Ex Parte Senior

Patent Trial and Appeal Board

Dec 12, 2018

14449184 (P.T.A.B. Dec. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/449,184 08/01/2014
26158 7590 12/14/2018
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
FIRST NAMED INVENTOR
Paul D. Senior
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.
P63107 1020US.l 3542
EXAMINER
PLESZCZYNSKA, JOANNA
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
12/14/2018 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):
IPDocketing@wbd-us.com
BostonPatents@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL D. SENIOR
Appeal2018---002935
Application 14/449,184
Technology Center 1700
Before BEYERL YA. FRANKLIN, JEFFREY B. ROBERTSON, and
SHELDON M. MCGEE, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1--4, 7-10, 12-17, and 20. (Appeal Br. 8-9.) We
have jurisdiction pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
1 This Decision includes citations to the following documents:
Specification filed August 1, 2014 ("Spec."); Final Office Action dated June
9, 2017 ("Final Act."); Appeal Brief filed October 25, 2017 ("Appeal Br.");
Examiner's Answer dated December 27, 2017 ("Ans."); and Reply Brief
filed January 29, 2018 ("Reply Br.").
2 Appellant identifies Greene Rev LLC and Patriot Timber Products, LLC
as the real parties in interest. (Appeal Br. 2.)
Appeal2018---002935
Application 14/ 449, 184
THE INVENTION
Appellant states that the invention relates to plywood panels, and
more specifically to plywood underlayment and plywood wall paneling.
(Spec. ,r 2.)
Claim 1, is representative and reproduced below from the Claims
Appendix to the Appeal Brief:
1. Underlayment, comprising:
a) a substrate comprising:
i) an engineered veneer face having a plurality of
elongated wood strips including wood grain with each
wood grain in each of the wood strips extending
substantially along a length of the strip;
ii) a wood veneer back; and
iii) a wood core; and
b) a primer applied to at least one of the engineered
veneer face and the wood veneer back, the primer comprising:
i) polyvinyl acetate within a concentration range of
about 10% to about 20% by weight; and
ii) titanium oxide within a concentration range of
about 20% to about 30% by weight,
wherein the primer, after being dried, is water resistant to
provide an increased vapor barrier for the underlayment.
(Appeal Br. 18, Claim Appendix.)
Claims 10 and 17, directed to wall paneling and plywood headboard,
respectively, are similar in that each recites a primer of the same
composition applied to engineered veneer recited in claim 1. (Appeal Br.
19-22, Claim Appendix.)
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Application 14/ 449, 184
REJECTIONS
The Examiner rejected the claims under 35 U.S.C. § 103 as follows:
1. Claims 1--4, and 9 as obvious over Elliott et al. (US 6,085,813,
issued on July 11, 2000, "Elliott"), Guenther (US 3,616,127, issued
on October 26, 1971, "Guenther"), Ruffner, Jr. et al. (US
2011/0027601 Al, published on February 3, 2011, "Ruffner"),
Ting et al. (US 2013/0273353 Al, published on October 17, 2013,
"Ting"); and Lindemann et al. (US 5,169,884, issued on December
8 1992 "Lindemann")·
' ' '
2. Claims 7 and 8 as obvious over Elliott, Guenther, Ruffner, Ting,
Lindemann, and Danzer et al. (US 2010/0003488 Al, published on
January 7 2010 "Danzer")·
' ' '
3. Claims 10, 14, and 16 as obvious over Elliott, Guenther, Ruffner,
Ting, and Lindemann;
4. Claims 12 and 13 as obvious over Elliott, Guenther, Ruffner, Ting,
Lindemann, and Danzer;
5. Claim 15 as obvious over Elliott, Guenther, Ruffner, Ting,
Lindemann, and Leonardson et al. (US 2,782,468, issued on
February 26, 1957, "Leonardson"); and
6. Claims 17 and 20 as obvious over Elliott, Leonardson, Guenther,
Ruffner, Ting, and Lindemann.
(Final Act. 2-16; Ans. 2-16.)
Appellant argues the claims subject to the different grounds of
rejection together, with the exception of claim 17. (Appeal Br. 10-17.)
Accordingly, we select claims 1 and 17 as representative for disposition of
this appeal. 37 C.F.R. § 41.37( c )(1 )(iv).
