Ex Parte ZhouDownload PDFPatent Trial and Appeal BoardOct 19, 201613538244 (P.T.A.B. Oct. 19, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/538,244 06/29/2012 48985 7590 10/21/2016 BRIDGESTONE AMERICAS, INC 10 East Firestone Blvd. AKRON, OH 44317 FIRST NAMED INVENTOR Wensheng ZHOU 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. P09109US2A(P586) 1156 EXAMINER VAN SELL, NATHAN L ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 10/21/2016 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): iplawpat@bfusa.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WENSHENG ZHOU1 Appeal2014-009322 Application 13/538,244 Technology Center 1700 Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and MONTE T. SQUIRE, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 from the Examiner's decision2 finally rejecting claims 1-14 and 20-35 under 35 U.S.C. § 103 over Shiao3 in view of Mangold.4 We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. 1 The Real Party in Interest is identified as Firestone Building Products Co., LLC. Appeal Br. 3. An oral hearing previously scheduled for October 18, 2016, has been waived. 2 A prior pending provisional obviousness-type double patenting rejection (Final Act. 8) has been withdrawn (Ans. 7). 3 Shiao et al., US 2008/0241472 Al, published October 2, 2008. 4 Mangold et al., US 5,380,687, issued January 10, 1995. Appeal2014-009322 Application 13/538,244 The subject matter5 on appeal is directed to roofing articles comprising an asphaltic substrate and a plurality of mullite-containing granules disposed on the surface of the substrate. Spec. iii! 2, 3; Abstract. Independent claims 1 and 20-the sole independent claims-are representative. 1. A reflective roofing article, said roofing article compnsmg: (i) an asphaltic substrate; and (ii) a plurality of mullite-containing granules disposed on a surface of the substrate, where said mullite-containing granules include a mullite concentration of at least 35 wt% and at most 63 wt% as determined by quantitative x-ray diffraction. 20. An asphaltic membrane comprising: (i) an asphaltic substrate; and (ii) a plurality of mullite-containing granules disposed on a planar surface of the substrate, where the mullite- containing granules include mullite crystallites dispersed within a non-mullite matrix, and where the mullite-containing granules include less than 3 .5 wt.% alkali oxides or alkaline earth oxides combined. Appeal Br. (Claims Appendix) 23-25.6 Claims 4 and 5 recite further limitations as to the aspect ratio of mullite crystallites. 5 Application No. 13/538,288, filed in the name of Zhou on June 29, 2012, is identified in the section Related Appeals and Interferences as a related application which is also on appeal. Appeal Br. 4. The appeal of Application No. 13/538,288 has been assigned Appeal No. 2014-009324. 6 A corrected listing of claims not including non-entered claim amendments to claims 6, 12-14, 21, and 25, was filed in response. 2 Appeal2014-009322 Application 13/538,244 Claims 21-35 recite further limitations as to the composition of the granules, particularly as to the inclusion of material other than mullite and as to the overall composition of the granules. DISCUSSION7 Upon consideration of the evidence on this record and each of Appellant's contentions, we find that a preponderance of the evidence supports the Examiner's determination that one of ordinary skill in the art, armed with the knowledge provided in the applied prior art would have been led to the subject matter recited in claims 1-14 and 20-35. "[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." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). To prevail in an appeal to this Board, Appellant must adequately explain or identify reversible error in the Examiner's rejection. See 37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365- 66 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, it has long been the Board's practice to require an Appellant to identify the alleged error in the Examiner's rejection). The Examiner relies on Shiao for its disclosure of solar reflective roofing shingles or membranes comprising a bituminous base (i.e., an asphaltic substrate) and a plurality of granules disposed on the surface of the bituminous base where the granules may comprise mullite. Ans. 3 (citing 7 We refer to the Final Office Action mailed September 30, 2013; the Appeal Brief filed March 24, 2014, supplemented April 29, 2014; the Examiner's Answer mailed July 1, 2014; and the Reply Brief filed September 2, 2014. 3 Appeal2014-009322 Application 13/538,244 Shiao iii! 30, 32, 48, and 49). We note that Shiao describes the use of mullite to form "solar-reflective inert base particles [preferably] hav[ing] an average solar reflectivity of at least 60%." Shiao iJ 21. The Examiner also relies on Shiao for teaching other materials that can be included in the granules, i.e., silica (Si02), alumina (Ab03), and porcelain as necessary to obtain desired reflectivity and strength. Ans. 2, 6-7 (citing Shiao iii! 47--48, 104). In this, the Examiner finds de facto that Shiao teaches the identity and amount of materials used are result effective variables in providing reflectivity and strength. The Examiner relies on Mangold for its disclosure of a silicon- aluminum mixed oxide powder that can be converted to mullite powder for production of ceramics for the benefit of its characteristic resistance to high thermal and mechanical stress. Ans. 3 (citing Mangold col. 2, 11. 15-26), 10-11 (citing Mangold col. 1, 11. 3-6, 50-60, col. 2, 11. 22-26). The relied on disclosure from Mangold includes the explicit teaching that the mullite powder can be used "for the production of ceramics and ceramic preproducts." Mangold, col. 2, 11. 22-26. In rejecting the claims, the Examiner, inter alia, concludes de facto that it would have been obvious to one of ordinary skill in the art at the time of the invention to form ceramics including mullite for use as roofing granules and that arriving at the recited amounts of mullite, silica, and/or alumina included in such ceramic roofing granules would have been within the ambit of the skilled artisan through no more than routine experimentation. Ans. 9-11. The Examiner further determines that Appellant has failed to establish that the claimed ranges are critical and so has not overcome the prima facie case. Ans. 12. 4 Appeal2014-009322 Application 13/538,244 The Examiner also concludes that because Shiao teaches that silica sand, mullite, and alumina are useful to provide solar reflectivity, it is prima facie obvious to combine these in order to form roofing granules comprising silica, mullite, and alumina to be used for the very same purpose. Ans. 8-9. Claims 1-3 and 6-14 Appellant argues the claims as a group. Appeal Br. 10-16. We decide the appeal as to these claims on the basis of claim 1, which we find representative. Appellant contends there is no teaching or suggestion in either Shiao or Mangold of granules having a mullite concentration of at least 35 wt% and at most 63 wt%. Appeal Br. 11-12. In arguing this position, Appellant relies on Mangold' s disclosure in Table 5 and paraphrases column 2, lines 21-26, which states that "[t]he invention also provides for the use of the mullite powder of the invention for the production of ceramics and ceramic preproducts, especially for ceramic materials that are subject to high thermal and mechanical stresses." Appeal Br. 12-13. Appellant further argues that introducing non-mullite material to form a matrix in which mullite is dispersed is inconsistent with the teachings of Mangold. Appeal Br. 13. On this record, we do not find Appellant's argument persuasive of reversible error because we find Mangold' s teaching that its mullite powder can be used for the production of ceramics and ceramic preproducts does not limit its use to the production of pure mullite articles. Rather, the reasonable inference to be drawn from Mangold is that it provides mullite powder for use in ceramics at any desired amount. In re Preda, 401 F.2d 825, 826 (CCP A 1968) ("[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would 5 Appeal2014-009322 Application 13/538,244 reasonably be expected to draw therefrom."). Appellant fails to direct us to any persuasive evidence that the skilled artisan would be led away from use of the disclosed silicon aluminum mixed oxide or mullite powder in ceramics or ceramic preproducts that included further silica and/or alumina. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument ... cannot take the place of evidence."). An obviousness analysis "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for [an examiner] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Appellant further contends that the Examiner has failed to establish the requisite rationale for combining the teachings of Shiao and Mangold in any manner to arrive at the subject matter claimed including 35-63 wt% mullite. Appeal Br. 13-16. Specifically, Appellant argues that the Examiner's proffered rationale grounded on routine optimization of the granule's composition to obtain suitable levels of reflectivity, cost, and thermal and mechanical resistance, is not well-founded. Appeal Br. 14-16. As to including silica sand rather than mullite to reduce costs, Appellant argues both that Shiao "does not suggest that a reflective base rock can include silica sand" and that there is no "evidence that the sintered materials taught by Mangold would be more expensive than the materials taught by Shiao." Appeal Br. 14. As to the thermal and mechanical stresses, Appellant argues the relevant properties in Mangold relate to the use of the material as a refractory, not under conditions encountered in use on a roof. Appeal Br. 14-15. 6 Appeal2014-009322 Application 13/538,244 On this record, we do not find Appellant's arguments persuasive of reversible error. Even were we to accept that Shiao does not explicitly teach silica sand as a solar-reflective particles, we find the skilled artisan would reasonably infer that silica sand can be used in forming solar-reflective particles where Shiao explicitly recites preferred particles formed of glass (Shiao iii! 21, 48, and 104) and the rejection is grounded on use of the silica sand in a fired ceramic, not on inclusion of silica sand without further treatment. Regarding relative costs, we find the Examiner's determination that the "silicon-aluminum mixed oxide powder produced in a flame- hydrolysis process" of Mangold is more expensive than silica sand manifestly reasonable and find Appellant's traversal inadequate to establish error absent any proffered reasoning why silica sand would not be understood to be less expensive. Cf In re Chevenard, 31 139 F.2d 711, 713 (CCPA 1943) ("In the absence of anything in the record to contradict the examiner's holding, and in the absence of any demand by appellant for the examiner to produce authority for his statement, we will not consider this contention.). Likewise, as to resistance to thermal and mechanical stresses, Appellant fails to explain, or to provide any evidence, why a material providing mechanical strength even at elevated temperatures would not reasonably inform the skilled artisan of strength at lower temperatures on a roof top. In sum, having considered these and Appellant's additional arguments, we are not persuaded that the Examiner erred in determining that the skilled artisan would have been led to the claimed subject matter by routine optimization balancing the properties of cost, reflectivity, and strength. 7 Appeal2014-009322 Application 13/538,244 Addressing the Examiner's position that it is prima facie obvious to combine compositions useful for the same purpose to provide a combined composition for the very same purpose, Appellant contends this rule of law is inapplicable. Appeal Br. 15-16 (citing In re Kerkhoven, 626 F .2d 846 (CCPA 1980)); Reply Br. 2. Appellant characterizes the rejection as being grounded on a mixture of granules and argues that there is no evidence that the "granules are a mixture of individual components taught by Shiao." Appeal Br. 15-16. Appellant further argues the Examiner has failed to "articulate how [the principle of law] is applicable to the present facts where more than a simple mixing of known materials is required" and that "there is no evidence that suggests that mixing silica, mullite, and alumina would provide granules that contain mullite." Reply Br. 2. On this record, we do not find Appellant's arguments persuasive because they (i) fail to squarely address the rejection as set forth by the Examiner grounded on granules formed of a mixture rather than on a mixture of granules and (ii) provide no explanation why firing or sintering a mixture of silica, mullite, and alumina would not reasonably be expected to provide granules that contain mullite. Cf In re O'Farrell, 853 F.2d 894, 903-904 (Fed. Cir. 1988) ("Obviousness does not require an absolute predictability of success ... all that is required is a reasonable expectation of success."). Further, as to the rule set forth in Kerkhoven, we discern no reversible error where we are directed to no evidence that firing or sintering a mixture of silica, mullite, and alumina can not be done in a manner that does no more than fuse particles of silica, mullite, and alumina together. In this regard, Appellant's reliance on In re Lo, 2011 WL 4445443 (BPAI 8 Appeal2014-009322 Application 13/538,244 2011 ), in which the Examiner relied on multiple substitutions to a prior art invention, is wholly unfounded (id. at *2). For the reasons above, we are not persuaded that the Examiner erred reversibly in concluding that one of skill in the art, armed with the knowledge of Shiao and Mangold, would have been led to the subject matter of claims 1-3 and 6-14. Claims 4-5 Appellant argues that because neither Shiao nor Mangold teaches a composition including mullite crystallites, they consequently do not teach the recited aspect ratio of crystallites, and that the Examiner erred in relying on Shiao paragraphs 48--49 because that portion of Shiao relates to the aspect ratio of granules, not mullite crystallites within granules. Appeal Br. 16. Appellant further argues that Mangold fails to teach crystallites disposed within a granule. Reply Br. 3. Appellant fails, however, to squarely address the Examiner's determination that the aspect ratios of mullite crystallites formed by Mangold's process would reasonably be expected to be the same as those formed by that of the instant application because both treat a mixture of silicon oxides and aluminum oxides by heating where there is substantial overlap of the temperature ranges. Ans. 14-15 (citing In re Best, 562 F.2d 1252, 1255 (CCPA 1977)). In particular, Appellant has not explained why firing or sintering a mixture to provide granules with the same ratio of mullite, silica, and alumina would not reasonably result in mullite with the 9 Appeal2014-009322 Application 13/538,244 same or similar aspect ratios, i.e., at least 1.5 or at least 1.7 as required by claims 4 and 5, respectively. 8 Accordingly, on this record, we sustain the Examiner's rejection of claims 4 and 5. Claims 21-24 Appellant separately argues claim 21, claims 22 and 23, and claim 24 on the basis that the claims require the mullite crystallites to be dispersed within a matrix of non-mullite aluminosilicate or non-mullite silaceous materials rather than as a mixture of different granules (claim 21 ), on the basis of the matrix being amorphous (claims 22 and 23), and on the basis of the matrix being silica (claim 24). Appeal Br. 16-18. On this record, we do not find Appellant's arguments persuasive of reversible error because-as explained above-the rejection is not grounded on mixtures of different granules, but rather on forming ceramic granules including mullite and Appellant fails to provide any persuasive evidence for these granules to not include mullite crystallites dispersed within an amorphous matrix, including one of amorphous silica. Accordingly, we sustain the Examiner's rejections of claims 21-24. Claims 28-31 Claims 28-31 depend directly or indirectly from claim 1 and further limit the amounts of alumina (claims 28 and 30) or silica (claims 29 and 31) present in the granules. 8 We note further that Appellant's comparative Examples 9 and 10, which are both commercially available electrical insulator porcelain (Spec. ,-i 65), include mullite crystallites having aspect ratios of >2 and> 3, respectively (Spec. ,-i 73, Table 3). 10 Appeal2014-009322 Application 13/538,244 Appellant argues that neither Shiao nor Mangold teach compositions that include 40-50 wt% alumina or any teaching or suggestion to modify the weight percent of alumina from the 65-85 wt% found in Mangold's compositions or from that found in Shiao' s aluminum oxide granules. Appeal Br. 18 (citing Shiao ,-i 48). Appellant likewise argues neither Shiao nor Mangold teach granules that include 49-60 wt% silica. Appeal Br. 18. In response to the Examiner's rationale grounded on combining silica, mullite, and alumina together in the granules (Ans. 17-19), Appellant argues there is no rational explanation for deviating from the percentages used "to achieve 3 :2 mullite, which includes about 71 % alumina" and that "even if [the skilled person] did alter the mixed oxide composition taught by Mangold, then there is no evidence that the desired mullite would be obtained." Reply Br. 4-5. Appellant's argument that there is no basis to deviate from the percentages of Mangold fails, however, to account for the reasons to do so set forth by the Examiner, including in the rejection of claim 1, and to the combination of silica, mullite, and alumina together in granules being prima facie obvious on the basis that each are useful to provide solar reflectivity. Further, Appellant's contention that there is no evidence that the desired mullite would be obtained is unpersuasive of reversible error where it is not supported by persuasive argument or evidence. See, e.g., In re 0 'Farrell, 853 F.2d at 903-904. Further, Appellant's arguments fail to "take account of the inferences and creative steps that a person of ordinary skill would employ" in overcoming difficulties. KSR Int'l. Co. v. Teleflex Inc., 550 U.S. at 418. 11 Appeal2014-009322 Application 13/538,244 For the reasons above, we are not persuaded that the Examiner erred reversibly in concluding that one of skill in the art, armed with the knowledge of Shiao and Mangold, would have been led to the claimed subject matter. Accordingly, we sustain the rejection of claims 28-31. Claim 20 Appellant contends the Examiner erred in rejecting independent claim 20 because neither Shiao nor Mangold teach granules that include mullite crystallites dispersed within a non-mullite matrix, neither teach nor suggest dispersing mullite particles within a matrix, and because merely mixing different granules together do not provide granules including mullite- crystallites dispersed within a non-mullite matrix. Appeal Br. 19. Appellant's arguments are not persuasive for the reasons set forth above, including that the arguments do not address the Examiner's reasoning grounded on forming a ceramic material including mullite crystallites. Claims 25-27 Appellant separately argues claim 25, claim 26, and claim 27 on the bases that the claims require the mullite crystallites to be dispersed within a matrix of non-mullite aluminosilicate or non-mullite silaceous materials (claim 25), on the basis of the matrix being amorphous (claim 26), and on the basis of the matrix being silica (claim 24). Appeal Br. 19-20. Appellant's arguments are not persuasive for the reasons set forth above in regard to the same arguments set forth in respect to claims 21-24. Claims 32-35 Claims 32-35 depend directly or indirectly from claim 20 and further limit the amounts of alumina (claims 32 and 34) or silica (claims 33 and 35) 12 Appeal2014-009322 Application 13/538,244 present in the granules. The composition ranges for the granules that are set forth are identical to those set forth in corresponding claims 28-31. Appellant reiterates the same arguments for these claims as set forth for corresponding claims 28-31, adding only the qualification as to Shiao's disclosure of aluminum oxide granules that they may include "impurities that may be present with known aluminum oxide granules." Compare Appeal Br. 20-21 with 18. Despite this statement adding a qualification as to purity, we find no cogent argument grounded on the contention that aluminum oxide granules include impurities (see generally Appeal Br.), and decline to infer any intended argument or to scour the record for support of an argument not made by Appellant. Gross v. Town of Cicero, Ill., 619 F.3d 697, 702 (7th Cir. 2010). It follows then that Appellant's arguments are not persuasive for the reasons set forth above in regard to the otherwise identical arguments set forth in respect to claims 28-31. CONCLUSION In view of the reasons set forth above, we affirm the Examiner's rejection of claims 1-14 and 20-35. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a)(l )(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation