Ex Parte Lucas

Patent Trial and Appeal Board

Jun 21, 2018

13097996 (P.T.A.B. Jun. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/097,996 04/29/2011 William Henry Lucas III
25315 7590 06/25/2018
LOWE GRAHAM JONES, PLLC
701 FIFTH A VENUE
SUITE4800
SEATTLE, WA 98104
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.
RECR-1-1001 7674
EXAMINER
CANFIELD, ROBERT
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
06/25/2018 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):
patentdocketing@lowegrahamjones.com
docketing-patent@lowegrahamjones.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM HENRY LUCAS III
Appeal2017-005687
Application 13/097,996
Technology Center 3600
Before MICHELLE R. OSINSKI, LISA M. GUIJT, and
BRENT M. DOUGAL, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
William Henry Lucas III ("Appellant") 1 appeals under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 12-24 and 27-31,
which are all of the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellant identifies the real party in interest as Recor International Inc.
Br. 1.
Appeal2017-005687
Application 13/097,996
THE CLAIMED SUBJECT MATTER
Claims 12 and 24 are independent. Claim 12, reproduced below, is
illustrative of the claimed subject matter on appeal.
12. A Hush architectural door formed using at least one ,__,
postconsumer material, the flush architectural door comprising:
a reused core extracted from a previously-used dooL the
reused core having a first major surface, an opposing second
major surface, a top end, an opposing bottom end, a first side,
and an opposing second side;
a top rail disposed against the top end of the reused core;
a bottorn rail disposed against the bottom end of the reused
core;
a first style disposed against the first side of the reused
core;
a second sty1e disposed against the second side of the
reused core: and
a first skin disposed over the first major surface of the
reused core;
chain-of-custody inforrnatfon attached to the door
validating the origin of the reused core as extracted frorn the
previously-used door, the chain-of-custody information
including one or more of a date of collection or location of
collection of fhe reused core configured to allow ceii.Hication by
at least one certifving body: "' (.....- .,. ,
wherein the reused core, the rails, the styles, and the first
skin have a collective weight, and wherein the reused core forms
over 80~'0 of that collective weight.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Richards
Lancia
Cecilio
Daniels
us 5,305,577
US 2004/0172914 Al
US 2006/0032167 Al
US 7,832,166 B2
2
Apr. 26, 1994
Sept. 9, 2004
Feb. 16,2006
Nov. 16, 2010
Appeal2017-005687
Application 13/097,996
THE REJECTIONS
I. Claims 12, 13, 15-18, 20-24, and27-31 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Richards and Daniels.
Final Act. 2--4.
II. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Richards, Daniels, and Cecilio. Id. at 4--5.
III. Claims 12-18, 20-24, and 27-31 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lancia and Daniels. Id. at 5-7.
IV. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Lancia, Daniels, and Cecilio. Id. at 7-8.
OPINION
Rejection I
Appellant argues independent claims 12 and 24 as a group. Br. 5-9.
We select claim 12 as the representative claim, and claim 24 stands or falls
with claim 12. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner relies on Richards for many of the limitations of
independent claim 12, including, inter alia, a reused core. Final Act. 2-3
(citing Richards 3: 16-20) ("The gypsum fiberboards [of the core] of the
present invention can include scrap or waste materials, which can provide
further cost incentives to manufacturers, as well as satisfy a current need
for the recycling of building debris and flue slag."). As to the core being
extracted from a previously-used door, the Examiner determines this to be
a product-by-process limitation and finds that "[t]here is no structural
difference from the gypsum core of Richards and a gypsum core of the
instant claims." Id. The Examiner acknowledges that "Richards fails to
provide for chain of custody information attached to the door including one
3
Appeal2017-005687
Application 13/097,996
of date of collection or location of the core for validating the origin of the
core." Id. at 3. The Examiner turns to Daniels and finds that Daniels
teaches "it was known to provide a data device within a door, the data device
containing product information." Id. (citing Daniels 7:12+, 8:49---63). More
particularly, the Examiner finds that Daniels teaches "the information
provided may contain manufacturing data, product identifiers and special
feature[ s] identifiers." Id.
The Examiner concludes that it would have been obvious "to have
provided the door of Richards with a data device as taught by Daniels to
provide product information and identifiers such as the origin of the core
material." Final Act. 3 (citing Daniels 8:49---63). Additionally, the
Examiner concludes that Daniels would "at least suggest to one having
ordinary skill in the art to provide information such as chain o[ fJ custody or
location of collection and the like sufficient to provide certification as such
information falls under each of 'manufacturing data', 'product identifiers'
and 'special feature[ s] identifiers."' Ans. 9 (emphasis omitted). The
Examiner determines that "[ t ]here would be no unexpected or unpredictable
results obtained in providing such information." Id. The Examiner further
determines that "[p ]rinted matter such as chain of custody information
cannot be relied upon to distinguish from the prior art in terms of
patentability as it fails to provide any new or unobvious functional
relationship between the printed matter and the door." Id.
