Ex Parte Kraus et al

Patent Trial and Appeal Board

Jan 5, 2017

12420267 (P.T.A.B. Jan. 5, 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.
12/420,267 04/08/2009 David P. Kraus JR. 05918-0526001 2171
26201 7590 01/09/2017
FISH & RICHARDSON P.C. (AU)
P.0 BOX 1022
Minneapolis, MN 55440-1022
EXAMINER
SADLON, JOSEPH
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
01/09/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID P. KRAUS JR., DERRICK SLOWIKOWSKI,
ERNESTO S. TACHAUER, WILLIAM H. SHEPARD,
HOWARD A. KINGSFORD, PETER C. GARRIGUS, and
MICHAEL D. MURRY
Appeal 2014-0069531
Application 12/420,2672
Technology Center 3600
Before MICHELLE R. OSINSKI, JAMES A. WORTH, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL3
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 3, 4, 7, 8 and 32—34. We have jurisdiction under
35 U.S.C. § 6(b). The Appellants’ representative appeared for oral hearing
1 We note related appeals 2014-007904 (Application 13/613,351) and 2016-
002344 (Application 13/613,601). Appeal Br. 1.
2 According to the Appellant, the real party in interest is Velcro Industries
B.V. Appeal Br. 1.
3 Throughout this opinion, we refer to the Appellant’s Appeal Brief
(“Appeal Br.,” filed Jan. 21, 2014) and Specification (“Spec.,” filed Apr. 8,
2009), and the Examiner’s Answer (“Ans.,” mailed Apr. 3, 2014) and Final
Office Action (“Final Act.,” mailed Aug. 16, 2013).
Appeal 2014-006953
Application 12/420,267
in this appeal on November 14, 2016 (“Hearing”).4
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
The Appellants’ invention “relates to securing exterior building
construction materials, such as roof membranes and siding that are exposed
to environmental forces such as wind and rain.” Spec. 1,11. 7—8.
Claim 1 is the only independent claim, is exemplary of the subject
matter on appeal, and is reproduced below (bracketing added for reference):
1. A construction underlayment comprising
[(a)] a rigid foam board having two broadest sides
defining a thickness there between; and
[(b)] a reinforcing facing comprising
[(c)] a flexible resin membrane bonded
across one of the broadest board sides and an array
of touch fastener elements extending from the
membrane and exposed for engagement, the touch
fastener elements having individual resin stems
extending integrally from a surface of the
membrane and molded heads defining overhangs
for engaging fibrous loops; and
[(d)] a fibrous tie layer between the
membrane and the foam board.
Appeal Br. 15 (Claims App.).
4 Throughout this opinion, we refer to the transcript of the Hearing (“Tr.”).
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REJECTIONS
Claims 1, 3, 4, 8, and 32—34 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Akins (US 2006/0123727 Al, pub. June 15,
2006) and Venable (US 4,996,812, iss. Mar. 5, 1991). Final Act. 3.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Akins, Venable, and Kennedy (US 5,518,795, iss. May
21, 1996). Id. at 5.
FINDINGS OF FACT
The findings of fact in the Analysis section below are supported at
least by a preponderance of the evidence.5
ANALYSIS
Claims 1, 3, 4, and 33
The Appellants contend that the rejection of independent claim 1 is in
error because “one of ordinary skill in the art would not have been led to the
claimed invention, starting from Akins, by a reasonable consideration of the
teachings of Venable.” Appeal Br. 6; see also Tr. 28,1. 22—29,1. 4.
Specifically, the Appellants do not contest the Examiner’s findings
regarding the prior arts’ teachings.6 See Tr. 28,1. 1—29,1. 4. Rather the
5 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
6 Although the Appellants argued in the Appeal Brief at page 6 that the
Examiner has not made a sufficient showing of inherency for the resin stems
extending integrally from the surface of the membrane, they do not contest
or further argue the Examiner’s interpretation of Akins as disclosing the
limitation as provided in the Examiner’s Answer at pages 3—4.
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Application 12/420,267
Appellants argue that it is not clear to one of ordinary skill in the art of
membrane roofs to insert the fleece from Venable into Akins’ system
because “the resulting structure would not have been considered technically
sound” and “one of ordinary skill would see no reason to adopt Venable’s
fleece other than for improving an adhesive connection.” Appeal Br. 8—9;
see also Tr. 29,11. 14—20. After careful review and consideration of the
arguments presented in the Appeal Brief and at the Hearing, we are not
persuaded of Appellants’ contention for at least the reasons discussed below.
The Examiner finds that Akins discloses the construction
underlayment of claim 1 comprising a rigid board (backing 36) having two
broadest sides defining a thickness, as partially recited by limitation (a), and
a reinforcing facing comprising a flexible resin membrane (shingle 14), as
recited by limitations (b) and (c). See Final Act. 3. The Examiner finds
Akins does not teach the board being foam, as partially recited by limitation
(b) and the facing comprising a fibrous tie, as recited by limitation (d). Id.
The Examiner cites to Venable to cure these deficiencies, finding it would
have been obvious to one of ordinary skill in the art to modify Akins with
Venable “because placing a rigid insulation foam on a rigid substrate is
known in the roofing art as taught by Venable” and “to better insulate the
roof.” Id. at 3^4.
Akins discloses “a roofing system having shingles or other roof
coverings attached to the roof without nails.” Akins 12. The shingles have
“a lateral strip of hook and loop fastening material on the lateral edge of
each shingle” whereby “[t]he roof attachment layer of the first shingle
mates with the lateral strip of hook and loop fastening material of the second
shingle.” Id. 110; see also id. 126.
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Venable discloses a composite roof structure which includes a layer of
adhesive material and a flexible membrane that includes a sheet with a
fleece-like matting secured to the underside. Venable, Abstract. The use of
the matting improves adhesion and allows for a vapor venting space between
the adhesive and membrane, thereby reducing blistering. Id. at col. 1,11. 54—
60, col. 5,11. 9-15.
We find unpersuasive the Appellants’ argument that one of ordinary
skill in the art would not have modified Akins by “(a) placing] Venable’s
‘foam board’ 14 on Akins’ backing 36 and (b) insert[ing] Venable’s fleece-
like layer 22, with the motivation of a desire to provide more insulation.”
Appeal Br. 8. The Appellants’ statement that “the resulting structure would
not have been considered technically sound” (id.) is attorney argument with
which we disagree. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Rather, we agree with the Examiner’s findings based on the use of Venable’s
layer 22 in the prior art.
We also find unpersuasive the Appellants’ argument that one of
ordinary skill in the art would not take the fleece of Venable “by itself with
or without the membrane” and “insert it into Akins’ roof.” Tr. 29,11. 14—20;
see also Appeal Br. 8—9. The Examiner’s rejection is not based upon a
bodily incorporation of Venable’s structure into Akins’ system. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner modifies Akins’
system to have a fleece layer, i.e., a fibrous tie layer, between the membrane
and foam board. The Appellants do not assert or provide evidence that the
proposed modification would have been beyond the capabilities of one of
ordinary skill in the art. Absent such an assertion, we “take account of the
inferences and creative steps that a person of ordinary skill in the art would
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employ.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Furthermore, although claim 1 requires the facing to have a membrane and
tie layer, claim 1 does not prohibit the facing and membrane from being
separate.
The Appellants’ argument that “one of ordinary skill would see no
reason to adopt Venable’s fleece other than for improving an adhesive
connection” (Appeal Br. 9) is not supported by adequate evidence. As noted
above, Venable discloses that another improvement would be to reduce
blistering. The Appellants do not provide adequate evidence why one of
ordinary skill in the art would not want “to better insulate the roof’ as
reasoned by the Examiner. Final Act. 4
The Appellants argue that modifying Akins with Venable’s fleece
would “further complicate[] the structure by the unnecessary addition of a
layer of fleece ... for [the] purpose of adding insulation, ignoring that roofs
such as that of Akins are commonly insulated on the inside.” Appeal Br. 9.
But the Appellants do not provide evidence to support this statement. Akins
is silent as to whether and where insulation would be added or installed.
To the extent the Appellants argue that Akins is not analogous art (see
Appeal Br. 8 (“One of ordinary skill in this art would not have modified
Akins’ roofing system from consideration of Venable’s membrane roof
teachings any more than he or she would have made such modifications to a
typical nailed-shingle roof.”), Tr. 23,11. 20-23, 25,11. 18—21), the argument
is unpersuasive.
Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is
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reasonably pertinent to the particular problem with which the
inventor is involved.
