10622634 (B.P.A.I. Sep. 13, 2011)

Ex Parte Wiley

Board of Patent Appeals and InterferencesSep 13, 2011

10622634 (B.P.A.I. Sep. 13, 2011)

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. 10/622,634 07/21/2003 Patrick Carl Wiley I0780096 TWB/cd 4571 7590 09/14/2011 Oyen Wiggs Green & Mutala The Station-Suite 480 601 West Cordova Street Vancouver, BC V6B 1G1 CANADA EXAMINER SELLMAN, CACHET I ART UNIT PAPER NUMBER 1715 MAIL DATE DELIVERY MODE 09/14/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte PATRICK CARL WILEY ____________ Appeal 2010-004162 Application 10/622,634 Technology Center 1700 ____________ Before CHUNG K. PAK, CHARLES F. WARREN, and TERRY J. OWENS, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s refusal to allow claims 1, 4, 6 through 12, 14 through 19, 36 through 39, and 41, all of the claims pending in the above-identified application. 1 We have jurisdiction under 35 U.S.C. § 6. 1 See Appeal Brief (“App. Br.”), filed March 20, 2009, at 5; Reply Brief (“Reply Br.”), filed August 25, 2009, at 3; and Examiner’s Answer (“Ans.”), filed August 25, 2009, at 2. Appeal 2010-004162 Application 10/622,634 2 STATEMENT OF THE CASE The subject matter on appeal is directed to a method of applying a thermally settable coating to a patterned substrate, such as an imprinted asphalt surface. The coating may be applying [sic., applied] by placing one or more preformed thermoplastic sheets on the substrate and heating the sheets in situ to conform to the thermoplastic material to the underlying pattern. [(See Spec. 1, para. 0002.)] The Specification, at pages 6 and 7, paragraph 0029, states that: As used in this patent application the term heating “in situ” refers to a heating pre-formed sheets 14 at the installation site rather than applying hot thermoplastic in a liquid form in a conventional manner directly to asphalt surface 12 and allowing it to harden. As used in this patent application “asphalt” means a paving compound for constructing roads, driveways, walkways and the like which consists of a combination of bituminous binder, such as tar, and an aggregate, such as sand or gravel…. The preformed thermoplastic sheets are “gradually heated in situ as described below until a consistent bond is achieved between [preformed thermoplastic] sheets 14 and asphalt surface 12, thereby forming coating 10” and causing “sheets 14 to conform to a pattern formed 22 in the underlying [asphalt] surface 12” (Spec. 6, para. 0028, and Figs. 4-6). The Specification, at paragraphs 0032 and 0033 describes the gradual heating as involving reciprocating movement of heaters over the preformed thermoplastic sheets, thereby gradually increasing the temperature of the sheets and asphalt surface via successive heating cycles until the desired temperature suitable for thermoplastic/asphalt adhesion is achieved. Appeal 2010-004162 Application 10/622,634 3 Details of the appealed subject matter are recited in representative claims 1 and 36 reproduced from the Claims Appendix to the Appeal Brief as shown below: 1. A method of applying a coating to a substrate comprising: (a) forming a first pattern in said substrate, wherein said substrate is an asphalt surface. (b) providing a first pre-formed thermally settable sheet, wherein said sheet forming of thermosplastic material; (c) providing at least one further pre-formed thermally settable sheet; (d) placing said first pre-formed sheet and said at least one further pre- formed sheet on said asphalt surface in an aligned configuration; and (e) gradually heating said sheets in situ to a temperature sufficient to bond said sheets to said asphalt surface in a configuration conforming to said first pattern. 36. A method of applying a coating to substrate comprising: (a) forming a first pattern in said substrate, wherein said substrate is an asphalt surface; (b) placing a first pre-formed thermally settable sheet on said substrate, wherein said sheet is formed of thermoplastic material; and (c) heating said sheet in situ to a temperature sufficient for said sheet to adhere to said substrate in a configuration conforming to said first pattern, wherein said sheet comprises a first surface which is placed in contact with said asphalt surface and a second surface which is not placed in contact with said asphalt surface and wherein the step of heating said thermoplastic sheet in situ comprises gradually increasing the temperature of said sheet to enable said first surface of said sheet to bond consistently to said asphalt surface, said heating comprising providing a heating apparatus having a support frame extending over said sheet and at least on heater mounted on said support frame, wherein said heater is mounted for movement relative to said support frame in a travel path Appeal 2010-004162 Application 10/622,634 4 which periodically passes over said sheet to thereby gradually increase the temperature thereof. As evidence of unpatentability of the claimed subject matter, the Examiner relies on the following prior art references at page 3 of the Answer: Eigenmann US 3,235,436 Feb. 15, 1966 Pacey EP 0 041 335 A2 Dec. 9, 1981 Corbin, Jr. US 4,854,771 Aug. 8, 1989 Stowell2 US 5,215,402 Jun. 1, 1993 Wiley US 5,653,552 Aug. 5, 1997 3M Application of StamarkTM Pre-Cut Symbols and Legends, Information Folder 5.8, pp. 1-10 (2002) (hereinafter referred to as “the 3M information brochure”). Appellant seeks review of the following grounds of rejection set forth in the Answer3: 1. Claims 1, 4, 6 through 10, and 36 through 41 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Stowell, Corbin, Jr., Pacey, and Wiley4; 2 The Examiner inadvertently refers to Stowell as “Stonwell” throughout the Answer. 3 Although Appellant seeks review of the rejections of claims 18 and 19 based on a supposedly unknown ground and claims 36 through 39 and 41 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Corbin Jr., Stowell, and Wiley, the Examiner has not set forth those rejections in the Answer. Thus, such rejections are not before us for review. Ex parte Emm, 118 USPQ 180 (Bd. App. 1957) (Since the ground of rejection set forth in the final Office action does not appear in the Answer, we presume that the rejection stands withdrawn.) 4 The Examiner’s rejection of claims 36 through 41 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Corbin, Jr., Stowell, Appeal 2010-004162 Application 10/622,634 5 2. Claims 11, 12, 14, 16, and 17 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Stowell, Corbin, Pacey, and Eigenmann5; and 3. Claim 15 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Stowell, Corbin, Pacey, and the 3M information brochure. 6 RELEVANT FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUE, ANALYSIS AND CONCLUSION Stowell discloses imprinting a freshly rolled asphalt surface with a pre-defined pattern to simulate the appearance of bricks, cobblestones, interlocking paving stones or other aesthetically pleasing patterns. (See Ans. 3 and 9; see also Stowell, col. 1, ll. 6-21 and col. 3, ll. 1-7). Stowell does not mention providing at least two preformed thermally settable sheets made of thermoplastic material on the asphalt surface in an aligned configuration and then gradually heating the two preformed thermally sheets in situ to a temperature sufficient to bond the sheets to the asphalt surface in a configuration conforming to the pattern in the asphalt surface as required by Pacey, and Wiley is subsumed in this rejection which is based on the same disclosures of the same prior art references. 5 The Examiner has relied on the same reasoning for rejecting claim 1, together with the teachings of Eigenmann, to reject dependent claims 11, 12, 14, 16, and 17 (dependent on claim 1), but has not included Wiley which is included in rejecting claim 1. 6 The Examiner has relied on the reasoning for rejecting claim 1, together with the 3M information brochure, to reject dependent claim 15 (dependent on claim 1), but has not included Wiley which is included in rejecting claim 1. Appeal 2010-004162 Application 10/622,634 6 claim 1. (See also Ans. 3-4 and 9; see also Stowell in its entirety.) Stowell also does not mention providing at least one preformed thermally settable sheet on an asphalt surface defining a pattern and gradually heating the sheet in situ to a temperature sufficient for the sheet to adhere to the asphalt surface in a configuration conforming to the pattern with a particular heating apparatus as required by claim 36. (See Ans. 3-4 and 9; see also Stowell in its entirety.) To remedy the above deficiencies in Stowell, the Examiner has relied upon the disclosures of Corbin, Jr., Pacey and Wiley for such missing features (Ans. 3-6 and 8-11). According to the Examiner, one of ordinary skill in the art would have been led to use such features taught by Corbin, Jr., Pacey and Wiley on the patterned asphalt surface taught by Stowell to arrive at the claimed subject matter (id). On the other hand, Appellant contends that the Examiner has not shown that there is any apparent reason or suggestion to combine Stowell, Corbin, Jr., Pacey, and Wiley in the manner proposed by the Examiner to arrive at the subject matter recited in claims 1 and 36 (App. Br.10-14 and 17-18 and Reply Br. 5-7 and 8-14) . Thus, the dispositive question raised by both the Examiner and Appellant is: Has the Examiner demonstrated that one of ordinary skill in the art would have been led to bond at least one or two preformed thermally settable sheets made of thermoplastic material on the asphalt surface in a configuration conforming to the pattern in the asphalt surface via gradually heating the one or two sheets in situ with or without a particular heating apparatus as required by claims 1 and 36 within the meaning of 35 U.S.C. § 103(a)? On this record, we answer this question in the negative. Appeal 2010-004162 Application 10/622,634 7 As is apparent from page 4 of the Answer, the Examiner has taken the position that it would have been obvious to one of ordinary skill in the art to employ the road marking sheets taught by Corbin, Jr. as a substitute for Stowell’s thin coating of colored concrete. However, the Examiner has not demonstrated that the road marking sheets taught by Corbin, Jr. are useful for providing the desired brick and mortar or simulated cobblestone effect and are suitable for serving as a protective layer for reducing the heat absorptivity of the asphalt as required by Stowell. (Compare Ans. 3-4 with Stowell, col. 3, l. 54 to col. 4, l. 2.) Nowhere has the Examiner referred to any teachings in Corbin, Jr., which indicates that its thermoplastic road marking sheets can provide the desired brick and mortar or simulated cobblestone effect and/or can serve as a protective layer for reducing the heat absorptivity of the asphalt as correctly argued by Appellant at pages 10 through 12 of the Appeal Brief and pages 8 through11 of the Reply Brief. (See Ans. in its entirety.) Thus, on this record, the Examiner has not supplied adequate reasoning or rational underpinning to support a legal conclusion of obviousness regarding the use the road marking sheets taught by Corbin, Jr. as a substitute for Stowell’s thin coating of colored concrete. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with approval in KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007))(A sustainable obviousness rejection must be accompanied by “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). As is also apparent from pages 4, 5, and 8 through 12 of the Answer, the Examiner has relied on Wiley for teaching the claimed gradual heating, Appeal 2010-004162 Application 10/622,634 8 i.e., moving a heater or heaters over a surface in successive forward and backward directions. However, as correctly pointed out by Appellant at pages 10, 13, 14, and 17 of the Appeal Brief and pages 7 and 13 of the Reply Brief, Wiley is directed to gradually heating an asphalt surface to facilitate a subsequent recycling of the asphalt surface to reduce the amount of equipment necessary to effect recycling of the asphalt surface. (See also Wiley, col. 2, ll. 37-46, col. 5, l. 60 to col. 6, l. 5 and col. 9, ll. 25-33). On this record, the Examiner has not demonstrated that one of ordinary skill in the art would have looked to Wiley’s asphalt heating technique for the asphalt recycling purpose for heating thermoplastic marking sheets for the purpose of adhering or binding the thermoplastic sheets to the asphalt surface in a configuration conforming to the pattern in the asphalt surface as required by claims 1 and 36. Had a person having ordinary skill in the art looked to Wiley’s asphalt heating technique for the asphalt recycling purpose to improve the binding of the thermoplastic road marking sheets to an asphalt surface, such person would have been led to employ such asphalt heating technique in the advantageous binding method taught by Corbin, Jr., which requires heating the asphalt surface, not the thermoplastic road marking sheets, to convert the asphalt surface into a binder for receiving the thermoplastic road marking sheets. (See Corbin, Jr., col. 2, ll. 33-49 and Wiley, col. 5, l. 60 to col. 6, l. 5.) Moreover, the Examiner has not demonstrated, much less explained, why Wiley teaches or would have suggested the particular heating apparatus recited in claims 6 and 36 as argued by Appellant at pages 14 and 17 of the Appeal Brief. (See Ans. in its entirety.) Appeal 2010-004162 Application 10/622,634 9 Under the above circumstances, we are constrained to agree with Appellant that the Examiner has not established, by the preponderance of evidence, that one of ordinary skill in the art would have been led to bond at least one or two preformed thermally settable sheets made of thermoplastic material on the asphalt surface in a configuration conforming to the pattern in the asphalt surface via gradually heating the one or two sheets in situ in the claimed manner with or without a particular heating apparatus as required by claims 1 and 36 within the meaning of 35 U.S.C. §103(a).7 In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”). ORDER In view of the foregoing, it is ORDERED that the decision of the Examiner rejecting claims 1, 4, 6 through 12, 14 through 17 and 36 through 41 under 35 U.S.C. § 103(a) is REVERSED. REVERSED tc/sld 7 Nothing in the record indicates that the Examiner has relied upon Eigenmann or the 3M information brochure to remedy the deficiencies discussed above. (See Ans. 7-8.)