Ex Parte Hellwig

Patent Trial and Appeal Board

Jun 28, 2016

13024945 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/024,945 02/10/2011
35531 7590 06/30/2016
JACQUES M. DULIN, ESQ. DBA
INNOVATION LAW GROUP, LTD.
237 NORTH SEQUIM A VENUE
SEQUIM, WA 98382-3456
FIRST NAMED INVENTOR
Roy T. Hellwig
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
7318-00lUS 1662
EXAMINER
TSANG, LISA L
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
dulin@innovationlaw.com
nancy@innovationlaw.com
j andulin@innovationlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROY T. HELLWIG
Appeal2014-005396
Application 13/024,945
Technology Center 3600
Before GEORGE R. HOSKINS, LISA M. GUIJT, and MARK A. GEIER,
Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Roy T. Hellwig ("Appellant") 1 appeals under 35 U.S.C. § 134 from
the Examiner's final decision rejecting claims 1, 5-8, and 12-15 in this
application. An oral hearing was conducted on June 24, 2016. The Board
has jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appeal Brief indicates this application is owned by Archiphyte, LLC,
which is wholly owned by Appellant. Appeal Br. ii.
Appeal2014-005396
Application 13/024,945
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal, and it recites:
1. A living roof or wall system mat assembly, said assembly
consisting of:
a) a soil-free, light weight modular dimensional mat
unit of thin, flexible mineral wool having a density of from about
3 Kg/c.f. to about 5 Kg/c.f., a thickness in the range of from
about . 9 cm to about 2 cm, and a top and a bottom surface, said
mat being water permeable but not hydrophilic and not serving
as a growth medium;
b) a living layer of bryophytes, lichen, and vascular
epiphytes (BLA VEs) forming a complex ecosystem supported
on and growing on said top surface of said modular dimensional
mineral wool mat unit without being continuously watered;
c) a base layer of porous, non-hygroscopic, non-
biodegradable, non-woven thermoplastic fabric having a top
surface and a bottom surface, and a thickness in a range of from
2--4 mm, said base layer is disposed with its top surface in
contact with said bottom surface of said modular dimensional
mineral wool mat unit;
d) ultraviolet-stabilized plastic netting having a mesh
size in a range of from about 1-10 cm disposed over said
modular dimensional mineral wool mat unit having said
BLA VEs layer supported on the surface thereof, said netting is
secured to said base layer and said BLA VEs layer is retained by
said netting; and
e) thereby forming a unitary mat assembly that is light
weight, easy to store, ship and handle and as mounted on roofs
or walls forms a living roof or wall surface of a structure exposed
to an outdoor environment, which unitary mat assembly does not
require irrigation or drainage systems, the mineral wool mat
providing an insulating and fire resistant layer for said structure.
Appeal Br. v (Claims App.).
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Appeal2014-005396
Application 13/024,945
REJECTIONS ON APPEAL
Claims 1, 5, 12, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over US 5,836,107, issued November 17, 1998 ("Behrens I"),
US 6,601,340 Bl, issued August 5, 2003 ("Behrens II"), and
US 7,334,376 Bl, issued February 26, 2008 ("Behrens III").
Claims 6, 13, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Behrens I, Behrens II, Behrens III, and
US 2009/0300981 Al, published December 10, 2009 ("Wilhelmus
Cuypers").
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Behrens I, Behrens II, Behrens III, and US 4,550,527,
issued November 5, 1985 ("Hall").
ANALYSIS
A. Obviousness based on Behrens I, Behrens IL and Behrens 111-
Claims 1, 5, 12, and 14
In rejecting independent claim 1, the Examiner finds Figure 2 of
Behrens I discloses most of the claimed subject matter, including a mat unit
of mineral wool 16 "being water permeable but not hydrophilic" as clamed.
Final Act. 4 (emphasis added). Appellant contends the Examiner errs in
finding mineral wool layer 16 in Behrens I is not hydrophilic. Appeal
Br. 13. For the following reasons, we agree.
We first resolve a claim construction dispute. The Examiner reasons:
"The mineral wool layer of Behrens I is not hydrophilic, in that it does not
dissolve in water." Ans. 4 (emphasis added). That is, the Examiner equates
hydrophilic with dissolvability in water. Appellant, by contrast, asserts
"hydrophilic refers to having an affinity for water, being able to absorb or be
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Appeal2014-005396
Application 13/024,945
wetted by water." Reply Br. 4. Appellant has the better argument.
