Ex Parte Zhou

Patent Trial and Appeal BoardOct 19, 2016

13538288 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/538,288 06/29/2012 48985 7590 10/21/2016 BRIDGESTONE AMERICAS, INC 10 East Firestone Blvd. AKRON, OH 44317 FIRST NAMED INVENTOR Wensheng ZHOU 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. P09109US3A(586A) 5753 EXAMINER VAN SELL, NATHAN L ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 10/21/2016 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): iplawpat@bfusa.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WENSHENG ZHOU 1 Appeal2014-009324 Application 13/53 8,288 Technology Center 1700 Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and MONTE T. SQUIRE, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL 1 The Real Party in Interest is identified as Firestone Building Products Co., LLC. Appeal Br. 3. The oral hearing previously scheduled for October 18, 2016, has been waived. Appeal2014-009324 Application 13/538,288 Appellant appeals under 35 U.S.C. Â§ 134 from the Examiner's maintainedrejection2 of claims 1-6 and22-31 under35 U.S.C. Â§ 103 over Shiao3 in view of Aksay. 4 We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM-IN-PART. The subject matter on appeal5 is directed to roofing articles comprising an asphaltic substrate and a plurality of granules disposed on the surface of the substrate, wherein the granules include kaolin that has been calcined at a temperature of at least 1000 Â°C and less than 1300 Â°C. Spec. i-fi-1 2, 3; Abstract. The granules are described as including mullite, where mullite concentration and mullite crystallite size are critical parameters in achieving desired levels of reflectivity. Spec. i-f 15. Claim I-the sole independent claim-is representative. 1. A roofing article comprising: (i) an asphaltic substrate; and (ii) a plurality of granules disposed on a surface of the substrate, said granules including calcined kaolin that has been calcined at a temperature of at least 1000 Â°C and less than 1300 Â°C. Appeal Br. (Claims Appendix) 19. Claims 22 and 23 require that the granules consist essentially of and consist of calcined kaolin, respectively. 2 A prior pending provisional obviousness-type double patenting rejection (Office Act. 5) has been withdrawn (Ans. 5). 3 Shiao et al., US 2008/0241472 Al, published October 2, 2008. 4 Aksay et al., Mullitefor Structural, Electronic, and Optical Applications, 74 J. Am. Ceram. Soc. 2343 -58 (1991). 5 Application No. 13/538,244, filed in the name of Zhou on June 29, 2012, is identified in the section Related Appeals and Interferences as a related application which is also on appeal. Appeal Br. 4. The appeal of Application No. 13/538,244 has been assigned Appeal No. 2014-009322. 2 Appeal2014-009324 Application 13/538,288 Claims 24-31 require that the granules include various recited amounts of silica and/or alumina. DISCUSSION6 Upon consideration of the evidence on this record and each of Appellant's contentions, we find that a preponderance of the evidence supports the Examiner's determination that one of ordinary skill in the art, armed with the knowledge provided in the applied prior art would have been led to the subject matter recited in claims 1-6, 22, and 24-31, however, we are persuaded of reversible error in the Examiner's rejection of claim 23. We add the following. "[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting aprimafacie case ofunpatentability." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). To prevail in an appeal to this Board, Appellant must adequately explain or identify reversible error in the Examiner's rejection. See 37 C.F.R. Â§ 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365---66 (Fed. Cir. 2011) (explaining that even ifthe Examiner had failed to make a prima facie case, it has long been the Board's practice to require an Appellant to identify the alleged error in the examiner's rejection). The Examiner relies on Shiao for its disclosure of solar reflective roofing shingles or membranes comprising a bituminous base (i.e., an 6 We refer to the Final Office Action mailed September 27, 2013, the Appeal Brief filed April 29 2014, the Examiner's Answer mailed July 2, 2014, and the Reply Brief filed September 2, 2014. 