Ex Parte 6901712 et al

Patent Trial and Appeal Board

Sep 17, 2012

90011092 (P.T.A.B. Sep. 17, 2012)

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.
90/011,092 07/28/2010 6901712 HNRY.004X1 7884
20995 7590 09/17/2012
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
FETSUGA, ROBERT M
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/17/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HENRY COMPANY CANADA, INC.,
Patent Owner and Appellant
____________________

Appeal 2012-006728
Reexamination control 90/011,092
Patent 6,901,712 B2
Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG, RAE LYNN P. GUEST,
Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Henry Company Canada, Inc. (hereinafter “Appellant”), the real party in
interest1 of Patent 6,901,712 B2 (hereinafter the “‘712 patent”), appeals under
35 U.S.C. §§ 134(b) and 306 from the Examiner’s decision to reject claims 1-10,
12-15, and 17-26 (Final Office Action, mailed March 24, 2011 (hereinafter
“FOA”), pages 3-15). We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.

1 See Appellant’s Appeal Brief filed September 23, 2011 (hereinafter “App. Br.”)
at 6.
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An oral hearing occurred on July 25, 2012. The oral hearing transcript was made
of record on August 29, 2012.2
We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
This reexamination proceeding arose from a third-party request for ex parte
reexamination filed by W.R. Grace & Co. - Conn (Request for Ex Parte
Reexamination, filed July 28, 2010).
The ‘712 patent relates to a self-adhering air and moisture barrier sheet
membrane, which is permeable to the passage of water vapor, onto which is
applied an adhesive in a non-continuous film, leaving zones of uncoated
membrane, thereby permitting the diffusion of water vapor through the membrane
at the uncoated zones of the non-continuous film (‘712 patent, Abstract, col. 4,
ll. 31-36).
Representative claim 1 on appeal reads as follows (with underlining showing
added text and bracketing showing deleted text relative to the original patent
claims):
1. A self-adhering, water vapor permeable, air and moisture
barrier sheet configured in a sheet form that can be applied to a
building wall structure to form a building envelope on the building
wall structure [for structural surfaces of buildings] so as to control the
movement of air and water through the building envelope, comprising
i) an air and moisture barrier membrane which is water vapor
permeable, wherein the membrane is a polymeric film, and
ii) an adhesive applied to one side of the water vapor permeable
membrane in a non-continuous film, wherein the adhesive is applied
to cover 5% to 99% of the area of said one side of the membrane, and
the adhesive has uncoated zones disposed to inhibit lateral migration

2 The oral hearing transcript will hereinafter be referred to as “Tr.”.
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of air across the side of the water vapor permeable membrane on
which the adhesive is applied when the adhesive is applied to the
building wall structure.
(Claims App’x, App. Br. 50.)
II. THE REJECTIONS
The Examiner rejected the claims as follows:
1. Claim 17 under 35 U.S.C §112, second paragraph, as being indefinite
for depending from cancelled claim 16;
2. Claims 1, 2, 4, 14, and 15 under 35 U.S.C § 102(b) as anticipated by
Lawless (US 5,593,771 issued Jan. 14, 1997 to Lawless et al.);
3. Claims 5 and 6 under 35 U.S.C. §103(a) as unpatentable over
Lawless;
4. Claims 1, 2, 4-7, 14, 15, 18, and 19 under 35 U.S.C. §103(a) as
unpatentable over Lawless and Porter (US 5,895,301 issued
Apr. 20, 1999 to Porter et al.);
5. Claim 3 under 35 U.S.C. §103(a) as unpatentable over Lawless and
Jacoby (US 5,317,035 issued May 31, 1994 to Jacoby et al.), and
optionally, in further combination with Porter;
6. Claims 7-10, 12, 13, 18, 19, and 25 under 35 U.S.C. §103(a) as
unpatentable over Lawless3, Jacoby, and Gilman (CA 2,045,247,
published June 21, 1991);
7. Claims 20, 21, 23, 24, and 26 under 35 U.S.C. §103(a) as
unpatentable over Lawless and Lstiburek (Lstiburek, Joseph,

