Ali, Mahfuza B. et al.

Patent Trials and Appeals Board

Jan 17, 2020

15302885 - (D) (P.T.A.B. Jan. 17, 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.
15/302,885 10/07/2016 Mahfuza B. Ali 75246US020 3688
32692 7590 01/17/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
VAN SELL, NATHAN L
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
01/17/2020 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 MAHFUZA B. ALI, SUSANNAH C. CLEAR,
TERRY R. HOBBS, JEFFRY L. JACOBS, HAE-SEUNG LEE, and
MARY LOU MORRIS

____________

Appeal 2019-003041
Application 15/302,885
Technology Center 1700
____________

Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and
N. WHITNEY WILSON, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 11–19 under 35 U.S.C. § 103 as
unpatentable over at least the combined prior art of Whitaker (US

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies ATI Properties LLC as the real party
in interest (Appeal Br. 1).
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2010/0203290 A1; published Aug. 12, 2010) and Dhein (US 5,190,932;
Mar. 2, 1993).2
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 11 is illustrative of the subject matter on appeal:
11. A roofing granule comprising:
a base roofing granule; and
a coating on the base granule, the coating comprising an
acrylate polymer comprising a quaternary ammonium moiety.

Independent claim 19 is directed to a “construction material”
comprising a coating composition similar to the coating of claim 11 (Appeal
Brief Claims Appendix 7, 8). Appellant’s arguments focus on limitations
common to independent claims 11 and 19, and they do not present additional
arguments for any claim (see generally Briefs). Accordingly, all claims,
including those separately rejected, stand or fall together.

OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejections (e.g., see generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of

2 The additional references applied to various dependent claims are listed in
the Summary Table located at the end of this Decision. A discussion of
these references is not necessary for disposition of this appeal.
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requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejections for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant’s main contention is that Whitaker teaches away from using
quarternary amines as an algicide and/or bactericide in its coatings because
Whitaker states that “specific classes of quaternary amines” do not work
well (Whitaker ¶ 114), and instead uses in-situ photodynamic catalysts
(Appeal Br. 3, 4; Reply Br. 1). Appellant also argues that there is no
motivation to combine Whitaker with Dhein (Appeal Br. 4; Reply Br. 1, 2).
Appellant’s arguments are not persuasive of reversible error for reasons
presented by the Examiner (Ans. 10–13).
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419–20 (2007), the
Supreme Court stated that:
In determining whether the subject matter of a . . . 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
. . . [unpatentable] under § 103. One of the ways in which a
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patent’s subject matter can be proved obvious is by noting that
there existed at the time of [the] invention a known problem for
which there was an obvious solution encompassed by the
patent’s claims.

“The Supreme Court’s decision in KSR . . . directs us to construe the scope
of analogous art broadly, stating that ‘familiar items may have obvious uses
beyond their primary purposes, and a person of ordinary skill often will be
able to fit the teachings of multiple patents together like pieces of a puzzle.’”
Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (quoting
KSR, 550 U.S. at 420).
It is also well established that a prior art reference must be considered
in its entirety, i.e., as a whole, when determining if it would lead one of
ordinary skill in the art away from the claimed invention. W.L. Gore &
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983); In re
Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (whether a reference teaches
away from a claimed invention is a question of fact).
One of ordinary skill in the art would have inferred and readily
appreciated that a known microbiocidal coating that uses water soluble
acrylate polymers with quarternary ammonium groups such as taught in
Dhein (a coating that is not the same as the specific classes of quaternary
amines taught in Whitaker to be unacceptable as biocidal agents) may be
used on any industrial material (Dhein col. 9, l. 50 to col. 10, l. 10). An
artisan of ordinary skill would have weighed the advantages and
disadvantages of known microbiocidal techniques, such as those in situ
photocatalysts taught in Whitaker and the coatings taught in Dhein. “The
fact that the motivating benefit comes at the expense of another benefit,
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however, should not nullify its use as a basis to modify the disclosure of one
reference with the teachings of another. Instead, the benefits, both lost and
gained, should be weighed against one another.” Winner Int’l Royalty Corp.
v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000).
Likewise, Appellant’s arguments regarding the lack of motivation to
combine the cited art (Appeal Br. 4; Reply Br. 2) are also unpersuasive for
the reasons given above. That is, the arguments fail to account for “the
inferences and creative steps that a person of ordinary skill in the art would
employ.” See KSR, 550 U.S. at 418.
Thus, Appellant has not shown reversible error in the Examiner’s
position that it would have been obvious for one of ordinary skill to have
used a known microbicide formulation coating technique as exemplified in
Dhein on the roofing granules/asphalt construction (industrial) materials of
Whitaker, as an alternative to, or in addition to, the photocatalysts used
therein. See KSR, 550 U.S. at 417 (the predictable use of known prior art
elements or steps performing the same functions they have been known to
perform is normally obvious; the combination of familiar elements/steps is
likely to be obvious when it does no more than yield predictable results);
Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d
984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth by the
Supreme Court, the PTO must take account of the “inferences and creative
steps,” as well as routine steps, that an ordinary artisan would employ)
(emphasis omitted).
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, as well as all claims dependent thereon, noting that no dependent
claims are separately argued (Appeal Br. generally).
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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
11, 12 103 Whitaker, Dhein 11, 12
13, 14, 19 103 Whitaker, Dhein,
Saeki
13, 14, 19
15 103 Whitaker, Dhein,
Friedel
15
16–18 103 Whitaker, Dhein,
Hoshi
16–18
Overall
Outcome

11–19

TIME PERIOD FOR RESPONSE
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