Ex Parte Snyder et al

Patent Trial and Appeal Board

Jun 3, 2016

12629943 (P.T.A.B. Jun. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/629,943
27569 7590
PAUL AND PAUL
FILING DATE
12/03/2009
06/07/2016
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
Richard Allan Snyder
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.
2009-172 8829
EXAMINER
WATKINS III, WILLIAM P
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
06/07/2016 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 RICHARD ALLAN SNYDER,
HUSNU M. KALKANOGLU,
and GREGORY F. JACOBS
Appeal2014-001956
Application 12/629,943
Technology Center 1700
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
WESLEY B. DERRICK, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from a final rejection
of claims 1-3 and 6-24. A hearing was held on May 24, 2016. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is reproduced below from the Claims Appendix of the Appeal Brief
dated June 20, 2013 ("App. Br."). The limitation at issue is italicized.
1. An impact resistant shingle having upper and lower surfaces,
compnsmg;
Appeal2014-001956
Application 12/629,943
(a) an asphalt impregnated base mat having upper and lower
surfaces;
(b) a first asphaltic material layer on the upper surface of the
base mat and having an elasticity as determined by a first softness and
a first elongation at break;
( c) a second asphaltic material layer on the lower surface of
the shingle, beneath the base mat;
( d) a layer of mineral granules being disposed on and
adhered to the first asphaltic material layer and comprising at least a
portion of the upper surface of the shingle;
( e) the second asphaltic material layer being of a second
softness that is a softer material than the softness of the first asphaltic
material layer, and of a second elongation at break that is greater
than the elongation at break of the first asphaltic material layer,
whereby;
( f) energy from impacts on the upper surface of the shingle
is at least partially dissipated beneath the base mat by the softness and
elongation at break of the second asphaltic material layer, such that
crack formation on the lower surface of the shingle due to impacts on
the upper surface of the shingle, is avoided.
App. Br. 16.
Similarly, claim 22, the other independent claim on appeal, recites an impact
resistant roofing element comprising, inter alia:
( e) the second asphaltic material layer being of a second
softness that is a softer material than the softness of the first asphaltic
material layer, and of a second elongation at break that is greater than
the elongation at break of the first asphaltic material layer ....
App. Br. 19.
According to the Appellants' Specification, examples of polymeric materials
that may be used to modify the second asphaltic material include styrene-butadiene
rubber (SBS) and vinylacetate/polyethylene (EV A). Spec. 8, 1. 24--9, 1. 1.
2
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Application 12/629,943
The claims on appeal stand rejected as follows:
(1) claims 1-3, 6, 7, 14, and 22 under 35 U.S.C. § 102(e) as anticipated
by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Aschenbeck et
al.; i
(2) claims 1-3, 6, 7, 14, and 22 under 35 U.S.C. § 102(e) as anticipated
by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Rodrigues et
al.;2
(3) claims 1-3, 6, 7, 14, and 17-22 under 35 U.S.C. § 103(a) as
unpatentable over Aschenbeck or Rodrigues, in view of Terrenzio et al.; 3
(4) claims 8-10, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable
over Aschenbeck or Rodrigues, in view of Terrenzio and further in view of Miller
et al.; 4
(5) claims 11-13 under 35 U.S.C. § 103(a) as unpatentable over
Aschenbeck or Rodrigues, in view of Thiis-Evensen; 5 and
(6) claims 23 and 24 under 35 U.S.C. § 103(a) as unpatentable over
Aschenbeck or Rodrigues, in view of Terrenzio and further in view of Zickell et
al.6
B. DISCUSSION
The Examiner finds Aschenbeck and Rodrigues both disclose a shingle with
an asphalt impregnated central layer, below which may be an asphalt layer
modified with synthetic rubber that provides increased resistance to impacts such
1 US 7,238,408 B2, issued July 3, 2007 ("Aschenbeck").
2 US 2005/0130519 Al, published June 16, 2005 ("Rodrigues").
3 US 5,488,807, issued February 6, 1996 ("Terrenzio").
4 US 6,228,785 Bl, issued May 8, 2001 ("Miller").
5 US 4,195,461, issued April 1, 1980 ("Thiis-Evensen").
6 US 6,531,200 B2, issued March 11, 2003 ("Zickell").
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Appeal2014-001956
Application 12/629,943
as from hail. Final 3 (citing Aschenbeck, col. 9, 1. 30---col. 10, 1. 30); Final 4 (citing
Rodrigues Abstract; Rodrigues ,-r 40).7
More specifically, Aschenbeck discloses that the asphalt may be modified
"with certain polymers, such as synthetic rubber or ethylene vinyl acetate."
