Ex parte Jenkins et al.

Board of Patent Appeals and Interferences

Sep 28, 2000

08380244 (B.P.A.I. Sep. 28, 2000)

1
The opinion in support of the decision being entered today was
not written for publication in a law journal and is not
binding precedent of the Board.
Paper No. 45
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROBERT L. JENKINS, GEORGE F. WILKINS, MICHAEL J.
NOONE, NORMAN M. ROBINSON and ROBERT E.
OGLESBY
__________
Appeal No. 1997-0449
Application 08/380,244
___________
HEARD: February 7, 2000
___________
Before FRANKFORT, STAAB, and McQUADE, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1-14, all the claims currently pending in
the present application.
By way of background, this is the second appeal of claims
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Application 08/380,244
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directed to the composition roofing shingle disclosed in this
application. In Appeal No. 94-1620 in Application 07/859,240,
the parent of the present application, we affirmed rejections
of all the claims then pending under 35 U.S.C. § 112, second
paragraph, and 35 U.S.C. § 103. Appellants elected to
continue prosecution by way of this continuation application,
wherein the claims of the parent ‘240 application have been
amended, new claims have been added, and evidence of
nonobviousness in the form of declarations by co-inventor
Robert L. Jenkins have been submitted.
Appellants’ invention pertains to a composition roofing
shingle which includes a shingle body having a layer of
elongated release material affixed to an exposed face thereof.
The release material further bears planographic indicia
thereon for identifying the shingle as to at least one
parameter of its manufacture. Claim 1, the sole independent
claim on appeal, is illustrative of the appealed subject
matter and reads as follows:
1. A composition roofing shingle comprising an elongated
shingle body having an exposed face, and a separate layer of
elongated release material affixed to said exposed face
throughout the extent of the shingle body, said release
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Application 08/380,244
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material bearing planographic indicia thereon at predetermined
intervals, with said release material comprising
(a) means by which the planographic indicia is
applied to the shingle, to which the release
material is affixed; and
with said planographic indicia
(b) comprising means for identifying the shingle as
to at least one parameter of its manufacture.
The references relied upon by the examiner in the final
rejection are:
McCorkle 3,138,897 June 30,
1964
Morgan et al. (Morgan) 3,624,975 Dec. 7,
1971
Hoffman 3,835,604 Sept. 17,
1974
Tajima et al. (Tajima) 4,055,453 Oct. 25,
1977
Small 4,644,592 Feb. 24,
1987
May 4,751,122 June 14,
1988
Simon 4,907,636 Mar. 13,
1990
The following rejections are before us for review:
(a) claim 13, under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and
distinctly claim the subject matter which appellants regards
as the invention,
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Application 08/380,244
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(b) claims 1-14, under 35 U.S.C. § 103, as being
unpatentable over May or Morgan or Tajima or McCorkle in view
of Hoffman, and
(c) claims 1-14, under 35 U.S.C. § 103, as being
unpatentable over May or Morgan or Tajima or McCorkle in view
of Small or Simon.
Reference is made to appellants’ brief, reply brief, and
supplemental reply brief (Paper Nos. 37, 40 and 42,
respectively) and to the examiner’s answer and supplemental
answer (Paper Nos. 38 and 41) for the respective positions of
appellants and the examiner regarding the merits of these
rejections.
The rejection under 35 U.S.C. § 112
Claim 13 depends from claim 2 and calls for the indicia
and release material together to comprise “a preprinted
portion of a roll of release material.”
In rejecting claim 13 under § 112, the examiner states
that “Claim 13 appears to present the release material as part
of a roll of release material. But, how would the release
material be formed in a roll if, indeed, it is applied to the
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Application 08/380,244
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shingle?” (answer, page 3). It thus appears that the examiner
considers it to be improper to refer to the release material
affixed to an exposed face of the shingle body as being “a
portion . . . of a roll of release material,” as called for in
claim 13.
