Ex Parte Semmens et al

Patent Trial and Appeal Board

Mar 6, 2013

11332403 (P.T.A.B. Mar. 6, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BLAINE K. SEMMENS and COLIN R. MURPHY
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Appeal 2011-002354
Application 11/332,403
Technology Center 3600
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Before: GAY ANN SPAHN, WILLIAM V. SAINDON, and
REMY J. VANOPHEM, Administrative Patent Judges.

VANOPHEM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
7 and 29-35. We have jurisdiction under 35 U.S.C. § 6(b).
The claims are directed to a roofing system. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A roofing system comprising:
an insulation layer;
a woven or non-woven synthetic fiber mat having an
exposed fiber surface, said mat
having an opposing surface to the exposed fiber surface;
a magnesium oxide cement layer in simultaneous contact
with said insulation layer and
the exposed fiber surface of said mat, said mat partially
embedded in said cement layer with the
exposed fiber surface embedded into said cement layer;
and
an elastomeric outer weatherproof coating overlying the
opposing surface of said mat.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Skolnik US 2,450,258 Sep. 28, 1948
Finan US 3,125,479 Mar. 17, 1964
Nunley US 4,783,942 Nov. 15, 1988
Fine US 6,167,668 B1 Jan. 2, 2001
Semmens US 2002/0129745 A1 Sep. 19, 2002

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REJECTIONS
The following Examiner’s rejections are before us for review:
1 Claims 1, 6, and 29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the teachings of Semmens, in view of
the teachings of Skolnik.
2 Claims 2 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Semmens, in view of Skolnik, and further in
view of the teachings of Nunley.
3 Claims 3, 4, and 35 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Semmens, in view of Skolnik, and
further in view of the teachings of Finan.
4 Claims 5, 30, and 31 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Semmens, in view of Skolnik, and
further in view of the teachings of Fine.
5 Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Semmens, in view of Skolnik, and
Finan, and , further, in view of the teachings of Fine.
6 Claim 34 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Semmens, in view of Skolnik, Finan, and
Nunley.

ANALYSIS
Rejection of claims 1, 6, and 29 as unpatentable over Semmens and Skolnik
Appellants argue claims 1, 6, and 29 as a group and we select
independent claim 1 as the representative claim. See App. Br. 5-7; see also
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37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 6 and 29 stand or fall with claim
1.
The Examiner finds that Semmens teaches the basic elements of
independent claim 1 with the exception of “an insulation layer[,] wherein the
cement layer is simultaneously in contact with [the]insulation layer.” Ans.
3. The Examiner also finds that Skolnik “discloses a wallboard that includes
an insulation layer (10) in contact with a magnesium oxide cement layer
(11).” Id. The Examiner therefore concludes that, “[a]t the time of the
invention, it would have been obvious to a person of ordinary skill in the art
to include an insulation layer as taught by [Skolnik] with the system of
[Semmens].” Ans. 4.
First, Appellants contend, “Semmens teaches away from the
combination with Skolnik,” because “combination with Skolnik would
produce an inoperative invention.” App. Br. 6. Specifically, Appellants
explain that Semmens discloses “factory formation of a polyester fabric
having a coating on a first side of a magnesium oxy-cement (MOS)
containing particulate (expanded polystyrene, … “EPS”) over which an
elastomeric roof coating or rubberized roof emulsion is applied, while the
other side of the polyester fabric is spray coated with magnesium oxy-
cement lacking particulate dispersion,” wherein “the resultant cured fabric is
‘then applied to a fresh layer of like magnesium oxy-cement on a roof
substrate such that water runs off without washing away the cement prior to
set.’” Id. Thus, Appellants further contend that Semmen’s teaching of
applying a fresh layer of like magnesium oxy-cement on a roof substrate
such that water runs off without washing away the cement prior to setting
teaches away from applying the factory formed sheet to contact with an
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insulation layer,” because “the prior art reference combination has NO bond
to an insulation layer and as such would be recognized by one of ordinary
skill in the art to be inoperative as a roofing system since the precoated
roofing sheet has no adhesion and further would not constitute an
environmental barrier suitable for a roofing system.” Id. We are not
persuaded by Appellants teaching away arguments because Semmens does
not criticize, discredit, or otherwise discourage the inclusion of an insulation
layer. In re Fulton, 391 F. 3d 1195, 1201 (Fed. Cir. 2004) (in order to
“teach away” a reference must “criticize, discredit, or otherwise discourage
the solution claimed.”). Indeed, the Examiner correctly points out that
“Semmens actually infers that the composite could be combined with
insulation as stated by EXAMPLE 5.” Ans. 9 (citing Semmens, p. 3, para.
[0022] (“[t]he material is spray applied to an extruded polystyrene insulation
panel.”). Further, the Examiner notes that “[n]owhere does Semmens
explicitly or implicitly state that the invention of Semmens would become
inoperable when combined with insulation as disclosed by the secondary
reference of Skolnick,” which “teaches an insulation layer (10) with a
binding layer (11) for attachment to a facing.” Thus, we are not persuaded
that application of the teachings of Skolnik to the Semmens’s precoated roof
sheet would result in inoperability.
Second, Appellants also contend that from Semmens’s disclosure of
the precoated roofing sheet being manufactured “in a factory setting,” and
“[a]fter drying, this sheet can be rolled up for easy installment layer”
(Semmens, p. 3, para. [0020]), “one of ordinary skill in the art would
appreciate that the cement layers applied to the polyester fabric of Semmens
would be cracked during the rolling and unrolling process thereby making
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the prior art reference combination of a precoated roofing sheet according to
Semmens as applied to an insulation layer of Skolnik even less suitable as a
roofing system.” App.Br. 8. Semmens discloses at para.[0020] that the
sheet can be rolled for easy installation later and expresses no concern with
cracking as alleged by Appellants. Accordingly, the skilled artisan could
decide to store the precoated roofing sheet in an unrolled manner to prevent
cracking, but otherwise use the remainder of the teachings of Semmens in
combination with Skolnik.
Third, Appellants further contend that one of ordinary skill in the art
would have dismissed Skolnik’s paper fibers for the insulation material 10 as
an unacceptable insulation layer on the basis that to achieve a certain degree
of thermal barrier characteristics, i.e., a conventional insulation value of R-
30 for a roofing system, paper fibers require a thickness greater than 10
inches, which would be unduly heavy and difficult to apply. App.Br. 7.
However, the arguments put forth by the Appellants concerning thermal
barrier characteristics are directed to language not found in independent
claim 1 and therefore, are not commensurate with the scope of the claim.
Although Appellants argue that the Examiner’s “motivation to equate the
paper layer (10) of Skolnik to the insulation layer of present claims” is
lacking, Appellants’ arguments do not provide evidence or reasoning to
overcome the Examiner’s articulated reasoning with rational underpinning
as to why a person of ordinary skill in the art would modify Semmens with
the teachings of Skolnik, i.e., to insulate a structure from heat loss.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and claims 6 and 29 which stand or fall therewith, under 35 U.S.C.
§ 103(a).
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Rejection of claims 2 and 7 over Semmens, Skolnik and Nunley

The Examiner finds that Semmens does not expressly disclose an
elastomeric pre-coating on the opposing surface to the exposed fiber surface
of the mat, said pre-coating in contact with said elastomeric outer surface.
Ans. 4. The Examiner further finds that Nunley discloses an elastomeric
pre-coating (28) beneath an elastomeric outer weatherproof coating (26). Id.
The Examiner concludes that, at the time of the invention, it would have
been obvious to a person of ordinary skill in the art to use the elastomeric
pre-coating of Nunley beneath the elastomeric weatherproof coating of
Semmens, in order to provide a strong attachment to the fabric layer of
Semmens. Ans. 4-5.
Appellants contend, and we agree, that the adhesive layer (28) of
Nunley is noted to be a waterbased polymeric adhesive and, while
polymeric, is nowhere disclosed to be elastomeric as required by claim 2.
App. Br. 8 (citing Nunley, col. 4, line 66 to col 5, line 48). As noted by the
Examiner, the ordinary and customary meaning of the word “elastomeric” is
“a substance having elastic properties” and the ordinary and customary
meaning of the word “elastic” is “capable of returning to its original shaped
after being stretched.” Ans. 10 (citing Random House Unabridged
Dictionary, 2010). While Nunley’s polymeric adhesive 28 has been noted to
have excellent elongation properties, “elongation” does not necessarily mean
“elastic,” in that the polymeric adhesive 28 may readily elongate, but then
not return to its original length. Thus, the Examiner has failed to provide a
preponderance of evidence to show that Nunley’s pre-coating (adhesive
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layer 28) is “elastomeric” as required in claim 2. Accordingly, we will not
sustain the rejection of claim 2 under 35 U.S.C. § 103(a).
As to dependent claim 7, the Examiner finds that Nunley discloses a
fastener to secure system layers together (See Fig. 2). The Examiner
concludes that, at the time of the invention, it would have been obvious to a
person of ordinary skill in the art to use the fasteners of Nunley to secure the
cement soaked fiber layer and insulation layer of Semmens, in view of
Skolnik, to a substrate. Ans. 5. In response, Appellants fail to address the
Examiner’s proposed combination of references. Given that Appellants
make no argument for the patentability of Claim 7, we sustain the rejection
of claim 7. See Hyatt v. Dudas, 551 F 3d 1307, 1313-1314, (Fed. Cir.2008)
(The Board may treat arguments Appellants failed to make for a given
ground of rejection as waived.).

Rejection of claims 3, 4 and 25 over Semmens, Skolnik and Finan
Regarding claim 3
The Examiner finds that Finan discloses an asphaltic pre-coating (18)
on an opposing surface of a fiber mat (17), the asphaltic pre-coating fused to
a second asphaltic pre-coating (19) on a second mat (21), said second
exposed fiber surface capable of receiving the elastomeric outer
weatherproof coating. Ans. 5-6. The Examiner concludes that at the time of
the invention, it would have been obvious to a person of ordinary skill in the
art to use the asphaltic pre-coating system of Finan with the roofing system
of Semmens in view of the teachings of Skolnik “to provide improved
thermal insulating properties.” Ans. 6.
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In response to the Examiner’s findings regarding claim 3, Appellants
argue that one of ordinarily skill in the art attempting to improve insulating
properties of a roofing system would find “the inclusion of fiber mats and tar
is a grossly inefficient way to do so, and rather . . . would simply increase
the R-factor of the insulation layer.” This argument is mere speculation on
Appellants’ part as there are many ways one of ordinary skill in the art might
choose to improve thermal insulating properties.
Appellants also argue teaching away “as one of ordinarily skill in the
art is, respectfully submitted to be disinclined to add additional labor by the
inclusion of fiber and asphaltic layers to increase thermal insulation
properties as cited in the outstanding office action, as compared to simply
increasing the R-factor of the underlying and existing insulation layer
according to the claimed invention”. App. Br. 8-9. However, the prior art’s
mere disclosure of more than one alternative does not constitute a teaching
away from any of these alternatives because such disclosure does not
criticize, discredit, or otherwise discourage the solution claimed in the ‘479
application. See Fulton, 391 F. 3d at 1201. Therefore, the rejection of claim
3 under 35 U.S.C. § 103(a) is not sustained.
Regarding claims 4 and 35
Appellants argue claims 4 and 35 as a group and we select
independent claim 4 as the representative claim. See App. Br. 9. Claim 35
stands or falls with claim 4.
The Examiner finds that providing multiple layers of asphaltic pre-
coating, cement layers, fiber sheets would have been obvious to one of
ordinary skill in the art at the time the invention was made since it has been
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held that mere duplication of the essential working parts of a device involves
only routine skill in the art. Ans. 6.
Appellants state that the remarks made with respect to the
patentability of independent claim 1 are equally applicable to the
patentability of dependent claim 4. App.Br. 9. We determined the “teaching
away” arguments made by Appellants with regard to claim 1 to be
unpersuasive.
Appellants also argue that “the prior art as a whole is completely
devoid of forming such a laminate structure with repetitive laminates” as
recited in claim 4, and “[f]inding a motivation for one of ordinary skill in the
art that multiple iterations of the same structure provide redundancy in case
of failure is not borne out in the mind of one of ordinary skill in the art,”
since “Appellant[s are] unaware of an instance where duplicate roofing
systems are applied one on top of another simultaneously to afford
redundancy.” Ans. 9. As Appellants have failed to show that the
Examiner’s articulated reasoning lacks rational underpinning, we are not
persuaded by Appellants’ arguments. Further, as stated by the Examiner,
“Finan provides multiple motivations for improvements to roofing systems
with multiple layers . . . of the same material composition: improved
thermal insulation, high thermal insulation under conditions of prolonged
exposure, and improved bond while employing a reduced amount of
adhesive bituminous material between insulation and overlying roof felt,
retention of excellent bonding under conditions of prolonged exposure, [and]
cost reduction of materials.” Ans. 10 (citing Finan, col. 1, ll. 45-67).
Appellants have failed to persuasively explain why Finan’s multiple of
layers bituminuous material 14-20 and roofing felt 15-22 does not provide
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an adequate teaching of a laminate structure with repetitive layers.
Accordingly, we will therefore sustain the rejection of claim 4, and claim 35
which stands or falls therewith, under 35 U.S.C. § 103(a).

Rejections of claims 5, 30, and 31 over Semmens, Skolnik, and Fine,
claims and 32 and 33 over Semmens, Skolnik, Finan, and Fine, and
claim 34 over Semmens, Skolnik, Finan, and Nunley
Claims 5, 30 and 31 depend, either directly or indirectly, from
independent claim 1, and claims 32-34 depend, either directly or indirectly,
from independent claim 4. Appellants provide no arguments alleging error
in the Examiner’s rejections of claims 5 and 30-34. Accordingly, for the
reasons discussed above with respect to independent claims 1 and 4, we
sustain the Examiner’s rejections of claims 5 and 30-34 as being
unpatentable.

DECISION
We affirm the Examiner’s rejections of claims 1, 3-7, and 29-35.
We reverse the Examiner’s decision to reject claim 2.
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)(iv).

AFFIRMED-IN-PART

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