Ex Parte Khan et al

Board of Patent Appeals and Interferences

Sep 20, 2010

10851791 (B.P.A.I. Sep. 20, 2010)

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.
10/851,791 05/21/2004 Amir Khan FDN-2807 2242
7590 09/21/2010
Attn: William J. Davis, Esq.
GAF MATERIALS CORPORATION
Legal Department , Building No. 8
1361 Alps Road
Wayne, NJ 07470
EXAMINER
PARKER, FREDERICK JOHN
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
09/21/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte AMIR KHAN and MICHAEL DE SOUTO
____________________

Appeal 2009-014699
Application 10/851,791
Technology Center 1700
____________________

Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
LORA M. GREEN, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL1
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-5 under 35 U.S.C. § 103(a) as unpatentable over
Fensel (US 2003/0152747 A1; Aug. 14, 2003), as incorporating by reference

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 10/851,791

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Callaway (US 5,474,838; Dec. 12, 1995), in view of Kyminas (US
4,749,731; Jun. 7, 1988). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention relates to methods for applying a new and
useful powder top coating composition for roll roofing products that is
applied during the manufacture process (Spec. ¶ [0001]). Claim 1 is
illustrative:
1. A method of coating a modified bitumen roll
roofing membrane in-plant comprising the steps of:
(a) applying a layer of a white reflective powder coating
upon a surface of a modified bitumen roll roofing membrane
exiting from a formation line while still in a molten state at a
temperature between 125° F and 160° F;
(b) permitting said white reflective coating to heat
activate; and
(c) allowing the coating to cure and adhere to said
surface.
Appellants present arguments for all the rejected claims as a group
(Br. 11-15), for which we select independent claim 1 as a representative
claim.
II. DISPOSITIVE ISSUE
The dispositive issue raised by the contentions of Appellants and the
Examiner is: does the evidence support the Appellants’ view that the
Examiner erred in concluding that a step of applying the white reflective
powder coating when the bitumen membrane is in a molten state at a
temperature between 125º F and 160º F would have been obvious to one of
ordinary skill in the art based on the teachings of Fensel, as incorporating the
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teachings of Callaway, and Kyminas? We answer this question in the
negative.
III. DISCUSSION
We adopt the Examiner’s findings in the Answer as our own and add
any additional findings of fact appearing below for emphasis.
The Examiner finds that Fensel and Kyminas are silent as to the
precise temperature at the time the reflective coating particles are added to
the bitumen in the disclosed processes (Ans. 4 and 6). The Examiner further
finds that the prior art teaches the application of reflective particles at a
temperature “undoubtedly cooler” than the recited temperatures at which the
bitumen membranes are produced yet still at a temperature in which the
bitumen membrane is in a warm, molten state (Ans. 4-5 and 6-7). Thus, the
Examiner concludes that “the actual temperatures of the bitumen at the time
the particles are implanted would have been an obvious parameter
determined by one of ordinary skill in the art to achieve a softness/viscosity
of the bitumen sufficient to form the adherent reflective particle roofing
coating” (Ans. 5).
Appellants assert that Kyminas expressly teaches application of the
coating at a temperature “often in excess of 350º F” (Br. 11 and Reply Br.
3). We disagree with the Appellants’ interpretation of the teachings of
Kyminas.
Kyminas states that the coating may be “applied to asphalt which is
still at a substantially elevated temperature after being mopped onto a roof at
a temperature often in excess of 350º F” (col. 3, ll. 3-6). We find reasonable
the Examiner’s interpretation that the 350º F temperature is the temperature
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at which the hot mopping occurs, not the temperature in which coating is
applied. The Examiner supports his interpretation with the teachings in
Callaway, as incorporated in Fensel (Fensel, ¶ [0011]), that the processing
temperatures for bitumen materials is known to be 275º F to 425º F
(Callaway, col. 1, ll. 25-28).
Further, Kyminas states that the coating is applied after a sufficient
time for the asphalt to set sufficiently for workmen to walk on it, which may
be as soon as 1 or 2 hours after the asphalt hot mopping, when the asphalt is
applied in air temperatures ranging between 50º F and 100º F (Kyminas, col.
3, ll. 6-12 and col. 8, ll. 26-33). Thus, the Examiner’s assertion that
substantial cooling from the bitumen application temperature would have
occurred during that time is reasonable.
Appellants also contend that the references do not suggest to one of
ordinary skill in the art cooling to temperatures as low as the range claimed
(Br. 13-14; Reply Br. 3), that the claimed temperature range produces
synergistic and unexpected results (Br. 12; Reply Br. 4), and that, one of
ordinary skill in the art would not combine the teachings of Kyminas and
Fensel, because unlike the roofing application taught by Kyminas, an in-
plant process would require an opportunity for the membrane to cool down
before the coating step (Br. 15). Appellants’ arguments are not persuasive to
overcome the prima facie case of obviousness presented by the Examiner.
We agree with the Examiner that the prior art provides sufficient
evidence that one of ordinary skill in the art would have applied the
reflective coating at any temperature at which the bitumen material was still
in a molten state and at which the coating particles would have adhered.
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One of ordinary skill in the art would have been capable of determining
workable temperatures by routine experimentation. See Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007) (discovery of an
optimum value of a variable in a known process is usually obvious); In re
Aller, 220 F.2d 454, 456 (CCPA 1955) (“[I]t is not inventive to discover the
optimum or workable ranges by routine experimentation.”). Appellants’
arguments do not suggest that the bituminous material would not have these
properties at the claimed temperature range.
Appellants’ point to portions of the Specification that discuss
advantages of their claimed invention (Br. 12; Reply Br. 4) but provide no
convincing evidence of unexpected results on this record. For example,
there is no evidence comparing the uniformity of thickness, ease of top coat
application, or improved reflectivity, adherence or flexibility when the
coating materials is applied at a temperature range of between 125º F and
160º F, as compared to any other temperature range. Appellants must
provided evidence of unexpected results commensurate in scope with the
claimed subject matter. See, e.g., In re Woodruff, 919 F.2d 1575, 1577-78
(CCPA 1990), and cases cited therein (where the difference between the
claimed invention and the prior art is a range, applicant must show that the
claimed range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range), and In re Hill,
284 F.2d 955, 958-59 (CCPA 1960) (To establish unexpected results over a
claimed range, an applicant should compare a sufficient number of tests both
inside and outside the claimed range to show the criticality of the claimed
range.). To the contrary, Appellants’ Specification suggests that similar
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results occur when the material is applied at temperatures ranging from 200º
F to 400º F (Spec. ¶ [0059], Example 3).
Appellants’ arguments regarding the requirement of a cooling down
step for an in-plant process is further unconvincing, since claim 1 does not
preclude adding a cooling step to arrive at a bitumen membrane temperature
of between 125º F and 160º F. See In re Self, 671 F.2d 1344, 1348 (CCPA
1982) (“[A]ppellant's arguments fail from the outset because . . . they are not
based on limitations appearing in the claims.”).
IV. CONCLUSION
On the record before us and for the reasons presented above, we
sustain the rejection maintained by the Examiner.
V. DECISION
The decision of the Examiner is affirmed.
VI. TIME PERIOD FOR RESPONSE
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

cam
ATTN: WILLIAM J. DAVIS, ESQ.
GAF MATERIALS CORPORATION
LEGAL DEPARTMENT, BUILDING NO. 8
1361 ALPS ROAD
WAYNE NJ 07470