JOHNS MANVILLEDownload PDFPatent Trials and Appeals BoardSep 27, 20212021002123 (P.T.A.B. Sep. 27, 2021) Copy Citation 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. 15/806,202 11/07/2017 William J. Fredericks II 8432/8434 3134 29602 7590 09/27/2021 JOHNS MANVILLE 10100 WEST UTE AVENUE PO BOX 625005 LITTLETON, CO 80162-5005 EXAMINER GITLIN, MATTHEW J ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 09/27/2021 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): lavoie@jm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM J. FREDERICKS II, RALPH MICHAEL FAY, DIANA FISLER, CHANGQING SHEN, GUODONG ZHENG, ZEBONIE SUKLE, and DENNIS A. KOPP Appeal 2021-002123 Application 15/806,202 Technology Center 3600 Before NEIL T. POWELL, JAMES A. WORTH, and PAUL J. KORNICZKY, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1, 2 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–8. Claims 9–20 have been withdrawn from consideration. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Johns Manville. See Appeal Br. 3. 2 Our Decision refers to Appellant’s Appeal Brief (“Appeal Br.,” filed Sept. 29, 2020) and Reply Brief (“Reply Br.,” filed Feb. 4, 2021), as well as the Examiner’s Final Office Action (“Final Act.,” mailed July 13, 2020), and Answer (“Ans.,” mailed Dec. 4, 2020). Appeal 2021-002123 Application 15/806,202 2 We AFFIRM. BACKGROUND Appellant’s application relates to concrete walls and in particular to measures taken for the waterproofing and thermal insulation of concrete walls. See Spec. ¶¶ 1–2. CLAIMED SUBJECT MATTER Claim 1, the sole independent claim on appeal, is illustrative of the subject matter: 1. A waterproofed concrete wall assembly, comprising: a vertical wall of hardened concrete, the wall having a first side and a second side; a hardened concrete footer on which the vertical wall of hardened concrete rests, the hardened concrete footer being wider than a thickness of the vertical wall of hardened concrete; and one or more boards forming a waterproof liner adjacent the first side of the wall of hardened concrete, each of the boards comprising a polymer foam and a fibrous facer joined to the polymer foam, wherein some of the concrete is infused into the fibrous facer, and wherein each of the one or more boards is joined to the vertical wall of hardened concrete solely by the infusion of the concrete into the respective fibrous facer, and wherein the waterproof liner formed by the one or more boards extends from the hardened concrete footer to a top of the vertical wall of hardened concrete. Appeal Br. 12, Claims App. (emphasis added). Appeal 2021-002123 Application 15/806,202 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Paradis US 7,735,279 B2 June 15, 2010 Grace US 9,290,931 B2 Mar. 22, 2016 Clapp US 2003/0074857 A1 Apr. 24, 2003 Miks US 2014/0345223 A1 Nov. 27, 2014 Bradenburg US 2017/0129211 A1 May 11, 2017 REJECTION Claims 1–8 stand rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Claims 1–5 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bradenburg, Clapp, and Paradis. Claims 6 and 8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bradenburg, Clapp, Paradis, and Miks. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Bradenburg, Clapp, Paradis, Miks, and Grace. OPINION Rejection of claims 1–8 under § 112(a) (written description) Whether a claimed invention is supported by an adequate written description is a question of fact. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.Cir.2010) (en banc). To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail such that it reasonably conveys to a person of ordinary skill that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Appeal 2021-002123 Application 15/806,202 4 The Examiner finds that the original disclosure fails to provide support for the phrase “solely by the infusion of concrete,” as recited in independent claim 1, i.e., “wherein each of the one or more boards is joined to the vertical wall of hardened concrete solely by the infusion of the concrete into the respective fibrous facer.” See Final Act. 3. The Examiner finds that the Specification states that “[t]he secure attachment of waterproof membrane 904 to the concrete wall is due at least in part to the infusion of concrete into the fibrous fleece layer of waterproof membrane 904.” Id. The Examiner finds that the Specification describes a different degree than the claim recites (i.e., “due at least in part” as opposed to “solely”), and that these degrees do not overlap. See id. at 3–4. Appellant argues that written description support need not be in haec verba, and may be express, implicit, or inherent. Appeal Br. 5 (citing, e.g., MPEP §§ 2163.02, 2163). Appellant