Ex Parte 7160164 et al

Board of Patent Appeals and Interferences

Apr 13, 2010

90008500 (B.P.A.I. Apr. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PACIFIC LINK HOLDINGS, CORP.1
____________________

Appeal 2009-010148
Reexamination Control 90/008,500
Patent 7,160,164 B22
Technology Center 3900
____________________

Decided: April 13, 2010
____________________

Before CAROL A. SPIEGEL, DANIEL S. SONG and KEN B. BARRETT,
Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Pacific Link Holdings, Corp. is the real party in interest (App. Br. 1).
2 Issued January 9, 2007 to Lin.
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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. §§ 134(b) and 306 (2002)
from a Final Rejection of claims 1-13. The Appellant requests review of the
Examiner’s rejections of claims 1-5 and 9 (App. Br. 6). The Appeal Brief
explicitly states that “Applicant is not requesting review of the rejections of
claims 6-8 and 10-13.” (App. Br. 6). Therefore, we consider claims 6-8 and
10-13 to be withdrawn for cancellation. We have jurisdiction under 35
U.S.C. §§ 134(b) and 306 (2002).
This appeal is related to a co-pending appeal for Reexamination
Control 90/008,501 (for US 7,029,349 issued April 18, 2006 to Lin) which
was decided on May 1, 2009.3
The Patentee claims a body board (a.k.a. “bodyboard”) used for
recreational activities on snow or water having various layers, and a method
for making the same.
Independent claims 1 and 9 read as follows (Claims App’x.; reference
numerals as shown in figs. 1 and 2 added):
1. A body board, comprising:
a foam core portion [18] having a top and bottom
surface;
a binding layer [14] laminated on the top surface of said
foam core;

3 Ex Parte Pacific Link Holdings Corp., App. No. 2009-2602 (BPAI May 1,
2009) (available at
http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20092602-
04-30-2009-1).
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a first graphics layer [12] laminated on the top of said
binding layer; and
a clear protection layer [10] laminated on the top of said
graphics layer.

9. A method of making a body board, comprising:
a) providing a foam core portion [18], said foam core
having a top and bottom surface;
b) laminating a first binding layer [14] on top of said top
surface of said foam core portion;
c) laminating a first printed graphics layer [12] on top of
said first binding layer; and
d) laminating a first clear protection layer [10] on top of
said printed graphics layer.

The prior art relied upon by the Examiner in rejecting the claims is:
Szabad, Jr. 4,850,913 Jul. 25, 1989
Schneider 5,211,593 May 18, 1993
Chang 5,503,921 Apr. 2, 1996
Bambara 5,882,776 Mar. 16, 1999
Deibel 6,358,599 B1 Mar. 19, 2002
Bai Taiwanese Patent 309741 Jul. 1, 1997
(citation to the translation of record)

Kin Japanese Application 2000-117868 Apr. 25, 2000
(citation to the translation of record)

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The Examiner rejected claims 1-5 and 9 under 35 U.S.C. §103(a) as
unpatentable over Schneider in view of Kin.
The Examiner rejected claims 1-5 and 9 under 35 U.S.C. §103(a) as
unpatentable over Bai in view of Kin.
The Examiner rejected claims 1-4 and 9 under 35 U.S.C. §103(a) as
unpatentable over Chang in view of Deibel.
We REVERSE.

