Ex Parte Phillips

Board of Patent Appeals and Interferences

May 2, 2007

10051486 (B.P.A.I. May. 2, 2007)

Not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BOARD OF PATENT APPEALS AND INTERFERENCES
______________________

Ex parte OWENS CORNING FIBERGLASS TECHNOLOGY INC.
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Appeal 2007-0916
Application 10/051,486
Technology Center 3600
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Decided: May 2, 2007
(Corrected Application Number)
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Before TEDDY S. GRON, JAMESON LEE, and RICHARD TORCZON,
Administrative Patent Judges.
TORCZON, Administrative Patent Judge., with whom LEE, Administrative
Patent Judge, joins.
DECISION ON APPEAL
INTRODUCTION
The claims on appeal relate to laminated roofing shingles with
staggered shadow lines and to methods of making such shingles. The
examiner rejected all of the pending claims for claiming subject matter that
would have been obvious. We AFFIRM.
Appeal 2007-0916
Application 10/051,486

BACKGROUND
A patent issued to appellant (Owens Corning) with twenty claims.
Owens Corning filed a reissue application with significant amendments to
the specification and with twenty-five additional claims. The examiner
rejected all forty-five claims under 35 U.S.C. 103 as having been obvious to
a person having ordinary skill in the art in view of the combined teachings of
two utility patents (Weaver1 and Corbin2) and a design patent (Hannah3).
ANALYSIS
When considering the merits of an obviousness rejection under
35 U.S.C. 103, the scope and content of the prior art must be determined, the
differences between the prior art and the claims ascertained, and the ordinary
level of skill in the art resolved. Objective evidence of the circumstances
relating to the claimed subject matter (so-called secondary considerations)
may also be relevant. Such secondary considerations guard against the
employment of impermissible hindsight.4

1 C. P. Weaver et al., "Laminated roofing shingle", U.S. Patent 5,666,776
(issued 16 Sep. 1997).
2 R. L. Corbin and R. F. Reinhart, "Asphalt shingle for simulating a tiled
roof", U.S. Patent 4,274,243 (issued 23 June 1981).
3 M. G. Hannah et al., "Tab portion of a shingle", U.S. Des. 336,347 (issued
8 June 1993).
4 Graham v. John Deere Co., 383 U.S. 1, 17, 36 (1966). Owens Corning has
not asked the Board to consider any objective evidence of secondary
considerations.
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Application 10/051,486

Scope and content of the prior art
Composite shingles are commonplace in the roofing art.5 These
shingles offer cost and safety advantages over wood shingles, but are
considered less aesthetically appealing than wood shingles. Wood shingles
are said to produce "a finished roof having a layered look with depth."6
Consequently, the prior art is rich with approaches designed to provide "an
appearance of thickness comparable to that of wood shingles."7 Weaver
confirms the specification's assessment of the state of the art.8 Both Corbin
and Hannah appear in Weaver's five-page listing of cited references.9
Like Owens Corning, Weaver is concerned with producing composite
shingles with a wood aesthetic. To this end, Weaver uses color gradients or
gradations, layered sheets or strips, and tabs or "dragon teeth".10 Corbin is
also concerned with producing composite shingles that look like traditional
roofing materials, including wooden shakes.11 Corbin notes prior art
shingles having layers with overlapping tabs and varied coloring that create
the impression of shakes.12

5 Specification at column 1, lines 17-18 (henceforth abbreviated "1:17-18").
6 Id. at 1:31-38.
7 Id. at 1:39-57, discussing, inter alia, the cited Weaver patent and different
Hannah design patents.
8 Weaver at 1:55-2:13.
9 Weaver at pp. 2 and 4.
10 Id. at 2:13-27.
11 Id. at 2:41-50.
12 Id. at 2:51-3:17.
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Application 10/051,486

Differences between the prior art and the claimed subject
matter
Owens Corning urges the following differences in its independent
claims:13
Claim 1: "an overlay with tabs having a first shadow line and a
remaining portion."14
Claim 7: "an overlay with tabs having a leading edge and a first
shadow line on the leading edge."15
Claim 12: "the step of applying darker granules to portions of a base
material corresponding to a leading edge of tabs of an overlay and lighter
colored granules to remaining portions of the tabs and underlay."16
Claim 21: "an overlay with a tab having a leading edge that is
generally darker than a remaining portion of the tab."17
Claim 22: "an overlay with a tab having a first shadow line between a
leading edge and a remaining portion thereof."18
Claim 23: "an overlay with a tab having a first shadow line between a
leading edge and a remaining portion."19
Claim 24: "a tab with first colored granules adhered to a leading edge
of an outer surface thereof and second colored granules adhered to the outer

