Ex parte Chopra et al.

Board of Patent Appeals and Interferences

Feb 25, 2000

08150559 (B.P.A.I. Feb. 25, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 38
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MANJIT S. CHOPRA and MICHAEL D. VICK
_____________
Appeal No. 1997-0569
Application 08/150,559
______________
ON BRIEF
_______________
Before FRANKFORT, MCQUADE and NASE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 3, 5 through 7, 9, 11 through 13, 15,
and 17 through 22, which are all of the claims remaining in
the application. Claims 2, 4, 8, 10, 14 and 16 have been
canceled.
Appeal No. 1997-0569
Application No. 08/150,559
2

Appellants’ invention relates to a method of preparing
colored roofing granules, a product (i.e., granules) prepared
by that method and a roofing material including granules
prepared by that method on a man-made composition substrate.
Independent claims 1, 7, 13, 19 and 20 are representative of
the subject matter on appeal and a copy of those claims, as
reproduced from the Appendix to appellants’ brief, is attached
to this decision.
The prior art references of record relied upon by the
examiner as evidence of obviousness of the claimed subject
matter are:
Doherty 0,927,644 Jul. 13,
1909
Wright 2,092,567 Sep. 7,
1937
Lewis et al. (Lewis) 3,341,347 Sep. 12,
1967
Additional prior art relied upon by the examiner is
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Application No. 08/150,559
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stated to be appellants’ Admitted Prior Art (APA), as set
forth at
page 5, lines 3-10 of the specification.
Claims 7, 9, 13 and 15 stand rejected under 35 U.S.C. §
103 as being unpatentable over Wright in view of Lewis.

Claims 1, 3 and 19 through 22 stand rejected under
35 U.S.C. § 103 as being unpatentable over Wright in view of
Lewis as applied above, and further in view of APA.
Claims 5, 6, 11, 12, 17 and 18 stand rejected under
35 U.S.C. § 103 as being unpatentable over Wright in view of
Lewis as applied above, and further in view of Doherty.
Reference is made to the answer (Paper No. 32, mailed
September 4, 1996) for the examiner's full reasoning in
support of the above-noted rejections and to appellants’ brief
(Paper
No. 30, filed March 12, 1996) for the arguments thereagainst.
Appeal No. 1997-0569
Application No. 08/150,559
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OPINION
As a preliminary matter, we note that on page 4 of the
brief appellants have indicated that claims 7, 9, 13 and 15 on
appeal "stand together" and that claims 1, 3, 5, 6, 11, 12 and
17 through 22 "stand together." In the ARGUMENT section of
their brief appellants have, with respect to the first group
of claims noted above, argued only claim 13. With regard to
the second group of claims, appellants have argued only claim
1.
Accordingly, we focus our attention on claims 1 and 13 for
consideration in this appeal, although other of the
independent claims on appeal will also be discussed.
Our evaluation of the obviousness issues raised in this
appeal has included a careful assessment of appellants’
specification and claims, the applied prior art, and the
respective positions advanced by appellants and the examiner.
As a consequence of our review, we have come to the
conclusions which follow.
Appeal No. 1997-0569
Application No. 08/150,559
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Looking first at the examiner's rejection of claims 7, 9,
13 and 15 under 35 U.S.C. § 103 based on Wright and Lewis, we
note that representative claim 13 is directed to a roofing
material which comprises a man-made composition substrate and
granulated mineral-containing matter forming a surface coating
on said substrate, wherein the granulated matter comprises
slag having an initial elemental iron content of about 15% to
about 70% by weight, said iron having been heated to a
temperature of about 450°C to about 1000°C for a period of
time sufficient to oxidize said iron and cause a change in
color of said granulated matter.
According to appellants (brief, page 4), the roofing material
of claim 13 differs from conventional roofing materials “in
the manner in which the desired coloration is achieved.”
Appellants concede that conventional roofing materials include
granules which are artificially colored by applying a
pigmented coating to a base rock material and also that it is
known in the art that base rocks which already possess the
desired natural coloration can be used as roofing granules
without having to apply a pigmented surface coating. By
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contrast, appellants point out that the coloration of the
granulated matter of claim 13 is not obtained by applying a
pigmented surface coating or by using a naturally colored
rock, but instead by selecting iron-containing slag as the
granulated matter and oxidizing the iron contained therein to
achieve the desired color.
In rejecting claim 13 (and claims 7, 9 and 15), the
examiner has taken the position that Wright teaches the use of
mineral granules that are colored red and, more particularly,
the use of natural rock granules that are colored throughout
(e.g., red) on man-made composition roofing substrates.
Wright also teaches the use of a protective coating of
transparent varnish on the granules, which varnish includes a
small amount of pigment therein having the same color as the
natural colored rock granules. Lewis is relied upon as
teaching (col. 1, lines 38-43) the use of various iron-
containing ores to produce red iron oxide pigments by roasting
the iron-containing ores. In the examiner’s opinion, it would
have been obvious to one of ordinary skill in the art to form
red colored roofing granules that are colored throughout by
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heating iron minerals in view of the teachings of Wright to
use red mineral granules that have natural color throughout
and the teaching of Lewis to form red mineral particles (i.e,
iron oxide particles) by heating iron-containing minerals.
Appellants urge that the collective teachings of the
prior art references relied upon by the examiner teach or
suggest only that roasted iron oxide pigments may be used in a
surface coating like that described in Wright to provide the
desired coloration for roofing granules. From appellants’
perspective, nothing in the applied references teaches or
suggests a roofing material wherein coloration of the roofing
granules is obtained by using iron containing slag as the
roofing granules and oxidizing the iron to achieve the desired
coloration by the process set forth in the claims on appeal.
While it is true that the references relied upon by the
examiner do not teach appellants’ specific method of making
roofing granules by heating granulated iron-containing slag to
a temperature in the claimed range and for a period of time
sufficient to oxidize said iron and cause a color change of
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Application No. 08/150,559
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the granulated slag material, we note that independent claims
7 and 13 on appeal are “product-by-process” claims and that,
in our opinion, the product-by-process limitations therein do
not serve to distinguish the claimed product (claim 7) or
roofing material (claim 13) from the naturally colored red
(e.g., iron oxide) roofing granules disclosed or suggested in
Wright or the prior art roofing material disclosed in Wright
that would utilize only naturally occurring red (e.g., iron
oxide) granules as a surface coating on a man-made composition
substrate. The patentability of a product-by-process claim is
based on the product itself, and such claim is unpatentable
over a product made obvious by the prior art even if the
product of the claim is made by a different process. See In
re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985); In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA
1972); and Ex parte Edwards, 231 USPQ 981, (Bd. Pat. App. &
Int. 1986). As was indicated by the Court in Brown, 459 F.2d
at 535, 173 USPQ at 688:

When the prior art discloses a product which
reasonably appears to be either identical with or
only slightly different than a product claimed in a
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product-by-process claim, a rejection based
alternatively on either section 102 or section 103
of the statute is eminently fair and acceptable
[because] [a]s a practical matter, the Patent Office
is not equipped to manufacture products by the
myriad of processes put before it and then obtain
prior art products and make physical comparisons
therewith.
The burden in this type of situation is on the appellants
to present evidence from which the examiner could reasonably
conclude that the claimed product differs in kind from the
product of the prior art, thus demonstrating the unobvious
character of the claimed subject matter (i.e., product) over
the cited reference or references. No such evidence was
offered in this case. Appellants have provided no evidence to
show that the granules of claim 7 on appeal or the roofing
material of claim 13 are in any way different in kind from the
naturally occurring red colored (e.g., iron oxide) rock
roofing granules disclosed or suggested in Wright and Lewis or
a roofing material as in Wright which would use only those
naturally occurring red rock granules as a coating on a man-
made composition substrate. We see no reason why appellants’
artificially produced iron oxide roofing granules or a roofing
material using such granules would in any meaningful way be
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Application No. 08/150,559
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different from roofing granules produced from naturally
occurring red iron oxide ores or slag, or a roofing material
using such natural colored rock granules.
Accordingly, we are led to conclude that the examiner has
made out a prima facie case of obviousness here with regard to
independent claims 7 and 13 on appeal, and that appellants
have failed to submit evidence to refute that case. Thus, we
will sustain the examiner's rejection of claims 7 and 13 under
35 U.S.C. § 103, and also that of claims 9, 11, 12, 15, 17 and
18 which depend therefrom and have not been separately argued
by appellants.
Independent claim 1 on appeal is directed to a method of
preparing colored roofing granules of a desired size range
from iron-containing slag. That method involves heating the
iron-containing slag granules to a temperature of from about
450°C to about 1000°C and maintaining that temperature for a
period of time sufficient to cause oxidation of said iron and
to thereby effect a desired color change in the granules, thus
forming the colored roofing granules. While, as urged by the
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examiner, it may have been obvious to one of ordinary skill in
the art to size the natural colored rock roofing granules of
Wright to be in the apparently standard size range claimed by
appellants, we see nothing in Wright or Lewis which teaches or
suggests appellants’ particular method as set forth in claim 1
on appeal for making colored roofing granules.
Wright discloses or suggests using properly graded
natural colored rock granules or such granules that are
further coated with a protective layer of tinted varnish as
roofing granules. Lewis discloses producing iron oxide
pigments by roasting relatively pure iron ores to drive off
volatile matter, thus converting the natural ore to a natural
iron oxide pigment. As is urged by appellants, the collective
teachings of the applied references may have provided
motivation or suggestion for one of ordinary skill in the art
to use a pigment as produced in Lewis (col. 1) as the coloring
agent for the varnish used in Wright, but in no way teach or
suggest appellants’ claimed method of making colored roofing
granules. As for the process that is the subject of the Lewis
patent, that process for preparing an iron oxide pigment is
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Application No. 08/150,559
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also entirely different than the process or method of
preparing colored roofing granules claimed by appellants.
In light of the foregoing, we will not sustain the
examiner’s rejection of method claim 1 under 35 U.S.C. § 103
based on Wright, Lewis and the APA. The examiner’s rejections
of dependent claims 3, 5 and 6 under 35 U.S.C. § 103 will also
not be sustained. The examiner’s reliance on Doherty with
regard to claims 5 and 6 on appeal does nothing to account for
the deficiencies we have noted above in the basic combination
of Wright, Lewis and the APA.
Looking to the examiner’s rejection of claims 19 through
22 under 35 U.S.C. § 103, we note that these claims are also
product-by-process claims and, like claims 7, 9, 11, 12, 13,
15, 17 and 18 above, do not define over the naturally colored
red (e.g., iron oxide) roofing granules disclosed or suggested
in Wright and Lewis or the prior art roofing material
disclosed in Wright that would utilize only such naturally
occurring red (e.g., iron oxide) granules as a surface coating
on a man-made composition substrate. In reaching this
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Application No. 08/150,559
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conclusion, we agree with the examiner that it would have been
obvious to one of ordinary skill in the art at the time of
appellants’ invention to select a known proper size for the
roofing granules of Wright, which size of roofing granules
would fall within the apparently standard size range broadly
set forth in appellants’ claims 19 through 22 on appeal.
Appellants’ specification (page 5, lines 3-10) does at least
imply that the sizing of roofing granules is within the skill
level of one of ordinary skill in the art, and Wright
discloses (col. 1, lines 7-10), or at least suggests, that
roofing granule manufacturers have “properly graded” or sized
roofing granules for many years. Again, we note that the
patentability of a product-by-process claim is based on the
product itself, and such claim is unpatentable over a product
made obvious by the prior art even if the product of the claim
is made by a different process. Thus, absent evidence by
appellants to show that the granules of claims 19 and 21 on
appeal or the roofing material of claims 20 and 22 are in any
way different in kind from the naturally occurring red colored
(e.g., iron oxide) rock roofing granules suggested in Wright
and Lewis or a roofing material as in Wright which would use
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only those naturally occurring rock granules as a coating on a
man-made composition substrate, we will sustain the examiner's
rejection of claim 19 through 22 under 35 U.S.C. § 103.
To summarize, we note that the decision of the examiner
to reject product-by-process claims 7, 9, 11, 12, 13, 15 and
17 through 22 under 35 U.S.C. § 103 has been affirmed, while
the decision to reject method claims 1, 3, 5 and 6 under 35
U.S.C. § 103 has been reversed. The decision of the examiner
is, accordingly, affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under
37 CFR § 1.136(a).
AFFIRMED-IN-PART
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Appeal No. 1997-0569
Application No. 08/150,559
15
JOHN P. MCQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFERY V. NASE )
Administrative Patent Judge )
CEF:lmb
MICHAEL B. HURD
SHOOK, HARDY & BACON
1200 MAIN
KANSAS CITY, MO 64105
Appeal No. 1997-0569
Application No. 08/150,559
A-1
APPENDIX
1. A method of preparing colored roofing granules from
granulated mineral-containing matter comprising slag having an
iron content of about 15% to about 70% by weight and being
sized so that approximately 100% of said granulated matter
will pass through a number 8 U.S. Standard Sieve and no more
than approximately 2% will pass through a number 40 U.S.
Standard Sieve, said method comprising the steps of:
heating said granules to a temperature of from about
450°C to about 1000°C; and
maintaining said temperature for a period of time
sufficient to cause oxidation of said iron to effect a
color change in said granules and thereby form said
colored roofing granules.
7. A product for use in providing a surface coating for
composition roofing materials, said product comprising:
granulated mineral-containing matter comprising slag
having an initial elemental iron content of about 15% to
about 70% by weight, said iron having been heated to a
temperature of about 450°C to about 1,000°C for a period of
time sufficient to cause oxidation of said iron and produce a
change in color of said matter.
13. A roofing material comprising:
a man-made composition substrate; and
a granulated mineral-containing matter forming a
surface coating for said substrate,
said matter comprising slag having an initial
elemental
iron content of about 15% to about 70% by weight, said iron
having been heated to a temperature of about 450°C to about
1,000°C for a period of time sufficient to oxidize said iron
and cause a change in color of said matter.
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Application No. 08/150,559
A-2
19. A product for use in providing a surface coating for
composition roofing materials, said product comprising:
granulated mineral-containing matter being sized so
that approximately 100% of said granulated matter will pass
through a number 8 U.S. Standard Sieve and no more than
approximately 2% will pass through a number 40 U.S. Standard
Sieve, said matter comprising slag having an initial elemental
iron content of about 15% to about 70% by weight, said iron
having been heated to a temperature of about 450°C to about
1,000°C for a period of time sufficient to oxidize said iron
and cause a change in color of said matter.
20. A roofing material comprising:
a man-made composition substrate; and
a granulated mineral-containing matter forming a
surface coating for said substrate,
said matter being sized so that approximately 100%
of said granulated matter will pass through a number 8 U.S.
Standard Sieve and no more than approximately 2% will pass
through a number 40 U.S. Standard Sieve, said matter
comprising slag having an initial elemental iron content of
about 15% to about 70% by weight, said iron having been
heated to a temperature of about 450°C to about 1,000°C
for a period of time sufficient to oxidize said iron and
cause a change in color of said matter.