TITAN WOOD LIMITEDDownload PDFPatent Trials and Appeals BoardNov 12, 20202020000490 (P.T.A.B. Nov. 12, 2020) Copy Citation 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. 14/347,568 03/26/2014 Bernardus Jozef Maria Pol 18948-011558 5670 145003 7590 11/12/2020 OspreyIP, pllc 8011 Brooks Chapel Road, #2347 Brentwood, TN 37027 EXAMINER ZHANG, MICHAEL N ART UNIT PAPER NUMBER 1781 NOTIFICATION DATE DELIVERY MODE 11/12/2020 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docket@ospreyip.com jrc@ospreyip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BERNARDUS JOZEF MARIA POL, STEFAN VAN DOMMELE, and THEORODUS GERARDUS MARINUS MARIA KAPPEN ____________ Appeal 2020-000490 Application 14/347,568 Technology Center 1700 ____________ Before JEFFREY T. SMITH, KAREN M. HASTINGS, and N. WHITNEY WILSON, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 requests our review under 35 U.S.C. § 134(a) of the Examiner’s final decision rejecting claims 1–10, 15–23, and 26. An oral hearing was held on October 29, 2020.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). 1We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). “Titan Wood Limited” is identified as the real party in interest (Appeal Br. 3). 2 A written transcript of the Oral hearing will be entered into the record when the transcript is made available. Appeal 2020-000490 Application 14/347,568 2 We AFFIRM. CLAIMED SUBJECT MATTER Independent claim 1 is illustrative: 1. A panel of medium density fibreboard (MDF), comprising wood fibres the largest dimension of which is 7 mm or below, pressed together with an adhesive, the panel having an aspect ratio of at least 100 and a surface area of at least 1 m2, wherein the wood fibres are made of acetylated wood and the panel has reduced warping compared to a panel having wood fibres made of wood that is not acetylated and having the same dimensions of the panel made of acetylated wood, where the warping is measured on dried panels following exposure to moisture on one side of the panels. Appeal 2020-000490 Application 14/347,568 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Rakszawski US 3,504,073 Mar. 31, 1970 Aoki US 4,592,962 June 3, 1986 Held US 4,923,656 May 8, 1990 Iwata US 6,376,582 B1 Apr. 23, 2002 Korai US 6,602,451 B1 Aug. 5, 2003 Hirano US 6,632,326 B1 Oct. 14, 2003 Clark US 2004/0229010 A1 Nov. 18, 2004 Wantling US 2007/0181035 A1 Aug. 9, 2007 Zhang CN 2499494 July10, 2002 Betso WO 00/36021 June 22, 2000 Segaert EP 2202056 A1 June 30, 2010 J. Gomez-Bueso et at., Composites made from acetylated lignocellulosic fibers of different origin: Part I Properties of dry-formed fiberboards, 58 Holz als Roh- und Werkstoff 9–14 (2000) Celeste Pereira et al., Modeling the continuous hot-pressing of MDF, 40 Wood Sci Technol 308–326 (2006) REJECTIONS The following rejections under pre-AIA 35 U.S.C. § 103(a) are on appeal: Claims 1, 3–6, 8–10, 16–19, 21, 22, and 26 as unpatentable over the combined prior art of Korai, Zhang, and Aoki (Final Act. 2). Claims 2, 15, and 20 as unpatentable over the combined prior art of Korai, Zhang, Aoki, and Pereira (Final Act. 7). Claim 7 as unpatentable over the combined prior art of Korai, Zhang, Aoki, and Hirano (Final Act. 9). Claims 2, 9, 10, 15, 17, 19, and 20 as unpatentable over the combined prior art of Korai, Zhang, Aoki, Held, and Rakszawski (Final Act. 9). Appeal 2020-000490 Application 14/347,568 4 Claim 23 as unpatentable over the combined prior art of Korai, Zhang, Aoki, and Wantling (Final Act. 11). Claims 1–10, 15–22, and 26 as unpatentable over the combined prior art of Betso, Gomez-Bueso, Segaert, Clark, and Zhang (Final Act. 12). Claims 2, 15, and 20 as unpatentable over the combined prior art of Betso, Gomez-Bueso, Clark, Segaert, Zhang, and Pereira (Final Act. 19). Claim 23 as unpatentable over the combined prior art of Betso, Gomez-Bueso, Segaert, Clark, Zhang, and Wantling (Final Act. 21). Claims 1, 3–10, and 15–23 as unpatentable over the combined prior art of Betso, Wantling, Clark, and Zhang (Final Act. 22). Claims 1, 3, 4, 6, 16, 18, 22, and 26 as unpatentable over the combined prior art of Iwata and Zhang (Final Act. 27). Claims 2, 9, 10, 15, 17, 19, and 20 as unpatentable over the combined prior art of Iwata, Zhang, Held, and Rakszawski (Final Act. 30). Claims 5, 7, and 8 as unpatentable over the combined prior art of Iwata, Zhang, and Hirano (Final Act. 32). Claim 23 as unpatentable over the combined prior art of Iwata, Zhang, and Wantling (Final Act. 33). OPINION We review the appealed § 103 rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). After having considered the evidence presented in this Appeal and each of Appellant’s Appeal 2020-000490 Application 14/347,568 5 contentions, we are not persuaded that Appellant identifies reversible error, and we affirm the Examiner’s § 103 rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. It has been established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992). First, we note that Appellant does not separately argue any claim (including those claims separately rejected), and addresses all the rejections of claim 1 collectively as a group, focusing on the limitations of claim 1 (Appeal Br. 12–30). The Examiner relies upon various references that teach the use of acetylated wood fibers in MDF (medium density fiberboard), which is not disputed by Appellant (generally Appeal Br.; Reply Br.). The Examiner relies upon Zhang in each rejection to exemplify that dimensions of known MDF panels have the aspect ratio and surface area as recited in claim 1 (e.g., Ans. 5). This is also not disputed by Appellant. Rather, Appellant contends that none of the references “teach[] or suggest[] that the problem of warping of large and thin MDF panels, wherein the warping is measured after wetting and drying of the panel, can be solved by using acetylated wood fiber” Appeal 2020-000490 Application 14/347,568 6 (Appeal Br. 18) and that this “must be taken into account” (Appeal Br. 19). Appellant urges that because “the advantage of reduced warping . . . on dried panels is not taught or suggested” the claims are non-obvious (Appeal Br. 19). Appellant also argues that the statements in the first Kappen declaration3, e.g., that there was “no solution whatsoever” to this problem, is evidence of non-obviousness (Appeal Br. 32, quoting para. 17 of Kappen I). Finally, Appellant argues that the Examiner’s reliance on In re Best is misplaced as multiple references are used in the rejections on appeal versus a single reference (Appeal Br. 33, 34). These arguments are reiterated in the Reply Brief, but are not persuasive of error in the Examiner’s rejections. It is well settled that the reason for combining references does not have to be identical to that of the applicant in order to establish obviousness. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). “As long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992).4 3 Appellant relies upon two declarations by co-inventor Theodorus G. M. M. Kappen, Kappen I, filed Jan. 15, 2016 and Kappen 2 filed April 10, 2018 (Evidence Appendix). 4 See also In re Keller, 642 F.2d 413, 425–26 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”) and In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the Appeal 2020-000490 Application 14/347,568 7 As aptly pointed out by the Examiner, various references exemplify that it is known to use acetylated wood fibers in MDF and advantages thereof (e.g., Ans. 6). Indeed, Appellant acknowledges that it was known that MDF could be made from acetylated wood fibers (Spec. ¶ 6). Zhang is cited in each rejection to exemplify that it is known that dimensions of known MDF panels had the aspect ratio and surface area as recited in claim 1 (e.g., Ans. 5). Appellant has not directed us to any persuasive reasoning or credible evidence to refute the Examiner’s determination that one of ordinary skill in the art, using no more than ordinary creativity, would have used the known component of acetylated wood fibers for a MDF panel having an aspect ratio and surface area as recited in claim 1. The Examiner also reasons that once the relevant teachings of the applied references in each rejection of claim 1 are combined, the claimed result of “reduced warping compared to a panel made wood fibers that are not acetylated” as recited in claim 1 would have naturally occurred (e.g., Ans. 6). It has been held that when the Examiner establishes a reasonable basis that the products (or processes) claimed by the applicant and disclosed or suggested by the prior art appear to be the same or substantially similar, the burden is properly shifted to the applicant to show that they are not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254–56 (CCPA 1977). Contrary to Appellant’s argument, the above noted holding of In re Best is not limited to an obviousness rejection based on only one reference. references be physically combinable to render obvious the invention under review.”). Appeal 2020-000490 Application 14/347,568 8 See, PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014) (“[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis—the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.”); In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc) (“In particular, the statement [in In re Wright] that a prima facie obviousness rejection is not supported if no reference shows or suggests the newly-discovered properties and results of a claimed structure is not the law.”) (Overruling-in-part In re Wright, 848 F.2d 1216 (Fed. Cir. 1988)); a prima facie case of obviousness does not require both structural similarity and a suggestion in or expectation from the prior art that the claimed compound or product will have the same or a similar usefulness as the applicants newly discovered compound; exactly what amounts to a prima facie case varies from case to case).5 Here, the Examiner’s determination that the resultant product from using acetylated wood fibers in a MDF panel of the known dimensions taught in Zhang appears to be the same or substantially similar to those as claimed and disclosed is reasonable. Appellant fails to adequately show that such a product would not have resulted in the claimed reduced warping property. Notably, Appellant’s sole independent claim 1 does not require any minimal or maximum amount of acetylated wood fibers nor any minimal amount of “reduced warping” (Claims Appendix). 5 See also, Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985), aff’d mem., 795 F.2d 1017 (Fed. Cir. 1986) (the recognition of another advantage flowing naturally from following the suggestion of the prior art cannot be the basis for patentability when the difference would otherwise have been obvious). Appeal 2020-000490 Application 14/347,568 9 As pointed out by the Examiner, Appellant’s attempt to rely upon “synergy” or unexpected results (e.g., Appeal Br. 32, 33) is not persuasive, since there is ample evidence in this appeal record that one of ordinary skill in the art would have expected improved mechanical properties from the use of acetylated wood fibers (Ans. 6). Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny superior property must be unexpected to be considered as evidence of non-obviousness” (citation omitted)). In addition, we emphasize that, although secondary considerations such as unexpected results must be taken into account, they do not necessarily control the obviousness conclusion. See Sud-Chemie, Inc. v. Multisorb Technologies, Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“[E]vidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness”); Pfizer, Inc., 480 F.3d at 1372 (“[T]his secondary consideration does not overcome the strong showing of obviousness in this case. Although secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion.” (Citation omitted.)). Here, the case of obviousness established by the Examiner is strong such that when the teachings of the reference are weighed against Appellant’s alleged synergy/unexpected results, the preponderance of the evidence of record still weighs in favor of a conclusion of obviousness. Appellant’s arguments thus do not point out reversible error in the Examiner’s rejections of claim 1, and a preponderance of the evidence supports the Examiner’s obviousness determination. Appeal 2020-000490 Application 14/347,568 10 Appellant does not separately argue any of the dependent claims, including those claims separately rejected, and addresses all the rejections of claim 1 collectively as a group. Accordingly, all of the Examiner’s § 103 rejections are affirmed with respect to all of the claims on appeal. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–6, 8–10, 16–19, 21, 22, 26 103 Korai, Zhang, Aoki 1, 3–6, 8– 10, 16–19, 21, 22, 26 2, 15, 20 103 Korai, Zhang, Aoki, Pereira 2, 15, 20 7 103 Korai, Zhang, Aoki, Hirano 7 2, 9, 10, 15, 17, 19, 20 103 Korai, Zhang, Aoki, Held, Rakszawski 2, 9, 10, 15, 17, 19, 20 23 103 Korai, Zhang, Aoki, Wantling 23 1–10, 15–22, 26 103 Betso, Gomez- Bueso, Segaert, Clark, Zhang 1–10, 15– 22, 26 2, 15, 20 103 Betso, Gomez- Bueso, Clark, Segaert, Zhang, Pereira 2, 15, 20 23 103 Betso, Gomez-Bueso, Segaert, 23 Appeal 2020-000490 Application 14/347,568 11 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed Clark, Zhang, Wantling 1, 3–10, 15– 23 103 Betso, Wantling, Clark, Zhang 1, 3–10, 15–23 1, 3, 4, 6, 16, 18, 22, 26 103 Iwata, Zhang 1, 3, 4, 6, 16, 18, 22, 26 2, 9, 10, 15, 17, 19, 20 103 Iwata, Zhang, Held, Rakszawski 2, 9, 10, 15, 17, 19, 20 5, 7, 8 103 Iwata, Zhang, Hirano 5, 7, 8 23 103 Iwata, Zhang, Wantling 23 Overall Outcome 1–10, 15– 23, 26 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation