3M INNOVATIVE PROPERTIES COMPANY et al.

Patent Trials and Appeals Board

Oct 14, 2021

2021001647 (P.T.A.B. Oct. 14, 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.
14/396,197 10/22/2014 Feng Bai 67881US004 3795
32692 7590 10/14/2021
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
FERENCE, JAMES M
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
10/14/2021 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):
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, KENTON D. BUDD,
REBECCA L. EVERMAN, and CRAIG W. LINDSAY

Appeal 2021-001647
Application 14/396,197
Technology Center 3600
____________

Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 4, 10, 13, 15, 18–20, 23, and 28.
See Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM the Examiner’s rejections of these claims.

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 “3M
Company (formerly known as Minnesota Mining and Manufacturing
Company) of St. Paul, Minnesota and its affiliate 3M Innovative Properties
Company of St. Paul, Minnesota.” Appeal Br. 2.
Appeal 2021-001647
Application 14/396,197

2
CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to roofing granules. More
particularly, the present disclosure relates to high solar reflectivity roofing
granules.” Spec. ¶ 1.2 Apparatus claims 1 and 19 are independent. Claim 1
is illustrative of the claims on appeal and is reproduced below.
1. A roofing granule comprising:
a low solar absorption base that absorbs less than 50% of
the total solar spectrum; and
a low solar absorption and solar opaque coating
presented on said base that transmit less than 60% of the total
solar spectrum, said coating comprising a binder, a pigment,
wherein said binder comprises a curable component and a non-
clay, thermally reactive curing agent;
wherein the granule does not have specific absorption in
the visible region of the solar spectrum,
wherein said base comprises a total solar reflectivity
having a cup brightness of at least about 0.70 reflectivity and is
selected from the group consisting of polycrystalline silicate,
polycrystalline silica, glass ceramic, devitrified ceramic, phase-
separated glass, polycrystalline fused oxide, white cement, and
any combinations thereof.
EVIDENCE
Name Reference Date
Cuno US 2,439,650 Apr. 13, 1948
Jacobs US 6,569,520 B1 May 27, 2003
Ganpule US 2006/0260255 A1 Nov. 23, 2006
Hong et al. (“Hong”) US 2010/0240526 A1 Sept. 23, 2010
Shiao et al. (“Shiao”) US 2011/0159240 A1 June 30, 2011

2 We reference US Publication No. 2015/0113901 A1 dated April 30, 2015.
Appeal 2021-001647
Application 14/396,197

3
REJECTIONS
Claims 1, 3, 4, 10, 13, 15, 18–20, 23, and 28 are rejected under 35
U.S.C. § 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which applicant regards as
the invention.
Claims 1, 3, 4, 10, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jacobs, Hong, and Cuna.
Claims 1, 3, 4, 10, 15, 18–20, and 23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Jacobs, Shiao, and Cuna.
Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Jacobs, Hong, Cuno, and Ganpule.
Claims 13 and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jacobs, Shiao, Cuna, and Ganpule.
ANALYSIS
The rejection of claims 1, 3, 4, 10, 13, 15, 18–20, 23, and 28
as being indefinite
Regarding independent claim 1, the Examiner addresses the limitation
“low solar absorption” in line 3 stating that this limitation is indefinite
because it “is a relative term” and that “the claim does not define what
constitutes ‘low solar absorption’ for the coating.” Final Act. 2–3; see also
Ans. 19. Appellant disagrees stating that “low solar absorption” is defined
in paragraph 59 of Appellant’s Specification. See Appeal Br. 7. Paragraph
59 of Appellant’s Specification states that this claim phrase “can refer to
materials that primarily reflect or transmit a large fraction of the total solar
spectrum.” This paragraph also describes embodiments in which the
material “would absorb less than 50%, preferably less than 30%, and
Appeal 2021-001647
Application 14/396,197

4
optimally less than 20% of the total solar spectrum.” Consistent with this
description, line 2 of claim 1 recites “a low solar absorption base that
absorbs less than 50% of the total solar spectrum.”
Our reviewing court has rejected the proposition that claims involving
terms of degree are inherently indefinite. See Interval Licensing LLC v.
AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014). In other words, “a
patentee need not define his invention with mathematical precision in order
to comply with the definiteness requirement.” Invitrogen Corp. v. Biocrest
Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005). In view of the above,
Appellant’s Specification and claim language have provided guidance and a
standard by which to understand the boundaries of the claim phrase “low
solar absorption.” Accordingly, we disagree with the Examiner that claim 1,
read in conjunction with Appellant’s Specification and other limitations,
fails to (as per the Examiner) “define what constitutes ‘low solar absorption’
for the coating.” Final Act. 3; see also Ans. 19. We reverse this indefinite
rejection of claim 1.
The Examiner also addresses the claim 1 limitation reciting, “a low
solar absorption and solar opaque coating . . . that transmit . . ..” Final Act.
3; see also Ans. 19. The Examiner asks, “[i]s the coating one coating or
more than one coating?” Final Act. 3 (noting that “‘that transmit’ is written
in the form of the coating being plural coatings”); see also Ans. 19 (“the
claim language that follows, ‘that transmit’ implies plural coatings. Do
appellants intend to recite, ‘that transmits’?”). Appellant does not respond to
this query, answering instead by identifying where the definition of “solar
opaque” can be found in Appellant’s Application (it can be found in
paragraph 60). See Appeal Br. 7. Paragraph 60 of Appellant’s Specification
Appeal 2021-001647
Application 14/396,197

