Ex Parte Bailey et al

Patent Trial and Appeal Board

May 2, 2017

13196036 (P.T.A.B. May. 2, 2017)

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.
13/196,036 08/02/2011 Stephen B. Bailey 3487.032US3 3085
21186 7590 05/04/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
KHAN, TAHSEEN
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
05/04/2017 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):
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SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN B. BAILEY and
MICHAEL C. SCHONEBERGER
Appeal 2016-001632
Application 13/196,036
Technology Center 1700
Before TERRY J. OWENS, MARKNAGUMO, and
DEBRA L. DENNETT, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1 and 3—21. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a wood-based composite panel. Claim 1 is
illustrative:
1. A wood-based composite panel, comprising:
a top surface having a top perimeter including a first set
and a second set of opposing sides;
a bottom surface, opposite the top surface, having a
bottom perimeter including a first set and a second set of
Appeal 2016-001632
Application 13/196,036
opposing sides, the first set and the second set of opposing sides
of the bottom surface corresponding in relative positioning to
the first set and the second set of opposing sides of the top
surface; and
a first and second set of parallel opposing side surfaces,
the side surfaces having a first set and second set of opposing
sides, the distance between the first set of opposing sides of the
side surfaces corresponding to the distance between the first or
second set of opposing sides of the bottom surface;
wherein the distance between at least one of the first set
or the second of opposing sides of the top surface is about
1/8 inch to about 4 inch less than the distance between the
corresponding first set or second set of opposing sides of the
bottom surface, and the distance between the second set of
opposing sides of at least two opposing side surfaces is between
about 1/1000 inch to about 4/10 inch less than an average
distance between the top and bottom surfaces, such that the top
surface is not susceptible to edge swell,
wherein the distance between the second set of opposing
sides of at least the first or second set of opposing side surfaces
is less than an average distance between the top and bottom
surfaces,
wherein the wood-based composite panel is an oriented
strand board (OSB) panel.
Hanson
Crowley
Ou
The References
US 5,113,632
US 5,640,812
US 6,675,544 B1
The Rejection
May 19, 1992
June 24, 1997
Jan. 13, 2004
Claims 1 and 3—21 stand rejected under 35 U.S.C. § 103 over Ou in
view of Hanson and Crowley.
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Appeal 2016-001632
Application 13/196,036
OPINION
We reverse the rejection. We need address only the independent
claims (1 and 21).
Ou discloses “a composite wood panel comprising a first and second
longitudinal edge, wherein the first edge includes a groove [17] and the
second edge includes a tongue [24], for interlocking and engaging the
complementary edges of adjacent tongue and groove wood panels” (col. 1,
11. 48—53). The second longitudinal edge has a shoulder (32) at its junction
with a side wall of the tongue such that upon assembly of two
complementary wood panels to form a tongue-and-groove joint, the shoulder
abuts against the first longitudinal edge, thereby preventing the tongue from
being completely inserted into the groove, resulting in spaces (20, 22)
(which Oh calls apertures) existing between the first and second longitudinal
edges and between the tongue’s head and the groove’s base (col. 1,11. 59—
67; Fig. 2). The spaces permit the wood panels to expand and swell without
undesired stress along their longitudinal edges when the panels absorb
moisture, thereby reducing or eliminating panel buckling, bowing, popping
and squeaking (col. 2,11. 1—17). “[T]he preferred wood composites are
oriented strand board” (col. 4,1. 39).
Hanson discloses uniform length solid wood planks made from
random length boards joined end to end, wherein each board has at each of
its four edges a bevel (16) which accentuates the location of the joint
between the boards, thereby providing an appearance which is virtually
indistinguishable from the appearance of random length solid wood planks,
minimizing plank assembly and packing labor costs and reducing raw
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Appeal 2016-001632
Application 13/196,036
material waste and panel installation time (col. 3,11. 15—34; col. 6,11. 27—45;
Fig. 3).
Crowley discloses a “roof assembly including a triangular ridge
beam [50] which is supported by the internal and/or external walls of a
structure, and, which in turn supports a plurality of roof panels [10] secured
to the ridge beam” (col. 3,11. 45^49; Fig. 4A). Each roof panel comprises an
oriented strand board top sheet (12) and bottom sheet (14) (col. 3,11. 62—63;
col. 4,11. 5—6). Typically the length of bottom sheet is less than that of the
top sheet such that the panel has a beveled end (34) which is “cut at an angle
which depends on the style of the roof, the pitch of the roof and the
particular location of the panel in the overall roof assembly” (col. 4,11. 12—
14; col. 5,11. 29-32; Figs. IB, 3B).
The Examiner finds that Crowley’s top and bottom sheets (12, 14)
have a beveled edge (Ans. 10).
Crowley does not disclose that the ends of the top and bottom sheets
are beveled but, rather, discloses that the top sheet is shorter than the bottom
sheet such that an end (10A) of the roof panel is beveled (col. 4,11. 12—14;
Fig. 3B).
The Examiner finds that “aesthetics is not the only reason for beveling
as it can ease installation as per the disclosure of Hanson (Abstract) which
can readily help relieve edge swelling” (Ans. 10) and that “the Hanson
reference specifically discloses that beveling of wooden planks results in
ease of installation and accentuates the joining between two wooden planks
(Abstract)” (Ans. 8). The Examiner concludes that “it would have been
obvious to one of ordinary skill in the art to take advantage of beveling for
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Appeal 2016-001632
Application 13/196,036
the ease of installment and to accentuate the joining so as to prevent
unsightly edge swelling” {id.).
Hanson’s ease of installation is due to the use uniform, standardized
length planks formed from random length boards, not due to the boards’
edge bevel, the purpose of which is to accentuate the joint between
individual boards (col. 3,11. 16—25). The Examiner does not establish that
Hanson’s disclosure that beveling board edges accentuates the location of
the joint between individual boards of a plank to provide an appearance
virtually indistinguishable from the appearance of individual random length
solid wood planks (col. 3,11. 21—30) would have provided one of ordinary
skill in the art with an apparent reason to bevel the edges of Ou’s boards
which, Ou indicates, are used for subflooring which typically is covered by
carpet, tile or hardwood such that it no longer is visible (col. 1,11. 15—28).
SeeKSR 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). Nor does the Examiner establish that
Hanson would have indicated to one of ordinary skill in the art that the edge
bevel prevents edge swelling.
The Examiner finds that “[a]s the better the ‘fit’ or joining during
installation is, the more it would seemingly result in inhibiting edge swelling
to occur due to lack of a proper install/fit” (Ans. 10).
That finding, which appears to be inconsistent with Ou’s indication
that a tongue and groove fit which lacks Ou’s apertures (20, 22) results in
edge swelling upon moisture absorption (col. 1,11. 30—39; col. 3,11. 43—46),
is not well taken due to being unsupported by evidence.
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Application 13/196,036
Thus, the Examiner has not set forth a factual basis which is sufficient
to support a prima facie case of obviousness of the Appellants’ claimed
invention. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A
rejection based on section 103 clearly must rest on a factual basis, and these
facts must be interpreted without hindsight reconstruction of the invention
from the prior art”). Accordingly, we reverse the rejection.
DECISION/ORDER
The rejection of claims 1 and 3—21 under 35 U.S.C. § 103 over Ou in
view of Hanson and Crowley is reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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