Ex Parte Kalkanoglu et al

Patent Trial and Appeal Board

May 31, 2016

12057906 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/057,906
27569 7590
PAUL AND PAUL
FILING DATE
03/28/2008
06/02/2016
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
Husnu M. Kalkanoglu
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.
2008-042 2168
EXAMINER
STEELE, JENNIFER A
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
06/02/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
INFO@PAULANDPAUL.COM
claire@paulandpaul.com
fpanna@paulandpaul.com
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
Appeal2014-003755
Application 12/057,906
Technology Center 1700
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
WESLEY B. DERRICK, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
uECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from a final rejection
of claims 1and3---6, 8-10, and 39--48. A hearing was held on May 24, 2016. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Representative claim 1 is reproduced below from the Claims Appendix of
the Appeal Brief dated September 9, 2013 ("App. Br.").
1. Roll roofing consisting of a multilayer roofing sheet
compnsmg:
a laminate formed from
Appeal2014-003755
Application 12/057,906
a) an upper sheet having a textured lower surface and
comprising an upper layer and a lower layer, the lower layer of the
upper sheet being selected from the group consisting of non-woven
webs, microporous films, and sheets having microstructured surfaces;
and
b) a lower sheet having a fusible upper surface, the lower
sheet comprising a lower layer and an upper layer, the upper layer
having the fusible upper surface, the lower layer including a
reinforcing scrim and an adhesive layer.
App. Br. 23.
The claims on appeal stand rejected as follows:
(1) claims 1, 8-10, 43, and 48 under 35 U.S.C. § 102(b) as anticipated by
or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Hageman; 1
(2) claims 1, 8-10, 43, and 48 under 35 U.S.C. § 103(a) as unpatentable
over Hageman in view of O'Connor et al.; 2
(3) claims 1, 3, 4, 8-10, 39, 40, 43--45, and 48 under 35 U.S.C. § 103(a)
as unpatentable over Hageman in view of Baccus et al.; 3 and
(4) claims 5, 6, 41, 42, 46, and 47 under 35 U.S.C. § 103(a) as
unpatentable over Hageman in view of Baccus, and further in view of McCusker et
al.4
B. DISCUSSION
The claims on appeal recite "[r]oll roofing consisting of a multilayer roofing
sheet." App. Br. 23-25. There is no dispute on this record that the term "roll
1 US 4,599 ,258, issued July 8, 1986 ("Hageman").
2 US 4,539,254, issued September 3, 1985 ("O'Connor").
3 US 2002/0127933 Al, published September 12, 2002 ("Baccus").
4 US 4,301,204, issued November 17, 1981 ("McCusker").
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Application 12/057,906
roofing" means a roofing material that is in a roll. 5 See Final 10;6 App. Br. 10, 11.
The Examiner finds Hageman describes an in situ roofing composite, not roll
roofing as recited in the claims on appeal. Final 3, 4. Nonetheless, the Examiner
explains that "[t]he recitation roll roofing has not been given patentable weight
because the recitation occurs in the preamble." Final 4. According to the
Examiner, "[a] preamble is generally not accorded any patentable weight where[,
as here,] it merely recites ... the intended use of a structure, and where the body of
the claim does not depend on the preamble for completeness, but instead, the ...
structural limitations are able to stand alone." Final 4--5.
The Appellants argue that the term "roll roofing" is not a statement of
intended use, but rather is a structural limitation that should be accorded weight
when considering the patentability of the claims on appeal. App. Br. 10. For
support, the Appellants rely on, inter alia, Kropa v. Robie, 187 F.2d 150, 152
(CCPA 1951). According to the Appellants:
In Kropa the Court held that the preamble, "an abrasive article," gave
life and meaning to the interference count at issue, although the claim
recited abrasive grains and a binder, because not every combination of
those components forms an abrasive article .... Kropa supports
patentability here, as not every combination of upper and lower sheets
form "roll roofing."
App. Br. 12 (citation omitted).
Based on the foregoing, we conclude that the term "[r]oll roofing" in the
preamble of the claims on appeal gives life and meaning to the claims for, in the
words of the Court in Kropa, "it is only by that phrase that it can be known that the
5 For purposes of this appeal, it is not necessary to determine whether the term "roll
roofing" also encompasses the steps of rolling the material onto a roof and sealing
the material in place. See Final 1 O; App. Br. 11.
6 Final Office Action dated February 5, 2013.
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Application 12/057,906
subject matter defined by the claims [is roll roofing]." 187 F.2d at 152. For this
reason, we hold that the term "[ r ]oll roofing" is a limitation in the claims on
appeal.
In the Examiner's Answer, the Examiner finds Hageman teaches roll
roofing. Ans. 3--4 (citing Hageman, col. 1, 1. 60-col. 2, 1. 26 and col. 2, 11. 55---68). 7
The Appellants argue that the only rolls disclosed in Hageman are rolls of plain
polyester and melding of the polyester and the asphalt layers takes place
simultaneously with direct attachment to the roof substrate. Reply Br. 2. 8
The Appellants' argument is supported by the record. See, e.g., Hageman,
col. 2, 11. 55-56 (disclosing that the invention features a built-up, in situ roofing
composite applied on a roof substrate having seams).
In sum, the Examiner has failed to show that Hageman describes roll
roofing. Therefore, the§ 102(b) rejection of claims 1, 8-10, 43, and 48 based on
Hageman is not sustained.
The Examiner also concludes that "[i]t would have been obvious to one of
ordinary skill in the art ... to produce the roofing composite of Hageman and ...
form [it] into a roll motivated to prefabricate the roofing composite for later
installation on a roof." Final 5.
In response, the Appellants contend:
[M]aterials otherwise meeting the claim limitations must be capable
of being rolled up. This requirement in tum imposes structural
limitations on the materials. For example, they cannot be rigid, or
have too high an elastic modulus, for if they do, they will be incapable
of being rolled up. In addition, the dimensions of materials making up
the roll roofing are obviously also limited- a thousand foot square
sheet cannot be rolled up in any practical sense.
7 Examiner's Answer dated December 9, 2013.
8 Reply Brief dated February 10, 2014.
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Appeal2014-003755
Application 12/057,906
App. Br. 10.
The Appellants argue:
[T]here is nothing in Hageman which would teach, suggest or
motivate one of ordinary skill in the art to try to form roll roofing
from Hageman's built-up roof. One of ordinary skill in the art would
understand this to be a Herculean task. Old built-up roofs are
typically destroyed when removed and the remnants discarded. The
Examiner speculates that because the materials are the same [as the
claimed roofing laminate], the Hageman' s "composite" could also
have the property of being capable of being rolled up. This is faulty
logic, as it ignores the actual structure (a built-up root) formed with
the materials.
App. Br. 13.
The Appellants' arguments are persuasive of reversible error. The mere fact
that elements of Hageman' s roofing composite can be said to correspond to the
upper and lower sheets of the claimed laminate is not sufficient to show that the
claimed roll roofing would have been obvious to one of ordinary skill in the art,
especially where asphalt in Hageman' s asphalt layer 149 nms into the seams of the
roofing substrate. See Hageman, col. 3, 11. 60-63; Hageman Fig. IA; see also
Hageman, col. 4, 11. 26-29 (disclosing that first layer 14 of asphalt is mopped over
seamed substrate 12). The Examiner has also failed to explain, in any detail, why
modifying the roofing composite of Hageman with the teachings of the remaining
prior art of record would have resulted in roll roofing as recited in the claims on
appeal. 10
9 The Examiner finds Hageman's asphalt layer 14 corresponds to the adhesive
layer in the lower layer of the lower sheet recited in claims 1, 9, and 10. Final 4.
10 The Examiner relies on O'Connor and Baccus to show that it would have been
obvious to one of ordinary skill in the art to employ a reinforcing scrim in the
roofing composite of Hageman. Final 6, 8. The Examiner relies on McCusker to
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Application 12/057,906
For the reasons set forth above, the§ 103(a) rejections on appeal are not
sustained.
C. DECISION
The Examiner's decision is reversed.
REVERSED
show that it would have been obvious to one of ordinary skill in the art to employ a
colorant system in the roofing composite of Hageman. Final 9.
6