argues that the Specification discloses that the attachment of the boards to the concrete wall is “‘due at least in part to the infusion of concrete into the fibrous facer . . . .’” Id. (quoting Spec. ¶ 54). Appellant also argues that the Examiner erred in relying on an embodiment in which multiple means are used to hold panels together, i.e., concrete and form ties, because the Specification also discloses that form ties may be omitted. See id. at 6–7 (citing Spec. ¶ 36). The Examiner reasons that the disclosure that form ties may be omitted is ambiguous as to whether it relates to the claim limitation, i.e., solely by the infusion of concrete. See Final Act. 2–3. However, Appellant states that it was the Examiner who first made the connection between the presence or absence of form ties and the claim limitation, referring to an Examiner interview. Appeal Br. 6. Appeal 2021-002123 Application 15/806,202 5 We are persuaded by Appellant that the Specification indicates that Appellant was in possession of the claimed invention because the Specification reasonably conveys to a person of ordinary skill that the forms are joined to the concrete with or without form ties. See Spec. ¶ 36. Paragraph 37 of the Specification discloses that once the concrete hardens, the bracing is removed. Id. ¶ 37. Paragraph 35 of the Specification states that the fibrous facer bonds well to the concrete. Id. ¶ 35. Accordingly, the embodiment without form ties relies on the infusion of concrete into the fibrous facer alone to join the boards to the hardened concrete. The Examiner determines that if form ties were removed then something else must be used to secure the membrane to the concrete wall because of the disclosure that the forms are held together due at least in part to concrete. See Ans. 9. The Examiner does not provide support for this finding. Rather, we understand the disclosure that the boards are held together “due at least in part” to concrete to mean that form ties may or may not be used. If form ties are used, then the boards are joined to the concrete due to concrete plus form ties, i.e., due in part to concrete. If form ties are not used, then the boards are joined to the concrete due “at least in part” to concrete, i.e., due to concrete and to bracing which is removed. Thus, based on the Specification as a whole, a person of ordinary skill would understand that when the concrete is dry and the bracing is removed, the boards are joined to the hardened concrete due to concrete solely, as claimed. Accordingly, we do not sustain the Examiner’s rejection under § 112(a) of independent claim 1 and its dependent claims 2–8. Appeal 2021-002123 Application 15/806,202 6 Rejection of claims 1–5 under § 103 over Bradenburg, Clapp, and Paradis Appellant argues the patentability of claims 1–5 together. See Appeal Br. 7–10. We select claim 1 as representative such that claims 2–5 stand or fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues that Bradenburg fails to disclose “wherein each of the one or more boards is joined to the vertical wall of hardened concrete solely by the infusion of the concrete into the respective fibrous facer,” as recited by claim 1. Appeal Br. 8. Appellant argues that Bradenburg’s additional layers are attached to the concrete base layer by a combination of fibers and adhesive, and not solely by the infusion of the concrete into any component. Id. at 9. Appellant argues that, interior-sheet component 14, reinforcing component 12, and exterior-sheet component 10 are attached to solid-phase base-substrate component 20 via fibrous component 18 and adhesive-layer component 16. Id. at 8 (citing Bradenburg ¶ 9). Claim 1 recites that “each of the boards compris[es] a polymer foam and a fibrous facer joined to the polymer foam.” The Examiner relies on Bradenburg’s board, where Paradis’s polymer is substituted for the Bradenburg’s polymer. See Final Act. 4. The Examiner refers to Bradenburg’s fibrous component 18 as a facer. Id. We agree with the Examiner that Bradenburg’s fibrous component 18 is a fibrous facer within the meaning of claim 1. See Bradenburg ¶ 14. Further, Bradenburg’s adhesive layer component 16 and fibrous component 18 are part of the board within the meaning of claim 1, where the claimed board comprises a polymer and a fibrous facer, joined to the polymer foam. See Claim App’x. Bradenburg’s adhesive component 16 joins fibrous component 18 to interior sheet 14, which can be composed of a polymer or polymer alloy. See Appeal 2021-002123 Application 15/806,202 7 Bradenburg ¶¶ 15–16. Accordingly, we disagree with Appellant that adhesive layer 16 attaches the board to the concrete because adhesive layer 16 is part of