Ex Parte Egan

Patent Trial and Appeal Board

Mar 16, 2015

10991711 (P.T.A.B. Mar. 16, 2015)

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.
10/991,711 11/18/2004 William F. Egan SNR.P.2265 8816
23575 7590 03/16/2015
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
EXAMINER
ADAMOS, THEODORE V
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
03/16/2015 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 WILLIAM F. EGAN
____________

Appeal 2012-006869
Application 10/991,711
1

Technology Center 3600
____________

Before BART A. GERSTENBLITH, JEREMY M. PLENZLER, and
KEVIN W. CHERRY, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
William F. Egan (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 24, 26–44, 47–50, 52–55, 57, 58,
60–77, 79, 81, and 82. We have jurisdiction under 35 U.S.C. § 6(b).

1
Appellant identifies BASF Construction Chemicals, LLC as the real party
in interest. Appeal Br. 3.
Appeal 2012-006869
Application 10/991,711

2
Claimed Subject Matter
Claims 24, 50, 58, and 79 are the independent claims on appeal.
Claim 24 is illustrative of the claimed subject matter and is reproduced
below.
24. A building wall comprising:
a substrate;
a composite building material attached to said substrate,
said composite building material comprising a unitary integral
composite comprising a corrosion-resistant, three-dimensional
lath of non-metal fibers integral with a weather barrier means,
wherein said lath and said weather barrier are selectively
detachable from one another without causing damage to either;
and
an exterior coating material at least partially held within
said lath.
Appeal Br. 19, Claims App.
Rejections
Appellant seeks review of the following rejections, each made under
35 U.S.C. § 103(a):
I. Claims 24, 26–30, 32–34, 38–44, 47, 48, 50, 52–55, 57, 58, 60–
64, 66–68, 72–77, 79, 81, and 82 are rejected as unpatentable over
Kreikemeier (US 5,481,843, iss. Jan. 9, 1996), Egan (US 6,131,353,
iss. Oct. 17, 2000), and Porter (US 2005/0009428 A1, pub. Jan. 13, 2005);
II. Claims 31, 49, and 65 are rejected as unpatentable over
Kreikemeier, Egan, Porter, and Lehnert (US 5,371,989, iss. Dec. 13, 1994);
and
III. Claims 35–37 and 69–71 are rejected as unpatentable over
Kreikemeier, Egan, Porter, and Waggoner (US 6,355,333 B1, iss. Mar. 12,
2002).
Appeal 2012-006869
Application 10/991,711

3

SUMMARY OF DECISION
We AFFIRM-IN-PART.
ANALYSIS
Rejection I
The Examiner concludes that the combination of Kreikemeier, Egan,
and Porter would have rendered the subject matter of claims 24, 26–30, 32–
34, 38–44, 47, 48, 50, 52–55, 57, 58, 60–64, 66–68, 72–77, 79, 81, and 82
obvious to one of ordinary skill in the art at the time of the invention.
Ans. 5–12.
Claims 24, 26–30, 32–34, 38–44, 47, 48, 58, 60–64, 66–68, 72–77
2

Appellant raises several arguments in response to this rejection. First,
Appellant asserts that Kreikemeier’s “substrate 16” does not disclose the
claimed “weather barrier” because substrate 16 is a “building wall
substrate.” Appeal Br. 10.
In response to Appellant’s argument, the Examiner explains that the
Specification does not “give a specific meaning for the term ‘weather
barrier’” and that “under the broadest reasonable interpretation, the substrate
element #16 of Kreikemeier meets the structural limitations of the weather
barrier . . . [because it] is capable of preventing the elements from entering
within a building structure and therefore acts as a weather barrier.” Id. at 15.

2
Appellant does not separately argue claims 24, 26–30, 32–34, 38–44, 47,
48, 58, 60–64, 66–68, and 72–77. Appeal Br. 10–16; Reply Br. 4–9. We
select claim 24 as representative. Accordingly, claims 26–30, 32–34, 38–44,
47, 48, 58, 60–64, 66–68, and 72–77 stand or fall with claim 24.
See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appeal 2012-006869
Application 10/991,711