Appellants’ argument against this rejection is found on
page 20 of the brief and reads as follows:
Before the application of the release material and
the indicia to the shingle, they existed in a roll
of release material, with the indicia preprinted on
the release material. As that roll was unrolled and
cut into segments, or “portions”, as recited in
claim 13, the indicia and release material are
together applied to the shingle. Once unrolled and
applied to the shingle they form a unit with the
shingle, but such indicia and release material
still, taken together comprise a preprinted portion
of a roll of release material. . . . [W]hat is being
claimed here is not anything that is still in a
roll; merely that the indicia and release material
were once in a roll, and now comprise a “portion” of
the roll of which they were once a part.
While we appreciate appellants’ point that the indicia
and release material may have existed as a roll of preprinted
release material prior to being applied to the shingle body,
this circumstance is not brought out by the language of claim
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Application 08/380,244
In the event of further prosecution, appellants may wish1
to amend claim 13 to read as follows:
13. The shingle according to claim 2, wherein
prior to its application to the shingle body, the
indicia and release material together comprise a
preprinted portion of a roll of release material.
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13. From our perspective, claim 13 injects an element of1
uncertainty into the claims in calling for the release
material, previously recited as being “affixed to said exposed
face . . . of the shingle body” (claim 1), as also being “a
preprinted portion of a roll of release material” (claim 13).
Accordingly, we will sustain this rejection.
The rejection under 35 U.S.C. § 103
An analysis of independent claim 1 reveals that the
claimed subject matter is a roofing shingle comprising (1) a
shingle body having an exposed face, (2) a separate layer of
elongated release
material affixed to the exposed face of the shingle body, and
(3) planographic indicia for identifying the shingle as to at
least one parameter of its manufacture located on the release
material at predetermined intervals. In the present case,
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there appears to be no dispute that each of the primary
references (May, Morgan, McCorkle and Tajima) constitutes a
roofing shingle comprising (1) and (2). As to (3), we hold
that the requirement that the planographic indicia identifying
the shingle as to at least one parameter of its manufacture
sufficiently functionally relates the printed matter
implicitly comprising the claimed planographic indicia to the
shingle to which it is affixed, such that this indicia
represents a difference or distinction over the primary
references which must be given weight in considering the
obviousness of the appealed claims. See In re Gulack, 703
F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983). As to
the secondary references relied upon by the examiner in
rejecting the appealed claims, Hoffman pertains to building
insulation that includes printed information (e.g., the
manufacturer’s name) on portions of the insulation’s backing,
while each of Small and Simon teaches release material affixed
to a product, wherein the release material has printed thereon
instructions relating to installation of the product. For the
purposes of this appeal, we will assume that these reference
Appeal No. 1997-0449
Application 08/380,244
The declarations in question were submitted by2
appellants on May 15, 1995 (Paper No. 29, executed by Jenkins
on May 11, 1995, hereinafter “Jenkins I”) and July 31, 1995
(Paper No. 32, executed by Jenkins on July 24, 1995,
hereinafter “Jenkins II”).
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teachings establish a prima facie case of obviousness of the
claimed subject matter.
Appellants devote a considerable portion of their
argument in favor of patentability to the evidence of
nonobviousness they have submitted. This evidence consists of
two declarations by co-inventor Robert L. Jenkins provided for
the purpose of showing copying by others of the presently
claimed invention. It is well settled that a nexus must be2
established between the merits of the claimed invention and
the evidence proffered to show nonobviousness if such evidence
is to be accorded substantial weight in deciding the
obviousness/nonobviousness issue. See Simmons Fastener Corp.
v. Illinois Tool Works, Inc., 739 F.2d 1573, 1575, 222 USPQ
744, 746 (Fed. Cir. 1984), cert. denied, 471 U.S. 1065 (1985).
Moreover, in any given case, evidence of nonobviousness may be
entitled to more or less weight, depending upon its nature and
its relationship with the merits of the invention. Stratoflex
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Application 08/380,244
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Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538, 218 USPQ 871, 879
(Fed. Cir. 1983).
The declarations in aggregate reveal, among other things,
the following chronology of events attested to by declarant
Jenkins:
! On November 30, 1989, CertainTeed Corporation, the
assignee of the present invention, began marketing
shingles that included release material having
planographic material thereon for identifying the shingle
as to at least one parameter of its manufacture (Jenkins
I, ¶3; Jenkins II, ¶5; Exhibit F of Jenkins II).
! Throughout the course of 1990, there were a number of
well attended trade shows for the roofing industry and
professional meetings for representatives of major
shingle manufacturers (Jenkins II, ¶3).
! Subsequent to CertainTeed’s introduction of the above
described shingles several manufacturers of roofing
shingles began marketing shingles that included release
material having planographic material thereon for
identifying the shingles as to at least one parameter of
their manufacture (Jenkins I, ¶3; Exhibits A-E of Jenkins
I).
! The shingles of Exhibits A-E of Jenkins I were not
available prior to CertainTeed’s introduction in November
of 1989 of shingles that included release material having
planographic material thereon for identifying the shingle
as to at least one parameter of its manufacture (Jenkins
II, ¶2).
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In addition, declarant Jenkins attests that the level of
available information as to new products of competitive
shingle manufacturers is relatively high, that the totality of
significant shingle manufacturers is relatively small (about a
dozen), and that, as a consequence, introduction of new
products
of any one shingle manufacturer is quickly known to the other
significant shingle manufacturers (Jenkins I, ¶3).
In the present case, the appearance in the marketplace in
late 1989 of shingles embodying the features of Exhibit F of
Jenkins II, the standard practices of the shingle roofing
industry (e.g., trade shows, professional meetings, etc.), the
subsequent appearance of shingles embodying the features of
Exhibits A-E of Jenkins I, and the relative simplicity of the
subject matter involved here, all support a conclusion that
the makers of Exhibits A-E had access to the presently claimed
invention shortly after CertainTeed’s introduction of shingles
like those of Exhibit F into the marketplace in late 1989. In
addition, a comparison of Exhibits A-E of Jenkins I and
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Application 08/380,244
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Exhibit F of Jenkins II supports a conclusion that shingle
products bearing release material like those of Exhibits A-E
of Jenkins I correspond to the subject matter of the appealed
claims. It has been stated that access in combination with
similarity can create a strong inference of copying. See
Cable Elec. Prods. v. Genmark, Inc., 770 F.2d 1015, 1027, 226
USPQ 881, 888 (Fed. Cir. 1985). In addition, the circumstance
that the alleged copying activity subsequent to late 1989
involves a number of manufacturers suggests that the claimed
invention was well received in the roofing shingle making
industry. The above considerations lead us to conclude that
the Jenkins declarations support a conclusion of copying by
others of the subject matter of the appealed claims.
We have carefully weighed the examiner’s evidence of
obviousness (i.e., the applied prior art references) against
appellants’ evidence of nonobviousness (the Jenkins I and
Jenkins II declarations). In so doing, we are aware that,
depending on the facts of each case, copying by others may or
may not be indicative of nonobviousness (see, for example,
Cable Elec. Prods. v. Genmark, Inc., 770 F.2d at 1028, 226
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Application 08/380,244
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USPQ at 889; Vandenberg v. Dairy Equip. Co., 740 F.2d 1560,
1567, 224 USPQ 195, 199 (Fed. Cir. 1984)). Given the facts of
this case, we conclude that, on balance, appellants’ evidence
of copying by other is sufficient in this instance to overcome
the prima facie case of obviousness made out by the examiner.
It follows that we will not sustain the standing
rejections of the appealed claims under 35 U.S.C. § 103.
Summary
The rejection of claim 13 under 35 U.S.C. § 112, second
paragraph, is affirmed.
The rejections of claims 1-14 under 35 U.S.C. § 103 are
reversed.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Affirmed-in-part
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Application 08/380,244
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CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
LJS:pgg
John F. McNulty
Paul & Paul
2900 Two Thousand Market Street
Philadelphia, PA 19103
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