Ex Parte Zhou

Patent Trial and Appeal Board

Oct 19, 2016

13538244 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/538,244 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.
P09109US2A(P586) 1156
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 ZHOU1
Appeal2014-009322
Application 13/538,244
Technology Center 1700
Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and
MONTE T. SQUIRE, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision2 finally rejecting claims 1-14 and 20-35 under 35 U.S.C. § 103
over Shiao3 in view of Mangold.4 We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 The Real Party in Interest is identified as Firestone Building Products Co.,
LLC. Appeal Br. 3. An oral hearing previously scheduled for October 18,
2016, has been waived.
2 A prior pending provisional obviousness-type double patenting rejection
(Final Act. 8) has been withdrawn (Ans. 7).
3 Shiao et al., US 2008/0241472 Al, published October 2, 2008.
4 Mangold et al., US 5,380,687, issued January 10, 1995.
Appeal2014-009322
Application 13/538,244
The subject matter5 on appeal is directed to roofing articles
comprising an asphaltic substrate and a plurality of mullite-containing
granules disposed on the surface of the substrate. Spec. iii! 2, 3; Abstract.
Independent claims 1 and 20-the sole independent claims-are
representative.
1. A reflective roofing article, said roofing article
compnsmg:
(i) an asphaltic substrate; and
(ii) a plurality of mullite-containing granules disposed
on a surface of the substrate, where said mullite-containing
granules include a mullite concentration of at least 35 wt% and
at most 63 wt% as determined by quantitative x-ray diffraction.
20. An asphaltic membrane comprising:
(i) an asphaltic substrate; and
(ii) a plurality of mullite-containing granules disposed
on a planar surface of the substrate, where the mullite-
containing granules include mullite crystallites dispersed within
a non-mullite matrix, and where the mullite-containing granules
include less than 3 .5 wt.% alkali oxides or alkaline earth oxides
combined.
Appeal Br. (Claims Appendix) 23-25.6
Claims 4 and 5 recite further limitations as to the aspect ratio of
mullite crystallites.
5 Application No. 13/538,288, 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. 13/538,288 has been assigned Appeal No. 2014-009324.
6 A corrected listing of claims not including non-entered claim amendments
to claims 6, 12-14, 21, and 25, was filed in response.
2
Appeal2014-009322
Application 13/538,244
Claims 21-35 recite further limitations as to the composition of the
granules, particularly as to the inclusion of material other than mullite and as
to the overall composition of the granules.
DISCUSSION7
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 1-14 and 20-35.
"[T]he Examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability."
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. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365-
66 (Fed. Cir. 2011) (explaining that even if the 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
asphaltic substrate) and a plurality of granules disposed on the surface of the
bituminous base where the granules may comprise mullite. Ans. 3 (citing
7 We refer to the Final Office Action mailed September 30, 2013; the Appeal
Brief filed March 24, 2014, supplemented April 29, 2014; the Examiner's
Answer mailed July 1, 2014; and the Reply Brief filed September 2, 2014.
3
Appeal2014-009322
Application 13/538,244
Shiao iii! 30, 32, 48, and 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 iJ 21. The Examiner also relies on
Shiao for teaching other materials that can be included in the granules, i.e.,
silica (Si02), alumina (Ab03), and porcelain as necessary to obtain desired
reflectivity and strength. Ans. 2, 6-7 (citing Shiao iii! 47--48, 104). In this,
the Examiner finds de facto that Shiao teaches the identity and amount of
materials used are result effective variables in providing reflectivity and
strength.
The Examiner relies on Mangold for its disclosure of a silicon-
aluminum mixed oxide powder that can be converted to mullite powder for
production of ceramics for the benefit of its characteristic resistance to high
thermal and mechanical stress. Ans. 3 (citing Mangold col. 2, 11. 15-26),
10-11 (citing Mangold col. 1, 11. 3-6, 50-60, col. 2, 11. 22-26). The relied
on disclosure from Mangold includes the explicit teaching that the mullite
powder can be used "for the production of ceramics and ceramic
preproducts." Mangold, col. 2, 11. 22-26.
In rejecting the claims, the Examiner, inter alia, concludes de facto
that it would have been obvious to one of ordinary skill in the art at the time
of the invention to form ceramics including mullite for use as roofing
granules and that arriving at the recited amounts of mullite, silica, and/or
alumina included in such ceramic roofing granules would have been within
the ambit of the skilled artisan through no more than routine
experimentation. Ans. 9-11. The Examiner further determines that
Appellant has failed to establish that the claimed ranges are critical and so
has not overcome the prima facie case. Ans. 12.
