Ex Parte Shiao et al

Patent Trial and Appeal Board

Feb 25, 2019

14247761 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/247,761 04/08/2014 Ming Liang Shiao
20306 7590 02/25/2019
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32NDFLOOR
CHICAGO, IL 60606
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.
18-370-US-DIV 2107
EXAMINER
VAN SELL, NATHAN L
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
02/25/2019 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 MING LIANG SHIAO, TIRANA FUSS,
HUSNU M. KALKANOGLU, and WALTER T. STEPHENS
Appeal2017-003073
Application 14/24 7,761
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to finally reject claims 7-19. 3 We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
1 In explaining our Decision, we refer to the Specification filed April 8, 2014
("Spec."); Final Office Action dated August 7, 2015 ("Final Act.");
Advisory Action dated November 23, 2015 ("Adv. Act."); Appeal Brief filed
February 16, 2016 ("Appeal Br."); Examiner's Answer dated October 21,
2016 ("Ans."); and Reply Brief filed December 14, 2016 ("Reply Br.").
2 According to the Appeal Brief, CertainTeed Corporation is the real party in
interest. Appeal Br. 1.
3 Claims 1--6 and 20 have been withdrawn. Final Act. 1; see also Appeal Br.
2 ("The claims on appeal are claims 7-19. ")
Appeal2017-003073
Application 14/24 7,761
The Claimed Invention
Appellants' disclosure relates to granules for asphalt roofing shingles,
roofing shingles employing such granules, and processes for making such
granules and shingles. Spec. 1; Abstract. Claim 7 is illustrative of the
claimed subject matter on appeal and is reproduced below from the Claims
Appendix to the Appeal Brief:
7. A roofing product with high solar heat reflectance
prepared according the process comprising:
(a) providing a ceramic-forming material
comprising at least one aluminosilicate;
(b) forming the ceramic-forming material into
green granules;
( c) sintering the green granules at a temperature of
at least 900 degrees Celsius until the crystalline content
of the sintered granules is at least 10 percent as
determined by x-ray diffraction;
( d) providing a roofing material having an upper
surface; and
( e) applying the sintered granules to the upper
surface of the roofing material.
Appeal Br. 12 (key disputed claim language italicized and bolded).
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Mangold et al.,
("Mangold")
Fensel et al.,
("Fensel")
us 5,380,687 Jan. 10, 1995
US 2007/0110961 Al May 17, 2007
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Application 14/24 7,761
The Rejection
On appeal, the Examiner maintains the following rejection: claims 7-
19 rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over
Fensel in view of Mangold. Ans. 2.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner's
rejection based on the fact-finding and reasoning set forth in the Answer,
Advisory Action, and Final Office Action, which we adopt as our own. We
add the following.
Appellants argue claims 7-19 as a group. Appeal Br. 2. We select
claim 7 as representative and claims 8-19 stand or fall with claim 7.
37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that the combination of Fensel and
Mangold suggests a roofing system satisfying all of the limitations of claim
7 and thus, concludes that the combination would have rendered the claim
obvious. Ans. 2--4 (citing Fensel ,r,r 10, 11, 14, 16, 18, 69, 82, and 90;
Mangold, Abstract, 1:38--47, 2: 15-26).
The Examiner finds that Fensel teaches or suggests nearly all of the
limitations of claim 7, but that the reference does not teach "the crystalline
content of the sintered granules is at least 10 percent as determined by x-ray
diffraction" recitation of the claim. Id. at 3. The Examiner, however, relies
on Mangold for teaching or suggesting this limitation. Id. at 3. In particular,
the Examiner finds that Mangold teaches a silicon-aluminum mixed oxide
powder that may be converted to mullite powder for the production of
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ceramics which are subject to high thermal and mechanical stresses; the
mullite crystallites may be intergrown with each other (i.e., granule-
forming); and the mullite phase is substantially free of amorphous
components as determined by the X-ray diffractometer. Id. at 3 ( citing
Mangold, Abstract, 1:38--47, 2:15-26).
Based on the above findings, the Examiner concludes that:
it would have been obvious to one of ordinary skill in the
art at the time of invention to combine the roofing system
of Fensel with the mullite of Mangold for a roofing
system with roofing granules capable of being subject to
high thermal and mechanical stresses.
Ans. 3--4.
Appellants argue that the Examiner's rejection should be reversed
because the Examiner has not provided a reasoned explanation with rational
underpinnings for the combination of Fensel and Mangold. Appeal Br. 9. In
particular, Appellants repeatedly assert that the Examiner has not provided
any evidence that the prior art roofing granules are subject to high thermal
stress or high mechanical stress and "[i]f they are not subject to such stresses
during use as roofing granules, there can be no motivation to combine
references." Appeal Br. 5, 7, 9; see also Reply Br. 1-2 (arguing that "[t]he
Examiner assumes, without evidence, that roofs experience 'high thermal
stress' during the summer"). Appellants contend that the Examiner does not
provide any factual basis or reasoning to support the Examiner's findings in
this regard.
We do not find Appellants' arguments persuasive of reversible error
in the Examiner's rejection. On the record before us, we find that a
preponderance of the evidence and sound technical reasoning support the
Examiner's analysis and determination (Ans. 2-7) that the combination of
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Fensel and Mangold suggests a roofing system satisfying all of the
limitations of claim 7, and the Examiner's conclusion that the combination
