Ex Parte Snyder et al

Patent Trial and Appeal Board

Sep 15, 2016

12629943 (P.T.A.B. Sep. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/629,943
27569 7590
PAUL AND PAUL
FILING DATE
12/03/2009
09/19/2016
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
Richard Allan Snyder
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.
2009-172 8829
EXAMINER
WATKINS III, WILLIAM P
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
09/19/2016 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 RICHARD ALLAN SNYDER,
HUSNU M. KALKANOGLU, and GREGORY F. JACOBS
Appeal2014-001956
Application 12/629,943
Technology Center 1700
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
WESLEY B. DERRICK, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON REHEARING
The Appellants request rehearing of a DECISION ON APPEAL dated
June 7, 2016 ("Decision"), affirming the Examiner's decision to finally reject
claims 1-3 and 6-24, which are all of the pending claims.
A request for rehearing must state with particularity the points believed to
have been misapprehended or overlooked by the Board. Arguments not raised in
the briefs before the Board and evidence not previously relied on in the briefs are
not permitted in a request for rehearing except as permitted by 37 C.F.R.
§ 41.52(a)(2) through (a)(4). 37 C.F.R. § 41.52(a)(l) (2014).
For the reasons set forth below, the request is DENIED.
Appeal2014-001956
Application 12/629,943
I.
As to the anticipation rejections on appeal, the Appellants contend that "the
Board bases it [sic, its] affirmance on the principle that 'a chemical compound and
its properties are inseparable,' as articulated inin re Papesch, 315 F2d 381, 391
(CCPA 1963)." Request 1-2. However, according to the Appellants, "[t]he
Board's reliance on In re Papesch in the present context is inapposite" because
"[t ]he material of the bottom layer of the claimed shingle ... is a complex
composition and not a compound." Request 2 (emphasis added).
Regardless of whether the material is a complex composition or a
compound, the case law is clear, "one cannot establish novelty by claiming a
known material by its properties." In re Crish, 393 F.3d 1253, 1258 (Fed. Cir.
2004); see also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("The discovery of
a new property or use of a previously known composition, even when that property
and use are unobvious from prior art, can not impart patentability to claims to the
known composition.").
In this case, the Examiner found that the lower asphalt layers of Aschenbeck
and Rodrigues have improved impact resistance and include some of the same
polymeric materials used by the Appellants to obtain the claimed properties in the
second asphaltic material layer. See Final 3, 4; Decision 5---6. Thus, the burden
properly shifted to the Appellants to show that the lower asphalt layers of
Aschenbeck and Rodrigues, modified with those same polymeric materials, do not
exhibit the claimed properties, including softness and elongation at break. See In
re Swinehart, 439 F.2d 210, 213 (CCPA 1971) ("where the Patent Office has
reason to believe that a functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an inherent characteristic of
the prior art, it possesses the authority to require the applicant to prove that the
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Appeal2014-001956
Application 12/629,943
subject matter shown to be in the prior art does not possess the characteristic relied
on"). The Appellants failed to satisfy that burden.
II.
On rehearing, the Appellants also argue:
Aschenbeck and Rodrigues at best disclose a genus of
compositions, by their reference to asphaltic material modified by
SBS, SBR, or EV A, that encompasses many, in theory a limitless
number of, species (i.e. specific compositions) that can have different
physical properties. Apart from this generic disclosure, Aschenbeck
and Rodrigues do not disclose specific compositions used in the
bottom layers of their shingles such as by identifying the components
of the composition including additives, the molecular weights of the
components used, or the proportions of the components in the
composition. Absent such disclosure, it is impossible to know with
certainty that the compositions used by the applicants to achieve the
claimed properties are the same as that used by Aschenbeck and
Rodrigues in their claimed shingle.
Request 2 (emphasis added).
In the Briefs, the Appellants did not mention "asphaltic material modified by
SBS, SBR, or EVA" or directly address the Examiner's finding that "the bottom
