TITAN WOOD LIMITED

Patent Trials and Appeals Board

Nov 12, 2020

2020000490 (P.T.A.B. Nov. 12, 2020)

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.
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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.

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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).
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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
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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”
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(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
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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.”).

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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).
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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.
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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

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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