Gregory ColeDownload PDFPatent Trials and Appeals BoardMay 12, 20202020002063 (P.T.A.B. May. 12, 2020) Copy Citation 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. 15/853,740 12/23/2017 Gregory Cole BCOLE.00009 5648 120981 7590 05/12/2020 Braxton Perrone, PLLC 5000 Legacy Drive Ste 465 Plano, TX 75024 EXAMINER MELLOTT, JAMES M ART UNIT PAPER NUMBER 1712 NOTIFICATION DATE DELIVERY MODE 05/12/2020 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): braxton@braxtonperrone.com butz@braxtonperrone.com perrone@braxtonperrone.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GREGORY COLE Appeal 2020-002063 Application 15/853,740 Technology Center 1700 Before N. WHITNEY WILSON, LILAN REN, and MICHAEL G. MCMANUS, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–11 and 19. See Final Act. 4, 6, 7. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Gregory Cole.” Appeal Br. 3. Appeal 2020-002063 Application 15/853,740 2 CLAIMED SUBJECT MATTER The claims relate to “a system and method for coating a surface” – in particular – a roof. See Spec. ¶¶ 2, 10; Fig. 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for applying a coating to a surface, said method comprising: d. applying a first coating, wherein said first coating is an acrylic roof coating; e. applying a quick-set formula atop said first coating, wherein said quick-set formula sets said first coating, and wherein said quick-set formula comprises a brine solution; f. applying a second coating atop said first coating, and wherein said second coating is an acrylic roof coating, and wherein said acrylic roof coating is an elastomeric coating which allows said acrylic roof coating to stretch when set. Claims Appendix (Appeal Br. 16). REFERENCES The prior art references relied upon by the Examiner are: Name Reference Date Bialke US 5,957,386 Sep. 28, 1999 Knight US 2008/0038474 A1 Feb. 14, 2008 REJECTIONS The Examiner rejects claims 1–6, 8–10, and 19 under 35 U.S.C. § 102(a)(1) as anticipated by Knight. Final Act. 4. The Examiner rejects claims 7 and 11 under 35 U.S.C. § 103 as unpatentable in view of Knight and Bialke. Final Act. 6, 7. Appeal 2020-002063 Application 15/853,740 3 OPINION Claim 12 Appellant argues that the recited “acrylic roof coating” requires that “the coating is a specific type of coating: an acrylic roof coating” which is not disclosed by Knight. Appeal Br. 6. Appellant argues that the recited “acrylic roof coating” differs from a roof coating that comprises acrylic in both scope and meaning. Id. Appellant argues to distinguish between the recited “first coating is an acrylic roof coating” and a roof coating that comprises acrylic. Id. at 6–7. Appellant, however, does not provide a definition of the recited “acrylic roof coating.” See id. Appellant does not explain why the recited “acrylic roof coating” excludes a roof coating that includes acrylic. Appellant does not cite to the Specification in support of the argument. The Specification, in fact, broadly provides that “[t]he acrylic coating can comprise any traditional acrylic coating typically used on roofs. As used herein an acrylic coating refers to a liquid-applied seamless membrane used to coat roofs.” Spec. ¶ 12 (cited in Appeal Br. 4). The Declaration submitted by the inventor Mr. Gregory Cole (“Decl.”) likewise does not support the argument. Mr. Cole acknowledges that the prior art asphalt contains 1.5% polyacrylic acid. Decl. ¶ 5. Mr. Cole states, without elaboration, that a skilled artisan such as himself would not have considered the prior art composition “an acrylic roof coating” as recited in claim 1. Id (stating only that “[a]n asphalt emulsion is completely 2 Appellant does not separately argue for claims 1, 5, 6, 8, 9, 10, and 19 and they stand or fall with claim 1. See Appeal Br. 6–9; see also 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2020-002063 Application 15/853,740 4 dissimilar from what is known as an acrylic coating” and a skilled artisan would not consider the prior art composition an acrylic coating). Given the Declaration is unsupported by factual evidence and is conclusory, we are not persuaded that the Examiner reversibly erred in the evaluation of the Declaration. See Ans. 3. As the Examiner points out, claim 1 does not require the recited “acrylic roof coating” to have any particular characteristic such as a particular concentration of the acrylic. Final Act. 8. No reversible error has been identified in the Examiner’s finding that the prior art composition discloses the recited “acrylic roof coating.” Appellant next argues that the Examiner reversibly erred in finding that the prior art discloses the recited “elastomeric coating.” Appeal Br. 8. Appellant argues that claim 1 “requires that the entire coating be an elastomeric coating.” Id. “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). Claim 1, as it is currently written, requires no more than that the “acrylic roof coating is an elastomeric coating.” Paragraph 12 of the Specification, cited by Appellant as written description support for claim 1, provides only that “[i]n one embodiment the coating comprises an elastomeric coating which allows the material to stretch and return to its original shape without damage.” Appellant’s argument that the entire coating be an elastomeric coating is unpersuasive as it is supported by neither the plain claim language nor the Specification. Appellant lastly argues that the Examiner reversibly erred in finding that the prior art elastomeric coating would inherently be capable of “allow[ing] said acrylic roof coating to stretch when set” as recited in claim Appeal 2020-002063 Application 15/853,740 5 1. Appeal Br. 8. Appellant presents an example of “a rigid concrete pillar which includes 5 parts per billions of an elastomeric polymer” as evidence of a lack of the stretching capability. Id. Appellant, however, does not explain why this example is relevant to the prior art Knight cited in support of the rejection. Id. As the Examiner points out, the anticipation rejection is based on Knight’s disclosure of about 24 wt% of the elastomeric polymer in the set coating. Ans. 4–5. In any event, “the absence of a disclosure in the prior art relating to function does not defeat the Board’s finding of anticipation.