Ex Parte Jenkins et al

Patent Trial and Appeal Board

Jan 26, 2018

12556980 (P.T.A.B. Jan. 26, 2018)

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.
12/556,980 09/10/2009 Robert L. Jenkins 2009-035 3581
27569 7590
PAUL AND PAUL
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
EXAMINER
AD AMOS, THEODORE V
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
01/30/2018 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):
INFO @PAUL ANDPAUL.COM
claire @paulandpaul.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT L. JENKINS, STEPHEN A. KOCH, and
HUSNU M. KALKANOGLU
Appeal 2016-001521
Application 12/556,9801 2
Technology Center 3600
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
ANTHONY KNIGHT, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert L. Jenkins et al. (“Appellants”) appeal under 35 U.S.C. §
134(a) from the Examiner’s decision in the Final Action (dated Nov. 4,
2014, hereinafter “Final Act.”) rejecting claims 1, 3, 5, 13—15, and 24—26
Appellants’ representative presented oral argument on January 23, 2018.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 According to Appellants’ Appeal Brief (filed June 4, 2015,
hereinafter “Appeal Br.”), CertainTeed Corporation is the real party in
interest. Appeal Br. 1.
2 Claims 2 and 27 are canceled and claims 4, 6—12, and 16—23 are
withdrawn. Final Act. 2.
Appeal 2016-001521
Application 12/556,980
SUMMARY OF DECISION
We AFFIRM.
INVENTION
Appellants’ invention relates to “a panel of building material for use
on an exterior covering for roofing or siding.” Spec. 1.
Claims 1 and 26 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A unitary building material generally planar panel of a
size that simulates in a single panel, a plurality of individual,
natural shake, slate or tile shingles having visible weather-
exposed tab portions in multiple, vertically adjacent shingle
horizontal courses, with multiple side-by-side individual
shingles in each course as integral components of the panel, for
use with a plurality of such panels as an exterior covering for
roofing or siding, for installation as a unit on a building
structure, comprised of:
(a) an upper asphalt based building material layer
having an outer side and an inner side; and
(b) a lower weight-saving molded synthetic
polymeric base layer of thermoplastic material selected from
the group consisting of:
(i) Polyethylene;
(ii) Polypropylene;
(iii) Polybutene;
(iv) Polymethylpentene;
(v) Polyacrylates;
(vi) Polyethyleneterephthalate;
(vii) Polybutyleneterephthalate;
(viii) Polyethylenenaphthalate;
(ix) Ethylene-Propylene-Diene Monomer
Copolymers; and
(x) copolymers and/or binary or ternary blends
of any of (i) through (ix) above,
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having an interior side and an exterior side and having its
exterior side secured to the inner side of the asphalt based
building material layer;
(c) the asphalt based building material being
comprised of a layer of mat impregnated with an
asphalt material and with an asphaltic adhesive on at least the
outer side thereof;
(d) the asphalt based building material presenting an
outer side that is comprised of weather-exposed simulated tab
portions of shingles when it is in the installed condition on a
building structure; which outer side includes a layer of granules
adhered to said asphaltic adhesive:
(i) the asphalt based building material having a horizontal
visible line of demarcation visually delineating the appearance
of a plurality of vertically adjacent generally horizontal courses
of individual shingles; and
(ii) wherein the outer side of the asphalt based building
material includes above and below the horizontal visible line of
demarcation laterally spaced-apart vertical lines of demarcation
of various dimensions, visually delineating the appearance of
slots between a plurality of individual shingles of various lateral
widths, laterally disposed within each said course of shingles,
simulating individual shingles, slates or tiles of random widths.
REJECTIONS
I. The Examiner rejected claims 1,3,5, 13, 14, and 24—26 under
35 U.S.C. § 103(a) as being unpatentable over MacKinnon et al. (US
2008/0236079 Al, published Oct. 2, 2008, hereinafter “MacKinnon”),
Freshwater et al. (US 6,530,189 B2, issued Mar. 11, 2003, hereinafter
“Freshwater”), and Hoofe, III (US 4,343,126, issued Aug. 10, 1982,
hereinafter “Hoofe”).
II. The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as being
unpatentable over MacKinnon, Freshwater, Hoofe, and Rodrigues et
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al. (US 2005/0193673 Al, published Sept. 8, 2005, hereinafter
Rodrigues”).
Appellants present additional evidence in the Declaration filed
under 37 C.F.R. § 1.132 by co-inventor, Robert L. Jenkins, on March
12, 2014 (hereinafter “Jenkins Declaration”).
