Gregory Cole

Patent Trials and Appeals Board

Feb 23, 2022

2022001564 (P.T.A.B. Feb. 23, 2022)

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 02/23/2022 Braxton Perrone, PLLC 5 Cowboys Way Suite 300, Unit 32 Frisco, TX 75034 EXAMINER MELLOTT, JAMES M ART UNIT PAPER NUMBER 1759 NOTIFICATION DATE DELIVERY MODE 02/23/2022 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 2022-001564 Application 15/853,740 Technology Center 1700 Before JAMES C. HOUSEL, N. WHITNEY WILSON, and LILAN REN, 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. 3, 7, 8. 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 2022-001564 Application 15/853,740 2 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for applying a coating to a surface, said method comprising: a. applying a first coating, wherein said first coating is an acrylic roof coating; b. 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; c. 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; d. allowing said second coating to cure such that when cured said second coating can stretch and return to its original shape without damage. Claims Appendix (Appeal Br. 16). REFERENCES The prior art references relied upon by the Examiner are: Name Reference Date Bialke US 5,957,386 Sept. 28, 1999 Fields US 6,245,850 Bl June 12, 2001 Hanrahan US 2006/0264563 Al Nov. 23, 2006 Knight US 2008/0038474 A1 Feb. 14, 2008 Subotic US 2015/0144250 Al May 28, 2015 REJECTIONS The Examiner rejects claims 1, 3-6, 8-11, and 19 under 35 U.S.C. § 103 as unpatentable in view of Knight and Subotic. Final Act. 3. Appeal 2022-001564 Application 15/853,740 3 The Examiner rejects claim 2 under 35 U.S.C. § 103 as unpatentable in view of Knight, Subotic, Hanrahan, and Fields. Final Act. 7. The Examiner rejects claim 7 under 35 U.S.C. § 103 as unpatentable in view of Knight, Subotic, and Bialke. Final Act. 8. OPINION Claim 1 Appellant argues that “Knight is directed toward ‘asphalt concrete’” and “cannot meet the limitation of stretching and returning to its original shape without damage.” Appeal Br. 7. Appellant argues that the Examiner reversibly erred by stating that “‘all organic bonds have stretching frequencies and thus organic materials (and polymeric materials) can be stretched by some degree . . . without causing damage.’” Id. Appellant argues that the Examiner’s generalization reads the limitation out of claim 1. Id. at 7-8. Appellant’s argument is unpersuasive. First and foremost, Appellant does not cite to any particular portions of Knight in support of the argument that Knight’s teaching is limited to “asphalt concrete.” See id. at 7. The phrase “asphalt concrete” does not appear in Knight.2 Knight states instead 2 In the Reply Brief, Appellant acknowledges that the “appeal brief . . . mistakenly used the term ‘asphalt concrete’ when Knight actually uses ‘asphalt cement.’” Reply Br. 3. An argument raised for the first time in a Reply Brief can be considered waived if Appellants do not explain why it could not have been raised previously. 37 C.F.R. § 41.41(b)(2); see Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative) (explaining that arguments and evidence not timely presented in the principal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) Appeal 2022-001564 Application 15/853,740 4 that “[t]he compositions and properties of aqueous asphalt emulsions are well known.” Knight ¶ 13. Such aqueous asphalt emulsions “are composed of three ingredients, asphalt, water[,] and emulsifier” as well as additional components such as “elastomeric polymers.” Id ¶¶ 13, 19. “Asphalt, which is sometimes known as ‘asphalt cement,’ is a colloid composed of several fractions, the major ones being asphaltenes and maltenes.” Id. ¶ 13. Appellant’s argument does not adequately explain why the recited “acrylic roof coating” excludes the prior art asphalt emulsion which may include elastomeric polymers. Appellant does not dispute Knight’s teaching that the prior art asphalt emulsion may include elastomeric polymers. Appellant does not address the Examiner’s findings that the prior art emulsion in Knight may be applied to both flexible and concrete surfaces. Compare Appeal Br. 7-8, with Final Act. 9 (citing Knight ¶¶ 7, 8, 12, 26). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a method of using that composition. See In re Skoner, 517 F.2d 947, 950 (CCPA 1975). Where, as here, the Examiner establishes a reasonable belief that the combined prior art teaches an identical process which would produce an identical result-that is, “when cured said second coating can stretch and return to its original shape without damage,”-the burden of proof shifts to Appellant to show that this characteristic or property is not possessed by the prior art. See In re (“Properly interpreted, the Rules do not require the Board to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause.”). In this case, the Examiner has not been afforded an opportunity to respond to the arguments regarding “asphalt cement” raised for the first time in the Reply Brief. We, therefore, consider the arguments timely raised in the Principal Brief only. Appeal 2022-001564 Application 15/853,740 5 Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellant has not carried that burden. Appellant next argues that “[c]laim 1 has the limitation wherein the first coating is a styrenated acrylic elastomeric roof coating.” Appeal Br. 8. Claim 1, as shown in the “Claims Appendix” attached with the Principal Brief filed by Appellant, however, does not recite this limitation. We, therefore, decline to consider a limitation not recited in the claim. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (rejecting appellant’s nonobviousness argument as based on limitation not recited in claim); In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of appellant’s arguments fail from the outset because, as the solicitor has pointed out, they are not based on limitations appearing in the claims.”). To the extent that the Examiner’s rejection relies on the combined teachings of Knight and Subotic, Appellant’s argument that a skilled artisan “would have no motivation to utilize the components of Subotic as the alleged benefits are already obtained by Knight” (id. at 9) is unpersuasive. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). In this case, the record supports the Examiner’s conclusion that the method recited in claim 1 is no more than “the predictable use of prior art elements according to their established functions.” Id. at 17. Appellant also argues that “Knight teaches away from the vapor permeable asphalt emulsion taught by Subotic” because “Knight . . . discloses a waterproof surface.” Appeal Br. 9. Appellant, however, does not address the Examiner’s finding that Subotic teaches both water permeable Appeal 2022-001564 Application 15/853,740 6 and water impermeable coatings. Compare id., with Final Act. 10-11 (citing Subotic ¶¶ 27, 43). The record supports the Examiner’s finding that Subotic is not limited to water permeable coatings. Subotic ¶ 27 (“The term ‘asphalt- membrane system’ as used herein represents a combination of a membrane, either water vapor permeable or impermeable, having at least one surface coated with an asphalt-emulsion adhesive[.]”), ¶ 43 (“In some embodiments, the membrane can be water vapor permeable, thus forming a system that can regulate water vapor in a building. In some embodiments, the membrane can be water vapor impermeable, and can be used, for example, in roofing where regulation of water vapor may not be required.”). Appellant lastly argues that the prior art does not teach or suggest “applying a second coating of an acrylic roof coating atop a first coating of an acrylic roof coating.” Appeal Br. 10. To the extent that Appellant argues that claim 1 requires the second coating to be applied directly on top of the first coating, without any intermediate layer (although the argument does not clearly state so), the claim language does not require such a narrow reading. See id. (acknowledging that Knight describes applying an asphalt emulsion followed by a reinforcing layer after which “[t]he process was then repeated”); see also Knight ¶ 35 (“Two additional scrim/asphalt plies were then applied in the same way.”). 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, wherein said first and second coating are white, and wherein said surface comprises a roof, and wherein said first and second coating comprises a protective roofing coating.” Appeal 2022-001564 Application 15/853,740 7 Appellant argues that the Examiner reversibly erred because “[t]he Examiner refuses to acknowledge that concrete is not an elastomeric coating as required by the claim.” Appeal Br. 11. We are not persuaded by this argument, as analyzed above with regard to claim 1. Appellant’s argument that the “Examiner has not provided anything to suggest that Knight can utilize titanium dioxide, or that the addition of titanium dioxide will 1) yield a white product, or 2) not ruin the function and purpose of Knight” (id.) is unpersuasive. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. In this case, the Examiner’s finding that all the recited steps are known in the art is supported by the record. Appellant, therefore, bears the burden of providing factual evidence of nonobviousness. Ex parte Phillips, 28 USPQ2d 1302 (BPAI 1993). Appellant has not carried that burden. The rejection of claim 2 is sustained. Claim 4 Claim 4 depends from claim 1 and additionally recites a “step of applying a quick-set formula after step c).” Appellant argues that the Examiner’s finding that Knight teaches applying a breaker “does not qualify as claim 1 requires the formula be applied ‘atop said first coating’ where the coating is the acrylic roof coating.” Appeal Br. 12. Appellant’s argument is conclusory and unpersuasive. Appellant’s argument is unpersuasive also because the argument does not address Knight’s embodiments of either “applying the emulsion breaker to the substrate before the aqueous asphalt emulsion is applied” or “applying the emulsion breaker directly to the aqueous asphalt Appeal 2022-001564 Application 15/853,740 8 emulsion after the emulsion is applied to the substrate and before it is dried.” Knight ¶ 24 (cited in Final Act. 5). Appellant also argues that the prior art does not teach “two applications of quick-set formula, each onto an acrylic roof coating.” Id. Appellant’s arguments are unpersuasive. “It is well settled that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” In re Harza, 274 F.2d 669, 671 (CCPA 1960). The argument is unpersuasive also because it does not address the Examiner’s fact findings with regard to paragraphs 24, 25, and 37 of Knight. Compare id. (disagreeing with the Examiner that paragraphs 24-26 of Knight teach the recited limitation without adequately explaining why the Examiner erred), with Final Act. 5 (citing various portions of Knight including paragraphs 24, 25, and 37 in support of the rejection). The rejection of claim 4 is sustained. Claim 5 Claim 5 depends from claim 1 and additionally recites “said first and second coating are a liquid-applied seamless membrane used to coat roofs.” Appellant argues that the Examiner erred because the “Examiner has already admitted, in claim 1, that Knight failed to teach the requirement of claim 1 wherein ‘said first coating is an acrylic roof coating.’” Appeal Br. 12. Appellant’s argument is unpersuasive because it is unsupported by the record. The Examiner cites Knight paragraphs 34, 35, and 37 for the teaching of “applying a first coating of asphalt emulsion.” Final Act. 3. Appellant next argues that claim 5 “does not recite that the coating comprise[s] a liquid-applied seamless membrane” but rather “recites that the coatings are a liquid-applied seamless membrane.” Appeal Br. 13. To the Appeal 2022-001564 Application 15/853,740 9 extent Appellant argues that the coating includes only a liquid-applied seamless membrane without any other components, the open-ended claim language is not limited to such a narrow scope. See AFG Industries, Inc. v. Cardinal IG Co., Inc., 239 F.3d 1239, 1244-45 (Fed. Cir. 2001) (“When a claim uses an ‘open’ transition phrase, its scope may cover devices that employ additional, unrecited elements. . . . In contrast, ‘closed’ transition phrases such as ‘consisting of’ are understood to exclude any elements, steps, or ingredients not specified in the claim.”). Appellant lastly argues that paragraphs 7, 12, 29, and 39 of Knight do not teach or suggest this claim limitation. Appeal Br. 13-14. A prior art reference need not use the identical claim term to teach that particular claim term. In re Schaumann, 572 F.2d 312, 317 (CCPA 1978) (holding the teaching need not be in ipsissimis verbis). Appellant’s argument does not distinguish, structurally or otherwise, the recited “liquid-applied seamless membrane” from that taught in Knight and is therefore unpersuasive. The rejection of claim 5 is sustained. Claim 7 and Remaining Claims Appellant does not separately argue the remaining claims and they stand or fall with claim 1. See Appeal Br. 6-14, 11 (listing the rejection of claim 7 under a separate heading but arguing only that the arguments for claims 1 and 2 are incorporated by reference); see also 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION The Examiner’s rejections are affirmed. Appeal 2022-001564 Application 15/853,740 10 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-6, 8- 11, 19 103 Knight, Subotic 1, 3-6, 8- 11, 19 2 103 Knight, Subotic, Hanrahan, Fields 2 7 103 Knight, Subotic, Bialke 7 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