COMMISSIONER'S DEC1SION
OBVIOUSNESS: Prefabricated Shingle Panel
A prefabricated shingle panel comprising a backing board secured to
tips of shingles was rejected. The prior art shingle panel required
a moisture barrier and the backing boards had to be assembled in over-
lapping relationship.
Rejection: Reversed.
This decision deals with a request for review by the Commissioner. of
Patents of the Examiner's Final Action dated July 9, 1975, on application
115,016 (Class 20-65). The application was filed on June 7, 1971, in
the name of Frank S. Barker et al and is entitled "Prefabricated Shingle
Panel And Process Of Making The Same." The Patent Appeal Board conducted
a hearing on December 15, 1975, at which Messrs. M. Thrift and R.W. Beach
represented the applicant.
The application relates to prefabricated shingle panels which can be assembled
in courses to form a roof or a sidewall. An important feature is that the
slots between the shingles in adjacent upper and lower courses are not in
registration with each other.
In the Final Action the examiner refused the application for failing to
define a patentable advance in the art over the following patents and common
general knowledge:
United States
2,171,010 August 29, 1939 Schuetz et al
3,095,671 July 2, 1963 Fink et al
In that action the examiner stated (in part):
The claims fall into two categories and will be discussed each
in turn. The two categories are: (1) claims 1 to 9 and 11.
This group includes the method claim 9, but since it is a
method of making the panels of the other claims of that group
it has been included therein; (2) claim 10. This claim is
not directed to the same subject matter as the other claims
and if the prosecution is to continue it must be deleted from
the application entirely. It is however, being rejected as
well.
Dealing firstly with the claims in the first category. These
claims rely for patentability on the following: "at least
three shingles of different selected, predetermined widths in
the direction lengthwise of said backing board arranged m each
of at least two repetitive identical series of such selected,
predetermined widths". This is as defined in the latter part
of claim 1. Claims 2, 3, 4 and 5 further define this idea by
specifying the actual widths of the individual shingles, for
example, 3 inches, 6 inches and 9 inches.
While claim 1 sets forth a single panel only, claims 6 to 8
define an assembly of such panels wherein the assembly is made
up of individually identical panels as per claim 1 placed on
a roof with the panels offset lengthwise to dispose the joints
in offset relationship. Claims 7 and 8 set forth specific cases
of offset wherein narrower shingles are centered with respect
to wider shingles in the courses above and below.
Claim 9, the method claim, sets forth a method of assembling
the individuals shingles on the backing boards in the pre-
determined manner as per claim 1.
Apart from the statement quoted above, all of the claims in
category 1 set forth essentially the same subject matter as
Fink et al. There is a minor difference however and that is
the amount of overhang of the butts. The prior art does not
disclose as much overhang as the applicant. But this is surely
a simple matter of choice and certainly of no patentable merit.
Applicant, in his letter of July 24, 1973, in the first para-
graph on page 2, indicates that his invention is in fact the
same as the examiner stated heretofore in this action, namely
selected widths arranged in a predetermined series to form a
regular modular panel structure. Applicant states that this
pattern or series may repeat within the length of a panel, and
will repeat from panel to panel because of such regularity.
...
The method that the applicant has set forth can in no manner
be considered patentable. All that applicant is doing in this
method is setting forth the steps of attaching shingles to a
backing board. Fink et al does this in precisely the same way
that applicant does, with the exception of the different width
shingles and the specific pattern mentioned above. Those are
not limiting to the method so in fact the method of claim 9
is entirely met by the prior art cited.
...
To reiterate, it is considered that the applicant has chosen
a particular combination of shingle widths namely 3, 6 and 9
inches from the infinite number of such widths and series avail-
able from "a completely random arrangement" to "using shingles
of the same width". While this choice may be beneficial with
respect to saving of workman time, it cannot be considered
patentable. To be patentable, a thing or process must have in-
volved the use of the inventive mind and this applicant's alleged
invention, in the examiner's opinion did not so do.
In his response dated October 6, 1975, to the Final Action the applicant
stated (in part):
...
Applicant's construction has the same benefit as the panel
of the Fink et al patent in enabling the panels to be made
in the shop instead of on the job. It has advantages over
the Fink et al construction in saving backing material by hav-
ing a backing panel of less than half the width of the Fink
et al panel. Also, applicant's panel is consequently lighter,
making it less expensive to ship and easier to handle when being
applied to a roof.
