Ex Parte Hong et alDownload PDFPatent Trial and Appeal BoardNov 9, 201713274605 (P.T.A.B. Nov. 9, 2017) Copy Citation 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. 13/274,605 10/17/2011 Keith C. Hong 2011-098 7320 27569 7590 PAUL AND PAUL 1717 Arch Street Three Logan Square SUITE 3740 PHILADELPHIA, PA 19103 EXAMINER PENNY, TABATHA L ART UNIT PAPER NUMBER 1712 NOTIFICATION DATE DELIVERY MODE 11/14/2017 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): INFO @PAUL ANDPAUL.COM claire @paulandpaul.com fpanna@paulandpaul.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEITH C. HONG, HUSNU M. KALKANOGLU, and MING L. SHIAO Appeal 2016-000893 Application 13/274,605 Technology Center 1700 Before KAREN M. HASTINGS, JENNIFER R. GUPTA, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing of our Decision mailed August 17, 2017 (“Dec.”), affirming the Examiner’s rejections of claims 1,15, and 29-45 under 35 U.S.C. § 103(a). Request for Rehearing filed October 17, 2017 (“Req. Reh’g.”), 1. We deny Appellants’ request to change our Decision for the following reasons. Appellants argue that we relied on a single algaecide-containing coating disclosed in Skadulis to meet the following two separate and distinct elements recited in claim 1: “the coating on the inert base particles formed by a first mixture including at least one ‘algaecidal material’ and a second coating formed over the first by a ‘second mixture including a binder and a Appeal 2016-000893 Application 13/274,605 coloring material.’” Req. Reh. 2. Appellants further argue that “the board’s characterization is simply incorrect because Skadulis does not teach forming a second coating including a binder and a coloring material over a coating containing algaecide formed on an inert base particle.” Id. Appellants further assert that “Skadulis teaches the exact opposite of what is claimed, namely, Skadulis teaches forming a second coating containing algaecide (CU2O) over a first coating containing binder and a pigment.” Req. Reh’g. 2-3. However, as our Decision indicates, Skadulis discloses base roofing granules coated with a porous, moisture permeable coating composition that comprises an alkali metal silicate, clay, Q12O (cuprous oxide), and a pigment. Dec. 5 (citing Skadulis col. 1,11. 13—17; col. 2,11. 41—47; col. 3,11. 15—25, 29—32, 43—45, 51—54.). As our Decision also indicates, Skadulis discloses that a second coating composition can be applied to coated base granules. Dec. 5 (citing Skadulis col. 4,11. 13—46; col. 5,11. 13—31.) Specifically, the disclosures in Skadulis cited in our Decision for this latter teaching describe particular embodiments in which granules are coated with two separate coating compositions. In one embodiment, a first composition comprising kaolin clay, sodium silicate, and Ti02 (pigment) is applied to base granules, and then a second composition comprising kaolin clay, sodium silicate, Ti02 (pigment), and Q12O is applied to the granules coated with the first composition. Skadulis col. 4,11. 13—46. In another embodiment, a first composition comprising kaolin clay, sodium silicate, and CU2O is applied to base granules, and then a second composition comprising kaolin clay, sodium silicate, Ti02 (pigment), and cobalt blue stain (pigment) is applied to the granules coated with the first composition. 2 Appeal 2016-000893 Application 13/274,605 Skadulis col. 5,11. 13—34. Therefore, although Skadulis does disclose “forming a second coating containing algaecide (Q12O) over a first coating containing binder [clay and sodium silicate] and a pigment,” Skadulis also explicitly discloses forming a second coating layer including a binder (clay and sodium silicate) and coloring material (Ti02 and cobalt blue stain) over a first coating layer containing an algaecide (CU2O) formed on an inert base particle. Skadulis’ disclosures as a whole would have suggested to one of ordinary skill in the art that a single coating composition comprising an alkali metal silicate, clay, Q12O (algecide), and pigment could be applied to base roofing granules to retard the growth of algae on the surface of the roof for a period of years. However, Skadulis’ disclosures as a whole also would have suggested that two separate coating composition layers could be applied to roofing granules to achieve this effect, in which an alkali metal silicate and clay are included in both layers, pigment is included in either or both layers, and CU2O is included in either layer. Skadulis thus would have suggested base roofing granules coated with a first composition including CU2O and a pigment, and a second composition including an alkali metal silicate, clay, and a pigment. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ([A]n obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for [an examiner] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”); see also In re Preda, 401 F. 2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”). Therefore, contrary to 3 Appeal 2016-000893 Application 13/274,605 Appellants’ arguments, we did not rely “on the same algaecide-containing coating disclosed in Skadulis to meet two separate and distinct elements recited in claim 1.” Appellants further argue that one of ordinary skill in the art would not have had a reason to provide a second coating including a binder and a pigment over the coating disclosed in Skadulis containing an algaecide. Req. Reh.’g 3. Appellants contend that the algaecide-containing coating of Skadulis was successfully optimized