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Application 14/ 449, 184
Rejection 1
ISSUE
As to claim 1, the Examiner found that Elliott discloses an
underlayment including a substrate with an engineered veneer face and a
wood veneer back, but that Elliot was silent as to an engineered veneer
having a plurality of elongated wood strips as required by the claim. (Ans.
3.) The Examiner found that Guenther discloses a veneer face having a
plurality of wood strips where the wood grain in each of the strips extends
substantially along the length of the strip, and determined that it would have
been obvious to form the veneer face of Elliott with a plurality of elongated
wood strips as disclosed in Guenther, because Elliott's underlayment is
formed of plywood and Guenther discloses that forming veneer faces of
plywood from elongated wood strips are known in the art. (Id.)
The Examiner found that Elliott does not disclose application of a
primer as required by claim 1, but the Examiner found that Ruffner discloses
application of a primer to wood that is liquid resistant and forms a vapor
barrier, where the primer comprises polyvinyl acetate and titanium dioxide.
(Ans. 3--4.) The Examiner determined that it would have been obvious to
have provided at least one of the face or back of Elliott's substrate with the
primer of Ruffner in order to make the substrate liquid resistant. (Ans. 4.)
The Examiner found that Ruffner does not specify the amounts of either
polyvinyl acetate or titanium dioxide recited in claim 1. (Id.) For the
amount of titanium dioxide, the Examiner turned to Ting, which the
Examiner found discloses a moisture barrier layer comprising titanium
dioxide in amounts overlapping the range recited in claim 6, i.e., "about 20%
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Application 14/ 449, 184
to about 30% by weight."3 (Id.) The Examiner determined that the
overlapping ranges of Ting and the claims established a prima facie case of
obviousness and that it would have been obvious to optimize the amount of
titanium dioxide in the primer in order to establish the desired finish on the
substrate. (Id.) As to the amount of polyvinyl acetate, the Examiner found
that Ruffner discloses that the polyvinyl acetate acts as binder in the primer
such that it would have been obvious to optimize the amount of polyvinyl
acetate in order to provide the primer with cohesive strength. (Ans. 4--5.)
The Examiner found that Lindemann teaches a coating binder composition
that can be used for wood and floors, where the composition comprises
polyvinyl acetate in amounts overlapping the range recited in claim 1, which
established a prima facie case of obviousness, and that it would have been
obvious to optimize the amounts disclosed by Lindemann to provide the
desired cohesive strength disclosed in Ruffner. (Id.)
Appellant argues that the Examiner has not made out a prima facie
case of obviousness for the rejected claims, by not providing sufficient
reasoning for the combination of Elliott and Guenther. (Appeal Br. 11.)
Appellant contends that it would not have been obvious to have combined
Elliott and Guenther, because Elliott is concerned with aesthetic damage and
has developed a process for avoiding scratches or other imperfections in the
exterior veneers of the finished plywood products and Guenther specifically
discloses the presence of grooves in the exterior veneers, which are clear
3 We observe that claim 6, dependent from claim 1, was canceled in the
Response dated March 6, 201 7, and that the limitation requiring the primer
to comprise titanium dioxide "within a concentration range of about 20% to
about 30% by weight," was added to now appealed claim 1.
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Application 14/ 449, 184
examples of the scratches and imperfections Elliott seeks to avoid. (Appeal
Br. 11-12.) Appellant argues that the Examiner relies on hindsight in the
way the prior art is combined, such that the Examiner has relied on "several
interim conclusions of obviousness instead of considering the claimed
invention as a whole." (Appeal Br. 14.) Appellant also contends that the
rejections should be withdrawn because Ting is non-analogous art. (Appeal
Br. 15-17.)
The dispositive issue is:
Has Appellant identified reversible error in the Examiner's
determination that claim 1 would have been obvious over the combination of
Elliot, Guenther, Ruffner, Ting, and Lindemann?
DISCUSSION
We are not persuaded by Appellant's argument that the Examiner
erred in combining Elliott and Guenther. At the outset, we observe that
although the Appellant contends that the Examiner has not provided a reason
to combine Elliott and Guenther, Appellant has not fully addressed the
Examiner's position set forth in the rejection as discussed above, i.e., that
one of ordinary skill in the art would have formed the veneer face of Elliott
from the known techniques utilizing wood strips as disclosed in Guenther.
