Owens Corning Intellectual Capital, LLC

Patent Trials and Appeals Board

Mar 11, 2021

2021001323 (P.T.A.B. Mar. 11, 2021)

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.
16/136,728 09/20/2018 Donn R. Vermilion 38240.04734 8001
150130 7590 03/11/2021
Calfee, Halter & Griswold LLP
The Calfee Building
1405 East Sixth Street
Cleveland, OH 44114-1607
EXAMINER
JOHNSON, NANCY ROSENBERG
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
03/11/2021 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):
IPLegal@OwensCorning.com
ipdocket@calfee.com
wfrick@calfee.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONN R. VERMILION, XIUJUAN ZHANG,
WILLIAM BRIAN WARD, and CHRIS ARMINTROUT
Appeal 2021-001323
Application 16/136,728
Technology Center 1700
Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and
JEFFREY R. SNAY, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 12, 16, 17, and 21–28. See Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b). Because a petition to make
special under 37 C.F.R. § 1.102(c)(1) was granted in this Application,

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Owens Corning Intellectual Capital,
LLC. Appeal Br. 3.
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Application 16/136,728
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(Petition Decision of Dec. 27, 2018), we review Appellant’s appeal out of
turn. MPEP § 1203.
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a shingle with increased hydrophobicity.
Claim 12, reproduced below with the limitation at issue highlighted, is
illustrative of the claimed subject matter:
12. A shingle, comprising:
a substrate having a first asphalt coating on a top surface
of the substrate and a bottom surface of the substrate;
a surface layer of granules embedded in the asphalt on
the top surface of the substrate;
a backdust layer of particles embedded in the asphalt on
the bottom surface of the substrate;
a sealant layer comprising a top surface and a bottom
surface, wherein the top surface abuts the backdust layer; and
a hydrophobic coating applied to the bottom surface of
the sealant layer.
Appeal Br. 16 (Claims Appendix) (emphasis added).
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Born US 6,919,398 B1 July 19, 2005
Muller US 2006/0235143 A1 Oct. 19, 2006
Jenkins US 2012/0260597 A1 Oct. 18, 2012

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REJECTION
Claims 12, 16, 17, and 21–28 are rejected under 35 U.S.C. § 103 as
being unpatentable over Jenkins in view of Born and Muller. Final Act. 2.
OPINION
Every obviousness analysis “begins with a key legal question—
what is the invention claimed?” Panduit Corp. v. Dennison Mfg. Co., 810
F.2d 1561, 1567 (Fed. Cir. 1987). Starting with claim interpretation is
important because, when the prior art is compared with erroneously
interpreted claims, findings of differences between the prior art and the
claims will necessarily be erroneous. Id. at 1576; see also In re Paulsen, 30
F.3d 1475, 1479 (Fed. Cir. 1994) (“[T]o properly compare [the prior art]
with the claims at issue, we must construe the term [in dispute] to ascertain
its scope and meaning.”).
To construe claim terms, we give them “their broadest reasonable
interpretation consistent with the specification.” In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “Claim language should
be read in light of the specification as it would be interpreted by one of
ordinary skill in the art.” Id. The correct interpretation “is an interpretation
that corresponds with what and how the inventor describes his invention in
the specification.” In re Smith Int'l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir.
2017). Thus, we look to the Specification to guide us to the correct meaning
of the terms of claim 12.
Claim 12, the sole independent claim recites an asphalt-based shingle
that includes a sealant layer and a hydrophobic coating.
The Specification describes an embodiment of an asphalt-based
shingle with the structure required by the first three clauses of claim 12, i.e.,
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Application 16/136,728
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the structure before the sealant layer and hydrophobic coating are applied.
Such an asphalt-based shingle is depicted in Figure 1A. The shingle 100 of
Figure 1A has a substrate 116 having first asphalt coating 114, with
embedded granules 112, on the top surface of substrate 116 and asphalt
coating 118, with embedded backdust particles 120, on the bottom surface of
substrate 116. Spec. ¶¶ 22–23; see also Appeal Br. 8 (identifying Figs. 1A
and 1B and Spec. ¶¶ 22–23 as defining the subject matter of the first three
claim clauses in conformance with 37 C.F.R. § 41.37(c)(1)(iii)).
Claim 12 recites “a sealant layer comprising a top surface and a
bottom surface, wherein the top surface abuts the backdust layer.” When
using the term “sealant,” the Specification is referring to a shingle sealant
that “is generally applied to the surface of a shingle and is used to bond
adjacent shingles together when installed on a roof.” Spec. ¶ 44; see also
Appeal Br. 8 (referring to Spec. ¶ 44). Thus, the “sealant” of claim 12 is a
bonding agent.
The Specification restricts the meaning of “hydrophobic coating” in
two ways.
First, as acknowledged by Appellant in the Summary of the Claim
Subject Matter (Appeal Br. 8), a “hydrophobic coating applied to the bottom
surface of the sealant layer” is restricted to coatings such as those described
in paragraph 44 of the Specification. That paragraph describes silane
coatings that can be applied after the sealant has been applied. The
Specification describes other hydrophobic materials in paragraph 45, but
they are not described as applied to the sealant and are, in fact, described as
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Application 16/136,728
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affecting the bonding ability of the sealants, i.e., affecting the ability of the
sealant to perform its intended function.2
Second, the Specification uses “coating” in a manner that
differentiates between coatings and particles. Although Appellant’s
Specification describes a genus of “hydrophobic materials” that includes
hydrophobic particles, such as the hydrophobic particles 804 described in the
embodiment of Figure 8, the Specification does not describe those particles
as coatings. Spec. ¶ 47 (differentiating between particles described in the
instant paragraph and earlier described coatings using the phrase “[s]imilar
to the hydrophobic coatings described above . . .”); Spec. ¶ 50 (referring to
“hydrophobic material (e.g., the hydrophobic coatings and hydrophobic
particles discussed herein)”).3
Having interpreted claim 12 as limited to asphalt-based shingles with
a sealant layer understood in the art to be a bonding agent onto which is
applied a hydrophobic coating, such as the silane coating described in the
Specification, we determine that the Examiner reversibly erred in finding a
suggestion within the prior art to apply such a hydrophobic coating onto a
sealant layer. The Examiner’s finding of a suggestion is erroneous because it
relies on Born and Muller to provide a suggestion for coating Jenkin’s
sealant layer 151, which is depicted in Jenkin’s Figure 7. Final Act. 2–3.

2 Because claim 12 requires the hydrophobic coating be applied to the
bottom surface of the sealant layer, to the extent Appellant’s claims
encompass coatings other than the silane-based coatings described in
paragraph 44, those claims lack written descriptive support and enablement
under 35 U.S.C. § 112.
3 Claim 24 is improperly dependent under 35 U.S.C. § 112(d) as it is
directed not to the coating embodiment, but to the hydrophobic particle
embodiment of Figure 8.
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Born merely suggests applying a hydrophobic coating to those portions of a
roof exposed to rain. Born col. 1, ll. 38–44 and col. 3, ll. 44–56. It is the
moving water that removes the dirt. Muller merely suggests applying a non-
permanent dirt- and water-repellant coating to protect new articles from
soiling, e.g., during moving or in the sales areas. Muller ¶¶ 22, 26. Neither
of these teachings provide a suggestion to place the coating onto Jenkin’s
sealant 151, which will exist between the shingles when installed on the
roof, and will not be exposed to the elements in use, and which is covered by
the release layer 155 within the packaging. Nor has the Examiner provided
additional technical reasoning indicating that the suggestion arises from the
prior art knowledge of the ordinary artisan rather than from improper
hindsight.
We agree with Appellant that the Examiner reversibly erred in finding
a suggestion to coat Jenkin’s sealant 151 with the coatings taught by Born
and Muller.
CONCLUSION
The Examiner’s decision to reject claims 12, 16, 17, and 21–28 is
REVERSED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
12, 16, 17,
21–28
103 Jenkins, Born,
Muller
12, 16, 17,
21–28

REVERSED