Wang, Lance et al.

Patent Trials and Appeals Board

Sep 9, 2019

15184513 - (D) (P.T.A.B. Sep. 9, 2019)

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.
15/184,513 06/16/2016 Lance Wang 8397 9524
29602 7590 09/09/2019
JOHNS MANVILLE
10100 WEST UTE AVENUE
PO BOX 625005
LITTLETON, CO 80162-5005
EXAMINER
VAN SELL, NATHAN L
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
09/09/2019 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 LANCE WANG, JOEL HAZY, and CHANGQING SHEN
____________

Appeal 2019-000880
Application 15/184,513
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
BRIAN D. RANGE, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–28. (Appeal Br. 6.) We have jurisdiction
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

1 This Decision includes citations to the following documents:
Specification filed June 16, 2016 (“Spec.”); Final Office Action mailed May
2, 2018 (“Final Act.”); Appeal Brief filed July 19, 2018 (“Appeal Br.”);
Examiner’s Answer mailed October 5, 2018 (“Ans.”); and Reply Brief filed
November 12, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Johns
Manville. (Appeal Br. 3.)
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THE INVENTION
Appellant states the invention relates to roofing systems, and in
particular, roofing systems containing granules coated in a fluorinated
(meth)acrylic copolymer that resists adsorption and absorption of asphaltic
chemicals by the granule. (Spec. 1, ll. 4, 27–32.)
Claim 1 is representative and reproduced below from the Claims
Appendix to the Appeal Brief:
1. A membrane roofing system, comprising:
a waterproof layer configured to protect an insulation layer;
and
an aluminum silicate granule having a particle size between 0.2
mm – 2.4 mm coupled to the waterproof layer, wherein the
aluminum silicate granule has a 65% or greater reflectivity and
is configured to reduce transmission of ultraviolet light to the
waterproof layer,
and wherein the aluminum silicate granule is, before coupling
to the waterproof layer, coated in a cationic fluorinated
(meth)acrylic copolymer that resists adsorption and absorption
of asphaltic chemicals by the aluminum silicate granule from
the waterproof layer.
(Appeal Br. (Claims Appendix) 13.)
Claims 9, 18, and 21 are also independent claims, with claims 9 and
21 reciting roofing systems and claim 18 reciting a method of manufacturing
a roofing system. (Id. at 13–15.)

REJECTIONS
1. The Examiner rejected claims 1, 3–11, 13–21, and 23–28 under 35
U.S.C. § 103 as obvious over Fensel et al. (US 2005/0238848 A1,
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published October 27, 2005, hereinafter “Fensel”) and Ornstein et al.
(US 6,113,978; issued September 5, 2000).
2. The Examiner rejected claims 2, 12, and 22 under 35 U.S.C. § 103 as
obvious over Fensel, Ornstein, and Brzozowski et al. (US 6,110,846;
issued August 29, 2000, hereinafter “Brzozowski”).
(Final Act. 2–13; Ans. 3–14.)
We select independent claim 1 for disposition of this appeal, which is
representative of the arguments made by Appellant (see Appeal Br. 11–12).
37 C.F.R. § 41.37(c)(1)(iv).
Rejection 1
ISSUE
The Examiner found Fensel discloses a roofing membrane with a
protective layer of granules embedded in and covering a top bituminous
composition, where the granules have reflectivity and size substantially
overlapping the ranges recited in claim 1. (Final Act. 2–3.) The Examiner
found that although Fensel discloses the granules may be coated to change
their properties, Fensel fails to disclose a granule coated in a cationic
fluorinated (meth)acrylic copolymer that resists adsorption and absorption of
asphaltic chemicals by the granule from the waterproof layer. (Id. at 3.) The
Examiner found Ornstein discloses compositions to protect asphaltic
materials from water, oil, and weather damage, where a fluorinated
meth(acrylate) monomer containing copolymer is applied to asphaltic
roofing surfaces. (Id. at 3–4.) The Examiner determined it would have been
obvious to have combined the compositions of Ornstein with the roofing
membranes of Fensel to protect the roofing membranes from water, oil and
weather damage, and it would have been obvious to have directly coated the
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granules prior to coupling the granules to the asphalt, because Fensel
discloses that granules may be coated and may protect the surface of the
roof. (Id. at 4.)
Appellant argues Fensel and Ornstein are not combinable because the
combination would change the principle of operation of Fensel, which
maintains the reflectivity of the roof mechanically through selecting material
properties of the granules, whereas Ornstein uses a chemical coating to
protect the asphalt. (Appeal Br. 6–7, 11.) Appellant argues Fensel discloses
its roofing materials already possess superior weatherability and resist
degradation from water, such that Fensel already solved all the problems
identified by the Examiner as reasons to combine Fensel and Ornstein, such
that the combination would be redundant and unnecessary. (Id. at 7–8.)
Appellant argues the rejection is based on hindsight because Appellant’s
invention protects the granules from asphalt and Ornstein protects the
asphalt from the weather. (Id. at 9.) Appellant contends the Declaration of
Dr. Lance Wang (Declaration of Dr. Lance Wang Pursuant to 37 C.F.R.
§ 1.132, executed on February 13, 2018, hereinafter “the Wang
Declaration”), provides evidence that Ornstein’s composition, including a
penetration assistant, would have increased affinity for the asphalt and
would have resulted in more staining of the granules rather than decreasing
staining. (Id. at 9–10.) Appellant argues that the Examiner’s position that
Ornstein’s penetration assistant would have been optional is based on
hindsight, which presupposes the invention. (Id. at 10–11.)
Accordingly, the dispositive issue with respect to this rejection is:
Considering the record as a whole, has Appellant identified a
reversible error in the Examiner’s determination that it would have been
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obvious to have combined Fensel and Ornstein in order to obtain an
aluminum silicate granule coated with cationic fluorinated (meth)acrylic
copolymer as recited in claim 1?

