Ex Parte Shiao et alDownload PDFPatent Trial and Appeal BoardMay 27, 201612864464 (P.T.A.B. May. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/864,464 27569 7590 PAUL AND PAUL FILING DATE 08/11/2010 06/01/2016 1717 Arch Street Three Logan Square SUITE 3740 PHILADELPHIA, PA 19103 FIRST NAMED INVENTOR Ming Liang Shiao 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2010-081 4606 EXAMINER REDDY, KARUNA P ART UNIT PAPER NUMBER 1764 NOTIFICATION DATE DELIVERY MODE 06/01/2016 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@PAULANDPAUL.COM claire@paulandpaul.com fpanna@paulandpaul.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MING LIANG SHIAO, VAN NHAN NGUYEN, EMMANUEL GARRE, and SEAN ZHOU Appeal2014-000976 Application 12/864,464 Technology Center 1700 Before CHUNG K. PAK, CATHERINE Q. TIMM, and JEFFREY T. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF CASE Appellants timely request1 reconsideration of our Decision2 affirming the 35 U.S.C. § 103(a) rejections of claims 1-18 and 26. 1 Request for Rehearing filed May 2, 2016 ("Request"). 2 Decision on Appeal mailed March 2, 2016 (cited henceforth as "Op."). Appeal2014-000976 Application 12/864,464 Appellants repeat the arguments that were presented on pages 9-15 of the Appeal Brief. (Request 2-3). Appellants further argue: The Board and the Examiner have used the fact that Vanpoulle employs an organic biocide to rebut the Appellants' argument that the organic colorant of Shiao is incompatible with the photocatalytic material of Vanpoulle. However, in doing so, the Board and the Examiner have ignored the facts that the organic biocide of Vanpoulle is provided in a layer below the exterior layer that contains the photocatalytic material, that the organic biocide of Vanpoulle is protected by a blocking layer, and that the exposure of the organic biocide of Vanpoulle to the photocatalytic material is relatively brief and transitory, which would not be applicable to the claimed organic colorant. (Request 3). Appellants' arguments were considered in the Decision. (Op. 4). As further set forth by the Examiner (Ans. 11-12), the use of pigments comprising organic components in conditions where photocatalytic occurs was known at the time of the invention. See US 6,037,289 (Chopin), which is incorporated by reference in V anpoulle according to the Examiner at page 11 of the Answer. 3 The Examiner determined Chopin (which is part of Vanpoulle) teaches oxidation (photocatalytic effect) of organic products occur at appropriate wavelength and not all known organic materials are degraded. (Ans. 11 ). Appellants have not directed us to evidence to refute this finding. On this record, Appellants have not established that the 3 Ultradent Prods., Inc. v. Life-Like Cosmetics, Inc., 127 F.3d 1065, 1067-69 (Fed. Cir. 1997)(In considering the teachings of a prior art reference, one must take into account the reference's incorporation by reference of another patent.); see also Appellants' Request 2. 2 Appeal2014-000976 Application 12/864,464 conditions presented in Vanpoulle4 are incompatible with the composite pigment of Shiao. 5 From the teachings of the applied prior art, a person of ordinary skill in the art would have reasonably expected that the combination as proposed by the Examiner would have been suitable for forming colored roofing granules. (Op. 4). CONCLUSION Based on the foregoing, Appellants' Request is granted to the extent that we have reconsidered our Decision, but is denied with respect to making changes to the final disposition of the rejections therein. This Decision on the Request for Rehearing incorporates the Examiner's Answer mailed August 23, 2013 and our Decision mailed March 2, 2016, and is final for the purposes of judicial review. See 37 C.F.R. § 41.52(a)(l). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). ORDER DENIED 4 Vanpoulle et al. US 2008/0026183 A 1, published Jan. 31, 2008 ("Vanpoulle"). 5 Shiao et al., US 2005/0072114 Al, published Apr. 7, 2005 ("Shiao"). 3 Copy with citationCopy as parenthetical citation