3 We note that the Examiner does not include Porter in the rejection of claims 7-10,
12, 13, 18, 19, and 25 (FOA 10-13; Ans. 7-8).
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“Moisture Control for Buildings,” ASHRAE Journal (American
Society of Heating, Refrigerating and Air-Conditioning Engineers,
Inc.), p. 36-41 (February 2002)), and optionally, in further
combination with Porter;
8. Claim 22 under 35 U.S.C. §103(a) as unpatentable over Lawless,
Lstiburek, and Irving (US 5,826,388, issued Oct. 27, 1988 to Michael
R. Irving), and optionally, in further combination with Porter.
II. INDEFINITENESS REJECTION – CLAIM 17
The Examiner determined that claim 17 is indefinite for depending from a
cancelled claim (Ans. 4). Appellant acknowledges this rejection, but contends that
the “rejection was subsequently withdrawn by the Office Action in response to an
After Final Amendment” (App. Br. 8; Reply Br. 2). Appellant asserts that an after
final amendment was entered with respect to claim 17 only, and not to the
remaining claims, citing an Advisory Action dated June 7, 2011 (App. Br. 9). The
Examiner states that the June 7, 2011, Advisory Action indicated that the proposed
amendment dated May 24, 2011, was not entered and, thus, the rejection of
claim 17 is maintained (Ans. 4).
Indeed, we observe that the Advisory Action of June 7, 2011, does not enter
the claim amendments filed May 24, 2011, and maintains the rejection of claim 17
(Advisory Action, cover page). The Action notes that a “proposed response”
overcomes the indefiniteness rejection of claim 17 (id.). However, the proposed
amendment was not entered, and claim 17 still depends from deleted claim 16.
Since Appellant does not otherwise appeal this rejection (App. Br. 17; Reply
Br. 3), we summarily affirm the Examiner’s rejection of claim 17 as being
indefinite under 35 U.S.C. § 112, second paragraph.
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III. ANTICIPATION REJECTION – LAWLESS – CLAIMS 1, 14, and 15
A. ISSUES ON APPEAL
The Examiner finds that Figure 3 of Lawless illustrates adhesive covering
5% to 99% of the area of one side of the membrane and “the adhesive has
‘uncoated zones’” (Ans. 5). More particularly, the Examiner finds that
openings 46 of the adhesive film 44 are uncoated zones which would prevent air in
passageway 43 from migrating laterally in all directions when the barrier sheet is
adhered to a building wall (Ans. 11). The Examiner determines that the claims do
not require a structure in which any particular portion of a membrane is adhesive-
free (id.). The Examiner also finds that openings 46 represents collective uncoated
area which is significantly more than a 1/100 portion of the area circumscribed by
the membrane sheet (Ans. 15).
Appellant points out that Lawless teaches that ‘“a continuous layer 44 of
pressure sensitive adhesive coated entirely over the first major surface 41 of the
barrier layer 38’ having ‘through openings 46 aligned with the minute passageways
43’” (App. Br. 18-19; Reply Br. 4 (citing col. 6, ll. 43-50)). Appellant thus argues
that one of ordinary skill in the art would not consider openings adjacent to the
membrane openings to be zones or areas of the membrane that are uncoated (App.
Br. 19-20; Reply Br. 4). Appellant also argues that where the barrier layer 38 of
Lawless is “coated entirely” the requirement that only 5-99% of the membrane is
covered is not met by Lawless (Reply Br. 4).
Accordingly, the following issues are raised on Appeal:
(1) Does the evidence support the Examiner’s finding that the openings 46 of
the adhesive film 44 of Lawless constitute “a non-continuous film,
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wherein the adhesive applied to cover 5% to 99% of the area of said one
side of the membrane,” as recited in claim 1?
(2) Does the evidence support the Examiner’s finding that that the openings
46 of the adhesive film 44 of Lawless constitute “uncoated areas of the
membrane,” as recited in claim 14?
(3) Does the evidence support the Examiner’s finding that the openings 46 of
the adhesive film 44 of Lawless constitute “an adhesive applied to said
second face . . . to define a plurality of spaced apart non-adhesive coated
zones surrounded by an adhesive coated zone,” as recited in claim 15?
B. ANALYSIS
Claim interpretation
We disagree with the Examiner’s determination that the claims do not
require a structure in which a portion of a membrane is adhesive-free.
“‘During reexamination, as with original examination, the PTO must give
claims their broadest reasonable construction consistent with the specification.’”
In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010) (quoting In re
ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)).
Nevertheless, our reviewing court has repeatedly “instructed that any such
construction [must] be ‘consistent with the specification, . . . and that claim
language should be read in light of the specification as it would be interpreted by
one of ordinary skill in the art.’” Id. at 1260 (citation omitted).
In reciting that “the adhesive is applied to cover 5% to 99% of the area of
one side of the membrane,” claim 1 requires that at least 1% of the area where
membrane is present be adhesive-free. Likewise, claim 14 expressly requires
