10580219 (B.P.A.I. Feb. 21, 2012)

Ex Parte Hansson et al

Board of Patent Appeals and InterferencesFeb 21, 2012

10580219 (B.P.A.I. Feb. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KRISTER HANSSON and KENT LINDGREN ____________ Appeal 2011-004374 Application 10/580,219 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CHARLES F. WARREN, and PETER F. KRATZ, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1, 2, 4, 6-9, 16, and 17. We have jurisdiction pursuant to 35 U.S.C. § 6. An oral hearing was conducted on February 14, 2012. Appeal 2011-004374 Application 10/580,219 2 Appellants’ claimed invention is directed to a decorative laminate manufacturing process. Claim 1 is illustrative and reproduced below: 1. A process for the manufacturing of a decorative laminate comprising: providing a base layer; printing a decorative layer comprising a decor on the base layer, the decorative layer comprising a printing ink, the printing ink comprising an amino resin; applying a wear layer to the decorative layer, the wear layer comprising a thermosetting resin selected from the group consisting of, phenol-formaldehyde resin, urea formaldehyde resin and mixtures thereof; and bonding the decorative layer and the wear layer together in a laminate press under increased temperature and pressure, whereby the presence of amino resin in the ink increases the bonding more than could be achieved by the thermosetting resin alone. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Hansson 6,565,919 B1 May 20, 2003 Sano 2002/0077384 A1 Jun. 20, 2002 Arledter 2,816,851 Dec. 17, 1957 Mott 2002/0007909 A1 Jan. 24, 2002 Schulz 2003/0039810 A1 Feb. 27, 2003 Claims 1, 2, 4, 6, 7, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hansson in view of Sano, and Arledter or Mott. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hansson in view of Sano, Arledter or Mott, and Schulz. Appeal 2011-004374 Application 10/580,219 3 We adopt the Examiner’s factual findings and response to arguments as our own, and we affirm both stated rejections for substantially the reasons set forth in the Examiner’s Answer. We add the following for emphasis only. Regarding the first stated rejection, Appellants argue the rejected claims together as a group. Accordingly, we have selected claim 1 as the representative claim on which we focus in arriving at our decision in this appeal.1 Appellants do not dispute the Examiner’s factual determinations concerning Hansson’s teachings (Ans. 4; see generally Br.). We agree with the Examiner that Hansson together with Arledter and Mott reasonably suggests to one of ordinary skill in the art that employing phenol formaldehyde resin or urea formaldehyde resin, as taught by Arledter or Mott as alternatives to melamine-formaldehyde, as the thermosetting resin component of the wear layer of Hansson with a reasonable expectation of success in so doing (Ans. 4, 5, 8 and 9). The prior art need not “teach that a particular combination is preferred or ‘optimal,’ for the combination to be obvious.” In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004). Appellants have not directly disputed the Examiner’s proffered rationale for modifying the manufacturing process of Hansson by employing Sano’s amino resin-containing inkjet ink composition as the printing ink used for printing the decor layer of Hansson (Ans. 5; see generally Br.). 1 Regarding the second ground of rejection pertaining to dependent claims 8 and 9, Appellants rely on the same “deficiencies” alleged with respect to the Examiner’s rejection of independent claim 1 in arguing against the Examiner’s separate rejection of dependent claims 8 and 9. Appeal 2011-004374 Application 10/580,219 4 We take note of Appellants’ acknowledgement that “the amino ink of Sano is essentially the type of ink the applicants use in their invention” (Br. 4). This latter point reinforces the Examiner’s determination that the Examiner’s proposed modified Hansson process, wherein the amino ink of Sano is used as the decorative layer printing ink and the phenol formaldehyde or urea formaldehyde taught by Arledter or Mott is employed as the thermosetting resin component of the wear layer, would have reasonably been expected to yield a product laminate having increased bonding over that which would have been achieved had the ink employed in Hansson not included the amino resin. See In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) ("[s]ubstantial evidence supports the Board's finding, based upon the specification, which confirms that the claimed 'food effect' is an inherent property of oxymorphone itself"). In sum, since one of ordinary skill in the art had reasons to employ both the amino ink and the thermosetting resin corresponding to the requirements of claim 1 in forming the decorative laminate of Hansson given the additional teachings of Sano and Arledter or Mott, as set forth by the Examiner, the laminate manufacturing process of claim 1 would have been obvious to such an ordinarily skilled artisan in view of the combined teachings of the applied references. See Ex Parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestions of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.”). Appeal 2011-004374 Application 10/580,219 5 ORDER The Examiner’s decision to reject the appealed claims is affirmed. 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 tc 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. 10/580,219 06/28/2006 Krister Hansson TPP 32005 9825 74217 7590 02/21/2012 NOVAK, DRUCE + QUIGG L.L.P. - PERGO 300 New Jersey Ave, NW Fifth Floor Washington, DC 20001 EXAMINER TOLIN, MICHAEL A ART UNIT PAPER NUMBER 1745 MAIL DATE DELIVERY MODE 02/21/2012 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)