5
describes a material that “is both solar opaque and has low solar absorption,”
but does not clarify the number of coatings this material forms. Because
Appellant does not respond to the Examiner’s inquiry and apprise us of
error, and because paragraph 60 of Appellant’s Specification is also silent on
this point, we sustain the Examiner’s rejection that this limitation of claim 1
is indefinite.
Still addressing claim 1, the Examiner further notes that “‘the granule’
(line 6) is indefinite because the limitation lacks proper antecedent basis in
the claims.” Final Act. 3. Appellant does not dispute this, stating,
“[A]ppellants will correct . . . the antecedent basis in claim 1” should the
claim be in a condition for allowance. Appeal Br. 8. As claim 1 now stands,
however, we sustain the Examiner’s rejection that “the granule” lacks
antecedent basis.
The Examiner also addresses claims 13 and 28, stating that the claim
from which each one depends (i.e., claims 11 and 26 respectively) “has been
cancelled.” Final Act. 3, 4. Appellant states that they “will correct the claim
dependency in claims 13 and 28” in the event the claims are in a condition
for allowance. Appeal Br. 8. Similar to the above, and based on claims 13
and 28 as currently written, we sustain the Examiner’s rejection of these
claims for being dependent upon a cancelled claim.
Additionally the Examiner addresses claim 19. See Final Act. 3; Ans.
19–20. The Examiner notes that this claim requires “the roofing granule to
be ‘uncolored’ (lines 1 and 6)” yet the granule is recited also “to comprise ‘a
pigment’ (line 3).” Final Act. 3. The Examiner states that “[i]t is unclear
how the claimed roofing granule can be uncolored and comprise a pigment.”
Final Act. 3; see also Ans. 20. Appellant does not provide any explanation
Appeal 2021-001647
Application 14/396,197

6
other than to refer to paragraph 58 of Appellant’s Specification which
defines “uncolored,” while asserting “that ‘pigment’ can be ‘selected from’”
a certain group (referencing paragraph 23). Appeal Br. 7, 8. Appellant
concludes that “[i]t would be clear to a skilled person in the art that [the]
claimed roofing granule is uncolored and comprises a pigment.” Appeal Br.
8. The Examiner reiterates that “[t]he plain meaning of ‘uncolored’ is
without color, as in pure white. The plain meaning of ‘pigment’ is a
substance that imparts color to other materials.” Final Act. 3; Ans. 20. The
Examiner further states that “[t]he material that defines the pigment (printed
publications [0023]) is irrelevant to appellant’s argument since the material
nonetheless includes a pigment and thus imparts color which contradicts the
claimed roofing granule being uncolored.” Ans. 20; see also Final Act. 3.
Appellant does not further challenge the Examiner’s assertion, nor
does Appellant indicate how the Examiner’s understanding of both
“uncolored” and “pigment” might be in error. We agree with the Examiner
on this point because the use of these terms to describe the same “uncolored”
granule appears contradictory, and Appellant proffers no clarification as to
how it might be otherwise. Accordingly, we sustain the Examiner’s
rejection of claim 19 because, as stated by the Examiner, “the scope of the
claim requiring an uncolored roofing granule while also having a pigment is
indefinite.” Ans. 20.
Thus, in summation and based on claim dependency, we sustain the
Examiner’s rejection of claims 1, 3, 4, 10, 13, 15, 18–20, 23, and 28 as being
indefinite.
Appeal 2021-001647
Application 14/396,197

