Ex Parte Hong et al

Patent Trials and Appeals Board

Feb 25, 2019

14526480 - (D) (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/526,480 10/28/2014 Keith C. Hong
20306 7590 02/25/2019
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.
18-367-US-CON 1024
EXAMINER
FERRE, ALEXANDRE F
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
02/25/2019 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, GREGORY F. JACOBS, and
VAN NHAN NGUYEN
Appeal2017-004139
Application 14/526,480
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to finally reject claims 1-8 and 10-15, which constitute all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b ). We AFFIRM.
1 In explaining our Decision, we refer to the Specification filed October 28,
2014 ("Spec."); Final Office Action dated February 8, 2016 ("Final Act.");
Advisory Action dated June 23, 2016 ("Adv. Act."); Appeal Brief filed
August 8, 2016 ("Appeal Br."); Examiner's Answer dated November 7,
2016 ("Ans."); and Reply Brief filed January 8, 2017 ("Reply Br.").
2 CertainTeed Corporation is identified as the real party in interest.
Appeal Br. 1.
Appeal2017-004139
Application 14/526,480
The Claimed Subject Matter
Appellants' disclosure relates to functionalized roofing granules and a
process for preparing functionalized roofing granules. Spec. 3--4. The
claimed roofing granules, which are described as having a color coating
layer, are covered with a clear, transparent or translucent outer coating
composition including a functional material, such as nanoparticles of anatase
titanium dioxide. Abstract; see also Spec. 7.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. Functionalized roofing granules comprising:
(a) base roofing granules having a first coating
layer, the first coating layer including at least one
coloring material;
(b) a cured clear or transparent outer coating layer
comprising an outer coating binder and at least one
photocatalytic functional material, wherein said
photocatalytic functional material comprises at least one
photocatalytic metal oxide selected from a group
consisting of titanium oxide, copper oxide and zinc
oxide, and
( c) a second coating layer intermediate first
coating layer and said outer coating layer, said second
coating layer forming a barrier to sodium ions.
Appeal Br. 12 (Claims App'x) (key disputed claim language italicized and
bolded).
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
S uzue et al.,
("Suzue")
US 6,306,796 Bl
2
Oct. 23, 2001
Appeal2017-004139
Application 14/526,480
Sherman
("Sherman '145")
Chopin et al.,
("Chopin")
Joedicke
Sherman
("Sherman '884")
Shiao et al.,
("Shiao")
US 2002/0005145 Al
US 6,362,121 Bl
US 6,548,145 B2
US 2004/0120884 Al
US 2005/0072114 Al
The Rejections
Jan. 17,2002
Mar. 26, 2002
Apr. 15, 2003
June 24, 2004
Apr. 7, 2005
On appeal, the Examiner maintains (Ans. 2) the following rejections:
1. Claims 1-5, 10, 11, 13, and 15 are rejected under
35 U.S.C. § I03(a) as being unpatentable over Joedicke in view of
Sherman '884 and Chopin ("Rejection 1 "). Ans. 2.
2. Claim 6 is rejected under 35 U.S.C. § I03(a) as being
unpatentable over Joedicke in view of Sherman '884 and Chopin, and
further in view of Sherman '145 ("Rejection 2"). Ans. 5.
3. Claims 7 and 8 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Joedicke in view of Sherman '884 and Chopin, and
further in view of Suzue ("Rejection 3"). Ans. 5.
4. Claims 12 and 14 are rejected under 35 U.S.C. § I03(a) as
being unpatentable over Joedicke in view of Sherman '884 and Chopin, and
further in view of Shiao ("Rejection 4"). Ans. 6.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner's
rejections based on the fact-finding and reasoning set forth in the Answer,
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Advisory Action, and Final Office Action, which we adopt as our own. We
add the following.
