Ex Parte Hong et al

Patent Trials and Appeals Board

Mar 21, 2019

14335284 - (D) (P.T.A.B. Mar. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/335,284 07/18/2014 Keith C. Hong
20306 7590 03/21/2019
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.
18-366-US-CON 6613
EXAMINER
VAN SELL, NATHAN L
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
03/21/2019 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 and MING LIANG SHIAO
Appeal2017-005404
Application 14/335,284
Technology Center 1700
Before TERRY J. OWENS, MONTE T. SQUIRE, and BRIAND. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction. 35 U.S.C. § 6(b ). An
oral hearing was held March 14, 2019. 2
We AFFIRM.
1 According to Appellants, the real party in interest is CertainTeed
Corporation. Appeal Br. 1.
2 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
Appeal2017-005404
Application 14/335,284
STATEMENT OF THE CASE3
Appellants describe the invention as relating to roofing materials with
improved resistance to thermal stresses. Spec. ,r 15. In particular, the
roofing materials make use of phase change materials. Id. at ,r 16. Claim 1,
reproduced below with formatting modified for readability, is illustrative of
the claimed subject matter:
1. A solar heat responsive roofing material comprising:
a) a continuous phase; and
b) a discontinuous phase dispersed in the continuous
phase,
the discontinuous phase having a phase
transition at a temperature between about 50
degrees Celsius and about 95 degrees Celsius,
the discontinuous phase comprising at least
one thermoplastic polymer,
the discontinuous phase being encapsulated
in microcapsules encapsulated within
macrocapsules agglomerated with inert material to
form roofing granules.
Appeal Br. 13 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Salyer
Davis et al.
("Davis")
Pause
us 4,797,160
US 6,835,334 B2
US 2005/0020768 Al
Jan. 10, 1989
Dec. 28, 2004
Jan.27,2005
3 In this Decision, we refer to the Final Office Action dated August 11, 2015
("Final Act."), the Appeal Brief filed March 14, 2016 ("Appeal Br."), the
Examiner's Answer dated December 12, 2016 ("Ans."), and the Reply Brief
filed February 10, 2017 ("Reply Br.").
2
Appeal2017-005404
Application 14/335,284
Shiao et al.
("Shiao")
US 2005/0072110 Al Apr. 7, 2005
REJECTIONS
The following rejections are before us on appeal:
Rejection 1. Claims 1-20 under 35 U.S.C. § 103 as unpatentable over
Shiao in view of Salyer and Davis. Ans. 2.
Rejection 2. As an alternative rejection, claims 3, 10, and 16 under
35 U.S.C. § 103 as unpatentable over Shiao, Salyer, and Davis in view of
Pause. Id. at 6.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t
has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections."). After considering the evidence
presented in this Appeal and each of Appellants' arguments, we are not
persuaded that Appellants identify reversible error. Thus, we affirm the
Examiner's rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
The Appellants do not present substantively separate arguments for
either rejection or for any claim. Appeal Br. 9-11. Consistent with the
provisions of 37 C.F.R. § 4I.37(c)(l)(iv) (2013), we limit our discussion to
claim 1, and all remaining claims stand or fall with claim 1.
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Appeal2017-005404
Application 14/335,284
The Examiner rejects claim 1 under 35 U.S.C. § 103 as unpatentable
over Shiao in view of Salyer and Davis. Ans. 2. The Examiner finds, for
example, that Shiao teaches infrared reflective roofing material comprising
roofing granules. Id. ( citing Shiao ). The Examiner finds that Shiao does not
teach phase change materials as recited and does not teach microcapsules
with macrocapsules as recited. Id.
The Examiner finds that Salyer teaches phase change materials in the
form of pellets that may be used in building materials. Id. at 3 (citing
Salyer). The Examiner finds that Salyer teaches the benefit of using phase
change materials is that excess energy is absorbed and released to maintain
comfort range. Id. at 3--4. The Examiner also finds that Davis teaches
macrocapsules containing microencapsulated phase change materials. Id. at
4 ( citing Davis). The Examiner determines that it would have been obvious
to combine Shiao's roofing materials (i.e., the Shiao granules) with the
phase change compositions of Salyer in the macrocapsule form of Davis "for
roofing materials produced with thermal energy storage compositions having
a relatively high payload of phase change material that provides and
maintains comfort conditions or the comfort range inside such buildings
where the roofing shingles are used." Id. at 4.
Appellants argue that Salyer makes use of phase change materials in
interior living spaces. Appeal Br. 9. Appellants thus argue that there would
not be reason to use them in roofing granules because roofs are typically
thermally isolated from interior living spaces and because roofing shingles
are quite thin compared to interior walls and floors and therefore, with phase
