Ex Parte Milburn

Patent Trial and Appeal Board

Feb 27, 2019

12717461 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/717,461 03/04/2010
24932 7590 03/01/2019
LAUBSCHER & LAUBSCHER, P.C.
1160 SPA ROAD
SUITE2B
ANNAPOLIS, MD 21403
FIRST NAMED INVENTOR
Douglas I. Milburn
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.
25605 2836
EXAMINER
ROBINSON, ELIZABETH A
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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):
LLAUBSCHER@LAUBSCHERLA W.COM
info@laubscherlaw.com
asimonini@laubscherlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS I. MILBURN
Appeal2018-003827
Application 12/717,461
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 the final rejections of
claims 2---6 and 8-12. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellant's invention is directed to a composite laminated product for
use in a light transmissive panel (Spec. ,r 2). Light diffusing panels are said
1 The named inventor Douglas I. Milburn is identified as the real party in
interest (Br. 2).
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Application 12/717 ,461
to save electricity costs by improving the use of natural daylight in buildings
while providing pleasing lighting effects (id. ,r 3).
Claims 10 and 2 are illustrative ( emphasis added):
10. A composite light diffusing panel, comprising
at least two spaced apart lites having flat inner and outer
surfaces;
a transparent insulating matrix separating said lites;
a light transmissive fabric layer adhered to said flat
inner swface of one of said spaced apart lites without
interfering with said transparent insulating matrix and
preventing said transparent insulating matrix from contacting
said flat inner swface, whereby wrinkling of the fabric is
avoided; and
a layer of light transmissive adhesive between said flat
inner swface and the fabric layer which is applied at a density
of [between] about 0.5 g/sq.ft[.] and 2 g/sq.ft[.], wherein the
fabric layer is unsaturated, whereby loss of light diffusion
properties is prevented.
2. A composite light diffusing panel as claimed in claim 10,
wherein said light transmissive adhesive is applied at a density
of about 0.5 g/sq.ft.
Appellant appeals the following rejections:
1. Claims 5, 6, and 8-12 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Wakefield (US 2,695,430; issued Nov. 30, 1954), in
view of Grove, III et al. (US 2004/0121075 Al; published June 24,
2004, "Grove"), Osumi et al. (US 2003/0091758 Al; published May
15, 2003, "Osumi"), Silvers et al. (US 2004/0147663 Al; published
July 29, 2004, "Silvers"), and further in view of Kacheria (US
5,708,749; issued Jan. 13, 1998), as evidenced by Thiele Material
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Safety Data Sheet, Thiele Kaolin Company 1-5 (2012) ("Thiele
MSDS") (Final Act. 2-16).
2. Claim 2 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Wakefield, in view of Grove, Osumi, Silvers, Kacheria, and
further in view of Milburn (US 6,699,558 Bl; issued Mar. 2, 2004,
"Milburn '558") (Final Act. 16-17).
3. Claims 3 and 4 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Wakefield, in view of Grove, Osumi, Silvers,
Kacheria, Milburn '558, and further in view of Milburn (US
6,699,559 Bl; issued Mar. 2, 2004, "Milburn '559"), as evidenced by
ALPHA 8010 and 8011 adhesive Technical Data Sheets, Alpha
Systems Inc. ("Alpha 8010/8011 TDS ") (Final Act. 17-19).
FINDINGS OF FACT & ANALYSIS
REJECTION (I):
The Examiner's findings and conclusions regarding Wakefield,
Grove, Osumi, Silvers, and Kacheria, as evidenced by Thiele MSDS, are
located on pages 2-16 of the Final Office Action.
Appellant argues that the Examiner's applied prior art does not
disclose or suggest each element of the claimed composite light diffusing
panel (Br. 8).
We are not persuaded by this argument because Appellant does not
identify what elements are missing from the Examiner's findings.
Appellant argues that even assuming that the Examiner's applied prior
art discloses or suggests all elements of the claimed subject matter, "the
disparate subject matter of these references negates any possible obviousness
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finding" (id.). Appellant further argues that the Examiner has not explained
how these references are related, nor provided any motivation as to why the
ordinarily skilled artisan would have combined them (id. at 8-9). Appellant
directs our attention to paragraphs 8, 10, 12, and 13 of the Final Office
Action as showing that the Examiner's conclusions, which Appellant argues
are based on impermissible hindsight, lack sufficient reasoning (id.).
Appellant's arguments are not persuasive.
To the extent Appellant argues that the Examiner is combining non-
analogous art, each of the relied upon references are either in the field of
Appellant's endeavor or are reasonably pertinent to the particular problem
with which the Appellant was concerned. See In re Kahn, 441 F.3d 977,
986-87 (Fed. Cir. 2006); see also In re Oetiker, 977 F.2d 1443, 1447 (Fed.
Cir. 1992). As the Examiner found,
Wakefield ... is directed to decorative luminous ceilings,
Grove ... is directed to decorative sheets that can be used in
ceilings, Osumi ... is directed to decorative panes that can be
illuminated and that use adhesive to attach layers ... , Silvers is
directed to specific adhesives that are low in volatile organic
compounds (VOCs) and are non-flammable, [and] Kacheria ...
is directed to lighting fixtures.
