Ex Parte Fast et al

Patent Trial and Appeal Board

Mar 27, 2013

11899260 (P.T.A.B. Mar. 27, 2013)

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.
11/899,260 09/05/2007 Norman Douglass Fast 7750-1 7823
29602 7590 03/28/2013
JOHNS MANVILLE
10100 WEST UTE AVENUE
PO BOX 625005
LITTLETON, CO 80162-5005
EXAMINER
CAMPOS, JR, JUAN J
ART UNIT PAPER NUMBER
3654
MAIL DATE DELIVERY MODE
03/28/2013 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 NORMAN DOUGLASS FAST and
WALTER ALEXANDER JOHNSON
____________________

Appeal 2011-001690
Application 11/899,260
Technology Center 3600
____________________

Before: WILLIAM V. SAINDON, WILLIAM A. CAPP, and
NEIL T. POWELL, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-001690
Application 11/899,260

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-8 under 35 U.S.C. § 103(a) as unpatentable over
Knowlton (US 2004/0154265 A1, pub. Aug. 12, 2004). We have
jurisdiction under 35 U.S.C. § 6(b).

The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method of rolling a first and second single-
ply membrane sheet having seam tape applied
along one edge, comprising placing the first sheet
on top of the second sheet with the seam tape edge
of each of said sheets at opposite sides and with
the non-seam tape edge of each of said sheets
overlying the seam tape of the other sheet, and
then rolling the sheeting.

SUMMARY OF DECISION
We AFFIRM.

OPINION
It is not disputed that the prior art method is practiced on the same roll
as the claimed method. The difference lies in the way the sheets are stacked
when rolled, both rolling methods intended to solve the “conical-shaped
roll” problem. The prior art method places the adhesive strips (tape) on the
outsides of the sheets, whereas the present invention stacks the adhesive
strips on the sheets.

App
App

the p
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remo
ackn
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try b
Ans.
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way,
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Figure 1
rior art de
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uct by cov
der to narr
val during
owledges
Examiner
ecause the
6.
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sentative.
ever, App
i.e., an alt
edits, or o
Fulton, 3

Examine
tape is ge
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/899,260
, below, de
vice (top)
miner con
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ow the rol
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that its me
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therwise d
91 F.3d 11

r cites Kno
nerally co
picts in b
and the cla
cluded tha
dhesive st
l and/or to
. Ans. 4.
thod of ro
uded that t
ite numbe
e claims a
ts first arg
rely point
Appellant
iscourages
95, 1201 (

wlton, pa
vered with
3
lack shadin
imed devi
t it would
rips (rathe
protect th
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lling leave
he claimed
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ue that Kn
out that Kn
s do not ex
investiga
Fed. Cir. 2
ra. [0012]:
a protecti
g the loca
ce (bottom
have been
r than hav
e adhesive
iner found
s an expos
rolling m
table solu
. We selec
owlton tea
owlton te
plain how
tion into th
004) (prio
“The exp
ve release
tion of the
)
obvious to
ing them o
from acc
that the p
ed surface
ethod is o
tions (to ro
t claim 1
ches away
aches a di
Knowlton
e claimed
r art does
osed surfa
sheeting (
tape of
roll the
utboard)
idental
rior art
. Ans. 41.
bvious to
lling).
as
. Br. 3-4.
fferent
criticizes
invention
not teach
ce of the
not

,
.
Appeal 2011-001690
Application 11/899,260

4
away from claimed subject matter merely by disclosing a different solution
to a similar problem unless the prior art also criticizes, discredits, or
otherwise discourages the solution claimed).
Appellants next argue that there is “no suggestion” and “no
recognition” of the claimed method. Br. 4-5. However, Appellants’
argument fails to point to error in the Examiner’s articulated reasoning and
is not commensurate with the Supreme Court’s holding in KSR. KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007) (“The obviousness analysis
cannot be confined by a formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on the importance of
published articles and the explicit content of issued patents.”).
The Examiner has set forth several reasons why the claimed method is
obvious in view of the prior art. Ans. 4, 6. Appellants have not apprised us
of error in this reasoning. Accordingly, having reviewed all of Appellants’
arguments, we are not apprised of error in the Examiner’s conclusion of
obviousness.

DECISION
We AFFIRM the Examiner’s decision regarding claims 1-8.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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