4

In the Reply Brief, Appellant points to the Specification’s description
of “weather barrier 11” in arguing that “typical building wall substrates,
such as plywood or oriented strand board (OSB) sheathing, do not
effectively resist the transmission of water therethrough, and do not
effectively control the transmission of moisture vapor therethrough.” Reply
Br. 5.
Appellant’s Specification states that “[w]eather barrier 11 may be any
conventional weather barrier that is used in building, construction, and
renovation.” Spec. 6. The Specification further states that “[w]eather
barrier 11 is a building code recognized product which is typically sold on a
roll” and that it “resists the transmission of water therethrough and controls
the transmission of moisture vapor therethrough.” Id. at 7. The
Specification further provides several examples of known weather barriers.
Id.
At best, the Specification can be read as expressly defining the term
“weather barrier” as a material that “resists the transmission of water
therethrough and controls the transmission of moisture vapor therethrough.”
Spec. 7. Appellant’s arguments that a typical substrate does not disclose a
weather barrier because a typical substrate cannot effectively resist the
transmission of water and effectively control the transmission of moisture
vapor, are not commensurate in scope with the meaning of the term “weather
barrier” because there is no degree of resistance or control expressly recited
in claim 24 or the Specification. Thus, even if we consider Kreikemeier’s
substrate 16 to be a typical substrate, the Examiner’s finding that it is
capable of resisting the transmission of water and controlling the
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Application 10/991,711

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transmission of moisture to some degree is supported by a preponderance of
the evidence. Accordingly, Appellant’s argument is not persuasive.
Second, Appellant contends that Kreikemeier’s wooden support
beam 17 does not disclose the claimed substrate because wooden support
beam 17 is analogous to the studs of the claimed invention. Appeal Br. 10–
12.
The Examiner’s response to Appellant’s argument explains that
“substrate” is not defined in Appellant’s Specification by definition or
structure and “under the broadest reasonable interpretation, the wooden
beam #17 of Kreikemeier meets the structural limitations of a building wall
substrate . . . since the beam #17 forms a layer underneath the weather
barrier #16 of Kreikemeier to which it is attached.” Ans. 15.
Appellant’s Reply Brief acknowledges that a “building wall comprises
a plurality of spaced-apart vertically extending studs.” Reply Br. 6. As
such, Kreikemeier’s wooden beam 17 is part of the building wall. Further,
we agree with the Examiner, and Appellant has not argued to the contrary,
that the Specification does not define the claimed “substrate” such that it
would exclude wooden beam 17. Thus, because wooden beam 17 forms a
layer underneath Kreikemeier’s element 16, wooden beam 17 reasonably
discloses a “substrate.” Accordingly, Appellant’s argument is not
persuasive.
Third, Appellant asserts that Kreikemeier does not disclose a “‘unitary
integral composite[,]’ as that term is used in the present application.”
Appeal Br. 12. Appellant asserts that the term refers to a weather barrier and
woven fabric “which are integral with one another prior to attaching the
composite to a building wall substrate” whereas element 16 of Kreikemeier
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“is attached to the support beam prior to affixing the lath 10 to the
substrate 16.” Id. (emphases added).
In response to Appellant’s argument, the Examiner explains that
claim 24 is directed to a “building wall” and therefore the “steps in
constructing the ‘building wall’ are not germane to the final product
constructed.” Ans. 16. The Examiner further explains that the combination
of Kreikemeier’s and Egan’s teachings results in a composite material that
uses adhesive “to connect the weather barrier and lath of Kreikemeier to one
another such that the weather barrier and lath are selectively detachable from
one another without causing damage to either element.” Id.
The Examiner’s combination of teachings relies upon Egan solely for
the disclosure of an adhesive, finding that it would have been obvious to
attach Kreikemeier’s element 16 and lath 10 with such adhesive as opposed
to using nails as disclosed in Kreikemeier. Ans. 5–6. Appellant’s argument
directed to when the unitary integral composite becomes such, i.e., whether
it is prior to attachment to element 17 or after, is inapposite as claim 24 is an
apparatus claim, not a method claim. Thus, Appellant has not persuaded us
that the order of assembling the device distinguishes the final product from
the Examiner’s proposed combination.
Further, the Specification discloses that “[t]he woven fabric 12 is
attached to weather barrier 11. . . . The joined weather barrier 11 and woven
fabric 12 form a single unitary integral composite 10 . . . . The weather
barrier 11 and fabric 12 may be attached to each other with any suitable
attachment or securement means.” Spec. 9. The Specification further
discloses that “[w]ithout limitation, the weather barrier 11 and woven
fabric 12 may be attached to each other by means of adhesives, mechanical
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means, or by heat lamination.” Id. Thus, even if the phrase “unitary integral
composite” might, in some circumstances, suggest a structure other than one
formed by adhesive, the Specification clearly describes the phrase as not so
limited.
In the Reply Brief, Appellant asserts that “the composite drainage mat
of Egan is not analogous to the composite building material of the present
application.” Reply Br. 8. Appellant contends that Egan’s mat and the
composite building material of the present application are used for different
purposes and placed in different positions in the building wall such that
“[o]ne of ordinary skill in the art would not reposition the drainage mat of
Egan from behind the insulation board to in front of the insulation board and
to apply an exterior finishing material to the drainage mat of Egan.” Id.
We do not understand Appellant to have challenged the Examiner’s
reliance upon Egan based on whether Egan is analogous art. Rather,
Appellant’s argument, quoted above, appears to be based on whether one of
ordinary skill in the art would modify the position of Egan. The Examiner’s
rejection of claim 24 does not modify the position of Egan; rather, as
explained above, the Examiner relied upon Egan, which is directed to a
composite weather barrier and, hence, in the same field of endeavor as
Appellant’s invention, solely for its teaching of the use of an adhesive
between two building materials. Accordingly, Appellant’s argument is not
persuasive.
Fourth, Appellant asserts that the Examiner improperly attempted to
take official notice that nails and adhesives were well known in the art to
attach a lath to a weather barrier and that these forms of adhesive were
therefore equivalent. Appeal Br. 15; see Ans. 6–7.
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8

