IP Law Daily Obviousness rejection of roofing material reinforcement process patent claims reversed
Wednesday, October 11, 2017

Obviousness rejection of roofing material reinforcement process patent claims reversed

By Linda O’Brien, J.D., LL.M.

In an inter partes review proceeding relating to a patent for a process of applying reinforcements on roofing and building cover materials, the Patent Trial and Appeal Board erred in rejecting a challenge to the claims in the patent as unpatentable due to obviousness, the U.S. Court of Appeals for the Federal Circuit has ruled in a precedential opinion. Thus, the determination of the patent’s validity was reversed (Owens Corning v. Fast Felt Corporation, October 11, 2017, Taranto, R.).

Fast Felt Corporation owns U.S. Patent No. 8,137,757 ("the '757 patent"), which describes and claims methods for applying polymer nail tabs or reinforcement strips on roofing or building cover material. The specification explains that nail tabs have been used to reinforce certain locations on roofing or building cover material at which nails will be driven through the material to attach it to a wood roof deck or building stud wall. The patent proposes an asserted improvement from applying separate washers to every nail to provide reinforcement to using an automated process to permanently and reliability affix tab material so that it quickly solidifies and bonds to the surface.

Fast Felt sued Owens Corning for infringement and then Owens Corning filed a petition for an inter partes review (IPR) of claims 1, 2, 4, 6, and 7 of the '757 patent on the grounds of obviousness. The Patent Trial and Appeal Board concluded that Owens Corning failed to show obviousness of any of the challenged claims. Owens Corning appealed from the Board’s decision, contending that, once the key claim term is given its broadest reasonable interpretation, the record conclusively establishes obviousness.

There were three prior art references: U.S. Patent No. 6,451,409 (Lassiter) which teaches a process of using nozzles to deposit polymer nail tabs on roofing and building cover materials; U.S. Patent No. 5,101,759 (Hefele), which disclosed an offset-gravure printing process using a pressure roller to form grid-like coatings on "web-like flexible planar" materials; and U.S. Patent No. 6,875,710 (Eaton), which discloses a process of using a transfer roll to apply discrete polymeric regions to reinforce various substrates and a process for laminating two substrates together.

In its opinion, the Board construed the claim term "roofing or building cover material" to mean "base substrate materials such as dry felt, fiberglass mat, and/or polyester mat, before coating or saturation with asphalt or asphalt mix, and asphalt coated or saturated substrates such as tar paper and saturated felt." This construction did not require "an asphalt-coated substrate." The Board found that all of the elements of the independent claims were disclosed in Lassiter when combined with Hefele or Eaton and that Owens Corning failed to that a skilled artisan would have combined Lassiter with Hefele or Eaton.

The appellate court found that the Board erred in excluding roofing and building cover materials that would never be coated in asphalt from the scope of the claims. In its claims construction, the Board effectively treated the "roofing or building cover material" claim term as limited to material that either had been or would be coated or saturated with asphalt or asphalt mix, which was incorrect under the broadest-reasonable-interpretation standard applicable in the IPR. The claims expressly include building cover material as well as roofing material and it was undisputed that some building cover materials are commonly installed without ever being coated or saturated with asphalt or asphalt mix. Under those circumstances, the broadest reasonable construction of "roofing or building cover material" would include materials that neither have been nor were to be coated or saturated with asphalt or asphalt mix. Thus, the Board’s rejection of Owens Corning’s challenge was not supported by substantial evidence when the correct construction was employed, the court noted.

Furthermore, based on the record, a skilled artisan would be motivated to combine the prior art references to print nail tabs on building cover materials that were not asphalt coated or saturated with a reasonable expectation of success, the court found. Lassiter’s nozzle-based printing technique and Hefele’s and Eaton’s gravure-based printing processes were known substitutes, with success predictable as to materials covered by the claims. Therefore, the challenged claims of the '757 patent were unpatentable for obviousness and the Board’s decision must be reversed, the court concluded.

The case is No. 2016-2613.

Attorneys: Constantine L. Trela, Jr. (Sidley Austin LLP) for Owens Corning. Scott A. Brister (Andrews Kurth Kenyon LLP) for Fast Felt Corp.

Companies: Owens Corning; Fast Felt Corp.

MainStory: TopStory Patent FedCirNews

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