Ex Parte Kalkanoglu et al

Board of Patent Appeals and Interferences

Apr 29, 2010

10807018 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HUSNU M. KALKANOGLU and
ROBERT L. JENKINS
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Appeal 2009-012095
Application 10/807,018
Technology Center 1700
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Decided: April 29, 2010
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Before EDWARD C. KIMLIN, TERRY J. OWENS, and
PETER F. KRATZ, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-11, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
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The Appellants claim a method for making a shingle. Claim 3 is
illustrative:

3. A method of making a shingle having a butt portion and a tab
portion with tabs of desired shading in the tab portion being spaced apart by
slots, and with adjacent tabs being sharply defined, comprising the steps of:

(a) providing a base web of reinforcing material impregnated with and
coated with an adhesive material as a hardenable coating, to an upper
surface and a lower surface thereof;

(b) conveying the impregnated reinforcing material in a longitudinal
direction;

(c) applying granules of a first aesthetic onto the hardenable coating
on the upper surface in first primary areas, each of a first width, in the
tab portion of the continuous strip of shingle material, to cover said
first primary areas;

(d) applying granules of a second aesthetic onto the hardenable
coating of the upper surface in second primary areas, each of a second
width, in the tab portion of the continuous strip of shingle material, to
cover said second primary areas; and

(e) applying granules of a mixture of those applied to adjacent
primary areas, onto the hardenable coating in intermediate areas
between said adjacent primary areas, each intermediate area being of a
given width; and

(f) completely removing said given width of intermediate areas.

The Reference
Koschitzky 5,664,385 Sep. 9, 1997

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The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1-
7 and 11 over Koschitzky, and claims 8-10 over Koschitzky in view of the
Appellants’ admitted prior art.
OPINION
We affirm the rejections.
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, completely removing
intermediate areas between first and second primary areas on which granules
having, respectively, first and second aesthetics are applied to a hardenable
coating on a base web of a shingle?
Findings of Fact
Koschitzky discloses “roofing shingles in which the color of the
surfacing layer changes at demarcation lines” (col. 1, ll. 6-8). Slots (76)
which normally are between about ¼ and ½ inch wide but may be as wide as
2 inches provide sharp demarcation at transition areas (36) between adjacent
colored areas (col. 5, ll. 4-6; col. 7, ll. 3-8). The slots (76) “preferably
remove the part of the transition area where the two blends are
approximately equal” (col. 5, ll. 17-19) such that the remaining portions of
the transition areas will not be noticed by the eye (col. 5, ll. 34-37). “[E]ven
if each slot 76 does not cover the entire width of the transition area between
adjacent colored areas, it will still form (particularly from a distance) a sharp
visual demarcation between adjacent colored areas” (col. 7, ll. 16-20).
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The Appellants’ admitted prior art relied upon by the Examiner
(Ans. 5) is that it was known in the art to make laminated shingles
comprising two or more layers of complete shingle material (Spec. 1).
Analysis
The Appellants argue that Koschitzky removes only a portion of the
transition area whereas the Appellants remove the entire transition area
(Br. 6-9; Reply Br. 3-4).
“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). In
making an obviousness determination one “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR, 550 U.S. at 418.
Koschitzky’s disclosure that each slot (76) provides a sharp visual
demarcation between adjacent colored areas, particularly from a distance,
even if the slot (76) does not cover the entire width of the transition area
(col. 7, ll. 15-20), would have led one of ordinary skill in the art, through no
more than ordinary creativity, to cut slots (76) such that they remove the
entire width of each transition area to assure a sharp visual demarcation
between adjacent colored areas regardless of whether the viewing is from a
distance.
The Appellants argue, in reliance upon the Declarations under
37 C.F.R. § 1.132 of Richard A. Snyder and Robert L. Jenkins, that the
Appellants’ claimed invention has been a commercial success (Br. 15-17).
Snyder states that the shingles made by the claimed method, although
sold for less than 4 years, already have a level of sales in the millions of
dollars, which is unusual, and have a year-to-date number of squares sold
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which is over 80% of that of another shingle that has been on the market for
15 years (Decl. ¶ 20).1
Evidence of commercial success must show that there is a nexus
between the sales and the technical merits of the claimed invention, i.e., that
the sales resulted from the recited characteristics of the claimed invention
rather than from another factor such as features of the product not related to
the claimed subject matter, low price, marketing and salesmanship, customer
service, or a prior business relationship between the company and its
customers. See In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996); Kansas
Jack, Inc. v. Kuhn, 719 F.2d 1144, 1151 (Fed. Cir. 1983).
Jenkins states that “[t]he factors of promotion, advertising and
marketing that took place for the shingle of this invention from prior to its
commercial release and thereafter were essentially the same as those factors
for the comparison commercially successful shingle of CertainTeed to which
the shingle of this invention is compared in paragraph 20 of the Snyder
Declaration” (Decl. ¶ 5).
The Appellants’ evidence of commercial success is not persuasive for
the following reasons. First, the Appellants have not shown a nexus
between the sales and the technical merits of the claimed method, i.e., the
complete removal of the intermediate areas. Second, the sales volume set
forth by Snyder of the shingle made by the claimed method does not
establish that the sales resulted in increased market share. See Huang 100

1 Snyder does not explain why it is unusual for a sales volume of one
laminated shingle that has been on the market for less than 4 years to be over
80% of the sales volume of another laminated shingle that has been on the
market for 15 years.
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F.3d at 140 (Evidence of the number of units sold “provides no indication of
whether this represents a substantial quantity of this market. . . . [E]vidence
related solely to the number of units sold provides a very weak showing of
commercial success, if any”). Third, Snyder’s number-of-squares-sold
comparison between the shingle made by the claimed method and the
comparison shingle does not establish that the number of squares sold of the
shingle made by the claimed method did not rise to over 80% of that of the
comparison shingle due to lower price. Jenkins’ Declaration states that the
promotion, advertising and marketing of the shingle made by the claimed
method and the comparison shingle were the same, but does not state that
the prices were the same. Fourth, evidence of commercial success must be
commensurate in scope with the claims, see In re Tiffin, 448 F.2d 791, 792
(CCPA 1971), and the Appellants’ evidence, which is limited to a laminated
shingle, is not commensurate in scope with claims 1-7 and 11 which do not
require that the method produces a laminated shingle.
Regarding claim 8, which requires applying a second layer to make a
laminated shingle, the Appellants argue that lamination enhances the
aesthetic effect (Br. 18), but the Appellants do not explain why forming
Koschitzky’s shingle as a laminate would have been unobvious to one of
ordinary skill in the art.
With respect to claims 9 and 10, which depend from claim 8 and
require that the second layer is applied after (claim 9) or before (claim 10)
the intermediate areas are removed, the Appellants argue that those
sequences are not in the art of record (Br. 18-19).
It would have been apparent to one of ordinary skill in the art that
when a second layer is applied to Koschitzky’s shingle to form a laminate,
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the second layer must be applied either before or after the transition areas are
removed. The Appellants have not provided a substantive argument as to
why either sequence would have been unobvious to one of ordinary skill in
the art.
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, completely removing
intermediate areas between first and second primary areas on which granules
having, respectively, first and second aesthetics are applied to a hardenable
coating on a base web of a shingle.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1-7 and 11 over
Koschitzky, and claims 8-10 over Koschitzky in view of the Appellants’
admitted prior art are affirmed.
It is ordered that the Examiner’s decision is affirmed.
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

PL Initial:
sld
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