Ex Parte Hasse

Board of Patent Appeals and Interferences

Jun 27, 2011

10987654 (B.P.A.I. Jun. 27, 2011)

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.
10/987,654 11/12/2004 Margaret Henderson Hasse MHH-001 1044
26868 7590 06/28/2011
Hasse & Nesbitt LLC
8837 Chapel Square Drive
Suite C
CINCINNATI, OH 45249
EXAMINER
NGUYEN, CHI Q
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
06/28/2011 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 MARGARET HENDERSON HASSE
____________________

Appeal 2009-013577
Application 10/987,654
Technology Center 3600
____________________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-013577
Application 10/987,654
2
STATEMENT OF CASE
Margaret Henderson Hasse (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s rejection of claims 1-8, 12-15, and 17-19 under 35
U.S.C. § 102(b) as being anticipated by Barby (US 4,797,310, iss. Jan. 10,
1989) and claims 9-11, 16, and 20-28 under 35 U.S.C. § 103(a) as being
unpatentable over Barby. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
The claims are directed to a disposable roof covering and a method for
cooling a roof structure by providing and applying such a disposable roof
covering. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A disposable roof covering for application over a roof
structure, said roof covering comprising:
(a) a plastic substrate having a porous top surface for
receiving water contacting the roof covering, and a bottom
surface that; and
(b) a superabsorbent polymer located between the top
surface and bottom surface of the substrate, said polymer
capable of absorbing an amount of water having a weight at
least about 15 times its own weight.

OPINION
Claims 1-8, 12-15, and 17-19
Appellant states that claims 1-8, 12-15, and 17-19 stand or fall
together. App. Br. 9. Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii),
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we select claim 1 as the representative claim to decide the appeal of the
anticipation rejection.
The Examiner found that Barby discloses a disposable roof covering
for application over a roof structure comprising a plastic substrate as called
for in paragraph (a) of claim 1 and a superabsorbent polymer as called for in
paragraph (b) of claim 1 located between the top surface and bottom surface
of the substrate. Ans. 3; see Barby, figs. 3-4.
Appellant does not dispute the Examiner’s finding that Barby’s article
satisfies the limitations of paragraphs (a) and (b) of claim 1. Rather,
Appellant contends that Barby’s article is not a disposable roof covering,
and, further, would not be suitable for use as a disposable roof covering.
App. Br. 11.
Accordingly, a first issue for our consideration is whether to treat the
preamble language “disposable roof covering for application over a roof
structure” as limiting the scope of claim 1.
In general, a preamble limits the claimed invention “if it recites
essential structure or steps, or if it is ‘necessary to give life, meaning, and
vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). The preamble limits
claim scope when it is essential to understand limitations or terms in the
claim body. Id. Conversely, a preamble is not limiting where a structurally
complete invention is defined in the claim body and the preamble only states
a purpose or intended use for the invention. Id.
The preamble of claim 1 does not explain the meaning of any claim
terms in the body of the claim. Paragraphs (a) and (b) set forth a structurally
complete invention which can be readily understood without resorting to the
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preamble of claim 1. In this instance, the preamble of claim 1 merely sets
forth an intended use for the structure defined in paragraphs (a) and (b) of
claim 1. Therefore, the Examiner’s treatment of the preamble language
“disposable roof covering for application over a roof structure” as an
intended use limitation was proper.
It is well settled that the recitation of an intended use for an old
product does not make a claim to that old product patentable. In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Thus, the fact that Barby
does not disclose use of the article described therein as a roof covering does
not preclude Barby’s article from anticipating the subject matter of claim 1.
The Examiner found that because Barby’s article comprises all of the
structure called for in Appellant’s invention, it is capable of use as a roof
covering. Ans. 6. We find that Appellant’s disclosed roof covering 10
comprises a plastic substrate 12 having a porous top surface 14 and a bottom
surface 16 formed by an upper layer 18 (made of spun bond polypropylene
web in one embodiment) and a lower layer 20 (made of low-density
polyethylene film in one embodiment), with a superabsorbent polymer 22
substantially uniformly distributed between the two layers. Spec., paras. 36-
37; fig. 2. Likewise, Barby discloses an article 8 comprising a lower
substrate 9 and an upper substrate 10, each consisting of a layer of wet-
strength paper laminated to a thin film of polyethylene, heat sealed together
along edge regions 13 and also in a grid pattern 14 to form between the
substrates 8, 9 a plurality of compartments each containing superabsorbent
porous polymer material. Col. 1, ll. 49-58; col. 14, ll. 15-28; col. 22, ll. 9-
23. Barby discloses article sizes as small as 7.6 cm by 7.6 cm, and as large
as 30 cm by 30 cm. Col. 21, l. 21; col. 22, l. 19 (Examples 50 and 53).
Inasmuch as Barby discloses an article having all of the structure specified
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Application 10/987,654
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by Appellant as being necessary to render the article suitable for use as a
roof covering, the Examiner was justified in finding that Barby’s disclosed
article is capable of the disclosed use as a roof covering. Thus, the burden
shifted to Appellant to show that Barby’s article is not inherently capable of
such use. Schreiber, 128 F.3d at 1477.
Appellant argues that Barby’s articles would not be suitable for use as
a disposable roof covering because they are handheld articles intended for
wiping up a spill or releasing a liquid active material by application of hand
pressure. App. Br. 11. However, it is not apparent, and Appellant has not
adequately explained, why the disclosed suitability of Barby’s articles for
such applications would render them unsuitable for the claimed use, or
“potentially dangerous to the user and damaging to the roof structure,” as
contended by Appellant.1 See id.
Appellant argues that a person of ordinary skill in the art would not
consider Barby’s handheld articles to be useful for a roof covering given
their small size. App. Br. 11. This argument is not persuasive, as claim 1 is
not directed to a method of using the disposable roof covering, and, as
discussed above, the recitation of an intended use for an old product does not
make a claim to that old product patentable. Further, Appellant’s disclosure
that the roof covering of the present invention “can be made in any practical
size or shape as design parameters permit” and “may be provided in the form
of smaller shingles” (Spec., para. 35) seemingly belies Appellant’s
suggestion that the small size of Barby’s articles would render them
unsuitable as disposable roof coverings.

1 Appellant has not provided any evidence to support these allegations. An
attorney's arguments in a brief cannot take the place of evidence. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
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Appellant additionally argues that Barby teaches away from use of
Barby’s article as a disposable roof covering “by emphasizing wiping action
and hand pressure to release the liquid.” App. Br. 12. This argument does
not point to error in the rejection of claim 1 as being anticipated by Barby,
because teaching away is irrelevant to anticipation. See Seachange Int’l,
Inc. v. C-COR, Inc. 413 F.3d 1361, 1380 (Fed. Cir. 2005).
Moreover, Barby’s discussion of wiping action and hand pressure to
release the liquid does not teach away from Appellant’s claimed invention.
“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). It is not apparent, and Appellant has adequately explained, why
the disclosed suitability of Barby’s articles for wiping up spills or releasing
absorbed liquid by application of hand pressure would have discouraged a
person of ordinary skill in the art from using such an article as a disposable
roof covering.
On the record before us, we find no error in the Examiner’s finding
that Barby’s article anticipates the subject matter of claim 1. We sustain the
rejection of claim 1 and of claims 2-8, 12-15, and 17-19, which fall with
claim 1.
Claims 9-11, 16, 20, and 21
In contesting the rejection of these claims under 35 U.S.C. § 103(a) as
being unpatentable over Barby, Appellant reiterates the arguments asserted
against the rejection of claim 1. See App. Br. 13-14. These arguments are
unpersuasive of error in the Examiner’s rejection of claims 9-11, 16, 20, and
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21 for the reasons discussed above. We sustain the rejection of these claims
as being unpatentable over Barby.
Claims 22-28
As correctly pointed out by Appellant on page 15 of the Appeal Brief,
these claims are directed to a method for cooling a roof structure. In
addressing these claims, the Examiner acknowledges that Barby does not
expressly disclose a method of cooling a roof structure including a step of
applying the disposable roof covering over the roof structure, but considers
the claimed method steps to be obvious steps of “assembling and applying
the disclosed article to a desirable application such as providing a disposable
cover as taught by Barby to apply on a roof.” Ans. 5. Rejections on
obviousness grounds must be supported by “some articulated reasoning with
some rational underpinning” to combine the known elements in the manner
required in the claim at issue. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). The flaw in the Examiner’s reasoning is that it does not
articulate any apparent reason with any rational underpinning that would
have prompted a person of ordinary skill in the art to apply the article of
Barby to a roof structure. We do not sustain the rejection as to these claims.

DECISION
For the above reasons, the Examiner’s decision is affirmed as to
claims 1-21 and reversed as to claims 22-28.

Appeal 2009-013577
Application 10/987,654
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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