JOHNS MANVILLE

Patent Trials and Appeals Board

Sep 27, 2021

2021002123 (P.T.A.B. Sep. 27, 2021)

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 Claims 9–20 have been withdrawn from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).
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Application 15/806,202

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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).
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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).
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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.
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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.
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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
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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
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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
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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

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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