Ex Parte Mellott et al

Patent Trial and Appeal Board

Jul 31, 2014

11899835 (P.T.A.B. Jul. 31, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/899,835 09/07/2007 Joseph W. Mellott II GARL 200223US01 9501
27885 7590 07/31/2014
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
VONCH, JEFFREY A
ART UNIT PAPER NUMBER
1781
MAIL DATE DELIVERY MODE
07/31/2014 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 JOSEPH W. MELLOTT II and JASON D. SMITH
____________

Appeal 2013-001335
Application 11/899,8351
Technology Center 1700
____________

Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

ROESEL, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 9-16 and 24-39. We have jurisdiction under 35 U.S.C.
§ 6.

1 According to Appellants, the real party in interest is Garland Industries,
Inc. App. Br. 1.

Appeal 2013-001335
Application 11/899,835

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STATEMENT OF THE CASE
Claims 34 is representative of the subject matter on appeal and is set
forth below:

34. A highly reflective composite material designed to be applied to a
base sheet/membrane of a roofing and/or siding material, said highly
reflective composite material comprising a multi-layer reflective film
material, said top surface of said multi-layer reflective film material having
a resulting ref1ectivity of at least about 50%, said multi-layer reflective
film material including first and second layers, said first layer a top layer and
said second layer positioned adjacent to and beneath said first layer, said
first layer being a generally clear layer, said second layer being a non-
clear layer, said first layer including by weight percent:
Polyvinylidene f1uoride 70-100 wt%
Optional components 0-30 wt%
and said second layer including by weight percent:
Polyvinylidene f1uoride 33-98 wt%
Vinyl polymer 1.2-45 wt%
Optional components 0-40 wt%
and wherein a weight percent of said polyvinylidene f1uoride in said
second layer greater than a weight percent of said vinyl polymer, said
optional components for both said first and second layers include one or
more components selected from the group consisting of pigment, dye,
biocide, light stabilizer, impact modifier, adhesion promoter and fire
retardant.
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Application 11/899,835

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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Moriya US 5,132,164 July 21, 1992
Kalkanoglu US 2007/0054129 A1 Mar. 8, 2007
Bonnet US 6,811,859 B2 Nov. 2, 2004
Khan US 2005/0261407 A1 Nov. 24, 2005
Silagy, Technology and material design in PVDF protected thermoplastic
substrates, 104 J. Fluorine Chem., 79-86 (2000)

THE REJECTIONS
1. Claims 9-16, 24-29, 32, 34 and 36 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Moriya in view of
Kalkanoglu , and Silagy.
2. Claims 30-31, 35, and 37 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Moriya, Kalkanoglu, and Silagy,
as applied to claims 9-16, 24-29, 32, 34, and 36 above, and further in
view of Bonnet.
3. Claims 33, 38, and 39 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Moriya, Kalkanoglu, Silagy, and Bonnet,
as applied to claims 30-31, 35, and 37 above, and further in view of
Khan.

ANALYSIS
Claims 9 and 34
Appellants first argue that neither Moriya nor Kalkanoglu
discloses various limitations, including a resulting reflectivity of at
Appeal 2013-001335
Application 11/899,835

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least about 50%, a first layer that is clear and a second layer that is not
clear, and a second layer that has a weight percent polyvinylidene
fluoride (“PVDF”) that is greater than the weight percent vinyl
polymer. App. Br. 15-17. In making these arguments, however,
Appellants fail to address the rejection as presented by the Examiner,
which is based on obviousness, not anticipation. “The test for
obviousness is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.” In re Young, 927
F.2d 588, 591 (Fed. Cir. 1991). Appellants cannot show
nonobviousness by asserting that limitations are absent from the
references individually, where the rejection is based upon the
teachings of a combination of the references. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
We agree with the Examiner’s analysis that it would have been
obvious to implement Moriya’s multi-layer weather resistant film to
provide the degree of reflectivity taught by Kalkanoglu and to add a
generally clear top protective coating, as taught by Kalkanoglu and
Silagy, and a bottom reinforcement layer, as taught by Kalkanoglu, or
alternatively, to substitute Moriya’s multi-layer film for the solar heat-
reflective layer of Kalkanoglu. Answer 5, 13-14. Except as addressed
below, Appellants do not assert that the combination of Moriya,
Kalkanoglu and Silagy, as presented by the Examiner, lacks any of the
limitations of claims 9 or 34, nor do they challenge the Examiner’s
showing of motivation to combine.
Appellants argue that “the examiner has not established that
modifying Moriya with the teachings of Kalkanoglu would not
Appeal 2013-001335
Application 11/899,835

