Ex Parte Sleeman

Patent Trial and Appeal Board

May 28, 2013

11803638 (P.T.A.B. May. 28, 2013)

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.
11/803,638 05/15/2007 William R. Sleeman SLE002 P300 7366
277 7590 05/28/2013
PRICE HENEVELD LLP
695 KENMOOR SE
P O BOX 2567
GRAND RAPIDS, MI 49501
EXAMINER
DEMUREN, BABAJIDE A
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
05/28/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILLIAM R. SLEEMAN
____________________

Appeal 2011-003498
Application 11/803,638
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and
HYUN J. JUNG, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003498
Application 11/803,638
2
STATEMENT OF THE CASE
William R. Sleeman (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 17 and 20 under 35 U.S.C. § 103(a)
as unpatentable over Murphy (US 4,672,787, iss. Jun. 16, 1987). Claims 1-
16, 18, and 19 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
The Claimed Subject Matter
Claim 17, reproduced below, is illustrative of the claimed subject
matter.
17. A process for constructing a roof, exterior wall or interior
wall of a building, comprising:
providing a plurality of composite panels having at least
a first rigid structural layer, and a cross-linked polymer film
layer bonded to and covering a first major planar surface of the
first rigid structural layer;
fastening the composite panels to structural members of a
building in edge-to-edge abutting relationship with the cross-
linked polymer film layer being exposed and being opposite a
side of the panel facing the structural members; and
applying a tape over seams formed at abutting edges of
the panels and applying a cross-linkable liquid resin
composition to the tape and beyond the edges of the tape, and
curing the applied cross-linkable liquid resin composition,
whereby the cross-linked polymer films of the plurality of
abutting panels are joined together to form a continuous,
unitary, weather-resistant structure.
OPINION
Appellant argues claims 17 and 20 together in contesting the rejection.
Thus, we decide this appeal with respect to claims 17 and 20 on the basis of
claim 17. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appeal 2011-003498
Application 11/803,638
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Murphy discloses a process for constructing a moisture-proof wall of
a building. See col. 2, ll. 16-18. The Examiner found that Murphy discloses
a process as called for in claim 17, with the exception that “Murphy fails to
expressly provide the second layer of moisture-proofing material [(i.e., the
moisture-proofing material applied to the tape)] is a cross-linkable liquid
resin composition.” Ans. 3-4. However, the Examiner determined it would
have been obvious to use the same cross-linked polymer film layer of the
first layer (i.e., the moisture-proofing material applied to the rigid supporting
layer 42) in the second layer “for an improved quality bond absent any
unexpected or unpredictable result.” Ans. 4. Further, the Examiner pointed
out that “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.
Appellant argues that the portions of Murphy (figs. 6-8; col. 6, ll. 48-
68; col. 7, ll. 1-15) directed to applying tape (flexible strip 48) to the panels
and applying a second layer1 of moisture-proofing material to the tape
“require unprotected panels that are first attached to structural members 18
and subsequently moisture proofed.” App. Br. 6.
Appellant’s argument is not correct. Murphy discloses that the steps
shown in figures 6 through 8 are useful for improving the moisture-proofing
characteristic of the seams of conventional back-up drywall. See col. 6, ll.
45-48. However, Murphy also emphasizes that “it is preferred that the
moistureproofing material be preapplied to the dry wall back-up panels
before installation” and, most notably, that “[t]he seams also deserve special

