Ex Parte Thiagarajan et al

Patent Trial and Appeal Board

Sep 16, 2014

12263719 (P.T.A.B. Sep. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHINNIAH THIAGARAJAN and FRANS ADRIAANSEN
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Appeal 2012-012024
Application 12/263,719
Technology Center 1700
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Before CHARLES F. WARREN, MICHAEL P. COLAIANNI, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the decision of the
Primary Examiner finally rejecting claims 1-3, 5-17, and 19-22. In the
Answer, the Examiner has withdrawn the rejection of claim 21, leaving
claims 1-3, 5-17, 19, 20, and 22 for consideration on appeal. Ans. 3-4. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm-in-part.

1 The Real Party in Interest is SABIC GLOBAL TECHNOLOGIES B.V. (as
recorded by the USPTO at Reel/Frame No. 033649/0529). At the time the
Appeal Brief was filed, the assignee of the application on appeal was SABIC
Innovative Plastics IP B.V. (Br. 2), which subsequently changed its name to
Sabic Global Technologies B.V. as recorded on August 22, 2014).
Appeal 2012-012024
Application 12/263,719

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CLAIMED SUBJECT MATTER
Appellants’ invention is directed to sheets having protrusions with a
first portion extending from a base by a second portion, where a second
portion diameter is less than a first portion diameter (Spec. ¶ 3). The
protrusions may also be present in specific patterns (e.g., Spec. ¶ 4). The
claims also recite that the sheet stiffens when an external force is applied.
The structure of the claimed protrusions may be understood with reference
to the following annotated version of FIG. 1 from the Specification:

Annotated FIG. 1 shows a front profile view of an embodiment of the
claimed protrusions.

Independent claim 1 is representative and is reproduced below from
the Claims Appendix to the Brief:

1. A sheet comprising:
protrusions comprising a first portion extending from a base
by a second portion, wherein a second portion diameter is less
than a first portion diameter;
wherein the sheet stiffens when an external force is applied.
Appeal 2012-012024
Application 12/263,719

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REJECTIONS
The following rejections are appealed:
(1) Claims 1, 16, 17, and 19 under 35 U.S.C. § 102(b) as being
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over, Wilber.2
(2) Claims 1-3, 5, 6, 15, and 17 under 35 U.S.C. § 102(b) as being
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over, Andreiko.3
(3) Claims 1-3 and 5 under 35 U.S.C. § 102(b) as being anticipated by
or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Battrell.4
(4) Claims 1-3, 5-17, 19, 20 and 22 under 35 U.S.C. §103(a) as
being unpatentable over Luke5 in view of Andreiko.
DISCUSSION
Rejection (1): The Examiner finds that Wilber describes a sheet
comprising a plurality of protrusions, each having a first portion extending
from a base by a second portion, wherein the second portion has a diameter
less than the first portion (Ans. 6, citing Wilber Figs. 2 and 3). With regards
to the claimed phrase “wherein the sheet stiffens when an external force is
applied,” the Examiner finds this is inherently disclosed because Wilber
describes the same structure as claimed, and Appellants’ Specification

2 Wilber, U.S. Patent No. 1,278,270, issued September 10, 1918.
3 Andreiko et al., U.S. Patent No. 6,190,165 B1, issued February 20, 2001.
4 Battrell, U.S. Patent No. 4,946,527, issued August 7, 1990.
5 Luke, U.S. Patent No. 3,528,196, issued September 15, 1970.
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Application 12/263,719

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discloses that the claimed stiffening effect6 is caused by the presence of that
structure (Ans. 6, citing Spec. ¶ 19).
Appellants do not dispute that the protrusions disclosed by Wilber
meet the “protrusions” limitation set forth in the rejected claims (see, Appeal
Br. 5). Instead, Appellants argue that the Examiner has not shown that
Wilber’s materials have the claimed stiffening feature (id. at 5-7). These
arguments are not persuasive of error in the Examiner’s position.
We find that, as the Examiner points out, Appellants’ Specification
discloses that structures such as that described by Wilber would have the
claimed “sheet stiffens” functional limitation. Thus, the Examiner has
established that the claimed sheet and that described by Wilber reasonably
appear to be identical even though Wilber does not describe the sheet therein
as having the claimed stiffen property. Accordingly, the burden shifted to
Appellants to establish the patentability of the claimed sheet over that of
Wilber by objective evidence or technical argument. See, e.g., In re
Schreiber 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254-56 (CCPA 1977).
We are of the opinion that Appellants have not provided
persuasive evidence or arguments to refute the Examiner’s position.
Appellants argue that Wilber is directed to roofing materials, and,
therefore, would not have the stiffening property recited in the claims
because, rather than stiffening, roofing materials are blown off of
roofs when subjected to high winds (Appeal Br. 6). However, as
noted by the Examiner (Ans. 10), before a Wilber shingle would be