asphalt layer of [ Aschenbeck and Rodrigues] is made of a synthetic rubber
modified asphalt layer." Final 3, 4 (emphasis added). Rather, in the Appeal Brief,
the Appellants merely referred, in general, to "certain polymers" of Aschenbeck,
"modified asphalt generally," and "modified asphalt formulations" of Aschenbeck
and Rodrigues in arguing that the genera disclosed in Aschenbeck and Rodrigues
encompass "thousands of different modified asphalt formulations." App. Br. 10,
11, 12. Thus, to the extent that the Appellants are now arguing, on rehearing, that
the asphaltic materials disclosed in Aschenbeck and Rodrigues, modified by SBS,
SBR, or EV A, encompass a limitless number of species that can have different
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Appeal2014-001956
Application 12/629,943
physical properties, that argument was not raised in the Briefs. 1 Likewise, the
Appellants' argument that Aschenbeck and Rodrigues do not identify "the
components of the composition including additives, the molecular weights of the
components used, or the proportions of the components in the composition"
(Request 2) was not raised in the Briefs.2
A request for rehearing must identify points believed to have been
misapprehended or overlooked by the Board. 37 C.F.R. 41.52(a)(l) (2014).
Significantly, the Board cannot misapprehend or overlook arguments that were not
raised on appeal. See Keebler Co. v. Murray Bakery Prods., 866 F.2d 1386, 1388
(Fed. Cir. 1989) ("Prescience is not a required characteristic of the board.").
III.
As for the rejections based on either Aschenbeck or Rodrigues in
combination with Terrenzio, on rehearing, the Appellants argue:
1 \Ve note the Examiner "concedes that there may be thousands of different
synthetic rubber modified asphalts." Ans. 4. Nonetheless, we emphasize that, in
the anticipation rejections on appeal, the Examiner relies on the specific species of
synthetic rubber modified asphalt disclosed Aschenbeck and Rodrigues which are
said to improve impact resistance when used in the bottom layer of the disclosed
shingles. See Ans. 5---6 ("the examiner is not relying on the generic teaching of a
rubber modified asphalt, but instead relies on the specific species taught by the
reference that increase resistance to impacts such as hail when used in the bottom
layer of shingles").
2 At the oral hearing, Mr. Sluzas, counsel for the Appellants, raised a similar
argument. Transcript of May 24, 2016 hearing ("Tr.") 4, 1. 24--5, 1. 25. In
response, Judge Hanlon stated, in relevant part: "I don't believe the brief discussed
that in much detail. Just -- it just --"; Mr. Sluzas stated: "I think I've gone into a
little more detail than he has, but--"; and Judge Hanlon stated: "Yes." Tr. 6, 11. 4--
8.
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Appeal2014-001956
Application 12/629,943
Aschenbeck teaches that the bottom layer of the shingle must
be of increased toughness in order to provide the shingle with
improved impact resistance. As shown by the Jacobs Declaration, a
material that is softer and elongates more is not necessarily tougher as
required by Aschenbeck. Therefore, one of ordinary skill in the art
would not substitute the material of Terrenzio '807 for the material of
the bottom layer of Aschenbeck without knowing its toughness for
fear of destroying the function of the shingle of Aschenbeck.
Rodrigues requires the modified asphalt layer 5 to have a higher
melting temperature than the asphalt material of the shingle to meet its
performance goals. The material of Terrenzio '807 has a lower
melting temperature than the asphalt material of the shingle.
Therefore, once again one of ordinary skill in the art would not
substitute the material of Terrenzio '807 for the material of the bottom
layer of Rodrigues for fear of destroying its function.
Request 3 (emphasis added).
Suffice it to say that the Appellants' arguments on rehearing were not raised
in the Briefs. When addressing the obviousness rejections in the Appeal Brief, the
Appellants merely argued that Aschenbeck, Rodrigues, and Terrenzio teach the
opposite of the features required by the claims (e.g., the top layer of Terrenzio, not
the lower layer as claimed, has a greater elongation at break and is compliant).
App. Br. 13.
IV.
The Appellants' Request for Rehearing has been granted to the extent that
the DECISION ON APPEAL dated June 7, 2016, has been reconsidered in light of
the Appellants' arguments. However, the Request is denied because the Decision
is not modified in any respect.
REHEARING DENIED
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