Ex Parte GrohmanDownload PDFBoard of Patent Appeals and InterferencesJun 22, 201211267382 (B.P.A.I. Jun. 22, 2012) Copy Citation 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 6 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 Copy with citationCopy as parenthetical citation