12911784 (P.T.A.B. Aug. 6, 2013)

Ex Parte Smith

Patent Trial and Appeal BoardAug 6, 2013

12911784 (P.T.A.B. Aug. 6, 2013)

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. 12/911,784 10/26/2010 JASON SMITH GARL 200257US02 1873 27885 7590 08/07/2013 FAY SHARPE LLP 1228 Euclid Avenue, 5th Floor The Halle Building Cleveland, OH 44115 EXAMINER SZEKELY, PETER A ART UNIT PAPER NUMBER 1761 MAIL DATE DELIVERY MODE 08/07/2013 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 GARLAND INDUSTRIES, INC. Inventor: Jason Smith ____________________ Appeal 2012-004767 Application 12/911,784 Technology Center 1700 ____________________ Before FRED E. McKELVEY, RICHARD TORCZON and DEBORAH KATZ, Administrative Patent Judges. McKELVEY, Administrative Patent Judge. DECISION ON APPEAL Statement of the case Garland Industries, Inc. (“applicant”), the real party in interest (Brief, 1 page 1), seeks review under 35 U.S.C. § 134(a) of a final rejection dated 2 19 April 2011.1 3 The application on appeal was filed in the USPTO on 26 October 4 2010. 5 1 In an earlier appeal, the PTAB held that a hot melt adhesive claimed by applicant was unpatentable over prior art. Ex parte Jason Smith, Appeal 2011-013521 (PTAB Mar. 27, 2013). Appeal 2012-004767 Application 12/911,784 2 The application on appeal claims priority of 1 (1) Application 12/470,912, filed 22 May 2009, and 2 (2) Provisional Application 61/057,961, filed 02 June 2008. 3 The application has been published as U.S. Patent Application 4 Publication 2011/0036498 A1. 5 In support of prior art rejections, the Examiner relies on the following 6 evidence. 7 Losey et al. “Losey” U.S. Patent 3,625,804 07 Dec. 1971 Shihadeh U.S. Patent 3,980,597 14 Sep. 1976 Janoski 1 U.S. Patent 5,319,008 07 June1994 Janoski 2 U.S. Patent 5,421,876 06 June 1995 Terry et al. “Terry” U.S. Patent 5,981,010 09 Nov. 1999 Ritland et al. “Ritland” U.S. Patent 6,742,313 B2 01 June 2004 Appeal 2012-004767 Application 12/911,784 3 Georgeau et al. “Georgeau” U.S. Patent 7,317,051 B2 08 Jan. 2008 Rajalingam et al. “Rajalingam” U.S. Patent Application Publication 2001/0051676 A1 13 Dec. 2001 Wang et al. “Wang” U.S. Patent Application Publication 2008/0182925 31July 2008 filed 25 Jan. 2007 Adco Products International Published Application WO 00/37534 29 June 2000 Applicant does not contest the prior art status of the Examiner’s 1 evidence. 2 We have jurisdiction under 35 U.S.C. § 134(a). 3 Claims on appeal 4 Claims 19-25 and 32-46 are on appeal. Brief, page 2. 5 The Examiner indicates that the claims on appeal are Claims 19-36 6 and 41-46. Answer, page 3. 7 However, applicant advises that an amendment after appeal was filed 8 to cancel Claims 26-31. Brief, page 2. 9 The amendment was filed on 19 September 2011. 10 The Examiner ordered entry of the amendment on 30 January 2012 11 after mailing the Answer. 12 Appeal 2012-004767 Application 12/911,784 4 A review of the record convinces us that the claims on appeal are 1 Claims 19-25 and 32-46. 2 Claim 19 is the only independent claim. The remaining claims 3 depend directly or indirectly from Claim 19. 4 The rejections 5 Rejection 1 (indefiniteness), Rejection 2 (indefiniteness) and 6 Rejection 3 (4th ¶ of § 112) (Final Rejection, pages 2-3) have been 7 withdrawn (Answer, page 4). 8 In the Answer, the Examiner has maintained only the following 9 rejection: 10 Rejection 4: All claims on appeal stand rejected as being 11 unpatentable under § 103(a) over the prior art identified above. 12 Answer, page 5. 13 Claim 19 14 Claim 19, which we reproduce from the Claims Appendix of the Brief 15 (page 13), reads [matter in brackets and some indentation added]: 16 A method of adhering [A] an interplay roof membrane to 17 [B] another roof membrane or to a roof deck substrate 18 comprising: 19 a) applying a liquid hot melt adhesive to said roof 20 membrane or said roof deck [B], 21 said hot-melt adhesive includes a blend of three primary 22 components, 23 Appeal 2012-004767 Application 12/911,784 5 [1] a first primary component is an isocyanate 1 compound, 2 [2] a second primary component is petroleum 3 liquid, 4 [3] a third primary component is polyol 5 compound, 6 said petroleum liquid selected from the group consisting 7 of asphalt, modified asphalt, bitumen, modified bitumen, 8 coal-tar, modified coal tar, or mixtures thereof, 9 said isocyanate compound including one or more 10 compounds selected from the group consisting of diisocyanate 11 and polyisocyanate, 12 said polyol compound including one or more compounds 13 selected from the group consisting of polyester-polyol 14 polypropylene glycol, polybutylene glycol, olefinically 15 unsaturated monomers, and alkylene diols, 16 said polyol compound having a weight percent that is 17 greater than a combined weight percent of said petroleum liquid 18 and said isocyanate compound, 19 said hot melt adhesive including one or more compounds 20 selected from the group consisting of an acid stabilizer, a 21 catalyst, and a tackifying agent; and 22 Appeal 2012-004767 Application 12/911,784 6 b) applying said interplay roof membrane [A] to said 1 roof membrane or said rook deck [B] prior to a complete curing 2 said holt melt polyurethane in said hot melt adhesive. 