Gregory Daniels

Patent Trials and Appeals Board

May 6, 2021

2020005577 (P.T.A.B. May. 6, 2021)

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.
14/685,003 04/13/2015 Gregory S. Daniels DANIBO.082C2 9756
20995 7590 05/06/2021
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
WALRAED-SULLIVAN, KYLE
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
05/06/2021 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):
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GREGORY S. DANIELS

Appeal 2020-005577
Application 14/685,003
Technology Center 3600
____________

Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and
CARL M. DEFRANCO, Administrative Patent Judges.

HOELTER, 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 21, 22, 24–32, 34–42, and 44–50,
which constitute all the claims pending in this application. See Final Act. 1
(Office Action Summary). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM the Examiner’s rejections of these claims.

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
S. Daniels.” Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to building ventilation
and specifically to roof ventilation.” Spec. ¶ 3. Apparatus claims 21, 31,
and 40 are independent. Claim 21 is illustrative of the claims on appeal and
is reproduced below.
21. A roof structure comprising:
a roof deck; and
a layer of roof cover elements spaced above the roof deck to
define an air layer between the roof deck and the layer of roof cover
elements, wherein at least some of the roof cover elements are each a
roof vent member, roof tile, sheeting, or shingle, each roof vent
member, roof tile, sheeting, or shingle having a stone coating on the
top surfaces thereof, the stone coating comprising a material that is
highly reflective of ultraviolet radiation, and wherein said at least
some of the roof cover elements comprise metal and do not comprise
asphalt.
EVIDENCE
Name Reference Date
Kennepohl et al.
(“Kennepohl”)
US 4,079,158 Mar. 14, 1978
Smith US 6,537,147 B2 Mar. 25, 2003
O’Hagin US 2007/0207725 A1 Sept. 6, 2007
O’Hagin et al. (“O’Hagin
’672”)
US 2008/0098672 A1 May 1, 2008
REJECTIONS
Claims 21, 22, 24–32, 34–42, and 44–50 (i.e., all the claims) are
rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject matter which
the applicant regards as the invention.
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Claims 21, 22, 24–32, 34–42, 44, and 46–49 are rejected under 35
U.S.C. § 103(a) as unpatentable over O’Hagin and Kennepohl.2
Claim 45 is rejected under 35 U.S.C. § 103(a) as unpatentable over
O’Hagin, Kennepohl, and O’Hagin ’672.
Claim 50 is rejected under 35 U.S.C. § 103(a) as unpatentable over
O’Hagin, Kennepohl, and Smith.

ANALYSIS
The rejection of claims 21, 22, 24–32, 34–42, and 44–50
as being indefinite
The Examiner finds that each independent claim (i.e., claims 21, 31,
and 40) employs the term “highly reflective.” Final Act. 2. The Examiner
states, “[t]he term ‘highly reflective’ is a relative term,” “is not defined by
the claim,” and “the specification does not provide a standard for
ascertaining the requisite degree” of reflectivity required to be “appraised of
the scope of the invention.” Final Act. 2–3. The Examiner further states, “it
is unclear as to what degree of reflectivity would constitute ‘highly’
reflective.” Final Act. 3; see also Ans. 4 (a skilled person “would not be
able to ascertain where on the scale from 0–100 ‘highly reflective’ falls”).
Additionally, the Examiner states that “there is no point of reference for
determining what the reflectivity is high with respect to.” Final Act. 3; see
also Ans. 4. In other words, as per the Examiner, “[a] person of ordinary
skill would be left to their own devices guessing as to what would constitute
a ‘highly reflective’ surface.” Ans. 4. In summation, the Examiner finds

2 We view the Examiner’s inclusion of claim 50 in the heading of the
rejection as a typographical error. See Final Act. 3.
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independent claims 21, 31 and 40 are indefinite and that “[c]laims 22, 24–
30, 32, 34–39, 41, 42, 44, and 46–50 are rejected as being dependent on a
rejected claim.”3 Final Act. 3.
Appellant disagrees with this conclusion, stating that “[t]he evidence
of record . . . clearly establishes that those of ordinary skill in the art
understand the term ‘highly reflective’ as used in the claims.” Appeal Br. 7;
see also Reply Br. 2–3. Appellant thereafter discusses the “evidence of
record,” which includes “the Industry Articles, Industry Standards, and
Inventor Declaration (all of which are discussed in more detail below and
included in the Evidence Appendix).” Appeal Br. 7; see also Reply Br. 3–5.
Regarding the “Industry Articles” first, Appellant references a
particular article that discusses “a credit for highly reflective roofs” in
accordance with ASHRAE 90.1-1999. Appeal Br. 10 (citation omitted).
This article continues, stating that “[materials with high solar-reflectance can
come in a range of colors, including many shades of gray and red.” Appeal
Br. 10. Appellant further addresses another article which, as per Appellant,
shows that “ASHRAE and IECC have ‘added a credit for highly reflective
roofs.’” Appeal Br. 10 (citation omitted).
The Examiner responds, stating that “[u]se of the phrase ‘highly
reflective’ does not equate to definiteness of the term, ‘highly reflective.”
Ans. 5. For example, the one article “merely states that a credit may be
provided for ‘highly reflective’ roofs, but makes no mention of what

3 It is noted that the Examiner did not include dependent claim 45 in the
above listing. However, as claim 45 depends directly from independent
claim 40, we view this omission as an oversight and understand, instead, that
claim 45 is also rejected for being dependent on a rejected claim.
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constitutes a ‘highly reflective’ roof.” Ans. 5. In other words, “[s]tating that
a credit may be provided does not identify to a person of ordinary skill any
manner by which a roof structure would be sufficiently reflective to obtain
such a credit.” Ans. 6. Appellant explains that “the Industry Articles have
been provided . . . and are cited here to show that those of ordinary skill in
the art use and understand the term ‘highly reflective’ to refer to compliance
with the Industry Standards.” Appeal Br. 11; see also Reply Br. 3–5.
Hence, now addressing the Industry Standards, Appellant elaborates
on the above statement declaring, “those of ordinary skill in the art can
readily determine whether a roofing element that includes a stone coating is
‘highly reflective’ or not, by determining if it complies with the Industry
Standards.” Appeal Br. 12; see also Reply Br. 3. However, any such
determination is made most difficult when “Appellant acknowledges that the
Industry Standards do not themselves use the term ‘highly reflective’.”
Appeal Br. 12. Instead, as per Appellant, such use “is not required in order
to find that use of the term ‘highly reflective’ in the claims is definite.”
Appeal Br. 12. Also complicating matters is Appellant’s additional
acknowledgement that this term “highly reflective” is “not explicitly defined
in the specification or claims.” Reply Br. 3. So, in effect, Appellant
employs a claim term that is admittedly not defined in Appellant’s filings
and is also not employed in the referenced Industry Standards, yet this term,
according to Appellant, is readily determinable by a skilled person and is
definite.
To better explain why a lack of a definition of “highly reflective” in
the Industry Standards (or Appellant’s Specification or the claims) is not
fatal to Appellant’s cause, Appellant states that this is “because the Industry
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Standards clearly define the parameters that must be met for compliance,”
and that “compliance with the Industry Standards is readily determinable by
those of ordinary skill in the art.” Appeal Br. 12; see also Reply Br. 3. We,
thus, are now encouraged to look to “the parameters that must be met for
compliance,” and not any explicit definition, for an understanding of “highly
reflective.” As understood, investigating the standards for compliance
requirements will aid in differentiating between “reflective” and “highly
reflective” material.
In one example, Appellant references “section 5.5.3.1.1 of ASHRAE”
which states “a. A minimum three-year-aged solar reflectance of 0.55” and
also “b. A minimum Solar Reflectance Index of 64.” Appeal Br. 12.
Another example provided is Appellant’s reference to “TABLE C402.2.1.1”
of IECC which lists: (i) “[t]hree-year aged solar reflectance of 0.55;” (ii)
[i]nitial solar reflectance of 0.70;” (iii) [t]hree-year-aged solar reflectance
index of 64;” and (iv) [i]nitial solar reflectance index of 82.” Appeal Br. 13.
The question then, one skilled in the art must ask, is which of these four
values is the threshold value between a surface that is merely “reflective”
and one that is “highly reflective.” The Industry Standards remain silent on
this point and, as admitted by Appellant, “do not themselves use the term
‘highly reflective.’” Appeal Br. 12.
Addressing this point, the Examiner states, “[f]irst, Industry Standards
provides no standard defining what constitutes ‘highly reflective,’” and
further, “[m]inimum roof reflectance is the exact opposite of what is
claimed, namely a ‘highly reflective’ roof.” Ans. 6. The Examiner’s
reasoning regarding this latter statement is that “[a] minimum roof
reflectance is the least roof reflectance allowed by the standard and makes
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no mention of, and has no bearing on, and cannot reasonably be considered
to be what constitutes a ‘highly reflective’ roof.” Ans. 6–7.
Appellant challenges this latter statement by the Examiner, arguing
that a skilled person “would have readily understood the term ‘highly
reflective’ to refer to a roof reflectivity that is at or above these minimum
roof reflectivity requirements.” Reply Br. 7 (emphasis added). In other
words, by Appellant’s argument, a reflectivity “at” a minimum value can be
deemed “highly” reflective, but at the same time, it would also be the
minimal reflectivity allowed.
In one sense, it appears that Appellant is overlooking their own claim
term “highly” by contending that “[t]hose of ordinary skill in the art
understood the term ‘highly reflective’ to refer to compliance with the
Industry Standards.” Reply Br. 7; see also id. at 4, 5. But yet, at the same
time, Appellant seeks to distinguish the prior art to Kennepohl (which
describes a “reflective” stone coating (Kennepohl 1:41–42; 8:63–65)) by
stating “nothing in Kennepohl describes that the ‘finely divided stone coated
on the weather-exposed surface’ is highly reflective.” Appeal Br. 18; see
also Reply Br. 11 (“Appellant has not claimed a stone coating having any
arbitrary level of reflectivity. Rather, Appellant’s claims recite, ‘stone
coating comprising a material that is highly reflective.’”).
Thus, we have the situation where Appellant distinguishes over
Kennepohl because Appellant recites “highly reflective” and that “highly
reflective” can be understood by a review of the Industry Standards, which
do not employ that term at all. Appellant does not contend that Kennepohl’s
“reflective” surface fails to meet the Industry Standards. Thus, Appellant
contends that their “highly reflective” surface means something different
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from Kennepohl’s usage,4 and that this different meaning can be ascertained
from the Industry Standards which do not employ that term, but instead
employ terms (i.e., “reflectance,” reflectivity”) similar to Kennepohl’s
“reflective.” It is difficult to conceive of a more circular rationale.
Perhaps to clarify the matter, Appellant addresses a “two-step logic”
relying on “Industry Articles and the Inventor Declaration as evidence that
those of ordinary skill in the art understand the term ‘highly reflective’ to
refer to compliance with the Industry Standards.” Reply Br. 4; see also id.
at 6, 9; Appeal Br. 13–15. As expressed above, however, mere use of the
term “highly reflective” in Industry Articles, and the lack of such usage in
Industry Standards, is not conducive to concluding that this is a term readily
understood by those having the appropriate skill set. Rather, it appears
instead, as expressed by the Examiner, that the term “highly reflective” is a
relative term whose meaning can vary from person to person. See Final Act.
2, 3; Ans. 4, 5.
As noted above, Appellant also references an Inventor Declaration for
support. See, e.g., Appeal Br. 7; Reply Br. 3–5. The statements made in this
Declaration, however, are mirror images of those already made above
regarding the Industry Articles and the Industry Standards. For example, the
Declaration addresses the same articles previously discussed while also
stating that a skilled person would “understand[] the meaning of the term
‘highly reflective’ in these articles even though these articles do not provide

4 As per Appellant, “the Examiner fails to address the fact that Appellant’s
stone coating is described as ‘highly reflective,’ while Kennepohl’s is
merely described as ‘reflective.’” Reply Br. 11; see also id. at 12
(“Kennepohl only describes a stone coating that is ‘reflective,’ not ‘highly
reflective,’ and Appellant maintains that this distinction is significant”).
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an explicit definition for the term.” Declaration ¶ 8. Furthermore, the
Declaration asserts that “these articles provide evidence that the use of the
‘term highly’ is readily understood.” Declaration ¶ 8. When discussing
Industry Standards, the Declaration addresses “section 5.5.3.1.1 of
ASHRAE” and also “Section C402.2.1.1 of IECC” which provides the table
identifying four different values also discussed above. See Declaration ¶ 10.
In short, the issues raised and matters discussed in the submitted Declaration
are those that have also been raised and discussed above.
We further note additional comments made by Appellant. On the one
hand, “Appellant asserts that the particular parameters that provide a
standard of degree for the term ‘highly’ in the claim are provided in the
Industry Standards.” Reply Br. 8. Thereafter, however, Appellant asserts,
“[a]s discussed above, Appellant does not assert that the Industry Standards
provide an explicit definition of ‘highly reflective’ using the term.” Reply
Br. 8. Thus, as discussed above, Appellant acknowledges that the Industry
Standards do not define this term and yet, by not using or defining “highly
reflective,” these standards, nevertheless, provide a degree of understanding
of it.
We are of the opinion that the Examiner has the better position in this
matter. As noted above, the Examiner states that “it is unclear as to what
degree of reflectivity would constitute ‘highly’ reflective.” Final Act. 3; see
also Ans. 4. Accordingly, and based on the record presented, we are not
persuaded that the claim term “highly reflective” is defined or can be
ascertained to the extent required by 35 U.S.C. § 112, second paragraph.
We sustain the Examiner’s rejection of claims 21, 22, 24–32, 34–42, and
44–50 (i.e., all the claims) as being indefinite.
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The rejection of claims 21, 22, 24–32, 34–42, 44, and 46–49
as unpatentable over O’Hagin and Kennepohl
Prior to expressing this rejection, the Examiner states, “[f]or purposes
of this examination (as it is not ascertainable what degree of reflectivity
constitutes highly reflective), this language will be interpreted as requiring a
reflective material.” Final Act. 3. In effect, for the Examiner to assess the
prior art, the Examiner is presuming the scope of indefinite claim language.
However, we are informed that “[i]f no reasonably definite meaning can be
ascribed to certain terms in the claim, the subject matter does not become
obvious-the claim becomes indefinite.” In re Wilson, 424 F.2d 1382, 1385
(CCPA 1970). In other words, we cannot sustain the rejection of these
claims under 35 U.S.C. § 103 because to do so would require speculation as
to the scope of the claims. See In re Steele, 305 F.2d 859 (CCPA 1962)
(holding that the Board erred in affirming a rejection of indefinite claims
under 35 U.S.C. § 103(a)).
Accordingly, because we sustain the Examiner’s rejection above of
claims 21, 22, 24–32, 34–42, and 44–50 (i.e., all the claims) as being
indefinite, the Examiner’s assessment of the subset of claims 21, 22, 24–32,
34–42, 44, and 46–49 under 35 U.S.C. § 103 relative to the combined
teachings of O’Hagin and Kennepohl must involve, to some degree,
speculation on the Examiner’s part. As per Wilson and Steele above, we
reverse the Examiner’s art rejection of these claims. It should be
understood, however, that our decision in this regard is based solely on the
indefiniteness of the claimed subject matter, and does not reflect on the
adequacy of the prior art evidence applied in support of the rejection.
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The rejection of (a) claim 45 as unpatentable over O’Hagin, Kennepohl, and
O’Hagin ’672; and, (b) claim 50 as unpatentable over O’Hagin, Kennepohl,
and Smith
Appellant does not separately argue the rejections of dependent claims
45 and 50. See Appeal Br. 18. Accordingly, we sustain their rejections for
the same reasons expressed above.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
21, 22, 24–
32, 34–42,
44–50
112 Indefinite 21, 22, 24–
32, 34–42,
44–50

21, 22, 24–
32, 34–42,
44, 46–49
103(a) O’Hagin,
Kennepohl
21, 22, 24–
32, 34–42,
44, 46–49
45 103(a) O’Hagin,
Kennepohl,
O’Hagin ’672
45
50 103(a) O’Hagin,
Kennepohl,
Smith
50
Overall
Outcome
21, 22, 24–
32, 34–42,
44–50

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