Ex Parte Toye

Patent Trial and Appeal Board

Aug 31, 2015

13226226 (P.T.A.B. Aug. 31, 2015)

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.
13/226,226 09/06/2011 Jonathan Dallas Toye 37982-CNT 3226
23589 7590 09/01/2015
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
HAYES, KRISTEN C
ART UNIT PAPER NUMBER
3647
MAIL DATE DELIVERY MODE
09/01/2015 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 JONATHAN DALLAS TOYE

____________

Appeal 2013-008886
Application 13/226,226
Technology Center 3600
____________

Before JOHN C. KERINS, STEFAN STAICOVICI, and
RICHARD H. MARSCHALL, Administrative Patent Judges.

MARSCHALL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jonathan Dallas Toye (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s non-final decision rejecting claims 1–5 and 13–15.
We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

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THE CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to woven materials for use
as ground covers or other agricultural applications. Spec. 1, ll. 12–13.
Claim 1 is representative of the subject matter on appeal.
1. A reflective woven ground cover sheet material which is
longer than it is wide and which is woven from warp and weft
tapes at least some of which are spaced apart from each other so
that at least a longitudinally extending center section of the
material has a porosity, defined as the percentage of the surface
area of the material comprising holes or apertures through the
material between spaced apart warp and weft tapes relative to
the overall surface area of the material of at least 2%, and
wherein at least said longitudinally extending center section of
the material is reflective of at least 50% of visible solar light on
at least one side of the sheet material.

THE EVIDENCE
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Hinsperger US 2004/0118039 A1 June 24, 2004
Appellant presents additional evidence in the Declaration filed by
Jonathan Dallas Toye on Nov. 9, 2011 (“Toye Declaration”).

THE REJECTION
Appellant seeks review of the Examiner’s rejection of claims 1–5 and
13–15 under 35 U.S.C. § 103(a) as unpatentable over Hinsperger.

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ANALYSIS
Appellant argues claims 1–5 and 13–15 as a group. App. Br. 11. We
select claim 1 as representative of the group, and claims 2‒5 and 13–15
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv)(2014).
Claim 1 requires a ground cover sheet with at least a center section of
material that is “reflective of at least 50% of visible solar light on at least
one side of the sheet material.” App. Br. 31 (Claims Appendix). The
Examiner finds that Hinsperger does not explicitly disclose this limitation,
but “does disclose the amount of light reflected by a surface [] depending on
the amount of reflective material used.” Non-Final Act. 3. The Examiner
also determines that it would have been obvious, through routine tests and
experimentation, to make the center of the sheet reflect at least 50% of
visible light, “so as to control the amount of light or heat received by the
ground.” Id.
Appellant argues that the Examiner improperly interpreted Hinsperger
because the lace coating of Hinsperger functions only as a heat absorption
material, not a material that reflects solar light. App. Br. 19. We are not
persuaded by Appellant’s argument because it directly contradicts the
portion of Hinsperger quoted by Appellant in the Appeal Brief. Id. In that
passage, Hinsperger discloses the ability to increase or decrease the light
reflectivity of the sheet material:
When strong heat reflection or heat absorption are desired, both
the warp and weft strips can be provided with the desired
property; in addition, by varying the amount of coverage
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formed by the lace coating on one surface of the product,
increases or decreases in the light absorption or light reflection
can be obtained.

Hinsperger ¶ 19 (emphasis added). The Examiner correctly finds that this
passage of Hinsperger discloses varying the amount of light reflectivity of
the sheet material by varying the amount of reflective lace coating used.
Non-Final Act. 3; see also Hinsperger ¶ 14 (. . . lace coating . . . is provided
with reflective characteristics.”). We also disagree with Appellant’s
argument that “any light reflective properties which could be inferred from
the teachings of Hinsperger are only incidental” to its heat absorption or
light transmitting properties. App. Br. 20 (emphasis omitted). There is no
reason to infer light reflective properties when Hinsperger expressly
discloses those properties, and nothing in Hinsperger suggests that the light
reflective properties are incidental to other properties. As the Examiner
correctly finds, “[i]t is unclear as to how the light reflective properties of
Hinsperger would only be incidental, as Hinsperger explicitly discloses
varying the amount of light reflectivity based on the amount of lace coating
of the material.” Ans. 5. Hinsperger’s focus on heat radiation and
absorption does not render the disclosure of light reflectivity meaningless as
Appellant suggests. See also id. (“Although Hinsperger may disclose heat
radiation, light reflection is also disclosed.”).
Appellant also argues that Hinsperger teaches the transmission of
solar light through the material, rather than reflecting solar light, because
Hinsperger’s stated goal is to heat the ground under the material. App. Br.
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20–21. While Hinsperger does disclose a clear or translucent material for
some of the components of the sheet to transmit solar light through the sheet,
that disclosure does not undermine the Examiner’s findings regarding the
reflectivity of the lace coating since the sheet material has multiple
components with different properties. See Hinsperger ¶¶ 10–11 (one of
warp or weft permits transmission of light, the other warp or weft reflects or
absorbs heat, and the lace coating either reflects or absorbs heat); 19 (light
reflectivity of sheet varies based on varying amount of lace coating). In
addition, although Appellant argues that Hinsperger’s goal of retaining heat
in the ground is contrary to the Appellant’s goal of reflecting light upward
toward vegetation, the claims do not require solar light reflection in any
particular direction. Reply Br. 9 (“Applicant is seeking to reflect light
upwardly . . . .”); App. Br. 22, 31 (Claims Appendix at Claim 1) (reflective
material must be “on at least one side of the sheet material”). Accordingly, a
reflective surface that reflects both heat and light toward the ground can still
fall within the scope of the claims.
Appellant also argues that there would have been no reason for one of
skill in the art to modify Hinsperger to achieve 50% reflection of visible
solar light to the center of the sheet given Hinsperger’s goal of transmission
of solar light and reflection of heat at different wavelengths than solar light.
App. Br. 21–22. This argument ignores the Examiner’s finding that colored
heat reflective material can also reflect solar light. For example, the
Examiner correctly finds that Hinsperger discloses the use of the color white
on the sheet materials, a color known to reflect visible light. Ans. 4;
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Hinsperger ¶ 14 (lace coating with reflective characteristics can be produced
by applying coloring agent having “heat specular properties” such as white,
silver, gold, bronze). Appellant also fails to establish error in the
Examiner’s determination that it would have been obvious to make the
center of the sheet 50% light reflective. Final Act. 3; Ans. 5–6. The claim
merely requires that “at least” the center of the sheet contain the required
reflectivity. App. Br. 31 (Claims Appendix). The claim does not prohibit
the reflective material from covering other regions of the sheet, and given
Hinsperger’s disclosure of a reflective coating covering 80% of the cover
and accompanying figures, we see no error in the Examiner’s findings. See
Hinsperger ¶ 13; Fig. 1 (showing coating 14 spread throughout sheet).
Further, Appellant argues that the claimed range of reflectance—50%
or more of visible light—is nonobvious, but does not support that argument
with adequate evidence or argument regarding the importance of that range.
See App. Br. 21–22. The Examiner finds that the reflectivity varies with the
amount of reflective lace coating used. Final Act. 3; Ans. 3–4. The
Examiner then finds that such a “result-effective variable” can be varied
using routine tests and experimentation to achieve the claimed reflectivity.
See In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A
recognition in the prior art that a property is affected by the variable is
sufficient to find the variable result-effective.”). To rebut such a finding,
Appellant must establish unexpected results in the claimed range. Id. at
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1295–97.1 Under these circumstances, when the Examiner correctly finds
that Hinsperger discloses varying the amount of light reflectivity, and a
white color for the lace coating that is known to reflect visible light, it is
incumbent upon the Appellant to show that the 50% figure produces
unexpected results and would not be within the capabilities of one of
ordinary skill in the art to achieve through routine optimization as the
Examiner finds. Appellant does not argue criticality of the 50% figure, or
establish that reaching the 50% level of reflectivity would be unexpected in
light of the known reflectivity at lower levels, as presented in the Toye
Declaration.
Appellant does argue that the Examiner failed to give proper weight to
a declaration submitted by the inventor, which included lab test results
related to an embodiment of the invention and a sample consistent with
Hinsperger’s disclosure. App. Br. 24–28. The Examiner finds the
declaration unconvincing because the Examiner relied on a modified version

1 See also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (“The law is
replete with cases in which the difference between the claimed invention and
the prior art is some range or other variable within the claims. These cases
have consistently held that in such a situation, the applicant must show that
the particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range.” (citations
omitted)); In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (“[E]ven though
applicant's modification results in great improvement and utility over the
prior art, it may still not be patentable if the modification was within the
capabilities of one skilled in the art, unless the claimed ranges “produce a
new and unexpected result which is different in kind and not merely in
degree from the results of the prior art.”).
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of Hinsperger’s cover in the rejection. Ans. 5. The Examiner also finds that
even if the lab data shows that Hinsperger “had a ‘low reflectance,’” it still
shows that Hinsperger reflects light. Id.
The test data relates to an unmodified version of Hinsperger rather
than the modified version of Hinsperger relied upon by the Examiner in the
rejection. Non-Final Act. 3. At most, the data suggests that some
unmodified version of Hinsperger does not meet the claim limitations. It is
unclear which embodiment of Hinsperger corresponds to the test sample
EVERGREEN. See Toye Declaration ¶ 5. Given that Hinsperger discloses
the option of using an absorptive or reflective lace coating, and the amount
of coating can vary between 5–80%, the type and amount of coating on the
sample are important factors that affect the test results, namely, light
reflectivity. Hinsperger ¶¶ 10–11, 13. The prior art at issue includes
Hinsperger and all of the embodiments disclosed therein, not a sample that
does not indicate to which embodiment it corresponds. Moreover, an
applicant relying on comparative tests to rebut a prima facie case of
obviousness must compare his claimed invention to the closest prior art. In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellant has not
established that the Hinsperger embodiment tested is the closest embodiment
to the claimed invention. As such, the presented test data does not establish
that the at least 50% reflectivity required by the claims is “unexpected” or
teach away from that limitation as Appellant suggests. Reply Br. 10–11.
We see no error in the Examiner’s consideration and treatment of the
declaration and test data, or in the Examiner’s finding that one of ordinary
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skill in the art could make the claimed sheet reflect at least 50% of visible
light through “routine tests and experimentation” in light of Hinsperger’s
disclosure of varying light reflectivity. Based on the foregoing, we
sustain the rejection of claim 1, as well as claims 2‒5 and 13–15 that fall
with claim 1.

DECISION
We AFFIRM the decision of the Examiner to reject claims 1–5 and
13–15.
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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