Aschenbeck, col. 10, 11. 5-8. Rodrigues discloses that the modified asphalt
includes rubbery-type polymers, such as styrene-butadiene-styrene (SBS) and
styrene-butadiene rubber (SBR). Rodrigues i-f 40.
The Examiner finds:
The instant specification discloses that an asphalt layer with a
synthetic rubber additive is the material that supports the instant claim
limitations [i.e., a lower asphalt layer having increased elongation at
break and softness compared to the upper asphalt layer to increase
impact resistance of the shingle]. As the bottom asphalt layer of
[Aschenbeck and Rodrigues] is made of a synthetic rubber modified
asphalt layer that provides increased impact resistance to the shingle,
it is taken as either inherently having the instantly claimed elongation
and softness ... or differ in minor ways that would have been obvious
to one of ordinary skill in the art .... The burden is shifted to
applicant to show a difference between the product of the cited art and
the product of the instant claims.
Final 3, 4.
In the alternative, the Examiner concludes that it would have been obvious
to one of ordinary skill in the art to replace the rubber modified asphalt layers of
Aschenbeck or Rodrigues with the rubber modified asphalt of Terrenzio. The
Examiner finds Terrenzio discloses a rubber modified asphalt having a softness of
greater than 75 dmm and an elongation at break of at least 2% which exhibits
"increased resistance to mechanical stress at low temperatures and better aging
7 Final Office Action dated February 1, 2013.
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Application 12/629,943
properties."8 Final 5. The Examiner finds the properties of Terrenzio's rubber
modified asphalt would have been desirable in the rubber modified asphalt layers
disclosed in Aschenbeck and Rodrigues. Final 6.
The Appellants argue that the portion of Aschenbeck relied on by the
Examiner (col. 9, 1. 30-col. 10, 1. 30) discloses that the bottom asphaltic material
layer has increased toughness. The Appellants argue that "having increased
toughness does not mean that it is softer" and "having increased toughness does
not mean that it has greater elongation at break."9 App. Br. 10.
The Appellants argue:
The Examiner incorrectly concludes that simply because the
bottom layer of Aschenbeck ... derives its increased toughness by
modifying the bottom asphalt layer with certain polymers, that it
inherently has the same softness and elongation at break
characteristics of the present invention, simply because both
Aschenbeck ... and the present invention are addressed to reducing
shingle cracks due to impacts.
App. Br. 10 (emphasis added).
The Examiner does not merely rely on the fact that the claimed modified
asphalt layer and Aschenbeck's modified asphalt layer both improve impact
resistance. Rather, the Examiner finds that Aschenbeck discloses some of the
8 According to the Appellants' Specification, the second asphaltic material recited
in the claims on appeal may be the second asphaltic binder or modified asphalt
disclosed in Terrenzio. Spec. 11, 11. 8-12; see also Terrenzio, col. 3, 11. 53-56
("The second asphaltic binder has greater elongation at ambient temperatures than
the first asphaltic binder, and the second asphaltic binder is softer than the first
asphaltic binder at ambient temperatures.").
9 The Appellants also direct our attention to other portions in Aschenbeck
describing a highly pliable top layer (Aschenbeck, col. 6, 11. 27-30, 48-51 (pliable
coating 14A depicted in Fig. 1 )) and a viscoelastic top layer (Aschenbeck, col. 8, 11.
36-39 (viscoelastic top layer of underlay 32 depicted in Fig. 3)). App. Br. 10. The
Examiner does not rely on either embodiment in the rejection on appeal. See Final
3 (citing Aschenbeck Fig. 4 and col. 9, 1. 30-col. 10, 1. 30).
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Application 12/629,943
sanze polymeric materials that the Appellants use to obtain the claimed properties
in the second asphaltic material layer (i.e., synthetic rubber and ethylene vinyl
acetate). See Final 3 (citing Aschenbeck, col. 9, 1. 30-col. 10, 1. 30); Spec. 8, 1. 24--
9, 1. 1. The Examiner finds that Aschenbeck' s lower asphalt layer, modified with
those same polymeric materials, would inherently exhibit the same properties,
including the claimed softness and elongation at break. See In re Papesch, 315
F.2d 381, 391(CCPA1963) (a chemical compound and its properties are
inseparable). On this record, the Appellants have not directed us to any evidence
or provided any technical reasoning demonstrating that the Examiner's finding is
erroneous. 10 See In re Swinehart, 439 F.2d 210, 213 (CCPA 1971) ("where the
Patent Office has reason to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority to require the
applicant to prove that the subject matter shown to be in the prior art does not
possess the characteristic relied on").
As for Rodrigues, the Appellants argue that "nowhere in Rodrigues ... is
there any disclosure of the characteristic of softness at all" and "nowhere in
Rodrigues ... is there any disclosure of the characteristic of elongation at break at
all." App. Br. 12. The Appellants recognize that Rodrigues uses a modified
asphalt formulation. However, the Appellants argue:
10 On appeal, the Appellants direct our attention to a Declaration of Gregory F.
Jacobs dated May 21, 2012. The Jacobs Declaration is not relied on to show that
the lower asphalt layers of Aschenbeck and Rodrigues, modified with the disclosed
polymers, would not exhibit the claimed softness and elongation at break. Rather,
the Jacobs Declaration is relied on to show that toughness is a different property
than softness and elongation at break. See App. Br. 10.
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Application 12/629,943
The Examiner overlooks that there could be literally thousands
of different modified asphalt formulations. There is no reason to
assume that any of those formulations would be substantially identical
to the specific characteristics of softness and elongation at break set
forth in the claims of the instant application.
App. Br. 12.
This argument also is not persuasive of reversible error. As in the § 102(b)
rejection based on Aschenbeck, the Examiner finds Rodrigues discloses some of
the same polymeric materials that the Appellants use to obtain the claimed
properties in the second asphaltic material layer (e.g., styrene-butadiene-styrene
(SBS) and styrene-butadiene rubber (SBR)). See Final 4 (citing Rodrigues i-f 40);
Spec. 8, 1. 24--9, 1. 1. The Examiner finds that Rodrigues' lower asphalt layer,
modified with those same polymeric materials, would inherently exhibit the same
properties, including the claimed softness and elongation at break. Papesch, 315
F.2d at 391. On this record, the Appellants have failed to establish otherwise.
Swinehart, 439 F.2d at 213.
Finally, the Appellants argue that Terrenzio, "by having its layer that is of
greater elongation at break as the top layer, ... teaches away from the present
invention which requires a softer layer that is of greater elongation at break in its
bottom or lower layer." App. Br. 13.
The Appellants' argument fails to consider the prior art as a whole. See In
re Keller, 642 F.2d 413, 425 (CCPA 1981) (test for obviousness is what the
combined teachings of the references would have suggested to one of ordinary skill
in the art). The Examiner relies on Aschenbeck and Rodrigues to show that, at the
time of the Appellants' invention, it was known to improve the impact resistance
of a shingle by modifying the asphalt layer on the lower surface of the shingle with
a synthetic rubber. The Examiner relies on Terrenzio "for the teaching of a
specific rubber modified asphalt that has increased resistance to mechanical stress
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Application 12/629,943
and better aging properties." Ans. 6. 11 The Examiner concludes that it would have
been obvious to one of ordinary skill in the art to have used the specific rubber
modified asphalt disclosed in Terrenzio on the lower surfaces of the shingles
disclosed in Aschenbeck and Rodrigues to improve aging and resistance to
mechanical stress in those shingles. Ans. 6-7.
The Appellants do not direct us to any error in the Examiner's factual
findings or legal conclusions. Therefore, the§ 103(a) rejection of claims 1-3, 6, 7,
14, and 17-22 is sustained.
The Appellants do not present arguments in support of the separate
patentability of any of dependent claims 8-13, 15, 16, 23, and 24. Rather, the
Appellants argue that Miller, Thiis-Evensen, and Zickell do not cure the
deficiencies of Aschenbeck, Rodrigues, and Terrenzio in the rejections of claims 1
and 22. App. Br. 13-14. For the reasons set forth above, there are no deficiencies
in those rejections that require curing by the remaining prior art of record.
Therefore, the§ 103(a) rejections of claims 8-13, 15, 16, 23, and 24 are sustained.
C. DECISION
The decision of the Examiner 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)(l).
AFFIRMED
11 Examiner's Answer dated September 26, 3013.
8