Ex Parte Kalkanoglu et al

Patent Trial and Appeal Board

Mar 28, 2014

11469655 (P.T.A.B. Mar. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL
AND APPEAL BOARD
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Ex parte HUSNU M. KALKANOGLU, KEITH C. HONG, and
JOONG YOUN KIM
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Appeal 2013-002141
Application 11/469,655
Technology Center 1700
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Before CHARLES F. WARREN, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

This is in response to a Request, filed March 20, 2014, for rehearing
of our Decision, mailed February 24, 2014.
Appellants argue that the Board’s “corollary” principle that different
compositions are presumed to have different properties does not logically
flow from a holding in In re Papesch, 315 F.2d 381, 391 (CCPA 1963) that
“[A] compound and all its properties are inseparable.” (Req. Reh’g 1-2.)
Appellants contend that the different compositions can have some of the
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Application 11/469,655

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same properties, such as color. Id. Appellants further argue that the court in
Papesch realized that compounds may have many properties in common
(Req. Reh’g 2). Appellants further contend that Board’s inherency-based
finding is improperly based on possibilities or probabilities (Req. Reh’g 2).
Appellants contend that there is no evidence that the different compositions
of the first and second coatings in Gross1 have different surface energies
(Req. Reh’g 3).
It is undisputed that Gross teaches a roof granule having two coatings
of differing composition. Our position, as described in the Decision on
pages 4-5, is that the Examiner’s finding that Gross’ coatings differ in
composition prima facie establishes that the properties of the composition
would be different at least to some extent l. The burden then shifted to
Appellants to establish that the properties do not differ. Courts have
appreciated that it is reasonable to presume that different compositions have
different properties. For example, in In re De Lajarte, 337 F.2d 870 (CCPA
1964), the court reversed the Board’s affirmance of an examiner’s rejection
of claims to a glass composition over the prior art of Lyle that disclosed a
similar composition that differed from the claimed composition only very
slightly. Id. at 874. The court explained that “[although there are only very
slight differences between the Lyle composition and that sought to be
patented, we cannot assume that these small differences are incapable of
causing a difference in properties.” Id. (emphasis added.) In other words,
the court found that the small differences in composition are capable of
producing a difference in properties of the composition and served as a
reason for reversing the Board’s affirmance of the rejection based upon the

1 Gross et al., US 2005/0074580 A1, published Apr. 7, 2005.
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similarity of the Lyle and claimed compositions as establishing that Lyle’s
composition has the insulating property required by the claims.
Appellants’ claim 35 requires that “the roofing granules including at
least two different surface energy zones with differing surface energy.” No
specific amount of difference in surface energies is required by the claim.
Rather, any amount of difference in surface energies would suffice to satisfy
the claim. The difference in composition between Gross’ first and second
coatings would have reasonably been expected to result in different
properties including surface energies to some degree however small. The
difference in properties, including surface energy, is not based upon
possibilities or probabilities, but rather on the reasonable basis that the
compositions differ. Appellants’ argument that different compositions may
have the same property such as color is not necessarily accurate. Appellants
have not provided any objective evidence to substantiate their argument, and
even if two alloys, as surmised by Appellants, have a similar “silver” color,
it cannot be said the different alloys have exactly the same degree of “silver”
color. In other words, a difference in property would still exist.
In our view, the Examiner has established a prima facie case of
obviousness of the claims and the burden shifted to Appellants to rebut that
prima facie case. No evidence has been proffered by Appellants to
substantiate their argument that Gross’ two coatings have the same surface
energies.
For the above reasons, we adhere to our decision. Appellants request
for rehearing is granted to the extent that we have considered the arguments,
but the request is denied to the extent that the decision will not be modified.

Appeal 2013-002141
Application 11/469,655

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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).

DENIED

cdc