The claimed chain-of-custody information is best understood as
"printed matter." See Spec. 7:7-10 ("The chain-of-custody information can
be recorded and attached (e.g., stamped, written, etched, stapled, implanted
via a chip, or the like) to a core (or to some other portion of the door 102 or
4
Appeal2017-005687
Application 13/097,996
to some other portion of the rail of the door) subsequent to extraction.").
Assuming arguendo that there is a functional relationship between the
claimed chain-of-custody information (printed matter) and the door (the
substrate) in that the chain-of-custody information conveys information
about the door, we are not persuaded that this functional relationship is new
and unobvious from the subject matter of the cited prior art. In In re Gulack,
703 F.2d 1381 (Fed. Cir. 1983), the Federal Circuit stated in the obviousness
context, that "[t]he bare presence or absence of a specific functional
relationship, without further analysis, is not dispositive." Id. at 1386.
"Rather," the Court continued, "the critical question is whether there exists
any new and unobvious functional relationship between the printed matter
and the substrate." Id. (emphasis added). Here, the functional relationship
of conveying information about a door is old and known in the art. See
Daniels 7: 13-24. Daniels teaches conveying information regarding a door's
manufacturing data, product identification, and special features
identification, for example. See id. The only difference between the printed
matter of the applied art and the claimed printed matter is the exact
information conveyed about the door. The claimed printed matter is directed
specifically to a "date of collection" or "location of collection" of a reused
core of the door. 2
2 We note that Appellants' Specification describes that the Forest
Stewardship Council "traces products from certified forests throughout
the supply chain to ensure that any claims on the origin of the product are
credible and verifiable" and that "a valid chain-of-custody certification may
be necessary for receiving approval for using wood products in a particular
project" (Spec. 6:25-7:3), which suggests that providing information
regarding the origin of a product may be useful.
5
Appeal2017-005687
Application 13/097,996
To the extent that collection date/location of reused material does
not explicitly fall under Daniels' broad categories of manufacturing data,
product identification, and special features identification, we agree with the
Examiner that attaching information regarding a collection date/location of
reused material in a door would at least be obvious from Daniels' teaching
of attaching to a door information regarding manufacturing data, product
identification, and special features identification. See Ans. 9. We keep in
mind that Richards' door comprises gypsum fiberboards that include scrap
or waste materials (see Richards 3: 15-20), for which information regarding
the collection date/location of such scrap or waste materials would be
applicable. The proposed modification of Richards' door to add Daniels'
data device so as to convey information regarding the manufacturing of the
door and, more specifically, to include the collection date/location of any
reused material in that data device appears to be no more than the
application of a known technique to a piece of prior art ready for the
improvement. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007
(noting such modifications are obvious where they do no more than yield a
predictable result).
We have considered Appellant's argument that neither Richards
nor Daniels "mention ... 'certification' or 'chain-of-custody' or 'date of
collection' or 'location of collection' at all." Br. 5. We do not find this
argument persuasive in that it fails to address the Examiner's determination
that it would have been obvious to modify Richards to include a data device
like that disclosed in Daniels so as to include information regarding
collection date/location (Ans. 9), considering that Richards discloses the use
of scrap or waste materials that would have to be collected. See Final Act. 3
6
Appeal2017-005687
Application 13/097,996
(asserting that "provid[ing] the door of Richards with a data device as taught
by Daniels to provide product information and identifiers such as the origin
of the core material" would be obvious).
We have also considered Appellant's argument that the product
information of Daniels does not suggest including "chain-of-custody"
information that would allow the door to be "configured to allow
certification." Br. 5. We also find this argument unconvincing. The claim
language specifically identifies "date of collection" or "location of
collection" as "chain-of-custody" information that would allow certification.
As described above, the Examiner has adequately explained what would
have led one of ordinary skill in the art to include the collection date/location
of Richards' scrap or waste material in light of Daniels' data device
explicitly including production data, a product identifier, door specifications,
a parts list, and/or a special features identifier. In our view, Daniel's
production data, including manufacturing date and time, a purchaser
identifier, and personnel identifier, for example, (Daniels 7: 13-24) is the
type of information that would allow a chain-of-custody of a door like that
of Daniels to be determined and, therefore, is configured to allow
certification. The collection date/location information found by the
Examiner to at least be obvious to include in Richards, is the type of
information that would allow a chain-of-custody of a door like that of
Richards (i.e., a door that includes scrap and waste material) to be
determined, and, therefore, is configured to allow certification.
We have also considered Appellant's argument that the Examiner's
rejection is based on "improper hindsight reconstruction, using Applicant's
claim language to piece together Richards with Daniel[ s]." Br. 7 (emphasis
7
Appeal2017-005687
Application 13/097,996
omitted). We also find this argument unconvincing in that Appellant does
not identify any knowledge relied upon by the Examiner that was gleaned
only from Appellant's disclosure and that was not otherwise within the level
of ordinary skill at the time of the invention. See In re McLaughlin, 443
F.2d 1392 (CCPA 1971). That is, the Examiner relies on Richards for a door
having a reused core made of scrap and waste material, and on Daniels for
suggesting attaching a data device to the door that provides product
information. The Examiner concludes that it would have been obvious to
have the collection date/location of the scrap and waste material used in the
door be part of the product information provided, considering that
information is relevant to the production/manufacture of a door with scrap
and waste material.
