11689574 (P.T.A.B. Oct. 22, 2012)

Ex Parte Kalkanoglu et al

Patent Trial and Appeal BoardOct 22, 2012

11689574 (P.T.A.B. Oct. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/689,574 03/22/2007 Husnu M. Kalkanoglu 169-06 2162 7590 10/22/2012 John F. McNulty Paul & Paul 2900 Two Thousand Market Street Philadelphia, PA 19103 EXAMINER GILBERT, WILLIAM V ART UNIT PAPER NUMBER 3635 MAIL DATE DELIVERY MODE 10/22/2012 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 HUSNU M. KALKANOGLU and GREGORY F. JACOBS ____________________ Appeal 2010-007210 Application 11/689,574 Technology Center 3600 ____________________ Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and MICHAEL C. ASTORINO, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007210 Application 11/689,574 2 STATEMENT OF THE CASE Husnu M. Kalkanoglu and Gregory F. Jacobs (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-18. The Examiner withdrew claims 21 and 22 from consideration. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on October 10, 2012. We REVERSE. The Claimed Subject Matter Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A synthetic hip, ridge or rake roofing shingle of any of the simulated slate, tile or shake types, for placement over intersecting surfaces of a roof on a structure, as an underlying or overlying shingle in an assembly of such shingles, in which a portion of an underlying shingle is partially covered by a portion of an overlying shingle, closing the roof at the intersecting surfaces to prevent water from entering the roofed structure comprising a pair of substantially rigid planar portions for the hip, ridge or rake roofing shingle each having opposite ends, with the planar portions being connected by a hinge-like portion that is co-extensive between at least uncovered portions of the hip, ridge or rake roofing shingle between its ends when the shingle is installed on a roof structure, with the hinge-like portion being relatively flexible, relative to said substantially rigid planar portions, whereby the hip, ridge or rake roofing shingle hinge-like portion comprises means for conforming to a variety of different angles between said substantially rigid planar portions, corresponding to different intersecting angles of different adjacent roof surfaces, with the hip, ridge or rake roofing shingle comprising means for closing a portion of a roof at its intersecting surfaces for preventing water from entering a roofed structure at its intersecting surfaces, when the shingle is installed on a roofed structure. Appeal 2010-007210 Application 11/689,574 3 Evidence The Examiner relied on the following evidence in rejecting the claims on appeal: Robinson Wagner Mankowski US 5,095,810 US 5,570,556 US 2003/0077999 A1 Mar. 17, 1992 Nov. 5, 1996 Apr. 24, 2003 Headrick US 2004/0237428 A1 Dec. 2, 2004 Rejections Appellants request our review of the Examiner’s rejections of: (1) claims 1, 2, 8, 9, and 13-16 under 35 U.S.C. § 102(b) as anticipated by Robinson; (2) claim 7 under 35 U.S.C. § 103(a) as unpatentable over Robinson and Headrick; (3) claims 1-6, 10, 11, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable over Wagner; and (4) claims 1 and 12 under 35 U.S.C. § 102(b) as anticipated by Mankowski. OPINION Anticipation by Robinson and Mankowski We find persuasive Appellants’ arguments that neither Robinson’s roof vent nor Mankowski’s roof ventilator is a “hip, ridge or rake roofing shingle” (emphasis added), as recited in independent claim 1, as that terminology is understood in the art. See App. Br. 8-11, 13-14. Thus, we do not sustain the rejections of claims 1, 2, 8, 9, and 13-16 as anticipated by Robinson and of claims 1 and 12 as anticipated by Mankowski. Obviousness over Robinson and Headrick We agree with Appellants that the Examiner’s additional reliance on Headrick’s “shingle-over ridge vent” (Headrick, paras. [0002], [0003]) does Appeal 2010-007210 Application 11/689,574 4 not make up for the deficiency of Robinson discussed above. See App. Br. 17. Thus, we also do not sustain the rejection of dependent claim 7 as unpatentable over Robinson and Headrick. Obviousness over Wagner Appellants argue that Wagner discloses a plurality of multi-tab shingles connected by small connectors 32, not a hip, ridge, or rake roofing shingle as called for in claim 1. App. Br. 14. Appellants also argue that Wagner’s shingles lack “substantially rigid planar portions,” as required in claim 1. App. Br. 15. Wagner discloses shingles 12 having an asphalt or fiberglass base with a granular material on top of the base, and cutouts 28 and tabs 30 to provide a pattern on the roof for aesthetics and for directing water off a roof. Col. 3, ll. 1-9. The shingles are connected by semi-flexible connectors 32 that act as hinges to permit the shingles to be folded over one another for packaging and shipment and unfolded to form a row for attachment to the roof. Col. 3, ll. 37-51; col. 4, ll. 45-48. In use at the installation location, the shingles 12 are unfolded and pulled across the roof for attachment. Col. 4, ll. 48-52. The connectors 32 act as hinges for the unfolding stack of shingles 12 and hold the shingles in alignment for attachment to the roof. Col. 4, ll. 52-54. We are persuaded that persons of ordinary skill in the roofing field would not consider Wagner’s shingles 12 with connectors 32 to be hip, ridge, or rake shingles. See App. Br. 14; Jacobs Decl.1, para. 6. Further, the fiberglass or asphalt based shingles described by Wagner are not “substantially rigid” planar portions as called for in claim 1. 1 DECLARATION OF DR. GREGORY F. JACOBS, dated October 28, 2008. Appeal 2010-007210 Application 11/689,574 5 For the above reasons, Appellants have persuaded us that Wagner does not render obvious the subject matter of claim 1 and its dependent claims 2-6, 10, 11, 17, and 18. We do not sustain the rejection. DECISION The Examiner’s decision rejecting claims 1-18 is reversed. REVERSED hh