ISSUES
The following issues have been raised in the present appeal.
1. Does the evidence of record support the Examiner's finding that
the described film layer of Schneider corresponds to the recited binding
layer of the independent claims?
2. Does the evidence of record support the Examiner's conclusion
that the combination of Bai and Kin results in a body board?
3. Does the evidence of record support the Examiner's conclusion
that using an adhesive layer as taught in Deibel in the body board of Chang
results in the claimed invention?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Schneider describes a bodyboard 10 including a foam plank 30
and a graphics-imprinted bottom skin 40 which covers a bottom planed
surface 14 of the bodyboard 10 (col. 3, ll. 17-20, 35-37; figs. 1-4).
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2. Schneider describes that the bottom skin 40 includes a plurality
of film layers 42, 44 bonded adhesively together, graphics being imprinted
on the first surface 46 of the outer layer 42 (col. 3, ll. 40-43, 50-52, 59-62;
figs. 3 and 4).
3. Schneider describes that the film layers 42 and 44 are plastic
polyethylene film sheets (col. 3, ll. 41-43, 50-52).
4. Schneider also teaches that the graphic-imprinted skin can be
applied to the top riding surface of the bodyboard (col. 5, ll. 5-8).
5. Kin describes a decorative foam sheet for an interior building
wall or a head lining which includes a foam layer 3 and a printing plastic
film 6 formed on the foam layer 3, the printing plastic film 6 consisting of a
plastic film 5 and a printing pattern 4 (Translation ¶¶ [0001], [0002], [0009],
fig. 1).
6. Kin also describes that the plastic film 5 is used because surface
reinforcement (abrasion resistance, scratching reinforcement), resistance to
contamination, and chemical resistance of the foam layer 3 are weak
(Translation ¶ [0017]).
7. Bai describes a foam structure having an ethylene-vinyl acetate
(EVA) foam sheet 10, a hot melt glue 11 layer, a hot melt glue 23 layer, an
ink pattern 22, a clear hot melt glue 21 layer, and a transparent thermoplastic
film 20 (Translation pgs. 5 and 6, 4th figure).
8. Chang describes a bodyboard 50 including a core 52, a top skin
56 secured to the top of the core 52, and a bottom skin 58 secured to the
bottom of the core 52 (col. 4, ll. 41-54; fig 4).
9. The Specification of Chang states:
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In producing a skin characterizing this invention,
matrix layer 12 of heat-expandable foam-producing
polyolefin has deposited over its top surface, and prior to
the application of any heat, a non-foamable polyolefin or
polyethylene film . . .

. . .The polyolefin film includes an upper film layer 20a,
and a lower film layer 20b. . . .

As earlier discussed, skins are producible
following the invention which have graphic images
clearly and attractively displayed on the skins. In
preparing a skin, the imaging material which results in
these images is distributed in the interface between film
layers 20a and 20b.
(Col. 3, ll. 11-30).
10. The Specification of Chang also states:
On leaving the oven, a product is formed which is
illustrated at 40 in the drawing, and referred to herein as
an expanded composite. The matrix layer in the product
has foamed to produce a foam layer 41 having the porous
internal appearance illustrated in FIG. 3. The film
originally lying on the top of the matrix layer, under the
oven temperature conditions, melts or softens with the
residue of the film (42 in FIG. 3) migrating over the
surface of the foam to become fully integrated with the
foam product which is formed.
(Col. 4, ll. 17-27).
11. Thus, Chang describes a composite 40 made of the foam layer
41 (i.e., expanded matrix layer 12) and a lower film layer 20b, the graphic
imaging material layer 24 and the upper film layer 20a melted thereon.
12. The Specification of Chang also states:
As contemplated by the invention, composite 40 is used
to produce a skin in an article such as a bodyboard. . . .
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Bodyboard 50 includes a core 52 of stiff material. . . .

Extending over the top surface of core 52 is a top skin
shown at 56. This is suitably secured to the core, in a
conventional manner, throughout the top face of the core.

. . . The composite produced by the invention is utilized
at least in the production of top skin 56. The composite
is secured to core 52 with the top surface of the
composite facing outwardly and bottom surface 41b of
the composite facing the core and secured thereto.
(Col. 4, ll. 35-60).
13. Thus, the top skin 56 of Chang is made from the composite 40
and is secured to the core 52 of the bodyboard 50 with the bottom surface
41b of the composite 40 being secured to the core 52. As such, the foam
layer 41 of composite 40 is positioned between the lower film layer 20b and
the core 52 of the bodyboard 50.
14. Chang does not describe the specific manner in which the top
skin 56 is secured to the core 52 of the bodyboard 50, but merely states that
the skin can be secured “in a conventional manner” (col. 4, ll. 48-49).
15. Deibel describes a foam laminate board 10 including a foam
core 14 with a first facer 16 adhered or bonded to one primary surface of
foam core 14 and a second facer 18 bonded to a second primary surface of
foam core 14 (col. 4, ll. 4-7; fig. 2).
16. Deibel also teaches that the facer “may be laminated to the
foam board by any conventional method known in the art” including using a
heat activated adhesive layer, or an adhesive layer co-extruded with the facer
(col. 6, ll. 20-29).
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PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and reaffirmed principles based on its precedent that “[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” Id. at 415, 416. The
Court also noted that “[t]o facilitate review, this analysis should be made
explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[R]ejections 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”)).