would have rendered the claim obvious. Fensel ,r,r 10, 11, 14, 16, 18, 69, 82,
and 90; Mangold, Abstract, 1:38--47, 2:15-26.
Contrary to what Appellants argue, the Examiner does provide a
reasoned basis with rational underpinnings and identifies a preponderance of
evidence in the record to evince why one of ordinary skill would have
combined the teachings of Fensel and Mangold to arrive at Appellants'
claimed roofing product. Ans. 3--4 ( explaining that one of ordinary skill in
the art would have had reason to combine Fensel's roofing system with
Mangold's mullite in order to have a roofing system with roofing granules
capable of being subject to high thermal and mechanical stress). See also
KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,420 (2007) (explaining that any
need or problem known in the art can provide a reason for combining the
elements in the manner claimed).
Appellants fail to direct us to persuasive evidence or provide an
adequate technical explanation to establish why the Examiner's articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error.
We do not find Appellants' argument that the Examiner has not
provided any evidence that the prior art roofing granules are subject to high
thermal stress or high mechanical stress (Appeal Br. 5, 7, 9) persuasive of
reversible error based on the fact-finding and for the reasons provided by the
Examiner at pages 5---6 of the Answer. In particular, we concur with the
Examiner's determination (Ans. 5) that one of ordinary skill in the art at the
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time of the invention would have understood that the changes in season, for
example, would represent a thermal stress on the shingles/roofing granules;
and the effects of weather, for example, would represent a mechanical stress
on the shingles/roofing granules. As the Examiner finds (Ans. 5), it follows
that the constant exposure to solar energy over the life of the roofing shingle
would represent a high thermal stress on the shingles/roofing granules.
As the Examiner further finds (Ans. 5), because Fensel teaches the use
of mullite granules on roofing shingles to increase the reflectivity of the
roofing system (Fensel ,r,r 66, 69) and that improved reflectivity increases
the life of the roofing system by reducing the surface temperature of the
roofing system (i.e., by reducing the rate of thermal degradation) (id. ,r 15),
Fensel would have reasonably suggested to one of ordinary skill that thermal
degradation is a concern in the fabrication of roofing shingles. As the
Examiner also finds (Ans. 6), because Fensel discloses that the hardness of
the roofing granules can affect the durability of the roofing system and
increased hardness of the roofing granules can extend the life of the roofing
material (Fensel ,r 17), Fensel's teachings would have further suggested to
one of ordinary skill that durability/mechanical degradation is a concern in
the fabrication of roofing shingles. See In re Burckel, 592 F.2d 1175, 1179
(CCPA 1979) ("[A] reference must be considered not only for what it
expressly teaches, but also for what it fairly suggests."); see also In re
Preda, 401 F.2d 825, 826 (CCPA 1968) ("[I]n considering the disclosure of
a reference, it is proper to take into account not only specific teachings of the
reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.").
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Thus, as the Examiner explains (Ans. 6), it follows that one of
ordinary skill would have been motivated or had reason to use Mangold's
mullite for Fensel's roofing system because Mangold teaches that its mullite
is capable of being subject to high thermal and mechanical stress (see
Mangold, 2:21-26).
We do not find Appellants' repeated assertions that "[i]f they are not
subject to such stresses during use as roofing granules, there can be no
motivation to combine references" (Appeal Br. 5, 7, 9) persuasive because
they are conclusory and Appellants do not provide an adequate technical
explanation to support them. Attorney argument is not evidence. In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Lastly, Appellants argue that although Mangold discloses that its
sintered mullite powder can be used for the production of ceramics and
ceramic pre-products which are subject to high thermal or mechanical stress,
the reference does not disclose any such materials and the Examiner "simply
assumes that the sintered mullite disclosed by Mangold itself has these
properties." Appeal Br. 10-11. See also Reply Br. 3--4.
We do not find this argument persuasive based on the fact-finding and
for the well-stated reasons provided by the Examiner at pages 3--4 and 6-7
of the Answer. In particular, as the Examiner finds (Ans. 6-7), Mangold
explicitly discloses the use of mullite for materials and products "which are
subject to high thermal and mechanical stresses." Mangold, 2:21-25. As
the Examiner further finds (Ans. 7), Fensel explicitly discloses mullite as a
material for roofing granules used on a roofing shingle/system. Fensel ,r,r
66, 69. A preponderance of the evidence supports the Examiner's factual
findings and analysis in this regard.
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Appellants' assertions at pages 10-11 of the Appeal Brief regarding
Mangold's disclosures and at pages 3--4 of the Reply Brief regarding what
one of ordinary skill would understand are conclusory and, without more,
insufficient to rebut or otherwise establish reversible error in the Examiner's
factual findings as to what Mangold's and Fensel's teachings would have
taught or reasonably suggested to one of ordinary skill in the art. De
Blauwe, 736 F.2d at 705.
Accordingly, we affirm the Examiner's rejection of claims 7-19 under
35 U.S.C. § 103(a) as obvious over the combination of Fensel and Mangold.
DECISION/ORDER
The Examiner's rejection of claims 7-19 is affirmed.
It is ordered that the Examiner's decision is affirmed.
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
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