Ex Parte Hindi et al

Board of Patent Appeals and Interferences

Jan 29, 2004

09344295 (B.P.A.I. Jan. 29, 2004)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

Paper No. 24

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MAJID H. HINDI and ALLISON FLYNN
__________

Appeal No. 2003-1718
Application No. 09/344,295
___________

ON BRIEF
___________

Before GARRIS, DELMENDO, and POTEATE, Administrative Patent
Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2003) from the examiner’s final rejection of claims 1, 3
through 8, and 10. Claims 13 through 22, which are the only
other pending claims, stand withdrawn from further consideration
pursuant to 37 CFR § 1.142(b) (2003)(effective Dec. 22, 1959).
The subject matter on appeal relates to a recyclable,
reinforced roofing membrane for use in single ply roofing
systems. According to the appellants (specification, page 1,
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Application No. 09/344,295

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lines 15-21), prior art single ply roofing membrane systems
typically include two propylene-ethylene-copolymer sheets bonded
to each other and a woven polyester reinforcing mesh or scrim
located intermediate the propylene-ethylene-copolymer sheets.
The appellants explain, however, that because polyester meshes
are hydrophilic and are not chemically compatible with
propylene-ethylene-copolymer sheets, their use in roofing
membranes has certain drawbacks (wicking of water into the
membranes along unsealed edges of the membranes and inability to
recycle scrap membrane). (Id. at page 1, line 31 to page 2,
line 10.) The appellants state that “the present invention may
reduce the wicking problem associated with polyester scrim
reinforced membranes and can be recycled both during the
production process, if the membrane is out of specification, and
after the membrane’s useful service life in the field.” (Id. at
page 2, lines 27-31.) Further details of this appealed subject
matter are recited in representative claim 1, the only
independent claim on appeal, reproduced below:
1. A recyclable, reinforced roofing membrane for
use in single ply roofing systems, comprising:
first and second propylene-ethylene-copolymer
sheets wherein the propylene-ethylene-copolymer of the
sheets is polymerized from a polypropylene and
ethylene-monomer blend comprising about 30% to about
70% by weight polypropylene and about 30% to about 70%
by weight ethylene-monomer; and a hydrophobic
polypropylene reinforcing mesh intermediate the first
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and second propylene-ethylene-copolymer sheets and
bonded to the first and second propylene-ethylene-
copolymer sheets for reinforcing the membrane; the
polypropylene reinforcing mesh being chemically
compatible with the first and second propylene-
ethylene-copolymer sheets for permitting scrap
produced in a process of manufacturing of the membrane
to be recycled back into the process.

The examiner relies on the following prior art references
as evidence of unpatentability:
Paeglis et al. 4,589,804 May 20, 1986
(Paeglis)

Wynne 5,891,541 Apr. 6, 1999
(filed Jun. 18, 1996)

Claims 1, 3 through 8, and 10 on appeal stand rejected
under 35 U.S.C. § 103(a) (2003) as unpatentable over Wynne in
view of Paeglis. (Examiner’s answer mailed Dec. 17, 2002, paper
22, pages 3-5.)
We reverse.
The examiner states: “Wynne discloses the claimed invention
except for the teaching that the scrim is made of polypropylene
and the specific ratio of ethylene to propylene in the
copolymer.” (Answer, page 3.) The examiner then continues (id.
at pages 3-4):
It should be noted that increasing the amounts of
ethylene and polypropylene are result effective
variables. For example, increasing the amount of
polypropylene directly affects the hydrophobic
property of the composite material. Furthermore,
given the lack of specific teaching in Wynne for the
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proportions of components of the polymer and the very
large range instantly claimed, it would have been
obvious to one having ordinary skill in the art at the
time the invention was made to have made the copolymer
of Wynne contain about 30-70% by weight polypropylene
and about 30-70% by weight of ethylene-monomer, since
it has been held that discovering an optimum value of
a result effective variable involves only routine
skill in the art. In re Boesch, 617 F.2d 272, 205
USPQ 215 (CCPA 1980). In the present invention, it
would have been obvious to optimize the amount of
polypropylene and ethylene-monomer motivated by the
desire to obtain a composite with superior reinforcing
stability.