change materials, would provide little heat release and storage. Id. at 9-10.
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Appeal2017-005404
Application 14/335,284
We agree with the Examiner that Appellants read the cited references
too narrowly. Ans. 6; see also In re Lamberti, 545 F.2d 747, 750 (CCPA
197 6) ("all disclosures of the prior art, including unpreferred embodiments,
must be considered" (citation omitted)). Shiao teaches infrared-reflective
roofing granules. Ans. 2; Shiao Abstract. Shiao recognizes the need for
roofing materials, and especially singles, with improved resistance to
thermal stresses and increased heat resistance. Shiao ,r,r 19, 20.
Salyer teaches the use of phase change materials in building materials.
Ans. 3--4; Salyer 1 :36-30, 2:4--12. The phase change materials allow
storage and then later release of energy to the surrounding environment.
Salyer 1 :23-31. Salyer indicates, as an example, that phase change
materials may be incorporated in walls or floors to maintain interior comfort
conditions. Salyer 1 :36--46. Salyer's teachings, however, are not limited to
that example. Salyer refers to phase change materials in a "variety of
building materials" to "reduce energy costs" (id. at 1 :32-33) and teaches that
phase change materials can be "economically incorporated into common
building materials" with "broad utility for many heating and cooling
applications including solar passive, solar active, off-peak electric load
leveling, bridge deck deicing, etc." (Id. at 2:4--12). Because the sun shines
on a roof, use of phase change materials in a roof would be an example of a
solar active application. Ans. 8.
Salyer also teaches phase change materials with melting points
between O and 95 degrees Celsius. Id. at 3 (citing, e.g., Salyer 4:40-50).
This range of temperature is much broader than climate controlled interior
room temperatures and further suggests appropriateness of phase change
materials for outdoor building materials.
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Appeal2017-005404
Application 14/335,284
We agree with the Examiner's determination that Salyer suggests the
use of phase change materials in roofs. Ans. 8. The determination is well-
supported by Salyer' s discussion of the use of phase change materials in
building materials generally, Salyer' s discussion of phase change materials
for solar-active (in sunshine) applications, and Salyer's use of materials over
a broad range of temperatures.
The Examiner relies on Davis for teaching macroencapsulation of
microcapsules. Notably, Davis also broadly suggests use of its phase change
macrocapsules for use in "construction materials for residential and
commercial buildings." Davis 2:20-24. Thus, Davis further supports that it
would have been obvious to employee phase change materials in roof
granules.
Although not relied upon for the rejection of claim 1, the Pause
reference further evidences that a person of skill in the art would have
understood the other references' discussion of phase change building
materials as including roofing materials because, although it does not make
use of roof granules, it expressly teaches phase change materials for roof
constructions. Ans. 11; Pause ,r 44.
Based on the preponderance of the evidence, a person of skill in the
art would have understood from Shiao that it is desirable to control heat
effects of roofing granules. From Salyer and Davis ( and, although not
strictly necessary to the rejection of claim 1, Pause), the person of skill in the
art would have understood that phase change materials could be effectively
used in a wide variety of building materials-including building materials
exposed to direct sunlight-to control heat effects particularly when in the
macroencapsulated form taught by Davis. Use of the Salyer/Davis phase
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Appeal2017-005404
Application 14/335,284
change materials in the granules of Shiao would be no more than a
predictable use of prior art elements according to established function.
Under these circumstances, the Examiner's obviousness rejection is well-
founded. See KSR Int 'l v. Teleflex Inc., 550 U.S. 398, 417 (2007).
With regard to Appellants' contention that shingles are thin such that
phase change materials would have little effect, we agree with the Examiner
that Appellants' provide no evidence to support this contention. Ans. 11.
Appellants' attorney argument does not outweigh the references' suggestion
that building materials generally (including those in sunlight) would benefit
from incorporating phase change materials. "[ A ]rguments of counsel cannot
take the place of evidence lacking in the record." Estee Lauder Inc. v.
L 'Orea!, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (internal quotes and
citation omitted).
Because Appellants' arguments do not identify reversible error, we
sustain the Examiner's rejections.
DECISION
For the above reasons, we affirm the Examiner's rejections of
claims 1-2 0.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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