4
Appeal2014-009322
Application 13/538,244
The Examiner also concludes that because Shiao teaches that silica
sand, mullite, and alumina are useful to provide solar reflectivity, it is prima
facie obvious to combine these in order to form roofing granules comprising
silica, mullite, and alumina to be used for the very same purpose. Ans. 8-9.
Claims 1-3 and 6-14
Appellant argues the claims as a group. Appeal Br. 10-16. We
decide the appeal as to these claims on the basis of claim 1, which we find
representative.
Appellant contends there is no teaching or suggestion in either Shiao
or Mangold of granules having a mullite concentration of at least 35 wt%
and at most 63 wt%. Appeal Br. 11-12. In arguing this position, Appellant
relies on Mangold' s disclosure in Table 5 and paraphrases column 2, lines
21-26, which states that "[t]he invention also provides for the use of the
mullite powder of the invention for the production of ceramics and ceramic
preproducts, especially for ceramic materials that are subject to high thermal
and mechanical stresses." Appeal Br. 12-13. Appellant further argues that
introducing non-mullite material to form a matrix in which mullite is
dispersed is inconsistent with the teachings of Mangold. Appeal Br. 13.
On this record, we do not find Appellant's argument persuasive of
reversible error because we find Mangold' s teaching that its mullite powder
can be used for the production of ceramics and ceramic preproducts does not
limit its use to the production of pure mullite articles. Rather, the reasonable
inference to be drawn from Mangold is that it provides mullite powder for
use in ceramics at any desired amount. In re Preda, 401 F.2d 825, 826
(CCP A 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
5
Appeal2014-009322
Application 13/538,244
reasonably be expected to draw therefrom."). Appellant fails to direct us to
any persuasive evidence that the skilled artisan would be led away from use
of the disclosed silicon aluminum mixed oxide or mullite powder in
ceramics or ceramic preproducts that included further silica and/or alumina.
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument
... cannot take the place of evidence."). An obviousness analysis "need not
seek out 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." KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Appellant further contends that the Examiner has failed to establish
the requisite rationale for combining the teachings of Shiao and Mangold in
any manner to arrive at the subject matter claimed including 35-63 wt%
mullite. Appeal Br. 13-16. Specifically, Appellant argues that the
Examiner's proffered rationale grounded on routine optimization of the
granule's composition to obtain suitable levels of reflectivity, cost, and
thermal and mechanical resistance, is not well-founded. Appeal Br. 14-16.
As to including silica sand rather than mullite to reduce costs, Appellant
argues both that Shiao "does not suggest that a reflective base rock can
include silica sand" and that there is no "evidence that the sintered materials
taught by Mangold would be more expensive than the materials taught by
Shiao." Appeal Br. 14. As to the thermal and mechanical stresses,
Appellant argues the relevant properties in Mangold relate to the use of the
material as a refractory, not under conditions encountered in use on a roof.
Appeal Br. 14-15.
6
Appeal2014-009322
Application 13/538,244
On this record, we do not find Appellant's arguments persuasive of
reversible error. Even were we to accept that Shiao does not explicitly teach
silica sand as a solar-reflective particles, we find the skilled artisan would
reasonably infer that silica sand can be used in forming solar-reflective
particles where Shiao explicitly recites preferred particles formed of glass
(Shiao iii! 21, 48, and 104) and the rejection is grounded on use of the silica
sand in a fired ceramic, not on inclusion of silica sand without further
treatment. Regarding relative costs, we find the Examiner's determination
that the "silicon-aluminum mixed oxide powder produced in a flame-
hydrolysis process" of Mangold is more expensive than silica sand
manifestly reasonable and find Appellant's traversal inadequate to establish
error absent any proffered reasoning why silica sand would not be
understood to be less expensive. Cf In re Chevenard, 31 139 F.2d 711, 713
(CCPA 1943) ("In the absence of anything in the record to contradict the
examiner's holding, and in the absence of any demand by appellant for the
examiner to produce authority for his statement, we will not consider this
contention.). Likewise, as to resistance to thermal and mechanical stresses,
Appellant fails to explain, or to provide any evidence, why a material
providing mechanical strength even at elevated temperatures would not
reasonably inform the skilled artisan of strength at lower temperatures on a
roof top. In sum, having considered these and Appellant's additional
arguments, we are not persuaded that the Examiner erred in determining that
the skilled artisan would have been led to the claimed subject matter by
routine optimization balancing the properties of cost, reflectivity, and
strength.