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In this case, the patentability of process claim 1 is based on the recited steps and not the characteristic or function of the elastomeric coating. Based on the foregoing, the rejection of claim 1 is sustained. Claim 2 Claim 2 depends from claim 1 and additionally recites “wherein said first and second coating are the same coating, and wherein said surface comprises a roof, and wherein said first and second coating comprises a protective roofing coating.” Appellant argues that the Examiner reversibly erred because the prior art does not disclose applying a quick-set formula to the first coating. Appeal Br. 9. We are not persuaded by the argument because it is incommensurate in scope with the claim which recites the “first and second coating are the same coating.” Appellant’s argument is unpersuasive also because the argument does not address the Examiner’s fact findings with regard to the prior art examples in support of the rejection. Compare id. (arguing that paragraphs 34, 35, and 37 of Knight do not disclose the recited limitations), Appeal 2020-002063 Application 15/853,740 6 with Final Act. 4 (citing various portions of Knight including paragraphs 24 and 25 in support of the rejection), 9. Claim 3 Claim 3 depends from claim 1 and additionally recites “wherein said quick-set formula sets said first coating in under 15 minutes.” Appellant acknowledges that Knight discloses that “the asphalt emulsion was set up in 5 minutes after application” but argues that the prior art asphalt emulsion is the second coating instead of the first. Appeal Br. 10. This argument, however, is unpersuasive because it does not explain why the capability of the quick-set formula would differ based on the sequence in which the coatings are applied. The argument does not address the Examiner’s findings with regard to Knight Example 1 in support of the rejection. See id. (discussing only Knight Example 2); compare Ans. (analyzing Knight Examples 1 and 2 in support of the rejection of claim 3), with Reply Br. 4–5 (discussing only Knight Example 2). No reversible error has therefore been identified here. Claim 4 Claim 4 depends from claim 1 and additionally recites “step d) of applying a quick-set formula after step c).”3 Appellant does not raise separate arguments for claim 4. See Appeal Br. 11 (“As noted above, however, Knight fails to disclose the limitation of applying a second coating wherein the second coating is an acrylic roof coating and thereafter applying a quick-set formula.”). We sustain the rejection of claim 4 for the reasons provided supra. 3 Should prosecution continue, the Examiner and Appellant may wish to reconsider this claim language because claim 1 recites only steps d, e, and f. Appeal 2020-002063 Application 15/853,740 7 Claim 7 Claim 7 depends from claim 1 and additionally recites “wherein said applying of steps a, b, and c comprise spraying with a single spray gun.”4 Appellant argues that Knight teaches away from the recited single spray gun. Appeal Br. 12. As support, Appellant cites Knight’s disclosure which states that “[t]wo-component sprayers are expensive and difficult to operate and hence beyond the purview of most roofing contractors.” Id. (citing Knight ¶ 2). “Under the proper legal standard, a reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant’s invention. A statement that a particular combination is not a preferred embodiment does not teach away absent clear discouragement of that combination.” Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (citations omitted). In this case, the Examiner finds that Bialke teaches the use of a single spray gun “is more convenient for users and provides higher efficiency when coating.” Final Act. 6–7 (citing Bialke 6:23–37 and providing a rationale to combine the references). Although Knight states that a “[t]wo-component sprayers are expensive and difficult to operate,” (Knight ¶ 2), economy and ease of operability are not limitations of claim 7. The record therefore does not show that “the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.” See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). We accordingly sustain the rejection of claim 7. 4 Should prosecution continue, the Examiner and Appellant may wish to reconsider this claim language because claim 1 recites only steps d, e, and f. Appeal 2020-002063 Application 15/853,740 8 Claim 11 Claim 11 depends from claim 1 and additionally recites “wherein said applying of step c) occurs within 15 minutes after said applying of step a).”5 Appellant acknowledges that each layer in Knight is applied in less than 24 hours and that “15 minutes does fall within a claim of less than 24 hours.” Appeal Br. 13, 14. Appellant, however, argues that Knight is not specific enough to teach or suggest the much smaller range of 15 minutes. Id. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. That is not to say that the claimed composition having a narrower range is unpatentable. Rather, the existence of overlapping or encompassing ranges shifts the burden to the applicant to show that his invention would not have been obvious.” In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003). In this case, Appellant has not presented evidence to rebut the prima facie case of obviousness and therefore failed to carry the burden to show that claim 11 would not have been obvious. We sustain the Examiner’s rejection as a result. CONCLUSION The Examiner’s rejection is affirmed. More specifically, 5 Should prosecution continue, the Examiner and Appellant may wish toreconsider this claim language because claim 1 recites only steps d, e, and f. Appeal 2020-002063 Application 15/853,740 9 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 8–10, 19 102 Knight 1–6, 8–10, 19 7, 11 103 Knight, Bialke 7, 11 Overall Outcome: 1–11, 19 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation