Ex Parte Barrego

Patent Trial and Appeal Board

Jan 12, 2018

12705749 (P.T.A.B. Jan. 12, 2018)

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.
12/705,749 02/15/2010 Peter J. Barrego 15111-00015-US 9234
570 7590 01/17/2018
PANITCH SCHWARZE BELISARIO & NADEL LLP
ONE COMMERCE SQUARE
2005 MARKET STREET, SUITE 2200
PHILADELPHIA, PA 19103
EXAMINER
CANFIELD, ROBERT
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
01/17/2018 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):
u sptomail @ panitchlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER J. BARREGO
Appeal 2016-006527
Application 12/705,749
Technology Center 3600
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
ROBERT L. KINDER, Administrative Patent Judges.
HOFFMANN, 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, 8, 10, and 11. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
According to Appellant, the invention is directed to a “roofing
underlayment. . . having a printed upper surface simulating the appearance
of a finished roof.” Spec., Abstract. Claim 1 is the only independent claim
1 Appellant lists “Prime Source Building Products, Inc.,” under the Appeal
Brief heading Real Party in Interest. Appeal Br. 4.
Appeal 2016-006527
Application 12/705,749
on appeal. Below, we reproduce claim 1 as illustrative of the appealed
claims.
1. A lightweight untextured roofing underlayment
comprising a scrim reinforcement made from interwoven
polypropylene tape located within a thermoplastic olefin body,
the underlayment having an average thickness of about 6-15
mils and an average weight of about 0.016 to 0.027 pounds per
square foot and wherein a pattern having the appearance of a
shingled roof is printed on at least one surface of the
underlayment.
REJECTIONS AND PRIOR ART
The Examiner rejects claims 1, 8, 10, and 11 under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
subject matter that Appellant regards as the invention.
The Examiner rejects claims 1, 8, 10, and 11 under 35 U.S.C. § 103(a)
as unpatentable based on Arthurs (US 2008/0141604 Al, pub. June 19,
2008), Haas (US 2005/0066593 Al, pub. Mar. 31, 2005), and Maclnnes
(US 1,454,323, iss. May 8, 1923).2
ANALYSIS
Indefiniteness rejection
As set forth above, the Examiner rejects independent claim 1, and
claims 8, 10, and 11 that depend from claim 1, as indefinite. More
specifically, the Examiner determines that the claims are indefinite because
2 Although in the Answer, for example, the Examiner states that the claims
are rejected as obvious based on Arthurs and Haas (Answer 2), in each of the
Final Office Action mailed July 7, 2015 (“Final Action,” 4-5) and the
Answer (Answer 3, 5), the Examiner’s rejection also relies on Maclnnes.
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Appeal 2016-006527
Application 12/705,749
“[t]he metes and bound[s] of [claim 1 ’s recitation of] ‘a pattern having the
appearance of a shingled roof are indefinite. . . . Shingled roofs can come
in any number of patterns of shapes, colors and shadings[;] thus the metes
and bounds of the limitation are not clearly defined.” Answer 2. Appellant
argues that the rejection is in error because
[t]he claims at issue inform those familiar with the roofing
industry that the claimed underlayment should have a printed
“pattern having the appearance of a shingled roof.” The recited
“shingled roof’ is disclosed throughout the specification of the
application at issue, particularly in Figs. 1, 3 and 4. The total
[Specification, including [the] drawings, informs “those skilled
in the art with reasonable certainty about the scope of the
invention.” All they need to do is look at the patent application.
Reply Br. 3 (quoting Nautilis, Inc. v. Biosig Instruments Inc.,
134S. Ct. 2120, 2129 (2014)).
“[W]e apply the approach for assessing indefmiteness approved by the
Federal Circuit in Packard, i.e., ‘[a] claim is indefinite when it contains
words or phrases whose meaning is unclear.’” Ex parte McAward,
No. 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017)
(precedential) (quoting In re Packard, 751F.3dl307, 1310, 1314 (Fed.
Cir. 2014)). “Put differently, ‘claims are required to be cast in clear-as
opposed to ambiguous, vague, indefinite-terms.’” Id. (quoting Packard, 751
F.3d at 1313); see also MPEP § 2173 .02(1). “At the same time, this
requirement is not a demand for unreasonable precision.” Packard,
751 F.3d at 1313.
Applying the standard set forth in Packard, we agree with the
Examiner that claim l’s recitation of “a pattern having the appearance of a
shingled roof’ is unclear. It is not apparent to us, and Appellant does not
persuade us (see Appeal Br. 6-8; see also Reply Br. 2-3), that one of
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Appeal 2016-006527
Application 12/705,749
ordinary skill would be able to determine definitely whether many particular
underlayment patterns do or do not have the appearance of a shingled roof.
Although not dispositive, we note, for example, that the Examiner and
Appellant disagree as to whether the pattern shown in Haas’s Figure 5A has
the appearance of a singled roof. See Answer 3; see Appeal Br. 8.
Thus, based on the foregoing, we sustain the indefiniteness rejection
of claims 1, 8, 10, and 11.
Obviousness rejection
In view of our determination that claims 1, 8, 10, and 11 are
indefinite, it follows that the prior art rejection of these claims must fall,
because the rejection is based necessarily on a speculative assumption as to
the meaning of the claims. See In re Steele, 305 F.2d 859, 862-63
(CCPA 1962). It should be understood, however, that our decision in this
regard is pro forma and based solely on the indefmiteness of the claimed
subject matter, and does not reflect on the adequacy of the prior art evidence
applied in support of the rejection.
DECISION
We AFFIRM the Examiner’s indefmiteness rejection of claims 1, 8,
10, and 11.
We REVERSE pro forma the Examiner’s obviousness rejection of
claims 1, 8, 10, and 11.
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Appeal 2016-006527
Application 12/705,749
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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