7
Appeal2014-009322
Application 13/538,244
Addressing the Examiner's position that it is prima facie obvious to
combine compositions useful for the same purpose to provide a combined
composition for the very same purpose, Appellant contends this rule of law
is inapplicable. Appeal Br. 15-16 (citing In re Kerkhoven, 626 F .2d 846
(CCPA 1980)); Reply Br. 2. Appellant characterizes the rejection as being
grounded on a mixture of granules and argues that there is no evidence that
the "granules are a mixture of individual components taught by Shiao."
Appeal Br. 15-16. Appellant further argues the Examiner has failed to
"articulate how [the principle of law] is applicable to the present facts where
more than a simple mixing of known materials is required" and that "there is
no evidence that suggests that mixing silica, mullite, and alumina would
provide granules that contain mullite." Reply Br. 2.
On this record, we do not find Appellant's arguments persuasive
because they (i) fail to squarely address the rejection as set forth by the
Examiner grounded on granules formed of a mixture rather than on a
mixture of granules and (ii) provide no explanation why firing or sintering a
mixture of silica, mullite, and alumina would not reasonably be expected to
provide granules that contain mullite. Cf In re O'Farrell, 853 F.2d 894,
903-904 (Fed. Cir. 1988) ("Obviousness does not require an absolute
predictability of success ... all that is required is a reasonable expectation of
success."). Further, as to the rule set forth in Kerkhoven, we discern no
reversible error where we are directed to no evidence that firing or sintering
a mixture of silica, mullite, and alumina can not be done in a manner that
does no more than fuse particles of silica, mullite, and alumina together. In
this regard, Appellant's reliance on In re Lo, 2011 WL 4445443 (BPAI
8
Appeal2014-009322
Application 13/538,244
2011 ), in which the Examiner relied on multiple substitutions to a prior art
invention, is wholly unfounded (id. at *2).
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 Mangold, would have been led to the subject matter
of claims 1-3 and 6-14.
Claims 4-5
Appellant argues that because neither Shiao nor Mangold teaches a
composition including mullite crystallites, they consequently do not teach
the recited aspect ratio of crystallites, and that the Examiner erred in relying
on Shiao paragraphs 48--49 because that portion of Shiao relates to the
aspect ratio of granules, not mullite crystallites within granules. Appeal Br.
16. Appellant further argues that Mangold fails to teach crystallites disposed
within a granule. Reply Br. 3.
Appellant fails, however, to squarely address the Examiner's
determination that the aspect ratios of mullite crystallites formed by
Mangold's process would reasonably be expected to be the same as those
formed by that of the instant application because both treat a mixture of
silicon oxides and aluminum oxides by heating where there is substantial
overlap of the temperature ranges. Ans. 14-15 (citing In re Best, 562 F.2d
1252, 1255 (CCPA 1977)). In particular, Appellant has not explained why
firing or sintering a mixture to provide granules with the same ratio of
mullite, silica, and alumina would not reasonably result in mullite with the
9
Appeal2014-009322
Application 13/538,244
same or similar aspect ratios, i.e., at least 1.5 or at least 1.7 as required by
claims 4 and 5, respectively. 8
Accordingly, on this record, we sustain the Examiner's rejection of
claims 4 and 5.
Claims 21-24
Appellant separately argues claim 21, claims 22 and 23, and claim 24
on the basis that the claims require the mullite crystallites to be dispersed
within a matrix of non-mullite aluminosilicate or non-mullite silaceous
materials rather than as a mixture of different granules (claim 21 ), on the
basis of the matrix being amorphous (claims 22 and 23), and on the basis of
the matrix being silica (claim 24). Appeal Br. 16-18.
On this record, we do not find Appellant's arguments persuasive of
reversible error because-as explained above-the rejection is not grounded
on mixtures of different granules, but rather on forming ceramic granules
including mullite and Appellant fails to provide any persuasive evidence for
these granules to not include mullite crystallites dispersed within an
amorphous matrix, including one of amorphous silica.
Accordingly, we sustain the Examiner's rejections of claims 21-24.
Claims 28-31
Claims 28-31 depend directly or indirectly from claim 1 and further
limit the amounts of alumina (claims 28 and 30) or silica (claims 29 and 31)
present in the granules.