Thus, we are not persuaded by Appellant's initial argument.
We also agree with the Examiner that Elliott is concerned with
aesthetic damage during the production of hardwood plywood in the
automated line process. (Ans. 17, citing Elliott, col. 1, 11. 33---67, col. 2, 11.
1-35.) We do not read Elliott's disclosure as being limited to the particular
aesthetic finish of the decorative plywood, but rather, Elliott's disclosure
relates to preventing incidental damage to the aesthetic finish as a result of
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Application 14/ 449, 184
processing, whatever that aesthetic finish may be. (See Elliott, col. 2, 11. 29-
35 .) Accordingly, we are unpersuaded by Appellant's argument that one of
ordinary skill in the art would not have combined Elliott and Guenther.
As to Appellant's arguments pertaining to the Examiner's alleged
reliance on improper hindsight, we are also not persuaded. Contrary to the
Appellant's arguments that the Examiner did not consider the claimed
invention as a whole based on the manner in which the references were
combined (Appeal Br. 14--15; Reply Br. 2-3), we are of view that the
Examiner's rejection discusses the combination of references without resort
to improper hindsight. In particular, we observe that when a rejection is
based on a combination of references, the order in which prior art references
are cited to the Appellant is of "no significance, but merely a matter of
exposition." In re Bush, 296 F.2d 491,496 (CCPA 1961).
In this case, as discussed above, the Examiner provided express
logical reasoning as to why one of ordinary skill in the art would have turned
to each of the prior art references in assessing the obviousness of the claims
as a whole without resorting to Appellant's Specification as a roadmap. The
Examiner provided express reasons why one of ordinary skill in the art
would have turned to Ruffner for the application of a primer containing
polyvinyl acetate and titanium oxide to wood, and appropriately cited Ting
and Lindemann for known amounts of those components in the primer in
view of the absence of such information in Ruffner. (See Ans. 4--5, 19.)
We are further not persuaded that Ting is non-analogous art.
Determining whether a reference is non-analogous art is a two-fold inquiry.
First, we must decide if the reference is within the field of the inventor's
endeavor; if it is not, we proceed to determine whether the reference is
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Application 14/ 449, 184
reasonably pertinent to the particular problem with which the inventor was
involved. See In re GPAC Inc., 57 F.3d 1573, 1577 (Fed. Cir. 1995); In re
Wood, 599 F.2d 1032, 1036 (CCPA 1979). "'A reference is reasonably
pertinent if, even though it may be in a different field from that of the
inventor's endeavor, it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor's attention in
considering his problem."' In re ICON Health and Fitness, 496 F.3d 1374,
1379-80 (Fed Cir. 2007) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992)). "In other words, 'familiar items may have obvious uses beyond
their primary purposes."' Id. at 1380 (quoting KSR Int'! Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1742 (2007)).
Initially, we agree with Appellant that Ting is not in the same field of
endeavor, Ting being directed to high barrier multilayer films incorporating
a biodegradable polymer layer and the claimed invention being directed to
primed wood panels. (Appeal Br. 15.) Thus, we focus our discussion on
whether Ting is reasonably pertinent to the particular problem with which
the inventor was involved.
The Examiner determined that Ting was analogous art because it
relates to a moisture barrier film and the instant invention is concerned with
a barrier that would stop moisture absorption by a wood panel. (Final Act.
1 7.) Appellant contends that Ting is not reasonably pertinent because Ting
does not make any suggestion that the films disclosed therein can be applied
to wood substrates, Ting discloses that the moisture barrier layer is optional,
and Ting is related to multilayer films. (Appeal Br. 16-17.)
We are not persuaded by Appellant's arguments that Ting is not
reasonably pertinent to the particular problem with which the inventor was
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Application 14/ 449, 184
involved. Consistent with the Examiner's position, the Specification
discloses that "there is a need for plywood panels that have an improved
vapor barrier, thereby increasing resistance to swelling, bowing, or
delamination that can occur when plywood is exposed to moisture." (Spec.
