BTD Wood Powder Coating, Inc.

Patent Trials and Appeals Board

Apr 20, 2020

15170520 - (D) (P.T.A.B. Apr. 20, 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.
15/170,520 06/01/2016 Craig A. Martin 4126.05US02 9544
24113 7590 04/20/2020
PATTERSON THUENTE PEDERSEN, P.A.
80 SOUTH 8TH STREET
4800 IDS CENTER
MINNEAPOLIS, MN 55402-2100
EXAMINER
PLESZCZYNSKA, JOANNA
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
04/20/2020 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):
efsuspto@ptslaw.com
johnson@ptslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CRAIG A. MARTIN, CRAIG FAST, and CLINT ELLENBERG
____________________

Appeal 2019-003235
Application 15/170,520
Technology Center 1700
____________________

Before DONNA M. PRAISS, N. WHITNEY WILSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
May 3, 2018 decision finally rejecting claims 2–20, which constitute all the
claims pending in this application (“Final Act.”). We have jurisdiction over
the appeal under 35 U.S.C. § 6(b). An oral hearing was held on April 3,
2020. A transcript of that hearing will be part of the record.
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies BTD Wood Powder Coating, Inc. as
the real party in interest (Appeal Br. 2).
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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a powder coated wood article with
improved visual and tactile smoothness (Abstract). The powder coated
wood article includes three layers: (1) the wood-containing substrate; (2) a
powder coated layer on the wood containing substrate having a minimum
PCI smoothness; and (3) a liquid top coat on the powder coated layer (Spec.
5–6). Details of the claimed invention are set forth in claim 2, which is
reproduced below from the Claims Appendix to the Appeal Brief:
2. A powder coated article having enhanced visual and tactile
smoothness, the article comprising:
a substrate of a desired size containing wood having
radiused edges that have a minimum radius of one thirty second
of an inch (0.8 mm);
a cured powder coat surface coating overlying the
substrate, the powder coat surface coating being at least 5 mils in
thickness and having a PCI smoothness of at least 6;
a cured liquid top coat overlying the powder coat surface
coating, the cured liquid topcoat having a PCI smoothness of at
least 8 and having been applied to a minimum top coat thickness
of 2 wet mils; and
wherein a resulting finish has improved PCI smoothness
and improved visual and tactile smoothness as compared to a
similar powder coated part without the cured liquid top coat.

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REJECTIONS
1. Claims 2–5 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schlegel2 in view of Tullos,3 Decker,4 Azuelos,5 and
Braun.6
2. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Schlegel in view of Tullos, Decker, Azuelos, and Braun, and further in
view of Hagquist.7
3. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Schlegel in view of Tullos, Decker, Azuelos, and Braun, and further in
view of Wu.8
4. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Schlegel in view of Tullos, Decker, Azuelos, and Braun, and further in
view of Costin.9
5. Claims 10, 11, 13–15, and 20 are rejected under
35 U.S.C. § 103(a) as unpatentable over Schlegel in view of Tullos, Decker,
and Azuelos.

2 Schlegel et al., US 6,268,022 B1, issued July 31, 2001.
3 Tullos, US 6,797,322 B2, published September 28, 2004.
4 Decker et al., US 2005/0153070 A1, published July 14, 2005.
5 Azuelos et al., US 2011/0039110 A1, published February 17, 2011.
6 Braun, US 2011/0014441 A1, published January 20, 2011.
7 Hagquist et al., US 6,548,109 B1, issued April 15, 2003.
8 Wu et al., US 2011/0293843 A1, published December 1, 2011.
9 Costin et al., US 2008/0241478 A1, published October 2, 2008.
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6. Claims 12 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schlegel in view of Tullos, Decker, and Azuelos, and
further in view of Braun.
7. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Schlegel in view of Tullos, Decker, and Azuelos, and further in view of
Hagquist.
8. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Schlegel in view of Tullos, Decker, and Azuelos, and further in view of
Wu.
9. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Schlegel in view of Tullos, Decker, and Azuelos, and further in view of
Costin.

