Gregory Cole

Patent Trials and Appeals Board

May 12, 2020

2020002063 (P.T.A.B. May. 12, 2020)

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.
15/853,740 12/23/2017 Gregory Cole BCOLE.00009 5648
120981 7590 05/12/2020
Braxton Perrone, PLLC
5000 Legacy Drive
Ste 465
Plano, TX 75024
EXAMINER
MELLOTT, JAMES M
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
05/12/2020 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):
braxton@braxtonperrone.com
butz@braxtonperrone.com
perrone@braxtonperrone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY COLE
Appeal 2020-002063
Application 15/853,740
Technology Center 1700
Before N. WHITNEY WILSON, LILAN REN, and
MICHAEL G. MCMANUS, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11 and 19. See Final Act. 4, 6, 7. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Gregory
Cole.” Appeal Br. 3.
Appeal 2020-002063
Application 15/853,740

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CLAIMED SUBJECT MATTER
The claims relate to “a system and method for coating a surface” – in
particular – a roof. See Spec. ¶¶ 2, 10; Fig. 1. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for applying a coating to a surface, said method
comprising:
d. applying a first coating, wherein said first coating is an
acrylic roof coating;
e. applying a quick-set formula atop said first coating,
wherein said quick-set formula sets said first coating, and
wherein said quick-set formula comprises a brine solution;
f. applying a second coating atop said first coating, and
wherein said second coating is an acrylic roof coating, and
wherein said acrylic roof coating is an elastomeric coating which
allows said acrylic roof coating to stretch when set.
Claims Appendix (Appeal Br. 16).
REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Bialke US 5,957,386 Sep. 28, 1999
Knight US 2008/0038474 A1 Feb. 14, 2008

REJECTIONS
The Examiner rejects claims 1–6, 8–10, and 19 under 35
U.S.C. § 102(a)(1) as anticipated by Knight. Final Act. 4.
The Examiner rejects claims 7 and 11 under 35 U.S.C. § 103 as
unpatentable in view of Knight and Bialke. Final Act. 6, 7.
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Application 15/853,740

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OPINION
Claim 12
Appellant argues that the recited “acrylic roof coating” requires that
“the coating is a specific type of coating: an acrylic roof coating” which is
not disclosed by Knight. Appeal Br. 6. Appellant argues that the recited
“acrylic roof coating” differs from a roof coating that comprises acrylic in
both scope and meaning. Id. Appellant argues to distinguish between the
recited “first coating is an acrylic roof coating” and a roof coating that
comprises acrylic. Id. at 6–7.
Appellant, however, does not provide a definition of the recited
“acrylic roof coating.” See id. Appellant does not explain why the recited
“acrylic roof coating” excludes a roof coating that includes acrylic.
Appellant does not cite to the Specification in support of the argument. The
Specification, in fact, broadly provides that “[t]he acrylic coating can
comprise any traditional acrylic coating typically used on roofs. As used
herein an acrylic coating refers to a liquid-applied seamless membrane used
to coat roofs.” Spec. ¶ 12 (cited in Appeal Br. 4).
The Declaration submitted by the inventor Mr. Gregory Cole
(“Decl.”) likewise does not support the argument. Mr. Cole acknowledges
that the prior art asphalt contains 1.5% polyacrylic acid. Decl. ¶ 5. Mr. Cole
states, without elaboration, that a skilled artisan such as himself would not
have considered the prior art composition “an acrylic roof coating” as recited
in claim 1. Id (stating only that “[a]n asphalt emulsion is completely

2 Appellant does not separately argue for claims 1, 5, 6, 8, 9, 10, and 19 and
they stand or fall with claim 1. See Appeal Br. 6–9; see also
37 C.F.R. § 41.37(c)(1)(vii).
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Application 15/853,740

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dissimilar from what is known as an acrylic coating” and a skilled artisan
would not consider the prior art composition an acrylic coating).
Given the Declaration is unsupported by factual evidence and is
conclusory, we are not persuaded that the Examiner reversibly erred in the
evaluation of the Declaration. See Ans. 3. As the Examiner points out, claim
1 does not require the recited “acrylic roof coating” to have any particular
characteristic such as a particular concentration of the acrylic. Final Act. 8.
No reversible error has been identified in the Examiner’s finding that the
prior art composition discloses the recited “acrylic roof coating.”
Appellant next argues that the Examiner reversibly erred in finding
that the prior art discloses the recited “elastomeric coating.” Appeal Br. 8.
Appellant argues that claim 1 “requires that the entire coating be an
elastomeric coating.” Id.
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). Claim 1, as it is currently written, requires
no more than that the “acrylic roof coating is an elastomeric coating.”
Paragraph 12 of the Specification, cited by Appellant as written description
support for claim 1, provides only that “[i]n one embodiment the coating
comprises an elastomeric coating which allows the material to stretch and
return to its original shape without damage.” Appellant’s argument that the
entire coating be an elastomeric coating is unpersuasive as it is supported by
neither the plain claim language nor the Specification.
Appellant lastly argues that the Examiner reversibly erred in finding
that the prior art elastomeric coating would inherently be capable of
“allow[ing] said acrylic roof coating to stretch when set” as recited in claim
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Application 15/853,740

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1. Appeal Br. 8. Appellant presents an example of “a rigid concrete pillar
which includes 5 parts per billions of an elastomeric polymer” as evidence
of a lack of the stretching capability. Id. Appellant, however, does not
explain why this example is relevant to the prior art Knight cited in support
of the rejection. Id. As the Examiner points out, the anticipation rejection is
based on Knight’s disclosure of about 24 wt% of the elastomeric polymer in
the set coating. Ans. 4–5.
In any event, “the absence of a disclosure in the prior art relating to
function does not defeat the Board’s finding of anticipation.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In this case, the
patentability of process claim 1 is based on the recited steps and not the
characteristic or function of the elastomeric coating.
Based on the foregoing, the rejection of claim 1 is sustained.
Claim 2
Claim 2 depends from claim 1 and additionally recites “wherein said
first and second coating are the same coating, and wherein said surface
comprises a roof, and wherein said first and second coating comprises a
protective roofing coating.”
Appellant argues that the Examiner reversibly erred because the prior
art does not disclose applying a quick-set formula to the first coating. Appeal
Br. 9. We are not persuaded by the argument because it is incommensurate
in scope with the claim which recites the “first and second coating are the
same coating.” Appellant’s argument is unpersuasive also because the
argument does not address the Examiner’s fact findings with regard to the
prior art examples in support of the rejection. Compare id. (arguing that
paragraphs 34, 35, and 37 of Knight do not disclose the recited limitations),
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Application 15/853,740

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with Final Act. 4 (citing various portions of Knight including paragraphs 24
and 25 in support of the rejection), 9.
Claim 3
Claim 3 depends from claim 1 and additionally recites “wherein said
quick-set formula sets said first coating in under 15 minutes.”
Appellant acknowledges that Knight discloses that “the asphalt
emulsion was set up in 5 minutes after application” but argues that the prior
art asphalt emulsion is the second coating instead of the first. Appeal Br. 10.
This argument, however, is unpersuasive because it does not explain why the
capability of the quick-set formula would differ based on the sequence in
which the coatings are applied. The argument does not address the
Examiner’s findings with regard to Knight Example 1 in support of the
rejection. See id. (discussing only Knight Example 2); compare Ans.
(analyzing Knight Examples 1 and 2 in support of the rejection of claim 3),
with Reply Br. 4–5 (discussing only Knight Example 2). No reversible error
has therefore been identified here.
Claim 4
Claim 4 depends from claim 1 and additionally recites “step d) of
applying a quick-set formula after step c).”3
Appellant does not raise separate arguments for claim 4. See Appeal
Br. 11 (“As noted above, however, Knight fails to disclose the limitation of
applying a second coating wherein the second coating is an acrylic roof
coating and thereafter applying a quick-set formula.”). We sustain the
rejection of claim 4 for the reasons provided supra.

3 Should prosecution continue, the Examiner and Appellant may wish to
reconsider this claim language because claim 1 recites only steps d, e, and f.
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Claim 7
Claim 7 depends from claim 1 and additionally recites “wherein said
applying of steps a, b, and c comprise spraying with a single spray gun.”4
Appellant argues that Knight teaches away from the recited single
spray gun. Appeal Br. 12. As support, Appellant cites Knight’s disclosure
which states that “[t]wo-component sprayers are expensive and difficult to
operate and hence beyond the purview of most roofing contractors.” Id.
(citing Knight ¶ 2).
“Under the proper legal standard, a reference will teach away when it
suggests that the developments flowing from its disclosures are unlikely to
produce the objective of the applicant’s invention. A statement that a
particular combination is not a preferred embodiment does not teach away
absent clear discouragement of that combination.” Syntex (U.S.A.) LLC v.
Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (citations omitted).
In this case, the Examiner finds that Bialke teaches the use of a single
spray gun “is more convenient for users and provides higher efficiency when
coating.” Final Act. 6–7 (citing Bialke 6:23–37 and providing a rationale to
combine the references). Although Knight states that a “[t]wo-component
sprayers are expensive and difficult to operate,” (Knight ¶ 2), economy and
ease of operability are not limitations of claim 7. The record therefore does
not show that “the line of development flowing from the reference’s
disclosure is unlikely to be productive of the result sought by the applicant.”
See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). We accordingly sustain
the rejection of claim 7.

4 Should prosecution continue, the Examiner and Appellant may wish to
reconsider this claim language because claim 1 recites only steps d, e, and f.
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Claim 11
Claim 11 depends from claim 1 and additionally recites “wherein said
applying of step c) occurs within 15 minutes after said applying of step a).”5
Appellant acknowledges that each layer in Knight is applied in less
than 24 hours and that “15 minutes does fall within a claim of less than 24
hours.” Appeal Br. 13, 14. Appellant, however, argues that Knight is not
specific enough to teach or suggest the much smaller range of 15 minutes.
Id.
“[A] prior art reference that discloses a range encompassing a
somewhat narrower claimed range is sufficient to establish a
prima facie case of obviousness. That is not to say that the
claimed composition having a narrower range is unpatentable.
Rather, the existence of overlapping or encompassing ranges
shifts the burden to the applicant to show that his invention
would not have been obvious.”

In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003). In this case, Appellant has
not presented evidence to rebut the prima facie case of obviousness and
therefore failed to carry the burden to show that claim 11 would not have
been obvious. We sustain the Examiner’s rejection as a result.
CONCLUSION
The Examiner’s rejection is affirmed.
More specifically,

5 Should prosecution continue, the Examiner and Appellant may wish
toreconsider this claim language because claim 1 recites only steps d, e, and
f.
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Application 15/853,740

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–10,
19
102 Knight 1–6, 8–10,
19

7, 11 103 Knight, Bialke 7, 11
Overall
Outcome:
1–11, 19

TIME PERIOD FOR RESPONSE
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