3 Appeal2014-009324 Application 13/538,288 asphaltic substrate) and a plurality of granules disposed on the surface of the bituminous base where the granules may comprise mullite. Ans. 3 (citing Shiao i-fi-130, 48, 49). We note that Shiao describes the use of mullite to form "solar-reflective inert base particles [preferably] hav[ing] an average solar reflectivity of at least 60%." Shiao i121. The Examiner also relies on Shiao for teaching other materials that can be included in the granules, i.e., Si02, Ab03, and porcelain as necessary to obtain desired reflectivity and strength. Ans. 5 (citing Shiao i-fi-1 48, 104 ). In this, the Examiner finds pro forma that Shiao teaches the identity and amount of materials used are result effective variables in providing strength and reflectivity. The Examiner relies on Aksay for its disclosure of mullite formed by heating (calcining) kaolinite at temperatures of 980 Â°C to 1300 Â°C, and for teaching that the calcining temperature determines structure and, accordingly, the fracture toughness. Ans. 4 (citing Aksay 2349-50). In particular, the Examiner relies on the heating of high-purity kaolinite to which a-alumina has been added, where the resulting product includes mullite crystallites in an amorphous silica-rich matrix. Ans. 7 (citing Aksay 2350 i-fi-f l-2, Fig. 9). Regarding the "calcined kaolin," the Examiner determines that the claim language of claim 1 is inclusive or open-ended and thus does not exclude a calcined mixture of kaolin and a-alumina. Ans. 7. The Examiner concludes it would have been obvious to one of ordinary skill in the art at the time of the invention to substitute the mullite product of Aksay for the mullite of Shiao, adjusting the temperature of the calcination to optimize the microfeatures for its structural properties. Ans. 4. 4 Appeal2014-009324 Application 13/538,288 The Examiner further concludes that it would have been obvious to one of ordinary skill to pick any number of forms or compositions of mullite for use in the roofing granules, including the mullite taught by Aksay, because mullite was a known material and was known to be suitable for use in roofing articles. Ans. 7-8. Likewise, the Examiner concludes it would have been obvious to adjust the amounts of materials, including the amount of silica sand and aluminum oxide, in forming granules to optimize the reflectivity and cost of manufacture of the granules. Ans. 5. We begin our analysis by determining the meaning of the claims, giving terms the broadest reasonable interpretation consistent with the Specification as it would be interpreted by one of ordinary skill in the art. See, e.g., In re Suitco Swface, Inc., 603 F.3d 1255, 1259-60 (Fed. Cir. 2010). It is well established that "the PTO must give claims their broadest reasonable construction consistent with the specification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). "[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee." Id. Turning to the recited granules, the Specification sets forth that they "include crystallites of mullite ... dispersed within a matrix that includes non-mullite aluminosilicates, non-mullite siliceous materials, or both" (Spec. i-f 23) where "mullite refers to a subset of crystalline aluminosilicates ... a solid solution series ranging from 3Ab03â€¢2Si02 to 2Ab03â€¢Si02" (Spec. i-f 24 ). The Specification sets forth that "[p ]ractice of one or more embodiments of the present invention is not limited by the source of the 5 Appeal2014-009324 Application 13/538,288 mullite-containing granules or method by which the granules may be fabricated." Spec. i-f 52. The Specification also sets forth that the inventive process is open to processing of treated material before or after the heat treatment ( calcination), including crushing, grinding, pulverization, and fractionation. Spec. i-f 55. Regarding the "calcined kaolin," the Examiner determines that the claim language of claim 1 is inclusive or open-ended and thus does not exclude a calcined mixture of kaolin and a-alumina. Ans. 7. On this record, we also determine claim 1 does not exclude a calcined mixture of kaolin and a-alumina where the claim recites that "said granules ... includ[ e] calcined kaolin" and Appellant fails to direct us to any portion of the Specification or proffer persuasive argument establishing that it does not. Generally Appeal Br.; Reply Br. Likewise, we discern no requirement in claim 1 that material calcined to form granules is homogenously dispersed and thus does not exclude a calcined mixture that includes particles of silica and/or alumina in addition to a finely divided mixture of kaolin and a-alumina. Claims 1-6 and 24-27 Appellant argues the claims as a group. Appeal Br. 10-15. We decide the appeal as to these claims on the basis of claim 1, which we find representative. Appellant contends the Examiner erred in relying on Aksay because it does not teach that mullite can be formed simply by calcination of kaolin, but rather adds a-alumina to high-purity kaolinite in its process. Appeal Br. 10-11. 