Owens Corning Intellectual Capital, LLC

Patent Trials and Appeals Board

Mar 15, 2022

2021002140 (P.T.A.B. Mar. 15, 2022)

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. 15/911,932 03/05/2018 Robert MILNE 38240.04723 1004 150130 7590 03/15/2022 Calfee, Halter & Griswold LLP The Calfee Building 1405 East Sixth Street Cleveland, OH 44114-1607 EXAMINER POLLEY, CHRISTOPHER M ART UNIT PAPER NUMBER 1785 NOTIFICATION DATE DELIVERY MODE 03/15/2022 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 ROBERT MILNE and MARTIN VIDO Appeal 2021-002140 Application 15/911,932 Technology Center 1700 Before TERRY J. OWENS, KAREN M. HASTINGS, and N. WHITNEY WILSON, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 16 and 18-24. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Owens Corning Intellectual Capital, LLC (Appeal Br. 3). Appeal 2021-002140 Application 15/911,932 2 CLAIMED SUBJECT MATTER The claims are directed to a water drainage-promoting wrap. Claim 16, reproduced below, is illustrative of the claimed subject matter: 16. A water drainage promoting wrap comprising: a substrate having a first face, a second face, and a plurality of spaced apart spacer elements on one of the first face and the second face; wherein the substrate is a membrane permeable to water vapor and substantially impermeable to liquid water and to air; wherein the spacer elements comprise a base having a width of 2 mm or greater; wherein the spacer elements have a height of 0.5 mm or greater, a Shore A hardness greater than 90, and a tensile elongation less than 50%; wherein the spacer elements are configured to define a gap between one of the first face and the second face of the substrate and an exterior sheathing applied over the water drainage-promoting wrap for the drainage of water. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Hamdar US 2003/0215594 A1 Nov. 20, 2003 Arthurs US 2008/0141604 A1 June 19, 2008 Rubbermill Hardness of Rubber: Durometer Undated REJECTION Claims Rejected 35 U.S.C. § Reference(s)/Basis 16, 18-24 103(a) Hamdar, Arthurs, Rubbermill Appeal 2021-002140 Application 15/911,932 3 OPINION We need address only the sole independent claim (16). That claim requires a water drainage promoting wrap comprising spaced apart spacer elements comprising a base having a width of 2 mm or greater. Hamdar discloses a skid-resistant moisture barrier comprising nodules comprising a base having an average width (if irregular in shape or overlapping with adjoining nodules) of 0.1-1.0 mm, preferably 0.07-0.7 mm (¶ 59). The Examiner concludes (Ans. 6): One of ordinary skill in the art would know that a larger spacer would provide for better slip resistance as there is more area to gain traction with. Hamdar teaches in paragraph 60 that these nodules can also provide an aesthetic appearance on the surface and therefore one of ordinary skill in the art could make the spacers larger than 2mm to provide for a desired design of decoration. Hamdar also teaches that the nodules can be formed as overlapping nodules with adjoining nodules and the nodules are formed within clusters of 3-30 nodules (paragraphs 59 and 62). Therefore, it would have been obvious to one of ordinary skill in the art to have made the nodules larger than 2mm.[2] The Examiner does not provide evidence that “[o]ne of ordinary skill in the art would know that a larger spacer would provide for better slip resistance as there is more area to gain traction with.” See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply 2 The Examiner does not rely upon Arthurs or Rubbermill for any disclosure pertaining to the nodule base width (Final 4-5). Appeal 2021-002140 Application 15/911,932 4 deficiencies in its factual basis.”). Regarding the Examiner’s finding that “Hamdar teaches in paragraph 60 that these nodules can also provide an aesthetic appearance on the surface and therefore one of ordinary skill in the art could make the spacers larger than 2mm to provide for a desired design of decoration,” establishing a prima facie case of obviousness requires more than speculating as to what one of ordinary skill in the art could do. For a prima facie case of obviousness to be established, the teachings from the prior art itself must appear to have suggested the claimed subject matter to one of ordinary skill in the art. See In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). The mere fact that the prior art could be modified as proposed by the Examiner is not sufficient to establish a prima facie case of obviousness. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992). The Examiner must explain why the prior art would have suggested to one of ordinary skill in the art the desirability of the modification. See Fritch, 972 F.2d at 1266. As for the Examiner’s finding that “Hamdar also teaches that the nodules can be formed as overlapping nodules with adjoining nodules and the nodules are formed within clusters of 3-30 nodules (paragraphs 59 and 62),” Hamdar’s disclosed size range of nodules overlapping with adjoining nodules is 0.01-1.0 mm, preferably 0.07-0.7 mm (¶ 59). The Examiner does not establish that in view of that disclosure, one of ordinary skill in the art would have had an apparent reason to make the nodules’ base width 2 mm or greater. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (establishing a prima facie case of obviousness requires an apparent reason to modify the prior art as proposed by the Examiner). CONCLUSION For the above reasons, we reverse the Examiner’s rejection. Appeal 2021-002140 Application 15/911,932 5 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 16, 18-24 103(a) Hamdar, Arthurs, Rubbermill 16, 18-24 REVERSED