Ex Parte Watkins et al

Patent Trial and Appeal Board

Jun 12, 2017

12829723 (P.T.A.B. Jun. 12, 2017)

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.
12/829,723 07/02/2010 Carl E. Watkins JR. P09069US1A 9093
48985 7590 06/14/2017
BRIDGESTONE AMERICAS, INC.
10 East Firestone Blvd.
AKRON, OH 44317
EXAMINER
AD AMOS, THEODORE V
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
06/14/2017 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):
iplawpat@bfusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARL E. WATKINS, JR. and RICHARD L. PENG
Appeal 2015-005782
Application 12/829,723
Technology Center 3600
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-005782
Application 12/829,723
STATEMENT OF THE CASE
Carl E. Watkins, Jr. and Richard L. Peng (Appellants)1 appeal under
35 U.S.C. § 134 from the Examiner’s March 27, 2014 final decision
rejecting claims 1, 2, and 4—17 as being unpatentable over Davis (US
5,563,217, iss. Oct. 8, 1996), Ultsch (US 2010/0119820 Al, pub. May 13,
2010), and Official Notice.2 We have jurisdiction over this appeal under 35
U.S.C. § 6(b).
We REVERSE.
SUMMARY OF THE INVENTION
Appellants’ disclosure is directed to “a walkway pad to protect a roof
from damage.” Spec. 11. Claims 1 and 10 are independent. Claim 1,
reproduced below from page 17 (Claims Appendix) of the Appeal Brief, is
illustrative of the claimed subject matter:
1. A walkway pad for protecting a roof, the walkway pad
comprising:
a body including a top walkway surface, a bottom surface
that faces the roof, and an outer periphery, where the body
includes a supported thermoplastic polyolefin; and
at least one thermoplastic expansion joint coupled to said
body, said expansion joint extending outwardly beyond said
outer periphery of said body, said at least one expansion joint
including an expansion region that is configured to deform to a
greater extent than said body when the walkway pad is exposed
to a changing temperature.
1 According to Appellants, the real party in interest is Firestone Building
Products Company, LLC. Appeal Br. 3.
2 Claim 3 is canceled and claims 18—21 are withdrawn. Id. at 5.
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Application 12/829,723
ANALYSIS
Claims 1, 2, and 4 9
The Examiner finds that Davis discloses a walkway pad substantially
as recited in independent claim 1, including, inter alia, a body (membrane 1
in the form of a walkway pad)3 and a thermoplastic expansion joint (tape 5)
having an expansion region (“the portion of the [tape] 5 that extends beyond
the outer periphery of the [membrane] 1”). Final Act. 3 (citing Davis 2:66—
67, 6:50-65, 17:1—7, Figs. 1—2). The Examiner determines that Davis’s tape
5 is an expansion joint because it is known in “the roofing art” that “tapes
used to attach adjacent membranes to one another must be able to maintain
... a watertight seal between adjacent roofing membranes, yet still be able
to expand and contract due to the high temperatures experienced within the
roofing environment in order to maintain such a watertight seal.” Ans. 10.
According to the Examiner,
the flexibility characteristic given to the tape by its composition
allows the tape to expand and contract due to temperature
changes such that the tape maintains the watertight barrier
between the adjacent membranes when used in the roofing
environment. Therefore, due to the flexibility of the tape and
the anchor point formed by the tape between adjacent roofing
membranes, the tape is considered an expansion joint as
required in the present invention.
Id. at 11.
The Examiner further finds that Davis does not “specifically disclose
the expansion joint is configured to deform to a greater extent than the
body,” but “takes Official Notice that expansion joints are configured to
3 Parentheticals refer to the terminology of the cited references.
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Application 12/829,723
deform to a greater extent than the objects the expansion joints connect
together in order to prevent damage to the objects and provide a strong seal
between the objects.” Final Act. 3^4. The Examiner reasons that it would
have been obvious to one of ordinary skill
to construct the expansion region of the expansion joint of
[Davis] to deform to a greater extent than the body of the
walkway pad in order to still provide a watertight seal between
the walkway pad and the object the pad is connected to while
the two objects expand and contract due to temperature
changes.
Id. at 4.
