3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Apr 30, 2020

15161025 - (D) (P.T.A.B. Apr. 30, 2020)

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.
15/161,025 05/20/2016 Feng Bai 62734US008 1984
32692 7590 04/30/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
04/30/2020 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FENG BAI, RACHAEL A. T. GOULD, and
MARK T. ANDERSON
____________

Appeal 2019-004310
Application 15/161,025
Technology Center 1700
____________

Before MICHAEL G. McMANUS, MERRELL C. CASHION, JR., and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–18.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies 3M Company and 3M Innovative
Properties Company as the real parties in interest. Appeal Brief filed
November 26, 2018 (“Appeal Br.”) at 2.
2 Final Office Action entered July 6, 2018 (“Final Act.”) at 1.
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CLAIMED SUBJECT MATTER
Appellant claims a coated roofing granule. Appeal Br. 2. Claim 1,
the sole pending independent claim, illustrates the subject matter on appeal,
and is reproduced below:
1. A coated roofing granule, comprising
a porous or non-porous weather-resistant rock or mineral
material, in natural form or optionally colored by a ceramic
coating; and
a continuous or discontinuous adhesion promoter coating
comprising an oil and a chemically modified or functionalized
polyolefin which is soluble in the oil.

Appeal Br. 10 (Claims Appendix) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered March 11, 2019 (“Ans.”):
I. Claims 1–18 under 35 U.S.C. § 112, first paragraph, for failing
to comply with the enablement requirement;
II. Claims 1–5 and 12 under 35 U.S.C. § 103(a) as unpatentable
over Graham3 in view of Grube,4 as evidenced by Cross;5
III. Claims 6, 7, 9–11, 13, 14, and 16–18 under 35 U.S.C. § 103(a)
as unpatentable over Graham in view of Grube and Jacobs,6 as evidenced by
Park;7 and

3 US 5,286,544, issued February 15, 1994.
4 US 6,583,202 B1, issued June 24, 2003.
5 Cross Oil Refining & Marketing Inc., Cross L-Series Safety Data Sheet,
June 13, 2013.
6 US 6,569,520 B1, issued May 27, 2003.
7 US 2009/0262520 A1, published October 22, 2009.
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IV. Claims 6–11 and 13–18 under 35 U.S.C. § 103(a) as
unpatentable over Graham in view of Grube and Akarsu,8 as evidenced by
Park.
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejection of
claims 1–18 under 35 U.S.C. § 112, first paragraph for failing to comply
with the enablement requirement, and rejections of claims 1–18 under 35
U.S.C. § 103(a), for reasons set forth in the Appeal Brief and below.
Rejection I
We first address the Examiner’s rejection of claims 1–18 under 35
U.S.C. § 112, first paragraph for failing to comply with the enablement
requirement.
The Examiner determines that “the claims recite ‘an oil’ and a
chemically modified or functionalized polyolefin which is soluble in the
oil,” and the recited oil “is open to any type of oil in which chemically
modified or functionalized polyolefins would be soluble.” Ans. 8. The
Examiner determines that “[t]he only reference of ‘oil’ in the present
specification is in the Examples which disclose one specific type of ‘L-500
oil’” and because “there are many types of chemically modified or
functionalized polyolefins, experimentation on multiple combinations of
polyolefin and oils would be required to determine which types of oils are
within the scope of the claim.” Ans. 8; see also Final Act. 2. The Examiner
determines that “given the lack of guidance in the present specification and

8 US 2005/019505 A1, published September 1, 2005.
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the great quantity of experimentation necessary to determine [what] types of
oils are within the scope of the claim, undue experimentation would be
required.” Ans. 8.
On the record before us, however, the Examiner does not establish
that Appellant’s Specification does not enable the full scope of the claimed
subject matter, for reasons discussed below.
The test of enablement is not whether any experimentation would be
necessary for one of ordinary skill in the art to make and use a claimed
invention. Rather, the test is whether the necessary experimentation would
be undue. In re Angstadt, 537 F.2d 498, 504 (CCPA 1976). “The test [of
what constitutes undue experimentation] is not merely quantitative, since a
considerable amount of experimentation is permissible, if it is merely
routine.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Appellant and the Examiner agree that the experimentation required
for one of ordinary skill in the art to make and use the claimed coated
roofing granule would involve, in part, identifying one or more oils in which
a chemically modified or functionalized polyolefin is soluble. Compare
Ans. 8, 11, with Appeal Br. 6. As Appellant argues, however, “solubility
tables could be consulted,” and if solubility tables were not available, the
necessary “experimentation would be routine because it would only involve
placing a chemically modified or functionalized polyolefin in an oil and
observing whether or not it dissolved.” Appeal Br. 6.
Appellant’s Specification exemplifies use of L-500 oil to produce
several roofing granule coating compositions (Spec. pp. 9–11), and Cross
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evidences that L-500 is a naphthenic oil (Cross9 p. 1). In addition, Appellant
points out that extensive prior art exists “about the nature of oils, including
petroleum oils such as naphthenic oils.” Appeal Br. 5. For example,
Graham10 discloses a roofing granule coating composition that includes an
oil. Graham col. 2, ll. 29–34. Graham discloses that suitable oils for roofing
granules “would typically be one of three petroleum oils: (1) paraffinic oils;
(2) naphthenic oils; and (3) aromatic oils, or would be a mixture thereof.”
Graham col. 2, ll. 44–49. Graham goes on to explain that “[i]t has been
found that these three petroleum oils are particularly suitable for use with the
roofing granules because they modify the surfaces of the granules to
promote adhesion of the granules to the asphalt substrate.” Graham col. 2,
ll. 49–53.
Graham thus evidences that one of ordinary skill in the art would have
known that paraffinic oils, naphthenic oils, and aromatic oils are suitable for
use in roofing granule coating compositions. Testing such an oil to
determine whether a particular chemically modified or functionalized
polyolefin is soluble in the oil would involve nothing more than routine
experimentation, as Appellant argues, as would testing any other type of oil
for such solubility. Appeal Br. 6. Although considerable experimentation
may be required to test a multitude of chemically modified or functionalized
polyolefins for solubility in a multitude of oils, such experimentation
nonetheless would be merely routine for one of ordinary skill in the art.

