Ex Parte Vanpoulle et al

Patent Trial and Appeal Board

Oct 24, 2017

13348028 (P.T.A.B. Oct. 24, 2017)

United States Patent and Trademark Office
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.
13/348,028 01/11/2012 Sophie Vanpoulle 2011-096 1655
27569 7590 10/26/2017
PAUL AND PAUL
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
EXAMINER
PENNY, TABATHA L
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
10/26/2017 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 @PAUL ANDPAUL.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 SOPHIE VANPOULLE,
VAN NHAN NGUYEN, and ALEXANDRA DEKONINCK
Appeal 2016-003612
Application 13/348,028
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
JENNIFER R. GUPTA, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—10, 12—24, and 26—311 of
Application 13/348,028 under 35 U.S.C. § 103(a) as obvious and also
rejected claim 4 under 35 U.S.C. § 112,12 as indefinite. Final Act.
(December 1, 2014). Appellants2 seek reversal of these rejections pursuant
to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
A hearing was held on October 12, 2017.
1 Claims 11 and 25 are withdrawn from consideration by the Examiner
pursuant to 37 C.F.R. § 1.142(b) as drawn to a non-elected invention. Final
Act. 2.
2 CertainTeed Corp. is identified as the real party in interest. Appeal Br. 1.
Appeal 2016-003612
Application 13/348,028
For the reasons set forth below, we reverse.
BACKGROUND
Asphalt shingles can be used as roofing and siding materials. Spec. 1.
One way to manufacture such shingles begins by impregnating an organic
fiber felt comprising cellulosic or wood fiber with liquid asphalt. Id. The
impregnated reinforcing material is then coated with molten asphalt on each
of its two faces. Id. Roofing granules are distributed on the upper face of
the shingle, while an anti-adhesive agent such as talc is applied to the lower
face. Id. The roofing granules are partially embedded into the hot asphalt
layer on the upper face of the web, and the subsequently-cooled product is
collected in the form of rolls or of sheets cut to the desired dimensions. Id.
The ’028 Application describes roofing granules having a biocidal
activity. Id. at 4. This biocidal activity is useful for inhibiting the growth of
microorganisms, especially algae. Id.
Claim 1 is representative of the ’028 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
1. A process for preparing biocidal roofing granules, the
process comprising:
(a) providing a mineral core;
(b) preparing a gel-forming inorganic sol coating
medium;
(c) providing at least one biocidal photocatalytic metal
oxide;
(d) coating the mineral core with the inorganic sol
coating medium;
(e) forming a porous coating layer on the mineral core
from the inorganic sol coating medium, the porous coating
layer having a pore network; and
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Appeal 2016-003612
Application 13/348,028
(f) disposing the at least one photocatalytic metal
oxide in the pore network.
Appeal Br. 17 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains3 the following rejections:
1. Claims 1, 2, 5—7, and 15—17 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Hong,4 McArdle,5 and
Marzolin.6 Final Act. 3.
2. Claims 3, 4, 18—21, 26, and 31 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Hong, McArdle,
Marzolin, and Monroe.7 Final Act. 4.
3. Claims 8—10 and 12—14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hong, McArdle, Marzolin,
and Pei.8 Final Act. 5.
4. Claims 22—24 and 27—30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hong, McArdle, Marzolin,
Monroe, and Pei. Final Act. 6.
3 The Examiner has withdrawn the rejection of claim 4 as indefinite pursuant
to 35 U.S.C. § 112,12. Advisory Action 2 (April 13, 2015).
4 US 2004/0255548 Al, published December 23, 2004.
5 US 2002/0066233 Al, published June 6, 2002.
6 US 2002/0182334 Al, published December 5, 2002.
7 US 5,611,829, issued March 18, 1997.
8 Lihua Pei et al., Effect of Drying on the Mesoporous Structure of Sol-Gel
Derived Silica with PPO-PEO-PPO Template Block Copolymer, 284 J.
Colloid & Interface Sci. 222—227 (2005).
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Appeal 2016-003612
Application 13/348,028
DISCUSSION
Independent claim 1 requires the preparation of “a gel-forming
inorganic sol coating medium.” Similarly, independent claim 16 requires
preparation of “a gel-forming inorganic coating medium.” Because the
Examiner has not established that the prior art describes or suggests these
steps, we reverse.
In rejecting claims 1 and 16, the Examiner found that McArdle
describes silica sols as an alternative binder to silicate and clay materials for
use in roofing granules compositions. Final Act. 3. Appellants argue that
“McArdle does not disclose gel-forming silica sols, and there is nothing in
McArdle which would suggest to one of ordinary skill in the art that the
silica sol be treated to provide a gel.” Appeal Br. 8 — 9. In response, the
Examiner asserts that “the sols of McArdle are ‘gel-forming silica sols’ in
that they are sols and as such are inherently capable of gelation.” Answer 2.
The Examiner cites no authority for this proposition. Id.
A sol is “a fluid colloidal solution.” Sol\Define Sol at Dictionary.com
(October 20, 2017, 3:09 PM), http://www.dictionary.com/browse/sol?s=t.
A gel is “a semirigid colloidal dispersion of a solid with a liquid or
gas, as jelly, glue, etc.” Gel\Define Gel at Dictionary.com (October 20,
2017, 3:06 PM), http://www.dictionary.com/browse/gel.
Transformation of a sol into a gel requires formation of a single
interconnected network of colloid particles, whose extent is limited only by
the walls of the container. See generally A.C. Pierre, Sol-Gel Technology, in
Kirk-Othmer Encyclopedia of Chemical Technology § 3 (13 July 2007)
http://bit.lv/2xUZxJp. Various types of silicates are important gel
precursors. Id. § 3.2.1. Silica sols, however, only form gels under particular
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Application 13/348,028
conditions. See generally Silica Sols and Colloidal Silica, in Van
Nostrand’s Scientific Encyclopedia (15 January 2007), http://bit.ly/2xVHV4.
‘“Inherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.’” In re Oelrich, 666 F.2d 578, 581
(CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA
1939)).
In this case, the Examiner has not found that the silica sols discussed
in McArdle necessarily are prepared under or placed into conditions where
they are capable of forming gels. Nor has the Examiner explained why the
combination of Hong, McArdle, and Marzolin would have suggested using
McArdle’s silica sols to form a gel to a person having ordinary skill in the
art at the time of the invention. In the absence of one or both of these
necessary predicates, the Examiner’s rejection of claims 1 and 16 must be
reversed. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections
on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”).
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1—
10, 12—24, and 26—31 of the ’028 Application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED
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