Ex Parte Sleeman

Patent Trial and Appeal BoardMay 28, 2013

11803638 (P.T.A.B. May. 28, 2013)

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. 11/803,638 05/15/2007 William R. Sleeman SLE002 P300 7366 277 7590 05/28/2013 PRICE HENEVELD LLP 695 KENMOOR SE P O BOX 2567 GRAND RAPIDS, MI 49501 EXAMINER DEMUREN, BABAJIDE A ART UNIT PAPER NUMBER 3633 MAIL DATE DELIVERY MODE 05/28/2013 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 WILLIAM R. SLEEMAN ____________________ Appeal 2011-003498 Application 11/803,638 Technology Center 3600 ____________________ Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and HYUN J. JUNG, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003498 Application 11/803,638 2 STATEMENT OF THE CASE William R. Sleeman (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 17 and 20 under 35 U.S.C. § 103(a) as unpatentable over Murphy (US 4,672,787, iss. Jun. 16, 1987). Claims 1- 16, 18, and 19 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The Claimed Subject Matter Claim 17, reproduced below, is illustrative of the claimed subject matter. 17. A process for constructing a roof, exterior wall or interior wall of a building, comprising: providing a plurality of composite panels having at least a first rigid structural layer, and a cross-linked polymer film layer bonded to and covering a first major planar surface of the first rigid structural layer; fastening the composite panels to structural members of a building in edge-to-edge abutting relationship with the cross- linked polymer film layer being exposed and being opposite a side of the panel facing the structural members; and applying a tape over seams formed at abutting edges of the panels and applying a cross-linkable liquid resin composition to the tape and beyond the edges of the tape, and curing the applied cross-linkable liquid resin composition, whereby the cross-linked polymer films of the plurality of abutting panels are joined together to form a continuous, unitary, weather-resistant structure. OPINION Appellant argues claims 17 and 20 together in contesting the rejection. Thus, we decide this appeal with respect to claims 17 and 20 on the basis of claim 17. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appeal 2011-003498 Application 11/803,638 3 Murphy discloses a process for constructing a moisture-proof wall of a building. See col. 2, ll. 16-18. The Examiner found that Murphy discloses a process as called for in claim 17, with the exception that “Murphy fails to expressly provide the second layer of moisture-proofing material [(i.e., the moisture-proofing material applied to the tape)] is a cross-linkable liquid resin composition.” Ans. 3-4. However, the Examiner determined it would have been obvious to use the same cross-linked polymer film layer of the first layer (i.e., the moisture-proofing material applied to the rigid supporting layer 42) in the second layer “for an improved quality bond absent any unexpected or unpredictable result.” Ans. 4. Further, the Examiner pointed out that “it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.” Id. Appellant argues that the portions of Murphy (figs. 6-8; col. 6, ll. 48- 68; col. 7, ll. 1-15) directed to applying tape (flexible strip 48) to the panels and applying a second layer1 of moisture-proofing material to the tape “require unprotected panels that are first attached to structural members 18 and subsequently moisture proofed.” App. Br. 6. Appellant’s argument is not correct. Murphy discloses that the steps shown in figures 6 through 8 are useful for improving the moisture-proofing characteristic of the seams of conventional back-up drywall. See col. 6, ll. 45-48. However, Murphy also emphasizes that “it is preferred that the moistureproofing material be preapplied to the dry wall back-up panels before installation” and, most notably, that “[t]he seams also deserve special 1 Figure 8 appears to identify the second layer of moisture-proofing material using reference numeral 149, while this layer is identified at column 7, line 4, as “second layer 147.” Appeal 2011-003498 Application 11/803,638 4 attention even when pre-coated panels of the subject invention or other moistureproof panel systems are used.” Col. 6, ll. 36-38, 42-45; see also col. 4, ll. 32-36, 56-59 (disclosing application of strip 48 to the seams of rigid supports 42, which have been pre-coated with moisture-proofing material 43, and a second layer of moisture-proofing material 49 to the strip 48). Thus, Murphy discloses performing the additional steps of applying the flexible strip 48 and the second layer to improve the moisture-proofing characteristic of the seams even when using pre-coated panels. See Ans. 8, 9 (asserting that both the embodiment of figures 1-5, using pre-coated panels, and the embodiment of figures 6-8, wherein the panels are attached to the structural members before applying moisture-proofing material, require tapes and a second layer of moisture-proofing material). Appellant also argues that the embodiments of Murphy having a pre- applied moisture-proofing “do not have a ‘polymer film layer’ as required by the claims,” because Murphy teaches a moisture-proofing layer that is “non- integral,” which Murphy defines as other than solid sheet or solid film materials. App. Br. 6-7; see col. 3, ll. 5-12; col. 5, ll. 54-55. Appellant’s argument is not convincing. Murphy discloses that these “non-integral” coatings can be applied by trowel, brush, or spray and can be used to precoat the panels. Col. 5, ll. 54-57. Murphy’s description of the “non-integral” materials as “other than solid film or sheet” (id. at col. 5, ll. 54-55) pertains to the form of the materials prior to being applied to and cured on the panels, not to the form of moisture-proofing material after it has been applied to and cured on the panels. Appellant’s Specification uses the terminology “cross-linked polymer film” to describe a layer formed by applying and subsequently curing or thermosetting a thermosetting resin composition on the rigid structural layer Appeal 2011-003498 Application 11/803,638 5 by spraying, brushing, rolling, curtain coating, and the like. Spec., para. [0014]. Thus, the Examiner’s reading of the “polymer film layer” of claim 17 on the layer of moisture-proofing material of Murphy’s pre-coated panel formed by spraying, troweling, or brushing is reasonable, in light of Appellant’s Specification. Appellant’s Reply Brief introduces a new line of argument. Appellant suggests that the Examiner has not articulated an apparent reason to use a cross-linkable moisture-proofing material to the tape and beyond the edges of the tape applied to Murphy’s seams. Reply Br. 1-2. Appellant asserts that the Examiner mischaracterized the legal standards for determining obviousness by stating the question as “why wouldn’t it be obvious to one of ordinary skill in the art to apply a cross-linkable liquid resin composition which has already been disclosed by Murphy as well-known in the construction trade and conventionally used for moisture proofing absent any unexpected or unpredictable result?” Reply Br. 1; Ans. 7. The Examiner did not mischaracterize the legal standard for determining obviousness. As stated by the Supreme Court, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Having found that Murphy discloses a cross linked polymer for use as a moisture-proofing material (Ans. 3, 4, 6, 7), the Examiner determined it would have been obvious to a person of ordinary skill in the art to use that same material, known for use as moisture-proofing material, for the second moisture-proofing layer (Ans. 4, 7) in the absence of any unexpected or predictable result. Moreover, the Examiner articulated a particular reason, i.e., “for an improved quality bond,” for using the same Appeal 2011-003498 Application 11/803,638 6 material for the second moisture-proofing layer. Appellant does not dispute the Examiner’s finding that use of the same material for both the first and second moisture-proofing layers would yield an improved quality bond or identify any flaw in the Examiner’s reasoning. Appellant also argues that Murphy’s disclosure of polymer systems “which may or may not be cross linkable” (col. 6, l. 14) evinces that it does not matter to Murphy whether the moisture-proofing material is or is not cross linkable. Reply Br. 2. This argument is not convincing. We agree with Appellant that Murphy does not express a preference to cross linkable polymers over polymers that are not cross linkable. However, Murphy clearly discloses that both cross linkable polymers and polymers that are not cross linkable are suitable for use as the moisture-proofing coating material. Even assuming Appellant is correct that the particular examples of materials enumerated by Murphy are not cross linkable (Reply Br. 2), that fact does not negate Murphy’s teaching that both cross linkable polymers and non- cross linkable polymers are suitable. See In re Bode, 550 F.2d 656, 661 (CCPA 1977) (stating “the reference must be evaluated for all it teaches and is not limited to its specific embodiments”). Appellant asserts that Murphy’s preferred moisture-proofing materials are fibrated asphalt mastic compositions and fibrated asphalt emulsion mastic compositions, and that the subsequently mentioned cross linkable polymer systems are “less preferred materials.” Reply Br. 1-2. However, this assertion does not identify error in the Examiner’s determination of obviousness. A reference is not limited to its preferred embodiment, but must be evaluated for all of its teachings, including its teachings of non- preferred embodiments. In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979). Appeal 2011-003498 Application 11/803,638 7 For the above reasons, Appellant’s arguments do not apprise us of error in the Examiner’s rejection of claim 17. We sustain the rejection of claim 17 and of claim 20 as unpatentable over Murphy. DECISION The Examiner’s decision rejecting claims 17 and 20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED hh