Rejection 1
Claims 1-5. 10. 11. 13. and 15
Appellants argue claims 1-5, 10, 11, 13, and 15 as a group. Appeal
Br. 3. We select claim 1 as representative and claims 2-5, 10, 11, 13, and 15
stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that the combination of Joedicke,
Sherman '884, and Chopin suggests colored granules satisfying all of the
limitations of claim 1 and thus, concludes that the combination would have
rendered the claim obvious. Ans. 2--4 (citing Joedicke, 4:8-11, 4:44, 3:50-
53, 5:25-28, 5:40-6: 1--4, 6:63---67; Sherman '884, Abstract, ,r,r 10, 84, 114,
177, 184,214; Chopin, Abstract, 5:23-39, 9:46---61, 10:25-33).
Appellants argue that the Examiner's rejection should be reversed
because no prima facie case has been established. Appeal Br. 6. Appellants
principally argue that the Examiner has not provided a reasoned explanation
with rational underpinnings for the combination of Joedicke, Sherman '884,
and Chopin. Id. at 6; see also Reply Br. 1 ("The Examiner has not provided
a reasoned explanation for the rejection of claims 1-5, 10-11, 13 and 15
under 35 U.S.C. 103 over Joedicke, Sherman and Chopin.").
In particular, Appellants contend that the "Examiner has not explained
why one of ordinary skill in the art would expect 'an excessively large
amount of alkali metals' to diffuse from the non-glass color coating of the
present invention into the photocatalytic coating." Appeal Br. 6 ( quoting
Chopin, 10:29-30). See also Reply Br. 2 ("The Examiner has not explained
why one of ordinary skill in the art would expect migration of an
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Application 14/526,480
'excessively large amount of alkali metals' from Joedicke's insolubilized
sodium silicate at elevated temperatures.").
Appellants also argue that Joedicke's disclosure regarding kiln filing
granules at a very low temperature in order to produce as transparent a
coating as possible (Joedicke, 3:1--4, 3:49--46) is inconsistent with the high
temperatures employed by Sherman '884 (Sherman '884 ,r 177) and by
Chopin ( Chopin, 10 :21-24) to anneal their photocatalytic coatings. Appeal
Br. 6-7. Appellants contend that "[ n ]othing in the cited art teaches,
discloses, or suggests that Joedicke's roofing granules should be annealed at
high temperatures." Id. at 7.
We do not find Appellants' arguments persuasive of reversible error
in the Examiner's rejection. On the record before us, we find that a
preponderance of the evidence and sound technical reasoning support the
Examiner's analysis and determination (Ans. 2--4, 7-8) that the combination
of Joedicke, Sherman '884, and Chopin suggests granules satisfying all of
the limitations of claim 1, and the Examiner's conclusion that the
combination would have rendered the claim obvious. Joedicke, 4:8-11,
4:44, 3:50-53, 5:25-28, 5:40-6:1--4, 6:63-67; Sherman '884, Abstract, ,r,r
10, 84, 114, 177, 184,214; Chopin, Abstract, 5:23-39, 9:46-61, 10:25-33.
Contrary to what Appellants argue, the Examiner does provide a
reasoned basis with rational underpinnings and identifies a preponderance of
evidence in the record to evince why one of ordinary skill would have
combined the teachings of the cited references to arrive at Appellants'
claimed roofing granules. Ans. 3--4, 7-8. See also KSR Int 'l Co. v. Teleflex,
Inc., 550 U.S. 398, 420 (2007) ( explaining that any need or problem known
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Application 14/526,480
in the art can provide a reason for combining the elements in the manner
claimed).
In particular, as the Examiner finds (Ans. 7), Chopin teaches that it
was known in the art at the time of the invention that alkali ions, particularly
sodium ions, diffuse into Ti02 layers and thereby harm the functionality of
the layer. Chopin, 5:23-29. As the Examiner further finds (Ans. 7), Chopin
teaches that the diffusion of the ions occurs when the substrate is a glass
material or when the coatings are subjected to relatively long and/or high
temperature heat treatment, which causes migration of the alkali ions, and
also teaches inserting a layer which prevents migration of sodium ions
between the substrate and the photocatalytic layer to prevent poisoning
thereof. Chopin, 10:25-33 (disclosing that "a barrier layer to alkali metals
can be useful between the substrate and the coating").
