Ex Parte Canary

Patent Trial and Appeal Board

Apr 16, 2018

13739757 (P.T.A.B. Apr. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
131739,757
50811 7590
O""Shea Getz P.C.
FILING DATE FIRST NAMED INVENTOR
0111112013 Stephen Canary
04/18/2018
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
6674-0127-1 4764
EXAMINER
10 Waterside Drive, Suite 205 YANG, ZHEREN J
Farmington, CT 06032
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
04/18/2018 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):
uspto@osheagetz.com
shenry@osheagetz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN CANARY
Appeal2017-007786
Application 13/739,757 1
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1, 3-5, 11, and 12.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the Applicant, Panolam Industries International, Inc., which,
according to the Brief, is the real party in interest (Br. 3).
Appeal2017-007786
Application 13/739,757
Independent claim 1 is illustrative of the subject matter on appeal
(emphasis added):
1. An impact resistant laminated panel consolidated at
elevated temperature and pressure, which laminated panel
comprises in stacked order:
a first side overlay layer, having an outer surface;
a decorative layer;
a first side fiber-reinforced layer, having a textured outer
surface that is contiguous with the decorative layer, which first
side fiber-reinforced layer includes one or more sheets of
woven fiberglass having a basis weight in the range of 170-210
glm2, which is substantially devoid of cellulose;
wherein the decorative layer has at least one appearance
sheet and at least one flattening sheet, which flattening sheet is
disposed between the appearance sheet and the first side fiber-
reinforced layer, and which decorative layer has a sufficient
mass to prevent the formation of surface flatness variations in
the outer surface of the first side overlay layer, which flatness
variations are attributable to the first side fiber-reinforced sheet
and are perceivable by one or both of unaided human eye or
touch;
a core layer consisting of a plurality of cellulosic sheets;
a second side fiber-reinforced layer; and
a base layer;
wherein the layers are consolidated in the stacked order
of the first side overlay layer, the decorative layer, the first side
fiber-reinforced layer, the core layer, the second side fiber-
reinforced layer, and the base layer at the elevated temperature
and pressure.
The Examiner maintains the following rejections2 :
(a) claims 1, 3, and 4 under 35 U.S.C. § 103(a) as being
unpatentable over Karam et al. (US 2010/0028628 Al, published Feb. 4,
2 We refer to the Specification, filed Jan. 11, 2013 ("Spec."); Final Office
Action, notice emailed Feb. 11, 2016 ("Final Act."), Appeal Brief, filed July
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Application 13/739,757
2010) ("Karam") in view of Kim et al. (US 2003/0022577 Al, published
Jan. 30, 2003) ("Kim"), as evidenced by Katsuragawa et al. (US 4,749,610,
issued June 7, 1988) ("Katsuragawa"), Barthelemy (US 4,839,440, issued
June 13, 1989) ("Barthelemy"), Jordan et al. (US 4,882,370, issued Nov. 21,
1989) ("Jordan"), and Mitsuoka et al. (US 2010/0206662 Al, published
Aug. 19, 2010) ("Mitsuoka");
(b) claim 5 under 35 U.S.C. § 103(a) as being unpatentable over
Karam in view of Kim, as evidenced by Katsuragawa, Barthelemy, Jordan,
and Mitsuoka, and further in view of Mehta et al. (US 5,258,235 A, issued
Nov. 2, 1993) ("Mehta");
(c) claims 11 and 12 under 35 U.S.C. § 103(a) as being
unpatentable over Karam in view of Kim, as evidenced by Katsuragawa,
Barthelemy, Jordan, and Mitsuoka, and further in view of Mier (US
5,047,282, issued Sept. 10, 1991) ("Mier");
(d) claims 1, 3, and 4 under 35 U.S.C. § 103(a) as being
unpatentable over Karam in view of Kim and Huusken (US 2007/0193683
Al, published Aug. 23, 2007) ("Huusken").
ANALYSIS
The§ 103(a) rejection over Karam and Kim
Claims 1, 3, and 4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Karam in view of Kim, as evidenced by Katsuragawa,
Barthelemy, Jordan, and Mitsuoka.
Appellant's principal argument regarding claim 1 is that Kim teaches
29, 2016 ("Br."); and the Examiner's Answer, notice emailed Dec. 16, 2016
("Ans.").
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Application 13/739,757
away from the claimed invention because Kim discloses a weight per unit
area of 30-150 g/m2 and that a weight per unit area greater than 150 g/m2
results in fibers that are too thick, weak adhesive strength, and layer
separation (Br. 8-10).
