Ex Parte Hong et al

Patent Trial and Appeal Board

Dec 17, 2018

14140050 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/140,050 12/24/2013 Keith C. Hong
20306 7590 12/17/2018
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32NDFLOOR
CHICAGO, IL 60606
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.
18-363-US-DIV 1892
EXAMINER
VAN SELL, NATHAN L
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
12/17/2018 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 KEITH C. HONG,
HUSNU M. KALKANOGLU, MING LAO SHIAO,
ANNE B. HARDY, JAMES A. SALVATORE,
and ANDREW G. JOHNSON
Appeal2017-003010
Application 14/140,050
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
JANEE. INGLESE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-18 of Application 14/140,050
under 35 U.S.C. § 103(a) as obvious. Final Act. (August 11, 2015).
Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b).
We heard oral argument in this appeal on December 10, 2018.
For the reasons set forth below, we affirm.
1 CertainTeed Corp. is identified as the real party in interest. Appeal Br. 1.
Appeal2017-003010
Application 14/140,050
BACKGROUND
The '050 Application describes asphalt roofing shingles, protective
granules for such shingles and processes for making such granules and
shingles. Spec. 1. In particular, the Specification describes the manufacture
and use of algaecidal roofing granules. Id. The algaecidal roofing granules
described in the '050 Application comprise an inorganic algaecidal agent
with an algaecide leaching rate that can be controlled. Id. at 2. These
algaecidal roofing granules are produced by agglomerating mineral particles
having an average size smaller than that suitable for use in manufacturing
asphalt roofing shingles. Id. The mineral particles are treated with a
suitable binder to form porous granule bodies. Id. at 3. The inorganic
algaecide is introduced into the granule body in one of several ways: (1) by
including the algaecide in the mixture of mineral particles and binders before
the granule bodies are formed, (2) coating the granule bodies after
formation, or (3) soaking the porous granule bodies in an aqueous solution
of the algaecidal inorganic salt. Id. at 3--4.
Claim 1 is representative of the '050 Application's claims and is
reproduced below from the Claims Appendix:
1. An algae-resistant roofing shingle, the shingle including
a substrate of fibrous material coated with a bituminous
material, the substrate sheet having a top, the shingle being
produced by a process comprising producing algae-resistant
roofing granules, distributing [the algae-resistant roofing
granules] over selected portions of the top of the substrate
sheet, and adhering the granules to the substrate sheet, the
bituminous material serving as an adhesive to bind the roofing
granules to the substrate sheet, the algae-resistant roofing
granules being produced by a process comprising:
(a) providing porous, inert base particles; and
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(b) providing at least one inorganic algaecide on or
within the base particles to form algaecide-bearing particles.
Appeal Br. 20 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1--4, 6, and 7 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Eckert2 and McArdle. 3 Final
Act. 2.
2. Claim 8 is rejected under 35 U.S.C. § I03(a) as unpatentable over
the combination of Eckert, McArdle, and Minnesota Mining. 4
Final Act. 4.
3. Claims 9 and 11 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Eckert, McArdle, and
Marzolin. 5 Final Act. 5.
4. Claims 10 and 12 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Eckert, McArdle, Marzolin,
and Minnesota Mining. Final Act. 5.
5. Claims 13 and 14 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Eckert, McArdle, and
Minnesota Mining. Final Act. 7.
2 US 2,027,029, issued January 7, 1936.
3 US 2002/0066233 Al, published June 6, 2002.
4 GB 1,203,285, published August 26, 1970.
5 US 2002/0182334 Al, published December 5, 2002.
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6. Claims 15, 16, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Eckert and McArdle. Final
Act. 8.
7. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Eckert, McArdle, and Minnesota Mining. Final
Act. 11.