“uncoated areas of the membrane” indicating that certain areas of the membrane
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are uncoated with adhesive. Claim 15 recites “an adhesive applied to said second
face . . . to define a plurality of spaced apart non-adhesive coated zones
surrounded by an adhesive coated zone.” We interpret the “non-adhesive coated
zones” to be non-adhesive coated zones of the membrane material.
Our interpretation is consistent with the ‘712 patent which uses the term
“zones” to refer to portions of the membrane which do not have adhesive deposited
thereon. For example, the ‘712 patent states that an adhesive is deposited “leaving
zones of uncoated membrane, thereby permitting the diffusion of water vapor
through the membrane at the uncoated zones” (col. 4, ll. 32-37), that the adhesive
is applied “to leave parts, or spots or zones of the sheet uncoated with adhesive”
(col. 6, ll. 17-21). Finally, the ‘712 patent describes “an adhesive sea on the
membrane surface, with a multitude of membrane islands, surrounded by but not
covered by the adhesive sea” (col. 6, ll. 30-32).
Discussion
We agree with Appellant that the embodiment of Figures 3 and 4 of Lawless
does not teach a structure in which there is a portion of membrane material that is
not coated with adhesive material. Figure 3 of Lawless teaches a structure in
which openings 46 are only aligned with minute passageways 43 in the barrier
layer 38 (col. 6, ll. 43-57; see also Figure 4 (illustrating the presence of adhesive
layer 44 over all portions where barrier layer 38 is present and openings 46 only
exposing passageways 43)). In other words, openings 46 are present only where
there is no membrane material present. Thus, Figure 3 of Lawless does not teach
any portion of the membrane material that is not coated with adhesive as required
by each of independent claims 1, 14, and 15. Accordingly, claims 1, 14, and 15
and the claims that depend therefrom are not anticipated by Lawless. We reverse
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the Examiner’s rejection of claims 1, 2, 4, 14, and 15 as anticipated by Lawless,
claims 2 and 4 ultimately depending from claim 1.
The Examiner relies on only the embodiment of Figure 3 and the same
rationale in rejecting claims 5 and 6 as being obvious over Lawless (Ans. 5).
Accordingly, for the same reasons, we reversed the Examiner’s rejection of
claims 5 and 6 as obvious over the teachings of Lawless.
The Examiner also relies on only the embodiment of Figure 3 and the
same rationale in rejecting claims 7-10, 12, 13, 18, 19, and 25 as being
obvious over Lawless in view of Jacoby and Gilman, claim 3 as obvious
over Lawless and Jacoby, claims 20, 21, 23, 24, 26 as obvious over Lawless
and Lstiburek, and claim 22 as obvious over Lawless, Lstiburek, and Irving
(Ans. 6-9). Accordingly, for the same reasons, we reversed these rejections
maintained by the Examiner.
IV. OBVIOUSNESS – LAWLESS AND PORTER
A. ISSUES ON APPEAL
The Examiner finds that Porter teaches that barrier strips or “joint tapes”
and house wraps are analogous uses of an adhesive backed moisture barrier
laminate and that Porter teaches several methods of applying an adhesive including
one with non-continuous zones or windows 41 as illustrated in Figure 7 (Ans. 5-6
(citing col. 1, ll. 18-57 and col. 5, ll. 19-22)). The Examiner’s position appears to
be that because there were a number of adhesive patterns known in the art as
evidenced by Porter, it would have been obvious to have applied such patterns in
the adhesive layer of Lawless. (Ans. 17.)
With respect to claims 1, 14, and 15, Appellant argues that the Examiner has
not provided a reason why the combination of references would have been obvious
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and that such a combination would not be obvious (App. Br. 29-30; Reply Br. 5).
Appellant argues that adding adhesive free zones to the microperforated membrane
of Figures 3 and 4 of Lawless, in addition to openings 44, would not result in any
benefit to the barrier laminate but, rather, would lead to an inferior product (id.).
Further, Appellant contends that the testimony provided by the first and
supplemental Tropper declarations4 evince commercial success in the claimed
invention, satisfaction of a long felt need in the claimed invention, and that the
claimed invention resolved problems in the art in a new manner contrary to prior
solutions (App. Br. 30-32).
With respect to claims 2 and 4-6, Appellant contends that the ‘712 patent
draws a clear and explicit distinction between “microporous” membranes, as
recited in claim 2, and “microperforated” membranes, as in the laminate barrier 38
illustrated in Figure 3 of Lawless, which is described as a microperforated high
density polyethylene barrier sheet material sold under the trade designation
“Rufco-wrap” (App. Br. 33 (citing the ‘712 patent, col. 5, ll. 25-30; Lawless, col.
6, ll. 31-34)).
With respect to claims 7 and 18, Appellant contends that the Examiner has
not shown that the hot melt adhesive taught by Porter would have been a suitable
substitute for the specific pressure sensitive adhesive formed by copolymerization
of isooctyl acrylate and acrylic acid, and, particularly, the Examiner has not shown
that the hot melt adhesive taught by Porter would have provided the openings 46