9 The Examiner relies on Cross as an evidentiary reference in the Examiner’s
rejection of claim 1 under § 103(a), discussed below. Final Act. 4–5.
10 The Examiner relies on Graham as an applied prior art reference in the
rejections under § 103(a), discussed below. Final Act. 4–7.
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Consequently, in view of the working examples provided in
Appellant’s Specification, and the state of the prior art and level of ordinary
skill in the art at the time of the invention, as evidenced in part by Graham,
the Examiner does not establish that the experimentation required for one of
ordinary skill in the art to make and use the full scope of the claimed coated
roofing granules would be undue.
We, accordingly, do not sustain the Examiner’s rejection of claims 1–
18 under 35 U.S.C. § 112, first paragraph for failing to comply with the
enablement requirement.
Rejection II
We turn next to the Examiner’s rejection of claims 1–5 and 12 under
35 U.S.C. § 103(a) as unpatentable over Graham in view of Grube, as
evidenced by Cross.
Claim 1 requires the recited coated roofing granule to comprise a
weather-resistant rock or mineral material, and an adhesion promoter coating
comprising an oil and a chemically modified or functionalized polyolefin
that is soluble in the oil.
The Examiner finds that Graham discloses a coated roofing granule
comprising a weather-resistant rock or mineral material, and an adhesion
promoter coating comprising an oil and a polyolefin, but “fails to teach [a]
chemically modified or functionalized polyolefin.” Final Act. 4 (citing
Graham col. 2, ll. 37–40, 44–49; col. 3, ll. 62–66). The Examiner finds,
however, that Grube discloses an asphalt/polymer composition comprising
an inorganic filler and maleic anhydride-modified polypropylene, which the
Examiner finds corresponds to a roofing granule coated with a composition
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comprising a chemically modified or functionalized polyolefin. Id. (citing
Grube col. 1, ll. 51–65; col. 2, ll. 3–8, 60–64).
The Examiner concludes that “[i]t would have been obvious to one of
ordinary skill in the art at the time of the invention to use the maleic
anhydride functionalized polypropylene in the coated roofing granule of
Graham in order to improve compatibility and flexibility.” Id. (citing Grube
col. 1, ll. 5–10; col. 3, ll. 11–20).
On the record before us, however, the Examiner does not articulate
reasoning having rational underpinning that explains why one of ordinary
skill in the art would have combined the relied-upon disclosures of Graham
and Grube to arrive at a coated roofing granule as recited in claim 1, for
reasons expressed by Appellant and discussed below.
The “Background of the Invention” section of Graham explains that
typical asphalt-based roofing shingles include an asphalt substrate and a
multitude of roofing granules secured to a substrate. Graham col. 1, ll. 13–
31. The “Background of the Invention” section of Graham further explains
that oils in the asphalt creep onto the surface of the granules and are
absorbed by the granules, which causes discoloration of the granules, and
results in discoloration of the shingles. Graham col. 1, ll. 37–42. Graham
discloses that its invention is directed to a composition for coating roofing
granules that greatly reduces asphalt oil creep, and also greatly reduces the
creation of roofing granule dust. Graham col. 1, ll. 51–53; col. 2, ll. 29–34.
Graham discloses that the composition of Graham’s invention comprises an
oil and an elastomeric rubber. Graham col. 1, ll. 51–53; col. 2, ll. 29–43.
Graham discloses that the elastomeric rubber is preferably a copolymer of
non-elastomeric monomer units and elastomeric monomer units, and the
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copolymer preferably has a block structure including at least one A block
polymer and at least one B block polymer, where A represents a non-
elastomeric polymer block and B represents an elastomeric polymer block.
Graham col. 3, ll. 23–31. Graham discloses that the non-elastomeric
polymer blocks could comprise homopolymers of lower olefins, such as
polyethylene or polypropylene. Graham col. 3, ll. 62–66.
Grube discloses a flexible asphaltic roofing membrane comprising a
non-woven mat coated on at least one surface with an asphaltic/olefin
polymer composition. Grube col. 1, ll. 5–10, 51–53. Grube discloses that
the asphaltic/olefin polymer composition comprises asphalt, isotactic C2 to
C3 olefin polymer, amorphous C2 to C3 olefin polymer, a functionalized
ethylene and/or propylene polymer, and up to 50% filler. Grube col. 1, ll.
50–65. Grube discloses that the inorganic filler may be “any of the
commercially standard types, such as calcium carbonate, limestone, talc,
sand, clay, stone dust, etc.” Grube col. 2, ll. 60–63.
Grube discloses that previous asphalt formulations for producing