Appellant's argument is unpersuasive. As explained by the Examiner,
Appellant's argument does not consider what the combination of Karam and
Kim would have suggested. "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 Keller, 642 F.2d 413, 425 (CCPA 1981) (citations
omitted)).
The Examiner finds Karam discloses the fiber-reinforced laminate
recited in claim 1 but not that the core layer consists of a plurality of sheets
(Ans. 2--4). The Examiner finds Karam discloses that type 7628 glass can be
used for its core layer and Katsuragawa, Barthelemy, Jordan, and Mitsuoka
demonstrate that type 7 628 glass has a basis weight of 200, 205, or 210 g/m2
(id. at 4 ). Appellant does not dispute these findings.
The Examiner finds Kim discloses the use of plural core layers (id. at
4--5). Kim discloses a fire-resistant panel includes various layers, including
a core material layer between reinforcing layers (Kim i-fi-12, 25). Kim
discloses the core material layer can be multiple layers (id. i129 ("[t ]he core-
material layer and the reinforcing layer may be used in single or multiple
layers") and depicts multiple core-material layers 12 in Figure 6. The
Examiner explains that Karam demonstrates it was known to use a material
having a basis weight falling within the range recited in claim 1 and Kim
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Application 13/739,757
demonstrates it was known to use a plurality of cellulosic sheets for a core
layer (Ans. 13-14). For instance, the first example of Karam, which uses
type 7628 glass fabric, demonstrates a laminate using the basis weight
recited in claim 1 was known (Karam i-f 39). Thus, the combination of
Karam and Kim would have suggested the claimed laminated panel to one of
ordinary skill in the art.
Appellant further argues there is no support for the Examiner's
statement that "'one of ordinary skill in the art would have reasonable
expectation of success by adopting such a configuration for the sandwich
core layers and reinforcing layers of Karam"' (Br. 10). This argument is
also unpersuasive. Karam and Kim are both directed to laminates including
a decorative layer, fiber-reinforced material, and a core material (Karam
i-fi-119, 25-26, Fig. 1; Kim i-fi-f 25, 46-51, Fig. 6). Further, both laminates are
decorative panels that are fire resistant (Karam i-f 13; Kim i-f 2). Therefore,
the Examiner's conclusion of obviousness to modify Karam' s laminate to
use multiple core layers, as disclosed by Kim, relies on the well-established
principle that, for an improvement to be patentable, it must be more than the
predictable use of prior art elements according to their established functions.
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Moreover, Kim
demonstrates it was known to use a single core layer, as disclosed by Karam,
or multiple core layers (Kim i-fi-128, 29; see In re Fout, 675 F.2d 297, 301
( CCP A 1982) ("[ e ]xpress suggestion to substitute one equivalent for another
need not be present to render such substitution obvious")).
In addition, Appellant asserts Appellant's laminated panel has a
structure that is not disclosed or suggested by Karam or Kim (Br. 7-8).
Specifically, Appellant quotes paragraph 18 of their Specification, which
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states "it is our finding that fiber-reinforced layers (e.g. woven fiberglass
having a basis weight in the range of 185-195 g/m2 with a phenolic resin
content of about 40% of the dry treated weight provides particularly
desirable impact resistance and durability" (Br. 7). Appellant further quotes
paragraph 18 of their Specification, which states:
The significantly improved impact resistance and increase in
flexural strength is believed to be attributable to several factors,
including: a) the particular arrangement of layers (i.e., the stack
up) within the present laminated panel 1 O; b) the positional
symmetry of the fiber-reinforced layers 16,20 within the present
laminated panel 10 relative to the core layer 18 and outer surfaces
30, 32 of the laminated panel 10, and the "closeness" of each
fiber-reinforced layer to the respective outer surface 30,32 of the
laminated panel 1 O; and c) the basis weight of the fiber-
reinforced sheet(s) 16,20 within the fiber-reinforced layer.
(Id. at 8 (emphasis omitted)). Appellant further argues the test comparison
discussed in paragraph 18 of their Specification demonstrates improved
impact resistance and an increase in flexural strength (id. at 10).
Appellant's arguments are not persuasive. The Examiner correctly
finds that claim 1 does not recite impact resistance or flexural strength (Ans.
