11132869 (B.P.A.I. Jun. 19, 2012)

Ex Parte Zatkulak

Board of Patent Appeals and InterferencesJun 19, 2012

11132869 (B.P.A.I. Jun. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ANTHONY D. ZATKULAK ____________________ Appeal 2010-007573 Application 11/132,869 Technology Center 3600 ____________________ Before: JOHN C. KERINS, MICHAEL C. ASTORINO, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007573 Application 11/132,869 2 STATEMENT OF CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 12-18. We have jurisdiction under 35 U.S.C. § 6(b) 2002. We REVERSE. THE INVENTION The claimed subject matter pertains to a breathable membrane for sealing attic space and providing an active air space between the attic and the roof deck. Spec. 1, 8-9. Claim 12, reproduced below, is illustrative of the claimed subject matter: 12. A breathable membrane in a building, comprising peripheral walls, a roof deck and a roof comprising rafters having a ridge vent at the highest portion of the roof and eaves at the lowest portion of the roof, wherein the membrane is installed over the rafters in a manner to provide an active air space between the membrane and the roof deck wherein the active air space is open to the exterior of the building at the eaves and at the ridge vent of the building. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Grange Bullock Rudisill TYVEK®Supro Roofshield® US 3,797,180 US 4,707,960 US 6,831,025 B2 Certificate 94/3054 Certificate 99/3648 Mar. 19, 1974 Nov. 24, 1987 Dec. 14, 2004 Apr. 23, 2004 Mar. 28, 2003 Appeal 2010-007573 Application 11/132,869 3 REJECTIONS The Examiner made the following rejections: Claims 12 and 13 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Grange in view of Bullock. Ans. 4. Claims 14 and 15 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Grange in view of Bullock, and further in view of TYVEK®Supro (British Board of Agrément Certificate No. 94/3054). Ans. 5. Claims 16 and 17 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Grange in view of Bullock, and further in view of Rudisill. Ans. 5. Claim 18 stands rejected under 35 U.S.C §103(a) as being unpatentable over Grange in view of Bullock, and further in view of Roofshield® (British Board of Agrément Certificate No. 99/3648). Ans. 7. ISSUE Although Appellant has separately challenged all of the rejections of claims 12-18, the sole issue raised on appeal is whether the Examiner properly combined the teachings of Grange and Bullock, which applies to all four rejections. ANALYSIS Grange discloses a ventilated roof structure very similar in general structure to that claimed by Appellant in claim 12. Grange teaches a building having peripheral walls, a roof deck, and a roof comprising rafters having a ridge vent at the highest portion of the roof and eaves at the lowest portion of the roof. Fig. 1. Grange further teaches a baffle member made of Appeal 2010-007573 Application 11/132,869 4 aluminum that provides “at least one channel between adjacent rafters for…conducting air between the facia and the attic and ridge[.]” Col. 1, ll. 54-56. Grange’s aluminum baffles also provide “interior flashing serving as a second line of protection from incidental leaks and water seepage.” Col. 1, ll. 56-58. Being made of aluminum, however, the baffle of Grange is not breathable as required in claim 12. Bullock teaches a permeable/breathable barrier for use in attic space (col. 4, l. 59-col. 5, l. 10), but the barrier is disclosed as located above the ceiling joists (e.g., Figs. 1-2 and col. 4, ll. 31-47). Bullock does not teach placement of the barrier “over the rafters in a manner to provide an active air space between the membrane and the roof deck” as claimed in claim 12, nor the use of aluminum as an alternative to the breathable barrier disclosed therein. As pointed out by Appellant, on the record before us, the “only suggestion for using a permeable membrane in the rafter section of a building is provided in the subject application[.]” Br. 3. As noted by Appellant, and referenced above with respect to Grange’s aluminum construction, “Grange discloses that baffle member 24 provides protection from leaks which could not be done with the permeable membranes as claimed.” Br. 3. The Examiner’s stated basis for combining Grange with Bullock is that it would have been known “to modify Grange with a known permeable attic membrane to prevent the buildup of moisture in an attic space, while maintaining the functionality of the baffles.” Ans. 4. This combination rationale suffers from two fatal defects. First, the Examiner has pointed to nothing in the references nor provided any reasoning supported by rational underpinnings evidencing that substituting material properties from a permeable, attic-floor, vapor barrier into an impermeable/aluminum, attic-roof, ventilation baffle would have Appeal 2010-007573 Application 11/132,869 5 been an obvious modification to a person of ordinary skill in the art. The Examiner appears to rely solely on the fact that both barriers are located somewhere within the attic space. Also, Grange’s aluminum barriers are presumably more rigid than Bullock’s membrane and this rigidity would assist in maintaining the necessary air space (e.g., as shown in Fig. 6). Even with an aluminum construction, however, Grange contemplates the possibility that additional structure such as fins 30 may be desirable to maintain the air space (Figs. 3-5, col. 4, l. 44 – col., 5. l. 3), thus it is unclear, based upon the cited references how the breathable membrane of Bullock would, at least as to the air space, “maintain[] the functionality of the baffles” as suggested by the Examiner. Ans. 4. The use of a breathable membrane in the rafter/roof deck area may lead to problems not encountered in the use of the same membrane over the ceiling joists, for which the Examiner has not accounted. Because the suggestion to place a breathable membrane in the claimed location is only in Appellant’s disclosure, we agree that this combination amounts to impermissible hindsight reasoning utilizing Appellant’s disclosure. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). See also MPEP § 2145(X)(A). Second, Grange specifically teaches that a benefit of utilizing aluminum is that it provides a “secondary layer of protection against moisture or the like existing immediately below the conventional roof deck[.]” Col. 1, ll. 60-62. We also agree with Appellant that this teaching in Grange conflicts with utilizing a permeable barrier (Br. 3-4.) and thus the Examiner’s proposed combination would render Grange unsatisfactory for its intended purpose. See In re Gordon, 733 F.2d 900 (Fed. Cir. 1984). Accordingly, for the reasons stated above, the combination of Grange with Bullock as stated by the Examiner is improper. Appeal 2010-007573 Application 11/132,869 6 CONCLUSION On the record before us, Appellant has demonstrated that the Examiner improperly combined the teachings of the Grange and Bullock references. We therefore reverse the rejection of claims 12-18 as improperly relying on a combination of Grange and Bullock. DECISION We REVERSE the Examiner’s decision to reject claims 12-18. REVERSED mls