Ex Parte Jenkins

Patent Trial and Appeal Board

Aug 30, 2017

12867290 (P.T.A.B. Aug. 30, 2017)

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.
12/867,290 08/12/2010 Robert L. Jenkins 2010-084 8987
27569 7590 09/01/2017
PAUL AND PAUL
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
EXAMINER
KWIECINSKI, RYAN D
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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 ROBERT L. JENKINS
Appeal 2015-007772
Application 12/867,290
Technology Center 3600
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-007772
Application 12/867,290
STATEMENT OF THE CASE
Appellant Robert L. Jenkins1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision, as set forth in the Final Office Action dated July
17, 2014 (“Final Act.”), rejecting claims 1 and 3—15. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to a roofing element with placement indicator
features and a method of applying the elements to a roof. Claims 1 and 9 are
the independent claims on appeal. Claim 1, reproduced below with disputed
limitations italicized for emphasis, is illustrative of the claimed subject
matter:
1. A molded synthetic roofing element of the shingle or tile
type, adapted to be laid up in courses on a roof, having an a single
upper head lap portion and a single lower tab portion with each
of the headlap portion and tab portion having upper and lower
ends, with the lower end of the headlap portion being adjacent
the upper end of the tab portion;
(a) the roofing element having vertically spaced apart
upper and lower edges, laterally spaced apart right and left edges
defining said single upper headlap portion and said single lower
tab portion, with the single lower tab portion being of narrower
width between said spaced apart right and left edges than the
width of said single upper headlap portion and top and bottom
surfaces;
(b) with the bottom surface adapted to be laid up on a
roof facing the roof;
1 Appellant identifies CertainTeed Corporation as the real party in
interest. Appeal Brief, dated January 20, 2015 (“Appeal Br.”), at 1.
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(c) with the top surface of the tab portion of the element
being adapted to be substantially weather-exposed when laid up
on a roof and with the headlap portion of the element being
adapted to be substantially covered by roofing elements in a next-
overlying course of roofing elements when laid up on a roof and
with the headlap portion of the element having fastening zones
in the top surface of the element;
(d) with a pair of laterally spaced apart placement
indicators disposed in the headlap portion of the roofing element,
defining a central spacing zone between said placement
indicators, which spacing zone is substantially midway between
the right and left edges of the roofing element;
(e) with the placement indicators comprising means for
providing a visual indication of proper placement of spaced apart
edges of adjacent roofing elements in a next-overlying course of
roofing elements;
(f) wherein the placement indicators comprise any of:
(i) at least one pair of generally vertical lines,
with arrows pointing to the vertical lines, with the at least one
pair of vertical lines and the arrows being adjacent the upper edge
of the roofing element; and
(ii) a pair of right and left facing L-shaped
markings separate from said fastening zones in the lower end of
the headlap portion.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Topping
Smith ’369
Corbin
Smith ’191
Zhang
US 1,592,014
US 3,973,369
US 4,527,374
US 4,637,191
US 2001/0022055 A1
July 13, 1926
Aug. 10, 1976
July 9, 1985
Jan. 20, 1987
Sept. 20, 2001
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Application 12/867,290
REJECTIONS
The Examiner made the following rejections:
1. Claims 1, 3, and 12—15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Smith ’191.
2. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smith ’191 and Topping.
3. Claims 5, 6, and 9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Smith ’191 and Smith ’369.
4. Claims 7, 8, and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Smith ’191 and Zhang.
5. Claims 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smith ’191 and Corbin.
Appellant seeks our review of these rejections.
DISCUSSION
The Rejection of Claims 1, 3, and 12—15
as Unpatentable Over Smith ’191
Claims 1 and 13
Appellant argues claims 1, 3, 12, 14, and 15 as a group. Appeal Br.
15. We select claim 1 as the representative claim, and claims 3, 12, 14, and
15 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant argues that Smith ’191 does not disclose three limitations in
claim 1. First, claim 1 requires, in part, a “molded synthetic roofing element
of the shingle or tile type.” The Examiner finds the molded roofing element
is “a product by process limitation and does not further limit the final
product.” Final Act. 2. According to the Examiner, “the term ‘molded’ is a
process by which the roofing element is formed, and therefore determination
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of patentability is based on the product itself.” Ans. 2 (citing MPEP 2113).