5
adversely affect the properties of the coating of Moriya for its
intended purpose.” App. Br. 18. In making this argument, Appellants
improperly place the burden on the Examiner to demonstrate the
absence of teaching away. The Examiner’s analysis establishes a
prima facie case of unpatentability, thereby shifting the burden to the
Appellants to come forward with evidence and/or argument
supporting patentability. In re Glaug, 283 F. 3d 1335, 1338 (Fed. Cir.
2002). The Examiner’s unchallenged showing of motivation to
combine is sufficient to sustain the obviousness rejection. We
additionally note that “[t]he test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference. . . . Rather, the test is what the
combined teachings of those references would have suggested to those
of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981).
Appellants further contend that the combination of Kalkanoglu
and Moriya does not teach that the weight percent of PVFD in the
second layer is greater than the weight percent vinyl polymer. App.
Br. 18. Appellants’ argument fails to address the arrangement of
polymer layers in the combination of references as presented by the
Examiner. The Examiner illustrates how a person of ordinary skill in
the art would have combined the layers taught by Kalkanoglu and
Moriya using the following figure:
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Appeal 2013-001335
Application 11/899,835

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coat is consistent with the teachings of Kalkanoglu and that the top
coating taught by Kalkanoglu is “clear” or “generally clear” within the
meaning of appealed claims 26, 27, and 34. The Examiner interprets
the terms “clear” and “generally clear” in Applicants’ claims to
include “a pure (~100 wt%) (non-pigmented) PVDF layer.” Answer,
6; Final Action, 5 ¶ 16. The Examiner’s interpretation is supported by
Applicants’ specification, which demonstrates that “clear” or
“generally clear” means without color or pigment. See Spec. 17 (“The
color of the top layer is generally clear; however, the top layer can
include one or more coloring pigments and/or dyes.”); see also id. at
19. Kalkanoglu discloses that “suitable materials for use as the top
coating include fluoropolymers such as PVDF (Kynar Aquatec and
Ultraflex from Arkema),” with no mention of any colorant or pigment
in the top coating. Kalkanoglu ¶ 97. That disclosure falls within the
scope of the clear top (first) layer claimed by Applicants, which may
comprise up to 100% PVDF, such as Kynar® offered by Arkema, Inc.
See App. Br. 33-34 (claim 34); Spec. 8, 11-13 (Examples 1-3). As
noted by the Examiner, Silagy’s teaching of the advantages of pure
PVDF as a top coat would have motivated one of ordinary skill in the
art to select pure PVDF from among the various suitable top coat
materials disclosed by Kalkanoglu. Answer 6-7, 14, 17; Silagy 80-81,

heat-reflective layer, Kalkanoglu ¶ 96, composed of an inner sub-layer and
an outer sub-layer, which need not be the same. Id., ¶¶ 18-20, 22.
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Application 11/899,835

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Fig. 1C.3 Accordingly, we find that Kalkanoglu does not teach away
from the obviousness combination presented by the Examiner.

Claims 10-12, 24-29, 32, and 364
Appellants’ arguments regarding claims 10, 24-25, 28-29, 32
and 36 (App. Br. 20-23) do not address the particular arrangement of
layers in the obviousness combination as presented by the Examiner.
These arguments are not persuasive for the same reasons explained
above with respect to claims 9 and 34. Regarding claims 11-12,
Appellants assert without explanation that the limitation is not taught
by Moriya, which is not sufficient to raise an argument for separate
patentability. 37 C.F.R. § 41.37(c)(1)(iv) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”). Appellants’ argument regarding
claims 26 and 27 has been addressed in the preceding section.

Claims 30-31, 35, and 37
Appellants do not contest that Bonnet teaches impact modifiers
and do not challenge the Examiner’s showing of motivation to
combine Bonnet’s impact modifiers with the teachings of the primary

3 Contrary to Appellant’s assumption, App. Br. 18, the Examiner relies on
Silagy to show obviousness of both independent claims on appeal: 9 and 34.
Answer, 6; Final Action, 5 ¶ 16.
4 Claims 17-23 have been cancelled. App. Br. 28. Appellants waived
any argument for the separate patentability of claims 13-16 by failing
to argue these claims separately. 37 C.F.R. § 41.37(c)(1)(iv).
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Application 11/899,835

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references. Appellants’ remaining arguments are not persuasive for
the reasons explained above with respect to claims 9 and 34.

Claims 33, 38, and 39
Appellants argue that Khan’s teaching of adhesion promoters
cannot be combined with the remaining references to show
obviousness because, according to Appellants, “Khan does not even
disclose the use of polyvinylidene fluoride” and “Khan also does not
disclose a multilayer polymeric reflective coating.” App. Br. 26.
Appellants have not rebutted the Examiner’s showing of motivation to
combine, specifically that “[o]ne of ordinary would have been
motivated to include adhesion promoters that would help prevent
delamination of acrylic-based reflective-film/coating/membranes from
roof structures.” Answer at 10; see also Final Action at 9, ¶ 38. We
find the Examiner’s showing particularly persuasive in view of the
express disclosure in the primary references that adhesion to a roof
substrate is desirable and that peeling (delamination) is undesirable.
Moriya, col. 4, ll. 31-32; Kalkanoglu ¶ 102.

CONCLUSION OF LAW AND DECISION
Each rejection is affirmed.

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Application 11/899,835

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No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

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