6 Appeal2014-009324 Application 13/538,288 Appellant's argument is, however, misplaced because the claim does not exclude a calcined mixture of kaolin and other materials, as explained above. Appellant's further arguments relating to Aksay are directed to its focus on forming refractory materials that are densified/mullitized and that the materials it discloses with mullite crystallites dispersed within an amorphous matrix are not equivalents to the final refractory materials. Appeal Br. 11; Reply Br. 2-3. In this regard, Appellant contends Aksay's "clear intent is to densify these materials with the ultimate goal of eliminating the presence of glassy boundaries between mullite crystallites." Reply Br. 2; see also Aksay 2343, 2351, 2354 (describing glassy boundaries and inclusions). Appellant further contends that Shiao 's teaching of mullite is not relevant because the claim is not directed to mullite (Appeal Br. 11) and that the reference to mullite in Shiao would lead the skilled person to one of many forms of pure mullite. Appeal Br. 11-12. On this record, we do not find Appellant's arguments persuasive because it is not contested that Aksay discloses materials that include mullite crystallites and we are directed to no persuasive evidence that the reference in Shiao to mullite would only lead the skilled person to pure mullite. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument ... cannot take the place of evidence."). Furthermore, in view of the purpose for which mullite is included in Shiao, to provide a level of solar reflectivity (Shiao i-f 21), we discern no error in the Examiner's reliance on Aksay's material including mullite crystallites. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (an obviousness analysis "need not seek out 7 Appeal2014-009324 Application 13/538,288 precise teachings directed to the specific subject matter of the challenged claim, for [an examiner] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ."); In re Preda, 401 F.2d 825, 826 (CCPA 1968) ("[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom."). On this record, we are directed to no evidence that the skilled artisan would find material including mullite crystallites dissimilar in relevant properties to mullite' s use in a roofing article or that the Examiner erred in finding pro forma that Aksay's mullite crystallite containing material would likewise be useful in providing reflectivity. As to Appellant's various arguments directed to the reliance on the strength and fracture resistance of Aksay's mullite material (Appeal Br. 10, 13-14; Reply Br. 2-3), we discern no harmful error where a sufficient basis has been established for use of mullite and material including Aksay's mullite material is reasonably established to have equivalent and/or useful properties. As to Appellant's further nascent argument that there are unexpected, significant differences when the instant calcined kaolin is used instead of mullite (Appeal Br. 14-15), on this record, we find it unfounded. Appellant bears the burden of showing the claimed invention imparts unexpected results. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) ("the burden of showing unexpected results rests on he who asserts them"). This requires applicant to establish: "( 1) that there actually is a difference between the results obtained through the claimed invention and those of the prior art, ... and (2) that the difference actually obtained would not have been expected 8 Appeal2014-009324 Application 13/538,288 by one skilled in the art at the time of invention." In re Freeman, 4 7 4 F .2d 1318, 1324 (CCPA 1973) ((citation omitted). However, Appellant does not direct us to any statement in the Specification or any other evidence or averment evincing that the results obtained would have been unexpected by one of ordinary skill in the art at the time of the invention. Absent such evidence or averment, Appellants cannot meet their burden. See, e.g., In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997). Appellant also does not explain why data from the Specification is reasonably commensurate with the scope of the claims. For the reasons above, we are not persuaded that the Examiner erred reversibly in concluding that one of skill in the art, armed with the knowledge of Shiao and Aksay, would have been led to the claimed subject matter. Accordingly, we sustain the rejection of claims 1-6 and 24-27. Claim 22 Regarding the phrase "cons1stmg essentially of," it has long been understood to permit more than what is recited in the claim provided any additional materials or steps do not "'materially affect the basic and novel properties of the invention."' AK Steel Corp. v. Sollac, 344 F.3d 1234, 1239 (Fed. Cir. 2003). Appellant has the burden of showing the basic and novel characteristics