7
The rejection of claims 1, 3, 4, 10, and 18
as unpatentable over Jacobs, Hong, and Cuna
Appellant argues all these claims together. See Appeal Br. 8–9. We
select claim 1 for review, with claims 3, 4, 10, and 18 standing or falling
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).
Claim 1 recites a roofing granule having various characteristics,
including a binder that “comprises a curable component and a non-clay.”
Italics added. The Examiner relies on Jacobs and Cuna for many of the
limitations of claim 1, but relies on Hong for teaching “a binder for a roofing
granule comprising a non-clay thermally reactive curing agent.” Final Act.
6; see also Ans. 20. Specifically, the Examiner identifies where Hong
teaches the use of “colloidal silica.” Final Act. 6; see also Ans. 20 (both
referencing Hong ¶ 39 (“Preferably, the binder further includes colloidal
silica.”)). Hong’s use of “colloidal silica” is of importance because
Appellant’s Specification states, “[c]olloidal silica has been shown to be an
alternate heat curing agent to clay.” Spec. ¶ 67. Hence, colloidal silica is, in
accordance with Appellant’s Specification, understood to be a “non-clay.”
Appellant does not dispute this and acknowledges that Hong employs
this binder material, but contends that Hong does not employ it for the same
reason it is employed by Appellant. See Appeal Br. 8. Appellant states,
“[a]n ordinary person skilled in the art would not be suggested or motivated
to use a composition including clay taught by Hong, to solve the problem
where the use of clay needs to be eliminated.” Appeal Br. 8. However,
although Appellant’s desire to eliminate the use of clay is not the issue
addressed by Hong, Hong, nevertheless, clearly teaches the use of non-clay
colloidal silica as a binder maternal.
Appeal 2021-001647
Application 14/396,197

8
Regarding the matter of Appellant addressing a different problem, our
reviewing court has provided instruction that the proper inquiry is whether
an ordinarily skilled artisan is “able to recognize, based on her background
knowledge, [a technique’s] potential to improve the device and be able to
apply the technique.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995,
1003 (Fed. Cir. 2016). In other words, our reviewing court has provided
instruction that a challenger need not prove that there was a known problem
with the prior art in order to demonstrate that there was a motivation to
combine prior art references. See Unwired Planet, 841 F.3d at 1002–03.
Furthermore, “[t]he use of patents as references is not limited to what the
patentees describe as their own inventions or to the problems with which
they are concerned. They are part of the literature of the art, relevant for all
they contain.” In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983).
In view of the above, we are not persuaded the Examiner erred by
relying on Hong for teaching the use of a non-clay as part of the binder. We
sustain the Examiner’s rejection of 1, 3, 4, 10, and 18 as unpatentable over
Jacobs, Hong, and Cuna.
The rejection of claims 1, 3, 4, 10, 15, 18–20, and 23
as unpatentable over Jacobs, Shiao, and Cuna
Appellant argues these claims together. See Appeal Br. 9. We select
claim 1 for review. In this rejection, the Examiner relies on Shiao for
teaching the “non-clay” limitation. See Final Act. 9; Ans. 21. Appellant
does not dispute Shiao’s use thereof, only that Shiao’s particle is “distinct
from ‘non-clay, thermally reactive curing agent’ disclosed in [the] present
application.” Appeal Br. 9. Appellant states that “[o]nly [a] specific form of
silica can be used as curing agent to provide this advantage” and references
Appeal 2021-001647
Application 14/396,197

9
paragraph 102 of Appellant’s Specification that identifies “NALCO 2327
from NALCO Chemical Company.” Appeal Br. 9. Claim 1 is not so
specific, and does not restrict the recited “non-clay” to only this NALCO
product. Instead, claim 1 recites a binder that “comprises . . . a non-clay”
curing agent. Appellant does not explain how Shiao’s particle fails to meet
this limitation, or how the Examiner is wrong by relying on Shiao as
teaching it. See Ans. 21 (“Thus, Shiao meets the limitation of the non-clay
thermally reactive curing agent as claimed.”).
Appellant also alleges that Shiao does not address the same problem
addressed by Appellant and thus, Shiao “fails to teach or properly suggest
that [Shiao’s product] is a thermally reactive curing agent.” Appellant’s
contention focusing on the problem that it addressed is not persuasive of
Examiner error for the same reasons previously expressed.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 1, 3, 4, 10, 15, 18–20, and 23 as unpatentable
over Jacobs, Shiao, and Cuna.
Regarding the remaining two rejections of claims 13 and 28,
Appellant does not present separate arguments on their behalf but instead
contends that they stand “with claim 1 as above” and that they “are hence
likewise patentable.” Appeal Br. 10. Appellant’s contentions are not
persuasive the Examiner erred in rejecting these claims. See also Ans. 21.
We sustain their rejection.

Appeal 2021-001647
Application 14/396,197

10
CONCLUSION
In summary:

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 4, 10,
13, 15, 18–
20, 23, 28
112 Indefiniteness 1, 3, 4, 10,
13, 15, 18–
20, 23, 28

1, 3, 4, 10,
18
103 Jacobs, Hong, Cuna 1, 3, 4, 10,
18

1, 3, 4, 10,
15, 18–20,
23
103 Jacobs, Shiao, Cuna 1, 3, 4, 10,
15, 18–20,
23

13 103 Jacobs, Hong, Cuno,
Ganpule
13
13, 28 103 Jacobs, Shiao, Cuna,
Ganpule
13, 28
Overall
Outcome
1, 3, 4, 10,
13, 15, 18-
20, 23, 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).

AFFIRMED