The Examiner further finds that Davis discloses that tape 5 is
constructed from “rubber, such as EPDM, and a tackifying substance such as
a thermoplastic resin,” but does not “specifically disclose the majority of the
expansion joint is constructed from a thermoplastic material.” Id. The
Examiner finds that Ultsch discloses that “supported EPDM and TPO
materials are highly well known materials in the art to be used to construct
walkway pads, roofing membranes or joint sealant tapes.” Id. (citing Ultsch
174). The Examiner reasons that it would have been obvious to one of
ordinary skill
to have constructed the walkway body and expansion joint tape
of [Davis] out of a supported TPO material instead of an EPDM
or EPR material in order to construct the walkway pad with
specific heat transfer characteristics, since 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, and also since the substitution
of one known element, such as supported thermoplastic
polyolefin, for another, such as EPDM, would have yielded
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Application 12/829,723
predictable results to one of ordinary skill in the art at the time
of the invention.
Id. at 4—5. The Examiner clarifies that “it is not the adhesives of the tape
which the Examiner is modifying within the invention of [Davis] in light of
the disclosure of Ultsch; rather, it is the base material of the tape which is to
be modified.” Ans. 15. According to the Examiner, “Ultsch disclose[s] that
adhesive tapes and expansion joints used in prior art roofing inventions, such
as joints and tapes used for waterproofing purposes, are highly well known
in the art to comprise of CSPE, polyolefins, TPO, PVC or EPDM” and
“Ultsch discloses such materials are interchangeable with one another.” Id.
at 13—14 (citing Ultsch || 84, 86).
Appellants traverse, arguing that Davis’s tape 5 is a seam tape, not an
expansion joint. Appeal Br. 11—12. Appellants assert that “[w]hile the tape
of Davis is soft and deformable, the tape of Davis does not expand to a
greater extent than the substrates to which it is attached. In fact, as a ‘tape,’
the tape 5 of Davis serves as an anchor point between the adjacent
membranes,” which “prevents] movement” between attached walkway
pads. Id. at 12—13. Appellants further assert that “the Examiner provides
absolutely no evidence that the tape of Davis would otherwise behave as an
expansion joint.” Id. at 13. Instead,
the Examiner makes the assumption that a material that is “soft,
deformable, and tacky, yet has excellent initial green strength”,
(Davis at column 2, lines 66-67) will deform to a greater extent
than a body to which it is attached when exposed to changing
temperature. Likewise, the Examiner continually errs in
assuming that a material that has “flexibility (less nervy)” will
deform to a greater extent than a body to which it is attached
when exposed to a changing temperature.
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Reply Br. 3.
Appellants also argue that the Examiner’s “suggestion] that it would
be obvious to construct the tape 5 of Davis from a thermoplastic material. . .
is simply not plausible.” Appeal Br. 13. Appellants acknowledge that
“many articles, particularly roofing articles, can be constructed out of either
rubber or thermoplastic materials,” but assert that “[t]his elementary fact,
however, does not support the Examiner’s rejection. Indeed, there is no
prior art in the record that would suggest that a thermoplastic material could
be used as a seam tape.” Id.
Continuing, Appellants assert that “[t]he Examiner continues to
misinterpret paragraphs [0084] and [0086] ofUltsch.” Reply Br. 5.
According to Appellants, “[paragraph [0084] teaches that adhesive tapes
can be made from CSPE or polyolefins” and “[paragraph [0086] teaches
that expansion joints can be made from TPO, PVC, or EPDM,” but
Nowhere in either paragraph does it teach that expansion joints
can be made from CSPE or polyolefins; and nowhere in either
paragraph does it teach that adhesive tapes can be made from
TPO, PVC, or EPDM. Furthermore, nowhere in either
paragraph does it say that the materials that make adhesive
tapes and the materials that make expansion joints are
interchangeable with one another.
Id. at 5—6.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). For
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Application 12/829,723
the reasons set forth below, we are persuaded that the rejection does not
satisfy these requirements.
