14791600 (P.T.A.B. Sep. 20, 2018)

Ex Parte Kelly

Patent Trial and Appeal BoardSep 20, 2018

14791600 (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/791,600 07/06/2015 Thomas L. Kelly 23413 7590 09/24/2018 CANTOR COLBURN LLP 20 Church Street 22nd Floor Hartford, CT 06103 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. KES0025US2 8360 EXAMINER W ALRAED-SULLIV AN, KYLE ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 09/24/2018 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): usptopatentmail@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS L. KELLY Appeal2017-009421 Application 14/791,600 1 Technology Center 3600 Before BENJAMIN D. M. WOOD, JEREMY M. PLENZLER, and BRENT M. DOUGAL, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. Â§ 134 of the Examiner's Final Decision rejecting claims 1-8. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Appellant is the Applicant, Thomas L. Kelly, identified by the Appeal Brief as the real party in interest. Br. 2. Appeal2017-009421 Application 14/791,600 CLAIMED SUBJECT MATTER Claim 1 is the sole independent claim, with claims 2-8 depending therefrom. Claim 1 is reproduced below: 1. A converted reverse ballasted roof system, comprising: a structural roof beam; insulation positioned upwardly adjacent said structural roof beam; a first waterproofing membrane arranged upwardly adjacent said insulation; a weighted cover board disposed directly adjacent said first waterproofing membrane; and a second waterproofing membrane installed upwardly adjacent said weighted cover board, wherein said first waterproofing membrane and said second waterproofing membrane substantially seal said weighted cover board. REJECTIONS 1. Claims 1, 3, and 5-8 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Nelson (US 4,489,531, issued Dec. 25, 1984) and Wenrick (US 5,720,147, issued Feb. 24, 1998). 2. Claim 2 is rejected under 35 U.S.C. Â§ 103 as being unpatentable over Nelson, Wenrick, and Yeamans (US 4,926,596, issued May 22, 1990). 3. Claim 4 is rejected under 35 U.S.C. Â§ 103 as being unpatentable over Nelson, Wenrick, and Gerace (US 2012/0141768 Al, published June 7, 2012). OPINION The Examiner finds that Nelson teaches each limitation recited in claim 1, but does not teach the location of the "second waterproofing 2 Appeal2017-009421 Application 14/791,600 membrane" recited in the claim. Final Act. 3. The Examiner finds that Wenrick teaches a waterproofing membrane at the location specified for the "second waterproofing membrane" in claim 1, and proposes "modify[ing] the second waterproofing membrane of Nelson to be installed upwardly adjacent the weighted cover board as disclosed by Wenrick in order to protect the entire structure from rain, snow, wind, sunlight ( and not just a portion of the structure)." Id. at 3--4. Nelson is directed to "roof structures which take advantage of natural phenomena to maintain insulation layers at their highest thermal insulating efficiency." Nelson, 1 :20-23. The relevant portions of Nelson are shown in Figure 1, which is reproduced below for purposes of discussion. Nelson's Figure 1 is "a sectional view, with portions cut away, of [a] roof structure with vapor vents." Nelson, 3:30-31. Nelson describes a "lower water impermeable layer 12" that is "[a]pplied to the top of roofdeck 11 ... to serve primarily to prevent migration of water vapor from the building up into the insulation" and "also ... to drain away any condensate that occurs 3 Appeal2017-009421 Application 14/791,600 as a result of vapor entering from the external atmosphere and then reaching the dewpoint within the insulation layer 13 and 15." Id. at 3:64--4:3. Nelson also includes "an upper water vapor impermeable layer 17 ... to prevent water vapor, dust, rain, erosion particles, and the like, from passing downward into the insulation 15-5a and 13, and ... to cause rainwater and snow-melt water to move directly to the drain system 16." Id. at 4:60-66. Nelson provides "a water-retentive mat 18 which provides additional energy-conservation benefits," such as "reduc[ing] energy consumption for air-conditioning within a building by providing a cooling overlaying the roof' in the summer and "additional insulation value at below" in the winter. Id. at 5:18-27. Simply put, water-retentive mat 18 is intended to get wet. See, e.g., id. at 4:32--42. The Examiner finds that water-retentive mat 18 in combination with ballasting layer 19 in Nelson corresponds to the recited "weighted cover board," and proposes modifying Nelson's roof system to have water impermeable layer 12 cover water-retentive mat 18, rather than roofdeck 11. Final Act. 3. The Examiner reasons that such a modification "would have been obvious ... in order to protect the entire structure from rain, snow, wind, sunlight (and not just a portion of the structure)." Id. at 4. Appellant disputes the Examiner's proposed modification to Nelson, noting, for example, Nelson's discussion above regarding water-retentive mat 18 being employed to get wet (i.e., it is the express purpose of water-retentive mat 18 to be wet). See, e.g., Br. 10-11. We agree with Appellant. The Examiner has failed to establish sufficiently that one skilled in the art would have included a water impermeable layer on top of a water retentive layer, which is located on top of another water impermeable layer 4 Appeal2017-009421 Application 14/791,600 (i.e., a water retentive layer sandwiched between water impermeable layers). All of the structure that Nelson intends "to protect ... from rain, snow, wind, sunlight" are already located beneath at least one water impermeable layer. Placing structure that Nelson intends to get wet below a water impermeable layer does not further "protect the entire structure from rain, snow, wind, sunlight," particularly when the structure that needs to be protected is originally below the water impermeable layers. Claims 2-8 depend from claim 1, and the stated bases for those rejections do not cure the deficiency noted above. Accordingly, we do not sustain the Examiner's decision to reject claims 1-8. DECISION We REVERSE the Examiner's decision to reject claims 1-8. REVERSED 5