ANALYSIS
Rejection I
Appellants have not presented arguments for the patentability of
claims 3, 5, 13, 14, and 24—26 apart from claim 1. See Appeal Br. 5—16.
Therefore, in accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1
as the representative claim to decide the appeal of the rejection of these
claims, with claims 3, 5, 13, 14, and 24—26 standing or falling with claim 1.
The Examiner finds that MacKinnon discloses, inter alia, a unitary
building material 10 including a building material layer 16 and a lower
weight-saving polymeric layer 15. Final Act. 3^4 (citing MacKinnon, paras.
24—26); see also MacKinnon, Fig. 1 A. However, the Examiner also finds
that MacKinnon fails to disclose an asphalt-based building material having
an asphalt layer, an asphaltic adhesive layer, and a layer of granules. Final
Act. 4. Nonetheless, the Examiner finds that Freshwater discloses a unitary
building material panel including a base, polymeric layer 20 and a building
material layer 10 that includes a fiberglass-based asphaltic material bound
by an asphaltic adhesive to polymeric layer 20, and, furthermore, includes a
layer of granules on a top surface of building material layer 10. Id. (citing
Freshwater, col. 4,11. 1—9); see also Freshwater, Fig. 1. The Examiner then
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concludes that it would have been obvious for a person of ordinary skill in
the art to bond an asphaltic impregnated mat and granular layer using an
asphaltic adhesive, as taught by Freshwater, to MacKinnon’s lower weight­
saving polymeric layer 15, and, hence, replace MacKinnon’s building
material layer 16,
in order to provide the panel with an appropriate aesthetic
appeal and also since it has been held to be within the general
skill of a worker in the art to select a known material on the
basis of its suitability for the intended use as a matter of
obvious design choice. In re Stevens, 101 USPQ 284 (CCPA
1954).
Final Act. 5.
Appellants argue that “[t]he Examiner’s proposed combination would
destroy the function of the shingle of MacKinnon and render it unfit for its
intended purpose of providing in a synthetic shingle the appearance of
shingles made of natural materials such as wood or slate.” Appeal Br. 11.
According to Appellants, MacKinnon’s shingle is the result of a molding
and abrasion process that generates “high zones and depressions needed to
simulate natural materials.” Id. (citing MacKinnon, paras. 8, 9, 27, 29,
Figs. 1, 1A). Appellants explain that “abrasions 29 . . . high zones 21, and .
. . depressions 22 are aimed at simulating ... the appearances of natural slate
or wood shingle materials by recreating the three dimensional geometry of
these natural materials that include irregularities caused by knots,
gouges, cracks, abrasions, and chipping.” Id. Specifically, Appellants note
that “the molding process [of MacKinnon] allows accurate reproduction of
. . . irregularities such as knots, gouges, cracks, abrasions, and chipping
found in natural materials like wood and slate.” Id. at 14.
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In contrast, however, Appellants assert that because Freshwater’s
shingle panel is “relatively stiff,” when bonded to MacKinnon’s polymeric
layer 15, as in the Examiner’s rejection, Freshwater’s asphaltic based layer
“could not follow the irregularities of the core layer 15 of MacKinnon.” Id.
at 12. Thus, Appellants contend that the Examiner’s modification “would
destroy the intended purpose and operation of MacKinnon, in that the
surface geometry of MacKinnon that is provided through the high zones and
depressions needed to simulate natural materials would necessarily become
obscured.” Id. at 12—13; see also Reply Brief 1—2 (filed Nov. 10, 2015,
hereinafter “Reply Br.”).
Appellants further argue that “[ajsphaltic materials coated with
granules cannot reproduce these types of three-dimensional features as can
be done by molding.” Appeal Br. 14 (citing to MacKinnon, para. 5).
Appellants note that although “asphaltic materials coated with granules can
at best simulate certain visual effects characteristic of natural materials . . .
they cannot provide the kind of ornamentation that can be provided in . . .
[MacKinnon’s] molded synthetic shingle.” Id. (citing to Corbin, US Patent
4,274,243, issued June 23, 1981). Appellants then point to the teachings of
Rodrigues to show the shortcomings of asphalt shingles and concludes that
although “shingles can at best mimic the color and thickness of wood or
slate shingles[,] but not the surface structure such as the knots, gouges,
cracks, abrasions, and chipping that are mimicked by the MacKinnon
shingle.” Id. at 14—15 (citing Rodrigues, paras. 2—7).