,r 3.) As the Examiner points out, Ting discloses a moisture barrier for use
on cellulosic materials, which although optional, is part of an embodiment in
Ting and is discussed in detail therein. (Ans. 19, citing Ting, ,r,r 3, 14, 26,
27, 30-34.) Appellant's arguments focus mainly on the field of endeavor of
Ting relative to the present invention, which we agreed with Appellant was
different, rather than point out why the disclosure of Ting would not
logically commend itself to the inventor's attention based on the similar
problem between Ting and the present invention of providing a moisture
barrier layer as discussed above.
Regarding the optional nature of the moisture barrier layer in Ting, we
agree with the Examiner (Ans. 19) that such disclosure is insufficient to
disqualify Ting as analogous art, as Ting clearly discloses embodiments with
a moisture barrier layer. Such disclosures are no less pertinent simply
because of their optional nature.
Accordingly, we affirm the Examiner's rejection of claim 1 and
claims 2--4, and 9, also subject to Rejection 1.
Re} ections 2-5
Appellant does not present separate arguments regarding claims 7, 8,
10, 12-16, the claims that are the subject of Rejections 2-5. Therefore, we
affirm the Examiner's rejections of these claims for the reasons discussed
above with respect to Rejection 1 and claim 1.
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Application 14/ 449, 184
Rejection 6-Claim 17
ISSUE
The Examiner rejected claim 17 under a similar combination of prior
art as for claim 1, with the exception that instead of relying on Guenther, the
Examiner relies on Leonardson for the headboard patterns required in claim
17. (Ans. 12-16.)
Appellant contends that Leonardson discloses a random series of
grooves to achieve a random appearance, and as result does not disclose
"bead" or "headboard" as those terms would be understood by one of
ordinary skill in the art. (Appeal Br. 13, citing Leonardson, col. 1, 1. 65.)
Appellant argues that Elliott should not be combined with Leonardson for
the same reasons as for the combination of Elliott and Guenther. (Appeal
Br. 13-14.)
The dispositive issue is:
Has Appellant identified reversible error in the Examiner's
determination that the headboard arrangement required in claim 1 7 would
have been obvious over Leonardson?
DISCUSSION
We are not persuaded by Appellant's arguments that Leonardson does
not disclose headboard. Although Appellant contends that "bead" and
"headboard" would be understood by one of ordinary skill in the art "as
providing an aesthetic bead defined between recessed grooves and spaced
apart by relatively wide land regions," which is contrary to random series of
grooves disclosed by Leonardson, Appellant provides no support for this
definition. (Appeal Br. 13.)
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Application 14/ 449, 184
Indeed, the Specification states with respect to headboard that "the
beads may be spaced apart by different distances, or the bead may be
oriented in different directions." (Spec. ,r 20.) Thus, while this disclosure in
the Specification appears to relate to the difference in bead patterns between
bead patterns of the top surface and the bottom surface, there is no indication
from this disclosure that the Examiner's position that the "first bead pattern"
and "second bead pattern" are broadly recited and can include the beads on
the top surface ( element 22) and bottom surface ( element 26) disclosed in
Leonardson is in error. (Ans. 17-18; Leonardson, col. 2, 11. 13-18, Fig. 3;
see also col. 1, 11. 61---69.)
In addition, we observe that Leonardson discloses that "grooves 20
may be of uniform width and spacing if so desired but usually will be of
random width and spacing as illustrated in the drawings." (Col. 2, 11. 53-
55.) Thus, contrary to Appellant's argument, although Leonardson
expresses a preference for random width and spacing, Leonardson
contemplates uniform spacing, and as such, Leonardson would not exclude
headboard patterns even under Appellant's definition.
We are not persuaded by Appellant's argument with respect to the
combination of Leonardson and Elliot for the reasons expressed above
regarding the combination of Elliot and Guenther. We are also not
persuaded by Appellant's arguments regarding the combination of Ruffner,
Ting and Lindemann to the extent those arguments apply to claim 1 7
(Appeal. Br. 14--17), for the same reasons as discussed above with respect to
claim 1.
Accordingly, we affirm the Examiner's rejection of claim 17, as well
as the Examiner's rejection of claim 20.
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Application 14/ 449, 184
DECISION
We affirm the Examiner's decision rejecting claims 1--4, 7-10, 12-17,
and 20.
TIME PERIOD
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 ).
AFFIRMED
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