15). Moreover, to the extent Appellant asserts the discussion in paragraph
18 of their Specification as evidence of unexpected results, there does not
appear to be a nexus between the asserted evidence and the claimed
invention. "For objective evidence of secondary considerations to be
accorded substantial weight, its proponent must establish a nexus between
the evidence and the merits of the claimed invention." In re Kao, 639 F .3d
1057, 1068 (Fed. Cir. 2011) (quoting Wyers v. Master Lock Co., 616 F.3d
1231, 1246 (Fed. Cir. 2010)). "Where the offered secondary consideration
actually results from something other than what is both claimed and novel in
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the claim, there is no nexus to the merits of the claimed invention." Kao,
639 F.3d at 1068 (citing Takai Corp. v. Easton Enters., Inc., 632 F.3d 1358,
13 69 (Fed. Cir. 2011) ). Here, claim 1 does not recite "a phenolic resin
content of about 40% of the dry treated weight" and does not limit the basis
weight to a "range of 185-195 g/m2" (Br. 7; Spec. i-f 18). Further, it is not
clear if factors a), b), and c) discussed in paragraph 18 of Appellant's
Specification relate to the laminated panel structure recited in claim 1.
Furthermore, the test comparisons discussed in paragraph 18 of
Appellant's Specification are between Appellant's invention and laminate
without fiber-reinforcement layers, not between the claimed invention and
the closest prior art (e.g., Karam). "[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art." In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991). The discussion in paragraph 18 also lacks data.
Unexpected results must be established by factual evidence. Attorney
argument does not suffice. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir,
1997) (attorney argument is not the kind of factual evidence that is required
to rebut a prima facie case of obviousness); see also In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984) ("Mere argument or conclusory statements in
the specification does not suffice.").
Based on the foregoing, to the extent Appellant asserts evidence of
unexpected results, it is entitled to little weight. A preponderance of the
evidence supports the Examiner's obviousness determination.
Appellant does not argue claims 3 and 4 separately from claim 1 (Br.
11).
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For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103(a) rejection of claims 1, 3, and 4
over Karam and Kim.
The§ 103(a) rejection over Karam, Kim, and Mehta
Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Karam in view of Kim, as evidenced by Katsuragawa, Barthelemy,
Jordan, and Mitsuoka, and further in view of Mehta.
Appellant merely reiterates the arguments set forth in support of the
patentability of claim 1 and contends Mehta does not remedy the
deficiencies of the references applied in the rejection of claim 1 (Br. 11 ).
For the reasons set forth above, there are no deficiencies in the rejection of
claim 1 that require curing by Mehta.
We therefore sustain the Examiner's§ 103(a) rejection of claim 5
over Karam, Kim, and Mehta.
The § 103 (a) rejection over Karam, Kim, and Mier
Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Karam in view of Kim, as evidenced by Katsuragawa,
Barthelemy, Jordan, and Mitsuoka, and further in view of Mier.
Appellant merely reiterates the arguments set forth in support of the
patentability of claim 1 and contends Mier does not remedy the deficiencies
of the references applied in the rejection of claim 1 (Br. 11 ). For the reasons
set forth above, there are no deficiencies in the rejection of claim 1 that
require curing by Mier.
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We therefore sustain the Examiner's§ 103(a) rejection of claims 11
and 12 over Karam, Kim, and Mier.
The§ 103(a) rejection over Karam, Kim, and Huusken
Claims 1, 3, and 4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Karam in view of Kim and Huusken.
Appellant's principal argument is that Kim teaches away from a basis
weight greater than 150 g/m2 and Huusken teaches away from the claimed
basis weight range because Huusken discloses a base weight per unit area of
about 20 to about 200 g/m2 or "more typically between about 30 to about
120 g/m2 and most typically between about 40 to about 100 g/m2" (Br. 11-
13 (emphasis omitted)).
As discussed above with regard to the rejection of claim 1 over the
combination of Karam and Kim, as evidenced by Katsuragawa, Barthelemy,
Jordan, and Mitsuoka, Appellant's argument does not identify a reversible
error because it does not consider what the combination of the applied
references would have suggested to one of ordinary skill in the art. Further,
Huusken's disclosure of alternative or preferred embodiments does not
constitute a teaching away from its disclosure of a basis weight of about 20
to about 200 g/m2. Something that is known or obvious does not become
patentable simply because it has been described as somewhat inferior to
some other product for the same use (In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994)). Further, disclosed examples and preferred embodiments do not
constitute a teaching away from a broader disclosure or non-preferred
embodiments (In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971)).
Appellant does not argue claims 3 and 4 separately from claim 1 (Br.
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13).
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103(a) rejection of claims 1, 3, and 4
over Karam and Huusken.
DECISION
The Examiner's rejection of claims 1, 3-5, 11, and 12 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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