The Examiner finds that the process by which “roofing element” is made,
i.e., by molding, does not create a structural distinction in the final product
upon which patentability of the product itself may be predicated. Ans. 3^4
(citing In re Thorpe, 111 F.2d 695, 697-98 (Fed. Cir. 1985)).
Appellant acknowledges that the Examiner’s finding, but does not
address it or explain why the finding is erroneous. Appeal Br. 10. Instead,
Appellant merely states that the Specification discloses the “roofing shingle
or tile [is] manufactured to simulate a single natural slate shingle or tile”
and “[s]uch synthetic shingle elements may be molded or otherwise
manufactured of synthetic materials.” Appeal Br. 11 (citing Spec. 1, third
paragraph) (emphasis omitted).
We agree with the Examiner’s analysis that the term “molded
synthetic roofing element” is a product-by-process type limitation. See In re
Dike, 394 F.2d 584, 589 (CCPA 1968) (“The identification of the article as
‘blow-molded’ in some of the claims . . . add[s] nothing of patentable import
over the art relied on because, at best, [it] relate[s] to the process of making
the article and [is] not definitive of the structure of the article, to which the
claims are directed.”). A product-by-process claim is not limited to a claim
that merely recites process steps. For example, in Dike, it was held that an
article, a “blow-molded” one-piece bottle, was in the nature of a product-by­
process claim. Id. Here, the Examiner shifted the burden to Appellant to
come forward with evidence or argument to demonstrate why the recited
method of manufacture results in a structural difference in the claimed
product as compared to the prior art. See Thorpe, 111 F.2d at 698.
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Appellant did not do so. As such, the Examiner’s findings in this regard
stand uncontroverted.
Second, Claim 1 requires, in part, a molded synthetic roofing element
having “a single lower tab portion.” The Examiner explains that claim 1
broadly recites a “single tab portion,” not a “single tab” (Final Act. 2), and
[t]he “term ‘portion’ added to the claim limitation broadens the scope of the
claim limitation (i.e. ‘a single tab portion’ is a broader limitation that ‘a
single tab’).” Ans. 3. The Examiner finds that Smith ’191 discloses “an
element having ‘a single upper headlap portion’ and ‘a single lower tab
portion’ with the Tower tab portion’ broken into individual tabs” and the
“larger area containing the individual tabs is considered the ‘tab portion’ of
the element.” Ans. 3. The Examiner further explains that Smith ’ 191 ’s “butt
edge portion” is equivalent to the “tab portion” of the claimed roofing
element. Ans. 3.
Appellant argues that the Examiner’s usage of the term “single tab
portion” is inconsistent with the Specification which discloses “tab portion
16” having a single tab (Appeal Br. 12), and ignores the word “single” {id. at
13). Appellant’s argument is not commensurate with the scope of the claim.
We note that an ordinary definition of “portion” is “a section or
quantity within a larger thing; a part of a whole” or “a part separated from a
whole.” The Free Dictionary, http://www.thefreedictionary.com/portion,
last visited August 27, 2017. Thus, we understand that, consistent with
claim 1 and the Specification, a single lower tab portion is the “lower section
or part of the roofing element” that is located below the single headlap
portion, and that has a narrower width than the single upper headlap portion.
We also note that Smith ’191 discloses that the “butt edge portion” broadly
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comprises the entire lower section of the shingle formed by three equal-
width tabs 18. Smith ’191 3:32—34. Thus, the usage of “portion” by the
Examiner and Smith ’191 are consistent with the usage in the Specification.
Appellant’s argument that “single lower tab portion” means a “single
tab” is unpersuasive because it seeks to incorporate limitations from the
Specification into the claim. Appellant elected to define the claimed subject
matter using language that omits limitations found in the Specification and
we will not now import those limitations into the claims. The Federal Circuit
has “repeatedly held that the fact that the specification describes only a
single embodiment, standing alone, is insufficient to limit otherwise broad
claim language.'’'’ Howmedica Osteonics Corp. v. Wright Med. Tech., Inc.,
540 F.3d 1337, 1345 (Fed. Cir. 2008) (declining to impute a limitation into a
disputed claim term in the absence of a clear requirement in the
specification, even where “every disclosure of [the disputed term] in the
specification shows [the alleged limitation]”) (emphasis added); see also
Ventana Med. Sys., Inc. v. Biogenex Labs., Inc., 473 F.3d 1173, 1181 (Fed.
