Ex Parte Kalkanoglu et al

Board of Patent Appeals and Interferences

Mar 27, 2012

11426056 (B.P.A.I. Mar. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HUSNU M. KALKANOGLU, KERMIT E. STAHL, and JOHN K.
DONALDSON
____________________

Appeal 2010-003862
Application 11/426,056
Technology Center 3600
____________________

Before JENNIFER D. BAHR, EDWARD A. BROWN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-003862
Application 11/426,056

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STATEMENT OF THE CASE
Husnu M. Kalkanoglu et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-7 and 9-13 under
35 U.S.C. § 103(a) as unpatentable over Frankoski et al. (US 5,822,943,
issued Oct. 20, 1998). (App. Br. 3). Claim 8 has been canceled. (Id.). We
have jurisdiction over this appeal under 35 U.S.C. § 6(b). An oral hearing
was held on March 20, 2012.
We REVERSE.
THE INVENTION
Independent claim 1, reproduced below, is illustrative of the appealed
subject matter.
1. A multi-layer laminated shingle
comprising:
(a) an anterior shingle layer of a
first width between upper and lower edges
and having front and rear surfaces with at
least one cutout extending into the width of
the anterior shingle layer an amount
terminating in an upper cutout edge;
(b) a posterior shingle layer of a
second width, less than the first width, and
having front and rear surfaces;
(c) with the anterior shingle layer
having upper and lower areas on the rear
surface thereof;
(d) with the front surface of the
posterior shingle layer being disposed
against the lower area of the rear surface of
the anterior shingle layer and comprising
with the anterior shingle layer a double layer
area, leaving the upper area of the rear
surface of the anterior shingle layer not
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having the posterior shingle layer disposed
thereagainst;
(e) an adhesive having heat
resistance to a predetermined temperature
level of at least 140° F. disposed between
said shingle layers, securing said layers
together;
(f) a visibly marked fastening zone
on the front surface of the anterior shingle
layer, with said fastening zone being defined
by upper and lower demarcation limits;
(g) the upper demarcation limit
being opposite the upper area of the rear
surface of the anterior shingle layer;
(h) the lower demarcation limit
being opposite the lower area of the rear
surface of the anterior shingle layer, and
above the upper cutout edge of the anterior
shingle layer;
(i) whereby the fastening zone on
the anterior shingle layer has a portion of
smaller width through a common bond area
of both anterior and posterior shingle layers
and has a portion of greater width, through
only the anterior shingle layer; and
(j) whereby when the shingle is
installed on a sloped roof and fastened
through only the single thickness upper area
of the anterior shingle layer in a second
fastening zone, the thus fastened shingle and
the adhesive together comprise means
whereby the posterior shingle layer will
remain in place, adhered behind the anterior
shingle layer by the adhesive.