Appellants also contend that although MacKinnon uses abrasion to
obtain ornamentation effects, such abrasion when applied to the granular
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layer of MacKinnon’s shingle, as modified by Freshwater, “would expose
the asphaltic material below,” and, hence, “would destroy the function of the
shingle by causing the asphaltic material to blister when exposed to the sun.”
Id. at 15 (citing the Jenkins Declaration, para. 8). Appellants explain that
“abrading, scuffing, or indenting the granular top surface of an asphaltic
layer will remove the colored granules needed to impart colors mimicking
natural material and would expose the black asphaltic material below and
thus would not be expected to produce the same visual effect as natural
materials such as wood or slate.” Id. at 15—16; see also Reply Br. 3.
We do not agree with Appellants’ premise that Freshwater’s asphaltic
impregnated mat and granular layer teaches away from the Examiner’s
combination because it destroys the shingle of MacKinnon and renders it
unfit for its intended purpose of providing a shingle that simulates natural
materials. See Appeal Br. 11. Teaching away requires a reference to
actually criticize, discredit, or otherwise discourage the claimed solution.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not
teach away from claimed subject matter merely by disclosing a different
solution to a similar problem unless the prior art also criticizes, discredits, or
otherwise discourages the solution claimed). There is no teaching away
apparent to us in MacKinnon, nor have Appellants identified any such
teaching away.
Nonetheless, we appreciate Appellants’ position that MacKinnon’s
shingle, as modified by Freshwater, would not necessarily provide the same
level of simulating natural materials as that of MacKinnon. See Appeal
Br. 11—16. However, “[t]he fact that the motivating benefit comes at the
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expense of another benefit. . . should not nullity its use as a basis to modify
the disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”
Winner Int 7 Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000).
Here, as noted by Appellants, an asphalt-based shingle, as that of
MacKinnon, when modified by Freshwater, can simulate certain visual
characteristics of natural materials, via color of granules and shingle
thickness, albeit not as good as MacKinnon’s molded shingle. See Appeal
Br. 14—15 (citing Rodrigues, paras. 2—7). In other words, even though
MacKinnon’s shingle, as modified by Freshwater, may not “allow[] accurate
reproduction of. . . irregularities such as knots, gouges, cracks, abrasions,
and chipping found in natural materials” (see Appeal Br. 14), nonetheless,
using shingle color and thickness size, a certain degree of simulation of
natural materials is achievable. We, thus, agree with the Examiner that
MacKinnon’s shingle, as modified by Freshwater results in “a laminated
panel which is capable of simulating natural tile through size and
dimensions.” Examiner’s Answer 12 (dated Sept. 10, 2015, hereinafter
“Ans.”). As such, Appellants have not persuasively argued that replacing
MacKinnon’s building material layer 16 with Freshwater’s asphaltic
impregnated mat and granular layer would have discouraged a person of
ordinary skill in the art from making the combination to attain the additional
advantage of providing a low cost alternative to wood, slate and tile
shingles. See Rodrigues, paras. 1, 2.
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Moreover, we note that Appellants’ claim 1 does not require a specific
level or degree of simulating natural materials, and, thus, as long as
MacKinnon’s shingle, as modified by Freshwater, provides some level or
degree of simulation of natural materials, then the claim is met. It is well
established that limitations not appearing in the claims cannot be relied upon
for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Furthermore, Appellants’ assertion that laminating, rather than
molding (see Appeal Br. 14), MacKinnon polymeric layer 15 and
Freshwater’s asphaltic impregnated mat and granular layer would not result
in depressions 22 and high zones 21 because Freshwater’s panel is
“relatively stiff’ (see id. at 12) is unsupported attorney argument and cannot
take the place of evidence in the record. In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997). Moreover, as the Examiner correctly noted, MacKinnon
specifically discloses lamination as an alternative process to molding.
Ans. 13 (citing MacKinnon, para. 3).
With respect to Appellants’ concerns regarding the abrading and
scuffing of MacKinnon’s shingle, as modified by Freshwater (see Appeal
Br. 15—16; Reply Br. 3), we note that abrasion is not being claimed and as
stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998), “the name of the game is the claim.” As noted by
Appellants, an asphalt-based shingle, as that of MacKinnon, when modified
by Freshwater, can simulate certain visual characteristics of natural
materials, via color of granules and shingle thickness. See Appeal Br. 14—15
(citing Rodrigues, paras. 2—7). As such, the Examiner is correct in that
MacKinnon’s shingle, as modified by Freshwater, “is capable of not being
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abraded on its upper surface, yet still meets its intended purpose of forming
a roof covering panel which simulates natural tile.” Ans. 14; see also
Jenkins Declaration, para. 8. Moreover, like the Examiner, we note that
Appellants’ Specification describes providing “surface ornamentation #136
and #178 within the granular covered asphalt layer ... in order to make the
panel look more like natural tile.” Ans. 13; see also Spec. 12, 14.
