Ex Parte Grube et al

Patent Trial and Appeal Board

Nov 16, 2012

11755452 (P.T.A.B. Nov. 16, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/755,452 05/30/2007 Louis L. Grube 2695CIP 9142
67750 7590 11/19/2012
GAF
WILLIAM J. DAVIS, ESQ.
1361 ALPS ROAD
WAYNE, NJ 07470
EXAMINER
JOHNSON, JENNA LEIGH
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
11/19/2012 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 LOUIS L. GRUBE, MICHAEL D. DESOUTO,
and ANTHONY RUFFINE
____________

Appeal 2011-009850
Application 11/755,452
Technology Center 1700
____________

Before DEBORAH KATZ, GEORGE C. BEST, and
DONNA M. PRAISS Administrative Patent Judges.

BEST, Administrative Patent Judge

DECISION ON APPEAL
On July 8, 2010, the Examiner finally rejected claims 1-6 and 8-18 of
Application 11/755,452 under 35 U.S.C. § 103(a) as obvious. Appellants
seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
Appeal 2011-009850
Application 11/755,452

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BACKGROUND
The ’452 application describes allegedly improved granule surface
building products such as asphalt roofing shingles (Spec. 1).
Claim 1 is the only independent claim in the ’452 application and is
reproduced below:
1. A building product comprising:
a substrate;
granules embedded in said substrate; and
an acrylic latex coating said granules, a polymer of said
acrylic latex coating includes the repeating structural unit
[CH2-C(R1)(COOR2)], where Rl is hydrogen or C1-C8
alkyl; R2 is hydrogen, cyano or C1-C8 alkyl;
wherein said granules are encapsulated in the acrylic
latex coating prior to the granules being embedded in
said substrate.
(App. Br. 14).
REJECTIONS
1. The Examiner finally rejected claims 1-5, 8, 10, 17, and 18 under
35 U.S.C. § 103(a) as obvious over U.S. Patent No. 3,276,906
(“Nielsen,” Oct. 4, 1966).
2. The Examiner finally rejected claims 6 and 9 under 35 U.S.C.
§ 103(a) as obvious over Nielsen in view of U.S. Patent No.
5,484,477 (“George,” Jan. 16, 1996) or U.S. Patent Application
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Application 11/755,452

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Publication No. 2005/0072114 A1 (“Shiao,” published April 7,
2005).
3. The Examiner finally rejected claims 11 and 12 under 35 U.S.C.
§ 103(a) as obvious over Nielsen in view of U.S. Patent No.
4,472,243 (“Bondoc,” Sept. 18, 1984).
4. The Examiner finally rejected claims 13-16 under 35 U.S.C.
§ 103(a) as obvious over Nielsen in view of U.S. Patent
Application Publication No. 2002/0160151 A1 (“Pinault,”
published Oct. 31, 2002).
DISCUSSION
Appellants challenge each of these rejections by arguing that the
Examiner has not established a prima facie case of obviousness. In
particular, with respect to each of the rejections, Appellants argue that
Nielsen does not describe or suggest the use of granules that have been
encapsulated in the acrylic latex coating before being embedded in the
substrate (App. Br. 9-12).
In the Final Office Action (“FOA”), the Examiner admitted that
Nielsen did not describe the use of encapsulated granules in its process for
making acrylic-coated asphalt shingles (FOA 3 (“Nielsen discloses the
claimed invention except for the teaching that the granules are encapsulated
in the acrylic latex coating prior to the granules being embedded in the
substrate.”); see also Ans. 3(same).
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Application 11/755,452

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Rather than identify a description of acrylic-encapsulated granules in
the prior art, the Examiner simply asserted that
It would have been obvious to one having ordinary skill
in the art at the time the invention was made to have
encapsulated the granules in the acrylic latex coating prior the
granules being embedded in the substrate, motivated by the
desire to create a uniform coating around the granules that will
increase the weatherability of the shingles and to increase the
decorative effects of the granules.
(FOA 3).
After a pre-appeal conference, the Examiner “clarified” the rejection
by taking the position that the limitation “encapsulated in the acrylic latex
prior to the granules being embedded in said substrate” (App. Br. 14) was a
method limitation, and that claim 1 was, therefore a product-by-process
claim (Dec. 10, 2010 Misc. Communication 2). The Examiner maintains this
position in the Examiner’s Answer (Ans. 4-5). Thus, we understand the
Examiner to have withdrawn the basis for the rejection stated in the Final
Office Action. Therefore, we shall not consider that basis for rejection in this
opinion.
We reverse the Examiner’s “clarified” rejections because the
Examiner has not established a prima facie case of obviousness. As the
Examiner admitted, Nielsen does not describe “that the granules are
encapsulated in the acrylic latex coating prior to the granules being
embedded in the substrate” (FOA 3; Ans. 3 (same)). The Examiner attempts
to remedy this defect in the prima facie case by interpreting claim 1 as a
product-by-process claim (Ans 4). Based on this claim interpretation, the
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Examiner found that the claimed building product would have a structure
that was the same as, or an obvious variant of, the asphalt roofing shingle
described in Nielsen (id. at 5).
The Examiner reached this conclusion based upon an interpretation of
the ’452 application’s disclosure (id. at 4). The Specification states that “the
acrylic latex coating may be applied to encapsulate the granules prior to the
granules being embedded in the substrate” (Spec. 12). The Examiner found
that this disclosure should be interpreted as describing a process in which
(a) granules are applied to the substrate, (b) an acrylic latex is applied to the
to the granules, creating a slurry of the granules and acrylic latex, and (c) the
granules are then embedded into the substrate (Ans. 4). The Examiner found
that such a process results in an asphalt shingle that is “either the same or an
obvious variant from the roofing shingle taught and detailed in the remainder
of the [’452 application’s] disclosure and examples” (id. at 4-5). Having
determined that the claimed building product would have the same structure
as other products described in the Specification, the Examiner then
concluded that the structure of those products was the same as, or an obvious
variation of, the building products described in Nielsen (id. at 5).
The Examiner’s conclusion of obviousness must be reversed for at
least two reasons.
First, the Examiner has misinterpreted “encapsulated” as that term is
used in the ’452 application’s Specification and claims. During examination,
claim terms are given their broadest reasonable construction consistent with
the Specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
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(Fed. Cir. 2007). In general, words used in a claim are accorded their
ordinary and customary meaning. Honeywell Int’l Inc. v. Universal Avionics
Sys. Corp., 488 F.3d 982, 992 (Fed. Cir. 2007). The ordinary and customary
meaning of the term “encapsulate” is “to enclose in or as if in a capsule.”
WEBSTER’S NINTH NEW COLLEGIATE DICTIONARY 409 (1985). Thus, claim 1
requires that individual granules or small groups of granules be coated with
a layer of dried acrylic latex before they are embedded in the substrate. The
Examiner misinterpreted the term “encapsulated” to confine the claims to a
specific embodiment of the finished product described in the ’452
application’s Specification. This construction is erroneous. See Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[A]lthough
the specification often describes very specific embodiments of the invention,
we have repeatedly warned against confining the claims to those
embodiments.”).1
Second, the Examiner, based on the misinterpretation of the term
“encapsulate” discussed above, made erroneous findings of fact concerning
the structure of products that fall within the scope of the ’452 application’s
claims. In particular, the Examiner erred in determining that the
Specification describes a product made by a process that involves depositing
unencapsulated granules on the substrate, adding liquid acrylic latex, and
then embedding the granules in the substrate. Because of this incorrect

1 We recognize that the Specification does not describe any process for
making or using acrylic encapsulated granules. Compliance with 35 U.S.C.
§ 112, however, is not at issue in this appeal.
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finding, the Examiner also incorrectly found that the product of claim 1 had
a structure that was not materially different from the structure of the
products produced by the other method disclosed in the Specification.
The Examiner’s rejections of the ’452 application’s claims are based
upon an incorrect claim interpretation and incorrect findings of fact. We,
therefore, reverse these rejections.
CONCLUSION
For the foregoing reasons, the Examiner’s rejections of claims 1-6 and
8-18 of the ’452 application are reversed.

REVERSED

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