As to Appellant's suggestion that "the chain-of-custody information
imparts function to the resulting structure-the information is configured to
allow certification of the door" (Br. 8), we remain unpersuaded of error by
the Examiner. The door's structural elements do not depend on the content
of any information attached to the door. That is, a door that includes
identifying information is still a door comprised of certain materials, no
matter whether identifying information is attached to the door or what is
the specific content of any identifying information. We agree with the
Examiner's findings that the prior art teaches attaching product information
to a door to convey information regarding the production of a door, and that
the specific claimed product information (i.e., collection date/location of
reused material) is obvious product information to be attached to Richards'
door, which includes scrap and waste material, as it is relevant to the
production/manufacture of the door. In sum, we are not persuaded in this
8
Appeal2017-005687
Application 13/097,996
case that the Examiner erred in determining there to be no new or unobvious
functional relationship between the printed matter (e.g., "date of collection"
or "location of collection" of a reused core) and the substrate (e.g., the door).
See, e.g., Ans. 9. The functional relationship is to convey information
regarding the production/manufacture of the door, and that functional
relationship is not new and unobvious in light of the teachings of Daniels
which teaches conveying information regarding the production/manufacture
of a door. In the absence of a new and unobvious functional relationship
between the printed matter and the substrate (i.e., it is known in the art to
attach data to a door to convey information regarding the
production/manufacture of the door), we determine the Examiner correctly
concluded that Richards and Daniels renders obvious the subject matter of
independent claim 12.
For the foregoing reasons, Appellant does not show error by the
Examiner in concluding that the subject matter of claim 12 is obvious over
Richards and Daniels, and we sustain the rejection of claim 12, and claim 24
which falls therewith, under 35 U.S.C. § 103(a) as unpatentable over
Richards and Daniels. Appellant does not provide separate arguments for
dependent claims 13, 15-18, 20-23, and 27-31. Br. 9-10. Therefore, we
also sustain the rejection of claims 13, 15-18, 20-23, and 27-31 under
35 U.S.C. § 103(a) as unpatentable over Richards and Daniels.
Re} ection II
In contesting the rejection of claim 19, Appellant relies on the same
arguments and reasoning we found unpersuasive in connection with
independent claim 12. See Br. 10. Accordingly, we also sustain the
9
Appeal2017-005687
Application 13/097,996
rejections of claim 19 under 35 U.S.C. § 103(a) as unpatentable over
Richards, Daniels, and Cecilio.
Rejection III
The Examiner relies on Lancia for many of the limitations of
independent claim 12, including a core. Final Act. 5. In addition to
determining that the core being "reused" and "extracted from a previously
used door" are product-by-process limitations, the Examiner
"[a ]ltematively" determines that it would have been obvious "to have reused
recycled scrap or waste extracted from a previous-used door to be
environmentally friendly by reducing landfill wastes" and "[i]t is old and
well known to reuse and recycle building materials." Id. at 5---6.
Appellant presents similar arguments against the combination of
Lancia and Daniels in Rejection III as against the combination of Richards
and Daniels in Rejection I. Br. 10-11. For similar reasons as those
discussed supra in connection with Rejection I, we do not find these
arguments persuasive. Accordingly, Appellant does not show error by the
Examiner in concluding that the subject matter of claims 12 and 24 is
obvious over Lancia and Daniels, and we sustain the rejection of claims 12
and 24 under 35 U.S.C. § 103(a) as unpatentable over Lancia and Daniels.
Appellant does not provide separate arguments for dependent claims 13-18,
20-23, and 27-31. Br. 11. Therefore, we also sustain the rejection of claims
13-18, 20-23, and 27-31under35 U.S.C. § 103(a) as unpatentable over
Lancia and Daniels.
Rejection IV
In contesting the rejection of claim 19, Appellant relies on the same
arguments and reasoning we found unpersuasive in connection with
10
Appeal2017-005687
Application 13/097,996
independent claim 12. See Br. 11. Accordingly, we also sustain the
rejections of claim 19 under 35 U.S.C. § 103(a) as unpatentable over Lancia,
Daniels, and Cecilio.
DECISION
The Examiner's decision to reject claims 12, 13, 15-18, 20-24, and
27-31 under 35 U.S.C. § 103(a) as unpatentable over Richards and Daniels
is affirmed.
The Examiner's decision to reject claim 19 under 35 U.S.C. § 103(a)
as unpatentable over Richards, Daniels, and Cecilio is affirmed.
The Examiner's decision to reject claims 12-18, 20-24, and 27-31
under 35 U.S.C. § 103(a) as unpatentable over Lancia and Daniels is
affirmed.
The Examiner's decision to reject claim 19 under 35 U.S.C. § 103(a)
as unpatentable over Lancia, Daniels, and Cecilio 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
11