1 Figure 8 appears to identify the second layer of moisture-proofing material
using reference numeral 149, while this layer is identified at column 7, line
4, as “second layer 147.”
Appeal 2011-003498
Application 11/803,638
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attention even when pre-coated panels of the subject invention or other
moistureproof panel systems are used.” Col. 6, ll. 36-38, 42-45; see also col.
4, ll. 32-36, 56-59 (disclosing application of strip 48 to the seams of rigid
supports 42, which have been pre-coated with moisture-proofing material
43, and a second layer of moisture-proofing material 49 to the strip 48).
Thus, Murphy discloses performing the additional steps of applying the
flexible strip 48 and the second layer to improve the moisture-proofing
characteristic of the seams even when using pre-coated panels. See Ans. 8, 9
(asserting that both the embodiment of figures 1-5, using pre-coated panels,
and the embodiment of figures 6-8, wherein the panels are attached to the
structural members before applying moisture-proofing material, require
tapes and a second layer of moisture-proofing material).
Appellant also argues that the embodiments of Murphy having a pre-
applied moisture-proofing “do not have a ‘polymer film layer’ as required by
the claims,” because Murphy teaches a moisture-proofing layer that is “non-
integral,” which Murphy defines as other than solid sheet or solid film
materials. App. Br. 6-7; see col. 3, ll. 5-12; col. 5, ll. 54-55.
Appellant’s argument is not convincing. Murphy discloses that these
“non-integral” coatings can be applied by trowel, brush, or spray and can be
used to precoat the panels. Col. 5, ll. 54-57. Murphy’s description of the
“non-integral” materials as “other than solid film or sheet” (id. at col. 5, ll.
54-55) pertains to the form of the materials prior to being applied to and
cured on the panels, not to the form of moisture-proofing material after it has
been applied to and cured on the panels.
Appellant’s Specification uses the terminology “cross-linked polymer
film” to describe a layer formed by applying and subsequently curing or
thermosetting a thermosetting resin composition on the rigid structural layer
Appeal 2011-003498
Application 11/803,638
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by spraying, brushing, rolling, curtain coating, and the like. Spec., para.
[0014]. Thus, the Examiner’s reading of the “polymer film layer” of claim
17 on the layer of moisture-proofing material of Murphy’s pre-coated panel
formed by spraying, troweling, or brushing is reasonable, in light of
Appellant’s Specification.
Appellant’s Reply Brief introduces a new line of argument. Appellant
suggests that the Examiner has not articulated an apparent reason to use a
cross-linkable moisture-proofing material to the tape and beyond the edges
of the tape applied to Murphy’s seams. Reply Br. 1-2. Appellant asserts
that the Examiner mischaracterized the legal standards for determining
obviousness by stating the question as “why wouldn’t it be obvious to one of
ordinary skill in the art to apply a cross-linkable liquid resin composition
which has already been disclosed by Murphy as well-known in the
construction trade and conventionally used for moisture proofing absent
any unexpected or unpredictable result?” Reply Br. 1; Ans. 7.
The Examiner did not mischaracterize the legal standard for
determining obviousness. As stated by the Supreme Court, “when a patent
claims a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 416 (2007). Having found that Murphy discloses a cross
linked polymer for use as a moisture-proofing material (Ans. 3, 4, 6, 7), the
Examiner determined it would have been obvious to a person of ordinary
skill in the art to use that same material, known for use as moisture-proofing
material, for the second moisture-proofing layer (Ans. 4, 7) in the absence of
any unexpected or predictable result. Moreover, the Examiner articulated a
particular reason, i.e., “for an improved quality bond,” for using the same
Appeal 2011-003498
Application 11/803,638
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material for the second moisture-proofing layer. Appellant does not dispute
the Examiner’s finding that use of the same material for both the first and
second moisture-proofing layers would yield an improved quality bond or
identify any flaw in the Examiner’s reasoning.
Appellant also argues that Murphy’s disclosure of polymer systems
“which may or may not be cross linkable” (col. 6, l. 14) evinces that it does
not matter to Murphy whether the moisture-proofing material is or is not
cross linkable. Reply Br. 2. This argument is not convincing. We agree
with Appellant that Murphy does not express a preference to cross linkable
polymers over polymers that are not cross linkable. However, Murphy
clearly discloses that both cross linkable polymers and polymers that are not
cross linkable are suitable for use as the moisture-proofing coating material.
Even assuming Appellant is correct that the particular examples of materials
enumerated by Murphy are not cross linkable (Reply Br. 2), that fact does
not negate Murphy’s teaching that both cross linkable polymers and non-
cross linkable polymers are suitable. See In re Bode, 550 F.2d 656, 661
(CCPA 1977) (stating “the reference must be evaluated for all it teaches and
is not limited to its specific embodiments”).
Appellant asserts that Murphy’s preferred moisture-proofing materials
are fibrated asphalt mastic compositions and fibrated asphalt emulsion
mastic compositions, and that the subsequently mentioned cross linkable
polymer systems are “less preferred materials.” Reply Br. 1-2. However,
this assertion does not identify error in the Examiner’s determination of
obviousness. A reference is not limited to its preferred embodiment, but
must be evaluated for all of its teachings, including its teachings of non-
preferred embodiments. In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979).
Appeal 2011-003498
Application 11/803,638
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For the above reasons, Appellant’s arguments do not apprise us of
error in the Examiner’s rejection of claim 17. We sustain the rejection of
claim 17 and of claim 20 as unpatentable over Murphy.
DECISION
The Examiner’s decision rejecting claims 17 and 20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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