Lastly, we agree with the Examiner that “Appellants do not argue the
modification of MacKinnon ... in view of Hoofe . . . with regards to
constructing the panel of MacKinnon . . . with horizontal and vertical visible
lines of demarcation to give the appearance of a plurality of horizontal
courses of shingles in a single panel in order to make roof construction
quicker and easier.” Ans. 14; see also Appeal Br. 13. Arguments
Appellants could have made but chose not to make in the Briefs are waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1 as unpatentable over MacKinnon,
Freshwater, and Hoofe. Claims 3, 5, 13, 14, and 24—26 fall with claim 1.
Rejection II
According to the Examiner, the combined teachings of MacKinnon,
Freshwater, and Hoofe do not disclose providing vertical slots in the asphalt
layer to view the polymeric, base layer, as called for by claim 15.3 See Final
3 Claim 15 depends from independent claim 1 and adds the limitation of “a
plurality of generally vertical slots, disposed generally parallel to each other
and wherein portions of the base layer are visible through said slots.”
Appeal Br. 22 (Claims App.)
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Act. 9. However, according to the Examiner, it would have been obvious for
a person of ordinary skill in the art to provide vertical slots as taught by
Rodrigues to MacKinnon’s shingle, as modified by Freshwater and Hoofe,
“in order to yield the predictable result of panels of the prior art invention
with an appropriate aesthetic appeal.” Id. at 10 (citing KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398 (2007)).
In addition to the arguments presented supra (see Appeal Br. 17—18),
which we have found to be unpersuasive, Appellants further argue that the
Examiner “has failed to provide reasoning with some rational underpinning
to support... [a] conclusion of obviousness.” Id. at 18. According to
Appellants, because MacKinnon’s core layer 15 “is formed of inexpensive
thermoplastic filled with an inexpensive filler,” the Examiner’s modification
“would expose the inexpensive filler particles that would diminish the
aesthetic appeal of the shingle.” Id. at 18—19.
Rodrigues discloses a laminated asphalt shingle including anterior
layer 11, having tabs 16 of a first color and vertical slots therebetween, and a
posterior layer 12 having tabs 18 of a second color. See Rodrigues, paras.
38, 40, 43, Figs. 1(a), 1(b). Rodrigues further discloses that when anterior
layer 11 is placed over posterior layer 12, tabs 18 of posterior layer 12 can
be viewed through the vertical slots of anterior layer 11 and, thus, create a
contrast in shade. See id., para. 43, Fig. 1; see also Final Act. 9-10.
Accordingly, Rodrigues would have prompted a person of ordinary
skill in the art to provide vertical slots, as taught by Rodrigues, in the asphalt
layer of MacKinnon, Freshwater, and Hoofe, in order to improve the
coloring scheme of the shingle. “[I]f a technique has been used to improve
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one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSR, 550
U.S. at 417. We, thus, agree with the Examiner that as
Rodrigues . . . disclose[s] a known technique used to improve
roof composite coverings in order to enhance the aesthetic
appeal of the roof, [i.e., the coloring scheme] . . . [that] it would
have been obvious to a person of ordinary skill in the art to
include such features within the invention of MacKinnon ... in
view of Freshwater . . . and Hoofe ... in order to further
enhance the aesthetic appeal of the modified panels of the prior
art invention.
Ans. 16; see also Final Act. 10. Although we appreciate Appellants’
concern in regards to MacKinnon’s core layer 15 being made of
“inexpensive thermoplastic filled with an inexpensive filler,” this does not
detract from the predictable improvement of obtaining a shingle laminate
with an improved color scheme. See Appeal Br. 18—19.
As such, we find that the Examiner articulated a reasoning with
rational underpinning to support the conclusion that the provision of vertical
slots, as taught by Rodrigues, to MacKinnon’s shingle, as modified by
Freshwater and Hoofe, would have been obvious.
Therefore, for the foregoing reasons, we also sustain the rejection of
claim 15 over the combined teachings of MacKinnon, Freshwater, Hoofe,
and Rodrigues.
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SUMMARY
The Examiner’s decision to reject claims 1,3,5,13—15, and 24—26 under
35 U.S.C. § 103(a) 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)(l)(iv).
AFFIRMED
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