DISCUSSION
We decide this appeal based on reasons common to each of the claims
and rejections. Accordingly, we focus our discussion on the rejection of
claim 2 over Schlegel, Tullos, Decker, Azuelos, and Braun.
The findings and determinations supporting this rejection are set forth
at pages 2–4 of the Final Rejection. For purposes of deciding this appeal,
we focus on the findings regarding Schlegel and Azuelos and the reasons set
forth by the Examiner to combine their teachings.
The Examiner finds, inter alia, that Schlegel teaches a powder coated
article including a substrate comprising wood and a cured powder coated
layer overlying the wood (Final Act. 2, citing Schlegel, Abstract, 2:15–21,
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3:9–20, 4:13–14). The Examiner further finds that Schlegel does not teach
or disclose a cured liquid topcoat over the powder coated layer (Final Act.
3). The Examiner finds that Azuelos teaches a cured liquid topcoat provided
on wooden substrates for visual quality of substrates (Final Act. 3, citing
Azuelos, Abstract). The Examiner determines that it would have been
obvious “to form a cured liquid coat overlying the powder coat of Schlegel
to provide desirable visual properties” (Final Act. 3).
It is well established that “rejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007).
In this instance, the Examiner’s stated reason why a person of skill in
the art would have combined the top coating of Azuelos with the powder
coated wood substrate of Schlegel is “to provide desirable visual properties.”
Final Act. 3. It is undisputed that Azuelos does not disclose using its top
coating over a powder coated layer (Ans. 14; Appeal Br. 13–14). However,
the Examiner finds that Azuelos’s teaching that its top coating layer can be
applied over a polymer layer (which the Examiner says corresponds with a
powder coated layer) over a wood substrate would have motivated a person
of skill in the art to use Azuelos’s liquid top coat over Schlegel’s powder
coated layer (Ans. 14–15).
Our review of the record indicates that the preponderance of the
evidence does not support the Examiner’s position. First, and most
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importantly, as noted by Appellant (Reply Br. 7–8), Azuelos’s polymer
layers located under a top coating are fundamentally different from
Schlegel’s powder coating layers in that Azuelos’s polymers are designed to
fill pores in the wood substrate to facilitate sanding and a smoother finish
while the powder coating layer is generally considered to be a finished layer.
In addition, Scott Persyn’s Rule 132 Declaration provides evidence that the
use of a finishing top coat over a powder coated layer was unknown in the
art and provides surprisingly superior finishes as compared with other
known finishes (Persyn Decl. ¶¶ 11, 13, 16–21).
Accordingly, we conclude that the preponderance of the evidence of
record does not support the Examiner’s rationale that it would have been
obvious to combine Azuelos’s top coating with Schlegel’s powder coated
wood substrate. In essence, we determine that the Examiner’s rationale for
the combination is insufficient to support the obviousness rejection.
Accordingly, we reverse the rejection of claim 2. Because the
remaining rejections rely on the same insufficient reason to combine
Schlegel and Azuelos, we also reverse those rejections.

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CONCLUSION

In summary:

Claims
Rejected
35 U.S.C.
§ References(s)/Basis Affirmed Reversed
2–5, 9 103(a) Schlegel, Tullos, Decker, Azuelos, Braun 2–5, 9
6 103(a) Schlegel, Tullos, Decker, Azuelos, Braun, Hagquist 6
7 103(a) Schlegel, Tullos, Decker, Azuelos, Braun Wu 7
8 103(a) Schlegel, Tullos, Decker, Azuelos, Braun, Costin 8
10, 11, 13–15,
20 103(a)
Schlegel, Tullos, Decker,
Azuelos
10, 11,
13–15, 20
12, 19 103(a) Schlegel, Tullos, Decker, Azuelos, Braun 12, 19
16 103(a) Schlegel, Tullos, Decker, Azuelos, Hagquist 16
17 103(a) Schlegel, Tullos, Decker, Azuelos, Wu 17
18 103(a) Schlegel, Tullos, Decker, Azuelos, Costin 18
Overall
Outcome 2–20

REVERSED