DISCUSSION
Rejection 1. Appellants argue that the rejection of claims 1--4, 6, and
7 is based upon erroneous fact finding. Appeal Br. 6. In particular,
Appellants argue that the Examiner erred by finding that McArdle teaches
zinc oxide as an algaecide. Id. at 7. Appellants contend that McArdle
teaches the use of zinc oxide as either part of a ceramic grain, a frit binder
precursor, or a vitreous bonding material, and that when used in this manner,
the zinc oxide particles lack sufficient surface area to function as an
algaecide. Id. (quoting McArdle ,r,r 28, 59, 117). Appellants further contend
that the differences in zinc oxide's physical properties when used as a
vitreous bonding material as opposed to the manner described in the '050
Application are common knowledge to people of ordinary skill in the art.
Id. at 8.
Appellants' arguments are not persuasive of reversible error.
First, Appellants' arguments regarding the effective surface area of
the zinc oxide are unpersuasive because they fail to consider the full scope
of Appellants' claims, Appellants' disclosure, and the prior art disclosure.
As an initial matter, Appellants' argument that McArdle only discloses the
use of zinc oxide to form a vitreous or ceramic binder is not correct. As
Appellants note, McArdle also teaches the use of zinc oxide within an a-
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alumina matrix to form ceramic abrasive grain particles. McArdle ,r 28.
Appellants fail to explain how zinc oxide particles contained within a
ceramic a-alumina matrix differ from the incorporation of metal oxide
particles within a thin ceramic shell encasing the typical roofing granule.
To the extent that Appellants are attempting to draw a distinction
between the incorporation of finely divided zinc oxide particles within a thin
ceramic shell and the vitreous or ceramic binders described in paragraphs 59
and 117 of McArdle on the basis of the effective surface area of the zinc
oxide, this argument is also unpersuasive. McArdle clearly states that when
used as either a vitreous or ceramic binder, zinc oxide need only form a
portion of the binding material. See, e.g., McArdle ,r 59 ("Exemplary frit
binder precursors include feldspar, borax, quarts, soda ash, red lead, zinc
oxide, whiting, antimony trioxide, titanium dioxide, sodium silicofluoride,
flint, cryolite, boric acid and combinations thereof" ( emphasis added)).
Thus, McArdle' s disclosure includes vitreous binding compositions in which
the zinc oxide can exist as finely divided particles within a thin ceramic
shell.
Second, in their Reply Brief, Appellants argue:
The Examiner's reasons that the zinc oxide disclosed in
McArdle must have the same chemical properties as ... the
zinc oxide used as an inorganic algaecide, and that therefore it
would be obvious to use McArdle' s ceramic aggregate particles
in Eckert's roofing shingles.
However, the relevant comparison is with the actual
product disclosed by McArdle, and not with one of its
ingredients. McArdle variously discloses the inclusion of zinc
oxide as "a metal oxide modifier, in forming his ceramic
abrasive grain, as [a] "frit binder precursor," and as "a metal
oxide that [is] used to form vitreous binding materials." In each
case, one of ordinary skill in the art would understand that the
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zinc oxide ingredient undergoes chemical reactions with other
components of the binder to form a new material with chemical
properties that differ from the zinc oxide ingredient." ...
Further, one of ordinary skill in the chemical arts would
understand that the biological efficacy of metal oxide such a
zinc oxide depends not only on its chemical structure both [ sic,
but] also its physical form. One of ordinary skill in the art
would expect McArdle' s vitreous binders made using zinc
oxide as a precursor to be physically different from algaecidal
zinc oxide.
Reply Br. 2.
This argument is not persuasive because it ignores the scope of
Appellants' own disclosure. The '050 Application's Specification includes
examples that are "provided to better disclose and teach processes and
compositions of the present invention." Spec. 11. The first such example is
reproduced below:
Id.
Example 1
634 g of stone dust from rhyolite igneous rock
(Wrentham, MA) are mixed for 20 minutes in a Hobart mixer
with 1901 g of kaolin clay (Cedar Heights Clay Co., Oak Hill,
OH), 44 g of cuprous oxide (American Chemet Corporation,
Deerfield, IL) and 2.2 g of Kadox - brand zinc oxide (Zinc
Corporation of America, Monaca, PA). The mixture is then
extruded using a single barrel extruder to form green granules
having an average particle size of about 2.5 mm. The green
granules are then fired in a Blue M periodic oven (Lunaire
Limited, Williamsport, PA) at a temperature of 1050 degrees C
for 180 minutes.