Dictionary definitions of "hydrophilic" include: 2
"capable of uniting with or taking up water"
(Webster's New World Dictionary of American English
(3rd College Ed.,© 1988, Ed. Victoria Neufeldt));
"[h ]aving a tendency to mix with, dissolve in, or be wetted by
water. The opposite of hydrophobic"
( www.oxforddictionaries.com/us/ definition/ american_english/
hydrophilic);
"[h ]aving an affinity for water; readily absorbing or dissolving
in water"
(www.ahdictionary.com/word/search.html?q=hydrophilic );
"chemistry tending to dissolve in, mix with, or be wetted by
water"
(www.collinsdictionary.com/dictionary/english/hydrophilic );
and
"of, relating to, or having a strong affinity for water"
(www.merriam-webster.com/dictionary/hydrophilic ).
The Examiner does not explain why, in the context of the Specification, the
meaning of hydrophilic should be limited to dissolvability in water, to the
exclusion of uniting with, taking up, or absorbing water. See Ans. 4.
Indeed, the Specification describes mineral wool mats as being "water
permeable" but "not hydroph[i]lic," so "the mats do not become heavy and
waterlogged." Spec. 6:27-29. A waterlogged mat is consistent with the mat
uniting with, taking up, or absorbing water. A waterlogged mat that
becomes heavy is not limited to dissolvability in water, because the mat is
still identifiable as a structure, which is made heavy by the water. We,
2 Each on-line source cited here was last accessed on June 24, 2016.
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Appeal2014-005396
Application 13/024,945
therefore, construe "hydrophilic" in claim 1 to mean being capable of
uniting with, taking up, or absorbing water. 3
A preponderance of evidence does not support the Examiner's finding
that mineral wool layer 16 in Figure 2 of Behrens I is not hydrophilic, as
required by claim 1. Behrens I indicates a "particular advantage" is that
mineral wool 16 "serves as a water-retaining layer," such that "the mineral
wool can absorb and retain water at the rate of 95% of its weight."
Behrens I, 3:32-36. Behrens I additionally provides "the mineral wool
becomes heavy as a result of the water absorbed by it." Id. at 3:41--42.
Thus, mineral wool layer 16 in Behrens I is hydrophilic, because it unites
with, takes up, or absorbs water. Such hydrophilicity is in direct opposition
to the requirement in claim 1 for the mineral wool mat unit to be "not
hydrophilic." Appeal Br. v (Claims App.).
For the foregoing reasons, the Examiner errs in finding Behrens I
discloses a mineral wool mat that is not hydrophilic, as recited in claim 1.
The Examiner relies on Behrens II for disclosing a mat assembly including a
living layer of BLA VEs, and Behrens III for disclosing a mat assembly
including a base layer of porous, non-biodegradable, non-woven
thermoplastic fiber. Final Act. 5-7. The Examiner's reliance on Behrens II
and Behrens III, therefore, does not cure the deficiency in the Examiner's
finding with respect to Behrens I, as to the claimed non-hydrophilic mineral
wool mat. The Examiner's analysis of dependent claims 5, 12, and 14
likewise does not cure that deficiency. Id. at 7-8. We, therefore, do not
3 "Hydrophilic" in claim 1 may further include dissolvability in water, but
that claim construction issue is not raised by the rejection before us.
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Appeal2014-005396
Application 13/024,945
sustain the rejection of claims 1, 5, 12, and 14 as unpatentable over
Behrens I, Behrens II, and Behrens III.
B. Obviousness based on Behrens L Behrens II, Behrens IIL and
Wilhelmus Cuypers---Claims 6, 13, and 15
The Examiner's analysis of dependent claims 6, 13, and 15, including
the citation of Wilhelmus Cuypers, does not cure the deficiency in the
Examiner's finding with respect to Behrens I, as to the non-hydrophilic
mineral wool mat recited in claim 1. Final Act. 8-9. Therefore, we do not
sustain the rejection of claims 6, 13, and 15 as unpatentable over Behrens I,
Behrens II, Behrens III, and Wilhelmus Cuypers.
C. Obviousness based on Behrens I, Behrens II, Behrens III, and Hall-
Claims 7 and 8
The Examiner's analysis of dependent claims 7 and 8, including the
citation of Hall, does not cure the deficiency in the Examiner's finding with
respect to Behrens I, as to the non-hydrophilic mineral wool mat recited in
claim 1. Final Act. 9-10. Therefore, we do not sustain the rejection of
claims 7 and 8 as unpatentable over Behrens I, Behrens II, Behrens III, and
Hall.
DECISION
The Examiner's decision to reject claims 1, 5-8, and 12-15 is
reversed.
REVERSED
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