4 The Declaration under 37 C.F.R. § 1.132 of Marc Tropper, dated March 7, 2011,
and entered into the record on March 8, 2011 (hereinafter “Tropper Declaration” or
“Tropper Decl.”) and the Supplemental Declaration under 37 C.F.R. § 1.132 of
Marc Tropper, dated May 27, 2011, and entered into the record on May 27, 2011
(hereinafter “Supp. Tropper Declaration” or “Supp. Tropper Decl.”).

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around the passageways 43, as disclosed in the embodiment of Figures 3 and 4 of
Lawless (App. Br. 35-36).
Thus, the issues on Appeal are:
(1) Does the evidence support the Examiner’s determination that it would
have been obvious to one of ordinary skill in the art to have applied the
adhesive pattern described by Porter to a barrier layer as taught by
Lawless?
(2) Does the evidence taken as a whole, including Appellant’s evidence of
secondary considerations, support a determination of non-obviousness?
(3) Does the evidence support the Examiner’s determination that it would
have been obvious to one of ordinary skill in the art to have included the
adhesive pattern described by Porter to a “microporous” barrier layer, as
recited in claims 2 and 4-6?
(4) Does the evidence support the Examiner’s determination that it would
have been obvious to one of ordinary skill in the art to substitute a “hot
melt adhesive” as taught by Porter for the isooctyl acrylate/acrylic acid
adhesive taught by Lawless, as recited in claims 7 and 18?
B. ANALYSIS
Claims 1, 14, and 15
We agree with Appellant that if the only vapor permeability of a barrier
sheet were at the locations of the passageways 43, which appears to be the case in
the particular microperforated sheet of Figure 3 of Lawless, then adding a different
adhesive pattern which exposed portions of the barrier sheet that are not vapor
permeable would not improve the overall permeability of the microperforated
sheet.
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However, Lawless’s teachings are not limited to only the microperforated
barrier materials described with respect to the embodiment of Figures 3 and 4.
Rather, Lawless also teaches that “[t]ypical sheet materials for housewraps of this
type include . . . the sheet material made of spunbonded high density polyethylene
fibers [or] the sheet material made of spunbonded polypropylene fibers” (Lawless,
col. 1, ll. 44-51). One of ordinary skill in the art would have understood that,
where microperforated sheets have permeability or porosity at the
microperforations, the spunbonded polyethylene and polypropylene sheets taught
by Lawless would have vapor permeability (i.e. microporosity) across the entire
surface of the barrier material. Thus, Lawless teaches an embodiment illustrated in
Figures 1 and 2 in which the barrier laminate is “any of the commercially available
porous barrier sheet materials described above” (i.e., spunbonded polyethylene or
polypropylene fibers) and adhesive material applied to “elongate outer portions”
that are “adjacent each of the opposite edges” of the barrier layer such that a
“central portion 28 is free from adhesive to preclude interference of the adhesive
with movement of the water vapor through the barrier layer 18” (Lawless, col. 5,
ll. 46-64). Lawless also generally teaches that “it is desirable that at least a portion
of the barrier laminate between adhesively coated edges be free of adhesive to
assure vapor permeability in the barrier laminate” (Lawless, col. 3, ll. 1-4)
(emphasis added).
Porter teaches that an “adhesive layer 35 can take on a number of
configurations, including continuous and intermittent adhesive strips, low and high
density layers, cross-hatching, and selected printed patterns” (Porter, col. 5, ll. 19-
22). Porter teaches that “water vapor exiting from the building can pass through
the non-adherent surface 37, which is free of potentially pore blocking adhesive”
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(Porter, col. 5, ll. 17-19). Preferred printed patterns in Porter include “a pair of
longitudinal strips . . . spaced from the outer edge of the strip” as shown in
Figure 4, which are similar to the outer edge strips taught by Lawless, and “an
adhesive layer 42 with central windows 4-1 of nonadherent surface” as shown in
Figure 7, which meets the limitations of an “uncoated zone” of the present
invention (Porter, col. 5, ll. 21-26 and ll. 33-35, Figures 4 and 7). In other words,
Porter teaches that the window 4-1 adhesive pattern of Figure 7 is an alternative
structure to strips on the edges of a barrier sheet as taught by Lawless. Lawless
evinces support for combining the barrier sheets therein with the adhesive pattern
of Porter, since it teaches only a need for at least “a portion of the barrier laminate”
be free of adhesive “to assure vapor permeability in the barrier laminate” (Lawless,
col. 3, ll. 1-4).
Porter further teaches that it is directed to “[l]aminated barrier strips,