3 Analysis 4 Claim 19 5 In support of the appeal, applicant argues (Brief, pages 9-10) that 6 Rejection 4 is not proper because: 7 [1] the prior art does not describe a polyol compound in a hot 8 melt adhesive having a weight percent greater than a combined weight 9 percent of the petroleum liquid and the isocyanate compound (Brief, 10 page 9) and 11 [2] the prior art does not describe applying [A] an interplay roof 12 membrane to [B] a roof membrane or roof deck prior to complete curing of 13 hot melt polyurethane in the hot melt adhesive. 14 Argument [1] 15 The Examiner found that Wang describes compositions having 16 [a] 2-98 % polyol, 17 [b] 2-25 % isocyanate and 18 [c] 5-75 % asphalt. 19 Answer, page 7; Final Rejection, page 3. 20 Wang (¶¶ 0011, 0014) broadly describes compositions having 21 [a] 2-98 wt % polyol, 22 [b] 2-25 wt % isocyanate, and 23 [b] 0.1-80 wt % bituminous materials. 24 Appeal 2012-004767 Application 12/911,784 7 Wang also claims compositions having 1 [a] 2-98 wt % polyol (claim 8), 2 [c] 0.1-80 wt %bituminous materials (claim 11). 3 The Examiner found that Rajalingam describes compositions having 4 [a] 40-72 % polyol, 5 [b] 5-20 % isocyanate and 6 [c] 5-75 % asphalt. 7 Answer, page 9; Final Rejection, page 3. 8 Rajalingam describes compositions having 9 [a] 40-72 % polyol (claim 10), 10 [b] 5-20 % isocyanate (claim 12) and 11 [c] 5-70 % asphalt (claim 9). 12 The range of ingredients described by Wang and Rajalingam overlap 13 compositions having a polyol range greater than 50 wt %. Under the 14 circumstances, the Examiner had an adequate basis for reasoning that the 15 prior art renders applicant’s claimed polyol range prima facie obvious. In re 16 Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (a prima facie case of 17 obviousness typically exists when the ranges of a claimed composition 18 overlap the ranges disclosed in the prior art). Applicant has not 19 demonstrated that its polyol range produces an unpredictable or 20 unexpected result. In re Huang, 100 F.2d 135, 139 (Fed. Cir. 1996) 21 (claimed ranges must produce a new and unexpected result which is 22 different in kind and not merely in degree from results of the prior art). 23 Appeal 2012-004767 Application 12/911,784 8 We note that in related appeal Ex parte Jason Smith, supra n.1 at slip 1 op. at 3, a panel of the PTAB indicated that applicant “concedes that Wang 2 would have rendered prima facie obvious, to one of ordinary skill in the art, 3 a holt melt adhesive having a weight percent of polyol compound which is 4 greater than combined weight percentages of petroleum liquid and 5 isocyanate compound . . .” 6 In responding to the Answer, applicant states that “[t]he [E]xaminer 7 continues to avoid . . . [applicant’s] assertion that none of the cited art of 8 record discloses or suggests a polyol compound in the hot melt adhesive 9 having a weight percent that is greater than a combined weight percent of 10 the petroleum liquid and the isocyanate compound.” Reply Brief, page 2. 11 However, the polyol content was addressed in both the Office Action dated 12 25 January 2011 (pages 2-3), Final Rejection (page 3 ¶ 9) and the Answer 13 (page 7) and applicant has provided no cogent response addressing the 14 details of the Examiner’s finding. 15 Argument [2] 16 According to applicant, in the Final Rejection the Examiner did not 17 address application of the roof membrane or roof deck to the interplay 18 “prior to a complete curing of hot melt polyurethane.” Brief, pages 9-10. 19 In the Answer, the Examiner states (page 7) (italics added): 20 As far as the methods of adhering are concerned Losey . . . 21 show[s] the apparatus needed to apply the adhesive, Ritland 22 . . ., Janoski (‘876) [Janoski 2], Shihadeh and Adco all disclose 23 applying the adhesive to roofing and Rajalingam . . . even . . . 