Ex Parte Krebs et al

Board of Patent Appeals and Interferences

Jun 30, 2009

09683735 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT R. KREBS, MICHAEL E. INGRIM,
ERNEST L. PHELPS, VIRGIL B. CANADY,
and BILLY JOE BILLECK, JR.
____________

Appeal 2009-003547
Application 09/683,735
Technology Center 1700
____________

Decided:1 June 30, 2009
____________

Before PETER F. KRATZ, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 3-7, and 38-40. We have jurisdiction
pursuant to 35 U.S.C. § 6.
Appellants’ claimed invention is directed to a decorative laminate
including: a resin impregnated bilaterally stretchable kraft paper core layer
and (b) a resin impregnated bilaterally stretchable decorative paper layer.
Claims 1 and 38 are illustrative and reproduced below:
1. A compound formable decorative laminate, comprising:

a resin impregnated decorative layer composed of a bilaterally
stretchable decorative paper, the decorative paper being impregnated with
melamine resin; and

a resin impregnated core layer composed of a bilaterally stretchable
kraft paper.

38. A compound formable decorative laminate, comprising:

a resin impregnated decorative layer composed of a bilaterally
stretchable decorative paper, the decorative paper being alpha cellulose
paper; and

a resin impregnated core layer composed of a bilaterally stretchable
kraft paper.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Jaisle 3,860,470 Jan. 14, 1975
Power 4,062,992 Dec. 13, 1977
Nelson 5,989,668 Nov. 23, 1999
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The Examiner maintains the following grounds of rejection:2
(1) a rejection of claims 1 and 3-7 under 35 U.S.C. § 103(a) as being
unpatentable over Nelson in view of Jaisle.
(2) a rejection of claims 1 and 3-7 under 35 U.S.C. § 103(a) as being
unpatentable over Jaisle;
(3) a rejection of claims 38-40 under 35 U.S.C. § 103(a) as being
unpatentable over Jaisle; and
(4) a rejection of claims 1 and 3-7 under 35 U.S.C. § 103(a) as being
unpatentable over Jaisle in view of Power.
We affirm. Our reasoning follows.
At the outset we note that Appellants argue commonly rejected claims
1 and 3-7 as a group. We select claim 1 as the representative claim on which
we decide this appeal as to the commonly rejected claims. We consider
claims 38-40 separately to the extent separately argued.
Appellants maintain that Jaisle, which is common to all of the stated
rejections, “merely discloses a phenolic resin impregnated design imparting
model composed of multiple sheets of extensible paper and in no way
discloses or suggests the highly distinct layers combined in accordance with
the claimed invention” (App. Br. 15). According to Appellants, Jaisle fails
to disclose or suggest a compound formable decorative laminate including
melamine resin-impregnated, bilaterally stretchable decorative paper being
employed in a decorative layer in combination with a resin-impregnated
bilaterally stretchable paper core layer, as required by the appealed claims.

2 See the Communication mailed July 03, 2008, wherein the Examiner
acknowledges the obvious and harmless error in including additional
cancelled claims in the statements of rejection in the Answer.
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PRINCIPAL ISSUE
Have Appellants established reversible error in the Examiner’s
obviousness rejections by the contention that Jaisle does not teach or suggest
a decorative laminate having separate decorative and core resin-impregnated
bilaterally stretchable paper layers wherein the decorative layer paper is
impregnated with melamine resin?