(Ans. 2-3 (citing Wakefield col. 1; Grove ,r 2; Osumi ,r,r 1, 2, 23; Kacheria
col. 1); see also Final Act. 5 (citing Silvers ,r,r 22, 23)). Accordingly,
Appellant has not identified reversible error in the Examiner's explanation
as to how these references are related.
Furthermore, the Examiner has provided motivations and reasoning as
to why one of ordinary skill in the art would have combined the cited
references. For example, the Examiner suggests modifying Wakefield's
composite light diffusing panel by adhering Grove's fabric layer to it
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because doing so would have provided a more aesthetically pleasing panel
that is free of undesirable wrinkles (Final Act. 4, ,r 8).
Likewise, the Examiner explained that bonding Grove's adhesive
fabric to Wakefield's light diffusing composite panel by using a bonding
adhesive as suggested by Osumi would have provided a less expensive and
easier construction in comparison to using mechanical fasteners (id. at 4--5,
i1 10).
With regard to paragraph 12 of the Final Office Action, there is no
dispute that the claimed adhesive density range of 0.5-2 g/ft.2 overlaps
Silvers' adhesive application in a density equivalent to 1.82-2.69 g/ft.2 (see
Br. 13). Where a claimed range overlaps a prior art range, a prima facie case
of obviousness exists. In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir.
2003). As the Examiner determined, it would have been obvious to the
ordinarily skilled artisan to bond Grove's decorative layer to Wakefield's
composite light diffusing panel using Silvers' adhesives, which are low in
VOCs and non-flammable, in the claimed adhesive density range (Final Act.
5---6, ,r 12 ( citing Silvers ,r,r 22, 23) ).
In paragraph 13 of the Final Office Action, the Examiner finds, inter
alia, that because Silvers' adhesive density range renders the claimed
adhesive density range obvious, the modified composite light diffusing panel
comprising Grove's decorative fabric layer would have been unsaturated
such that the loss of light diffusion properties is prevented. In other words,
the Examiner has provided a well-reasoned analysis of how and why the
ordinarily skilled artisan would have reasonably expected that the modified
decorative fabric layer made by a similar process would possess the light
diffusion properties recited in the claim. On this record, Appellant has not
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met the burden of showing that the Examiner's proposed decorative fabric
layer does not possess the claimed unsaturated feature and light diffusing
property. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (explaining that
"[ w ]here ... the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed
product.").
Accordingly, Appellant's arguments do not persuasively address the
Examiner's reasoning in paragraphs 8, 10, 12, and 13 of the Final Office
Action, which supports the findings and conclusions in the stated rejection.
Therefore, Appellant's arguments are insufficient to convince us of
reversible error in the Examiner's rejection.
Appellant argues that one of ordinary skill in the art concerned with
providing a ''fully light diffusing panel as claimed" would not have
considered Wakefield's teachings (Br. 9).
We are not persuaded by this argument because it is directed to
limitations not recited in either independent claims 10 or 12, which are silent
regarding any required amount of light diffused by the panel. As the
Examiner found, Wakefield teaches luminous panels that provide light
diffusion (Ans. 4 ( citing Wakefield col. 1, 11. 28-32)).
Appellant further argues that Wakefield is not pertinent to solving the
problem of preventing unwanted fabric movement in a light diffusing panel
because Wakefield does not include any fabric (Br. 9; see also id. at 11 ).
Appellant's argument, however, attacks the references individually
instead of addressing what the combined teachings of the prior art would
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have suggested to the ordinarily skilled artisan. In re Keller, 642 F.2d 413,
425 (CCPA 1981). In this case, the Examiner finds that Wakefield teaches
that the configurations or surface finish of a ceiling panel can provide light
diffusing effects (Ans. 4--5 (citing Wakefield col. 2, 11. 43--46)). The
Examiner further finds that Grove would have suggested using decorative
sheets that can be used in ceilings (Final Act. 4 ). In other words, the
Examiner modifies Wakefield's composite panel by adhering Grove's fabric
layer to the panel surface to thereby provide light diffusion and a more
aesthetically pleasing panel. Although Appellant argues that Wakefield does
not teach a light transmitted fabric layer as recited in claims 10 and 12,
Appellant's arguments do not address this combination of the prior art
(Br. 9).
Appellant argues that there would have been no reason to apply
Grove's sheet to Wakefield's corrugated panel because this would have
resulted in a wrinkled sheet (id. at 10). Appellant further argues that
Wakefield's corrugations already "provide the decorative and light-diffusing
features" (id.).
The Examiner finds, however, that Wakefield teaches panels that lack
corrugations ( Ans. 5 ( citing Wakefield col. 3, 11. 66-85) ). The Examiner
further finds Wakefield teaches that corrugations are decorative and
Kacheria teaches that a lack of surface texturing can provide a desired
decorative effect (Final Act. 7; Ans. 5). Thus, we discern no reversible error
in the Examiner's reasoning that the choice of a smooth inner surface would
have been a matter of choosing a desired decorative effect between
Wakefield's corrugations and Kacheria's lack of surface texturing (Final
Act. 7).
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Appellant argues that Wakefield requires that the corrugated inner
surface and the matrix are interconnected for rigidity, whereas the instant
claims require that the matrix and the inner surfaces do not contact each
other (Br. 10).
The Examiner finds, however, that Wakefield does not require either
corrugations or an interconnection (Ans. 5 ( citing Wakefield col. 3, 1. 66-
col. 4, 1. 20)). Moreover, we agree with the Examiner that Grove's
decorative fabric would have prevented contact between the matrix and the
flat inner surface in the modified composite light diffusing panel (Final Act.
11 ).
Appellant argues that Grove requires that the decorative veil must be
"applied to the outer surface of a wall" (Br. 11-12 (citing Grove ,r,r 2, 13)
( emphasis added)). Appellant further argues that this external placement is
mandatory because Grove's invention works only in this configuration (Br.
12).This argument is unpersuasive.
We agree with the Examiner that Grove does not limit the decorative
veil's presence to the exterior (Ans. 6). Rather, Grove teaches the treatment
of materials that are subsequently used in various surface coverings (see,
e.g., Grove ,r,r 1-3). Thus, Appellant's argument fails to identify reversible
error in the Examiner's conclusion that it is arbitrary whether Grove's
decorative veil is applied to the outer surface or the inner surface of
Wakefield's spaced apart lites (Final Act. 3).
Appellant argues that Osumi' s sheet "is not similar to the claimed
adhered fabric of the subject invention" (Br. 12).
Appellant's argument, however, attacks Osumi individually instead of
addressing what the combined teachings of the prior art would have
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suggested to the ordinarily skilled artisan. Keller, 642 F.2d at 425. Here,
the Examiner finds that Osumi teaches low cost ways of adhering layers in a
decorative light transmissive panel (Ans. 7). Thus, Appellant's arguments
have not identified reversible error in the Examiner's conclusion that Osumi,
in combination with the other references, discloses the presently claimed
composite light diffusing panel.
Appellant argues that Kacheria's surface modification of a lighting
device to provide selective light emission teaches away from the presently
claimed composite light diffusing panel (Br. 12 (citing Kacheria col. 1, 11.
51-56)).
We, however, agree with the Examiner that this disclosure is directed
to one embodiment and thus it is not required for all of Kacheria's
embodiments. Therefore, we do not find that Kacheria's disclosure teaches
away; it does not indicate that "the line of development flowing from the
reference's disclosure is unlikely to be productive of the result sought by the
applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). As set forth
above, the Examiner finds that Kacheria teaches that a lack of surface
texturing can provide a desired decorative effect (Ans. 7). Thus, Appellant's
arguments have not identified reversible error in the Examiner's conclusion
that Kacheria, in combination with the other references, discloses the
presently claimed composite light diffusing panel.
Thus, based on this record, we sustain this rejection.
REJECTION (II):
The Examiner's findings and conclusions regarding Wakefield,
Grove, Osumi, Silvers, Kacheria, and Milburn '558, are located on pages
16-1 7 of the Final Office Action.
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Appellant argues that Milburn '558's disclosure, i.e., that a large
amount of adhesive will guarantee a uniform appearance, whereas a lesser
amount of adhesive may appear aesthetically displeasing, "is not enough" to
render obvious an adhesive with a density of 0.5 g/ft.2, as recited in claim 2
(Br. 13; see Milburn '558 col. 5, 11. 13-26).
Appellant, however, does not dispute that the adhesive density range
recited in claim 10 of 0.5-2 g/ft.2 overlaps Silvers' adhesive application in a
density equivalent to 1.82-2.69 g/ft.2 (see Br. 13). Furthermore, Appellant
does not dispute the Examiner's finding that the adhesive density is a result
effective variable with regard to the cost and appearance of the resultant
glass composite (id.; see also Final Act. 17). Appellant, moreover, does not
allege any criticality with respect to an adhesive applied at a density of about
0.5 g/ft.2 (see Br. 13).
Therefore, the preponderance of the evidence favors the Examiner's
finding and conclusion that, in the absence of unexpected results, it would
have required routine experimentation to determine the optimum value of a
result effective variable, such as an adhesive applied at a density of about 0.5
g/ft.2
Thus, based on this record, we sustain this rejection.
REJECTION (III):
Appellant does not separately argue for reversal of this rejection to
claims 3 and 4 (see generally id. at 6-13). Rather, Appellant relies on the
unpersuasive arguments made for reversal of the rejection of claim 10.
Thus, based on this record, we sustain this rejection.
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CONCLUSION
Accordingly, on this record and for the above reasons, we sustain the
35 U.S.C. § 103(a) rejections (I}-(III) of claims 2---6 and 8-12 over the cited
prior art.
DECISION
The Examiner's § 103(a) rejections are 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)(l )(iv).
AFFIRMED
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