Ex Parte Pervan et al

Patent Trial and Appeal Board

Jul 28, 2017

14089928 (P.T.A.B. Jul. 28, 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.
14/089,928 11/26/2013 DARKO PERVAN 1033462-000333 5062
21839 7590 08/01/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
MINSKEY, JACOB T
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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 DARKO PERVAN,
KENT LINDGREN, EDDY BOUKE, JAN JACOBSSON,
NICLAS HAKANSSON, and GORAN ZIEGLER
Appeal 2016-001258
Application 14/089,928
Technology Center 1700
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 21—47 of Application
14/089,928 under 35 U.S.C. § 103(a) as obvious. Final Act. (Oct. 15, 2014)
4—5. Appellants1 seek reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). A hearing was held on July 20, 2017. We have jurisdiction under
35 U.S.C. §6.
For the reasons set forth below, we AFFIRM.
1 VALINGE INNOVATION AB is identified as the real party in interest.
Appeal Br. 2.
Appeal 2016-001258
Application 14/089,928
BACKGROUND
The present application generally relates to the recycling of laminate
flooring based on a separation of the panels into particles which are then
mixed with a binder and formed into a new sheet shaped material for use in
building panels. Abst.
Claim 21 is representative of the pending claims and is reproduced
below:
21. A building panel comprising a core, a surface layer and a
balancing layer, wherein the balancing layer comprises
particles from recycled floor panels.
Appeal Br. Claims App. 1.
REJECTIONS
On appeal, the Examiner maintains the following rejection:
Claims 21—47 are rejected under 35 U.S.C. § 103(a) as obvious over
Miller et al. (US 2003/0208980 Al, pub. Nov. 13, 2003) (hereinafter
“Miller”) in view of Fischer et al. (US 6,521,326 Bl, iss. Feb. 18, 2003)
(hereinafter “Fischer”). Final Act. 4—5.
DISCUSSION
The Examiner rejected claims 21-47 as obvious over Miller in view of
Fischer. Id. Appellants allege error on several bases. Appellants argue that
neither reference teaches recycling particles from floor panels, that the
Examiner has not shown adequate reason to combine the teachings of the
references, and that the dependent claims are separately patentable. We first
address the Examiner’s stated reason to combine the teachings of the prior
art references.
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Reason to Combine/Hindsight
Appellants argue that the Examiner has not identified a sufficient
reason why a person of skill in the art would have been motivated to
combine the teachings of Miller and Fischer. Appeal Br. 6—8. Appellants
additionally argue that the Examiner relied upon hindsight in combining the
teachings of the references at issue. Id. at 8—11.
The Examiner finds that a person of ordinary skill in the art would
have been motivated to combine the teaching of Fischer (that a material can
be recycled into a new material of the same kind) with the floor panel
technology of Miller “for the benefit of producing products that include the
properties of the recycled materials in a manner that is known to the skilled
worker as well as cutting down on the cost of raw materials.” Final Act. 4—5
19.
Appellants argue that the Examiner’s interpretation of Fischer’s
teaching, that a material can be recycled to make a like product, is too broad,
and that Fischer should be limited to the products identified therein, most of
which are in the automotive field. Appeal Br. 7. Asa result, Appellants
argue, the combination of Miller and Fischer would “at most” teach a person
of ordinary skill to make Miller’s floor panel with recycled automotive
products (or other products listed in Fischer). Id.
In a similar vein, Appellants argue that the Examiner relies upon
hindsight in combining the teachings of Miller and Fischer. Appeal Br. 8—
11. Appellants argue that “[o]ne drawback of prior art building panels
includes the manner in which they are disposed” and that this drawback is
not recognized by Miller or Fischer. Id. at 9.
Appellants view the teachings of Fischer too narrowly. A “reference
must be considered not only for what it expressly teaches, but also for what
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Application 14/089,928
it fairly suggests.” In re Baird, 16 F.3d 380, 383 (Fed.Cir.1994). “A person
of ordinary skill is also a person of ordinary creativity, not an automaton.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Fischer teaches
composite laminates that are suitable for recycling such that they are used as
inputs that include the properties of the recycled materials. Fischer 14:9—18.
Moreover, a recognition of the benefits of recycling is not unique to
the Applicants. Miller teaches to use recycled materials in making floor
panels. Miller || 19, 21. Similarly, Fischer teaches that a product is often a
suitable recycling input for like products. A person of ordinary skill in the
art would readily consider floor panels as a recycling input for floor panel
fabrication “for the benefit of producing products that include the properties
of the recycled materials.” “[FJamiliar items may have obvious uses beyond
their primary purposes, and in many cases a person of ordinary skill will be
able to fit the teachings of multiple patents together like pieces of a puzzle.”
KSR, 550 U.S. at 420. Nor is a reference limited by the problem it sought to
solve. Id. at 415.
Accordingly, Appellants have not shown error in the Examiner’s
stated reason to combine the teachings of Miller and Fischer.
Particles from Recycled Floor Panels
Appellants additionally argue that neither Miller nor Fischer teaches
to recycle particles from recycled floor panels.
The Examiner concedes that neither reference explicitly teaches to
make floor panels from recycled floor panel components. Final Act. 4 17;
Answer 7. Rather, the Examiner finds that the combined teachings, taken as
a whole, suggest the use of recycled floor panels in making building panels.
Answer 7—8. Miller teaches that “[ojther materials may also be utilized to
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Application 14/089,928
construct the floor panel, such as other natural, recycled or synthetic
materials.” Miller 119 (emphasis added); Final Act. 4 | 9. Relevant to
claims 21—32, which concern the balancing (backing) layer, Miller
additionally teaches that “backing layers 24 may be constructed of other
materials providing suitable moisture resistance, such as phenolic resins or
other natural, synthetic or recycled materials.” Miller 121 (emphasis
added). The Examiner further relies upon Fischer as teaching composite
molding and laminates that are designed to be suitable for recycling “for the
benefit of producing products that include the properties of the recycled
materials.” Final Act. 4 17. Moreover, the Specification states that “[i]t is
known that fibers could be recycled during the production of a HDF2
material. It is also known that old floor panels could be used as packaging
material.” Spec. 4; see PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491
F.3d 1342, 1362 (Fed.Cir. 2007) (“Admissions in the specification regarding
the prior art are binding on the patentee for purposes of a later inquiry into
obviousness.”).
“In determining whether obviousness is established by combining the
teachings of the prior art, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
GPACInc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal quotations
omitted). “[T]he analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR, 550 U.S. at 418.
2 The Specification teaches that “HDF” stands for high density fiberboard, a
common material used to make the cores of flooring panels. Spec. 3.
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Application 14/089,928
Here, it was known in the art to recycle portions of floorboards (e.g.
“fibers”) for various uses, including HDF, a component of some floor
panels. Spec. 3,4. It was additionally generally known that floor panels,
including floor panel backings, may be made from recycled materials.
Miller H 19, 21. Moreover, Fischer teaches a polymer molding that may be
recycled for use in similar polymer moldings. Fischer 14:12—15 (“The
recycled materials obtained from the moldings or molding compositions
according to the invention may be reprocessed to give moldings which have
at least one of the material properties described above.”). Taken as a whole,
the teachings of Miller and Fischer would have suggested the use of particles
from recycled floor panels for use in making building panels to a person of
ordinary skill in the art.
Dependent Claims
Appellants raise a number of arguments in support of the patentability
of several dependent claims. Appeal Br. 11—13.
First, Appellants argue that Fischer lacks any teaching to employ
recycled aluminum oxide as required by claims 23 and 37. Id. at 11. The
Examiner found that Miller teaches that “aluminum oxide is present in the
backing and recycled layer [0021].” Final Act. 5111. Miller further
teaches that the backing layer may be constructed of “recycled materials.”
Miller 121.
Appellants assert that “[t]here is no reason one skilled in the art would
look to the recycling of polyester polymer in Fischer and have reason to use
particles from recycled floor panels that include aluminum oxide.” Appeal
Br. 11.
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Here, Appellants essentially assert the same argument as made
regarding the independent claims. As above, a person of ordinary skill in the
art would have known that floor panels may be used as a recycling input in
the fabrication of new floor panels. Similarly, a person of ordinary skill in
the art would have known that aluminum oxide may be used in the backing
layer to reinforce a melamine layer. Miller 121. Accordingly, a person of
skill in the art would have known that recycled aluminum oxide may be used
as a component in making floor panels as claimed.
Appellants additionally argue for the patentability of claims 23 and 37
on the basis that the inclusion of recycled aluminum oxide yields surprising
effects. Specifically, Appellants argue that it would have been expected that
aluminum oxide would have a negative effect on the properties of the new
floor panel however “aluminum oxide can be presented in a manner to not
have a negative effect on the properties of a new floor panel.” Appeal Br. 11
(citing Spec. 5:18—25).
The Specification teaches that it is surprising that use of recycled
materials such as aluminum oxide and melamine particles and wood fibers
coated or impregnated with cured binders will not negatively impact the new
panel “if such materials are mechanically cut into small particles and mixed
with a suitable binder and pressed to a panel.” Spec. 5.
The Examiner finds that the claimed surprising effect is not
commensurate with the scope of the claims because the claim does not limit
the manner in which the recycled matter is processed. Answer 8—9. That is,
the claim may include material not mechanically cut into small particles and
mixed with a suitable binder. The claim is, thus, broader than the claimed
range of surprising results.