24 Appeal 2012-004767 Application 12/911,784 9 [applies] the adhesive as a hot spray, which is patently obvious 1 since a hot melt adhesive cannot be applied as a solid. 2 Earlier in the Answer, the Examiner found that the claimed 3 “installation procedures for roof membranes using polyurethane adhesives” 4 is shown in the Abstract and col. 3:26-58 of Ritland: “[i]t is important that 5 the roof membrane 20 is applied prior to complete set up and solidification 6 of the adhesive material 16” as shown in Figs. 1-3. Answer, page 5. The 7 Examiner further explains the relevance of Janoski (‘876) [Janoski 2], 8 Shihadeh and Adco, citing specific portions of each reference. Id. at 6. In 9 the Reply Brief, applicant again argues again that “[t]he [E]xaminer . . . did 10 not address the lack of teachings of the cited art of record regarding the 11 limitation of [C]laim 19 of applying the interplay roof membrane to the . . . 12 roof deck.” Reply Brief, pages 2-3. The Reply Brief fails to address the 13 specific comments made by the Examiner or explain how the comments 14 constitute a faulty § 103 analysis. We have not been told how the 15 Examiner erred and we decline to become an advocate for applicant, 16 looking for a way to find that the Examiner erred. 17 Separately argued dependent claims 18 Applicant addresses separately some of the dependent claims. 19 Claims 41-42 and 43-46 20 Dependent Claims 41-42 include petroleum liquid to polyol ratios. 21 Dependent Claims 43-46 include isocyanate to polyol ratios. 22 In the Answer, the Examiner notes that claimed ratios overlap the 23 ranges described by Rajalingam and Wang. Answer, page 7. 24 Appeal 2012-004767 Application 12/911,784 10 The overlap of ratios is a sufficient basis upon which the 1 Examiner could have reasoned that the subject matter of the claims is 2 prima facie obvious. In re Peterson, supra. 3 Claims 23 and 32-40 4 Dependent Claims 23 and 32-40 set out specific ratios of elements. 5 Applicant does not address each claim separately. Accordingly, we 6 elect to treat the claims as a group focusing on Claim 23. 37 C.F.R. 7 § 41.37(c)(1)(vii) (2011). 8 Claim 23 reads [matter in brackets added]: 9 The method as defined in [C]laim 19, wherein said hot 10 melt adhesive comprises: 11 [1] Diisocyanate and/or polyisocyanate 5-50 wt% 12 [2] Petroleum Liquid 5-80 wt% 13 [3] Polyester-polyol, polypropylene 5-90 wt%2 14 glycol, polybutylene glycol, 15 olefinically unsaturated monomers, 16 and/or alkylene diols. 17 2 There appears to be inconsistency between the 5-90 wt% polyol content of dependent Claim 23 and the “polyol compound having a weight percent that is greater than a combined weight percent of said petroleum liquid and said isocyanate compound” of independent Claim 19. It is not apparent how Claim 23 polyol component [3] can be 5 wt% and fall within the scope of the polyol content requirement of Claim 19. The same analysis would apply to a Claim 23 petroleum liquid content of 80 wt%, that would exceed 50 wt% thereby rendering the polyol present in an amount less than 50 wt% as required by Claim 19. In the event of further prosecution, we recommend that any inconsistency be considered. Appeal 2012-004767 Application 12/911,784 11 All of the elements are described in the prior art. Wang, ¶ 0011 1 (all three elements), ¶ 0014 (isocyanate), ¶ 0017 (polyol), and ¶ 0013 2 (bituminous materials). The claimed amounts of each element are within 3 the scope of those described by Wang and Rajalingam. 4 Applicant is using known elements for their known purpose in known 5 ratios to make an expected hot melt adhesive. Use of known elements for 6 their intended purpose in known ratios is evidence of obviousness. 7 Applicant has not explained what limitation from the claims is missing from 8 the prior art. Likewise not explained is why the prior art does “not make 9 obvious the specific compositional ranges defined in the dependent 10 claims.” Reply Brief, page 3. 11 Other arguments 12 We have considered applicant’s remaining arguments and find 13 none that warrant reversal of the Examiner’s rejections. Cf. In re Antor 14 Media Corp., 689 F.3d 1282, 1294 (Fed. Cir. 2012). 15 Decision 16 Upon consideration of the appeal, and for the reasons given herein, it 17 is 18 ORDERED that the decision of the Examiner rejecting the 19 claims on appeal over the prior art is affirmed. 20 FURTHER ORDERED that no time period for taking any 21 subsequent action in connection with this appeal may be extended under 22 37 C.F.R. § 1.136(a)(1)(iv). 23 AFFIRMED 24 Appeal 2012-004767 Application 12/911,784 12 1 cam 2 3