11006283 (B.P.A.I. Jan. 23, 2012)

Ex Parte Hageman

Board of Patent Appeals and InterferencesJan 23, 2012

11006283 (B.P.A.I. Jan. 23, 2012)

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. 11/006,283 12/07/2004 John P. Hageman P/1446-35 8111 7590 01/23/2012 OSTROLENK, FABER, GERB & SOFFEN, LLP 1180 Avenue of the Americas New York, NY 10036-8403 EXAMINER WENDELL, MARK R ART UNIT PAPER NUMBER 3635 MAIL DATE DELIVERY MODE 01/23/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JOHN P. HAGEMAN ____________ Appeal 2009-014579 Application 11/006,283 Technology Center 3600 ____________ Before PHILLIP J. KAUFFMAN, GAY ANN SPAHN, and WILLIAM V. SAINDON, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE John P. Hageman (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s rejections of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2009-014579 Application 11/006,283 2 The Claimed Subject Matter The claimed subject matter is directed to a roofing panel, a roof, and a method of forming a roof on a deck. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A roofing panel comprising: an insulation board having a quadrilateral shape defining four edges; and a laminate of a metal layer and a fabric layer attached to said board such that said laminate overhangs at least two of the edges of said board and the fabric layer faces said deck. Br. 8. The Rejections The following Examiner’s rejections are before us for review. Claims 1-7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hageman (US 6,108,993, iss. Aug. 29, 2000) and Karrfalt (US 4,996,803, iss. Mar. 5, 1991). Ans. 3-4. Claims 8-24 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hageman, Karrfalt, and Clapperton (US 4,386,981, iss. Jun. 7, 1983). Ans. 5-6. SUMMARY OF DECISION We AFFIRM. Appeal 2009-014579 Application 11/006,283 3 OPINION Obviousness based on Hageman and Karrfalt The Examiner and Appellant dispute whether Karrfalt1 teaches that the flexible waterproof membrane 4 of the roofing system 1 overhangs two sides of the insulation board 2 as required by independent claim 1. Ans. 3 and Br. 4. Appellant points to Karrfalt’s column 5, lines 9-18, and contends that “element 21 is actually coextensive with the roof de[c]k and does not overhang.” Br. 4. Appellant also contends that one of Karrfalt’s concerns is to prevent high winds from peeling off the membrane 4 and any underlying layers. Id. We are not persuaded by Appellant’s contentions. Appellant’s reference to Karrfalt’s column 5, lines 9-18, and element 21 as being coextensive with the roof deck and not overhanging, is not understood. Element 21 is not discussed in Karrfalt’s column 5, lines 9-18 and element 21 appears to be a flexible tape strip described with respect to Karrfalt’s second embodiment shown in Figures 5-7 which has not been applied by the Examiner. See Karrfalt, col. 5, ll. 19-55. If instead Appellant meant to reference Karrfalt’s membrane 4 as being coextensive with roof deck 3 and not overhanging insulation board 2, the fact that membrane 4 is coextensive with roof deck 3 does not appear to have any bearing as to whether the membrane 4 “overhangs at least two of the edges of said board” as recited in 1 Throughout the Brief, Appellant refers to the secondary reference as “Kartfilt.” However, Appellant correctly identifies the reference by patent number at several places in the Brief. See Br. 4, ll. 3-4 and 11 and Br. 5, l. 3. Thus, we deem Appellant’s reference to “Kartfilt” to be a typographical error and that Appellant meant to refer to the correct reference name of “Karrfalt.” Appeal 2009-014579 Application 11/006,283 4 claim 1. Rather, Karrfalt’s Figures 2 and 3 depict the membrane 4 as extending past all four edges of the insulation board 2. Thus, Karrfalt’s membrane 4 does indeed appear to overhang at least two edges of the board 2, and this is what the Examiner relied upon Karrfalt to teach. In addition, Appellant’s contention that Karrfalt is concerned with preventing high winds from peeling off the membrane 4 and any underlying layers is without merit as it does not address why the Examiner’s finding that Karrfalt’s membrane 4 overhangs two sides of the insulation board 2 is in error. Since Appellant has not identified error in the Examiner’s rejection, we sustain the Examiner’s rejection of claims 1-7 under 35 U.S.C. § 103(a) as unpatentable over Hageman and Karrfalt. Obviousness based on Hageman, Karrfalt, and Clapperton Independent claim 8 is directed to a roof and independent claim 15 is directed to a method of forming a roof on a deck. Br. 8-9. Both claims call for, inter alia, a plurality of roofing panels to be interconnected with one another such that an overhanging edge of one roofing panel overlies a non- overhanging edge of an adjacent roofing panel. Id. The Examiner finds that the combination of Hageman and Karrfalt fails to disclose roofing panels interconnected with one another such that an overhanging edge of one roofing panel overlies a non-overhanging edge of an adjacent roofing panel as recited in claims 8 and 15, but that this is taught by Clapperton. Ans. 5. Appellant contends that neither the combination of Hageman and Karrfalt nor the reference to Clapperton teaches or suggests the roofing panel as recited in claim 1 forming a roofing panel having two overhanging edges and two non-overhanging edges. Br. 5. Appellant also contends that Appeal 2009-014579 Application 11/006,283 5 although Clapperton teaches overlapping roofing elements, there is no teaching or suggestion of roofing panels being interconnected with one another such that overhanging edges of one roofing panel overly a non- overhanging edge of an adjacent roofing panel as recited in claims 8 and 15, wherein the edges comprise extensions of a laminate of a metal layer and a fabric layer attached to an underlying board. Id. We are not persuaded by Appellant’s contentions. First, Appellant’s contention that the combination of Hageman and Karrfalt neither teaches nor suggests a roofing panel including an insulation board having a quadrilateral shape defining four edges and a laminate of a metal layer and a fabric layer attached to the board such that the laminate overhangs at least two edges of the board, thereby forming a roofing panel having two overhanging edges and two non-overhanging edges is unpersuasive because the Examiner did not depend upon the combination of Hageman and Karrfalt to teach a roofing panel having two non-overhanging edges. Rather, the Examiner relied upon Clapperton for this teaching. Second, Appellant’s contention that Clapperton fails to teach a roofing panel including an insulation board having a quadrilateral shape defining four edges and a laminate of a metal layer and a fabric layer attached to the board such that the laminate overhangs at least two edges of the board, thereby forming a roofing panel having two overhanging edges and two non- overhanging edges is also unpersuasive because the Examiner did not rely upon Clapperton to teach a roofing panel including an insulation board having a quadrilateral shape defining four edges and a laminate of a metal layer and a fabric layer attached to the board such that the laminate Appeal 2009-014579 Application 11/006,283 6 overhangs at least two edges of the board. Rather, the Examiner relied upon the combination of Hageman and Karrfalt for this teaching. Third, Appellant’s contention that although Clapperton may teach overlapping roofing elements, Clapperton neither teaches nor suggests roofing panels being interconnected with one another such that an overhanging edge of one roofing panel overlies a non-overhanging edge of an adjacent roofing panel, wherein the edges include extensions of a laminate of a metal layer and a fabric layer attached to an underlying board is also unpersuasive for the reasons that follow. The first part of Appellant’s contention, that Clapperton neither teaches nor suggests roofing panels being interconnected with one another such that an overhanging edge of one roofing panel overlies a non-overhanging edge of an adjacent roofing panel, is unpersuasive because it is a mere allegation that Clapperton does not teach the claim language of claims 8 and 15 and provides no substantive argument as to why the Examiner’s finding that Clapperton does teach this subject matter is in error. The second part of Appellant’s allegation, that Clapperton neither teaches or suggests wherein the edges include extensions of a laminate of a metal layer and a fabric layer attached to an underlying board, is unpersuasive because the Examiner has not relied upon Clapperton to teach this, but rather has relied upon the combination of Hageman and Karrfalt for this teaching. Moreover, Appellant’s arguments fail to address the Examiner’s combination of Hageman, Karrfalt, and Clapperton. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); and In re Keller, 642 F.2d 413, 426 (CCPA 1981) (One cannot show nonobviousness by attacking references individually where the rejections are based on a combination of references.). Appeal 2009-014579 Application 11/006,283 7 In view of the foregoing, we sustain the Examiner’s rejection of claims 8-24 under 35 U.S.C. § 103(a) as unpatentable over Hageman, Karrfalt, and Clapperton. DECISION We affirm the Examiner’s rejections of claims 1-24. 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) (2007). AFFIRMED Klh