13 Appeal Br. (AB) at 19-23. We understand, of course, that claims must be
considered as a whole. As a practical matter, however, differences must be
addressed individually.
14 AB at 19.
15 AB at 20.
16 AB at 20.
17 AB at 21.
18 AB at 21.
19 AB at 22.
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Application 10/051,486

surface and separated from the leading edge thereof by the first colored
granules, wherein the second colored granules have a different coloration or
shade than the first colored granules.…"20
Claim 34: "the step of applying granules of one color or shade to
portions of the base material corresponding to a leading edge of a tab of an
overlay…and applying granules of a different color or shade to adjacent
portions of the tab and the underlay."21
Owens Corning urges the following additional differences for select
dependent claims (in addition to the limitations from their respective parent
claims):22
Claims 2 and 8: "the tabs further have a trailing edge on a side of the
remaining portion of the tabs of the tabs opposite the leading edge of the
tabs, and granules on the trailing edge form a shadow line that is
substantially narrow relative to the shadow line on the trailing edge of the
underlay."23
Claims 6 and 11: "the first shadow line is generally narrow relative to
the second shadow line."24
Claim 25: "fifth colored granules adhere to the outer surface of the tab
separated from the first colored granules by the second colored granules, the

20 AB at 22-23.
21 AB at 23.
22 AB at 24-26.
23 AB at 24.
24 AB at 24.
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Application 10/051,486

fifth colored granules having a different coloration or shade than the second
colored granules."25
Claim 26: "the first colored granules form a shadow line adjacent the
leading edge of the tab across substantially the entire width of the tab."26
Claim 27: "the first colored granules comprise darker granules than
the second colored granules."27
Claim 33: "fifth colored granules adhere to the outer surface of each
of the tabs separated from the first and sixth colored granules by the second
colored granules, the fifth colored granules hav[ing] a different coloration or
shade than the second colored granules and form[ing] a fourth shadow line
adjacent the headlap section."28
Claim 43: "granules of the first color or shade are applied to portions
of the base material corresponding to the tab and spaced from the leading
edge of the tab and separated from the granules applied to the leading edge
of the tab by the granules of the second color."29
For the purposes of this decision, we may accept the differences
Owens Corning urges as differences from the prior art with a few caveats.
Owens Corning does not contend that its inventors invented overlays, tabs,
headlaps, the use of more than one color of granules, or the method of laying
down more than one color of granule. Instead, each stated difference
appears to relate to the positioning of a shadow line or colored granules.

25 AB at 25.
26 AB at 25.
27 AB at 25.
28 AB at 26.
29 AB at 26.
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Application 10/051,486

Ordinary level of skill in the art
The material aspects of the art are predictable. Those having ordinary
skill in the art have long been familiar with composite roofing materials
using layers, tabs, headlaps, and color variations to produce the appearance
of wood and other traditional roofing materials. Indeed, Corbin describes
the art has having attained success in simulating wooden shakes and so
focuses on simulating tile roofs instead.30 Even in its approach to simulating
tile, Corbin assumes skilled artisans will readily understand that other
configurations are possible, albeit less practical.31 In short, skilled artisans
were able to balance aesthetic choices versus production costs.
Weaver similarly assumes broad skill in the reader. Examples include
the choice of the base material;32 the choice of color and granule material;33
the number, width, and color of horizontal striations depending on the
aesthetic effect sought;34 and the procedures for manufacturing such shingles
with such features.35 Weaver describes the equipment for producing such
tiles as "sophisticated".36
Hannah is a design patent which provides no explicit discussion of the
knowledge and abilities in the art. Nevertheless, Hannah's drawings suggest
a capacity among shingle aestheticians to use multi-layer shingles with tabs

30 Corbin at 3:10-21.
31 Id. at 8:47-54.
32 Weave at 3:56-62.
33 Id. at 3:66-4:8.
34 Id. at 4:21-31.
35 Weaver at 4:55-67.
36 Id. at 5:58-6:2.
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in varying configurations and color densities to achieve varying aesthetic
effects.37
Claim construction
Owens Corning has not directed us to any limitation requiring its
claims to produce any particular type of aesthetic impression. Thus, the
broadest reasonable construction of the claims extends far beyond any intent
to simulate wood shingles. The claimed shingles can have any appearance,
including a tiled, thatched, or abstract appearance. They are not limited to
looking like wooden shakes. The contested differences for the method
claims lie in the appearance of the resulting shingles.
"Printed matter" case law
Since the differences in this appeal lie in the positioning of shadow
lines and contrasting colored granules on a substrate, a review of “printed
matter” case law is apt. The most recent precedential decision from the
Court of Appeals for the Federal Circuit on this topic is In re Ngai, 367 F.3d
1336, 70 USPQ2d 1862 (Fed. Cir. 2004).
In Ngai, the first eighteen claims were directed to methods for
normalizing and amplifying ribonucleic acids. These claims were allowed.
A nineteenth claim, which was drawn to a kit containing standard reagents
and instructions for performing the method of claim 1, was rejected under
35 U.S.C. .38 The court affirmed the rejection because the difference
between the claimed kit and a standard kit in the art lay in the content of the

