Ex Parte Kim et al

Board of Patent Appeals and Interferences

Apr 27, 2012

11390590 (B.P.A.I. Apr. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOONG YOUN KIM, THOMAS KEVIN MACKINNON,
RICHARD ALLAN SNYDER, HUSNU M. KALKANOGLU,
and GREGORY F. JACOBS
____________

Appeal 2011-007890
Application 11/390,590
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007890
Application 11/390,590

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 25-34 and 36. We have jurisdiction under 35 U.S.C. § 6.1
Appellants’ claimed invention relates to a composite intermediate
building product for separation into a plurality of roofing shingles for
application to a roof. (See Figs. 8-9.) Claim 25 is illustrative:
25. A composite intermediate building product for
separation into a plurality of roofing shingles for application to
a roof, comprising at least two substantially planar intermediate
shingle formations, with the intermediate shingle formations
each being in spaced-apart relation, opposed to and generally
parallel to another intermediate shingle formation, with the
intermediate shingle formations each being connected by
connection zones on a plurality of intermediate shingle
formation sides to at least one other intermediate shingle
formation, with each connection zone comprising two layers of
thermoplastic building product material and with each
substantially planar intermediate shingle formation having:
(a) two layers of thermoplastic substantially planar
building product material; with one said layer being a core
material;
(b) with the other said layer being a weatherable capstock
material;
(c) with one of the core material and capstock material
being disposed overlying the other of the core material and
capstock material;
(d) with the capstock material comprising a weatherable
material that is adapted to be weather-exposed when installed
on a building structure;

1 An oral hearing was held on April 11, 2012
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Application 11/390,590

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(e) with the core material being adapted to be weather-
protected by the capstock material when installed on a building
structure; and
(f) with the layer of core material being attached to the
layer of capstock material.

Appellants request review of the following rejections from the
Examiner’s Final Office action (App. Br. 5-6):
Claims 32-34 stand rejected under 35 U.S.C. § 112, second paragraph
as indefinite for failing to particularly point out and distinctly claim the
subject matter which Applicants regards as the invention.2
Claims 25-32 and 36 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Kirschbraun (U.S. 2,168,218, issued Aug. 01, 1939).
Claim 32 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Kirschbraun and Manner (U.S. 5,295,339, issued Mar. 22,
1994).
Claims 33 and 34 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Kirschbraun, Manner, and Malmquist (U.S.
5,232,530, issued Aug. 03, 1993).

OPINION

Rejection under 35 U.S.C. § 112, second paragraph
The dispositive issue on this rejection is: Did the Examiner err in
determining that it is unclear whether claim 32 is referring to the

2 The Examiner withdrew the rejection of claim 25-31 and 36 under 35
U.S.C. § 112, second paragraph as indefinite. (Ans. 4-5).
Appeal 2011-007890
Application 11/390,590

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“substantially planar intermediate shingle formation” of independent claim
25?
We answer this question in the affirmative and REVERSE.
Definiteness is analyzed “not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill in the
pertinent art.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
We do not find the Examiner’s reasons persuasive for the reasons
provided by Appellants in the Briefs. See e.g., In re Skovorecz, 580 F.3d
1262, 1268-69 (Fed. Cir.2009)(Lacking explicit antecedent basis does not
render a claim indefinite if one of ordinary skill in the art would understand
the claim when viewed in the context of the Specification.) We note that the
Examiner agrees the concept of the contested subject matter is
understandable from the written description of the present Specification.
(Ans. 11).
Accordingly, we reverse the Examiner’s rejection of claims 32-34 as
indefinite under 35 U.S.C. § 112, second paragraph.
Rejection under 35 U.S.C. § 102(b)
The dispositive issue for this rejection: Did the Examiner err in
finding that Kirschbraun describes a composite intermediate building
product for separation into a plurality of roofing shingles comprising at least
two roofing shingles in a formation wherein each shingle formation is
connected by connection zones on a plurality of sides to another
intermediate shingle formation as required by the subject matter of
independent claim 25?
We answer this question in the affirmative and we REVERSE.
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The Examiner bears the initial burden of establishing a prima facie
case of anticipation. In re King, 801 F.2d 1324, 1326-27 (Fed. Cir. 1986).
Anticipation under 35 U.S.C. § 102 requires that “‘each and every element
as set forth in the claim is found, either expressly or inherently described, in
a single prior art reference.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999) (internal citations omitted).
The Examiner found that Kirschbraun discloses the subject matter of
independent claim 25. Ans. 6. With respect to the dispositive issue, the
Examiner reasons that the polymerization of Maiden’s hydrophilic
monomers with the silicon containing component (oxygen permeable
component) would result in the claimed silicone hydrogel. Id. at 8.
We agree with Appellants that the shingle formations of Kirschbraun
do not anticipate or render obvious the claimed subject matter. The shingle
formations of Kirschbraun are aligned horizontally and lack “the
intermediate shingle formations each being connected by connection zones
on a plurality of intermediate shingle formation sides to at least one other
intermediate shingle formation” as required by claim 25. (See Figs. 8 and
9). We not agree with the Examiner’s interpretation (Ans. 6) that the
claimed connection zones are described by alternating pairs of
interconnected shingle elements disclosed by Kirschbraun. The Examiner
has not directed us to evidence that establishes Kirschbraun meets these
required claim limitations.
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing anticipation under 35 U.S.C.
§ 102(b). Accordingly, the rejection of claims 25-32 and 36 under 35 U.S.C.
§ 102(b) as anticipated by Kirschbraun is reversed.
Appeal 2011-007890
Application 11/390,590

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Rejections under 35 U.S.C. § 103(a)
We also reverse the rejections of claims 32, 33 and 34 under
35 U.S.C. § 103(a) as unpatentable over Kirschbraun in view of additional
prior art references. These additional prior art references (Manner, and
Malmquist) cited are used to address additional limitations of claims 32, 33
and 34. (Ans. 8-10). These additional references do not remedy the
identified difference in the shingle formation structure of Kirschbraun
discussed above and in the Appeal Brief. Therefore, we also cannot sustain
the Examiner’s rejection of dependent claims 32, 33 and 34 under 35 U.S.C.
§ 103(a). Accordingly, we reverse these rejections as well.
ORDER
The Examiner’s decision to reject claims 32-34 stand rejected under
35 U.S.C. § 112, second paragraph; claims 25-32 and 36 under 35 U.S.C. §
102(b); and claims 32, 33 and 34 under 35 U.S.C. § 103(a) are reversed.

REVERSED

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