Ex Parte Yang et al

Patent Trial and Appeal BoardSep 25, 2012

10798595 (P.T.A.B. Sep. 25, 2012)

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. 10/798,595 03/11/2004 Li-Ying Yang FDN-2795 6367 7590 09/25/2012 Attn: William J. Davis, Esq. GAF MATERIALS CORPORATION Legal Department 1361 Alps Road, Building No. 10 Wayne, NJ 07470 EXAMINER KATCHEVES, BASIL S ART UNIT PAPER NUMBER 3635 MAIL DATE DELIVERY MODE 09/25/2012 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 LI-YING YANG, EDWARD NEBESNAK and WILLIAM P. KUHN ________________ Appeal 2010-000682 Application 10/798,595 Technology Center 3600 ________________ Before STEVEN D.A. McCARTHY, BRETT C. MARTIN and ANNETTE R. REIMERS, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s 1 final decision rejecting claims 1, 5, 8-18, 22 and 25-31. The Examiner 2 rejects under 35 U.S.C. § 103(a) claims 1, 5, 8-12, 14-18, 25, 26, 28, 30 and 3 31 as being unpatentable over Khan (US 6,134,856, issued Oct. 24, 2000); 4 claim 13 as being unpatentable over Khan and Robinson (US 4,695,5015 1 The Appellants identify the real party in interest as Building Materials Investment Corporation. Appeal No. 2010-000682 Application No. 10/798,595 2 issued Sep. 22, 1987); and claims 27 and 29 as being unpatentable over 1 Khan and Vanderzee (US 4,715,915, issued Dec. 29, 1987). The Examiner 2 does not appear to articulate a ground of rejection against claim 22. The 3 Examiner has withdrawn claims 2-4, 6, 7, 19-21, 23 and 24 from 4 consideration. We have jurisdiction under 35 U.S.C. § 6(b)(1). 5 We REVERSE. 6 Khan describes a roofing membrane 10 including top and bottom 7 layers 14, 16 of atactic polypropylene modified bitumen bonded together 8 over a scrim 12 fabricated from fiberglass or polyester. (Khan, col. 2, ll. 11-9 14, 17-20 and 60-63). The width of the membrane typically ranges from 3-4 10 feet. (Khan, col. 3, ll. 35-36). The membrane 10 defines selvage edges 18, 11 20 disposed in the top or bottom layers 14, 16 near opposite sides of the 12 membrane 10. Khan describes the selvage edges 18, 20 as having “a series 13 of ridges 22 and valleys 24 adapted to receive adhesives.” (Khan, col. 2, 14 l. 65 – col. 3, l. 1). Khan teaches that “[e]ach selvage edge can have a width 15 of about 2-10, preferably 3-9 and most preferably 4-8 inches. Greater 16 overlap tends to provide greater adhesion but at an added material cost per 17 unit area of coverage.” (Khan, col. 3, ll. 46-48). 18 In the Specification, the Appellants admit that Kahn teaches “each of 19 the selvage edges hav[ing] a series of embossed ridges and valleys adopted 20 to accept adhesives.” (Spec. 2). The Appellants then declare that they “have 21 now discovered that the roll blocking problem [that is, the problem of 22 portions of the membrane tending to stick and adhere to each other when 23 being unwound from a roll] can be greatly reduced by the complete 24 embossment of the bottom layer of the single ply membrane.” (Id. 25 (emphasis added)). 26 Appeal No. 2010-000682 Application No. 10/798,595 3 Claims 1, 10, 26, 27, 30 and 31 are independent. Claim 10 is 1 illustrative: 2 10. A mechanically embossed single ply 3 roofing membrane comprising: 4 A reinforcement scrim sandwiched between 5 a top layer of polyolefin and a bottom layer of 6 polyolefin permanently pressed into a single ply 7 membrane 8 wherein said bottom layer is mechanically 9 embossed forming an embossment of alternating 10 ridges and valleys over a majority of the surface 11 area of the bottom layer. 12 Claim 1 similarly recites a single ply roofing membrane “wherein said 13 bottom layer is mechanically embossed forming an embossment of 14 alternating ridges and valleys over a majority of the surface area of the 15 bottom layer.” 16 Claim 26 recites a method of making a reinforced single ply roofing 17 membrane including “embossing said bottom surface with a pattern of ridges 18 and valleys over a majority of the surface area of the bottom layer.” 