Cir. 2006) (“[T]he mere fact that the [asserted] patent discloses [only
certain] embodiments . . . does not in and of itself mean that the method
claims at issue are limited to the disclosed embodiments.”); Phillips v. AWH
Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (“[W]e have expressly rejected
the contention that if a patent describes only a single embodiment, the claims
of the patent must be construed as being limited to that embodiment.”).
Here, the Specification does not “demonstrate a clear intention to limit the
claim scope using ‘words or expressions of manifest exclusion or
restriction.’” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
381 F.3d 1111, 1117 (Fed. Cir. 2004)(“[E]ven where a patent describes only
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a single embodiment, claims will not be ‘read restrictively unless the
patentee has demonstrated a clear intention to limit the claim scope using
‘words or expressions of manifest exclusion or restriction’”). The adjective
“single” is reasonably attributed to the phrase “lower tab portion,” and not
necessarily to the phrase “lower tab” itself. Thus, “a single lower tab
portion” is reasonably construed to include a single portion having lower
tabs as in Smith ’191.
Finally, claim 1 recites “placement indicators” comprising any of: “(i)
at least one pair of generally vertical lines, with arrows pointing to the
vertical lines,” and “(ii) a pair of right and left facing L-shaped markings.”
The Examiner finds that Smith ’191 discloses a “pair of generally vertical
lines” as recited in claim 1, but “Smith [’191] does not disclose wherein the
vertical lines also contain arrows pointing to the vertical lines.” Final Act.
3^4. In support of the Examiner’s rejection, the Examiner finds that the
printed arrows are “printed indicia [i.e. printed matter]” {id. at 15) and the
“printed ‘arrows’ are not considered functionally tied to the product and thus
cannot provide a patentable distinction” (Ans. 5), because the “roofing
elements do not require the ‘arrows’ to actually function” {id.).2 According
2 The Examiner also determines that it would have been obvious “to
have provided arrows on the upper surface of the roofing element of Smith
so to effectively point to the alignment markings of the upper surface,
creating an easy to use, easy to install roofing element and eliminating the
mistake of the installer using an incorrect marking as a placement indicator.”
Final Act. 4. The Examiner finds that “the use of arrow type indicators is a
common practice [in] the field of construction, building, engineering, etc.”
Ans. 5—6. In response, Appellant argues that because “the Examiner fails to
identify anything in any cited reference as corresponding to the arrows
required to point to these vertical lines, and instead merely concludes these
features to be obvious,” “there is no reasoned explanation for his conclusion
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to the Examiner, “[pointing arrows on a shingle to clarify which direction
the [vertical] lines are to be functionally used does not distinguish the
shingle from the prior art of record” (Final Act. 15), “provide additional
functionally to the already present vertical lines” (Ans. 4), or “add any new
or obvious functionality to the vertical line placement indicators” (Ans. 4),
for which the Examiner cites slits 36 of Smith ’191 (Final Act. 3). See also
Final Act. 13 (“placement indicators and/or legends and instructions
provided on the roofing elements are considered non-functional printed
matter and cannot be considered patentably distinguishing”) (citing
MPEP 2112.01 (citing In reNgai 367 F.3d 1336 (Fed. Cir. 2004))).
In response, Appellant generally addresses the “placement indicators”
but does not address the Examiner’s specific finding that the “arrows
pointing to the vertical lines” are “printed matter” lacking a new and
nonobvious functional relationship with the substrate. According to
Appellant, “there is a functional relationship between the indicia and the
article, and the placement indicia must be given patentable weight” because
“the indicia guide placement of the shingle relative to other shingles.” Reply
Br. 6. Even assuming arguendo that Appellant’s argument may be true for
the recited “vertical lines,” Appellant does not address that the arrows
merely point to the vertical lines.
The Federal Circuit’s decision in AstraZeneca LP v. Apotex, Inc., 633
F.3d 1042 (Fed. Cir. 2010) is instructive. The Federal Circuit found that
“the addition of new printed matter to a known product [does not] make[]
the product patentable” or “create[] the functional relationship necessary to
regarding this limitation.” Appeal Br. 14. Because we affirm that
Examiner’s “printed matter” rejection, we do not reach this rejection.
