claims will stand or fall with their parent independent claims of which claim 1 is representative. We sustain the rejections for the reasons expressed in the Final Action, the Answer, and below. 2 An oral hearing for this appeal was held on June 7, 2016. 2 Appeal2014-004932 Application 13/043,036 The Examiner finds that Hong discloses solar heat-reflective roofing granules comprising a base particle having thereon a uniform coating layer comprising a binder and a pigment providing solar heat reflectance albeit not a reflectance of greater than 70% as claimed (Final Action 2-3). In this latter regard, the Examiner finds that Skelhom discloses a coating with high solar reflectance of greater than 70% and low thermal conductivity (id. at 3- 4) and concludes that it would have been obvious to coat the granules of Hong with the coating of Skelhom in order to obtain the high solar reflectance and low thermal conductivity thereof (id. at 4 ). Appellants state that "Hong's granules themselves are inert mineral particles" (App. Br. 10) and argues that "[ o ]ne of ordinary skill in the art would understand that no purpose would be served by protecting mineral particles from solar heat by coating them with a composition having low thermal conductivity" (id.). Appellants' argument is not persuasive. As correctly explained by the Examiner, providing the granules of Hong with the low thermal conductivity of Skelhom's coating would yield the desirable benefits of preventing heat from reaching the asphalt beneath the granules of roofing shingles as well as the house beneath the shingles (Ans. 7). Appellants further contend that, because the surfaces of Hong's granules are irregular, "it would not be possible to apply a uniform coating to the granule surfaces using Skelhom' s coating material" (App. Br. 11). Appellants do not embellish this contention with any explanation why Hong's goal of a uniform coating (i-f l 0) would not be achieved in applying Skelhom's coating with, for example, the Wurster fluidized bed spray 3 Appeal2014-004932 Application 13/043,036 coating process taught by Hong (i-fi-f 60-61). 3 One having ordinary skill in this art would have reasonably expected success in applying Skelhom's coating with Hong's fluidized bed spray coating process, particularly because Skelhom also discloses using a spray technique for applying this coating (Skelhom i120). The Examiner concludes that the claim 1 coating thickness range of at least one mil would have been obvious in light of the overlapping range disclosed by Hong (Final Action 2-3). In response, Appellants argue that "the present claims do not overlap a range disclosed in either cited reference but rather overlap a range of a variable in the hypothetical combination constructed by the Examiner" (App. Br. 12).4 The Examiner expressly finds that Hong's coating thicknesses of about 5 micrometers to 200 micrometers (Hong i1i1 20, 7 5) correspond to thicknesses of about 0.2 mil to 8 mil, thereby overlapping the claim 1 range of at least l mil (see Final Action 2-3; see also Ans. 8). Appellants do not address, and therefore does not show error in, this finding. As a consequence, the argument under review lacks convincing merit because Appellants do not provide explicative support for the seemingly-incorrect proposition that the coating thickness range of Hong does not overlap the claim 1 range. Finally, Appellants present arguments in the Reply Brief regarding Skelhom's disclosure that the coating may contain microspheres (Reply Br. 3 Appellants also disclose using a Wurster-type fluidized bed spray process for applying a uniform coating (Spec. 16). 4 We emphasize that independent claims 24 and 25 to not contain any coating thickness limitation. 4 Appeal2014-004932 Application 13/043,036 1-3). These are new arguments that could have been, but were not, presented in the Appeal Brief. For this reason, and because Appellants do not show good cause, we will not consider these new arguments. 37 C.F.R. Â§ 41.41 (b )(2) (2013). In summary, Appellants fail to show error in the Â§ 103 rejections before us. The decision of the Examiner is affirmed. TIME PERIOD FOR RESPONSE 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). AFFIRMED 5