In re Bigio, 381F.3d 1320, 1325 (Fed. Cir. 2004). The Appellants’ assert
that the field of endeavor is membrane roofs and that Akins’ roof is not a
membrane roof. Tr. 14,1. 17—15,1. 11, 25,11. 19—21. However, the
Specification discusses both shingled and membrane roofs (Spec. 1,11. 10-
14; see also id. at 2,11. 15—20 (“New roofing constructions and methods are
sought to provide cost-effective installation and satisfactory uplift load
resistance [and] [similarly, ... to retain other exterior construction
materials, such as shingles and siding, to buildings or other structures”). As
such, the Specification does not limit the field of endeavor for the
underlayment of claim 1 to only membrane roofs. Therefore, we find the
field of endeavor to be roofing structures. Akins is directed to a roofing
system with a foundation layer, and is thus analogous art.
We also find unpersuasive the Appellants’ argument that the
Examiner ignores the “synergistic and beneficial effect. . . embodied in the
combination of the features recited in claim 1” in considering the features
independently. Appeal Br. 10; see also Tr. 24,11. 21—24. We note that no
such “synergistic and beneficial effect” is recited in the claims. To the
extent the Appellants argue that the Examiner uses hindsight (see Appeal Br
10), the Appellants have not persuasively shown why the Examiner’s
articulated reason for combining the art, i.e., to provide better insulation, is
ineffective to support the conclusion of obviousness and is gleaned only
from the Appellants’ disclosure. See In re McLaughlin, 433 F.2d 1392,
1395 (CCPA1971).
Thus, for at least the reasons discussed above, we are not persuaded
that the Examiner erred in the rejection of claim 1 as unpatentable over
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Akins and Venable. Therefore, we sustain the rejection of claim 1 and
dependent claims 3, 4, and 33, which were not argued separately (see Appeal
Br. 10).
Claim 8
The Appellants contend the rejection of dependent claim 8 is in error
because “Venable’s ‘seam areas 24’ and ‘seaming material 26’ are the
functional equivalent to knit lines within a foam board and tie layer fibers
disposed across the knit lines.” Appeal Br. 10. Specifically, the Appellants
argue that “the term ‘knit lines’ is a term of art understood to mean the
structures formed as flows of foaming material meet before solidification,
such as during construction of a foam board.” Id.
The Specification provides that “the foam board defines foam knit
lines extending along a length of the board between adjacent foam portions,
and the tie layer includes fibers disposed across the knit lines.” Spec. 3,11.
20—22. The Specification further provides that vertical knit lines that form
between flows of resin “can extend through the thickness of the foam and
form regions of reduced board strength.” Id. at 22,11. 13—16. Thus, the
Specification provides that knit lines can be defined by the foam board or
between flows of resin. As such, the Specification does not provide a
specific definition of “knit lines” as “structures formed as flows of foaming
material meet before solidification, such as during construction of a foam
board.” Furthermore, the Appellants do not provide adequate evidence to
support the assertion that ‘knit lines’ is a term of art so defined.
The Appellants’ argument that “providing a foam board reinforced
across an internal knit line is not the equivalent to putting seaming material
between membrane strips” (Appeal Br. 11), is not persuasive at least because
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it is not commensurate with the scope of the claim. Claim 8 does not require
an “internal knit line;” rather, claim 8 recites that “the foam board defines
foam knit lines extending along a length of the board between adjacent foam
portions.” Venable discloses seam areas with seaming material of rubber
tape and sealed with lip sealant (caulk) between strips of membrane.
Venable, col. 3,1. 37—col. 4,1. 14. We agree with the Examiner’s finding
that these seam areas meet the “knit lines” as recited in the claims and as
broadly and reasonable construed in light of the Specification. See In re Am.
Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir2004).
Thus, for at least the reasons discussed above, we are not persuaded
that the Examiner erred in the rejection of claim 8 as unpatentable over
Akins and Venable, and we sustain the rejection of claim 8.
Claims 32 and 34
The Appellants contend the rejection of dependent claims 32 and 34 is
in error because the prior art does not disclose that the tie layer has fibers
partially embedded in the flexible resin membrane, as recited by claim 32,
and does not disclose that the tie layer has fibers partially embedded in the
rigid foam board, as recited by claim 34. Appeal Br. 11.
The Examiner finds that Venable discloses that the fibers are partially
embedded in the flexible resin membrane and the rigid foam board (Final
Act. 5 (citing Venable, Fig. 3)) in that “the proposed modification of Akins
would require partially embedding Venable’s fleece in the underside of
Akins’ backing 36, which fleece would partially embed in the foam of
Venable when the foundation layer 12 and backing 36 of Akins are adhered
to the foam of Venable” and “the adhesive 40 is coated onto the backing 36
before the foundation layer 12 and backing 36 are secured to the roof’ (Ans.
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11). The Examiner further finds the modification would “receive^ the
benefit of increased insulation.” Id.
Venable discloses that the membrane, which includes the fleece layer,
is “gently pressed into the adhesive layer.” Venable, col. 3,11. 20—27. Akins
discloses that the backing 36, which is made from a polymer such as rubber,
may be attached to the bottom surface of foundation layer 12 whereby the
adhesive is coated onto the backing 36 before the foundation layer and
backing are secured to the roof. Akins 125.
The Examiner’s finding that Venable’s fleece would be partially
embedded into the adhesive of Akins’ backing is not adequately supported.
Akins discloses that the adhesive secures the backing and foundation to the
roof. Akins 125. After the foundation is set onto the roof, the shingles are
laid into the foundation with the hook and loop fastener elements. Id. ]f 26.
The claims require that the tie layer, i.e., fleece, is between the membrane
with fastener elements and the foam board, and partially embedded into
each. It is not clear, and the Examiner does not explain, how Venable’s
fleece layer would be “pressed into” the adhesive that is used to secure the
backing and foundation to the roof when the fleece layer is between the
foundation and the fastener membrane, i.e., on the opposite side of the
backing and roof. In other words, it is not apparent that the adhesive is
between the fleece and the foam board and between the fleece and the
fastener membrane, such that the fibers of the fleece are partially embedded
into the board and membrane.
Thus, we are persuaded that the Examiner erred in the rejection of
claims 32 and 34 as unpatentable over Akins and Venable, and we do not
sustain the rejection of claims 32 and 34.
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Claim 7
The Appellants contend the rejection of dependent claim 7 is in error
because the prior art does not disclose “that the tie layer includes a
reinforcing scrim having fibers at least partially embedded in resin forming
the membrane and formed of a material selected to inhibit chemical bonding
between the scrim fibers and the membrane resin,” as required by the claim.
Appeal Br. 12.
The Examiner finds that Kennedy discloses the tie layer including a
reinforcing scrim with fibers at least partially embedded in the resin of the
membrane. Final Act. 6 (citing Kennedy, Fig. 6). The Examiner also finds:
It would have been obvious to one having ordinary skill in
the art at the time the invention was made to select the scrim to
inhibit chemical bonding between the scrim fibers and the
membrane resin, 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.
Id. (citing In re Leshin, 277 F.2d 197 (CCPA I960)). In response to the
Appellants’ argument, the Examiner finds that Kennedy’s scrim “would
obviously be applied to each interface where an adhesion between elements
was desired to be reinforced ... for the purpose of strengthening the
connections to prevent uplift of the shingles and of the board.” Ans. 12.
We find persuasive the Appellants’ argument that “the person of
ordinary skill reviewing these three references, without the benefit of
Appellants’ disclosure as a roadmap, would not have been led to the
invention as now claimed.” Appeal Br. 13. Kennedy discloses the scrim is
added to the nip to create a stronger plastic strip fastener tape. See Kennedy,
col. 3,11. 56—64, col. 6,11. 19—29. However, it is not clear to us, and the
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Examiner has not shown, that Kennedy’s scrim is formed of a material
capable of inhibiting chemical bonding. Moreover, it is not clear to us, and
the Examiner has not shown, the pertinence of the Kennedy reference as a
source of strength for preventing uplift in a roof, as articulated by the
Examiner. See Ans. 12.
Thus, we are persuaded that the Examiner erred in the rejection of
claim 7 as unpatentable over Akins, Venable, and Kennedy, and we do not
sustain the rejection of claim 7.
DECISION
The Examiner’s rejection of claims 1, 3, 4, 8, and 33 under 35 U.S.C.
§ 103(a) is AFFIRMED.
The Examiner’s rejections of claims 7, 32, and 34 under 35 U.S.C.
§ 103(a) are REVERSED.
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-IN-PART
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