PRINCIPLES OF LAW
On appeal to this Board, Appellants must show that the Examiner
erred in rejecting the claims. Cf. In re Kahn, 441 F.3d 977, 985-986 (Fed.
Cir. 2006); see also 37 C.F.R. § 41.37(c)(1)(vii).
It is well settled that the United States Patent and Trademark Office
(PTO) is obligated to give claim terms their broadest reasonable
interpretation, taking into account any enlightenment by way of definitions
or otherwise found in the Specification. In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[T]he PTO must give claims
their broadest reasonable construction consistent with the specification . . .
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.”).
This longstanding principle is based on the notion that “during patent
prosecution when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification imposed.” In re
Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
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“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).
KSR reaffirms the analytical framework set out in Graham v. John
Deere Co. of Kansas City, 383 U.S. 1 (1966), which states that an objective
obviousness analysis includes: (1) determining the scope and content of the
prior art; (2) ascertaining the differences between the prior art and the claims
at issue; and (3) resolving the level of ordinary skill in the pertinent art.
KSR, 550 U.S. at 406. Secondary considerations such as commercial
success, long felt but unsolved needs or failure of others “‘might be utilized
to give light to the circumstances surrounding the origin of the subject
matter sought to be patented.’” Id. (quoting Graham, 383 U.S. at 17-18).
KSR disapproved a rigid approach to obviousness (i.e., an analysis
limited to lack of teaching, suggestion, or motivation). KSR, 550 U.S. at 419
(“The obviousness analysis cannot be confined by a formalistic conception
of the words teaching, suggestion, and motivation, or by overemphasis on
the importance of published articles and the explicit content of issued
patents.”). See also DyStar Textilfarben GmbH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006) (citation omitted)
(“Our suggestion test is in actuality quite flexible and not only permits, but
requires, consideration of common knowledge and common sense”); Alza
Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006) (“There is
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flexibility in our obviousness jurisprudence because a motivation may be
found implicitly in the prior art. We do not have a rigid test that requires an
actual teaching to combine. . . .”).
See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 775 F.2d 158,
163-164 (Fed. Cir. 1985) (“[T]he absence of specific findings on the level of
skill in the art does not give rise to reversible error ‘where the prior art itself
reflects an appropriate level and [the] need for testimony is not shown’”).
That is, the question of obviousness cannot be approached on the
basis that an artisan having ordinary skill would have known only what they
read in the references, because such artisan is presumed to know something
about the art apart from what the references disclose. See In re Jacoby, 309
F.2d 513, 516 (CCPA 1962).
Nor is it necessary that suggestion or motivation be found within the
four corners of the references themselves. Indeed, a conclusion of
obviousness may be made from “common knowledge and common sense of
the person of ordinary skill in the art without any specific hint or suggestion
in a particular reference.” See In re Bozek, 416 F.2d 1385, 1390 (CCPA
1969). After all, it is well settled that “[t]he person of ordinary skill [in the
art] is a hypothetical person who is presumed to be aware of all the pertinent
prior art.” Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d
955, 962 (Fed. Cir. 1986).
Moreover, it is axiomatic that admitted prior art in an Applicants'
Specification may be used in determining the patentability of a claimed
invention and that consideration of the prior art cited by the Examiner may
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include consideration of the admitted prior art found in an Applicants'
Specification. In re Nomiya, 509 F.2d 566, 570-571 (CCPA 1975); In re
Davis, 305 F.2d 501, 503 (CCPA 1962); In re Hedges, 783 F.2d 1038, 1039-
1040 (Fed. Cir. 1986).

FINDINGS OF FACT
1. Appellants acknowledge that:
[d]ecorative laminates generally include plural layers of
synthetic resin impregnated paper sheets bonded under heat and
pressure to form a unitary structure. In normal practice, a
decorative laminate sheet assembly, from the bottom up,
includes a core layer of one or more phenolic resin impregnated
sheets, above which lies a decorative melamine impregnated
sheet. The decorative sheet may be further covered with a
melamine impregnated overlay.
Spec. ¶ 0006.