6 We note that none of claims 1, 16, 17, and 19 requires any particular
amount of stiffening.
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Application 12/263,719

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blown off by an external force, it would inherently resist being bent
(i.e. it would stiffen in response to an external force), as required by
the claims.
With regard to claim 19, which recites that claimed sheet “is
configured for use in a glazing application,” Appellants contend that
Wilber’s roofing materials “cannot be used in glazing applications”
(Appeal Br. 8). We agree with the Examiner that in the same way that
the Specification discloses plywood is typically applied as a glazing
during hurricanes to cover windows (Spec. ¶¶ 36, 60), Wilber’s
materials can be used in glazing applications, even if such use might
not be aesthetically pleasing (Ans. 11).
For the foregoing reasons, we determine that Appellants have
not shown reversible error in the Examiner’s finding of anticipation.
Because a lack of novelty is the ultimate form of obviousness, we also
affirm the rejection under §103(a) over Wilber. See, e.g., In re Baxter
Travenol Labs, 952 F.2d 388, 391 (Fed.Cir.1992); In re Fracalossi,
681 F.2d 792, 794 (CCPA 1982) (“[L]ack of novelty is the ultimate of
obviousness”)
Rejection (2): The Examiner finds that Andreiko describes a
sheet comprising a plurality of protrusions with a first portion
extending from a base by a second portion, wherein the second
portion has a diameter less than the first portion (Ans. 6, citing
Andreiko, FIGS. 1, 2, 3, 10A and 10C). The Examiner finds that
Andreiko’s structure inherently provides the claimed property of
stiffening when an external force is applied (Ans. 7). The Examiner
bases this finding on the disclosure in Appellants’ Specification that
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the stiffening property is a function of the structure, and the fact that
Andreiko’s sheet is made of polycarbonate, which is Appellants’
preferred material (Ans. 7, citing Spec. ¶ 19).
Therefore, the Examiner has established that the claimed sheet and
that described by Andreiko reasonably appear to be identical, even though
Andreiko does not describe the sheet therein as having the claimed stiffening
property. Accordingly, the burden shifted to Appellants to establish the
patentably of the claimed sheet over that of Andreiko by objective evidence
or technical argument. See, e.g., Schreiber 128 F.3d at 1478; Spada, 911
F.2d at 708; Best, 562 F.2d at 1254-56.
We are of the opinion that Appellants have not provided
persuasive evidence or arguments to refute the Examiner’s position
Appellants make two arguments urging reversal of the rejections over
Andreiko. First, Appellants argue that Andreiko does not disclose the
claimed stiffening property of the sheet, and that the Examiner’s
inherency argument with regards to this limitation is legally
insufficient because the Examiner has not met the required “burden of
providing a basis in fact or technical reasoning as to why an element
is necessarily present in a reference” (Br. 10). We are not persuaded
by this argument because the Examiner has shown that Appellants’
Specification, in particular ¶ 19, discloses that the claimed stiffening
property is a function of the claimed structure. Therefore, the
Examiner has provided a technical basis for the finding that Andreiko
inherently discloses the claimed stiffening property because of the
finding that Andreiko’s structure is the same as the claimed structure.
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Second, Appellants argue that Andreiko does not disclose a
“sheet” as set forth in the claims, because Andreiko is directed to a
“plastic orthodontic appliance with a mechanical bonding base” (Br.
9). We are not persuaded by this argument, either. As correctly noted
by Appellants, during examination “the PTO must give claims their
broadest reasonable construction consistent with the specification . . .
Therefore, we look to the specification to see if it provides a definition
for claim terms, but otherwise apply a broad interpretation.” In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
“[A]s applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant
or patentee.” Id. In this instance, we agree with the Examiner (Ans.
11) that a layer of anything can be considered a sheet. Appellants
have not pointed to anything in their Specification or elsewhere which
would exclude Andreiko’s bracket base 14 from a reasonably broad
interpretation of the term “sheet” as used in the claims.
For the foregoing reasons, we determine that Appellants have
not shown reversible error in the Examiner’s finding of anticipation
over Andreiko. We also affirm the rejection under §103(a) over
Andreiko because the claimed sheet lacks of novelty over the
reference. See, e.g., Baxter Travenol Labs, 952 F.2d at 391;
Fracalossi, 681 F.2d at 794.

