Ex Parte Fast et al

Patent Trial and Appeal Board

Jan 23, 2013

11899261 (P.T.A.B. Jan. 23, 2013)

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.
11/899,261 09/05/2007 Norman Douglass Fast 7750-3 7816
29602 7590 01/24/2013
JOHNS MANVILLE
10100 WEST UTE AVENUE
PO BOX 625005
LITTLETON, CO 80162-5005
EXAMINER
CAMPOS, JR, JUAN J
ART UNIT PAPER NUMBER
3654
MAIL DATE DELIVERY MODE
01/24/2013 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 NORMAN DOUGLASS FAST and
WALTER ALEXANDER JOHNSON
____________________

Appeal 2010-010666
Application 11/899,261
Technology Center 3600
____________________

Before: STEVEN D.A. McCARTHY, JOHN W. MORRISON, and
NEIL T. POWELL, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Norman Douglass Fast and Walter Alexander Johnson (Appellants)
appeal under 35 U.S.C. § 134 from a rejection of claims 1-7. We have
jurisdiction under 35 U.S.C. § 6(b).

Appeal 2010-010666
Application 11/899,261

2
The Claimed Subject Matter
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A method of rolling a first and second
single-ply membrane sheet having seam tape
applied along one edge comprising placing the first
sheet on top of the second sheet with the seam tape
of each of said sheets being at the same end, and
with the first sheet having its seam tape not
overlay the seam tape of the other sheet, and then
rolling the sheeting.

The Rejection
Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Knowlton (US 2004/0154265 A1, pub. Aug. 12, 2004).

ANALYSIS
The Examiner finds that the method Knowlton discloses for arranging
sheets in the exemplary embodiment shown in Knowlton’s Figure 1 meets
all of the limitations of claim 1 except that “Knowlton does not disclose the
seam tape edge of each of the sheets being at the same end.” Ans. 4. In
addressing this difference between the embodiment of Knowlton’s Figure 1
and claim 1, the Examiner at page 4 of the Answer points to Knowlton’s
disclosure that “[i]t is also possible to have the seam tapes facing the same
direction as long as the uncoated edge 18 of sheet 12 does not overlie the
seam tape coated edge 21 of sheet 16.” Knowlton, para. [0015]. The
Examiner finds that this excerpt of Knowlton “can be interpreted as a
teaching of any orientation that has the seam tapes face the same direction.”
Ans. 5 (underlining in original). Based on this, the Examiner posits that this
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Appeal 2010-010666
Application 11/899,261

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(quoting KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). The Examiner
concludes that it would have been obvious to arrange Knowlton’s sheets in
the manner shown in the above-reproduced diagram, thereby arriving at the
method of claim 1. Ans. 4.
Appellants contend that Knowlton does not suggest arranging sheets
“with the seam tape of each of said sheets being at the same end,” and that
Knowlton teaches away from arranging sheets in this manner. Br. 3-4. In
support of the latter, Appellants emphasize certain portions of Knowlton’s
paragraphs [0004] and [0015], which Appellants read as teaching “having
the seam tape edges of the first and second sheets at opposite ends, to avoid
having an uncoated edge of one of the sheets overlying the seam tape coated
edge of the other sheet, thereby maintaining a uniform thickness across the
sheets for ease of rolling the sheets.” Id. at 4 (emphasis in original).
We consider first whether Knowlton suggests arranging the sheets in
the manner suggested by the Examiner. Knowlton includes multiple
disclosures that demonstrate Knowlton uses the term “facing” to refer to the
vertical arrangement of the seam tape. For example, Knowlton discloses
arranging one seam tape “preferably facing upward” and the other seam tape
“preferably facing downward.” Knowlton, para. [0004]. Similarly, the
Abstract of Knowlton discloses arranging one seam tape “facing one
direction” and the other seam tape “facing the opposite direction, either up
or down.” On the other hand, when referring to the horizontal arrangement
of the seam tapes, Knowlton consistently uses the terms “end,” “edge,” and
“side.” For example, Knowlton discloses that “[t]he seam tape of the first
sheet is at one end . . . whereas the seam tape of the adjoining sheet is at the
opposite side.” Id. Abst. Similarly, Knowlton discloses that the “[t]he first
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Application 11/899,261

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sheet will have seam tape along one edge” and “[t]he second sheet will have
the seam at the opposite end.” Knowlton, para. [0004]. In view of these
disclosures, we find that Knowlton’s disclosure that “[i]t is also possible to
have the seam tapes facing the same direction” suggests modifying the
embodiment shown in Fig. 1 to have the seam tapes arranged the same
vertically (i.e., either both on the top or both on the bottom of their
respective sheets), not modifying it to have the seam tapes at the same end as
suggested by the Examiner.
We consider next whether the Examiner correctly concluded that one
of ordinary skill in the art would have had reason to modify the seam tapes
described by Knowlton in the fashion claimed by the Appellants so as to
“provide for easy removal of the membrane sheets when the rolls are
unwound and used.” Ans. 4. The Examiner does not explain this rationale
further. The Appellants do not respond to this rationale directly, but do
argue that Knowlton teaches away from arranging sheets in the manner
suggested by the Examiner. “A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Apparently responding to Appellants’ argument that Knowlton
teaches away from the claimed invention, the Examiner states that:
with respective [sic] to the paragraph 0004 (where
the roll is discussed as preferable having a uniform
diameter), the diameter of the roll is discussed as a
“generally” uniform diameter and that the
orientation of the sheets and seam tapes is a
preferred orientation (see use of ‘preferably’ in
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Application 11/899,261

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paragraph 0004), and the sheets and seam tapes are
not required to have this orientation.
Ans. 5-6.
Regarding these assertions, we first note that Knowlton’s paragraph
[0004] uses the word “preferably” only to refer to whether the respective
seam tapes face up or down, it does not use the word “preferably” to modify
the lateral positions of the seam tapes or the diameter of the roll. Indeed,
with respect to the lateral positions of the seam tapes, Knowlton’s paragraph
[0004] states that “[t]he first sheet will have seam tape along one edge” and
“[t]he second sheet will have the seam at the opposite end” (emphasis
added).
We appreciate the Examiner’s position that Knowlton’s disclosure of
creating a roll of “generally uniform diameter” does not, by itself, teach
away from the claimed invention. Nonetheless, we must consider Knowlton
as a whole to determine whether it teaches away from the claimed invention.
Knowlton repeatedly suggests that reducing variation in thickness
constitutes the principal concern when rolling membrane sheets with pre-
applied seam tape. See Knowlton, paras. [0003], [0004], [0015], and [0016].
Knowlton discloses addressing this concern by rolling two membrane sheets
in a manner such that “the two sheets do not cover the seam tape of the
adjoining sheets thereby maintaining a uniform thickness across the entire
sheet” (Knowlton, para. [0004]), with the result that “there will be no bulges
at either edge of the roll 17” (Id. at para. [0016]). To accomplish this result,
Knowlton discloses that “[t]he first sheet will have the seam tape along one
edge” and “[t]he second sheet will have the seam at the opposite end.”
Knowlton, para. [0004] (emphasis added). Knowlton discloses the
possibility of modifying the arrangement shown in Figure 1 only by
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Application 11/899,261

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changing the vertical orientation of the seam tape, and only “as long as the
uncoated edge 18 of sheet 12 does not overlie the seam tape coated edge 21
of sheet 16.” Knowlton, para. [0015].
In the context of Knowlton’s numerous disclosures emphasizing the
importance of reducing variations in thickness, a person of ordinary skill in
the art would infer from Knowlton’s admonition not to arrange the sheets
with the “uncoated edge 18 of sheet 12 . . . overl[ying] the seam tape coated
edge 21 of sheet 16” that one should generally avoid arranging the sheets in
a manner such that a portion of one sheet overlies the seam tape applied to
the other sheet. As illustrated by the arrangement of sheets suggested by the
Examiner, stacking sheets with a portion of one sheet overlying the seam
tape applied to the other would give the stack a triple thickness of material
(two layers of sheet material and one layer of seam tape) at the point where
the upper sheet overlies the seam tape applied to the lower sheet, whereas
other portions of the stack would have double or single thicknesses of
material. A person of ordinary skill in the art would understand that this
would create a significant bulge when the stacked sheets are rolled.
Knowlton’s admonition to avoid stacking a sheet overlying another sheet’s
seam tape to avoid bulges would have discouraged a person of ordinary skill
in the art from implementing such an arrangement. Accordingly, the
preponderance of the evidence before us establishes that Knowlton teaches
away from the arrangement of sheets suggested by the Examiner.
Notwithstanding this, the Examiner’s suggested arrangement of the
sheets could still have been obvious based on Knowlton because:
Although a reference that teaches away is a
significant factor to be considered in determining
unobviousness, the nature of the teaching is highly
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Application 11/899,261

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relevant, and must be weighed in substance.
[Something that is] known or obvious . . . does not
become patentable simply because it has been
described as somewhat inferior to some other
product for the same use.
Gurley, 27 F.3d at 553.
This caveat does not apply here, as Knowlton does not describe the
Examiner’s suggested arrangement of sheets as somewhat inferior.
Knowlton does not describe or suggest the Examiner’s suggested
arrangement of the sheets at all. See id. at 552-553 (Where the cited prior art
disclosed the possibility of implementing the disputed claim limitation but
described it as somewhat inferior, the applicant’s claimed invention was
deemed obvious over the prior art.). Thus, in the face of Knowlton teaching
away from the Examiner’s suggested modification, the Examiner’s
independent observations of potential benefits associated with the proposed
modification do not support a conclusion that the claimed invention would
have been obvious based on Knowlton. In particular, Knowlton’s teaching
away from the claimed subject matter is more persuasive of nonobviousness
than the Examiner’s bare assertion that the proposed modification would
have “provide[d] for easy removal of the membrane sheets when the rolls
are unwound and used” is persuasive of obviousness. Nor does the
Examiner’s assertion regarding “a finite number of identified, predictable
solutions” support such a conclusion, as the Examiner has not established
that the suggested modification constitutes an identified solution.
Accordingly, we cannot sustain the Examiner’s rejection of independent
claim 1 or of claims 2-7 depending therefrom.

Appeal 2010-010666
Application 11/899,261

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DECISION
We reverse the Examiner’s decision regarding claims 1-7.

REVERSED

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