10851580 (B.P.A.I. May. 31, 2012)

Ex Parte Khan et al

Board of Patent Appeals and InterferencesMay 31, 2012

10851580 (B.P.A.I. May. 31, 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. 10/851,580 05/21/2004 Amir Khan FDN-2806 2188 7590 06/01/2012 GAF MATERIALS CORPORATION Attn: William J. Davis, Esq. Legal Department, Building No. 8 1361 Alps Road Wayne, NJ 07470 EXAMINER SZEKELY, PETER A ART UNIT PAPER NUMBER 1761 MAIL DATE DELIVERY MODE 06/01/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte AMIR KHAN and MICHAEL DE SOUTO ____________ Appeal 2011-004536 Application 10/851,580 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CHUNG K. PAK, and HUBERT C. LORIN, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 1-12, 19, and 20. We have jurisdiction under 35 U.S.C. Â§ 6. We REVERSE. Appeal 2011-004536 Application 10/851,580 2 Appellants claim a method of manufacturing a modified bitumen roofing membrane (independent claims 1 and 19). Representative claim 1 reads as follows: 1. A method of manufacturing a modified bitumen roofing membrane, the method comprising: providing an aqueous dispersion of a polymeric binder, a polymeric carrier and an effective amount of a pigment that is capable of providing a coating that has an initial energy efficacy rating greater than or equal to 0.65 for a low-sloped roof, or an initial energy efficacy greater than or equal to 0.25 for a steep- sloped roof; maintaining constant mixing of the aqueous dispersion under low shear conditions of about 60 rpm or less to create a top coating composition; applying said top coating composition in-plant to an exterior surface of a modified bitumen substrate during manufacture of the roofing membrane; and curing said top coating composition at the temperature of the environment in which the coated substrate is located. Claims 1-12, 19 and 20 (i.e., all appealed claims) are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Rehberg (US 4,390,570, issued Jun. 28, 1983), Kyminas et al. (US 4,859,723, issued Aug. 22, 1989) or Urbanek (US 5,434,009, issued Jul. 18, 1995), in view of Schoenke (US 4,032,491, issued Jun. 28, 1977) or Batdorf (US 2004/0134378 A1, published Jul. 15, 2004), further in view of Stamper et al. (US 4,827,686, issued May 9, 1989), Kiik (US 6,872,440 B1, issued Mar. 29, 2005), Bartek Appeal 2011-004536 Application 10/851,580 3 et al. (US 7,070,843 B2, issued Jul. 4, 2006), Bartek (US 7,070,844 B2, issued Jul. 4, 2006) or Forbis, Sr. et al. (US 2003/0177705 A1, published Sep. 25, 2003) and even further in view of Hesseler (US 4,168,179, issued Sep. 18, 1979) or Domingues (US 7,250,187 B2, issued Jul. 31, 2007). (Ans. 3-4). Appellants' most basic argument is that the primary references, alone or in combination with the other references, contain no teaching or suggestion of the claimed invention with a reasonable expectation of success (see, e.g., Br. 12-13 and para. bridging 19-20). Based on the record provided by the Examiner, Appellants' argument is persuasive. In formulating the rejection on appeal, the Examiner has not followed the most basic guidelines for determining obviousness under 35 U.S.C. Â§ 103(a). See Manual of Patent Examining Procedure Â§ 2141 (Rev. 6, Sept. 2007). For example, the rejection contains no discussion of the differences between the claimed invention and the prior art. Instead, the Examiner merely identifies selected disclosures in each of the applied references and then concludes that it would have been obvious to combine these selected disclosures (Ans. 4-6). Because claim differences have not been identified, it is unknown whether the Examiner's proposed combination of these selected disclosures would even result in the claimed invention. For the above stated reasons, the Examiner has failed to establish that it would have been prima facie obvious to combine the applied references based on a reasonable expectation of success so as to thereby obtain methods corresponding to those defined by the appealed claims. Appeal 2011-004536 Application 10/851,580 4 The decision of the Examiner is reversed. REVERSED kmm