Ex Parte MacKinnon et al

Patent Trial and Appeal Board

Jun 28, 2016

13652720 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/652,720
27569 7590
PAUL AND PAUL
FILING DATE
10/16/2012
06/30/2016
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
Thomas Kevin MacKinnon
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.
2012-111 1056
EXAMINER
GUPTA, YOGENDRAN
ART UNIT PAPER NUMBER
1744
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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 THOMAS KEVIN MACKINNON, DAVID NELSON,
NOLAN LOY SON, and TREVOR REEVE 1
Appeal2014-006294
Application 13/652,720
Technology Center 1700
Before PETER F. KRATZ, CHRISTOPHER L. OGDEN, and
MONTE T. SQUIRE, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
decision rejecting claims 1-18 in the above-identified application. We have
jurisdiction pursuant to 35 U.S.C. § 6(b). An oral hearing was held on June
17,2016.
We REVERSE.
1 According to Appellants, the real party in interest is CertainTeed
Corporation, a subsidiary of Saint Gobain Corporation, which is a subsidiary
of Compagnie de Saint Gobain. Appeal Br. 2.
Appeal2014-006294
Application 13/652,720
BACKGROUND
Appellants' invention relates to "a process of making a shingle or
tile ... which achieves short cycle times for the compression molding
portion of the process." Spec. 2. Independent claim 1 is representative:
1. A method of shortening the cycle time required to
compression mold a roofing product, comprising the steps of:
(a) providing a carrier plate that has a base and a surface
material;
(b) delivering the carrier plate to an induction heater and
induction heating the carrier plate surface material to raise the
temperature of the carrier plate surface material;
( c) then delivering the carrier plate to an extruding means
and extruding a hot, partially molten thermoplastic material
onto the surface material of the carrier plate;
( d) then, while the raised temperature of the carrier plate
surface material keeps the extruded thermoplastic material in a
partially molten state, delivering the carrier plate to a
compression molding means and compression molding the
thermoplastic material to a desired configuration while it is on
the carrier plate surface material;
( e) cooling the thermoplastic material by allowing heat
transfer from the surface material of the carrier plate to the base
of the carrier plate; wherein the improvement comprises:
(t) the carrier plate base having a heat conduction capability
and is comprised of a material that has a first level of
receptivity to being heated by induction heating;
(g) the carrier plate surface material comprising an exterior
surface of the carrier plate and comprising a surface means for
receiving hot, partially molten thermoplastic material thereon,
with the surface material having heat conduction capability and
is comprised of a material that has a second level of receptivity
to being heated by induction heating, with said second level of
receptivity being higher than said first level of receptivity;
(h) with the carrier plate surface material being in bonded
relation to the carrier plate base;
2
Appeal2014-006294
Application 13/652,720
(i) wherein the carrier plate base is responsive to receiving
heat transferred thereto from the carrier plate surface material;
and
(j) wherein the carrier plate surface material is responsive to
being cooled by heat transfer from the carrier plate surface
material to the carrier plate base.
Appeal Br. 11. Claim 10, the only other independent claim is substantially
the same as claim 1, except that it is directed to "[a] method of shortening
the cycle time required to compression mold a product," rather than
specifically a "roofing product." Id. at 10.
The Examiner maintains the following grounds of rejection: 2
I. Claims 1-18 under 35 U.S.C. § 103(a) as being unpatentable over
U.S. Patent Pub. No. US 2010/0252956 Al [hereinafter MacKinnon]
(published Oct. 7, 2010) in view of U.S. Patent Pub. No. US
2003/0127775 Al [hereinafter McDonald] (published July 10, 2003) or U.S.
Patent No. 4,747,864 [hereinafter Hagerty] (issued May 31, 1988). Answer
2--4; Final Action 3-5.
II. Claims 1-18 under 35 U.S.C. § 103(a) as being unpatentable over
MacKinnon in view of McDonald and U.S. Patent No. US 7,156,149 B2
[hereinafter Mergen] (issued Jan. 2, 2007). Answer 4---6; Final Action 5---6.
In responding to the Examiner's rejections, Appellants present
arguments directed to the claims as a group. See Appeal Br. 6-9. Therefore,
we limit our discussion to independent claims 1 and 10.
2 In the Final Action, the Examiner rejected claims 1-18 under 35 U.S.C.
§ 112, para. 2, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention. Final Action 2. However, this rejection has been withdrawn. See
Advisory Action i-f 2, Nov. 1, 2013.
3
Appeal2014-006294
Application 13/652,720
In addition to the rejections, the Examiner objects to claims 10-18
under 37 C.F.R. § 1.75 as being "substantial duplicates or else are so close in
content that they both cover the same thing, despite a slight difference in
wording." Final Action 6; Answer 2, 8.
DISCUSSION
Re} ections 1-11
The Examiner finds that MacKinnon discloses the limitations of
claims 1-18, except that it "does not explicitly teach providing a carrier plate
base, providing a carrier plate surface, and bonding the base to the surface."
Final Action 3. However, the Examiner finds that both McDonald and
Haggerty teach a carrier with the required structure, and concludes that it
would have been obvious to substitute the carriers of either McDonald or
Haggerty into the disclosure of MacKinnon, to achieve the invention defined
by claims 1-18. See Answer 10-11; Final Action 3---6. In addition, the
Examiner finds that while MacKinnon "does not explicitly teach [that] the
carrier is capable of induction heating," Mergen teaches the use of induction
heating "to raise the temperature of a carrier plate surface material before
applying a material to be heated onto the carrier plate." Id. at 9. Thus,
according to the Examiner, it would have been obvious to combine the
teachings of Mergen with MacKinnon and McDonald. See id.
Having reviewed the Examiner's findings, we are not persuaded that
the Examiner has established a prima facie case of obviousness based on any
of the above prior art combinations. In particular, the Examiner has not
established that either McDonald or Haggerty explicitly teaches a carrier
plate base that has a lower level of receptivity to induction heating than a
4
Appeal2014-006294
Application 13/652,720
carrier plate surface, as required by claim 1. Nor has the Examiner provided
technical reasoning to establish that the required difference in receptivity to
induction heating would have been an inherent result of the teachings found
in the cited prior art references.
For the above reasons as argued by Appellants, the Examiner has not
made a prima facie case that independent claims 1 and 10 would have been
obvious over the combination of MacKinnon with McDonald or Haggerty,
or the combination of MacKinnon with McDonald and Mergen. The
Examiner's additional findings regarding dependent claims 2-9 and 11-18
do not address the above deficiencies. Therefore, we determine that the
Examiner reversibly erred in rejecting claims 1-18.
Objection
The Examiner's objection is not before us for decision on appeal. See
In re Hengehold, 440 F.2d 1395, 1404 (CCPA 1971).
DECISION
The Examiner's decision rejecting claims 1-18 is reversed.
REVERSED
5