Claim 1 requires “at least one thermoplastic expansion joint.” Appeal
Br. 17 (Claims App.) (emphasis added). The Examiner determines that tape
used in the roofing art, such as Davis’s adhesive tape 5, must “be able to
expand and contract” and, therefore, is an expansion joint. Ans. 10—11. The
Examiner provides no evidence in support of this assertion regarding the
properties of tape, and further does not explain why a person of ordinary
skill in the art would understand Davis’s adhesive tape, even if it were to
have such properties, to be an expansion joint. Such an unsupported
proclamation is insufficient to establish the veracity of the Examiner’s
finding, nor does it articulate any basis for such assertions.
Similarly, the Examiner states that “the flexibility characteristic given
to the tape by its composition allows the tape to expand and contract due to
temperature changes,” and concludes that, “due to the flexibility of the tape
and the anchor point formed by the tape between adjacent roofing
membranes, the tape is considered an expansion joint.” Id. at 11. Again, the
Examiner has not sufficiently set forth reasoning or evidence to support the
stated conclusion. Specifically, it is not clear how Davis’s adhesive tape can
both be “an anchor point. . . between adjacent roofing membranes” and an
expansion joint.
The rejection of claim 1 is, thus, based on speculation or unfounded
assumptions, and the conclusion of obviousness cannot stand. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967). The Examiner’s Official
Notice and reliance on Ultsch (see Final Act. 4—5) are premised on the
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Application 12/829,723
erroneous finding that Davis discloses an expansion joint, and, thus, also are
improper.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 1, nor of its dependent claims 2 and 4—9, as being unpatentable over
Davis, Ultsch, and Official Notice.
Claims 10—17
The Examiner determines that independent claim 10 is unpatentable
over Davis, Ultsch, and Official Notice similarly as with respect to claim 1,
specifically finding that Davis teaches a thermoplastic expansion joint (tape
5) including a first attachment region (“the top surface of the [tape] 5 . . .
which is directly secured to the bottom surface of the [membrane] 1”), a
second attachment region (“the whole bottom surface of the [tape] 5 . . .
which is adapted to connect to [membrane] 2 or a roof surface”), and a third
expansion region (“the free top surface of the [tape] 5 that is not adhered to
the [membrane] 1 and the outer edge surface of the [tape] 5 . . . which is
capable of moving freely relative to said body”). Final Act. 8 (citing Davis
Fig. 1). The Examiner reasons that
Since the outer, right edge portion of the tape #5 of
[Davis] is not contacting any portion of the top membrane #1 or
the bottom membrane #2, the outer, right edge portion is
capable of moving relative to those structures, such as through
thermal expansion, without affecting or moving the top #1 or
bottom membranes #2.
Ans. 16.
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Application 12/829,723
Appellants traverse, relying in part on the same arguments as
discussed above with respect to the rejection of claim 1. Appeal Br. 11—15.
Appellants further assert that
the Examiner provides no support to show that Davis teaches
that [the] outer, right edge portion [of tape 5] is designed to
move relative to [membranes 1,2], such as through thermal
expansion, without affecting or moving the top #1 or bottom
membranes #2. The Appellants have already pointed out why
they do not believe that the tape of Davis has the ability to
expand and contract, and even if the tape of Davis did expand
and contract, the Examiner has no support to say that the outer,
right edge portion is capable of moving without affect[ing] or
moving either of the membranes.
Reply Br. 6.
We are persuaded of error in the Examiner’s determination that Davis
discloses an expansion joint for the same reasons as discussed above with
respect to the rejection of claim 1.
We are similarly persuaded of error regarding the Examiner’s
determination that “the outer, right edge portion” of Davis’s adhesive tape 5
is free to move relative to the body and the roof as required by claim 10. See
Ans. 16—17. As correctly noted by Appellants (see, e.g., Appeal Br. 15;
Reply Br. 6), the Examiner has not set forth any support for such finding.
Moreover, as the entire lower surface of Davis’s tape 5 appears to be affixed
to membrane 2 (see Davis Fig. 1), it is not clear how any portion of Davis’s
tape 5 is free to move relative to membrane 2.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 10, nor of its dependent claims 11—17, as being unpatentable over
Davis, Ultsch, and Official Notice.
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Appeal 2015-005782
Application 12/829,723
DECISION
The Examiner’s decision to reject claims 1, 2, and 4—17 is reversed.
REVERSED
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