19 Claim 27 recites a method of making a non-reinforced single ply 20 roofing membrane including “embossing a majority of the bottom surface of 21 said non-reinforced sheet with a pattern of ridges and valleys.” 22 Claim 30 recites a method of installing a mechanically embossed 23 single ply roofing membrane on a roof deck including “providing the roofing 24 membrane of claim 1 in roll form.” 25 Claim 31 recites a method of installing a mechanically embossed 26 single ply roofing membrane on a roof deck including “providing the roofing 27 membrane of claim 10 in a roll form.” 28 Appeal No. 2010-000682 Application No. 10/798,595 4 Khan does not describe a single ply roofing membrane including a 1 bottom layer mechanically embossed over a majority of the surface area of 2 the bottom surface. Instead, the Examiner concludes that it would have been 3 obvious “to increase the area of ridges and valleys, since it has been held 4 that a mere duplication of the essential working parts of a device involves 5 only routine skill in the art.” (Ans. 4, citing St. Regis Paper Co. v. Bemis 6 Co., 549 F.2d 833 (7th Cir. 1977)). 7 The holding of St. Regis Paper is not persuasive of unpatentability in 8 this appeal. In St. Regis Paper, the court agreed with the infringement 9 defendant that a prior art reference described a bag including three of four 10 elements recited in the claim there at issue. The court held that the fourth 11 element, “the use of multiple layers to achieve the effect of many bags 12 within one,” had been well known in the industry. Id. at 838. The court 13 then held that the plaintiff was not entitled to patent protection for “the 14 fusion of the old elements that comprised” the bag described in the prior art 15 reference “and the old element of multiple layering.” Id. 16 The Examiner has not shown that the embossment of a majority of the 17 bottom surface of such a roofing membrane was known in the pertinent art 18 prior to the Appellants’ disclosure. Therefore, the facts of St. Regis Paper 19 are distinguishable. 20 Khan teaches that a greater overlap between adjacent roofing 21 membranes will provide greater adhesion. (See Ans. 8-9 (citing Khan, col. 22 3, ll. 43-47)). As pointed out on page 5 of the Reply Brief, however, the 23 Examiner has not articulated a persuasive underpinning for the conclusion 24 that “[i]ncreasing the overlap area to a majority, at least 51 percent, would 25 have been an obvious design choice as roofing materials are subject to 26 Appeal No. 2010-000682 Application No. 10/798,595 5 extreme weather conditions such as strong winds and rains and need to be 1 well adhered to the substructure.” (Ans. 9). Since the Examiner does not 2 articulate a persuasive reason why the subject matter of independent claims 3 1, 10, 26, 30 and 31 would have been obvious from the teachings of Khan, 4 we do not sustain the rejection of claims 1, 5, 8-12, 14-18, 25, 26, 28, 30 and 5 31 under § 103(a) as being unpatentable over Khan. 6 The Examiner cites Robinson as disclosing “an insulative material 7 having polyolefins of various types, among them” polyethylene and epoxy 8 resins. (Ans. 7 (citing Robinson, col. 3, ll. 29-48)). The Examiner does not 9 persuasively explain how this teaching might remedy the deficiency in the 10 teachings of Khan as applied to parent claim 10. We do not sustain the 11 rejection of claim 13 under 103(a) as being unpatentable over Khan and 12 Robinson. 13 The Examiner cites Vanderzee as disclosing “a roofing material 14 (column 2, line 23) made by extrusion and calendaring (column 3, lines 40-15 46).” (Ans. 8). The Examiner does not persuasively explain how this 16 teaching might remedy the deficiency in the teachings of Khan as previously 17 discussed with respect to claims 1, 10 or 26. In particular, Vanderzee does 18 not appear to teach embossing or calendaring any pattern into a roofing 19 membrane. We do not sustain the rejection of claims 27 and 29 under 20 103(a) as being unpatentable over Khan and Vanderzee. 21 DECISION 22 We REVERSE the Examiner’s decision rejecting claims 1, 5, 8-18, 22 23 and 25-31. 24 REVERSED 25 Klh 26