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distinguish the product from the prior art.” Id. at 1064—65. At issue was a
claim to a kit that included a known drug composition and a label containing
instructions for frequency of administration of the drug. Id. at 1063. The
Federal Circuit explained, with regard to the type of functional relationship
necessary to potentially impart patentable weight to the printed matter, that
the instructions in no way functioned with the drug to create a new,
unobvious product, and that removing the printed instructions from the
claimed kit did not change the ability of the drug product to function and
treat respiratory diseases. Id. at 1065; see also In re Ngai, supra.
Here, the Examiner correctly finds, and Appellant does not contest,
that “the roofing elements do not require the ‘arrows’ to actually function.”
Ans. 5. Especially with the presence of the already-available vertical line
indicators, there is no new and nonobvious functional relationship between
the claimed arrows (i.e., visible placement indicators) and the roofing
element. The additional presence of the arrows and other placement
indicators such as the L-shaped markings does not change the structure or
function of the roofing element. The arrows identifying the placement
indicators are akin to installation instructions. Altering, omitting, or
relocating them, for example to an instruction sheet, so as to be disconnected
from the roofing element, does not change the claimed invention’s ability to
function as a roofing element. Hence, the claimed arrows and other
placement indicators are non-functional printed matter. As such, the
Examiner correctly concluded that the recited “arrows pointing to a vertical
line” do not patentably distinguish the claimed roofing element from Smith
’ 191 ’s roofing element. Further, to the extent those arrows are related to the
substrate, the Examiner also correctly concluded that they are not related in a
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new and nonobvious way because they perform essentially the same
function as Smith ’ 191 ’s slits 36 themselves—identifying to the installer
proper alignment of successive roofing elements. Smith ’191 4:42—52.
For the reasons above, the rejection of claim 1 is sustained. Claim 3,
12, 14, and 15 fall with claim 1.
Claim 13
The Examiner finds that Smith ’191 discloses “each element in the
second course being applied with one of its right and left edges aligned
against one of the laterally spaced-apart placement indicators of a pair of
placement indicators in the headlap portion of a next-underlying roofing
element of the first course of roofing elements,” as recited in claim 13. Final
Act. 5 (stating shingles 22 align with spaced apart placement indicators 36,
as shown in Fig.4).
In response, Appellant argues that “Smith ’191 cannot render the
claimed method obvious because Smith does not disclose or suggest the
laterally spaced placement indicators disclosed by claims 1 and 9 which
must be employed in practicing the method.” Appeal Br. 15. Appellant’s
argument that dependent claim 13 recites additional elements that support
patentability is not persuasive. See In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (37 C.F.R. § 41.37 requires “more substantive arguments in an
appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
Appellant does not identity any patentable distinctions for claim 13, and
fails to apprise us of error in the Examiner’s findings or reasoning.
The rejection of claim 13 is sustained.
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The Rejection of Claim 4
as Unpatentable Over Smith ’191 and Topping
In response to the rejection of claim 4, Appellant merely argues that
“[sjince the independent claim [1] is not anticipated or obvious over the
cited art, any dependent claim [i.e. claim 4] which adds further limitations
must also be patentable over the cited art. In re Fine, 837 F.2d 1071, 5
USPQ2d 1696 (Fed. Cir. 1988).” Appeal Br. 16. Because the rejection of
claim 1 is sustained, Appellant’s argument regarding claim 4 is
unpersuasive, and the rejection of claim 4 is sustained.
The Rejection of Claims 5, 6, and 9
as Unpatentable Over Smith ’191 and Smith ’369
In response to the rejection of claims 5 and 6, Appellant argues that
claims 5 and 6 “merely add limitations to independent claim 1 which
appellant contends is not obvious over Smith ’191 as explained above.”
Appeal Br. 21. As discussed above, the rejection of claim 1 is sustained.
Appellant’s argument that dependent claims 5 and 6 recite additional
elements that support patentability is not persuasive. See In re Lovin, 652
F.3d at 1357 (37 C.F.R. § 41.37 requires “more substantive arguments in an
appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
The rejection of claims 5 and 6 is sustained.
With respect to claim 9, Appellant states that independent claim 9
differs from claim 1 with respect to the limitations of clause (f):
wherein the pair of L-shaped markings are separate from said
fastening zones and are on the upper surface of the roofing
element on the lower end of the headlap portion of the roofing
element; wherein the L-shaped markings comprise visual
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indicator means for placing comers of tab portions of adjacent
roofing elements in a next-overlying course of roofing elements;
wherein the L-shaped markings are disposed at locations other
than midway between right and left edges of the roofing element,
to provide means for guiding the placement of next-overlying
roofing elements at pre-determined positions of overlap to the
underlying roofing element.
