10921737 (B.P.A.I. Aug. 30, 2010)

Ex Parte Seth et al

Board of Patent Appeals and InterferencesAug 30, 2010

10921737 (B.P.A.I. Aug. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JYOTI SETH, JAY KELLETT, M.S. CHETAN and NEAL S. BERKE ____________ Appeal 2010-000741 Application 10/921,737 Technology Center 1700 ____________ Before CHARLES F. WARREN, PETER F. KRATZ, and JEFFREY T. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL1 Appellants appeal under 35 U.S.C. § 134 from the Examiner's final rejection of claims 47-54, 56 and 57. We have jurisdiction under 35 U.S.C. § 6(b). 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-000741 Application 10/921,737 2 STATEMENT OF THE CASE The appealed invention is directed to shaped waterproofing membranes having three-dimensional contours that are useful for the reverse tanking waterproofing of detail areas such as those presented by tiebacks, pipes, pile caps, and other irregularities that occur on concrete formworks and other civil construction or building surfaces. (Spec. 4, ll. 12-23). Claim 47 is representative of the subject matter on appeal and is set forth below: 47. A pre-formed, shaped waterproofing membrane comprising a carrier support sheet having the first and second opposed major faces and, disposed over said first major face, a pressure-sensitive waterproofing adhesive layer operative to bond with post cast concrete, said shaped membrane having a hollow three-dimensional contour surrounded by a flat collar portion, wherein said three- dimensional contour extends outwardly from said first major face and is of sufficient size to cover a surface irregularity in a building or civil construction surface, and wherein said three-dimensional contour is dome-shaped, cylinder-shaped, cone-shaped, pyramid-shaped or box- shaped. THE REJECTION Claims 47-54, 56 and 57 are rejected under 35 U.S.C. § 103(a) as unpatentable over Wiercinski, US patent 5,687,517, issued November 18, 1997, Frenkel, US patent 5,226,372, issued July 13, 1993, and Francis, US patent 4,518,643, issued May 21, 1985. OPINION The dispositive issue for the prior art rejection on appeal is the following: Appeal 2010-000741 Application 10/921,737 3 Did the Examiner err in determining that the combination of Wiercinski, Frenkel, and Francis describe or suggest a waterproofing membrane comprising a carrier support sheet having the first and second opposed major faces and, dispose over said first major face, a pressure- sensitive waterproofing adhesive layer operative to bond with post cast concrete required by independent claim 47? We answer this question in the affirmative and we reverse the stated rejections. During examination, the Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “[T]he analysis that ‘should be made explicit’ refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis.” Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). In order to establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). The Examiner found that Wiercinski discloses: Appeal 2010-000741 Application 10/921,737 4 a pre-formed, shaped waterproofing membrane (roofing underlayment, title) comprising a carrier support sheet (col. 2, line 40) having first and second opposed major faces (figure 2) and, disposed over the first major face, a pressure-sensitive waterproofing adhesive layer (col. 3, lines 44-45) which is deemed to be operative to bond with post cast concrete, since the membrane is deployed on a roof. (Ans. 3). The Examiner relied upon Frenkel and Francis for describing shaped membranes with a hollow three-dimensional contour. (Ans. 4). The Examiner concluded that it would have been obvious to one of ordinary skill in the art to combine the teachings Wiercinski, Frenkel, and Francis in order to increase the coefficient of friction of the non-skid surface because it would increase the skid/slip resistant properties of the surface. (Ans. 4). Appellants argue that the subject matter of the independent claim 47 is not obvious over any combination of Wiercinski, Frenkel, and Francis. Appellants argue, inter alia, that Wiercinski does not describe a shaped waterproofing membrane comprising a pressure-sensitive waterproofing adhesive layer located on the outer surface that is operative to bond with post cast concrete required by independent claim 47. (App. Br. 11). We agree with Appellants. It has not been disputed by the Examiner that Wiercinski discloses the pressure-sensitive waterproofing adhesive layer located on the inner surface. The Examiner is of the opinion that because Wiercinski discloses waterproofing membrane comprising a pressure- sensitive layer it “is deemed to be operative to bond with post cast concrete, since the membrane is deployed on a roof.” (Ans. 3). This explanation does not address the location of the adhesive layer and its’ ability to bond with post cast concrete. According to the Specification, page 2, lines 6-9, “in the Appeal 2010-000741 Application 10/921,737 5 world of ‘reverse tanking’ waterproofing, it can be said that the waterproofing is ‘pre-applied’ because it precedes the concrete structure; and, in turn, the concrete is said to be ‘post cast’ or ‘post applied’ because it follows installation of waterproofing.” Thus, the claimed invention requires the adhesive layer to bond with the post cast concrete. Where the adhesive layer of a membrane is deployed on a roof, as in Wiercinski, it is not located on the side (outer) of the membrane operative to bond with post cast concrete (App. Br. 11-13; Reply Br. 3). The Examiner did not rely on Frenkel, and Francis for disclosing the location of the adhesive on the membrane. DECISION The 35 U.S.C. §103 rejection of claims 47-54, 56 and 57 is reversed. REVERSED tc W. R. GRACE & CO.-CONN ATTENTION: PATENT DEPARTMENT 62 WHITTMORE AVENUE CAMBRIDGE, MA 02140