Ex Parte Grohman

Board of Patent Appeals and Interferences

Jun 22, 2012

11267382 (B.P.A.I. Jun. 22, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/267,382 11/04/2005 Martin Grohman 30695US01 3014
47231 7590 06/22/2012
PATENT ADMINISTRATOR
PRETI FLAHERTY BELIVEAU & PACHIOS LLP
ONE CITY CENTER
PORTLAND, ME 04112-9546
EXAMINER
O'HERN, BRENT T
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
06/22/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARTIN GROHMAN
____________

Appeal 2010-010832
Application 11/267,382
Technology Center 1700
____________

Before CHUNG K. PAK, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 1, 2, 4, 6 through 19.1 We have jurisdiction under 35
U.S.C. § 6.

1 See Amended Appeal Brief (“App. Br.”) filed April 20, 2009, 2;
Examiner’s Answer (“Ans.”) filed May 5, 2010, 2.
Appeal 2010-010832
Application 11/267,382

2
STATEMENT OF THE CASE
The subject matter on appeal is directed to a non-laminated composite
suitable for use as a replacement for natural wood (Spec. 1, para. 0001 and
claims 1 and 11). According to page 5, paragraph 0018, of the Specification,
the laminate composite is defined as having “only a single layer.” Details of
the appealed subject matter are recited in representative claims 1 and 11,
which are reproduced below:
1. A non-laminated composite article comprising:

a matrix having first and second opposing surfaces defining a
transverse dimension and defining first and second regions juxtaposed along
said transverse dimension, said first region encompassing said first surface;
and

a filler material embedded in said matrix, said filler material
presenting a density gradient in said transverse dimension wherein filler
density changes gradually along said transverse dimension in said first
region with a minimum filler density at said first surface.

11. A non-laminated composite article having first and second
opposing surfaces defining a transverse dimension, said non-laminated
composite article comprising a matrix and a filler material embedded in said
matrix and defining first and second regions juxtaposed along said
transverse dimension where said first region encompasses said first surface,
and wherein said first region has a filler-to-matrix ratio that varies along said
transverse dimension, said filler-to-matrix ratio being at a minimum at said
first surface.

The Examiner relies on the following evidence to establish
unpatentability of the appealed subject matter (Ans. 2-3):
Wentworth US 4,364,984 Dec. 21, 1982
Jones US 6,638,612 B2 Oct. 28, 2003
Appeal 2010-010832
Application 11/267,382

3
The Examiner maintains the following grounds of rejection of the
claims on appeal at pages 4 through 16 of the Answer2:
1) Claims 7 through 10 under 35 U.S.C. § 112, first paragraph, as failing
to provide written descriptive support in the application disclosure as
originally filed for the subject matter presently claimed;
2) Claims 13 and 17 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which applicant regards as his invention;
3) Claims 1, 2, 4, 6, 11 through 13, and 15 under 35 U.S.C. § 102(b) as
anticipated by the disclosure of Wentworth; and
4) Claims 1, 2, 4, and 6 through 19 under 35 U.S.C. § 103(b) as
unpatentable over the disclosure of Jones.

DISCUSSION
I. REJECTION (1)
We summarily affirm the Examiner’s rejection of claims 7 through 10
under 35 U.S.C. § 112, first paragraph, as failing to provide written

2 We note that Appellant seeks review of some of the § 112 rejections set
forth in the final Office action mailed July 29, 2008, which are withdrawn by
the Examiner in the Answer. (Compare the Response to Notice of Non-
Compliant Appeal Brief (“Supp. App. Br.”) dated May 27, 2009, 3 and App.
Br. 3-4 with Ans. 3.) We also note that Appellant seeks review of the
objection to the Specification set forth by the Examiner. (Compare Supp.
App. Br. 3 and App. Br. 3-4 with Ans. 4.) However, we remind Appellant
that the remedy is through a petition to the Director under 37 C.F.R. §1.181
and not through an appeal to the Board. The Board will not hear or decide
issues pertaining to petitionable matters.

Appeal 2010-010832
Application 11/267,382

4
descriptive support in the application disclosure as originally filed for the
subject matter presently claimed. (See Ans. 4.) As is apparent from the
record, Appellant has not disputed the Examiner’s finding that the phrase
“wherein filler density changes gradually along said transverse dimension in
said second region with a minimum filler density is at said second surface”
recited in claim 7 has no written descriptive support in the application
disclosure as originally filed. (Compare Ans. 4-6 with App. Br. 6-9.) In
fact, Appellant acknowledges that such phrase does not have written
descriptive support in the disclosure as originally filed. (See App. Br. 6)

II. REJECTION (2)
We reverse the Examiner’s rejection of claims 13 and 17 under 35
U.S.C. § 112, second paragraph, as being indefinite. Although the Examiner
contends that the term “content” in the context of the presence of fillers in
the non-laminated composite recited in claims 13 and 17 is vague, the
Examiner has not shown that one of ordinary skill in the art would not have
understood the scope of the term “content” recited in claims 13 and 17,
especially when it is viewed in light of paragraphs 0019 and 0031 of the
Specification. (See Ans. 6.) As correctly indicated by Appellant at page 15
of the Appeal Brief, the Specification, at paragraphs 0019 and 0031, defines
the filler content recited in claims 13 and 17 in terms of weight percentages.
See In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (“[T]he definiteness of
the language employed must be analyzed—not in a vacuum, but always in
light of the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the ordinary level of
skill in the pertinent art.”)
Appeal 2010-010832
Application 11/267,382

5
III. REJECTIONS (3) AND (4)
We reverse the Examiner’s rejection of claims 1, 2, 4, 6, 11 through
13, and 15 under 35 U.S.C. § 102(b) as anticipated by the disclosure of
Wentworth and claims 1, 2, 4, and 6 through 19 under 35 U.S.C. § 103(b) as
unpatentable over the disclosure of Jones. As correctly stated by Appellant
at pages 17, 18, 22, and 23 of the Appeal Brief, the Specification, at page 5,
paragraph 0018, clearly defines the preamble limitation “non-laminated
composite” recited in claims 1 and 11 as “only a single layer” structure
which “does not comprise distinct layers.” Yet, the Examiner has not
explained why one of ordinary skill in the art would have readily envisaged
the claimed single layer composite having a particular filler density
ingredient from the multilayered structure taught by Wentworth within the
meaning of 35 U.S.C. § 102(b) or why one of ordinary skill in the art would
have been led to the claimed single layer composite having a particular filler
density ingredient from the multilayered structure taught by Jones within the
meaning 35 U.S.C. § 103(a). (See Ans. 7-14.) In making these rejections,
the Examiner has improperly treated the preamble limitation “non-laminated
composite” as a process limitation which does not exclude the multilayered
structures taught or suggested by Wentworth or Jones. (Id.) Thus, on this
record, the Examiner has not established a prima facie case of anticipation
under 35 U.S.C. § 102(b) or obviousness under 35 U.S.C. § 103. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the
initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.”).

Appeal 2010-010832
Application 11/267,382

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CONCLUSION
In view of the foregoing, the decision of the Examiner is affirmed-in-
part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

Cam/sld