In re Brandt

• Decision Date: 27 March 2018
• Docket Number: 2016-2601
• Citation: 886 F.3d 1171
• Parties: IN RE: Gregory A. BRANDT, John B. Letts, Firestone Building Products Company, LLC, Appellants
• Court: U.S. Court of Appeals — Federal Circuit

886 F.3d 1171

IN RE: Gregory A. BRANDT, John B. Letts, Firestone Building Products Company, LLC, Appellants

2016-2601

United States Court of Appeals, Federal Circuit.

Decided: March 27, 2018

Arthur M. Reginelli, Renner, Kenner, Grieve, Bobak, Taylor & Weber, Akron, OH, argued for appellants. Also represented by Laura J. Gentilcore, Ray L. Weber.

Robert Mcbride, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for appellee Andrei Iancu. Also represented by Nathan K. Kelley, Molly R. Silfen, Coke Morgan Stewart.

Before Lourie, Reyna, and Taranto, Circuit Judges.

Reyna, Circuit Judge.

Gregory A. Brandt, John B. Letts, and Firestone Building Products Company LLC appeal from a decision by the Patent Trial and Appeal Board affirming an examiner's obviousness rejection of their patent application claims related to construction board for a covered roof. Because substantial evidence supports the Board's factual findings, and the Board did not err in its conclusion of obviousness, we affirm.

BACKGROUND

On October 16, 2012, inventors Brandt and Letts (together, "Brandt") filed Patent Application No. 13/652,858 (" '858 application") with the United States Patent Office. The '858 application relates to "high density polyurethane or polyisocyanurate construction boards, as well as their use in flat or low-slope roofing systems." J.A. 17. Following examination, only independent claims 1 and 3 remained in the '858 application. Those claims are directed to a covered roof and a method for applying covering to a roof, respectively. Both claims are at issue in this appeal.

Figure 2 of the '858 application depicts the covered roof:

J.A. 40. As shown in Figure 2, the covered roof consists of stratified layers comprising a roof deck 32, an insulation board 34, and a high-density coverboard 10. The '858 application explains that coverboards "add integrity to the roof." J.A. 18. When layered atop the insulation board, as in Figure 2, the coverboard can protect the insulation board which is "prone to denting or damage due to the fact that insulation boards are low density cellular materials." Id.

Representative claim 1 provides:

1. A covered roof comprising:

(a) a roof deck;

(b) an insulation board including a polyurethane, a polyisocyanurate, or a mix of polyurethane and polyisocyanurate cellular structure, and said insulation board having a density that is less than 2.5 pounds per cubic foot; and

(c) a coverboard including a polyurethane, a polyisocyanurate, or a mix of polyurethane and polyisocyanurate cellular structure, said coverboard having a density greater than 2.5 pounds per cubic foot and less than 6 pounds per cubic foot and a first planar surface and a second planar surface, said first planar surface and second planar surface each having a facer positioned adjacent thereto.

J.A. 130 (emphasis added). The only limitation at issue in this appeal involves the density range of the coverboard emphasized above.

On March 14, 2013, the examiner issued a Final Office Action rejecting claims 1 and 3 under 35 U.S.C. § 103(a) over U.S. Patent Application Publication No. 2006/0096205 ("Griffin") in view of U.S. Patent Nos. 5,891,563 ("Letts") and 6,093,481 ("Lynn"). J.A. 91, 93. Griffin discloses a prefabricated roofing panel with a coverboard having a polymer material core layer with a density "between 6 lbs/ft³ and 25 lbs/ft³ and preferably a density of at least 8 lbs/ft³." J.A. 207. In addition, Griffin describes the high-density core layer as possibly "contain[ing] various powdered and liquid fillers, fiber reinforcements, fire-retardants, fungi growth-inhibiting agents, etc. to reduce the cost and/or modify the properties of the high-density core layer," including modifications that affect the "compressive strength, the flexibility, the friability, [and] the fire resistance of the core layer." J.A. 208. Lynn is directed to a method for manufacturing insulation board that involves employing rigid foam between laminate facing sheets. J.A. 222 col. 2 ll. 12–21. Lynn describes the rigid foam layer as a polymeric composition and lists as "suitable polymers," both polyurethane and polyisocyanurate. J.A. 224 col. 5 ll. 42–52. Once employed, this foam layer reaches a "desired bulk density which is generally between 0.5 and 10, and preferably between 1 and 5 pounds per cubic foot." Id. col. 5 ll. 61–65.

The examiner used Letts to show that composite boards comprising polyisocyanurate and polyurethane materials were known and used in the construction of covered roofs. J.A. 94. The examiner's application of Letts is not at issue in this appeal.

In rejecting the claims, the examiner found that Griffin's disclosure of a coverboard density range between 6 and 25 pounds per cubic foot abuts but "does not specifically disclose the density of the coverboard being less than 6 pounds per cubic foot." J.A. 94. The examiner determined that Griffin suggests that the fillers to the coverboard, such as fire-retardants, may causevariations in density by altering the coverboard's composition and compressive strength. Id. In addition, the examiner found that Lynn teaches a rigid foam made from polymeric material with a bulk density ranging between 1 and 5 pounds per cubic foot that does overlap with the density range disclosed in the '858 application. Id. Based on the combined teachings of Griffin and Lynn, the examiner concluded that it would have been "an obvious design choice" for a skilled artisan to have a coverboard with a density of less than 6 pounds per cubic foot. Id.

Brandt appealed the examiner's rejection to the Patent Trial and Appeal Board ("Board"). In its appeal, Brandt amended claims 1 and 3 to remove limitations related to the insulation board and iso index. J.A. 107. In her answer, the examiner issued a new rejection under § 103(a) of claims 1 and 3 based on Griffin in view of Lynn. J.A. 141. Specifically, the examiner found that it would have been obvious to a skilled artisan to have "a cover board that had a density of less than 6 pounds per cubic feet as an obvious design choice and also due to margin of error by the slightest percentage." J.A. 142.

The Board affirmed the examiner's rejection. J.A. 2. The Board found that the claimed range for the coverboard in the '858 application of "less than 6 pounds per cubic foot" does not overlap with Griffin's disclosed range of between 6 and 25 pounds per cubic foot. J.A. 5. While not overlapping, based on the examiner's factual findings, the Board found that the difference in the ranges was "virtually negligible" and "could not be smaller." Id. Relying on Haynes International, Inc. v. Jessop Steel Co. , 8 F.3d 1573, 1577 n.3 (Fed. Cir. 1993), the Board thus determined that claims 1 and 3 were prima facie obvious based on the general rule that "when the difference between the claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor." Id. (citing Titanium Metals Corp. of Am. v. Banner , 778 F.2d 775, 783 (Fed. Cir. 1985) ). The Board found that Brandt failed to rebut this prima facie rejection through argument or evidence of unexpected results or teaching away. J.A. 5–6. The Board also found that Brandt did not show that Griffin's disclosed low-end range of 6 pounds per cubic foot would have any different properties from a coverboard with a lower density of 5.99 pounds per cubic foot. J.A. 6. After considering the evidence as a whole, the Board concluded that the examiner did not err in rejecting as obvious claims 1 and 3 of the '858 application. Id.

Brandt and the assignee of the '858 application, Firestone Building Products Company, LLC, appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

STANDARD OF REVIEW

We review Board decisions in accordance with the Administrative Procedure Act, 5 U.S.C. § 706(2) (2012). Dickinson v. Zurko , 527 U.S. 150, 152, 165, 119 S.Ct. 1816, 144 L.Ed.2d 143 (1999). Under the APA, we review the Board's legal conclusions de novo and its factual findings for substantial evidence. ACCO Brands Corp. v. Fellowes, Inc. , 813 F.3d 1361, 1365 (Fed. Cir. 2016). Substantial evidence is "such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." In re Gartside , 203 F.3d 1305, 1312 (Fed. Cir. 2000) (quoting Consol. Edison Co. of N.Y. v. NLRB , 305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1938) ).

Obviousness is a question of law with underlying factual findings relating to the "scope and content of the prior art, differences between the prior art and the claims at issue, the level of ordinary skill in the pertinent art, and any objective indicia of non-obviousness." Randall Mfg. v. Rea , 733 F.3d 1355, 1362 (Fed. Cir. 2013) ; see Graham v. John Deere Co. , 383 U.S. 1, 17–18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). We review the Board's underlying factual findings for substantial evidence and its legal conclusion on obviousness de novo. In re Mouttet , 686 F.3d 1322, 1330–31 (Fed. Cir. 2012).

DISCUSSION

Appellants make two arguments on appeal. First, Appellants challenge the Board's finding of a prima facie case of obviousness based on Griffin's disclosed coverboard density range because that range does not facially overlap with the '858 application's claimed coverboard density range. Second, assuming the Board properly found a prima facie case, Appellants contend that the Board erred in finding that the prior art does not teach away from the claimed invention.

A. Prima Facie Obviousness

Patent examination usually involves a negotiation between the Patent Office and an applicant about the metes and bounds of a potential property right. See Phillips v. AWH Corp. , 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) ("[T]he prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation."). During the...