8 We note further that Appellant's comparative Examples 9 and 10, which
are both commercially available electrical insulator porcelain (Spec. ,-i 65),
include mullite crystallites having aspect ratios of >2 and> 3, respectively
(Spec. ,-i 73, Table 3).
10
Appeal2014-009322
Application 13/538,244
Appellant argues that neither Shiao nor Mangold teach compositions
that include 40-50 wt% alumina or any teaching or suggestion to modify the
weight percent of alumina from the 65-85 wt% found in Mangold's
compositions or from that found in Shiao' s aluminum oxide granules.
Appeal Br. 18 (citing Shiao ,-i 48).
Appellant likewise argues neither Shiao nor Mangold teach granules
that include 49-60 wt% silica. Appeal Br. 18.
In response to the Examiner's rationale grounded on combining silica,
mullite, and alumina together in the granules (Ans. 17-19), Appellant argues
there is no rational explanation for deviating from the percentages used "to
achieve 3 :2 mullite, which includes about 71 % alumina" and that "even if
[the skilled person] did alter the mixed oxide composition taught by
Mangold, then there is no evidence that the desired mullite would be
obtained." Reply Br. 4-5.
Appellant's argument that there is no basis to deviate from the
percentages of Mangold fails, however, to account for the reasons to do so
set forth by the Examiner, including in the rejection of claim 1, and to the
combination of silica, mullite, and alumina together in granules being prima
facie obvious on the basis that each are useful to provide solar reflectivity.
Further, Appellant's contention that there is no evidence that the desired
mullite would be obtained is unpersuasive of reversible error where it is not
supported by persuasive argument or evidence. See, e.g., In re 0 'Farrell,
853 F.2d at 903-904. Further, Appellant's arguments fail to "take account
of the inferences and creative steps that a person of ordinary skill would
employ" in overcoming difficulties. KSR Int'l. Co. v. Teleflex Inc., 550 U.S.
at 418.
11
Appeal2014-009322
Application 13/538,244
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 Mangold, would have been led to the claimed
subject matter. Accordingly, we sustain the rejection of claims 28-31.
Claim 20
Appellant contends the Examiner erred in rejecting independent claim
20 because neither Shiao nor Mangold teach granules that include mullite
crystallites dispersed within a non-mullite matrix, neither teach nor suggest
dispersing mullite particles within a matrix, and because merely mixing
different granules together do not provide granules including mullite-
crystallites dispersed within a non-mullite matrix. Appeal Br. 19.
Appellant's arguments are not persuasive for the reasons set forth
above, including that the arguments do not address the Examiner's reasoning
grounded on forming a ceramic material including mullite crystallites.
Claims 25-27
Appellant separately argues claim 25, claim 26, and claim 27 on the
bases that the claims require the mullite crystallites to be dispersed within a
matrix of non-mullite aluminosilicate or non-mullite silaceous materials
(claim 25), on the basis of the matrix being amorphous (claim 26), and on
the basis of the matrix being silica (claim 24). Appeal Br. 19-20.
Appellant's arguments are not persuasive for the reasons set forth
above in regard to the same arguments set forth in respect to claims 21-24.
Claims 32-35
Claims 32-35 depend directly or indirectly from claim 20 and further
limit the amounts of alumina (claims 32 and 34) or silica (claims 33 and 35)
12
Appeal2014-009322
Application 13/538,244
present in the granules. The composition ranges for the granules that are set
forth are identical to those set forth in corresponding claims 28-31.
Appellant reiterates the same arguments for these claims as set forth
for corresponding claims 28-31, adding only the qualification as to Shiao's
disclosure of aluminum oxide granules that they may include "impurities
that may be present with known aluminum oxide granules." Compare
Appeal Br. 20-21 with 18.
Despite this statement adding a qualification as to purity, we find no
cogent argument grounded on the contention that aluminum oxide granules
include impurities (see generally Appeal Br.), and decline to infer any
intended argument or to scour the record for support of an argument not
made by Appellant. Gross v. Town of Cicero, Ill., 619 F.3d 697, 702 (7th
Cir. 2010). It follows then that Appellant's arguments are not persuasive for
the reasons set forth above in regard to the otherwise identical arguments set
forth in respect to claims 28-31.
CONCLUSION
In view of the reasons set forth above, we affirm the Examiner's
rejection of claims 1-14 and 20-35.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l )(iv).
AFFIRMED
13