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An “applicant's showing of unexpected results must be commensurate
in scope with the claimed range.” In re Peterson, 315 F.3d 1325, 1330-31
(Fed. Cir. 2003) (quoting In re Greenfield, 571 F.2d 1185, 1189 (CCPA
1978) (“objective evidence of non-obviousness must be commensurate in
scope with the claims which the evidence is offered to support.”)). Here, the
claim is broader than the stated unexpected results.
The Examiner further finds the claim of surprising results to be
unsupported by evidence. Appeal Br. 8—9. “[W]hen unexpected results are
used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art.” In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Here, there is no comparison of
the claimed surprising result with the closest (or any) prior art. See also In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“unexpected results must
be established by factual evidence [m]ere argument or conclusory statements
in the specification does not suffice”).
In view of the foregoing, Appellants have failed to demonstrate error
in the Examiner’s determination that it would have been obvious to use
aluminum oxide recycled from floor panels as an input in new floor panels
or of no unexpected results regarding claims 23 and 37.
Claim 25 is similar to claims 23 and 37 but requires “the particles
from recycled floor panels comprise decorative paper, melamine flakes and
aluminum oxide particles.” Appeal Br., Claims App. 1. Appellants appear
to construe claim 25 to require particles made up of each of the enumerated
materials (decorative paper, melamine flakes and aluminum oxide). Appeal
Br. 12.
During examination, claim terms must be given their broadest
reasonable construction consistent with the Specification. In re ICON
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Application 14/089,928
Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). The
Specification provides that
[t]he cut material particles comprise three types of material
compositions as shown in figure Id. Some particles are mainly
wood fibers 14 or wood fiber chips, some comprise mainly parts
(10,12) from the surface layer 5, such as mainly decorative paper
10, melamine flakes 25 from the overlay 13 and aluminum oxide
12 particles and finally parts comprising melamine 15 from the
balancing layer.
Spec. 7. Thus, the Specification describes particles made largely or
completely of one constituent.
Giving the term “particles” its broadest reasonable interpretation in
view of the Specification, we determine it to include both particles
comprising several constituents and particles of a single constituent.3
As determined above in regard to claims 23 and 37, a person of
ordinary skill in the art would have known that floor panels may be used as a
recycling input in the fabrication of new floor panels. Each of the claimed
constituents—decorative paper, melamine flakes and aluminum oxide
particles—are known floor panel components. Miller || 19—22. The
combined teachings of Miller and Fischer would have suggested the use of
such known components as a recycling input to a person of ordinary skill in
the art as required by claim 25. For the same reasons, a similar result
obtains for claims 24 and 38 which require “particles from recycled floor
panels comprise aluminum oxide, melamine particles and wood fibers
coated or impregnated with cured binders,” Appeal Br., Claims App. 1,3,
and for claims 41, 44, and 47 which require that “the particles from recycled
3 We do not here decide whether “particles from recycled floor panels,”
found in independent claim 21, is a product-by-process limitation.
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floor panels comprise wood fibers coated or impregnated with cured
binders.” Id. at 4.
Claim 31 requires that the recycling input be a laminate floor panel
“comprising a wood fiber based core, a decorative surface layer, the
decorative surface layer comprising a thermosetting resin, and aluminum
oxide particles.” Id. at 2. As above, these are all known floor panel
components. Miller || 19—24. The combined teachings of Miller and
Fischer would have suggested the use of such known components as a
recycling input to a person of ordinary skill in the art as required by claim
31.
Appellants additionally argue that the Examiner erred in rejecting
claims 39, 40, 42, 43, 45, and 46. Appeal Br. 13. These claims concern the
size of the particles making up the balancing layer (claims 39 and 40), the
surface layer (claims 42 and 43), or each of the core, balancing layer, and
surface layer (claims 45 and 46). Appeal Br., Claims App. \-A. Appellants
assert that neither Miller nor Fischer teach the size of particles to be derived
from recycled floor panels and therefore fail to state a prima facie case of
unpatentability. Id.
“[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in ‘notifying] the
applicant... by stating the reasons for [its] rejection, or objection or
requirement, together with such information and references as may be useful
in judging of the propriety of continuing the prosecution of [the]
application.’” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting 35
U.S.C. § 132).
In the Final Rejection, the Examiner relies upon Fischer as teaching
that “the particle size is preferably less than 10 mm and can be broken down
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to a diameter of 60 microns.” Final Act. 5 114 (citing Fischer col. 5).
Appellants do not directly dispute this teaching or its applicability. See App.
Br. 13 (arguing that “Miller and Fischer ... do not establish prima facie
obviousness over Claims 39, 40, 42, 43, 45, and 46 for at least the reasons
discussed above). Accordingly, Appellants fail to provide sufficient
evidence to overcome the Examiner’s prima facie case of unpatentability of
these claims.
CONCLUSION
In view of the foregoing, the rejection of claims 21—47 as obvious
over Miller in view of Fischer 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)(l)(iv).
AFFIRMED
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