Wang, Lance et al.Download PDFPatent Trials and Appeals BoardSep 9, 201915184513 - (D) (P.T.A.B. Sep. 9, 2019) 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. 15/184,513 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.) Appeal 2019-000880 Application 15/184,513 2 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, Appeal 2019-000880 Application 15/184,513 3 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 Appeal 2019-000880 Application 15/184,513 4 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 Appeal 2019-000880 Application 15/184,513 5 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 Appeal 2019-000880 Application 15/184,513 6 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 Appeal 2019-000880 Application 15/184,513 7 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 Copy with citationCopy as parenthetical citation