37 Hannah, passim.
38 The rejection of a twentieth claim had been reversed by the Board.
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Application 10/051,486

instructions. The court declined to give weight to the instructions limitation
because the instructions bore no functional relationship to the substrate on
which they were printed.
In reaching its decision, the court discussed and distinguished In re
Gulack, 703 F.2d 1381, 217 USPQ 401 (Fed. Cir. 1983). In Gulack, the
claims were directed to a band with a sequence of numerals printed such that
the numerals read consecutively clockwise constituted the solution to a
specific algorithm. The court reversed the rejection of the claims under
§ 10339 because the printed numerals had a functional relationship to the
band on which they were printed: they provided solutions to an algorithm.
A printed-matter analysis can also be used in contexts beyond printed
matter limitations. In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir.
1994) (applying the analysis in the alternative). In Lowry, the court
considered the rejection of claims to memory storing a data structure. The
court found that the data structure resulted in electrical or magnetic
differences in the structure of the memory, which resulted in a memory that
performed differently. In view of this performance relationship between the
data structure and the memory the court held that no prima facie case of
obviousness had been established.40
"Printed matter" is not magic language that permits an examiner to
ignore a claim limitation. Both Lowry and Gulack caution against the liberal
application of printed matter rejections. As Ngai demonstrates, however, the
printed matter analysis has a role in obviousness analysis. Superficial or

39 The Board had already reversed a rejection under 35 U.S.C. § 101.
40 I.e., the data structure acted on the memory to restructure the memory.
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Application 10/051,486

aesthetic variations cannot distinguish over otherwise apt prior art: there
must be a functional connection between the printed matter and the
substrate.41
The surface ornamentation lacks a functional connection
As the examiner explained, those skilled in the art knew to vary tabs,
shadow lines, and granule colors in pursuit of aesthetically pleasing
shingles.42 To the extent that they provide the illusion of a thicker material,
that function was known in the art. While the specification discusses the
desirability of a wood-shingle aesthetic, no such aesthetic is built into the
claims. Moreover, neither the specification nor any testimony cited on
appeal provide a basis for finding that the claimed arrangements of tabs,
shadow lines, and colored granules combine to produce any unexpected
result. Instead, the claimed invention is simply the predictable use of prior
art elements according to their established functions.
Owens Corning argues that the references cannot be literally
combined to teach the precise combinations claimed. The test for
obviousness, however, does not require anticipation by combination. The
examiner's approach of determining what those of skill in the art knew and
would do is more to the point. The artisan knew how to use tabs, shadow
lines, and granule-color variation to produce a variety of aesthetic effects

41 While the concurring opinion suggests this is a new ground of rejection,
the fact is that the statutory basis and cited prior art remain the same. We
have simply provided a time-honored label to the examiner's thesis that the
precise positioning of the aesthetic elements of the shingles would have been
obvious.
42 E.g., Examiner's Answer (EA) at 4-5, 7, and 10-11.
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Application 10/051,486

and did so to stand out in a very crowded field. Aesthetic distinctness
without more is a subjective consideration that has no place in the objective
tests for obviousness.43
DECISION
The examiner's rejection of all pending claims as having been obvious
is AFFIRMED.
No time period for taking any subsequence action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

GRON, Administrative Patent Judge, concurring in the result only.
Appellant’s Brief and the Examiner’s Answer make their respective
cases for and against the patentability of the claimed subject matter under
35 U.S.C. § 103 without raising or discussing “printed-matter” issues. The
Examiner’s case for obviousness is conventionally presented in terms of the
combined prior art teachings, motivation to modify, and the reasonable
expectation of success. Appellant has responded in kind. “Printed-matter”
is mentioned in this case for the first time by the Majority in their decision
on appeal. The Majority focuses exclusively on Appellant’s claims directed
to shingles and disregards Appellant’s claims drawn to methods of making
shingles.

43 De gustibus non est disputandum. See Justice Scalia's concurrence in
Pope v. Illinois, 481 U.S. 497, 505-506 (1987), regarding the difficulty of
fitting an aesthetic test within an objective test.
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Application 10/051,486

On this record, the Examiner has established that the subject matter
Appellant claims is prima facie obviousness under 35 U.S.C. § 103. It is my
view that the Examiner’s case for obviousness has not been rebutted.
Therefore, I would affirm the Examiner’s final rejections.
Nevertheless, the Majority has raised new issues and entered new
grounds of rejection in this case on that basis without acknowledgment. No
final rejection based on concepts of “printed-matter” was presented for
appeal. On this record, I find elements of function in the claim limitations
the Majority refers to as purely aesthetic distinctions. I’m not buying the
extra gloss the Majority has added to its composition without considering the
claimed composition as a whole, especially without proper or adequate
briefing and focus.
lp
cc:
James J. Dottavio,
OWENS CORNING
2790 COLUMBUS ROAD
GRANVILLE, OH 43023

Phi D. A, with Lanna Mai, GROUP ART UNIT 3637, and with Peter M.
Cuomo, GROUP ART UNIT 3634.

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