Robert L. JenkinsDownload PDFPatent Trials and Appeals BoardJul 30, 201914551049 - (D) (P.T.A.B. Jul. 30, 2019) Copy Citation 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. 14/551,049 11/23/2014 Robert L. Jenkins 2014-138 2331 20306 7590 07/30/2019 MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP 300 S. WACKER DRIVE 32ND FLOOR CHICAGO, IL 60606 EXAMINER RIVERA, JOSHEL ART UNIT PAPER NUMBER 1746 MAIL DATE DELIVERY MODE 07/30/2019 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT L. JENKINS1 ____________ Appeal 2018-000901 Application 14/551,049 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and LILAN REN, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–20. An oral hearing was held on July 25, 2019. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE, but we enter a NEW GROUND OF REJECTION for claim 1 pursuant to 37 C.F.R. § 41.50(b). 1 The Appellant is the Applicant, CertainTeed Corporation, which is also identified as the real party in interest. See Br. 2. Appeal 2018-000901 Application 14/551,049 2 BACKGROUND The subject matter on appeal relates to methods of making asphalt shingles. E.g., Spec. 2:6–11; Claim 1. Claim 1 is reproduced below from page 19 (Claims Appendix) of the Appeal Brief: 1. A method of making an asphalt shingle in a manufacturing environment, in which the shingle has a headlap region and a tab region, with granules applied to an upper surface of the shingle that is to be weather-exposed in the installed condition on a roof, the method comprising: (a) providing a shingle-forming layer comprised of shingle reinforcement material impregnated with a bitumen material, the layer having a butt region and a tab region, and including the step of delivering the layer along a predetermined path; (b) providing a layer of granules on an upper surface of the shingle-forming layer; (c) applying a substrate layer with a plurality of indicators carried thereby to the shingle-forming layer, with the indicators being provided at predetermined spaced apart distances from each other; (d) sensing the locations of the indicators; (e) then actuating the placement of adhesive zones onto the upper surface of headlap portions of the shingle-forming layer and synchronizing the placement of the adhesive zones on the upper surface of the shingle-forming layer in response to the sensing step of clause (d); and (f) cutting the shingle-forming layer into individual shingles. Appeal 2018-000901 Application 14/551,049 3 REJECTIONS ON APPEAL The claims stand rejected as follows: 1. Claims 1–20 under 35 U.S.C. § 103(a) as unpatentable over Kalkanoglu ’731 (US 2006/0260731 A1, published Nov. 23, 2006) in view of Kalkanoglu ’674 (US 2004/0083674 A1, published May 6, 2004); 2. Claims 1–20 for nonstatutory double patenting over claims 1, 4, and 19 of Kalkanoglu ’622 (US 7,510,622 B2, issued Mar. 31, 2009) in view of Kalkanoglu ’674. ANALYSIS As an initial matter, we observe that Kalkanoglu ’622—the claims of which form the basis for the double patenting rejection—is the patent that issued from Application No. 10/544,567, which is the same application that led to the published application that is Kalkanoglu ’731—the primary reference in the § 103 rejection. The disclosure of Kalkanoglu ’731 and Kalkanoglu ’622’s claims, the primary references in Rejections 1 and 2, respectively, are the same in relevant regards. The Examiner’s Rejections, the Appellant’s arguments, and the discussion in the Examiner’s Answer are the same for both Rejections 1 and 2 and do not identify any differences between Kalkanoglu ’731 and the claims of Kalkanoglu ’622 that are material to the patentability of any claim on appeal. Accordingly, below we address Rejection 1 and Kalkanoglu ’731, and because Rejection 2 is materially the same as Rejection 1, Rejection 2 will stand or fall with Rejection 1.2 2 The named inventor of the application before us in this appeal is a named inventor of both Kalkanoglu ’622 and Kalkanoglu ’731. Appeal 2018-000901 Application 14/551,049 4 The Examiner finds that Kalkanoglu ’731 teaches a method comprising most of the steps of claim 1, including steps of applying a substrate layer with a plurality of indicators, sensing the locations of the indicators, and actuating “subsequent shingle-completion steps as a function of the placement” of the indicators. Ans. 5–6.3 The Examiner finds that Kalkanoglu ’731 “fails to explicitly disclose that one of the shingle- completion steps actuated as a function of the placement of the marks on the shingle forming layer comprises the placement of adhesive zones onto the upper surface of the headlap” as required by claim 1. Id. at 6. The Examiner finds that Kalkanoglu ’674 “teaches a method of making shingles (Abstract) that comprises the step of applying adhesives in the headlap area.” Id. The Examiner concludes that it would have been obvious to a person having ordinary skill in the art to apply adhesive to shingles as taught by Kalkanoglu ’674 in the method of Kalkanoglu ’731 because “it reduces the reliance on a roofer having to fasten via nails, staples or the like through a narrow headlap zone of a posterior shingle layer in order to secure the posterior shingle layer to a roof (Abstract).” Id. at 7. That rationale is not persuasive for reasons consistent with those argued by the Appellant. See Br. 7, 11. Kalkanoglu ’674 concerns “laminated