Utilization of applicant's panel has the advantages over the
use of individual shingles that in a shop the shingles can be
selected and fabricated into panels much more easily and quickly
than shingles of random width can be laid on a roof. The
principal reason for the facility of panel construction is that
the shingles for each position in the panel are of a prescribed
width, and the shingles available to the workman in the shop can
be preselected and assembled into stacks of the required widths
within easy reach of the workman. For constructing panels of the
types shown in Figures 10 and 11, for example, shingles of only
three widths are required, namely 3", 6" and 9". Such shingles
can be separated into three different piles or placed in three
different bins so that the workman can simply select a shingle
of the proper width quickly and unerringly, the only requirement
being that the predetermined arrangement of widths be followed.
In shingling a roof with shingles of random width, on the contrary,
the workman must
1. give attention to the distance between the edge of
the last shingle applied and the location of the
crack in the next lower course;
2. select a shingle of a width at least an inch narrower
or an inch wider than such distance; and
3. nail the shingle in place at the proper elevation.
...
In summary, the novel features of the broader claims not dis-
closed in the Fink et al reference are:
at least three shingles of different selected pre
determined widths
arranged in each of at least two repetitive identical
series
the butt portions of the shingles overhang the backing
board for a distance at least as great as the width of
the backing board
without any underlayer beneath such overhanging butt
portions
In commenting on these features at the middle of page 2 of
the Patent Office action dated July 9, 1975, the Examiner states
that the selected widths arranged in a predetermined series
"may repeat within the length of a panel, and will repeat from
panel to panel because of such regularity." Claim 1 supports
the item pointed out above that the selected predetermined widths
are arranged in each of at least two repetitive identical series
of such selected predetermined widths. After making this comment
the Examiner does not express an opinion as to inventiveness of
such arrangement of shingle widths.
...
The Examiner is correct in his statement with reference to the
Fink et al patent that the overhang is a "simple matter of
choice", as stated above, because the Fink et al construction
relies on the overlapping of the backing layers to produce a
waterproof structure. The distance to which the shingles are
extended beyond the Fink et al backing board 28 is completely
immaterial as far as waterproof structure is concerned. Consequent-
ly any extension beyond the minimum overhang constitutes simply a
waste of material.
It would certainly not be "obvious" to extend the random width
shingles of Fink and rely on those shingles instead of the backing
to provide weathertightness, because such an expedient would
simply destroy the object of Fink et al referred to above of in-
suring a tightly shingled side wall regardless of the care exercised
by the carpenters at the site.
In applicant's construction, on the contrary, the degree of
overhang of the shingles is not "a simple matter of choice", but
is a matter of necessity. As itemized above, the butt portions of
the shingles overhang the backing sheet a distance at least as great
as the backing board width and without any underlayer. This type
of construction is possible with applicant's panel because of the
use of the selected shingle widths as defined in the claims arranged
in at least two repetitive identical series, which feature the
Examiner admits is not disclosed in the prior art, and which the
Examiner does not specifically characterize as lacking invention.
The Schuetz citation relates to roof construction, more particularly to
a roof construction of the type in which multiple tab strip shingles, when
applied, simulate an effect of a plurality of individual shingles. An
important feature is that the shingle strip is layed in random order in
successive courses with a predetermined offset, such that none of the
slots between the shingles can possibly coincide with the slots of an ad-
jacent course.
The Fink citation relates to a multiple shingle structure and more particu-
larly to a shingle panel unit having a horizontal length spanning two or
more studs or rafters, and including a row of individual tapered wooden
shingles. Claim 1 of that citation reads:
As an article of manufacture, a multiple shingle structure
comprising a row of separate nailable shingles arranged in
edge-to-edge relation, a separate single preformed felted
fiber relatively rigid backing panel extending in face-to-
face relation along the greater part of the rear of said row
and of each individual shingle, a separate narrow nailing strip
capable of receiving and securely anchoring nails, said strip
extending along the rear of said row substantially the full length
and adjacent the lower edge of said row and remote from the
upper edge thereof, the upper edge of said nailing strip ex-
tending along close to and opposing the lower edge of said felted
fiber backing panel whereby said nailing strip forms a down-
ward continuation of said felted fiber backing panel, means
securing each shingle adjacent its lower edge to said nailing
strip, means securing said felted fiber backing panel to at
least some of said shingles, and a layer of water repellent
material interposed between said nailing strip and said row of
shingles, said layer of water repellent material being in the
form of an integral continuation of said felted fiber backing panel,
with said nailing strip arranged in a rabbet provided in the
lower rear part of said felted fiber backing panel.