See Appeal Br. 21—22; id. at 28, Claims App.
Appellant argues that, as argued with respect to claim 1, “Smith ’191
does not disclose or suggest a unitary, molded shingle having a single tab
portion and a single headlap portion,” as recited in claim 9. Appeal Br. 21.
As discussed above with respect to claim 1, Appellant’s arguments regarding
claim 9 are not persuasive.
For clause (f) of claim 9, the Examiner finds that Smith ’369’s right
and left facing markings 26 provide a “visual indication of proper placement
of spaced apart edges of adjacent roofing elements in a next-overlying
course of roofing elements.” Final Act. 10 (citing Smith ’369 Fig. 3).
Appellant further argues that Smith ’369 does not disclose visual
placement indicators because Smith ’369 discloses shingles having slots
located within the roofing element for inserting the comers of the tabs in the
next overlying course of shingle and are used to help prevent the shingles
from being blown off the roof. Appeal Br. 21—22. Appellant argues that if
the slots were used merely to position the next overlying course of shingles,
the slot could not be used to prevent the shingles from being blow off the
roof. Id. at 22.
Appellant’s argument is unpersuasive. We agree with the Examiner
that Smith ’369’s “[sjlots, although actual holes in the shingles and are used
for purposes in additional to placement of the shingles, are still considered
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‘visual placement indicators’ since the slots are used to visually place the
comers of the overlying shingles.” Ans. 6—7; see, e.g., Smith ’369 2:11—17
(“each higher course overlaps the outer surface of the next lower course,” as
shown in Fig. 3); 3:10-26 (“As the shingles are applied in successively
higher courses; as indicated in FIG. 3, the shingles of each higher course are
offset horizontally to the right, relative to the shingles of the previously
applied next lower course, by a distance equal to one-fourth of the width of a
shingle. This places the lower comers of longer tab 12 of each shingle being
applied in registry with slots 28 of a shingle in the next lower course, and the
lower comers of shorter tab 14 in registry with the right slot 26 in the lower
shingle, and with the left slot 26 of the next shingle to the right in the next
lower course.”).
For the reasons above, the rejection of claim 9 is sustained.
The Rejection of Claims 7, 8, and 11
as Unpatentable Over Smith ’191 and Zhang
In response to the rejection of claims 7, 8, and 11, Appellant merely
argues that “[sjince the independent claims [1 and 9] are not anticipated or
obvious over the cited art, any dependent claim [i.e. claims 7, 8, and 11]
which adds further limitations must also be patentable over the cited art.”
Appeal Br. 24. Because the rejections of claims 1 and 9 are sustained,
Appellant’s argument is unpersuasive,
Appellant’s argument that dependent claims 7, 8, and 11 recite
additional elements that support patentability is not persuasive. See In re
Lovin, 652 F.3d at 1357.
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Finally, Appellant repeats the argument that the “placement
indicators are not non-functional ‘printed matter’ and are in fact related to
the function of the product and the process claimed” and the “placement
indicators are employed in installing the shingles and are important feature
of the claimed invention.” For the reasons discussed above with respect to
claim 1, we construe the claimed placement indicators as non-functional
printed matter and failing to create a new and nonobvious relationship with
the substrate. As such, the placement indicators do not patentably
distinguish the claimed roofing element from the prior art’s roofing element.
For the reasons above, the rejection of claim 7, 8, and 11 is sustained.
The Rejection of Claim 10
as Unpatentable Over Smith ’191 and Corbin
In response to the rejection of claim 10, Appellant merely argues that
“[sjince the independent claim [1] is not anticipated or obvious over the
cited art, any dependent claim [i.e. claim 10] which adds further limitations
must also be patentable over the cited art.” Appeal Br. 26. Because the
rejection of claim 1 is sustained, Appellant’s argument is unpersuasive.
Appellant’s argument that dependent claim 10 recites additional
elements that support patentability is not persuasive. See In re Lovin, 652
F.3d 1349 at 1357. The rejection of claim 10 is sustained.
DECISION
The Examiner’s rejections of claims 1 and 3—15 are 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)(l)(iv).
AFFIRMED
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