Ex Parte Hansson et al

Board of Patent Appeals and Interferences

May 4, 2012

10580219 (B.P.A.I. May. 4, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/580,219 06/28/2006 Krister Hansson TPP 32005 9825
74217 7590 05/04/2012
NOVAK, DRUCE + QUIGG L.L.P. - PERGO
300 New Jersey Ave, NW
Fifth Floor
Washington, DC 20001
EXAMINER
TOLIN, MICHAEL A
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
05/04/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KRISTER HANSSON and
KENT LINDGREN
____________

Appeal 2011-004374
Application 10/580,219
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
PETER F. KRATZ, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of our Decision of February 21, 2012,
wherein the Examiner’s decision to reject all of the appealed claims under
35 U.S.C. § 103(a) is affirmed. In accordance with Appellants’ Request, we
have reconsidered our Decision in light of the Request, but we find no
reason to modify our Decision.

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Appellants contend in the Request (Req.) that the Board
misapprehended or overlooked that Appellants provided argument beginning
at the second paragraph on page 4 of the Appeal Brief that directly disputed
the Examiner’s proffered rationale for modifying the manufacturing process
of Hansson by using Sano’s amino inkjet ink composition as the printing ink
of Hansson (Req. 2-4). Moreover, Appellants contend in the Request that
“[t]he Board’s reliance on In re Kao in their decision is clearly contrary to
binding precedent . . .” and assert, in conclusion, that “it is unexpected to
have selected a printing ink, i.e. an amino ink, that solves the delamination
problem . . .” (id. at 4-7).
Appellants’ allegation that the Board overlooked an argument
presented in the Appeal Brief that directly disputed the Examiner’s proffered
rationale for using the ink of Sano in Hansson is without merit. The
Examiner noted that inkjet printing for printing the decorative layer is
preferred by Hansson; but, Hansson did not specify a particular ink
composition (Ans. 5). Based on this, the Examiner reasonably determined
that one of ordinary skill in the art would have been led by Hansson to look
to the prior art for inkjet compositions (id.). Turning to Sano for a teaching
of prior art inkjet inks, including inks comprising an amino resin having
specified desirable properties, the Examiner additionally furnished the
following rationale for employing the amino resin containing ink of Sano as
the inkjet ink in Hansson (id.):
It would have been obvious to one of ordinary skill in the art at
the time the invention to provide HANSSON with a printing
ink comprising an amino resin because one of ordinary skill in
the art would have been motivated to provide HANSSON with
an inkjet ink having excellent printing stability, ejection
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stability, storage stability, and color reproduction in accordance
with the teachings of SANO.

Appellants did not directly dispute in their Appeal Brief (see generally
Br.) the above-reproduced rationale supplied by the Examiner in the
Answer, as noted at page 3 of the Board Decision. Instead, Appellants
argued that the combination of Hansson and Sano fell short because Hansson
employed a melamine formaldehyde resin in the wear layer rather than the
claimed phenol-formaldehyde resin or urea-formaldehyde resin (Br. 4-7).1
In addition, Appellants provide new arguments concerning this matter
in the Request, including argument with respect to the number and type of
ink jet compositions set forth in paragraph 0048 of Sano, from which the
amino resin-containing ink has to be selected from (Req. 4-7). This belated
argument was not presented in the Appeal Brief. Therefore, the argument is
untimely; that is, it was presented too late to be considered in deciding this
appeal. This is because an argument presented for the first time in a Request
that was not advanced in the Appeal Brief or appropriately furnished in a
Reply Brief (when one has been submitted) is not properly before the Board,
at least in part, because the Examiner is not afforded a timely opportunity to
respond and the Board is deprived of any such response that may have been
supplied by the Examiner to the belatedly presented new argument. See In
re Kroekel, 803 F.2d 705, 709 (Fed. Cir. 1986). “A party cannot wait until

1 This argument was determined to be ineffectual, however, because the
Examiner did not rely on Hansson and Sano by themselves for establishing
the obviousness of using a resin corresponding to the particularly claimed
thermosetting resin in the wear layer of Hansson. Rather Arledter or Mott
was taken together with Hansson (and Sano) for establishing the
obviousness of using this known wear layer thermosetting resin in Hansson
(Ans. 4, 5, and 8-11).
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after the Board has rendered an adverse decision and then present new
arguments in a request for reconsideration.” Cooper v. Goldfarb, 154 F.3d
1321, 1331 (Fed. Cir. 1998) (citing Moller v. Harding, 214 USPQ 730, 731
(BPAI 1982), aff’d, 714 F.2d 160 (Fed. Cir. 1983) (table)).
Consequently and for the reasons furnished by the Examiner in the
Answer (Ans. 5, 6, and 8-11), which reasoning was adopted by the Board in
rendering its Decision (Dec. 3 and 4), we are not persuaded of error that
requires modification of the Board Decision based on the incorrect
contention that the Board overlooked or misapprehended argument
presented in the Appeal Brief that directly disputed the Examiner’s proffered
rationale for modifying the manufacturing process of Hansson by using
Sano’s amino inkjet ink composition as the printing ink of Hansson (Req. 2-
4).
Furthermore, we disagree with Appellants’ contention in the Request
(Req. 4-7) arguing to the effect that the reference to In re Kao in the
Decision is misplaced and/or represents harmful error as conflicting with
binding precedent, such that it requires modification of the Board Decision.
This is so in light of the findings and reasoning of the Examiner which were
adopted by the Board in rendering its Decision (Dec. 3).
For example and as background, we note that Appellants
acknowledged in their Specification that “[i]t is known that the printing ink
itself will sometimes cause problems with de-lamination, especially when
certain pigments, solvents, and amounts of ink is used” (Spec. 1). The
Specification discloses that “[t]he wear layer comprises a thermosetting resin
selected from the group consisting of; melamine-formaldehyde resin,
phenol-formaldehyde resin, urea formaldehyde resin, and mixtures thereof”
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(id.). Moreover, the subject Specification provides that “[t]he invention is
characteri[z]ed in that an amount of amino resin is mixed into the printing
ink in order to increase the bond between the decorative layer and the wear
layer” (id. at 1 and 2).
Appellants did not dispute the Examiner’s factual findings, which
were adopted by the Board, including the determination that (Ans. 4; Dec.
3):
HANSSON teaches a method of making a decorative
laminate comprising the steps of providing a base layer,
printing a decorative layer on the base layer, applying a wear
layer impregnated with melamine-formaldehyde resin, and
bonding the layers together in a press with heat and pressure
(Abstract; the Figure; column 2, lines 28-46; column 10, lines
2-3; claim 20; column 4, lines 4-14).

Given these teachings of Hansson and the Examiner’s reasonable
determination, with which we agreed in the Decision (Dec. 3 and 4), that it
would have been obvious to one of ordinary skill in the art to have used the
known amino resin-containing inkjet ink taught by Sano as the ink of
Hansson for the reasons identified in Sano, the Examiner correctly
determined, and we continue to agree, that the laminate of Hansson made
with Sano’s ink would have been reasonably expected to possess the
increased bonding attributed to the corresponding laminate made by
Appellants, according to their Specification (id. at 4). This is true whether
the laminate is made with melamine formaldehyde resin in the wear layer as
expressly disclosed by Hansson, or an alternative phenol-formaldehyde resin
or urea formaldehyde resin wear layer as suggested by Arledter or Mott
taken with Hansson, as all such laminates correspond to Appellants’
disclosed laminates and hence they would have intrinsically possessed
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increased bonding properties like the corresponding laminates of Appellants
described in the Specification (Spec. 1 and 2).2
Consequently and contrary to Appellants’ contentions in the Request,
we properly referred to In re Kao in the Board Decision as supporting the
Examiner’s reasonable determination that Hansson’s method, modified as
suggested by the applied prior art for the reasons articulated by the Examiner
as supported by the applied prior art teachings, would have been reasonably
expected to result in making a laminate corresponding to the claimed
laminate, including its properties. Hence, the laminate of the modified
Hansson would have been reasonably expected to have increased bond
strength like Appellants disclose for the corresponding laminate made by
Applicants’ claimed method.
Given the argument record and facts before us in this appeal,
Appellants’ reiterated reliance on In re Shetty, 566 F.2d 81 (CCPA 1977) as
allegedly dictating a contrary conclusion with respect to the obviousness
issues that were before us in rendering the Decision, which case law was
already considered in rendering our Decision, remains unpersuasive with
respect to making any modification thereto (Br. 6; Req. 6). In this regard,
we considered this appeal with respect to its particular facts and the
arguments that were before us.

2 Appellants provide no comparative evidence showing the bond strengths
for different inks and different wear layer thermosetting resin combinations
in the Specification or elsewhere in the Appeal record. It follows that, for all
we know, similar increased bond strengths may have been possessed by
laminates made using inks containing other resins, such as inks including
any of the other ink resins that are also taught by Sano (Sano, para. 0048).
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After all, the mere discovery of an additional function or property
inherently possessed by a product of a process taught or suggested by the
prior art, which property may not have been expressly recognized by the
prior art, is not alone necessarily dispositive on the ultimate question of
obviousness. See In re Dillon, 919 F.2d 688, 718-19 (Fed. Cir. 1990).

ORDER
Appellants’ request is granted to the extent that we have reconsidered
our Decision, but is denied with respect to making any change therein.

DENIED

Bar/sld