shingle[s]” and explains that such shingles possess an anterior 3 Our citations to “Ans.” are to the Examiner’s Answer entered December 2, 2016. The prosecution history of the application on appeal includes an entry labeled “2nd or Subsequent Examiner’s Answer to Appeal Brief” dated February 14, 2017, but there does not appear to be an actual Examiner’s Answer associated with that entry, and the entry instead appears to be an “acknowledge[ment of an information disclosure statement] filed January 21, 2016.” Appeal 2018-000901 Application 14/551,049 5 layer and a posterior layer joined together by an adhesive that may fail under hot conditions on steep roofs. See, e.g., Kalkanoglu ’674 Fig. 4 (depicting anterior and posterior layers 71 and 72), Fig. 5 (depicting anterior and posterior layers 91 and 92), ¶ 8, ¶ 9. Kalkanoglu ’674 discloses that such shingles have a “common bond or headlap area 73,” see, e.g., id. Fig. 4, ¶ 6, in which the anterior and posterior layers overlap, forming narrow “nailing or stapling zone,” id. ¶ 26, and that, when such shingles are fastened to roofs, it is problematic if the fastener “pass[es] through only the anterior shingle layer, and do[es] not intercept the upper portion of the posterior shingle layer” because the posterior layer may detach, “compromising the quality of the roof,” id. ¶¶ 6–8. To ameliorate that problem, Kalkanoglu ’674 discloses the use of a “stronger adhesive” applied to tabs 59 that will prevent detachment of the posterior layer even when the fastener (e.g., nail or staple) fails to pass through the posterior layer. Id. ¶ 9; see also, e.g., Figs. 3, 4. Thus, Kalkanoglu ’674 is not concerned with attaching overlying courses of multiple shingles on a roof, as the Appellant’s disclosure is. See Spec. 1:31–2:17. Kalkanoglu ’674 is concerned with preventing the delamination of anterior and posterior layers of a single laminate shingle when a fastener (such as a nail) fails to pass through both layers during shingle installation. See Kalkanoglu ’674 ¶¶ 8–9. With that understanding of Kalkanoglu ’674, the Examiner’s determination that a person of ordinary skill in the art would have combined Kalkanoglu ’731 and Kalkanoglu ’674 to “reduce[] the reliance on a roofer having to fasten via nails, staples or the like through a narrow headlap zone of a posterior shingle layer,” is not sufficiently supported. The Examiner Appeal 2018-000901 Application 14/551,049 6 does not assert that the relied-upon process steps of Kalkanoglu ’731 particularly concern laminated shingles, so it is unclear why Kalkanoglu ’674’s disclosure of using stronger adhesive to reduce delamination in laminated shingles would have been relevant to the process of Kalkanoglu ’731. Moreover, claim 1 requires that the adhesive is placed “onto the upper surface of headlap portions of the shingle-forming layer,” but the adhesive in Kalkanoglu ’674 that is relevant to the Examiner’s stated reason to combine is placed on tabs 59, see Fig. 4 (circular dots 75), not the headlap portion of the shingle. The Examiner fails to explain why it would have been obvious to move the adhesive of Kalkanoglu ’674 on which the Examiner relies (circular dots 75) from a tab to a headlap portion. We recognize that Kalkanoglu ’674 discloses a conventional adhesive (S3 applied by roller R3) that is in the headlap area, but that is not the adhesive that “reduces the reliance on a roofer having to fasten via nails, staples or the like through a narrow headlap zone,” which is the basis for the Examiner’s stated reason to combine. See Kalkanoglu ’674 ¶ 30 (disclosing that adhesive spots 75 applied to tabs 59 “have a heat resistance at a temperature level that is higher than the heat resistance of the adhesive of the strips S1, S2, S3 . . . .”). Even were adhesive strip S3 the adhesive that is relevant to the Examiner’s stated reason to combine, that strip appears to cross the entire width of the shingle (see Kalkanoglu ’674 Fig. 3 (showing strips S1, S2, and S3 being applied by rollers R1, R2, and R3), Fig. 4 (showing strips S1 and S2 crossing entire width of anterior layer of shingle), see also id. ¶ 29 (disclosing that strip S3 is applied by roller R3 “as the sheet of shingle material 31 moves leftward”)), and does not have the “predetermined spaced-apart distances” required by claim 1. Appeal 2018-000901 Application 14/551,049 7 In the Response to Argument Section of the Answer, the Examiner asserts that Kalkanoglu ’731 concerns “adding decorative elements” to shingles, and “it is this need of adding decorative elements where there would be a need to use an adhesive over nails, staples or the like as commonly used.” Ans. 11. However, Kalkanoglu ’731 discloses that “when decorative granules are to be applied to a shingle, they are generally only applied to a tab region, because that is the region of the shingle that will be visible.” Kalkanoglu ’731 ¶ 4. The Examiner fails to explain how Kalkanoglu ’731’s disclosure of decorative elements would have led to the application of adhesive to the headlap region, as required by claim 1. On this record, the Examiner has not sufficiently established how the combined references would have led to the subject matter of claim 1. Accordingly, we reverse the Examiner’s stated rejection. Because all other claims on appeal depend from claim 1, directly or indirectly, we likewise reverse the Examiner’s rejection of claims 2–20. New Ground of Rejection Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over Kalkanoglu ’731, Kalkanoglu ’674, and the Applicant’s Admitted Prior Art (“AAPA”) (Spec. 1:31–2:4). Consistent with the Examiner’s findings, Kalkanoglu ’731 discloses a method that comprises the steps of claim 1 except that Kalkanoglu ’731 generically discloses that the indicators and sensors are used for “shingle- completion steps” and does not expressly disclose that placement of adhesive zones is a “shingle-completion step[].” Ans. 5–6. We adopt the Examiner’s findings concerning Kalkanoglu ’731’s disclosure of steps Appeal 2018-000901 Application 14/551,049 8 corresponding to the claimed “providing,” “applying,” “sensing,” and “cutting” steps. See id. Although Kalkanoglu ’731 does not expressly disclose that placement of adhesive zones is a shingle-completion step, the term “shingle-completion step” encompasses such a step because Kalkanoglu ’731 indicates that shingle-completion steps may include both functional and decorative steps. See Kalkanoglu ’731 ¶¶ 40–41. The AAPA discloses that “it is known to provide wind resistance for tabs of shingles that are installed on a roof,” and that “[s]uch resistance is usually effected by application of adhesive beneath the tab portions of shingles, generally at the lower ends of the tabs, so that the lower ends of the tabs are adhesive secured to headlap portions of shingles in a next- underlying course of field shingles of a roof covering.” Spec. 1:31–2:4. Thus, the AAPA discloses that a typical method of providing wind resistance to a shingle tab is to adhere the tab to the headlap portion of shingles in the next underlying course. Id. The AAPA indicates that the adhesive is usually applied “beneath the tab portions” rather than “onto the upper surface of headlap portions” as recited by claim 1, but the AAPA discloses that the end result is adherence of the tabs to the headlap portion. Id. Kalkanoglu ’674 teaches the use of adhesive to adhere anterior and posterior layers of a laminate shingle together. E.g., Kalkanoglu ’674 ¶¶ 9, 26–30. Kalkanoglu ’674 indicates that when applying such adhesive, it can be applied to the lower surface of the top layer or to the top surface of the bottom layer. Kalkanoglu ’674 ¶ 30 (“Alternatively, the adhesives that form strips S1, S2, S3 and spots 75 may be applied to the anterior surface of the Appeal 2018-000901 Application 14/551,049 9 posterior shingle layer . . . .”). Kalkanoglu ’674 indicates that adhesives can be applied as “drops or spots” or “strips,” “as may be desired.” Id. A person of ordinary skill in the art would have understood that the shape and area of the adhesive are variables that affect desired adhesion strength. See id. In view of the disclosures of the combined prior art, a person of ordinary skill in the art, through the use of only ordinary creativity, would have understood that placement of adhesive zones, which are used to provide wind resistance to shingle tabs, see Spec. 1:31–2:4, is a “shingle- completion” feature as broadly contemplated by Kalkanoglu ’731. A person of ordinary skill in the art would have understood that adhesive zones could be applied to the bottom surface of the tab or to the top surface of the headlap portion to achieve adhesion of tabs to the headlap portion. See Kalkanoglu ’674 ¶ 30; Spec. 1:31–2:4. A person of ordinary skill in the art would have been motivated to use Kalkanoglu ’731’s indicator and sensor method to apply adhesive to a headlap portion of the shingle to achieve precise, automated application of adhesive to provide desired adhesion results and provide wind resistance to shingle tabs. See Kalkanoglu ’731 ¶ 10 (disclosing use of method to “control[] the exact application” of shingle-completion features), ¶¶ 40–41 (disclosing use of sensor 30 to detect indicators and “control[ling] the application of various other shingle- completion features,” including functional features such as control of humidity environment). The use of spaced dots of adhesive, as opposed to, e.g., a continuous strip, would have been desirable, for example, to conserve adhesive material and potentially reduce oozing of excess material. This combination would have been the use of a known method (Kalkanoglu ’731) adapted to known Appeal 2018-000901 Application 14/551,049 10 shingle-completion steps (application of adhesive zone to headlap portion of shingle) with predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416–21 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Thus, the subject matter of claim 1 would have been obvious to a person of ordinary skill in the art. We leave to the Examiner consideration of the dependent claims. We also leave to the Examiner consideration of whether the record supports an obviousness-type double patenting rejection based on the claims of Kalkanoglu ’622 in view of Kalkanoglu ’674 and the AAPA. CONCLUSION We REVERSE the Examiner’s rejections of claims 1–20. We enter a NEW GROUND OF REJECTION as set forth above for independent claim 1. 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the prosecution will be remanded to the Examiner. . . . Appeal 2018-000901 Application 14/551,049 11 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. REVERSED 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation