Ex Parte Zhou

Patent Trial and Appeal Board

Oct 19, 2016

13538288 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/538,288 06/29/2012
48985 7590 10/21/2016
BRIDGESTONE AMERICAS, INC
10 East Firestone Blvd.
AKRON, OH 44317
FIRST NAMED INVENTOR
Wensheng ZHOU
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P09109US3A(586A) 5753
EXAMINER
VAN SELL, NATHAN L
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
10/21/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
iplawpat@bfusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WENSHENG ZHOU 1
Appeal2014-009324
Application 13/53 8,288
Technology Center 1700
Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and
MONTE T. SQUIRE, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
1 The Real Party in Interest is identified as Firestone Building Products Co.,
LLC. Appeal Br. 3. The oral hearing previously scheduled for October 18,
2016, has been waived.
Appeal2014-009324
Application 13/538,288
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
maintainedrejection2 of claims 1-6 and22-31 under35 U.S.C. § 103 over
Shiao3 in view of Aksay. 4 We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART.
The subject matter on appeal5 is directed to roofing articles
comprising an asphaltic substrate and a plurality of granules disposed on the
surface of the substrate, wherein the granules include kaolin that has been
calcined at a temperature of at least 1000 °C and less than 1300 °C. Spec.
i-fi-1 2, 3; Abstract. The granules are described as including mullite, where
mullite concentration and mullite crystallite size are critical parameters in
achieving desired levels of reflectivity. Spec. i-f 15.
Claim I-the sole independent claim-is representative.
1. A roofing article comprising:
(i) an asphaltic substrate; and
(ii) a plurality of granules disposed on a surface of the
substrate, said granules including calcined kaolin that has been
calcined at a temperature of at least 1000 °C and less than
1300 °C.
Appeal Br. (Claims Appendix) 19.
Claims 22 and 23 require that the granules consist essentially of and
consist of calcined kaolin, respectively.
2 A prior pending provisional obviousness-type double patenting rejection
(Office Act. 5) has been withdrawn (Ans. 5).
3 Shiao et al., US 2008/0241472 Al, published October 2, 2008.
4 Aksay et al., Mullitefor Structural, Electronic, and Optical Applications,
74 J. Am. Ceram. Soc. 2343 -58 (1991).
5 Application No. 13/538,244, filed in the name of Zhou on June 29, 2012, is
identified in the section Related Appeals and Interferences as a related
application which is also on appeal. Appeal Br. 4. The appeal of
Application No. 13/538,244 has been assigned Appeal No. 2014-009322.
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Application 13/538,288
Claims 24-31 require that the granules include various recited
amounts of silica and/or alumina.
DISCUSSION6
Upon consideration of the evidence on this record and each of
Appellant's contentions, we find that a preponderance of the evidence
supports the Examiner's determination that one of ordinary skill in the art,
armed with the knowledge provided in the applied prior art would have been
led to the subject matter recited in claims 1-6, 22, and 24-31, however, we
are persuaded of reversible error in the Examiner's rejection of claim 23.
We add the following.
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability."
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
To prevail in an appeal to this Board, Appellant must adequately
explain or identify reversible error in the Examiner's rejection. See
37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356,
1365---66 (Fed. Cir. 2011) (explaining that even ifthe Examiner had failed to
make a prima facie case, it has long been the Board's practice to require an
Appellant to identify the alleged error in the examiner's rejection).
The Examiner relies on Shiao for its disclosure of solar reflective
roofing shingles or membranes comprising a bituminous base (i.e., an
6 We refer to the Final Office Action mailed September 27, 2013, the Appeal
Brief filed April 29 2014, the Examiner's Answer mailed July 2, 2014, and
the Reply Brief filed September 2, 2014.
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Application 13/538,288
asphaltic substrate) and a plurality of granules disposed on the surface of the
bituminous base where the granules may comprise mullite. Ans. 3 (citing
Shiao i-fi-130, 48, 49). We note that Shiao describes the use of mullite to form
"solar-reflective inert base particles [preferably] hav[ing] an average solar
reflectivity of at least 60%." Shiao i121. The Examiner also relies on Shiao
for teaching other materials that can be included in the granules, i.e., Si02,
Ab03, and porcelain as necessary to obtain desired reflectivity and strength.
Ans. 5 (citing Shiao i-fi-1 48, 104 ). In this, the Examiner finds pro forma that
Shiao teaches the identity and amount of materials used are result effective
variables in providing strength and reflectivity.
The Examiner relies on Aksay for its disclosure of mullite formed by
heating (calcining) kaolinite at temperatures of 980 °C to 1300 °C, and for
teaching that the calcining temperature determines structure and,
accordingly, the fracture toughness. Ans. 4 (citing Aksay 2349-50). In
particular, the Examiner relies on the heating of high-purity kaolinite to
which a-alumina has been added, where the resulting product includes
mullite crystallites in an amorphous silica-rich matrix. Ans. 7 (citing Aksay
2350 i-fi-f l-2, Fig. 9).
Regarding the "calcined kaolin," the Examiner determines that the
claim language of claim 1 is inclusive or open-ended and thus does not
exclude a calcined mixture of kaolin and a-alumina. Ans. 7.
The Examiner concludes it would have been obvious to one of
ordinary skill in the art at the time of the invention to substitute the mullite
product of Aksay for the mullite of Shiao, adjusting the temperature of the
calcination to optimize the microfeatures for its structural properties.
Ans. 4.
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The Examiner further concludes that it would have been obvious to
one of ordinary skill to pick any number of forms or compositions of mullite
for use in the roofing granules, including the mullite taught by Aksay,
because mullite was a known material and was known to be suitable for use
in roofing articles. Ans. 7-8. Likewise, the Examiner concludes it would
have been obvious to adjust the amounts of materials, including the amount
of silica sand and aluminum oxide, in forming granules to optimize the
reflectivity and cost of manufacture of the granules. Ans. 5.
We begin our analysis by determining the meaning of the claims,
giving terms the broadest reasonable interpretation consistent with the
Specification as it would be interpreted by one of ordinary skill in the art.
See, e.g., In re Suitco Swface, Inc., 603 F.3d 1255, 1259-60 (Fed. Cir.
2010). It is well established that "the PTO must give claims their broadest
reasonable construction consistent with the specification. . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). "[A]s applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee." Id.
Turning to the recited granules, the Specification sets forth that they
"include crystallites of mullite ... dispersed within a matrix that includes
non-mullite aluminosilicates, non-mullite siliceous materials, or both" (Spec.
i-f 23) where "mullite refers to a subset of crystalline aluminosilicates ... a
solid solution series ranging from 3Ab03•2Si02 to 2Ab03•Si02" (Spec.
i-f 24 ). The Specification sets forth that "[p ]ractice of one or more
embodiments of the present invention is not limited by the source of the
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Application 13/538,288
mullite-containing granules or method by which the granules may be
fabricated." Spec. i-f 52.
The Specification also sets forth that the inventive process is open to
processing of treated material before or after the heat treatment ( calcination),
including crushing, grinding, pulverization, and fractionation. Spec. i-f 55.
Regarding the "calcined kaolin," the Examiner determines that the
claim language of claim 1 is inclusive or open-ended and thus does not
exclude a calcined mixture of kaolin and a-alumina. Ans. 7. On this record,
we also determine claim 1 does not exclude a calcined mixture of kaolin and
a-alumina where the claim recites that "said granules ... includ[ e] calcined
kaolin" and Appellant fails to direct us to any portion of the Specification or
proffer persuasive argument establishing that it does not. Generally Appeal
Br.; Reply Br.
Likewise, we discern no requirement in claim 1 that material calcined
to form granules is homogenously dispersed and thus does not exclude a
calcined mixture that includes particles of silica and/or alumina in addition
to a finely divided mixture of kaolin and a-alumina.
Claims 1-6 and 24-27
Appellant argues the claims as a group. Appeal Br. 10-15. We
decide the appeal as to these claims on the basis of claim 1, which we find
representative.
Appellant contends the Examiner erred in relying on Aksay because it
does not teach that mullite can be formed simply by calcination of kaolin,
but rather adds a-alumina to high-purity kaolinite in its process. Appeal Br.
10-11.
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Application 13/538,288
Appellant's argument is, however, misplaced because the claim does
not exclude a calcined mixture of kaolin and other materials, as explained
above.
Appellant's further arguments relating to Aksay are directed to its
focus on forming refractory materials that are densified/mullitized and that
the materials it discloses with mullite crystallites dispersed within an
amorphous matrix are not equivalents to the final refractory materials.
Appeal Br. 11; Reply Br. 2-3. In this regard, Appellant contends Aksay's
"clear intent is to densify these materials with the ultimate goal of
eliminating the presence of glassy boundaries between mullite crystallites."
Reply Br. 2; see also Aksay 2343, 2351, 2354 (describing glassy boundaries
and inclusions).
Appellant further contends that Shiao 's teaching of mullite is not
relevant because the claim is not directed to mullite (Appeal Br. 11) and that
the reference to mullite in Shiao would lead the skilled person to one of
many forms of pure mullite. Appeal Br. 11-12.
On this record, we do not find Appellant's arguments persuasive
because it is not contested that Aksay discloses materials that include mullite
crystallites and we are directed to no persuasive evidence that the reference
in Shiao to mullite would only lead the skilled person to pure mullite. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument
... cannot take the place of evidence."). Furthermore, in view of the
purpose for which mullite is included in Shiao, to provide a level of solar
reflectivity (Shiao i-f 21), we discern no error in the Examiner's reliance on
Aksay's material including mullite crystallites. See KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (an obviousness analysis "need not seek out
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Application 13/538,288
precise teachings directed to the specific subject matter of the challenged
claim, for [an examiner] can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ."); In re Preda,
401 F.2d 825, 826 (CCPA 1968) ("[I]t is proper to take into account not only
specific teachings of the reference but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom."). On this
record, we are directed to no evidence that the skilled artisan would find
material including mullite crystallites dissimilar in relevant properties to
mullite' s use in a roofing article or that the Examiner erred in finding pro
forma that Aksay's mullite crystallite containing material would likewise be
useful in providing reflectivity.
As to Appellant's various arguments directed to the reliance on the
strength and fracture resistance of Aksay's mullite material (Appeal Br. 10,
13-14; Reply Br. 2-3), we discern no harmful error where a sufficient basis
has been established for use of mullite and material including Aksay's
mullite material is reasonably established to have equivalent and/or useful
properties.
As to Appellant's further nascent argument that there are unexpected,
significant differences when the instant calcined kaolin is used instead of
mullite (Appeal Br. 14-15), on this record, we find it unfounded. Appellant
bears the burden of showing the claimed invention imparts unexpected
results. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) ("the burden of
showing unexpected results rests on he who asserts them"). This requires
applicant to establish: "( 1) that there actually is a difference between the
results obtained through the claimed invention and those of the prior art, ...
and (2) that the difference actually obtained would not have been expected
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by one skilled in the art at the time of invention." In re Freeman, 4 7 4 F .2d
1318, 1324 (CCPA 1973) ((citation omitted). However, Appellant does not
direct us to any statement in the Specification or any other evidence or
averment evincing that the results obtained would have been unexpected by
one of ordinary skill in the art at the time of the invention. Absent such
evidence or averment, Appellants cannot meet their burden. See, e.g., In re
Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997). Appellant also does not
explain why data from the Specification is reasonably commensurate with
the scope of the claims.
For the reasons above, we are not persuaded that the Examiner erred
reversibly in concluding that one of skill in the art, armed with the
knowledge of Shiao and Aksay, would have been led to the claimed subject
matter. Accordingly, we sustain the rejection of claims 1-6 and 24-27.
Claim 22
Regarding the phrase "cons1stmg essentially of," it has long been
understood to permit more than what is recited in the claim provided any
additional materials or steps do not "'materially affect the basic and novel
properties of the invention."' AK Steel Corp. v. Sollac, 344 F.3d 1234, 1239
(Fed. Cir. 2003). Appellant has the burden of showing the basic and novel
characteristics of their claimed invention. In re De Lajarte, 337 F.2d 870,
874 (CCPA 1964); see also In re Janakirama-Rao, 317 F.2d 951 (CCPA
1963).
Appellant argues it is "apparent from the teachings of Aksay ... [that]
the presence of other constituents has a material and appreciable impact on
the resultant properties of the granules" (Appeal Br. 15) and contrasts the
partially densified mullite formed within amorphous precursors and the
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higher alumina content of Aksay with the calcined kaolin clays produced
according to the invention. Reply Br. 4. Appellant also cites generally to
the experimental section, as it relates to mullite. Appeal Br. 16.
Appellant fails, however, to address the rejection grounded on
particles of Aksay' s mullite being prepared and then included in granules.
Further, as to the highlighted differences in composition (Reply Br. 4 ), they
only indicate that there is additional material included, not that the additional
material affects the basic and novel properties of the invention. Likewise,
the cursory reference to the sintered mullite refractory materials-Samples
6-7 (described Spec. i-f 67}-is insufficient to establish a basis to exclude
a-alumina. In particular, Appellant directs us to no evidence contrasting the
reflective properties grounded, or any other feature identified as basic and
novel to the invention, grounded on including a-alumina in the calcined
material. Accordingly, on this record, we sustain the Examiner's rejection
of claim 22.
Claim 23
Appellant separately argues claim 23, which further limits the
"granules [to] consist of calcined kaolin." Appeal Br. 16; Reply Br. 5.
On this record, where the Examiner effectively ignores the addition of
a-alumina in maintaining that kaolin is a very broad term (Ans. 10), we are
persuaded the Examiner erred reversibly. Accordingly, we do not sustain
the Examiner's rejection of claim 23.
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Application 13/538,288
Claims 28-31
Claims 28-31 depend directly or indirectly from claim 1 and further
limit the amounts of alumina and/or silica present in the granules including
calcined kaolin.
Appellant argues that neither Shiao nor Aksay teach granules having
the recited amounts of alumina and/or silica and that the Examiner has failed
to establish why the necessary modification to arrive at granules that do
would have been no more than routine optimization. Appeal Br. 16-17.
Appellant emphasizes the complexity of ceramic materials and argues that
there is no evidence to support the Examiner's determination grounded on
adjusting the amount of mullite, silica sand, and aluminum oxide to optimize
reflectivity and cost of manufacture of granules as well as the crush strength.
Reply Br. 5-6. Appellant further argues there is no evidence that the desired
mullite would be obtained if the amounts of alumina were adjusted as
necessary to meet the claim limitations. Reply Br. 6.
On this record, we do not find Appellant's argument persuasive of
reversible error because the claims are not limited to granules formed by
calcining homogeneous mixtures of materials and no difficulty is identified
in providing necessary heterogeneous mixtures having portions in which the
ratio of kaolin and a-alumina is appropriate to provide Aksay' s mullite-
containing material and other portions comprising silica and/ or alumina in
amounts such that the granules formed, as a whole, meet the recited
compositional limits. We also find the argument that there is no evidence
that the amounts of mullite, silica sand, and aluminum oxide are result
effective variables as to reflectivity, cost of manufacture, or strength to be
unpersuasive. In particular, Appellant does not address the cited portions of
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Shiao and fails to explain how it is not reasonably inferred from Shiao that
granule composition affects reflectivity and/or strength. Likewise, we are
unpersuaded of harmful error in the Examiner's finding that the composition
is a result effective variable as to cost where the cost of silica sand would
reasonably be understood to be less than the finely divided, prepared mixture
of kaolin and a-alumina.
For the reasons above, we are not persuaded that the Examiner erred
reversibly in concluding that one of skill in the art, armed with the
knowledge of Shiao and Aksay, would have been led to the claimed subject
matter. Accordingly, we sustain the rejection of claims 28-31.
CONCLUSION
In view of the reasons set forth above, we affirm the Examiner's
rejection of claims 1-6, 22, and 24-31, and reverse the Examiner's rejection
of claim 23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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