patches, layers, wraps and covers, building structures sealed with barrier laminates
and processes for preparing barrier laminates and applying them to structures”
(Porter, col. 3, ll. 3-6). Thus, Porter suggests that there is no distinction in
structure between a barrier laminate for use as barrier strips or patches or for use as
a house wrap.
Thus, we conclude that it would have been obvious to one of ordinary skill
in the art to have modified the barrier laminate of Lawless to include the window
adhesive pattern of Porter because to do so would be no more than the predictable
use of an art-recognized alternative adhesive pattern for the same purpose of
attaching the barrier layer to a building structure. “[I]f a technique has been used
to improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
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obvious unless its actual application is beyond his or her skill.” KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). “The combination of familiar elements
according to known methods is likely to be obvious when it does no more than
yield predictable results.” Id. at 416.
Appellant has not established that the use of the window adhesive pattern of
Porter instead of the edge strip pattern taught by Lawless would have led to
unpredictable results or would have been outside of the skill of the ordinary
artisan.
Claims 2 and 4-6
As discussed above, Lawless teaches using microporous barrier layers in
addition to the microperforated barrier layer illustrated and described with respect
to Figure 3, including “sheet material made of spunbonded high density
polyethylene fiber sold under the trade designation “DuPont Tyvek” and “sheet
material made of spunbonded polypropylene fibers sold under the trade
designation ‘Typar[’]” (Lawless, col. 1, ll. 44-50 and col. 5, ll. 46-52), which are
identical to the materials described by the ‘712 patent (‘712 patent, col. 5, ll. 35-
39). We further discussed above why one of ordinary skill in the art would have
used the adhesive pattern taught by Porter on the barrier layers taught by Lawless.
Accordingly, Appellant’s arguments, which are all directed to the
microperforated barrier layer of Figure 3, are unpersuasive in light of the broader
teachings of barrier layers described by Lawless.
Claims 7 and 18
The Examiner finds that Porter teaches that a suitable adhesive composition
may be “acrylate adhesives, e.g., isooctyl acrylate and acrylic acid copolymer” or
“[a]lternatively, the adhesive may comprise the rapid setting thermoplastic ‘hot
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melt’ adhesives” (Porter, col. 5, ll. 39-46). We are not presented with any
persuasive evidence or reasoning to establish that a hot melt adhesive may not be
use and applied to provide a window adhesive pattern.
Further, as discussed above, Lawless teaches using microporous barrier
layers in addition to the microperforated barrier layer illustrated and described with
respect to Figure 3, and thus Appellant’s arguments directed to the microperforated
barrier layer of Figure 3 are unpersuasive in light of the broader teachings of
barrier layers described by Lawless.
Secondary Considerations
Appellant also provides evidence of nonobviousness - commercial success,
long-felt need, and resolving a problem in a new manner contrary to prior solutions
- and argues that the Examiner erred in discounting that evidence (App. Br. 30-32).
The Examiner determined that Appellant’s evidence failed to link the objective
indicia to the claimed invention and that Appellant’s evidence “clearly failed to
establish a nexus” with the claimed subject matter and provides only “general
statements concerning self-adhesive, vapor permeable, air and water barrier sheets”
which are all taught by the prior art (Ans. 18).
In In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983), the Federal Circuit
stated that “objective evidence of non-obviousness must be commensurate in scope
with the claims which the evidence is offered to support.” See also Ormco Corp. v.
Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006); Richdel, Inc. v. Sunspool
Corp., 714 F.2d 1573, 1580 (Fed. Cir. 1983). Therefore, even though commercial
embodiments of the 712 patent’s invention may have enjoyed commercial success,
Appellant’s evidence links that commercial success to one of two features: (1) the
presence of an adhesive backing for securement rather than the staples or
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mechanical fasteners commonly used (App. Br. 31; Tropper Decl. ¶ 7-11; Supp.
Tropper Decl. ¶ 5-6), or (2) the distinction between using the adhesive backed
barrier as a “large sheet” rather than as a “tape” (Tropper Decl. ¶ 8, 11, and 12).
An adhesive backing on a barrier layer is the subject matter of Lawless and
Porter. The lack of evidence of a link between the commercial success and the
particular adhesive pattern used on a barrier layer, as opposed to the use of an