the board, within the meaning of claim 1. Rather, Bradenburg’s board is joined to the vertical wall of hardened concrete by the attachment of the concrete (solid-phase-substrate component 20) to fibrous facer 18. See Bradenburg ¶¶ 13 (solid-phase base substrate component 20 is a poured concrete), 23, 28 (liquid-phase base-substrate component is contacted with fibrous component 18 and allowed to cure creating sold-phase composite structure 1); see also id. ¶ 22 (fibers are embedded in and thereby mechanically attached to the solid-phase fixed matrix), ¶ 14 (fibrous component 18 mechanically attaches (either directly or indirectly) solid- phase base-substrate component 20 to the other components of solid-phase composite structure 1). Appellant also argues that the dimensional stability of the polymer- based composite structure of Paradis’s underlayment boards is describing advantages of its own boards as compared with prior art boards and these advantages have nothing to do with the proposed combination, i.e., to improve Bradenburg’s boards. See Appeal Br. 9–10. Appellant also argues that the proposed combination is based on hindsight because Bradenburg’s structure has no shortcomings in waterproofing, salt and corrosion resistance, color, pattern, barnacle resistance, graffiti resistance, or any other property. Id. at 10. The Examiner determines that Paradis’s polyisocyanurate polymer- based composite underlayment boards provide a myriad of desirable properties such as good dimensional stability, can be relatively light in weight, are easy to handle, and can be easily cut at the job site, exhibit good Appeal 2021-002123 Application 15/806,202 8 thermal and acoustical properties, are strong and durable, absorb and retain very little moisture, are fungus growth resistant, are flame spread resistant, and have good bonding surfaces. Ans. 10–11 (citing Paradis, 1:57–2:7). The Examiner determines that these properties would be desirable for the boards of Bradenburg which intends on providing a waterproofing polymer layer and corrosion resistant layer. Id. at 11. We agree with the Examiner that a person of ordinary skill would have sought to improve Bradenburg’s layers with the disclosed properties of Paradis’s boards, as set forth by the Examiner. See Paradis, 1:57–2:7. We determine that these properties could improve Bradenburg’s wall in a similar manner as they improved the prior art. Because the Examiner has provided articulated reasoning supported by the evidence of record, we disagree with Appellant’s argument that the rejection was based on improper hindsight. Appellant argues that there is nothing in Paradis that teaches that its polyisocyanurate material would provide the same waterproofing abilities as Bradenburg, and this shortcoming may render Bradenburg inoperable for its intended purpose of waterproofing. Reply Br. 6. Appellant provides no declaration or other form of evidence to supports its assertions. Rather, Appellant’s assertions essentially consist of attorney argument, which does not persuade us the Examiner erred. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Further, Paradis discloses that its polymer absorbs and retains very little water and is fungus growth resistant. Paradis, 2:2–4; Ans. 10–11. Moreover, even if Paradis’s foam had lesser waterproofing properties than Bradenburg’s foam as argued by Appellant, a person of ordinary skill might have sought simultaneously to take advantage of Paradis’s properties Appeal 2021-002123 Application 15/806,202 9 of absorbing very little water and its flame spread resistant property. See, e.g., Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157 (Fed. Cir. 2006) (a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine). Accordingly, we sustain the Examiner’s rejection of claims 1–5 under § 103 over Bradenburg, Clapp, and Paradis. Rejection of claims 6–8 under § 103 over Bradenburg, Clapp, and Paradis and one or more of Miks and Grace Appellant argues that Miks and Grace fail to remedy the argued deficiency in the rejection of independent claim 1 over Bradenburg, Clapp, and Paradis. Appeal Br. 10–11. Having found no deficiency therein, we sustain the Examiner’s rejection of claims 6–8 under § 103 over Bradenburg, Clapp, and Paradis and one or more of Miks and Grace, for similar reasons. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–8 112(a) Written description 1–8 1–5 103 Bradenburg, Clapp, Paradis 1–5 6, 8 103 Bradenburg, Clapp, Paradis, Miks 6, 8 7 103 Bradenburg, Clapp, Paradis, Miks, Grace 7 Overall Outcome 1–8 Appeal 2021-002123 Application 15/806,202 10 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 Copy with citationCopy as parenthetical citation