DISCUSSION
We are not persuaded by Appellant’s arguments that coating the
granules of Fensel would change the principle of operation thereof or that
because Fensel discloses protecting roofs from water, oil, and weather
damage, adding Ornstein’s coating to Fensel’s roofing materials would have
been redundant and unnecessary. As indicated by Appellant, Fensel
discloses selecting particles having high opacity and different particle sizes
in order to protect the roofing system from certain types of light and
degradation due to weather. (Appeal Br. 6–7; citing Fensel, ¶¶ 9, 17, 18, 20,
21, 55, 71.) However, Fensel discloses that the granules are selected to
“resist degradation from water and air, and/or from a variety of
environmental contaminants such as, but not limited to, acid rain, pollutants,
. . . etc.” (Fensel ¶ 71; Ans. 18.) Here, Fensel discloses also that “[t]he
granules can include a base substrate, and can be coated with one or more
coatings of a natural and/or man-made material.” (Id.) Therefore, contrary
to Appellant’s argument that Fensel discloses only that the particles may be
coated for purposes such as coloring and antimicrobial resistance (Appeal
Br. 6, citing Fensel ¶ 17), a fair reading of Fensel supports the Examiner’s
position that the granules disclosed therein include granules coated to
provide the resistance expressly desired in Fensel. (Ans. 18.) Thus, one of
ordinary skill in the art would have had a reason to apply the cationic
fluorinated (meth)acrylic copolymer disclosed in Ornstein as providing
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resistance to damage from weather to roofing materials as a coating to the
granules disclosed in Fensel. (Ornstein, col. 3, ll. 10–35, col. 8, ll. 12–52.)
As stated by the Supreme Court in KSR, “[i]n determining whether the
subject matter of a patent claim is obvious, neither the particular motivation
nor the avowed purpose of the patentee controls. What matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007). Accordingly, we are not persuaded by Appellant’s argument that the
Examiner’s rejection is based on speculation or hindsight. (Appeal Br. 8–9;
see Ans. 19–20.)
In this regard, and as to the recitation in claim 1 that the coated
granule “resists adsorption and absorption of asphaltic chemicals by the
aluminum silicate granule from the waterproof layer,” we agree with the
Examiner that to the extent that this property is an additional advantage not
previously recognized in the art, such cannot be the basis for patentability,
because it would flow naturally from following the suggestion of the prior
art. (Ans. 20, citing Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985).)
We are not persuaded by Appellant’s argument that should Fensel’s
granule be treated with Ornstein’s composition, the granules would have
increased affinity for asphalt due to the presence of a penetration assistant,
such that the granules would not resist adsorption and absorption of asphaltic
chemicals. (Appeal Br. 20–21.) Rather, we agree with the Examiner
Ornstein discloses that the penetration assistant is not required. (Ans. 20,
citing Ornstein, col. 8, ll. 23–33, (“Preferably, the compositions are prepared
by adding the fluorochemical copolymer and, if desired, the penetration
assistant . . .” (emphasis in original)).) Thus, we are not persuaded that the
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Examiner’s position is based on hindsight because Ornstein discloses
expressly that the penetration assistant is not needed. For this reason, we
agree with the Examiner that the Wang Declaration is not persuasive
because it is based on the position that penetration assistant in Ornstein is
required. (Ans. 21; Wang Decl. ¶ 7.)
Accordingly, we affirm the Examiner’s rejection of claim 1, and
claims 3–11, 13–21, and 23–28.

Rejection 2
Appellant does not present separate arguments for dependent claims 2,
12, and 22, the subject of Rejection 2, but rather relies on the dependency of
those claims from claims 1, 9, and 21 as the basis for patentability. (Appeal
Br. 12.) As a result, we affirm the Examiner’s rejection of these claims as
well for similar reasons as discussed above with respect to Rejection 1.

DECISION
We affirm the Examiner’s decision rejecting claims 1–28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED