Ex Parte Hohmann

Patent Trial and Appeal Board

May 21, 2018

14210670 (P.T.A.B. May. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/210,670 03/14/2014
321 7590 05/23/2018
SENNIGER POWERS LLP
100 NORTH BROADWAY
17THFLOOR
ST LOUIS, MO 63102
FIRST NAMED INVENTOR
Ronald P. Hohmann JR.
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.
MLP7693.US 6441
EXAMINER
NORDMEYER, PATRICIA L
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
05/23/2018 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):
uspatents@senniger.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD P. HOHMANN
Appeal2017-008719
Application 14/210,670
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-13 under 35 U.S.C. § 103(a) as
being unpatentable over Hohmann, JR. (US 2011/0277393 Al, published
Nov. 17, 2011) ("Hohmann") in view of Chandavasu et al. (US
2002/0180082 Al, published Dec. 5, 2002) ("Chandavasu").
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the applicant, Columbia Insurance Company, which is also
identified as the real party in interest (Br. 2).
Appeal2017-008719
Application 14/210,670
Independent claim 1 is illustrative of the subject matter on appeal:
1. A water-shedding flashing for draining water away from
a building, the building including a cavity wall structure having
an inner wythe and an outer wythe, the flashing comprising an
elongate flexible membrane including a matrix and
hydrophobic material within the matrix, the hydrophobic
material within the matrix being incorporated within the
elongate flexible membrane and present at surfaces of the
membrane in quantities to reduce surface adhesion of water on
the elongate flexible membrane, the flexible membrane being
sized and shaped to drain water away from the building and
being sized and shaped for installation in the cavity wall
structure with a portion of the flexible membrane being
received in a bed joint of the inner wythe and another portion of
the flexible membrane being simultaneously received in a bed
joint of the outer wythe thereby facilitating the removal of
water from the cavity wall structure.
ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we find that the preponderance of evidence
supports the Examiner's conclusion that claims 1-13 are unpatentable under
§ 103(a) over the combination of Hohmann and Chandavasu. We sustain the
Examiner's rejection essentially for the reasons set out by the Examiner in
the Answer and in the Final Office Action.
We select claim 1 as representative of the issues on appeal.
We add the following primarily for emphasis.
Appellant's principal argument on appeal is that the combination of
Hohmann and Chandavasu would not have provided a water-shedding
flashing comprising an elongate flexible membrane including a matrix and
hydrophobic material within the matrix, as recited in claim 1. Specifically,
Appellant contends both of Hohmann and Chandavasu regard hydrophobic
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Application 14/210,670
layers or films because Hohmann discloses a super-hydrophobic layer 52
disposed on top of a flashing 42 and Chandavasu is directed to microporous
films prepared from immiscible blends of at least two components (Br. 4--7).
Appellant argues one of ordinary skill in the art would have understood
Chandavasu's material to be applied as a coating to a substrate (id. at 6).
The Examiner finds Hohmann discloses a water-shedding flashing
that is sized and shaped to drain water away from a building and for
installation in a cavity wall structure, as recited in claim 1 (Ans. 2-3). The
Examiner finds Hohmann' s flashing includes a membrane and a
hydrophobic material (id. at 3). The Examiner finds Hohmann does not
disclose a hydrophobic material within the matrix of an elongate flexible
membrane, as recited in claim 1 (id.).
The Examiner finds Chandavasu discloses a substrate including an
elongate flexible membrane including a matrix and hydrophobic material
within the matrix (id. at 4). The Examiner concludes it would have been
obvious to modify Hohmann in view of Chandavasu to control the
transmission of water moisture (id.). In response to Appellant's arguments,
the Examiner further states that Chandavasu discloses a membrane having a
matrix (e.g., the major component of Chandavasu' s melt blend) and a
hydrophobic material (e.g., the minor component of the melt blend) within
the matrix (Ans. 5-7). The Examiner explains that Chandavasu's film may
be used to replace the super-hydrophobic film 52 of Hohmann, which meets
the claim limitations (id. at 8).
Hohmann discloses a flashing having a super-hydrophobic surface for
cavity wall structures (Hohmann i-f 2). The flashing 10 includes an elongated
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Application 14/210,670
flexible membrane 42 and a super-hydrophobic layer 52 disposed on a
modified surface 48 of the membrane 42 (id. i-fi-1 48--49).
Chandavasu discloses a membrane prepared by a melt of an
immiscible blend of a major component and a minor component
(Chandavasu i14). Chandavasu discloses the major and minor components
may be hydrophobic (id. i-fi-f 11, 60). For example, the film produced by
Chandavasu's method may have a matrix of the major component with
inclusions or domains of the minor component distributed within (id. i1 5).
Therefore, the disclosures of Hohmann and Chandavasu support the
Examiner's findings of facts and conclusion of obviousness.
Appellant does not respond to the Examiner's explanation in the
Answer or otherwise identify a reversible error in the Examiner's reasoning.
The Examiner's rationale is based upon Chandavasu's disclosure of an
alternative hydrophobic material that can be substituted for the hydrophobic
material of Hohmann (Ans. 8). The substitution of one known element for
another is obvious when the combination yields no more than a predictable
result (KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)). As
conceded by Appellant, "to the extent that Chandavasu teaches to modify
Hohmann it would be to replace the super-hydrophobic layer 52 in Hohmann
with the film disclosed in Chandavasu" (Br. 6). Thus, the Examiner's
rationale can be viewed as relying on the well-established principle that, for
an improvement to be patentable, it must be more than the predictable use of
prior art elements according to their established functions (KSR Int'! Co. v.
Teleflex Inc., 550 U.S. at 417).
Appellant further argues that although claim 1 uses "comprising"
language, claim 1 nevertheless requires a flashing to include an elongate
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Application 14/210,670
flexible membrane including a matrix and a hydrophobic material within the
matrix that is sized and shaped as recited in claim 1 (Br. 7-8). Specifically,
Appellant contends a film is not sized and shaped as recited in claim 1
because it "is easily tom and incapable of holding its shape to perform its
purpose to drain water away" and "a film by itself would not be understood
by those of ordinary skill in the art to be a water shedding flashing" (id. at
4).
Appellant's arguments are unpersuasive. As the Examiner correctly
finds, Hohmann discloses a flashing that is sized and shaped for installation
in a cavity wall structure and to drain water away from a building (see
Hohmann i-fi-1 2, 4 7). The Examiner has set forth a prima facie case of
obviousness for substituting Chandavasu's material for Hohmann's super-
hydrophobic layer 52. Appellant does not cite evidence or persuasive
technical reasoning that the modified flashing of Hohmann would no longer
function to drain water or no longer be capable of installation, as disclosed
by Hohmann. The attorney arguments submitted by Appellant (Br. 4) are
insufficient to demonstrate such a point (see In re Pearson, 494 F.2d 1399,
1405 ( CCP A 197 4) ("Attorney's argument in a brief cannot take the place of
evidence")).
Moreover, the language of claim 1 encompasses coatings or films that
function as the membrane recited in claim 1 (e.g., the hydrophobic coating
of Hohmann, as modified in view of Chandavasu). Claim 1 recites a
membrane sized and shaped to perform water draining and installation
functions but does not require that the membrane performs such functions
solely by itself. As further stated by the Examiner at page 8 of the
Examiner's Answer, the "comprising" language of claim 1 permits a
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flashing to include other layers or structures besides the layer that functions
as a membrane having a matrix and hydrophobic material within.
In view of the above, Appellant's arguments do not identify a
reversible error in the Examiner's rejection of claim 1.
Appellant does not argue claims 2-13 separately from claim 1 (Br. 8).
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103(a) rejection of claims 1-13 over
Hohmann and Chandavasu.
DECISION
The Examiner's rejection of claims 1-13 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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