Ex Parte Elliott

Board of Patent Appeals and Interferences

Jul 27, 2010

09515928 (B.P.A.I. Jul. 27, 2010)

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.
09/515,928 02/29/2000 Bert Whitmore Elliott 24673A 1357
97072 7590 07/28/2010
MacMillan, Sobanski & Todd, LLC
One Maritime Plaza, Fifth Floor, 720 Water Street
Toledo, OH 43604
EXAMINER
KWIECINSKI, RYAN D
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
07/28/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BERT WHITMORE ELLIOTT
____________

Appeal 2009-003919
Application 09/515,928
Technology Center 3600
____________

Before LINDA E. HORNER, MICHAEL W. O’NEILL, and
KEN B. BARRETT, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal No. 2009-003919
Application No. 09/515,928

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STATEMENT OF THE CASE
Bert Whitmore Elliott (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision finally rejecting claims 67 and 68 under 35
U.S.C. § 103(a) as obvious over Phillips (US 6,014,847, issued Jan. 18,
2000) in view of Overbury (US 1,843,370, issued Feb. 2, 1932) and claims
17, 46-48, 53-58, 65-68, and 70 as obvious over Hulett (US 5,195,290,
issued Mar. 23, 1993) or Bondoc (US 5,939,169, issued Aug. 17, 1999) in
view of Overbury. We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE.
The Invention
The claims on appeal relate to a roof covering that includes plural
successive generally horizontal courses of laminated shingles, where the
shingles of each course are laid in a side-by-side relationship and
horizontally offset from the shingles in adjacent courses. Each shingle
includes a plurality of tabs. Each tab has a single color blend. The color
blends of some of the tabs of each shingle being a color blend different from
the color blends of other tabs. One of the color blends of the tabs occurs
more frequently than any of the other color blends of the tabs, thereby
defining a predominant tab color blend for the roof covering. The frequency
of the tabs with the predominant color blend in the roof covering are
sufficiently prevalent to provide the roof covering with an appearance that
simulates a natural slate roof.
Claim 17, reproduced below, is illustrative of the subject matter on
appeal.
17. A roof covering including a plurality of successive
generally horizontal courses of laminated shingles, the shingles
in each course being laid in a side-by-side relationship and
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Application No. 09/515,928

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horizontally offset from the shingles in adjacent courses, each
laminated shingle comprising:
an overlay member having front and rear surfaces, the
overlay member including a headlap portion and a butt portion,
the butt portion including a plurality of tabs separated by
cutouts, each tab including a layer of granules on the front
surface forming a generally uniform color blend, and each
cutout being narrow when compared to the width of the tabs to
provide an overall roof covering appearance of a natural slate
roof; and
an underlay member having a front surface attached to
the rear surface of the overlay member;
wherein each tab has a single color blend, the color
blends of some of the tabs of each shingle being a color blend
different from the color blend of others of the tabs; and
wherein one of the color blends of the tabs occurs more
frequently than any of the other color blends of the tabs, thereby
defining a predominant tab color blend, with the frequency of
the tabs of the predominant color blend in the roof covering
being sufficiently prevalent to provide the roof covering with an
appearance that simulates a natural slate roof.
The Rejections
The Examiner acknowledges that Phillips, Hulett, and Bondoc fail to
teach color blends of tabs being different from one another with one of the
color blends occurring more frequently than any of the other color blends.
Ans. 4, 6, and 8. The Examiner finds that Overbury teaches the confinement
of different colors to different tabs of a shingle, that multiple tabs may be
given the same color, and that Overbury’s Figure 6 shows multiple tabs of
different colors “with one of the tabs (left most) being predominant.” Ans.
4, 6, and 8. Based on these findings, the Examiner concludes that it would
have been obvious to provide the tabs of Phillips, Hulett, or Bondoc “with
color blends different from one another with one color blend occurring more
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frequently, as taught by Overbury, to achieve a desired artistic effect.” Ans.
4, 6, and 8.
Contentions
Appellant contends, inter alia, “[t]here are a number of reasons why a
skilled artisan would conclude that the Overbury reference fails to supply the
missing limitation of the predominant color blend being sufficiently
prevalent to provide the appearance of a roof covering that simulates a
natural slate roof.” App. Br. 9. As evidenced by the Elliott and Vermilion
declarations, Appellant asserts that the exposed portions of natural slate roof
tiles have a single color, with at least about 60% of the tiles being of a
predominant color. As explained by Appellant, a predominant color exists
because a natural slate roof has one color that occurs more frequently than
the other colors. App. Br. 9-10.