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ANALYSIS
Claim 1 recites "the upper area of the rear surface of the anterior
shingle layer not having the posterior shingle layer disposed thereagainst."
(Emphasis added). Claim 1 further recites "(f) a visibly marked fastening
zone on the front surface of the anterior shingle layer, with said fastening
zone being defined by upper and lower demarcation limits," "(g) the upper
demarcation limit being opposite the upper area of the rear surface of the
anterior shingle layer," "(i) whereby the fastening zone on the anterior
shingle layer has . . . a portion of greater width, through only the anterior
shingle layer," and "(j) whereby, when the shingle is . . . fastened through
only the single thickness upper area of the anterior shingle layer in a second
fastening zone. . . ." (Emphasis added).
The Examiner found Frankoski discloses a shingle comprising an
anterior layer (upper layer 5), a posterior layer (lower layer 7) disposed
against a lower area of the rear surface of the anterior layer, and an adhesive
(sealant 9) disposed between the anterior and posterior layers securing them
together to provide a lower double layer area and an "upper single layer
area." (Ans. 3; see also Frankoski, col. 4, ll. 22-25; Fig. 1). The Examiner
also found visibly marked areas (sealant line 15 and nail zone 20) are
provided on the front surface of the anterior layer, and the upper and lower
edges of sealant zone 15 and the upper and lower edges of nail zone 20 set
forth demarcation limits which define several zones capable of receiving a
fastener. (Ans. 3-4; see redacted portion of Figure 3 with annotations
indicating "various visible demarcation lines"). The Examiner determined
that Frankoski provides at least one fastening zone through only a single
thickness upper area of the anterior shingle (Id. at 4), and "provides all of the
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claimed visible demarcation lines and zones and is capable of being nailed in
any of the zones as well as providing specific zones having desired widths"
(Id. at 5, see also Id. at 6-8).
The Examiner also determined that the claimed adhesives would have
been obvious design choices for Frankoski's adhesive for their inherent
material properties. (Ans. 5).
Appellants contend that Frankoski discloses only the nailing zone 20
where two layers of shingle material exist, and does not disclose a nailing
zone through only the anterior shingle layer. (App. Br. 9). Appellants
further contend that the TAMKO instructions (Exhibit M), which state "[d]o
not nail into the sealant," provide evidence that the claimed invention is not
obvious over Frankoski. (Ans. 14). Appellants also contend that the
Declaration of Stephen A. Koch Under 37 C.F.R. § 1.132 (Exhibit N)
supports that one of ordinary skill in the art would not consider the sealant
zone of Frankoski's shingle to be an appropriate location for applying
fasteners. (Id. at 15).
Appellants' contentions are persuasive. Frankoski discloses that "[a]s
shown in the drawings, the lower layer 7 is 'full-size' in that it extends the
entire width of the upper layer 5." (Reply Br. 2; see Frankoski, col. 4, ll. 53-
55) (emphasis added). Appellants contend that no matter where one drives a
nail or other fastener through a shingle in accordance with Figure 3 of
Frankoski, the fastener would be driven through a double thickness layer.
(Id.). We agree. For the shingle shown in Figure 3 of Frankoski, a nail
driven through the sealant line 15 on upper layer 5 would necessarily also go
through lower layer 7 to fasten the shingle to a roof. Even assuming that
sealant line 15 is a portion of a fastening zone on upper layer 5, the sealant
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line 15 is not "through only the anterior shingle layer," as claimed. The
Examiner did not establish by a preponderance of the evidence that
Frankoski's shingle is capable of meeting the claim limitation "when the
shingle is installed on a sloped roof and fastened through only the single
thickness upper area of the anterior shingle layer in the second optional
fastening zone." (Emphasis added).
Frankoski also discloses that "both 'under-sized' and 'over-sized'
backing pieces also may be used, depending on the circumstances associated
with the particular application involved." (Col. 4, ll. 55-58). Appellants
acknowledge that it is possible to make Frankoski's posterior layer shorter
than the anterior layer. (Reply Br. 3). The Examiner did not, however,
identify any disclosure in Frankoski pertaining to a shingle that includes a
lower layer having a smaller width than that of the upper layer, and also
meets limitations "(f)" and "(i)" recited in claim 1. Thus, the Examiner's
findings with respect to the "fastening zone" on the upper layer of
Frankoski's shingle are not supported by a preponderance of the evidence.
The Examiner also has not articulated adequate reasoning as to why one
skilled in the art would have modified Frankoski's shingle to result in a
shingle comprising the combination of features recited in claim 1. Hence,
we do not sustain the rejection of claim 1, and claims 4-7 and 9-13 which
depend from claim 1,1 as unpatentable over Frankoski.
Independent claim 2 is directed to a laminated shingle similar to claim
1 and recites, inter alia, "(f) optional first and second fastening zones on the
front surface of the anterior shingle layer and defined by at least three

1 Each of claims 4-7 and 9-13 is a multiple-dependent claim which depends
from any one of claims 1-3.
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demarcation limits," "(h) the second optional fastening zone of greater width
than the first optional fastening zone, . . . the second optional fastening zone
being defined by a demarcation limit opposite the single thickness upper
area of the rear surface of the anterior shingle layer and by one of the
demarcation limits of clause (g) above," and "(j) whereby, when the shingle
is installed on a sloped roof and fastened through only the single thickness
upper area of the anterior shingle layer in the second optional fastening
zone. . . ." (Emphasis added). As to claim 2, the Examiner's findings and
reasoning (Ans. 3-5, 6-8) and Appellants' arguments for patentability (App.
Br. 10-11, 13-17; Reply Br. 2-4) are similar to those discussed above for
claim 1. Hence, we also do not sustain the rejection of claim 2 and
dependent claims 4-7 and 9-13, as unpatentable over Frankoski.
Independent claim 3 is directed to a laminated shingle also similar to
claim 1 and recites, inter alia, "(f) three demarcation limits on the front
surface of the anterior shingle layer, located thereon at progressively spaced-
apart first, second and third different distances from the lower edge to the
upper edge of the anterior shingle layer," "(ii) a second fastening zone
between the second and third said demarcation limits for fastening the
shingle to a roof by fasteners applied through it, said second nailing zone
having a majority of its area present in the upper area of the anterior shingle
layer above a common bond area of both anterior and posterior shingle
layers," "(g) whereby, when the shingle is installed on a sloped roof and
fastened through only the upper area of the anterior shingle layer not having
the posterior shingle layer disposed thereagainst. . . ." (Emphasis added).
For claim 3, the Examiner's findings and reasoning (Ans. 3-5, 6-8) and
Appellants' arguments for patentability (App. Br. 11, 13-17; Reply Br. 2-4)
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are similar to those discussed above for claim 1. Hence, we also do not
sustain the rejection of claim 3 and dependent claims 4-7 and 9-13, as
unpatentable over Frankoski.
DECISION
The Examiner's decision rejecting claims 1-7 and 9-13 is
REVERSED.
REVERSED

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