roofing membranes exhibited relatively poor compatibility between the
asphalt and the polymer components of the formulations, and Grube explains
that including a functionalized olefin polymer in Grube’s inventive
composition overcomes this incompatibility, and yields further benefits,
including providing a flexible coating that imparts flexibility to the non-
woven coated mat. Grube col. 3, ll. 11–20; col. 1, ll. 23–29. Grube thus
discloses an asphalt composition used to coat a non-woven mat for
producing an article similar to the asphalt substrate described in the
Background of the Invention section of Graham to which roofing granules
are applied.
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Appellant argues that Grube does not disclose a composition for
coating roofing granules—the subject of Graham’s invention—but instead
“teaches a roofing or siding membrane which comprises a non-woven mat
coated with an asphaltic composition.” Appeal Br. 7.
The Examiner responds to Appellant’s argument in the Answer by
stating that Graham “already discloses” a coated roofing granule, but “Grube
also additionally discloses a coated roofing granule” because the inorganic
filler in Grube’s polymer composition is a mineral material, and “the
inorganic filler is a separate element from the binder, i.e. coating. Therefore,
it is clear that the granule is coated with the polymer composition which is
used for roofing, i.e. coated roofing granule.” Ans. 13. The Examiner
determines that Graham and Grube are thus both “drawn to coated roofing
granules.” Ans. 14.
As Appellant points out, however, and as discussed above, Grube
discloses that a filler is one component of Grube’s asphaltic polymer
composition, rather than a separate element from the coating composition.
Appeal Br. 7–8; Grube col. 1, ll. 50–65. Contrary to the Examiner’s
assertion, Graham and Grube, therefore, are not both drawn to coated
roofing granules. Rather, Grube’s composition is an asphaltic composition
used to coat a non-woven mat for producing a roofing membrane, and
functions to enhance compatibility between polymer and asphalt
components of the composition, and imparts flexibility to the resulting
membrane, while Graham’s composition is used for coating roofing
granules, and functions to reduce asphalt oil creep and roofing granule dust
creation.
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On the record before us, the Examiner does not provide a persuasive,
reasoned explanation, grounded in sound technical reasoning, for why one of
ordinary skill in the art would have found Grube’s functionalized propylene
polymer, which is included in an asphaltic/olefin polymer composition used
to coat a non-woven mat to produce a roofing membrane, and overcomes
incompatibility between asphalt and polymer components in the
composition, while imparting flexibility to the mat, useful in Graham’s
composition for coating roofing granules, which comprises an oil and an
elastomeric rubber.
Although the Examiner asserts that “[i]t would have been obvious to
one of ordinary skill in the art at the time of the invention to use the maleic
anhydride functionalized polypropylene in the coated roofing granule of
Graham in order to improve compatibility and flexibility” (Final Act. 4), the
Examiner does not explain why one of ordinary skill in the art would have
found a flexible roofing granule to be useful or desirable. Nor does the
Examiner describe the sort of compatibility that would be improved by
including a functionalized propylene polymer as disclosed in Grube in
Graham’s coating composition, which does not include asphalt.
We, accordingly, do not sustain the Examiner’s rejection of claim 1,
and claims 2–5 and 12, which each depend from claim 1, under 35 U.S.C.
§ 103(a) as unpatentable over Graham in view of Grube.
Rejections III and IV
We turn now to the Examiner’s rejection of claims 6, 7, 9–11, 13, 14,
and 16–18 under 35 U.S.C. § 103(a) as unpatentable over Graham in view of
Grube and Jacobs as evidenced by Part (Rejection III), and the Examiner’s
rejection of claims 6–11 and 13–18 under 35 U.S.C. § 103(a) as
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unpatentable over Graham in view of Grube and Akarsu as evidenced by
Part (Rejection IV).
We also do not sustain these rejections because the Examiner does not
rely on the additional prior art references applied in these rejections for any
disclosure that cures the deficiencies in the Examiner’s reliance on Graham
and Grube, discussed above for Rejection II. Final Act. 5–7.

CONCLUSION

Claims
Rejected

35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–18 112, first
paragraph
Enablement 1–18
1–5, 12 103(a) Graham, Grube,
Cross
1–5, 12
6, 7, 9–11,
13, 14, 16–
18
103(a) Graham, Grube,
Jacobs, Park
6, 7, 9–11,
13, 14, 16–18
6–11, 13–
18
103(a) Graham, Grube,
Akarsu, Park
6–11, 13–18
Overall
Outcome
1–18

REVERSED