of their claimed invention. In re De Lajarte, 337 F.2d 870, 874 (CCPA 1964); see also In re Janakirama-Rao, 317 F.2d 951 (CCPA 1963). Appellant argues it is "apparent from the teachings of Aksay ... [that] the presence of other constituents has a material and appreciable impact on the resultant properties of the granules" (Appeal Br. 15) and contrasts the partially densified mullite formed within amorphous precursors and the 9 Appeal2014-009324 Application 13/538,288 higher alumina content of Aksay with the calcined kaolin clays produced according to the invention. Reply Br. 4. Appellant also cites generally to the experimental section, as it relates to mullite. Appeal Br. 16. Appellant fails, however, to address the rejection grounded on particles of Aksay' s mullite being prepared and then included in granules. Further, as to the highlighted differences in composition (Reply Br. 4 ), they only indicate that there is additional material included, not that the additional material affects the basic and novel properties of the invention. Likewise, the cursory reference to the sintered mullite refractory materials-Samples 6-7 (described Spec. i-f 67}-is insufficient to establish a basis to exclude a-alumina. In particular, Appellant directs us to no evidence contrasting the reflective properties grounded, or any other feature identified as basic and novel to the invention, grounded on including a-alumina in the calcined material. Accordingly, on this record, we sustain the Examiner's rejection of claim 22. Claim 23 Appellant separately argues claim 23, which further limits the "granules [to] consist of calcined kaolin." Appeal Br. 16; Reply Br. 5. On this record, where the Examiner effectively ignores the addition of a-alumina in maintaining that kaolin is a very broad term (Ans. 10), we are persuaded the Examiner erred reversibly. Accordingly, we do not sustain the Examiner's rejection of claim 23. 10 Appeal2014-009324 Application 13/538,288 Claims 28-31 Claims 28-31 depend directly or indirectly from claim 1 and further limit the amounts of alumina and/or silica present in the granules including calcined kaolin. Appellant argues that neither Shiao nor Aksay teach granules having the recited amounts of alumina and/or silica and that the Examiner has failed to establish why the necessary modification to arrive at granules that do would have been no more than routine optimization. Appeal Br. 16-17. Appellant emphasizes the complexity of ceramic materials and argues that there is no evidence to support the Examiner's determination grounded on adjusting the amount of mullite, silica sand, and aluminum oxide to optimize reflectivity and cost of manufacture of granules as well as the crush strength. Reply Br. 5-6. Appellant further argues there is no evidence that the desired mullite would be obtained if the amounts of alumina were adjusted as necessary to meet the claim limitations. Reply Br. 6. On this record, we do not find Appellant's argument persuasive of reversible error because the claims are not limited to granules formed by calcining homogeneous mixtures of materials and no difficulty is identified in providing necessary heterogeneous mixtures having portions in which the ratio of kaolin and a-alumina is appropriate to provide Aksay' s mullite- containing material and other portions comprising silica and/ or alumina in amounts such that the granules formed, as a whole, meet the recited compositional limits. We also find the argument that there is no evidence that the amounts of mullite, silica sand, and aluminum oxide are result effective variables as to reflectivity, cost of manufacture, or strength to be unpersuasive. In particular, Appellant does not address the cited portions of 11 Appeal2014-009324 Application 13/538,288 Shiao and fails to explain how it is not reasonably inferred from Shiao that granule composition affects reflectivity and/or strength. Likewise, we are unpersuaded of harmful error in the Examiner's finding that the composition is a result effective variable as to cost where the cost of silica sand would reasonably be understood to be less than the finely divided, prepared mixture of kaolin and a-alumina. For the reasons above, we are not persuaded that the Examiner erred reversibly in concluding that one of skill in the art, armed with the knowledge of Shiao and Aksay, would have been led to the claimed subject matter. Accordingly, we sustain the rejection of claims 28-31. CONCLUSION In view of the reasons set forth above, we affirm the Examiner's rejection of claims 1-6, 22, and 24-31, and reverse the Examiner's rejection of claim 23. 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)(l )(iv). AFFIRMED-IN-PART 12