adhesive on a barrier layer alone, undermines the probative force of the evidence
pertaining to non-obviousness of combining Lawless’s adhesive backed barrier
layer with the particular adhesive pattern of Porter. See J.T. Eaton & Co. v. Atl.
Paste & Glue Co., 106 F.3d 1563, 1571 (Fed.Cir.1997) (“asserted commercial
success of the product must be due to the merits of the claimed invention beyond
what was readily available in the prior art”). While the evidence shows that the
overall system drew praise as a solution to a felt need, there was no evidence that
the success of the commercial embodiment of the ‘712 patent was attributable to
the substitution of one type of adhesive pattern on a barrier sheet for another
adhesive pattern on a barrier sheet, which is the only structural difference between
Lawless and the claims on appeal. See Asyst Technologies, Inc. v. Emtrak, Inc.,
544 F.3d 1310, 1316 (Fed. Cir. 2008).
Further, we cannot agree with Appellant that the claims structurally
distinguish “a barrier sheet configured in a sheet form that can be applied to a
building wall structure to form a building envelope” from the structure taught by
Lawless and Porter. Appellant does not direct us to language in the claims or the
Specification that identify a particular size for a “barrier sheet” that would
distinguish the disclosed strip, patch or wrap of the prior art from a “barrier sheet”
that “can be applied to a building wall structure to form a building envelope.”
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Appellant’s declaration evidence, while defining a barrier sheet as a “large sheet
material,” nonetheless provides no express size requirement and further defines the
claimed term “barrier sheet” as having the same meaning as a “house wrap” or
“building wrap” (Tropper Decl. ¶ 6), such wraps being specifically disclosed in
Lawless (Tyvek) and Porter (wraps). The prior art does not limit the barrier
laminates disclosed therein to any particular size, and Porter identifies that the
structure of the barrier layer/adhesive laminate is substantially the same whether
being used in “strips, patches, layers, wraps and covers” for buildings (Porter,
col. 3, ll. 3-6). We decline to import an implicit size requirement into the term
“barrier sheet” in the claims. Moreover, size is not ordinarily a patentable feature.
In re Rose, 220 F.2d 459, 463 (CCPA 1955) ("size of the article under
consideration [] is not ordinarily a matter of invention"); see also Gardner v. TEC
Systems, Inc., 725 F.2d 1338, 1346, (Fed. Cir. 1984), cert. denied, 469 U.S. 830
(1984); In re Kirke, 40 F.2d 765, 767 (CCPA 1930).
Thus, we determine that one of ordinary skill in the art of using vapor
barriers for building structures would have understood that the barrier
layer/adhesive structures taught by Lawless and Porter would have been “barrier
sheets” suitable to “be applied to a building wall structure to form a building
envelope” as claimed.
Evidence of secondary considerations does not always overcome a strong
prima facie showing of obviousness. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1372 (Fed.Cir.2007); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 719-20
(Fed.Cir.1991); Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 768
(Fed.Cir.1988). The secondary consideration evidence in this case does not
overcome the strong case of obviousness in the substitution of the edge-only
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adhesive pattern taught by Lawless with a window adhesive pattern taught by
Porter, which Porter recognizes as a known alternative to Lawless’s edge-only
adhesive pattern.
The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness under the law. For the foregoing reasons, we affirm the
rejection of claim 1, 2, 4-7, 14, 15, 18, and 19 under 35 U.S.C. § 103(a). Because
our rationale for affirming the obviousness rejection differs from the Examiner’s
rationale, we designate the affirmance as new grounds of rejection under 37 C.F.R.
§ § 41.50(b) in order to ensure Appellant has a fair opportunity to respond to the
rejection.
VI. REMAINING REJECTIONS
For the remaining rejections, which further apply the teachings of Jacoby,
Gilman, Lstiburek, and Irving, Appellant presents no arguments in addition to
those discussed above regarding the primary combination of Lawless and Porter as
applied to claims 1, 2, 4-7, 14, 15, 18, and 19. Accordingly, we affirm the
Examiner’s rejections in light of our new grounds of rejection stated above and
agree with the Examiner’s further application of the teachings of Jacoby, Gilman,
Lstiburek and Irving.
IV. CONCLUSION
On the record before us, we affirm the Examiner’s rejection of claim
17 under 35 U.S.C §112, second paragraph, as being indefinite for
depending from cancelled claim 16.
We reverse the following Examiner’s rejections:
1. Claims 1, 2, 4, 14, and 15 under 35 U.S.C § 102(b) as anticipated
by Lawless;
Appeal 2012-006728
Application 90/011,092
Patent 6,901,712 B2