The process described in forming the aggregate particles in the
Specification's Example 1 is similar to the process described in McArdle for
forming aggregate ceramic particles. In McArdle' s process, abrasive
ceramic particles are mixed with binder precursors, including frit binder
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precursors comprising zinc oxide and clay, such as kaolin. See McArdle
,r,r 59---60. When the ceramic aggregate precursor material is at least
partially cured, residual organic material is removed in a pre-firing step that
heats the ceramic aggregate precursor to between 500°C to about 650°C.
Id. ,r,r 92-100. Next the "pre-fired particles containing no residual cured
and/ or uncured material are heated to a final temperature and the range from
about 650°C. to about 1500°C. at any desired heating rate." Id. ,I 101.
As can be seen, both Appellants' Example 1 and McArdle
contemplate mixing zinc oxide with other materials, such as kaolin, and
treating them at similar high temperatures. Appellants have not explained or
demonstrated that the aggregated roofing granules produced by the process
of Example 1 provide algaecidal levels of zinc oxide while materials
prepared following McArdle's disclosure necessarily fail to do so.
In sum, Appellants' arguments are not persuasive of the existence of
reversible error. We, therefore, affirm the rejection of claims 1--4, 6, and 7
as unpatentable over the combination of Eckert and McArdle.
Rejection 2. Appellants argue that claim 8 is patentable by virtue of
its dependence from independent claim 1, which they assert to be patentable.
Appeal Br. 10. As discussed above, claim 1, in fact, is not patentable.
Because we have affirmed the rejection of claim 1, we also affirm the
rejection of claim 8.
Rejection 3. Appellants argue that claims 9 and 11 are patentable
because they ultimately depend from allegedly patentable independent claim
1. Appeal Br. 12. Because we have affirmed the rejection of claim 1, we
also affirm the rejection of claims 9 and 11.
Rejection 4. Appellants argue that claims 10 and 12 are patentable
because they ultimately depend from an allegedly patentable independent
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claim 1. Appeal Br. 14. Because we have affirmed the rejection of claim 1,
we also affirm the rejection of claims 10 and 12.
Rejection 5. Appellants argue the claims 13 and 14 are patentable
because they ultimately depend from an allegedly patentable independent
claim 1. Appeal Br. 15. Appellants' premise is incorrect, and we have
affirmed the rejection of claim 1. Thus, we also affirm the rejection of
claims 13 and 14.
Rejection 6. Appellants argue for reversal of this rejection on the
basis of the limitations in independent claim 15, from which claims 16 and
18 ultimately depend. Appeal Br. 17. We, therefore, limit our discussion to
claim 15, which we select as representative of the group of claims subject to
this ground of rejection. 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants' arguments for reversal of the rejection of claim 15 are the
same as those advanced for reversal of the rejection of independent claim 1.
Appeal Br. 17 ("As explained above, McArdle does not disclose algaecidal
zinc oxide. Therefore the limitations of independent claim 15 are not met by
the cited combination of references, and no prima facie case of obviousness
has been established."). For the reasons set forth above, Appellants have not
convinced us that the Examiner erred by finding that McArdle describes or
suggests the use of algaecidal zinc oxide. We, therefore, affirm the rejection
of claim 15. Accordingly, we also affirm the rejection of claims 16 and 18.
Rejection 7. Appellants argue that claim 17 is patentable based upon
its ultimate dependence from an allegedly patentable independent claim 15.
Appeal Br. 18-19. Appellants' premise is incorrect, and we have affirmed
the rejection of claim 15. Accordingly, we also affirm the rejection of claim
17.
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CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1-18
of the '050 Application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(iv)(l ).
AFFIRMED
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