Ex Parte StanishDownload PDFPatent Trial and Appeal BoardAug 29, 201311393992 (P.T.A.B. Aug. 29, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte MARK A. STANISH ________________ Appeal 2011-002057 Application 11/393,992 Technology Center 3700 ________________ Before MEREDITH C. PETRAVICK, MICHAEL W. KIM, and JAMES A. TARTAL, Administrative Patent Judges. TARTAL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002057 Application 11/393,992 2 STATEMENT OF THE CASE1 Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-7 and 15-36. In accordance with Appellant’s Amendment filed August 31, 2009, and the Final Rejection entered December 18, 2009, the only claims currently pending in this appeal, and therefore the only claims properly at issue, are claims 1-7, 24-26, and 28-36. We have jurisdiction over the appeal of claims 1-7, 24-26, and 28-36 pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellant’s claimed invention relates to a method for reducing warp potential of lumber derived from a raw material, such as a log or stem. Spec. 1, ll. 4-5. Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A method for reducing warp in lumber derived from a log, the method comprising the steps of: examining the log to determine shrinkage properties of the log; orienting the log with respect to a cutting device based on assymetries [sic] or eccentricities in a pattern of the shrinkage properties, the orientation being effective to reduce warp of the lumber derived from the log when the cutting device contacts the log; and cutting the log using the cutting device to create the lumber. 1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,” filed Jun. 9, 2010) and Reply Brief (“Reply Br.,” filed Oct. 15, 2010), and the Examiner’s Answer (“Ans.,” mailed Aug. 31, 2010). Appeal 2011-2057 Application 11/393,992 3 The Examiner relies upon the following evidence: Stanish US 6,305,224 B1 Oct. 23, 2001 Floyd US 6,598,477 B2 Jul. 29, 2003 The following rejections are before us on appeal:2 Claims 1-6, 24-26, and 28 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Floyd.3 Claims 7 and 34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Floyd and Stanish. Claims 24, 29-33, 35, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Floyd. FINDINGS OF FACT We find that the findings of fact which appear in the Analysis below are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). 2 Appellant argues that proposed amendments filed on February 10, 2010, do not raise potential new matter and should be entered. See App. Br. 9. The refusal to enter an amendment is reviewable by petition under 37 C.F.R. § 1.181 and is not within the jurisdiction of the Board. See In re Berger, 279 F.3d 975, 984-85 (Fed. Cir. 2002); Manual of Patent Examining Procedure (MPEP) §§ 1002.02(c) and 1201. Thus, this issue is not before us on appeal. 3 Although the Examiner indicates in the Answer (p. 3) that claims 1-6 and 15-28 are rejected as anticipated by Floyd, claims 15-23 and 27 were cancelled or withdrawn and are not before us in this appeal. See App. Br., Claims Appx. Appeal 2011-2057 Application 11/393,992 4 ANALYSIS Anticipation based on Floyd Claims 1-6, 24-26, and 28 Claim 1 requires “orienting the log with respect to a cutting device based on assymetries [sic] or eccentricities in a pattern of the shrinkage properties.” The Examiner maintains that under the broadest reasonable meaning, “assymetries [sic] or eccentricities” encompasses “any type of asymmetries or eccentricities,” including asymmetries or eccentricities in the profile of the log’s surface, as disclosed by Floyd. Ans. 12. In particular, the Examiner asserts that the claim “does not distinguish whether the asymmetries or eccentricities are incorporated into the shrinkage pattern or whether there are asymmetries or eccentricities in the shrinkage patterns themselves.” Id. We disagree. Claims are given their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). We understand the claim, as written, to require asymmetries or eccentricities to be in a pattern of the shrinkage properties, itself. Indeed, the Specification (p. 4, ll. 5-14) explains that “warp-prone lumber exhibits patterns of variation [in shrinkage properties] that are distinctly different from those seen in more stable lumber.” The Specification does not state that a profile of the log’s surface, including asymmetries or eccentricities in that surface that may be incorporated into shrinkage patterns, is a reliable basis for reducing warp in lumber derived from a log, as claimed. To the contrary, the Specification (p. 9, ll. 26-27) notes that “internal shrinkage Appeal 2011-2057 Application 11/393,992 5 patterns are not always closely correlated to external geometry.” In light of the Specification, it is unreasonable to interpret “assymetries [sic] or eccentricities,” as claimed, to refer to asymmetries or eccentricities in a log surface. Accordingly, the Examiner has not shown where each element of the claim is expressly or inherently disclosed by Floyd. As a result, we cannot sustain the Examiner’s rejection under 35 U.S.C. § 102(b) of independent claim 1, or its dependent claims 2-6, 24-26, and 28, as anticipated by Floyd. Obviousness based on Floyd, alone or in combination with Stanish Claims 7 and 34 We conclude that the Examiner has not established a prima facie case of obviousness with respect to claims 7 and 34 because the Examiner has not shown that Floyd expressly or inherently discloses “orienting the log with respect to a cutting device based on assymetries [sic] or eccentricities in a pattern of the shrinkage properties,” as further explained above with respect to the anticipation rejection of claim 1. Obviousness based on Floyd Claims 7, 24, 29-36 Claims 7 and 24 depend on claim 1. Similar to claim 1, independent claim 29, and its dependent claims 30-36, require “orienting one or more cutting devices with respect to asymmetries or eccentricities in a pattern of the shrinkage properties.” We conclude that the Examiner has not established a prima facie case of obviousness with respect to claims 7, 24, or 29-36 because the Examiner has not shown that Floyd expressly or inherently discloses orienting a log, or cutting device, “with respect to Appeal 2011-2057 Application 11/393,992 6 asymmetries or eccentricities in a pattern of the shrinkage properties,” as further explained above with respect to the anticipation rejection of claim 1. DECISION We REVERSE the decision of the Examiner to reject claims 1-7, 24- 26, and 28-36. REVERSED mls Copy with citationCopy as parenthetical citation