Ex Parte Iversen et al

Patent Trial and Appeal Board

Oct 31, 2017

12742550 (P.T.A.B. Oct. 31, 2017)

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.
12/742,550 06/16/2010 Steen Brummerstedt Iversen 0079846-000001 6737
21839 7590 11/02/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
ROBINSON, ELIZABETH A
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEEN BRUMMERSTEDT IVERSEN,
CHRISTIAN AUSIG CHRISTENSEN, HENRIK JENSEN,
ANCA PADURARU, HANS RASMUSSEN, and THEIS REENBERG
Appeal 2016-004876
Application 12/742,5501
Technology Center 1700
Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter “Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 1-5, 7,
1 The real party in interest is identified as “VALINGE
PHOTOCATALYTIC AB” (Appeal Brief filed October 19, 2015,
hereinafter “Appeal Br.,” 2).
Appeal 2016-004876
Application 12/742,550
8, 11-15, 17, 19-26, 28-35, and 60-79.2,3 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
I. BACKGROUND
The subject matter on appeal relates to a board or panel, such as
laminate boards or panels, with embedded nanoparticles (Specification filed
May 12, 2010, hereinafter “Spec.,” 1,11. 3^4). The Appellants state that the
embedded microparticles provide hydrophilic characteristics to the upper
surface of the board or panel, which results in improved washing
characteristics {id. at 2,11. 35-39). In addition, the Appellants state that
drying is significantly faster and more uniform, thereby avoiding or reducing
dried up water stains from dirt or dissolved salts in the water as they are
more evenly distributed on the surface {id. at 3,11. 4-6).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, with key limitations highlighted, as follows:
1. A board or panel, having an upper surface, comprising a
base, at least a decor layer and an abrasive resistance enhancing
layer, each layer being an overlaying layer above the base;
wherein at least one of said overlaying layers comprises
first nanoparticles embedded in the layer such that an upper
surface of the board or panel shows hydrophilic characteristics,
wherein the first nanoparticles comprise an anatase crystal
form of titania or a modified version thereof, and
2 Appeal Br. 11-21; Reply Brief filed April 12, 2016, hereinafter “Reply
Br.,” 1-6; Final Office Action entered April 21, 2015, hereinafter “Final
Act.,” 2-8; Examiner’s Answer entered February 26, 2016, hereinafter
“Ans.,” 2-6.
3 We heard oral arguments from the Appellants’ representative on October
18, 2017.
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Application 12/742,550
wherein said embedded first nanoparticles have a
primary particle size of < 50 nm,
wherein the upper surface has a contact angle with water
0 < 60°,
wherein the first nanoparticles are embedded in a polymer
selected from the group comprising melamine formaldehyde,
phenol formaldehyde, urea formaldehyde, melamine urea
formaldehyde, urethane, or mixtures thereof, and wherein the
base is a wood-based board.
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains several rejections:
A. claims 1-5, 11-15, 17, 19-26, 28-35, 64-71, and 73-79 under
pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement;
B. claims 1-5, 7, 8, 11-15, 17, 19-26, 28-34, and 60-79 under 35
U.S.C. § 103(a) as unpatentable over Safta et al. (US 6,436,159
Bl, issued August 20, 2002 (hereinafter “Safta”)) in view of
Niguma et al. (WO 2007/069596 Al, published June 21, 20074
(hereinafter “Niguma”)); and
C. claim 35 under 35 U.S.C. § 103(a) as unpatentable over
Safta in view of Niguma and further in view of Wu et al.
(“XPS Study of Copper Doping Ti02 Photocatalyst,” 19
Acta Phys. -Chim. Sin. 967-969 (2003) (referred to as
“Shu-Xin et al.” or “Shu-Xin” in the Answer)).
4 The Examiner relies on Niguma et al. (US 2009/0286068 Al, published
November 19, 2009) as an English language equivalent to Niguma, WO
2007/069591 Al (Final Act. 3). The Appellants do not object (Appeal Br.
11-21). Therefore, in our discussion below, we cite to and rely on the
English language equivalent, i.e., the US document.
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(Final Act. 3-9; Ans. 2-6.)
III. DISCUSSION
Rejection A. The Examiner finds that the limitation “wherein the
base is a wood-based board,” which was added by amendment to claims 1,
22, 71, 73, and 74 (Amendment filed December 18, 2014), “is broader than
supported by the [Specification” (Final Act. 2). According to the Examiner,
the original disclosure “only supports specific types of wood-based
materials” for the base, but the newly-added limitation reads on any wood-
based material, including those formed from paper {id. at 2-3).
