Appeal 2006-1080
Application 10/109,343
to adhere the applied coal tar to the sheet after it has cooled. Indeed, we are
of the view that penetration into a porous sheet by hot bituminous material
would have been readily observed by one of ordinary skill in this art
following the teachings of Jackson. In this respect, we find that Stern further
evinces that this person would have recognized that bituminous materials
can penetrate into porous foam insulation (Stern col. 5, ll. 24-29). Thus, this
person would have further applied the coal tar in an amount which would
result in a coating thickness of about 5 mil on top of the sheet, taught to be
desirable, as well as provide for penetration as taught by Jackson. We find
that Seitz further evinces that this person would have recognized that roof
sections 18 can comprise insulating materials including, among others,
corrugated cardboard in forming roof portion 14 to which weather resistant
material can be applied (Seitz col. 2, ll. 7-13 and 58-63, col. 3, ll. 25-28, and
FIG. 1).
Accordingly, on this record, the claimed coal tar pitch coated article
encompassed by appealed claim 1 appears to be identical or substantially
identical to the insulating material article coated with coal tar pitch to
provide water impermeability taught by Jackson, thus shifting the burden to
Appellants to submit effective argument and/or evidence which patentably
distinguishes the claimed article over Jackson, even though the ground of
rejection is under § 103(a). See, e.g., In re Best, 562 F.2d 1252, 1255-56,
195 U.S.P.Q. 430, 433-34 (CCPA 1977) ( “Where, as here, the claimed and
prior art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
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