Ex Parte Schitter

Patent Trial and Appeal Board

Nov 12, 2014

11575283 (P.T.A.B. Nov. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LEONHARD SCHITTER
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Appeal 2012-0088381,2
Application 11/575,2833
Technology Center 3600
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Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
JAMES A. WORTH, Administrative Patent Judges.

WORTH, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 3–5, 9–27, 29–34, and 36–50. We have jurisdiction
under 35 U.S.C. §§ 134 and 6(b). Appellant appeared for oral hearing on
October 30, 2014.
We AFFIRM-IN-PART.

1 The record includes a transcript of the oral hearing held October 30, 2014.
2 Our decision refers to the Appellant’s Supplemental Appeal Brief (“App.
Br.,” filed Dec. 22, 2011) and Reply Brief (“Reply Br.,” filed May 16,
2012), and the Examiner’s Answer (“Ans.,” mailed Mar. 16, 2012).
3 According to Appellant, the real party in interest is M. KAINDL, Austria
(App. Br. 2).
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Introduction
Appellant’s disclosure relates to a lightweight panel. The
Specification discloses that the lightweight panel is manufactured as part of
an “endless panel,” which is greater in length than the end product and
“joined, not in intervals, but rather continuously” (Spec. 3, l. 30 – 4, l. 1; 6,
ll. 1–4).
Claims 19 and 20 are the independent claims on appeal. Claim 20,
reproduced below, is illustrative of the subject matter on appeal:
20. A lightweight panel comprising
cover layers that are connected on both sides with bars;
a solid insert in an at least an interior area of the cover
layers and configured to resist loads; and
an insert positioned within an area within the bars and
which is interrupted by the solid insert.

App. Br. 21, Claims App.

Rejections on Appeal
The Examiner maintains, and the Appellant appeals, the following
rejections:
1) Claims 20 and 22 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Opferbeck (US 5,832,692, iss. Nov. 10, 1998);
2) Claims 3, 9–19, 21, 23–27, 29, 31–34, 36–42, and 45–50 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Opferbeck;
3) Claims 4, 5, 43, and 44 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Opferbeck in view of Borup (US 3,127,304, iss.
Mar. 31, 1964); and
4) Claim 30 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Opferbeck in view of Bier (US 5,253,409, iss. Oct. 19, 1993).
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ISSUES
Did the Examiner err in rejecting claims 20 and 22 under 35 U.S.C.
§ 102(b) as being anticipated by Opferbeck?
Did the Examiner err in rejecting claims 3, 9–19, 21, 23–27, 29, 31–
34, 36–42 and 45–50 under 35 U.S.C. § 103(a) as unpatentable over
Opferbeck?
Did the Examiner err in rejecting claims 4, 5, 43 and 44 under
35 U.S.C. § 103(a) as unpatentable over Opferbeck in view of Borup?
Did the Examiner err in rejecting claim 30 under 35 U.S.C. § 103(a)
as unpatentable over Opferbeck in view of Bier?

ANALYSIS
Independent claim 20
We are unpersuaded by Appellant’s argument (App. Br. 5) that
Figures 1a and 1b of Opferbeck do not disclose (1) a solid insert in at least
an interior area of the cover layers and (2) inserts positioned between two
bars. Opferbeck, with respect to these figures, describes that the two outer
plywood sheets 2 have rails 4 and 6 glued to the unfinished inner surfaces of
the sheets 2, such that there is a recess defined by the rails 4 (Opferbeck,
col. 1, ll. 53–60). In this connection, it is understood that Figure 1a is
intended to be an aerial view of the inside of the panel rather than a cross-
section view, where the sheets 2 are on the outside and the rails 4 and 6
define a recess. We agree with the Examiner Opferbeck’s rail 6 is a solid
insert, which is in an interior area of the cover layers 2, and honeycomb
filler 5 is an insert, which is in an interior of the bars 4 and is interrupted by
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the solid insert 6. Thus, we sustain the rejection of claim 20 under 35 U.S.C.
§ 102(b).

Dependent claim 22
We are unpersuaded by Appellant’s argument (App. Br. 7) that
Opferbeck’s rail 6 is not “a solid insert . . . away from an edge of the panel,”
as recited by claim 22. Specifically, we are unpersuaded by Appellant’s
argument that claim 22 necessarily embodies insert 92 of Figure 3 of the
Specification. Under the broadest reasonable interpretation standard
applicable to this proceeding, the term “edge” in the phrase “away from an
edge of the panel” refers to the outer boundary of the panel, i.e., the outer
boundary of the side bars, rather than to the inner boundary of the side bars.
See In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000) (broadest reasonable
interpretation standard). This would encompass insert 91, in addition to
insert 92, of Figure 3 of the Specification. To the extent that the Appellant
may have intended something different, such an intention is not
commensurate with the scope of the claim limitation. In this connection, we
agree with the Examiner that Opferbeck’s rail 6 is “away from an edge of
the panel.” Thus, we sustain the rejection of claim 22 under 35 U.S.C.
§ 102(b).

Independent claim 19
We are unpersuaded by Appellant’s argument (App. Br. 9–10) that
Opferbeck does not disclose an insert and bars glued to the cover layer. As
above, Opferbeck (col. 1, ll. 59–60) discloses that “[t]he rails 4 and 6 are
glued to the unfinished surfaces of the sheets 2.” We are unpersuaded by
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Appellant’s argument (Reply Br. 8–9) that only horizontal surfaces 9c are
glued to sheets 2.
We are unpersuaded by Appellant’s argument (App. Br. 9–14) that “a
panel of an endless panel,” is not obvious in view of Opferbeck’s panel. The
Specification discloses a manufacturing process that forms an intermediate
set of panels, termed an “endless panel,” which can be divided into
individual panels (Fig. 2; Spec. 6, ll. 1–4; 7, ll. 1–5). However, claim 19 is
not directed to a method of manufacturing a panel by creating an endless
panel and subdividing the endless panel; rather, claim 19 recites the
apparatus, i.e., “a panel of an endless panel.” We agree with the Examiner
that Opferbeck’s panel constitutes the recited “panel” and that the “endless
panel” is a duplication of Opferbeck’s panel (Ans. 9 (citing In re Harza, 274
F.2d 669 (CCPA 1960); Ans. 23 (diagram)). We are unpersuaded by
Appellant’s argument that the endless panel is a reduction in parts rather
than a duplication (App. Br. 8–13; Reply Br. 10). First, Appellant does not
dispute that the Examiner’s rejection involves the duplication of certain
parts. Second, claim 19 does not recite a mode of manufacture for the
“endless panel,” that would preclude the Examiner’s joining of two panels
into adjacent panels separated by one side bar (Ans. 23). We are
unpersuaded by Appellant’s argument (Reply Br. 7) that Opferbeck’s panel
teaches away from a “panel of an endless panel” for similar reasons, i.e.,
claim 19 does not specify a mode of manufacture. Thus, we sustain the
rejection of claim 19 under 35 U.S.C. § 103(a).

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Dependent claims 3 and 9
We are unpersuaded by Appellant’s argument (App. Br. 15) that
Opferbeck’s panel at Figure 1a does not show “the endless panel being
divided into several webs in the area of the longitudinal bars,” as recited by
claim 3. Appellant does not propose a special definition for “webs.” We
agree with the Examiner (Ans. 5–6, 24–25) that the Opferbeck’s honeycomb
material 5 constitutes “webs” and that rails 4 and 6 constitute “longitudinal
bars” that divide the panel. Thus, we sustain the rejection of claim 3 under
35 U.S.C. § 103(a).
Appellant does not present separate arguments for the patentability of
claim 9 from claims 3 and 19 (See App. Br. 15). Thus, we sustain the
rejection of claim 9 under 35 U.S.C. § 103(a), for similar reasons as for
claims 3 and 19.

Dependent claims 16, 17, 49, and 50
We are persuaded by Appellant’s argument (App. Br. 15–17) that the
Examiner has not shown that Opferbeck’s insert is “expansible,” as recited
by claims 16, 17, 49, and 50. Although the Examiner (Ans. 7–8) states that
Opferbeck’s insert is “expansible” because it is “capable of expanding”
“under certain circumstances,” the Examiner has not made factual findings
or taken Official Notice with respect to Opferbeck’s honeycomb material 5
which would explain what the honeycomb material is and under what
circumstances it would expand. We do not sustain the rejection of claims
16, 17, 49, and 50 under 35 U.S.C. § 103(a).