CLAIM CONSTRUCTION
The preambles of independent claims 1 and 9 both recite “[a] body
board”. In claim construction, “[w]hether to treat a preamble as a limitation
is a determination ‘resolved only on review of the entire[ ] ... patent to gain
an understanding of what the inventors actually invented and intended to
encompass by the claim.’” Catalina Mktg. Int’l., Inc. v. Coolsavings.com,
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Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (omissions in original). “In general,
a preamble limits the invention if it recites essential structure or steps, or if it
is ‘necessary to give life, meaning, and vitality’ to the claim. Conversely, a
preamble is not limiting ‘where a patentee defines a structurally complete
invention in the claim body and uses the preamble only to state a purpose or
intended use for the invention.’” Id (internal citation omitted).
Based on the review of the entire patent on appeal, we conclude that
the recitation “body board” in the preamble of independent claims 1 and 9
gives life, meaning, and vitality to the claim, and thus, should be given
patentable weight. In so doing, we observe that the preamble does not
merely recite a laminated structure that is intended for use as a body board
and a method, but rather, limits the claimed invention to a body board
device, and a method for making the same.
In setting forth the various layers, the apparatus claim 1 recites a
specific layer “laminated on the top surface of” or “laminated on the top of”
a previously recited surface or layer. During prosecution, claims are to be
given their broadest reasonable construction in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Moreover, the words
of the claim must be given their plain meaning unless the plain meaning is
inconsistent with the specification. See In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989). Thus, applying the broadest reasonable construction, the
apparatus claim 1 is construed so that recitation “laminated” merely requires
that the resultant body board have the plurality of layers stacked together to
result in a laminate structure with the layers having the specific order recited
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in the claims. In addition, because claim 1 recites that specific layers are
laminated “on the top surface of” or “on the top of” a previously recited
layer, intermediary layers between the recited layers are precluded.
Nonetheless, because independent claim 1 uses the transitional term
“comprising” which does not exclude additional, unrecited elements,
additional layers may be laminated or otherwise provided on top of the
recited first clear protection layer, and/or on the bottom surface of the foam
core portion. See AFG Indus., Inc. v. Cardinal IG Company, Inc., 239 F.3d
1239, 1244-45 (Fed. Cir. 2001).
The method claim 9 is construed so that the recitation “laminating”
requires that the recited layers be applied to one another by the technique of
lamination to result in the recited body board device. In addition, because
claim 9 recites laminating specific layers “on top surface of” or “on top of” a
previous recited layer, intermediary layers between the recited layers of each
limitation are precluded. However, claim 9 does not preclude additional
steps of laminating additional layers on top of the recited first clear
protection layer, and/or on the bottom surface of the foam core portion.

ANALYSIS
Prior to addressing the Examiner’s substantive prior art rejections of
claims 1-5 and 9, we observe that dependent claims 6-8 and 10-13 stand
rejected, but that the Appellant has specifically requested that we do not
review the Examiner’s rejections of claims 6-8 and 10-13 (App. Br. 6).
Therefore, we consider claims 6-8 and 10-13 to be withdrawn for
cancellation. See ExParte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008)
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(precedential) (“If upon filing an appeal brief, the applicant limits the claims
to be considered on appeal, then it is the practice of the Patent and
Trademark Office to treat the claims not pursued in the appeal brief as
having been withdrawn from the appeal.”).