2. Appellants acknowledge that conventional decorative
laminates are compound formable onto three dimensional surfaces at
least to a limited extent; that is, surfaces having a principal radii of
curvature greater than 0.5 inches (Spec. ¶ 0011).
3. Appellants acknowledge that the formation of multi-laterally
creped paper sheets via X-creping is known and that such stretchable
paper sheets have been made in accordance with prior art teachings
(Spec. ¶¶ 0036 and 0037).
4. Jaisle discloses that decorative laminates can be textured and
include, inter alia, (1) a decorative sheet, such as a sheet made with
alpha-cellulose paper and a melamine formaldehyde resin, and (2) a
core comprising a stack of resin-impregnated sheets, such as
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impregnated kraft paper sheets (col. 1, ll. 14-63, col. 5, ll. 20-42, col.
6, ll. 1-8).
5. Jaisle discloses that kraft paper comprising “Clupak paper is
a commercially available extensible paper which can be stretched in
both directions” (col. 3, ll. 16-18). Furthermore, Jaisle discloses that
X-crepe paper is a more expensive extensible paper available from
Cincinnati Industries, Inc. (col. 3, ll. 25-28). Jaisle discloses the
formation of textured laminates comprising a master copy using
Clupak paper allows for more design detail to be imparted to the
laminated master copy from a design-imparting model (Example 1).
6. Jaisle does not require the decorative paper and/or the core
paper of a decorative laminate product to be selected from non-
bilaterally stretchable papers (see generally Jaisle).
7. Jaisle discloses that alpha-cellulose papers used in the
decorative laminate can include 35-55 percent by weight melamine
resin (col. 6, ll. 9-13).
8. Nelson discloses a water proof laminate product that
includes, inter alia, resin impregnated kraft paper layers and a
melamine impregnated decorative pattern layer formed as part of a
decorative portion of a panel product (col. 1, ll. 48-60, col. 7, ll. 10-
17; Fig. 1).
9. Power discloses decorative laminate including impregnated
kraft paper, alpha cellulose-containing decorative papers, x-creped
paper, etc. (col. 2, l. 42 - col. 3, l. 31, col. 4, ll. 16-40). The paper
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resin content can range from about thirty to about 75 percent, by
weight (col. 5, ll. 3-6).

ANALYSIS
Starting with and giving representative claim 1 a broadest reasonable
construction consistent with the Specification as it would be understood by
one of ordinary skill in the art, we determine that claim 1 requires a
decorative laminate that includes at least (1) a resin-impregnated paper core
layer comprising a kraft paper that is bilaterally stretchable at least to some
extent and (2) a melamine resin impregnated decorative layer comprising a
decorative paper that is bilaterally stretchable at least to some degree, such
that the laminate possesses some minimum level of compound formability.
As noted above and in the Specification, Appellants acknowledge that
decorative laminates comprising a resin impregnated kraft core layer and a
melamine resin impregnated decorative layer are conventional (FF 1 and FF
2). Jaisle, which is applied in all of the Examiner’s rejections involving
representative claim 1, teaches or suggests such a decorative laminate (FF
4). Moreover, Appellants acknowledge that that these prior art decorative
laminates are three-dimensionally formable at least to some extent (FF3).
Thus, representative claim 1 differs, if at all, from the decorative
laminate admitted to be known and taught by Jaisle by requiring a bilateral
stretchable property for the decorative and kraft papers employed in the two
required laminate layers.
In the three obviousness rejections pertaining to representative claim 1
before us, Appellants essentially urge that Jaisle does not teach or suggest
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using a bilaterally stretchable kraft or decorative paper in a decorative
laminate product. In this regard, Appellants maintain that Jaisle, at most,
teaches use of a bilaterally stretchable paper for a master laminate copy and
does not suggest using bilaterally stretchable papers for the resin
impregnated core and melamine resin impregnated decorative layers of a
decorative laminate. We are not persuaded of reversible error in the
Examiner’s obviousness rejections pertaining to representative claim 1 based
on this line of argument. In particular, Jaisle discloses or reasonably
suggests to one of ordinary skill, in the art that using known extensible
papers, such as Clupak paper or X-crepe paper in forming a master laminate
copy allows for more design detail to be imparted to the laminated master
copy from a design-imparting model (FF 5).
The Examiner has essentially determined that such an advantage
would have been reasonably expected, by one of ordinary skill in the art, to
accrue to an ultimately formed decorative laminate including core and
decorative layers that employ such extensible papers in forming these latter
layers (Ans. 4, 5, and 7). In this regard, we note that Appellants do not
directly confront this obviousness assessment of the Examiner with specific
counter argument or evidence establishing why one of ordinary skill in the
art would not have found the selection of available bilateral extensible
papers for the decorative layer or the core layer of the decorative laminate of
Jaisle to have been an obvious selection from available papers (see generally
App. Br.). Moreover, we observe that Jaisle does not limit the papers
employed in the decorative laminate layers to non-extensible papers (FF 6).
Nor have Appellants established that representative claim 1 requires any
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particular amount or degree of bilateral extensibility (stretchability) that
would have been unobvious over the teachings of Jaisle with or without the
other applied references.
On this record, we agree with the Examiner that Jaisle furnishes ample
evidence that establishes that it would have been within the ordinary skill in
the art to select known bilaterally stretchable papers for use in forming the
decorative and core layers of the decorative laminate of Jaisle. Given our
determination that the teachings of Jaisle alone are adequate to make out a
prima facie case of obviousness for representative claim 1, Appellant has not
otherwise shown reversible error in the Examiner’s reliance on the
additional teachings of Nelson or Power in the two other obviousness
rejections involving representative claim 1 (FF 8 and FF 9). Indeed, Power
further evidences the interchangeability of X-creped paper, kraft paper,
alpha –cellulose containing paper, etc. in forming a decorative laminate
structure (FF 9).
As for the Examiner’s separate obviousness rejection of claims 38-40
over Jaisle, we note that the aforementioned argument with respect to
bilateral stretchable papers is likewise not found persuasive with regard to
these latter claims. Concerning the alpha cellulose paper requirement for the
decorative layer of claims 38 and 40 and the about 30-35 percent resin
content requirement for the decorative paper of claims 39 and 40, we note
that Jaisle teaches or suggests the use of alpha-cellulose for the decorative
layer and Appellants acknowledge that melamine resins are well known for
this layer (FF 1, 4, and 7). As for the amount of resin called for in claims 39
and 40, Jaisle teaches using between 35 and 55 weight percent melamine
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resin, which overlapping amount of resin renders the claimed resin amount
prima facie obvious (FF 7).
In this regard, Appellants have not established that the alpha cellulose
print paper of Jaisle has no bilateral stretchability, as argued (App. Br. 22).
Nor have Appellants established that an ordinarily skilled artisan would have
found the use of a known bilaterally stretchable paper, such as X-creped
paper, to have been a non-obvious source of paper for use in the decorative
paper of Jaisle given the expected benefits of using such paper in forming
textured laminates (FF 5).

CONCLUSION
Appellants have not established reversible error in the Examiner’s
obviousness rejections by the contention that Jaisle does not teach or suggest
a decorative laminate having separate decorative and core resin-impregnated
bilaterally stretchable paper layers wherein the decorative layer paper is
impregnated with melamine resin. Nor have Appellants otherwise
established reversible error in any of the tendered rejections of the Examiner
for the reasons set forth above and in the Examiner’s Answer.
ORDER
The Examiner’s decision to reject claims 1 and 3-7 under 35 U.S.C. §
103(a) as being unpatentable over Nelson in view of Jaisle; to reject claims 1
and 3-7 under 35 U.S.C. § 103(a) as being unpatentable over Jaisle; to reject
claims 38-40 under 35 U.S.C. § 103(a) as being unpatentable over Jaisle;
and to reject claims 1 and 3-7 under 35 U.S.C. § 103(a) as being
unpatentable over Jaisle in view of Power is affirmed.
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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

PL Initial:
sld

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