Ex Parte Jaffee

Patent Trial and Appeal Board

Apr 23, 2013

10938826 (P.T.A.B. Apr. 23, 2013)

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.
10/938,826 09/10/2004 Alan Michael Jaffee 7383-2 4083
7590 04/23/2013
JOHNS MANVILLE
Legal Department
10100 West Ute Avenue
Littleton, CO 80127
EXAMINER
NGUYEN, CHI Q
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
04/23/2013 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 ALAN MICHAEL JAFFEE
____________________

Appeal 2011-002573
Application 10/938,826
Technology Center 3600
____________________

Before: STEFAN STAICOVICI, MICHELLE R. OSINSKI, and
HYUN J. JUNG, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002573
Application 10/938,826
2
STATEMENT OF THE CASE
Alan Michael Jaffee (Appellant) appeals under 35 U.S.C. § 134 from
a rejection of claims 1-19 under 35 U.S.C. §103(a) as unpatentable over
Coulton (US 5,099,627; iss. Mar. 31, 1992) and Kajander (US 5,837,620;
iss. Nov. 17, 1998). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE CLAIMED SUBJECT MATTER
The claims relate to “methods of providing improved roof deck sheets
with increased water protection and increased flatness and the roof structures
formed by such methods.” Spec. 1:6-8. Claims 1, 9, 10, 18, and 19 are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method of providing water protection to a
roof structure of a building comprising the steps
of:
(a) providing one or more water resistant
roof sheathing panels, each panel comprising a
wood sheet product and a nonwoven fabric mat
adhered to the wood sheet product,
wherein the nonwoven fabric mat comprises
fibers bonded together with a fully cured resin
binder, wherein the nonwoven fabric mat is
produced from a “B” stage condition partially
cured nonwoven fabric mat having a resin binder
only partially cured, and subjecting the “B” stage
condition partially cured nonwoven fabric mat to
sufficient heat and pressure to complete the cure of
the binder in the mat and to adhere the mat to the
wood sheet product; and
(b) installing the one or more roof sheathing
panels on a roof structure of a building such that
Appeal 2011-002573
Application 10/938,826
3
the nonwoven mat of each panel faces outwardly
from the building.

ANALYSIS
For independent claims 9 and 18, the Examiner finds that
“Coulton et al. disclose a ventilated roof construction and
method comprising a plurality of water resistant roof sheathing
panels 18 attached to a roof frame 12/14 of a building as a base
layer, each panel comprising a wood sheet product (col. 3, lines
5-6) and a nonwoven fabric mat (col. 1, lines 61-62) glued or
adhered to the wood sheet product. . .”
Ans. 3-4. For independent claims 1, 10, and 19, the Examiner finds that
“Coulton et al. in view of Kajander disclose the basic roofing structures as
stated above except for a method of providing water protection to a roof
structure of a building.” Id. at 4.
However, the Examiner has not met the burden of establishing a prima
facie case of obviousness. In rejecting claims under 35 U.S.C. § 103(a), the
Examiner bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also
In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial
burden is met does the burden of coming forward with evidence or argument
shift to the Appellant. See Oetiker, 977 F.2d at 1445; see also Piasecki, 745
F.2d at 1472.
The Examiner relies on Coulton for disclosing a panel 18 comprising
a wood sheet product and a nonwoven fabric mat glued or adhered to the
wood sheet product. Ans. 3-4. The Examiner cites column 3, lines 5-6, of
Coulton for the wood sheet product and cites column 1, lines 61-62, for the
nonwoven fabric mat. Id. Column 3, lines 5-6, of Coulton discloses a deck
member 18 that is typically made of plywood, but column 1, lines 57-62, of
Appeal 2011-002573
Application 10/938,826
4
Coulton states that Sylvest (US 4,315,392; iss. Feb. 16, 1982) discloses a
spacing means made up of a mat of resilient nonwoven fibers. In particular,
column 1, lines 57-62, states that “U.S. Pat. No. 4,315,392, issued Feb. 16,
1982, to Sylvest, discloses a built up roof, which comprises sheathing . . .
and a spacing means made up of a mat of resilient nonwoven wires, threads
or fibers of high air volume.” Coulton does not indicate that the deck
member 18 of Coulton includes the spacing means of Sylvest, and thus, the
Examiner’s factual finding is erroneous. Furthermore, the Examiner
provides no articulated reasoning for modifying the deck member 18 of
Coulton to include the spacing means of Sylvest. Therefore, the Examiner
fails to establish a prima facie case of obviousness, such that the burden of
going forward with evidence or argument has not been shifted to the
Appellant.
Accordingly, based on the record before us, we cannot sustain the
Examiner’s rejection of claims 1-19 under 35 U.S.C. §103(a) as
unpatentable over Coulton and Kajander.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-19 is
reversed.

REVERSED

mls