Regarding the claim element “hydrophobic polypropylene
reinforcing mesh,” the examiner relies on the teaching of a
polypropylene scrim in Paeglis (column 10, lines 18-31) and
holds that “[i]t would have been obvious to have used Paeglis’
woven scrim as the scrim layer in Wynne motivated by the desire
to obtain a reinforced composite with some degree of
flexibility.” (Id. at page 4.)
The appellants, on the other hand, argue that Wynne
“neither discloses nor suggests a blend made up of about 30% to
about 70% by weight polypropylene and about 30% to about 70% by
weight ethylene-monomer, let alone sheets made from such a blend
that are reinforced by a hydrophobic polypropylene reinforcing
mesh.” (Appeal brief filed Oct. 4, 2002, paper 21, page 6.) As
to Paeglis, the appellants point out that “Paeglis [] does not
teach using a hydrophobic polyethylene [sic, polypropylene]
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reinforcing mesh in combination with propylene-ethylene-
copolymer sheets...” (Id.)
We must agree with the appellants that the examiner’s
rejection is not well founded. Wynne describes reinforced
composite materials useful in a wide variety of industrial,
transportation, and engineering applications (e.g., landfills).
(Column 1, lines 5-20.) Wynne teaches that the composite may be
formed by overlapping and coupling a first sheet of reinforced
composite material 81 and a second sheet of reinforced composite
material 82 to form a seam 80, wherein each sheet of reinforced
composite material 81 and 82 includes at least two polymer film
layers between which is coupled a fabric layer or scrim with a
plurality of horizontal reinforcing fibers 84 and 85 and a
plurality of longitudinal reinforcing fibers 90 and 91. (Column
5, lines 43; Figures 1, 6A, 6B, 7A, and 7B.) According to Wynne
(column 3, lines 18-27; column 13, lines 16-21), the polymer
layers may be “selected from polypropylene, ethylene acrylic
acid [sic], polyvinyl chloride, ethylene-vinyl acetate
copolymer, ethylene-propylene-diene [sic], high density
polyethylene, low density polyethylene, linear low density
polyethylene, or mixtures thereof” and the fabric layer or scrim
“can be made from synthetic fiber forming polymers, naturally
occurring fibers, and mixtures thereof” (e.g., polyester).
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Thus, Wynne’s composite material differs from the invention
recited in appealed claim 1 in at least two significant ways.
First, Wynne does not disclose the use of a “hydrophobic
polypropylene reinforcing mesh.” Second, contrary to the
examiner’s unsupported allegation, Wynne does not disclose
propylene-ethylene copolymer sheets “polymerized from a
polypropylene and ethylene-monomer blend” (emphasis added), much
less the here recited propylene-ethylene copolymer sheets having
the specified polypropylene and ethylene monomer weight
percents.
Paeglis, like Wynne, discloses liners. (Column 3, lines
15-18.) While Peaglis does disclose the use of polypropylene
scrim as a reinforcement (column 10, lines 15-31), the polymer
sheets used in Paeglis bear no resemblance to the polymer sheets
of Wynne, much less the propylene-ethylene copolymer sheets
recited in appealed claim 1. Specifically, the polymer sheets
described in Paeglis are said to include neutralized acid group
containing elastomeric polymers such as neutralized acid group
containing EPDM elastomer or butyl rubber. (Column 3, line 64
to column 4, line 44.)
Under these circumstances, we cannot subscribe to the
examiner’s argument that one of ordinary skill in the art would
have been led to combine the teachings of Wynne and Paeglis.
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But even if the references could be combined in the manner as
proposed by the examiner, the combination would not result in
the appellants’ claimed invention because neither Wynne nor
Paeglis provides any motivation, teaching, or suggestion to use
the recited propylene-ethylene copolymer sheets polymerized from
specific amounts of polypropylene and ethylene monomer.
For these reasons, we reverse the examiner’s rejection
under 35 U.S.C. § 103(a) of appealed claims 1, 3 through 8, and
10.

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The decision of the examiner is reversed.
REVERSED

Bradley R. Garris )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Romulo H. Delmendo )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Linda R. Poteate )
Administrative Patent Judge )

RHD/kis
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