18
2. Claims 5 and 6 under 35 U.S.C. §103(a) as unpatentable over
Lawless;
3. Claims 7-10, 12, 13, 18, 19, and 25 under 35 U.S.C. §103(a) as
unpatentable over Lawless, Jacoby, and Gilman;
4. Claim 3 under 35 U.S.C. §103(a) as unpatentable over Lawless,
and Jacoby;
5. Claims 20, 21, 23, 24, 26 under 35 U.S.C. §103(a) as unpatentable
over Lawless and Lstiburek;
6. Claim 22 under 35 U.S.C. §103(a) as unpatentable over Lawless,
Lstiburek, and Irving.
We affirm the rejection of claims 1, 2, 4-7, 14, 15, 18, and 19 under
35 U.S.C. §103(a) as unpatentable over Lawless and Porter, and denominate
it as a New Ground.
We also affirm the following rejections on the basis that they extend
from the New Ground of rejection entered with respect to Lawless and
Porter:
1. Claim 3 under 35 U.S.C. §103(a) as unpatentable over Lawless,
Porter and Jacoby;
2. Claims 20, 21, 23, 24, 26 under 35 U.S.C. §103(a) as unpatentable
over Lawless, Porter and Lstiburek;
3. Claim 22 under 35 U.S.C. §103(a) as unpatentable over Lawless,
Porter, Lstiburek, and Irving.
Appeal 2012-006728
Application 90/011,092
Patent 6,901,712 B2

19

V. 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).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

ak

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