As the Examiner explains (Ans. 7-8), although Chopin is not directed
to roofing granules, the reference is, nonetheless, analogous art because it
solves a known problem in the art, i.e., harm to photocatalytic Ti02
materials from sodium ion migration, by applying a layer in between the
photocatalytic material and the layer that would be the source the sodium ion
migration. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
( explaining that a reference may qualify as analogous art even "if the
reference is not within the field of the inventor's endeavor").
Regarding the combined teachings of Joedicke and Sherman '884
with Chopin, as the Examiner finds (Ans. 8), at column 3, lines 27-56,
Joedicke discloses color coatings that are made of a "sodium silicate" binder
(Joedicke, 3:49-50 ("Si02/Na20")) which comprises a coloring pigment (id.
at 3:36 ("Metallic Pigment Paste")); and Sherman '884 discloses that the
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application of a photocatalytic layer to a substrate requires annealing the
layer "at a temperature of approximately between 400° C. and 650° C. for 30
minutes to 5 hours" (Sherman '884 ,r 177), which is similar to and actually
overlaps the annealing temperature and time period ranges Chopin discloses
for forming photocatalytic layers (compare Chopin, 10:21-24 (disclosing
annealing "at a temperature of approximately 500 to 500° C. for a period of
time which can range from 1 minute to 3 hours") with, Sherman '884 ,r 177).
Thus, as the Examiner determines (Ans. 8), based on the combined
teachings of the cited art, one of ordinary skill would have reasonably
understood that the annealing step for the photocatalytic layer coated onto
the sodium silicate binder of the color coating of Joedicke's roofing granules
would have resulted in the migration of sodium ions from the color coating
into the photocatalytic layer. It follows, therefore, as the Examiner
concludes (Ans. 8), that it would have been obvious to one of ordinary skill
to have placed a sodium ion diffusion blocking layer between the colored
coating and the photocatalytic layer to prevent this effect.
Appellants fail to direct us to persuasive evidence or provide an
adequate technical explanation to establish why the Examiner's articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error.
Appellants' arguments at pages 6-7 of the Appeal Brief and pages 1-
2 of the Reply Brief are not persuasive of reversible error because
Appellants attack the references individually rather than the combined
teachings of the prior art as a whole. One cannot show non-obviousness by
attacking references individually where the rejection is based on a
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combination of references. In re Keller, 642 F.2d 413,425 (CCPA 1981).
Appellants' assertions are premised on what Appellants contend the Chopin
and Joedicke references each teaches individually, and not the combined
teachings of the cited references as a whole and what the combined
teachings would have suggested to one of ordinary skill in the art.
Moreover, as previously discussed above, we find that a
preponderance of the evidence supports the Examiner's analysis and factual
findings as to what the combined teachings of the prior art, considered as a
whole, would have taught or reasonably suggested to one of ordinary skill in
the art. Appellants' disagreement as to the Examiner's factual findings and
reasoning for combining the references, without more, is insufficient to
establish reversible error. Cf SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312, 1320 (Fed. Cir. 2006) ("[M]ere statements of
disagreement ... as to the existence of factual disputes do not amount to a
developed argument.").
We do not find Appellants' argument that J oedicke' s disclosure
regarding kiln filing granules at a very low temperature in order to produce
as transparent a coating as possible is inconsistent with the high
temperatures employed by Sherman '884 and by Chopin to anneal their
photocatalytic coatings (Appeal Br. 6-7) persuasive of reversible error based
on the fact-finding and reasoning provided by the Examiner at pages 8-9 of
the Answer. Appellants' argument in this regard is misplaced and, again,
appears to be premised on what the cited references each teaches
individually, and not the combined teachings of the references as a whole. In
particular, as the Examiner finds (Ans. 8), a separate, higher firing
temperature would be required for the formation of the photocatalytic layer
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in both Sherman '884 and Chopin (Sherman '884 ,r 177; Chopin, 10:21-24),
and would cause the migration of sodium ions as taught by Chopin (Chopin,
10:25-33). As the Examiner further finds (Ans. 8-9), Joedicke, on the other
hand, does not contemplate a higher firing temperature because the coating
formed is not a photocatalytic coating as disclosed in Sherman '884 and
Chopin.
Moreover, as the Examiner finds (Ans. 9), Appellants do not identify
or direct us to persuasive evidence in the record to suggest that the higher
firing temperature would adversely affect or render Joedicke's product
unsatisfactory for its intended purpose. Attorney argument is not evidence.
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that mere lawyer's
arguments or conclusory statements, which are unsupported by concrete
factual evidence, are entitled to little probative value).
Claims 2. 5. and 11
Appellants present an additional argument in response to the
Examiner's rejection of claims 2, 5, and 11. In particular, Appellants assert
that the Examiner's rejection of claims 2, 5, and 11 should be reversed
because "one of ordinary skill in the art would have no motivation to provide
a barrier layer to prevent alkali ions from migrating to a layer which already
contains alkali." Appeal Br. 7.
We do not find Appellants' contention persuasive of reversible error
because it is conclusory and Appellants do not provide an adequate technical
explanation to support it. De Blauwe, 736 F.2d at 705.
Moreover, based on the fact-finding and reasoning provided by the
Examiner at pages 2--4 and 7-9 of the Answer, we determine that a
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preponderance of evidence supports the Examiner's determination that it
would have been obvious to use an alkali ion barrier beneath the
photocatalytic layer in order to prevent migration of sodium ions from the
granule and inner colored layer into the photocatalytic layer. In particular,
as the Examiner finds (Ans. 9), the alkali metal binder is one of many
materials within the scope of claim 2 and the binder material used in
Sherman '884 does not contain alkali metals (see Sherman '884 ,r,r 177, 184,
214). Thus, as the Examiner explains and concludes (Ans. 4, 9), it would
have been obvious to one of ordinary to provide a barrier layer to prevent
migration alkali ions from migrating into the layer.
Appellants' assertions at page 7 of the Appeal Brief, without more,
are insufficient to rebut or otherwise establish reversible error in the
Examiner's determination in this regard.
Claims 13 and 15
Appellants appear to raise an additional argument in response to the
Examiner's rejection of claims 13 and 15. Appeal Br. 7. In particular,
Appellants assert that the "Examiner's explanation of the rejection of claims
13 and 15 is not understood as neither claim requires a colloidal silica
binder." Id. at 7.
We do not find this argument persuasive because Appellants do not
adequately explain or specify what findings or aspects of the Examiner's
rejection they claim are unclear or to have misunderstood.
Moreover, a naked assertion regarding what the claims recite, without
more, is not an argument in support of separate patentability. Cf In re
Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011); 37 C.F.R. §4I.37(c)(l)(iv).
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Accordingly, we affirm the Examiner's rejection of claims 1-5, 10,
11, 13, and 15 under 35 U.S.C. § 103(a) as obvious over the combination of
Joedicke, Sherman '884, and Chopin.
Rejections 2, 3, and 4
In response to the Examiner's Rejections 2, 3, and 4, respectively,
Appellants rely on the same arguments previously presented above in
response to the Examiner's rejection of claim 1 (Rejection 1 ). See Appeal
Br. 8 ("Since the independent claim is not obvious over the cited art,
dependent claim 6 including further limitations must also be patentable over
the cited art.") (Rejection 2); Appeal Br. 8 ("Since claims 7 and 8 merely
add further limitations [to claim 1 ], they must also be patentable over the
cited art.") (Rejection 3); Appeal Br. 11 ("Since claims 12 and 14 merely
add further limitations [to claim 1 ], they must also be patentable over the
cited art.").
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for principally the same reasons discussed above for
affirming the Examiner's Rejection 1, we affirm the Examiner's Rejections
2, 3, and 4.
DECISION/ORDER
The Examiner's rejections of claims 1-8 and 10-15 are affirmed.
It is ordered that the Examiner's decision is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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