Robert L. Jenkins

Patent Trials and Appeals Board

Jul 30, 2019

14551049 - (D) (P.T.A.B. Jul. 30, 2019)

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.
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Application 14/551,049

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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.

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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.
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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.”
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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
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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.
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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
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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
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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
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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. . . .
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(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)