Ex Parte Shiao et al

Patent Trial and Appeal Board

Aug 29, 2016

13043036 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/043,036
27569 7590
PAUL AND PAUL
FILING DATE
03/08/2011
08/31/2016
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
Ming Liang Shiao
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.
2011-002 8112
EXAMINER
VAN SELL, NATHAN L
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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 MING LIANG SHIAO and HUSNU KALKANOGLU1
Appeal2014-004932
Application 13/043,036
Technology Center 1700
Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON REHEARING
Appellants timely request rehearing of our Decision dated June 17,
2016 wherein we affirmed the Examiner's rejections under 35 U.S.C.
§ 103(a) of all appealed claims as unpatentable over Hong et al. (US
2006/0251807 Al, published Nov. 9, 2006) ("Hong") in view of Skelhom
(US 2005/0126441 Al, published June 16, 2005) alone or in combination
with an additional prior art reference.
1 CertainTeed Corporation is identified as the real party in interest. App.
Br. 1.
Appeal2014-004932
Application 13/043,036
In the Decision, we were unpersuaded by Appellants' contention in
the Appeal Brief that "it would not be possible to apply a uniform coating to
the granule surfaces [of Hong] using Skelhom's coating material" (App. Br.
11 ), stating "Appellants do not embellish this contention with any
explanation why Hong's goal of a uniform coating (if 10) would not be
achieved in applying Skelhom's coating with, for example, the Wurster
fluidized bed spray coating process taught by Hong (ifif 60-61)" (Dec. 3--4).
Appellants urge that, contrary to our above quoted statement, such an
explanation was provided via their assertion "'Skelhom discloses
conventional latex emulsion water-based paints, which one of ordinary skill
in the art would know cannot be applied using powder coating techniques"'
(Req. Reh'g 2).2 Appellants argue that we overlooked this assertion and
therefore erred in affirming the Examiner's rejections (id.).
Appellants' assertion does not provide the desired explanation
because it is not supported by evidence concerning the asserted knowledge
of one with ordinary skill in this art and because it represents, again without
evidentiary support, that Hong uses a powder coating technique unsuitable
for applying the liquid coating material of Skelhom. As we stated in our
Decision, Hong teaches using a Wurster fluidized bed spray coating process
(Dec. 3--4 (citing Hong iii! 60-61) ). Hong explicitly teaches that, in this
spray coating process, "the roofing granules are suspended in an upward
stream of air, while liquid coating material is sprayed up into the suspended
granules" (if 60 (emphasis added)). Therefore, we maintain the position
2 In the Request, Appellants do not identify the source of their quoted
assertion. The assertion appears to have been made on page 11 of the
Appeal Brief.
2
Appeal2014-004932
Application 13/043,036
expressed in our Decision that Appellants' contentions in the Appeal and
Reply Briefs including the above quoted assertion are not embellished by an
explanation why Hong's process for coating granules with liquid coating
material would not be effective for applying the liquid coating material of
Skelhom.
In their Request, Appellants attempt to provide such explanation by
arguing, for example, that "[t]he latex paint of Skelhom is physically
unsuited for coating granules uniformly ... takes days to dry ... [i]n a
fluidized bed process, such as used by Hong, the granules tumble together
and undergo violent collisions causing the liquid coating of Skelhom to
deform, splatter, or be cast off' (Req. Reh'g 2). We will not consider these
arguments because they were not previously raised in the Appeal and Reply
Briefs. 37 C.F.R. § 41.52(a)(l) (2013).
Appellants' request for rehearing is denied.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
3