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Dependent claims 21, 23, 24, 37, 39–42
We are unpersuaded by Appellant’s argument (App. Br. 17) that
Opferbeck does not disclose a panel, “wherein the solid insert protrudes
more than 5 cm from an edge of the panel,” as recited by claim 21. We
agree with the Examiner’s determination that this is not a patentable
distinction over the prior art because it is the optimization of a result
effective variable to maximize the strength of the system which is
discoverable through routine experimentation (Ans. 10 (citing In re Aller,
220 F.2d 454 (CCPA 1955)). We note that Appellant does not argue
unexpected results for the claimed value. We are unpersuaded by
Appellant’s argument (Reply Br. 15–16) that Opferbeck cannot be modified
so that the solid insert protrudes. Appellant does not provide evidence in
support of this argument. We, therefore, sustain the rejection of claim 21
under 35 U.S.C. § 103(a).
For similar reasons, we are unpersuaded by Appellant’s argument
(App. Br. 17) that Opferbeck does not disclose a panel, “wherein the solid
insert forms a round insert having a diameter of 20 cm, and does not form an
edge of the panel,” as recited by claim 23. Thus, we sustain the rejection of
claim 23 under 35 U.S.C. § 103(a).
Appellant does not argue the patentability of claims 24, 37, and 39–42
separately from arguments as to claim 21. We, therefore, sustain the
rejection of claims 24, 37, 39–42 under 35 U.S.C. § 103(a) for similar
reasons.

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Dependent claims 4 and 43
We are unpersuaded by Appellant’s argument (App. Br. 17–18) that
Borup (col. 7, ll. 53–60) does not disclose that two cover layers can be of
different “material thickness,” as recited by claims 4 and 43. The Examiner
correctly finds that Borup (col. 7, ll. 53–60) discloses “application of metal
skins of different thicknesses.” We are unpersuaded by Appellant’s
interpretation that this disclosure does not apply to a single panel. The
Borup invention is directed to the problem of manufacturing panels with
metal skins of different thicknesses and teaches that warping of the panel
can be avoided in such situations if tensile forces are correctly chosen. E.g.,
Borup, col. 3, l. 69 – col. 4, l. 9. Thus, we sustain the rejection of claims 4
and 43 under 35 U.S.C. § 103(a).

Dependent claims 5 and 44
We are unpersuaded by Appellant’s argument (App. Br. 17–18) that
Borup (col. 7, ll. 53–60) does not disclose two cover layers with “different
mechanical load capacity,” as recited by claim 5 and 44. We agree with the
Examiner (Ans. 16–17, 28) that Borup’s cover layers have different
thicknesses that result in different mechanical load capacities. We,
therefore, sustain the rejection of claims 5 and 44 under 35 U.S.C. § 103(a).

Dependent claim 18
We are unpersuaded by Appellant’s argument (App. Br. 16) that
Opferbeck discloses only a single cover layer 2 in Figures 1a and 1b. As
above, the Examiner (Ans. 26) correctly finds that Opferbeck discloses two
veneer sheets. Opferbeck’s disclosure (col. 1, l. 54), explaining Figures 1a
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and 1b, discloses two outer plywood sheets 2. We are unpersuaded by
Appellant’s argument (Reply Br. 6, 8) that the second outer plywood sheet is
positioned differently than the first outer plywood sheet or that the
Examiner’s rejection is based on conjecture. An aerial view of the inside of
an object is common in technical specifications and diagrams and does not
deprive the viewer of an understanding of the structure of the panel as a
whole. We, therefore, sustain the rejection of claim 18 under 35 U.S.C.
§ 103(a).

Claims 10–15, 25–27, 29–34, 36, 38, and 45–48
Appellant does not separately argue the patentability of claims 10–15,
25–27, 29–34, and 36, 38, and 45–48 from claim 19, from which they
depend. We sustain the rejection of claims 10–15, 25–27, 29–34, and 36,
38, and 45–48 under 35 U.S.C. § 103(a) for similar reasons as for claim 19,
above.

DECISION
The decision of the Examiner to reject claims 3–5, 9–15, 18–27, 29–
34, and 36–48 is affirmed.
The decision of the Examiner to reject claims 16, 17, 49, and 50 is
reversed.
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)(1)(iv).

AFFIRMED-IN-PART
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