Rejection (3): The Examiner finds that Battrell describes a sheet
comprising a plurality of protrusions with a first portion extending from
a base by a second portion, wherein the second portion has a diameter
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less than the first portion (Ans. 7, citing Battrell, FIGS. 1 and 2). The
Examiner finds that Battrell’s structure inherently provides the claimed
property of stiffening when an external force is applied (Ans. 7-8). The
Examiner bases this finding on the disclosure in the Specification that
the stiffening property is a function of the structure (Ans. 8, citing Spec.
¶ 19).
Appellants argue that Battrell is explicitly directed to a
disposable article with decreased stiffness, and therefore cannot
inherently disclose the claimed stiffening property (Br. 11, citing
Battrell, col. 5, ll. 45-62). However, we agree with the Examiner that
while Battrell discloses a device having decreased stiffness, it is silent
with respect to whether application of an external force would result
in the sheet stiffening (albeit from a less-stiff starting point), and that
Appellants’ Specification explicitly discloses that sheets which have
Battrell’s described structure would have the stiffening property (Ans.
11).
Accordingly, the Examiner has established that the claimed sheet and
that described by Battrell reasonably appear to be identical even though
Battrell does not describe the sheet therein as having the claimed stiffen
property. Accordingly, the burden shifted to Appellants to establish the
patentably of the claimed sheet over that of Battrell by objective evidence or
technical argument. See, e.g., Schreiber 128 F.3d at 1478; Spada, 911 F.2d
at 708; Best, 562 F.2d at 1254-56. We are of the opinion that Appellants
have not provided persuasive evidence or arguments to refute the
Examiner’s position. In particular, we do not agree with Appellants that
Battrell’s disclosure that its backing web is less stiff than other backing webs
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refutes the Examiner’s explanation – based on the technical disclosure in
Appellant’s Specification (¶19) – that Battrell’s structure would necessarily
have the claimed stiffening property.
For the foregoing reasons, we determine that Appellants have
not shown reversible error in the Examiner’s finding of anticipation
over Battrell. We also affirm the rejection under §103(a) over Battrell
because the claimed sheet lacks of novelty over the reference. See,
e.g., Baxter Travenol Labs, 952 F.2d at 391; Fracalossi, 681 F.2d at
794.

Rejection (4): The Examiner finds that Luke would have
disclosed a sheet (i.e., a hurricane window panel) containing ribs used
to stiffen the panel (Ans. 8, citing Luke, FIG. 5, and col. 3, l. 68 – col.
4, l. 4). The Examiner also finds that Luke does not teach the ribs as
being a plurality of protrusions with a first portion extending from a
base by a second portion, wherein the second portion has a diameter
less than the first portion, as required by the claims, but does disclose
that other patterns can be used for the ribs (Ans. 8, citing Luke, col. 3,
l. 75 – col. 4, l. 1). The Examiner concludes that it would have been
obvious to substitute Andreiko’s protrusions for Luke’s ribs because
“this would merely involve a change in shape and/or size of the ribs
from one known shape to another,” which is generally within the
ordinary skill in the art (Ans. 9).
We reverse this rejection because, as noted by Appellants
(Br. 14), the Examiner has not provided a persuasive explanation of
why a person of skill in the art would have replaced Luke’s ribs with
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protrusions which satisfy the requirements of the claims on appeal.
Although Luke does disclose that its ribs may be of varied shapes, the
Examiner has not explained why a person of ordinary skill in the art
would have selected Andreiko’s protrusions to substitute onto Luke’s
hurricane window panel. To support an obviousness rejection, the
Examiner must “identify a reason that would have prompted a person
of ordinary skill in the art in the relevant field to combine the
elements in the way the claimed new invention does.” KSR Int'l Co.
v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007). In this case, the
Examiner has not adduced such a reason, requiring reversal of the
obviousness rejection over Luke in view of Andreiko.
CONCLUSION
We AFFIRM the rejection of claims 1, 16, and 17, and 19 under
35 U.S.C. § 102(b) as being anticipated by or, in the alternative, under
35 U.S.C. § 103(a) as obvious over Wilber.
We AFFIRM the rejection of claims 1-3, 5, 6, 15, and 17 under
35 U.S.C. § 102(b) as being anticipated by or, in the alternative, under
35 U.S.C. § 103(a) as obvious over Andreiko.
We AFFIRM the rejection of claims 1-3, and 5 under
35 U.S.C. § 102(b) as being anticipated by or, in the alternative, under
35 U.S.C. § 103(a) as obvious over Battrell.
We REVERSE the rejection of claims 1-3, 5-17, 19, 20 and 22 under
35 U.S.C. §103(a) as being unpatentable over Luke in view of Andreiko.
Appeal 2012-012024
Application 12/263,719

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED IN PART

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