to allow the algaecide to leach out for a length of time approximating the normal useful life of the roofing, and applying a second coating including a binder would interfere with the leaching of the algaecide. Id. Appellants further argue that one of ordinary skill in the art would not have had a reason to interfere with that success by placing a second coating including a binder and a pigment over the coating containing algaecide. Id. Appellants further assert “[t]here is no teaching or suggestion anywhere, outside of applicants’ own disclosure, to form a second coating including a binder and a pigment over the coating containing the algaecide,” and Appellants argue that the Board has failed to explain why one of ordinary skill in the art would make such a combination. Id. However, as discussed above, Skadulis explicitly discloses applying a first composition comprising kaolin clay, sodium silicate (binder)1, and CU2O (algaecide) to base granules, and then applying a second composition comprising kaolin clay, sodium silicate (binder), TiCh (pigment), and cobalt blue stain (pigment) to the granules coated with the first composition. Skadulis col. 5,11. 13—34. As also discussed above, Skadulis’ disclosures as 1 Appellants’ Specification discloses that suitable binders include a mixture of an alkali metal silicate and clay. Spec. 7,11. 17—20. 4 Appeal 2016-000893 Application 13/274,605 a whole would have suggested that two separate coating composition layers could be applied to roofing granules in which an alkali metal silicate and clay are included in both layers, pigment is included in either or both layers, and CU2O is included in either layer. Appellants further argue that Jewett discloses that the coating described in the reference that includes a carbon black pigment is non- porous and waterproof. Req. Reh’g. 3. Appellants contend that “[o]ne of ordinary skill would expect that, in view of the teachings of Jewett, forming a second coating including a binder and a pigment over the coating of Skadulis containing the algaecide would interfere with its function.” Id. However, as our Decision indicates, the Examiner’s proposed combination of Skadulis and Jewitt does not involve applying a coating disclosed in Jewitt containing a binder and a pigment over a coating disclosed in Skadulis comprising an algaecide. Dec. 5—6 (citing Final Act. 3—4.) Rather, the proposed combination stems from Jewitt’s disclosure that that suitable pigments for roofing granule coating compositions that comprise sodium silicate and clay include carbon black. Dec. 5—6 (citing Final Act. 3^4; Jewett pg. 3, col. 2,11. 16—22.) As the Examiner correctly finds, one of ordinary skill in the art would have been led at the time of Appellants’ invention to utilize carbon black as a pigment as disclosed in Jewett in a coating composition applied to roofing granules. Dec. 5—6 (citing Final Act. 4). In view of Skadulis’s disclosure of first and second coating layers for roofing granules that both include a pigment, the combined disclosures of Jewett and Skadulis would have suggested base roofing granules coated with a first coating layer including CU2O (algaecide) 5 Appeal 2016-000893 Application 13/274,605 and carbon black, and a second coating layer including an alkali metal silicate, clay, and a pigment, as recited in claim 1. Dec. 7—8. Appellants further argue that the “Board also relies on the finding that it would be obvious to the [person having ordinary skill in the art] to use the carbon black pigment of Jewett as a void forming material as taught by Hettinger to sustain the Examiners rejections. This finding is erroneous.” Req. Reh.’g 4. However, we did not rely on any such finding in our Decision. Rather, as our Decision indicates, and as discussed above, we relied on Jewett’s disclosure that suitable pigments for roofing granule coating compositions that comprise sodium silicate and clay include carbon black. Dec. 5—6 (citing Jewett pg. 3, col. 2,11. 16—22.) In view of this disclosure, and in view of Skadulis’s disclosure of first and second coating layers on roofing granules that both include a pigment, one of ordinary skill in the art would have been led to utilize carbon black as a pigment in the first coating layer disclosed in Skadulis, as recited in claim 1. Id. As our Decision further indicates, Jewett’s disclosures discussed above would have suggested to one of ordinary skill in the art at the time of Appellants’ invention that carbon black would be a suitable pigment to include in Skadulis’s first coating layer, and one of ordinary skill in the art need not have looked to Jewett’s disclosures for the same reasons that prompted Appellants’ invention, i.e., for disclosure of void-forming materials. Dec. 8—9. Appellants present additional arguments on page 4 of their Request for Rehearing. However, because Appellants did not raise these argument in their Appeal Brief and Reply Briefs, and we do not consider them. 37 C.F.R. § 41.52(a)(1) (arguments not raised, and evidence not previously 6 Appeal 2016-000893 Application 13/274,605 relied upon, in Appeal and Reply Briefs are not permitted in a request for rehearing, with limited exceptions). CONCLUSION In conclusion, based on the foregoing, we grant Appellants’ Request for Rehearing to the extent that we have reconsidered our Decision, but we deny Appellants’ request to make any change therein. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). DENIED 7 Copy with citationCopy as parenthetical citation