Rejection of claims 1-5 and 9 over Schneider and Kin
The Examiner rejected claims 1-5 and 9 as unpatentable over
Schneider in view of Kin. The Examiner asserts that Schneider describes
each and every limitation of the rejected independent claims including a
polyethylene film sheet layer 44 which corresponds to the recited binding
layer, but fails to disclose a graphics layer topped by a first clear protection
layer or a roughened surface thereon (claim 3) (Ans. 4; see also FF 1-4).
The Examiner contends that Kin cures these deficiencies (Ans. 4-5, 8-9), and
reasons that such a combination would have been obvious “in order to
provide a durable surface that prevents degradation of the graphics.” (Ans.
5).
The Appellant contends that because Kin is directed to a decorative
foam sheet for use as a building material, Kin cannot be combined with
Schneider which is directed to body boards (App. Br. 9). While Kin is not in
the field of the Appellant’s endeavor, we agree with the Examiner (Ans. 9)
that Kin is reasonably pertinent to the problem with which the Appellant was
concerned, namely, providing laminated foam structures with graphics
thereon. See In re Kahn, 441 F.3d at 986-87. The Appellant also argues that
the materials of Kin would be inappropriate for use as a body board (App.
Br. 9-10). However, this argument is misdirected as the Examiner merely
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relies on Kin for teaching the use of a clear layer over a graphics layer, and
not for disclosing the various other layers of the body board (Ans. 4-5, 9).
The Appellant further disputes the Examiner’s assertion that the thin-
film plastic sheet 44 in Schneider is a binding layer (App. Br. 8). The
Appellant contends that sheet 44 of Schneider is a polyethylene film sheet
which cannot function as the binding layer and that Schneider does not
describe a graphics layer laminated to a binding layer (App. Br. 8; FF 2, 3).
We agree with the Appellant.
The plain language of the limitation requires the recited layer to be
capable of performing a binding function. The Examiner is correct in noting
that Schneider describes the sheet 44 being bonded to the outer sheet 42
(Ans. 8, citing Schneider, col. 4, ll. 5-19). However, such bonding is
attained by an adhesive or glue, and not by the sheet 44 itself. (See
Schneider, col. 4, ll. 5-14). Schneider also does not appear to describe the
use of an adhesive between the sheet 44 and the foam plank 30, but instead,
melts the surface of the foam plank 30 in order to adhere the sheets 42, 44
thereon. (See Schneider, col. 4, ll. 20-56). Thus, the combination resulting
from the Examiner’s application of Schneider and Kin cannot be said to
include the binding layer between the core and the graphics layer as recited
in independent claims 1 and 9.
Therefore, we conclude that the Examiner erred in rejecting
independent claims 1 and 9 as unpatentable over Schneider and Kin. The
Appellant’s further arguments based on inoperability and lack of reason to
combine the references (App. Br. 10) are moot. Claims 2-5 ultimately
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depend from independent claim 1, and thus, we conclude that the Examiner
erred in rejecting these dependent claims as well.

Rejection of claims 1-5 and 9 over Bai and Kin
The Examiner rejected claims 1-5 and 9 as unpatentable over Bai in
view of Kin discussed supra. The Examiner contends that Bai describes the
limitations of the rejected independent claims except for the “second binding
layer, the graphics layers, and the clear protective layers” (Ans. 5). The
Examiner states that Kin describes “a graphics layer 4 topped by a clear
layer 5 made of polyethylene film” and that it would have been obvious to
“provide a graphics layer with a clear polyethylene coating as taught by Kin
et al. on the foam of Bai in order to provide a durable surface that prevents
degradation of the graphics.” (Ans. 5, 6).
The Appellant argues that neither Bai nor Kin is directed to body
boards and contends that the Examiner is engaging in impermissible
hindsight (App. Br. 11). We agree with the Appellant. As construed supra,
the preamble of independent claims 1 and 9 reciting a “body board” gives
life, meaning, and vitality to the claim and should be given patentable
weight. Catalina Mktg, 289 F.3d at 808. Thus, we disagree with the
Examiner’s contention that combination of Bai and Kin “yields all of the
claimed features” (Ans. 10) because the combination does not describe a
body board.
Therefore, we conclude that the Examiner erred in rejecting
independent claims 1 and 9 as unpatentable over Bai and Kin. The
Appellant’s further argument that Kin does not disclose a binding layer
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(App. Br. 12) is moot. Claims 2-5 ultimately depend from independent
claim 1, and thus, we conclude that the Examiner erred in rejecting these
dependent claims as well.