The Appellants contend that the originally-filed Specification (Spec. 5
11. 5-7) describes “a medium density fibre board, a high density fibre board,
a particle board, a chipboard, a solid wooden board, a veneer board, a
plywood board, or a parquet board,” which would reasonably convey to one
skilled in the relevant art that the Appellants had possession of the invention
now claimed including the disputed limitation—namely “wood-based board”
(Appeal Br. 12-13). According to the Appellants, “[t]he Examiner has
provided no evidence that a board can be formed from paper” {id. at 13).
Regardless whether a board can be formed from paper,5 we agree with
the Appellants that the Examiner’s rejection is not well-founded. The mere
fact that the originally-filed Specification does not describe—in haec
verba—the genus “wood-based board” is not dispositive. Depending on
various factors, a description that includes a sufficient number of species can
5 The term “chipboard,” which appears in the originally-filed Specification
(Spec. 5), is defined in Merriam-Webster Dictionary (https://www.merriam-
webster.com/dictionary/chipboard) as “a cardboard usually made entirely
from wastepaper.”
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Application 12/742,550
support a broader genus encompassing those species. See, e.g.,Ariad
Pharm., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (“For
generic claims, we have set forth a number of factors for evaluating the
adequacy of the disclosure, including ‘the existing knowledge in the
particular field, the extent and content of the prior art, the maturity of the
science or technology, [and] the predictability of the aspect at issue.’”).
Other than finding “wood-based board” is broader in scope than the
species enumerated in the originally-filed Specification (Final Act. 2-3), the
Examiner does not discuss any of the relevant factors to show that the
originally-filed Specification does not contain a sufficient description for the
genus “wood-based board.” Indeed, it appears to us that, in the context of an
invention in this relatively predictable art, the Appellants describe a
sufficient number of different boards made from wood to support the
broader genus of “wood-based board.” Therefore, we do not sustain this
rejection.
Rejection B. The Appellants argue the rejected claims together
(Appeal Br. 13-21). Therefore, we confine our discussion to claim 1, which
we select as representative pursuant to 37 C.F.R. § 41.37(c)(l)(iv). As
provided by this rule, all other claims stand or fall with claim 1.
The Examiner finds that Safta describes every limitation recited in
claim 1 except it does not teach: (i) “first nanoparticles comprising] an
anatase crystal form of titania or modified version thereof’ (claim 1) having
the specified size characteristics; and (ii) the specified upper surface’s
contact angle with water 0 < 60° (Final Act. 3—4). The Examiner finds
further, however, that Niguma teaches a coating including anatase titanium
dioxide nanoparticles, preferably having a particle size of 5-50 nm, provides
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stain resistance and hydrophilicity to a substrate that may be used as a
building material and that the resulting coated surface has a contact angle
with water of preferably 60° or less {id. at 4). Based on these findings, the
Examiner concludes that “[i]t would have been obvious to one of ordinary
skill in the art. . . to incorporate the photocatalysts such as the titania
[nanojparticles of Niguma, in the coating of Safta, in order to add stain
resistance to the coating” {id.).
The Appellants submit various arguments, but, for the reasons
discussed below, we do not find them sufficient to identify a reversible error
in the Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011).
Safta teaches applying a coating that includes macrocrystalline or
single crystalline mineral abrasive particles with a crystal size of about 1 to
about 500 microns on surfaces such as wood to enhance abrasion resistance
and clarity (Safta, Abst., col. 3,1. 29-col. 4,1. 21). Niguma teaches an
aqueous organic-inorganic hybrid composition formulated to impart various
properties, such as weather resistance, chemical resistance, optical
properties, antifouling property, antifogging property, and antistatic property
to various materials such as walls or ceilings (Niguma ]}]} 1, 185, 188).
According to Niguma, the composition includes photocatalytic metal oxide
particles having a preferred particle size of 1-50 nm and that these
nanoparticles in the composition result in a stain-resistant surface with a
hydrophilicity (water contact angle) of 60° or less at 20° C. (Niguma ]}]} 44,
48, 50, 51, 66). Niguma further teaches that the photocatalytic particles are
preferably TiCE, such as anatase titanium dioxide (Niguma]} 54).
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Given these facts, we agree with the Examiner that a person having
ordinary skill in the art would have been prompted to combine Niguma’s
organic-inorganic hybrid composition with Safta’s coating composition to
improve hydrophilicity and stain resistance—the same or similar reasons
disclosed for including the specified nanoparticles in the claimed invention
(Spec. 2,11. 15-19, 35^10). KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007) (“[W]hen a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.”).
The Appellants contend that “Safta is completely silent with respect to
using coating compositions that incorporate the anatase form of titanium
dioxide” (Appeal Br. 15) and that “Niguma is completely silent with respect
to using coating compositions that incorporate metal oxide microparticles
(as in Safta)” {id. at 16). These observations, however, fail to consider
whether the collective teachings in the prior art references support the
Examiner’s obviousness analysis and conclusion. As stated by our
reviewing court, “[n]on-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
The Appellants argue that the Examiner improperly dismissed
declaration evidence6 (Appeal Br. 16). Specifically, the Appellants rely on
the Ziegler Declaration to argue (id.):
6 See executed Declaration of Henrik Jensen (Jensen Declaration) and
unexecuted Declaration of Goran Ziegler (Ziegler Declaration), both filed on
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A person skilled in the art would not consider adding
photocatalytic nanoparticles to the coating of Safta, as the
photocatalytic nanoparticles were not standard coating additives
when the present priority International application or priority
Danish application were filed.
According to the Appellants, “addition of a photocatalytic TiCE product
would not be considered by those skilled in the art to be one of a standard
coating additive” and that it would “need to be accompanied by a relevant
binder and any necessary additive package” {id. at 17). Relying on the
Jensen Declaration, the Appellants argue (id.):
Photocatalytic particles are known in the form of specialized
TiCh powders. Id. These powders are made up of TiCh particles
with a small primary particle size. Id. The smaller primary
particles are agglomerated into larger clusters of micron size. Id.
The normally used TiCE powder is therefore not suited to use
when applying it in transparent coatings as TiCE particles with a
size of more than 100 nm will scatter light and the coating will
not be transparent nor will the clarity be high.
According to Appellants, “several unit operations and stabilization steps”
would be required and, therefore, it is “most unlikely that a person skilled in
the art can just take the product from Niguma and add it to a coating
composition as described in Safta and obtain a stable and photocatalytic
active coating composition” {id. at 18).
The Appellants’ arguments are without merit. The proffered evidence
was not dismissed or ignored. Rather, the Examiner states that the evidence
was found to be insufficient because the prior art teachings contradict the
declaration evidence, which is based primarily on conclusory statements
rather than objective evidence (Ans. 4-5). As we found above, Niguma
December 18, 2014, and executed Declaration of Goran Ziegler filed on
January 13, 2015.
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teaches an effective composition including TiCh nanoparticles for providing
hydrophilicity and stain resistance. See also Answer at 5 (“Niguma teaches
usable forms of TiCh in transparent coatings, so the manner of incorporating
TiCh into a coating composition is within the knowledge of one of ordinary
skill in the art.”). The Appellants do not direct us to concrete, objective
evidence demonstrating that a person having ordinary skill in the art would
have expected Niguma’s additive to be ineffective when incorporated into
Safta’s coating. Therefore, we find no reversible error in the Examiner’s
assessment as to the weight to be given to the evidence. In re Am. Acad, of
Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is
entitled to weigh the declarations and conclude that the lack of factual
corroboration warrants discounting the opinions expressed in the
declarations.”); Velanderv. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)
(“In giving more weight to prior publications than to subsequent conclusory
statements by experts, the Board acted well within [its] discretion.”); In re
Lindner, 457 F.2d 506, 508 (CCPA 1972) (“[M]ere conclusory statements in
the specification and affidavits are entitled to little weight when the Patent
Office questions the efficacy of those statements.”).
The Appellants contend that adding Niguma’s nanoparticles to Safta
“would render Safta unsatisfactory for its intended purpose and destroy the
operability of Safta” because Niguma’s nanoparticles would not have the
Mohs hardness required for Safta’s abrasive microparticles (Appeal Br. 20).
The Examiner finds, however, that “[n]either Niguma, nor Safta criticizes,
discredits, or otherwise discourages using particles that are not specifically
disclosed in the[ir] respective coating composition^]” and that, indeed, Safta
contemplates the inclusion of other additives (Ans. 4 (citing Safta, col. 2,1.
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45-col. 3,1. 53)). Moreover, the Examiner’s rejection is not based on
substituting Safta’s microparticles with Niguma’s nanoparticles, but rather,
adding Niguma’s nanoparticles into Safta’s microparticles-containing
coating (Final Act. 4). In this regard, Niguma teaches that the aqueous
organic-inorganic hybrid composition imparts excellent transparency
(Niguma ^ 66), which is consistent with Safta’s goal of providing a coating
with “high clarity” (Safta, col. 3,11. 44^19).
For these reasons, we sustain the Examiner’s rejection of claim 1.
Rejection C. Claim 35 depends from claim 1 through intervening
claim 19 (Claims App’x). The Appellants argue that Shu-Xin does not cure
the deficiencies in the Examiner’s combination of Safta and Niguma to
reject claim 1 (Appeal Br. 21). Because the Examiner’s reasoning as to
claim 1 is not deficient, we uphold the rejection of claim 35 for the same
reasons discussed above.
IV. SUMMARY
Rejection A is not sustained. Rejections B and C are sustained.
Therefore, the Examiner’s final decision to reject claims 1-5, 7, 8,
11-15, 17, 19-26, 28-35, and 60-79 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)(1).
AFFIRMED
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