Ex Parte Haines

Patent Trial and Appeal Board

Jul 28, 2016

13927012 (P.T.A.B. Jul. 28, 2016)

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.
13/927,012 06/25/2013 Jay A. Haines 029319-0801 5998
15034 7590 07/29/2016
Wilson Elser Moskowitz Edelman & Dicker LLP
150 East 42nd Street
New York, NY 10017
EXAMINER
LEONG, NATHAN T
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
07/29/2016 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 JAY A. HAINES
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Appeal 2015-001637
Application 13/927,012
Technology Center 1700
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 10, 11, 13, 15 and 17–20. We have jurisdiction under 35 U.S.C. § 6.

Appeal 2015-001637
Application 13/927,012

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Appellant’s appealed invention is illustrated by independent claim 10,
reproduced below:

10. A method of applying a heat reflective coating to a
concrete or clay tile, said method comprising spray applying a
heat reflective coating to the surface of said concrete or clay
tile; wherein said heat reflective coating comprises a heat
reflective metal oxide pigment, an acrylic resin and a
fluorinated resin system.

Appellant (see Appeal Brief, generally) requests review of the
following rejections from the Examiner’s Final Office Action:
I. Claims 10, 13 and 19 rejected under 35 U.S.C. § 103(a) as
unpatentable over Haines (US 2005/0215685 A1, published September 29,
2005) and Nishida (US 2009/0029176 A1, published January 29, 2009).
II. Claim 11 rejected under 35 U.S.C. § 103(a) as unpatentable
over Haines, Nishida and Bowe ‘181 (US 2009/0139181 A1, published June
4, 2009).
III. Claims 15, 17 and 18 rejected under 35 U.S.C. § 103(a) as
unpatentable over Haines, Nishida and Bowe ‘813 (US 2008/0152813 A1,
published June 26, 2008).
IV. Claim 20 rejected under 35 U.S.C. § 103(a) as unpatentable
over Haines, Nishida and Pritchett (US 2005/0255284 A1, published
November 17, 2005).

OPINION

We REVERSE.

Appeal 2015-001637
Application 13/927,012

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Rejection I 1
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the Examiner’s prior art rejection of claims 10, 13,
and 19 for the reasons presented by Appellant. We add the following.
Independent claim 10 is directed to a method of coating a concrete or
clay tile surface with a sprayable heat reflective coating comprising a heat
reflective metal oxide pigment, an acrylic resin and a fluorinated resin
system coating.
The Examiner found Haines teaches a method of forming and
applying a heat reflecting layer via spray applying on a surface of a concrete
wall that differs from the claimed invention in that Haines does not disclose
the heat reflecting layer further comprises a fluorinated resin system. Final
Act. 3; Haines ¶¶ 1, 19, 20, 47. To remedy this deficiency, the Examiner
turns to Nishida as teaching a similar method of forming a heat shield sheet
for an exterior surface using a resin having a combination of an acrylic resin
and a fluorine resin (PVDF) systems. Final Act. 3; Nishida ¶¶ 2, 19, 68.
The Examiner determined it would have been obvious to one of ordinary
skill in the art to have further included a fluorinated resin system, such as
PVDF, along with the acrylic resin system of Haines because Nishida
teaches that fluorine resins are particularly desirable due to the high heat
resistance and low refractive index. Final Act 3; Nishida ¶ 66.
Appellants argue Nishida discloses a PVDF-based heat shield sheet
that is “formed or pasted to a substrate” and, thus, would not be compatible
with the instantly claimed method because Nishida’s coating composition is

1 We limit our discussion to independent claim 10.
Appeal 2015-001637
Application 13/927,012

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not a sprayable composition. App. Br. 6. According to Appellant, one
would have been motivated against making the combinations and
modifications necessary to arrive at the claims because Nishida discloses a
standalone heat shield structure and requires a white or near-white heat
shield. Id.
We agree with Appellant that the Examiner has not established a
prima facie case of obviousness. Moreover, Nishida discloses the resin
composition comprising the fluorinated resin system is extruded at a high
temperature, in the range of 170° C to 230° C, to form a sheet. Nishida ¶¶
156, 157. Given this information, the Examiner directs us to no portion of
Nishida that would have guided one skilled in the art to incorporate
Nishida’s fluorinated resin system, useful for extruded products, into the
sprayable composition of Haines without compromising the sprayability of
Haines composition. The Examiner has not adequately explained how one
skilled in the art would have incorporated a fluorinated resin system into the
sprayable composition of Haines and still arrive to the claimed invention.
Thus, the Examiner has not met the minimum threshold of establishing
obviousness under 35 U.S.C. § 103(a). See In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992); KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Under these circumstances, we are constrained to reverse the
Examiner’s prior art rejection of claims 10, 13 and 19 under 35 U.S.C. §
103(a) for the reasons provided by Appellant and given above.

Rejections II–IV
Appeal 2015-001637
Application 13/927,012

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The Examiner’s separate prior art rejections of claims 11, 15, 17, 18
and 20 under 35 U.S.C. § 103(a) (Rejections II–IV) are premised on the
teachings of Haines and Nishida rendering the method of applying a heat
reflective coating to a concrete or clay tile of the subject matter of
independent claim 10 obvious to one skilled in the art. Final Act. 4–7. As
discussed above, such is not the case. The Examiner did not rely on the
additionally cited secondary reference to overcome the previously noted
deficiencies of Schmitt. Id.
Accordingly, we also reverse the Examiner’s prior art rejections of
claims 11, 15, 17, 18 and 20 for the reasons presented by Appellant and
given above.

ORDER
The Examiner’s prior art rejections under 35 U.S.C. § 103(a) are
reversed.

REVERSED