DISCUSSION
Pertinent Facts
1. Mr. Vermilion is a senior research associate employed by the
assignee, obtained a Bachelor of Science in chemistry, has worked on
various roofing and asphalt products for the assignee for over 34
years, and was a project leader for the development of plastic resin
tiles that simulated natural slate roofs when installed on a roof deck.
Vermilion Decl., paras. 1 and 2. We find Mr. Vermilion is qualified
to opine as to how a person of ordinary skill in the art would interpret
the claim language and understand the prior art.
2. The Vermilion Declaration states “[h]aving a predominant color
means that a natural slate roof has one color that occurs more
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frequently than the other colors in the roof. It also means that the
more frequent color occurs sufficiently to be a prevalent color, and
that the remaining colors are present for accent or variety.” Vermilion
Decl., para. 5.
3. The Vermilion Declaration states, “a natural slate roof typically has
the appearance of at least 60% of the predominant color....
Commonly, the area of predominant color of a natural slate roof is
substantially higher than 60%, such as, for example 70-80%.”
Vermilion Decl., para. 6.
4. The Vermilion Declaration states,
the term “natural slate roof” has a meaning in the
roofing industry of a roof covering having the
appearance of exposed portions of individual tiles
partially overlaid by tiles of succeeding courses of
individual tiles. Each of the exposed portions of a
tile has a single color, with at least about 60% of
the tiles being of a predominant color, and
typically significantly more than 60% of the tiles
being of a predominant color.
Vermilion Decl., para. 7.
5. The Vermilion Declaration states, “I have read the above-identified
patent application .... I note that the independent claims define a roof
covering that has an appearance that simulates a natural slate roof.”
Vermilion Decl., para. 8.
Principles of Law
Words in claims “are generally given their ordinary and customary
meaning” to a person of ordinary skill in the art at the time of the invention.
Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc)
(citations omitted). How a person of ordinary skill in the art interprets a
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claim term is based on the “understanding that inventors are typically
persons skilled in the field of the invention and that patents are addressed to
and intended to be read by others of skill in the pertinent art.” Id. at 1313.
Accordingly, when construing a claim, unless the inventor has set forth a
definition for a term, that term will be given its ordinary and customary
meaning as understood by one skilled in the pertinent art. See In re Paulsen,
30 F.3d 1475, 1480 (Fed. Cir. 1994).
“Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (citations omitted).
Analysis
Claim Construction
As claim terms are construed as they would be interpreted by persons
skilled in the art, we look to the Vermilion declaration for guidance in
construing the claimed aspect of the tabs having a predominant color blend
such that the frequency of the tabs with this color blend is sufficiently
prevalent to provide the claimed roof covering combination with an
appearance that simulates a natural slate roof. We find Mr. Vermilion is
qualified to opine how a person of ordinary skill in the art would interpret
the claimed predominant color feature. FF 1. Mr. Vermilion states that the
predominant color for a slate roof is the color that occurs more frequently
than others and typically occurs with the frequency of at least 60 %,
commonly within the range of 70%-80%. FF 2 and 3. Mr. Vermilion states
that the term “natural slate roof” has a particular meaning within the roofing
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industry of a roof covering having an appearance of exposed portions of
individual tiles partially overlaid by tiles with succeeding courses of
individual tiles where each of the exposed tile portions has a single color that
occurs with the frequency of at least about 60%. FF 4. Mr. Vermilion states
that he has read the present patent application and understands that the
independent claims define a roof covering that simulates a natural slate roof.
FF 5.
As such, since Mr. Vermilion states that a natural slate roof has a
predominant color that occurs at least with the frequency of 60%, commonly
70-80%, and Mr. Vermilion states that he understands the patent application
and claims are directed to a roof covering that simulates a natural slate roof,
then a person of ordinary skill in the art would interpret the claimed feature
of a predominant tab color blend occurring with a frequency that is
“sufficiently prevalent to provide the roof covering with an appearance that
simulates a natural slate roof” as a color blend that occurs with at least 60%
frequency. With this understanding as to how a person of ordinary skill in
the art would interpret the claim, we compare the properly construed claim
to the prior art reference the Examiner utilized to render obvious this
claimed feature.
Comparison to the Prior Art
The Examiner utilized Overbury for the teaching of providing a
predominant tab color blend. Ans. 4. The Examiner’s reasoning that
Overbury teaches a predominant tab color blend feature, as set forth in the
claim, is premised upon viewing Overbury’s Figure 6. The Examiner posits
that since the left most tab has the largest surface area when comparing the
individual tabs and is of one color, and since Overbury teaches that two or
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more adjacent tabs “may now and then” be the same color, the one color on
the left most tab predominates the other colors on the other tabs. See Ans. 4
and 10.
Appellant challenges the sufficiency of the Examiner’s findings noted
above. App. Br. 10-11. Appellant submits Mr. Vermilion’s declaration as
evidence to demonstrate how a person would understand the scope and
content of Overbury. Appellant argues, based on the calculations performed
by Mr. Vermilion from visual inspection of Figures 6 and 8, see Vermilion
Declaration, paras. 13-15, a person of ordinary skill in the art would
understand the color blend of the color within the left most tab to be about
one-third the surface area of the shingle. Appellant argues that this low
percentage of color blend is insufficient to render the color blend a
predominant color sufficiently prevalent in order for the roof covering to
have the appearance of a natural slate roof. App. Br. 11. Moreover,
Appellant argues and premises the argument with Mr. Vermilion’s
statements, see Vermilion Declaration para. 12, that the term “now and then”
as used in Overbury would be understood by persons of ordinary skill in the
art as meaning only “occasionally” and not to mean that one color within a
shingle would predominate the other colors based on multiple tabs having
the same color and possibly being adjacent as determined by the Examiner.
Id.
Accordingly, Appellant argues that the scope and content of
Overbury, as understood by persons of ordinary skill in the art, would teach
that the prevalent color blend within a single shingle would have the
frequency of occurrence of about one-third of the time, i.e., 33% frequency.
Id. Appellant argues that such a low percentage of frequency is insufficient
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to permit an overall roof covering to have the appearance of a natural slate
roof. Id.
As discussed above, the claim feature at issue between the Examiner
and Appellant requires the predominant color blend to occur with at least
60% frequency in order to be sufficiently prevalent to permit the claimed
roof covering combination to have an appearance that simulates a natural
slate roof. Overbury’s prevalent color blend, based on the evidence supplied
by Appellant and uncontested by the Examiner, is about 33% frequency.
Accordingly, Overbury’s 33% frequency is insufficient to render obvious the
claimed feature requiring the predominant color blend to occur with at least
60% frequency, as understood by an artisan as evidenced by the Vermilion
declaration, in order to be sufficiently prevalent to permit the claimed roof
covering combination to have an appearance that simulates a natural roof.
Furthermore, the Examiner does not provide adequate reasoning to support
the conclusion that the claimed percentages “would have been nothing other
than obvious choices of design ….” Ans. 5; see also Ans. 7, 9, 10.
The Examiner does not utilize Phillips, Bondoc, or Hulett to cure the
deficiency of Overbury concerning the claimed feature of the predominant
color blend occurring with a frequency sufficiently prevalent to permit the
claimed roof covering combination to have an appearance that simulates a
natural slate roof.

DECISION
In view of the foregoing, the Examiner decision to reject the claims as
obvious is reversed.
REVERSED
Appeal No. 2009-003919
Application No. 09/515,928

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mls

MACMILLAN, SOBANSKI & TODD, LLC
ONE MARITIME PLAZA, FIFTH FLOOR, 720 WATER STREET
TOLEDO, OH 43604