In reviewing the Examiner’s rejection and Appellant’s arguments, we
have not considered the Examiner’s position regarding whether nails and
adhesives were or were not recognized as equivalents; rather, we have
limited our consideration to the Examiner’s findings and conclusions as
expressed above.
Accordingly, we sustain Rejection I as applied to claims 24, 26–30,
32–34, 38–44, 47, 48, 58, 60–64, 66–68, 72–77.
Claims 50, 52–55, 57, 79, 81, and 82
Appellant asserts that the Examiner’s proposed combination does not
disclose installing the composite building material in a single step. Appeal
Br. 13. Although we found Appellant’s argument unpersuasive in the
context of claim 24, which does not recite any such step or explicit structural
having such capability, claim 50 is directed to a method of constructing a
building wall comprising, inter alia, “attaching said composite building
material to a building wall substrate in a single step” (Appeal Br. 21, Claims
App. (emphasis added)) and claim 79 is directed to method of constructing a
stucco system comprising, inter alia, “attaching said composite building
material over said substrate or over said insulation, if insulation is present, in
a single step” (id. at 24 (emphasis added)).
The Examiner’s rejection of claims 50 and 79 does not expressly find
that any of Kreikemeier, Egan, or Porter discloses the “attaching . . . in a
single step” limitation of claims 50 and 79. Ans. 7–8. Accordingly, we do
not sustain Rejection I as applied to claims 50 and 79, and claims 52–55, 57,
81, and 82, which depend therefrom.
Appeal 2012-006869
Application 10/991,711

9

Rejections II and III
The Examiner concludes that the combination of Kreikemeier, Egan,
Porter, and Lehnert would have rendered the subject matter of claims 31, 49,
and 65 (Rejection II), and that the combination of Kreikemeier, Egan, Porter,
and Waggoner would have rendered the subject matter of claims 35–37 and
69–71 (Rejection III), obvious to one of ordinary skill in the art at the time
of the invention. Ans. 12–14.
Appellant asserts that Rejections II and III are erroneous because the
additional references relied upon by the Examiner do not cure the alleged
deficiencies argued by Appellant in the context of Rejection I. Appeal
Br. 16–17.
As discussed in the context of our analysis of Rejection I, we do not
agree that Rejection I is deficient beyond our consideration of claims 50, 79,
and the claims depending therefrom. Our analysis with respect to claims 50,
79, and the claims depending therefrom does not apply here because none of
claims 31, 35–37, 49, 65, and 69–71 recite a method with a single step
attachment. Accordingly, we sustain Rejections II and III.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 24, 26–44, 47–
49, 58, and 60–77.
We REVERSE the Examiner’s decision rejecting claims 50, 52–55, 57,
79, 81, and 82.
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-IN-PART
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