This application relates to prefabricated shingle panels which can be formed
in courses to form a roof or a sidewall. The panel includes a backing board
underlying and secured to the tips of shingles laid in a row to form a course.
The lengths of the shingles, extending transversely of the length of the back-
ing board, are more than twice the width of the backing board. The panels
are assembled with the backing boards in edge abutment to form continuous
sheeting. Claim 1 of the application reads:
A prefabricated regular modular shingle panel comprising an
elongated backing board of substantially rectangular cross
section, and only a single course of several individual wooden
shingles, each shingle having a tip portion and a butt portion
and being tapered in thickness away from said butt portion
toward said tip portion, and said shingles being arranged with
their lengths extending transversely to the length of
said backing board, with their tip portions overlying and
secured to said backing board and with their butt portions
overhanging one edge of said backing board in free centi-
lever fashion without any underlayer for a distance at
least as great as the width of said backing board, said course
of shingles including at least three shingles of different
selected predetermined widths in the direction lengthwise
of said backing board arranged in each of at least two
repetitive identical series of such selected predetermined
widths, and said backing board being of a length to extend
continuously at least throughout said two repetitive pre-
determined series of shingles in said course.
The question to be considered is whether the application is directed to
a patentable advance in the art.
An interesting and informative hearing was held before the Board on Dec-
ember 15, 1975. A demonstration was given with a model of a building struct-
ure to show the steps in fabricating it. Photos to show various aspects
of the structure were also presented.
The applicant argues that: "In using shingles of random width fabricated
into panels it is unwarranted to assume that there will always be sufficient
offset between all joints in elevationally adjacent courses to avoid
leaks."
It is observed, however, that the Schuetz citation is directed solely to
the problem of preventing the slots of one course of shingles from coinciding
with the slots in adjacent courses. In column 1, line 44, he states: "It
will of course be understood that one of the principle desiderata of a satis-
factory shingle roof is that the slots of the strip shingles in one course
must not coincide with the slots of the shingles in adjacent courses, and
it is due to this desideratum that difficulty has arisen. Unless the strip
shingles having different width tabs are layed in a particular order and
carefully selected during application, the coincidental location of slots
in adjacent courses will inevitably occur." Schuetz goes on to devise a
formula for preventing the coincidental location of slots in adjacent
courses. The applicant therefore was not the first to solve that problem,
although it appears that he has solved it in a more simplified manner.
The applicant argues that by pre-assembling the units in a factory, sub-
stantial savings in cost is realized, which was then followed by commercial
success. The total concept of pre-assembling units in a factory is a basic
consideration in reducing building costs. This is essentially what the
prior art teaches. We are also mindful that commercial success by itself
without the solution of a problem, is not sufficient to establish subject
matter (See The King v. Uhlemann Optical Company (1949) 10 Fox Pat. C.).
We will now consider the structure or combination of the panel as a whole,
and its practical utility.
We note that the Schuetz citation is related to a flexible shingle strip
which does not utilize a backing board. We are left then only with the
Fink citation.
Fink discloses a multiple shingle structure, and is particularly concerned
with a shingle panel unit having a horizontal length spanning two or more
studs or rafters. A row of tapered shingles are secured thereon. A
moisture barrier or a water repellent sheet protects the underside of the
panel as well as backing for the shingles. The panels are assembled in over-
lapping relationship to each other.
The applicant maintains that "a key feature" of his panel structure is the
size and positioning of the backing board. The butt portion of the shingles
must overhang the edge of the backing board in free cantilever fashion. This
cantilever overhang must be at least as great as the width of the backing
board. This particular structure offers many advantages. For example, it
automatically sets the "number of inches of shingle to the weather," which
may, of course, be adjusted as desired. It makes for ease of assembly in
the final structure, as the lower edge of the backing board rests on the
top edge of the previous layer underneath. The panels when installed will
"automatically result in tight sheathing underlying the shingle covering."
The backing boards need not and do not overlap, which results in a saving of
material; this as opposed Fink's structure where the backing boards must
be assembled in overlapping relationship. The panels are applied directly
to the rafters without the need for an underlayer, which is usually required.
The specific arrangement of the shingles on each panel, and the relationship
of one panel to another eliminates the need for a water-repellent layer
used by Fink.
One argument advanced in the rejection was that: "Apart from the statements
quoted above [which related to width of shingles] all of the claims in
category 1 [claims 1 to 9] set forth essentially the same subject matter
as Fink et al. There is a minor difference however and that is the amount of
overhang of the butts. The prior art does not disclose as much overhang as
the applicant. But this is a simple matter of choice and certainly of no
patentable merit."
The functional advantages of the overhang of the shingles on the backing
board in the present application were discussed above. The object of the
slight overhang in Fink is totally different. The disclosure of Fink, column 1,
line 52, reads: "Another object is to provide such a unit which can be
produced in any type or style of shingling and in particular in which the
butts of the several shingles are spaced from the faces of the next lower
course to provide pronounced shadow lines in the shingling." This is a
direct result of applying the shingles in an overhanging relationship on
backing boards to form panels, which panels are then applied to a roof with
the backing boards in overlapping relationship.
It is clear therefore, that there is no teaching nor suggestion in this art
of the large "overhang of the shingles on the backing board" used by the appli-
cant to satisfy functional purposes. The slight overlap and spacing of the
butt ends of the shingles in Fink is merely for "aesthetic reasons."
On the other hand the applicant's larger overhang is a "key feature" of his
invention.
Of pertinence to this decision is the consideration of the Supreme Court
in The King v Uhlemann Optical Co. (1951) 15 CPR 99, where it was stated:
".., nothing essential to the invention and necessary or material for its
practical working and real utility could be found substantially in the prior
publications." (emphasis added.)
We are satisfied that the applicant has made a patentable advance in the
art. There is, in our view, sufficient ingenuity that the Commissioner
ought not to refuse a patent (cf Crossley Radio Corporation v. Canadian
General Electric, (1936) SCR 551 at 560).
We will now consider the claims.
Claim 1, which is the broadest claim in scope, covers the key feature of
the combination and reads: "... [the shingles] with their tip portions over-
lying and secured to said backing board and with their butt portions
overhanging one edge of said backing board in free cantilever fashion without
any underlayer for a distance at least as great as the width of said
backing board...." The claim is also directed to "shingles of different
selected predetermined widths in the direction lengthwise of said backing
board arranged in each of at least two repetitive identical series...."
It has been authoritatively stated that the art of combining two or more
parts into a new combination whether they be new or old, or partly new and
partly old, so as to obtain a new result, or a known result in a better,
cheaper, or more expeditious manner, is valid subject matter if there is
sufficient evidence of thought, design, and ingenuity in the invention,
and novelty in the combination. (See Merco Nordstrom Valve Co. v. Comer (1942)
Ex. C.R. 138 at 155).
We are satisfied therefore, that claim 1 is directed to subject matter
which satisfies the requirement of sufficient evidence of ingenuity in
the invention, and novelty in the combination. Nothing essential to the
invention and necessary or material for its practical working and real
utility can be found substantially in the prior publications. (Vide:
The King v Uhlemann, supra). Claim 1 in our view should be allowed.
Claims 2 to 9 inclusive are as restricted or more restricted in scope
than claim 1. The reasons given for the allowance of claim 1 apply equally
to these claims.
In summary, we recommend that the decision in the Final Action to refuse
the application be withdrawn. The claims should be accepted in their
present form as clearing the art on record.
J.F. Hughes,
Assistant Chairman,
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board. Accordingly I
withdraw the refusal of the application and direct that the application be
allowed, over the art of record, in its present form.
J.A. Brown,
Acting Commissioner of Patents.
Dated at Hull, Quebec
this 28th.day of January, 1976
Agent for Applicant
Smart & Biggar
70 Gloucester St.,
Ottawa, Ontario