Rejection of claims 1-4 and 9 over Chang and Deibel
The Examiner rejected claims 1-4 and 9 as unpatentable over Chang
in view of Deibel. The Examiner contends that Chang describes all of the
limitations of the independent claims except for the binding layers (Ans. 6).
The Examiner relies on Deibel to cure this deficiency and contends that it
would have been obvious to one of ordinary skill in the art to provide the
binding layers of Deibel on the body board of Chang “to provide a strong
and durable hold between the various layers to prevent the board from
coming apart” (Ans. 6).
Based on our review, we conclude that the combination of Chang and
Deibel suggested by the Examiner does not result in the structure required
by claim 1. In particular, Chang discloses that the top skin 56 is made of a
composite 40 (FF 12-13) which includes the foam layer 41, as well as the
film layers 20a, 20b and graphical imaging material 24 melted on the foam
layer 41 (FF 9-11). Chang further describes that the top skin 56 extends
over the surface of a core 52 and is secured thereto “in a conventional
manner, throughout the top face of the core” so that the bottom surface 41b
of the composite faces, and is secured to, the core (FF 12, 14). The
Examiner relies on Deibel for teaching that conventional methods for
laminating layers include using an adhesive layer (Ans. 11) (see also FF 15-
16).
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Thus, the combination of Chang and Deibel suggested by the
Examiner results in a binding layer between the core 52 and the composite
40 of Chang. However, the composite 40 of Chang includes a foamed layer
41 that would be positioned between the binding layer and the lower film
20b having the graphic image 24 thereon (i.e., first graphic layer) (FF 13).
As such, the combination of Chang and Deibel includes an intervening layer
which is precluded by claim 1 as discussed supra. Similar analysis applies
with respect to the method claim 9 which, as discussed supra, also precludes
laminating intervening layers. The Examiner has not provided any rational
reason for removing the foamed layer or combining it with the core.
Therefore, the Examiner’s rejection of independent claims 1 and 9
based on the articulated combination of Chang and Deibel is not sustained.
The Appellant’s further arguments (App. Br. 12) are moot. Claims 2-4
ultimately depend from independent claim 1, and thus, we also conclude that
the Examiner erred in rejecting these dependent claims.

Dependent Claims
The Appellant states “[c]laims 2-8 depend from claim 1, and claims
10-13 depend from claim 9. These claims are submitted to be allowable for
the same reasons as for claims 1 and 9.” (App. Br. 13). However, we
consider claims 6-8 and 10-13 to be withdrawn for cancellation as discussed
supra. The Examiner’s various rejections of claims 2-5 are not sustained as
discussed supra.

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CONCLUSIONS
1. The evidence of record does not support the Examiner's finding
that the described film layer of Schneider is a binding layer.
2. The evidence of record does not support the Examiner's
conclusion that the combination of Bai and Kin results in a body board.
3. The evidence of record does not support the Examiner’s
conclusion that the articulated combination of Chang and Deibel results in
the claimed body board or the claimed method for making the same.

DECISION
1. The Examiner’s rejection of claims 1-5 and 9 over Schneider
and Kin is REVERSED.
2. The Examiner’s rejection of claims 1-5 and 9 over Bai and Kin
is REVERSED.
3. The Examiner’s rejection of claims 1-4 and 9 over Chang and
Deibel is REVERSED.

REVERSED

ack
cc:
Raymond Sun, Esq.
Law Offices of Raymond Sun
12402 Woodhall Way
Tustin, CA 92782

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Third Party Requester:
Clement Cheng
Law Offices of Clement Cheng
17220 Newhope St. Suite 127
Fountain Valley, VA 92708