Ex Parte Thompson et al

Patent Trial and Appeal Board

Jun 30, 2014

10932843 (P.T.A.B. Jun. 30, 2014)

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.
10/932,843 09/01/2004 Thomas M. Thompson 860059.403 2611
500 7590 06/30/2014
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
GILBERT, WILLIAM V
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
06/30/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS M. THOMPSON, STEVE D. BEERBOWER, and
GEORGE A. MEYER
____________

Appeal 2012-006336
Application 10/932,8431
Technology Center 3600
____________

Before STEFAN STAICOVICI, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 3, 4, 7, 8, and 41–47. Appeal Br. 2.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Simpson Door
Company. Appeal Br. 1.
2 Claims 2, 5, 6, and 9–40 have been cancelled.
Appeal 2012-006336
Application 10/932,843

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Claimed Subject Matter
The claims are directed to a moisture resistant wooden door. Claims
1, 41, 44, and 47 are independent. Claim 1, reproduced below, is illustrative
of the claimed subject matter.
1. A moisture resistant wooden door comprising:
a door assembly, the door assembly including a pair of
opposing stiles and a pair of opposing rails, each of the stiles
and the rails including a plurality of solid wood subparts, the
solid wood subparts each having a thickness that spans from an
interior surface of the door assembly to an exterior surface of
the door assembly; and
a one-piece phenolic resin-impregnated paper overlay
having a bonding surface and an exterior surface opposing the
bonding surface, the bonding surface of the phenolic resin-
impregnated paper overlay bonded with a bonding agent
directly to the exterior surface of the door assembly to cover the
stiles and the rails and seams therebetween and inhibit the
infiltration of moisture into the exterior surface of the door
assembly, and the exterior surface of the phenolic resin-
impregnated paper overlay forming an unfinished exterior
surface of the moisture resistant wooden door.

REJECTION
Claims 1, 3, 4, 7, 8, and 41–47 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bargen (US 5,522,195, issued June 4, 1996), Hill
(US 6,497,938 B1, issued Dec. 24, 2002), and Sisco (US 6,185,894 B1,
issued Feb. 13, 2001).3

3 Appellants also request review of the Examiner’s objections to claims 44
and 47. Appeal Br. 8–9. As correctly noted by the Examiner, however, the
objections are a matter reviewable by petition under 37 C.F.R. § 1.181 (see
Manual of Patent Examining Procedure (MPEP) §§ 1002 and 1201). Ans.
16. Thus, the objections are not within the jurisdiction of the Board and we
will not address this issue.
Appeal 2012-006336
Application 10/932,843

3
ANALYSIS
Claims 1, 3, 4, 7, 8, and 41–43
The Examiner found that Bargen discloses a door assembly including
an exterior surface and a one-piece overlay 26a having a bonding surface
and an opposed exterior surface. Ans. 5 (citing Fig. 1). The Examiner also
found that Bargen discloses “the overlay may be of ‘any suitable material
which is provided with a[n] …aesthetically pleasing outer face’” (Ans. 5
(citing col. 6, ll. 15–20)), but does not disclose phenolic resin-impregnated
paper (id.).
The Examiner found that Hill discloses that it is known in the art to
use phenolic resin-impregnated paper as an overlay structure (Ans. 5 (citing
col. 2, ll. 25–32)), and determined that the overlay structure would have a
bonding surface and an exterior surface (id. at 6). The Examiner concluded
that it would have been obvious to use Hill’s covering with Bargen’s door,
as Bargen states that numerous materials may be used, and Hill’s covering
would function adequately with Bargen’s door. Id. The Examiner
determined that the modification of Bargen would result in the paper being
bonded with a bonding agent directly on the exterior surface of the door
assembly to cover the stiles and rails and seams therebetween to inhibit the
infiltration of moisture into the exterior surface of the door assembly. Id.
(citing Bargen, col. 6, ll. 10–15; Hill, col. 2, ll. 48–60). The Examiner also
determined that it would have been obvious to have the exterior surface
unfinished to allow it to be finished as desired. Id.
Appellants contend that applied references do not teach or suggest “a
one-piece phenolic resin-impregnated paper overlay . . . bonded directly to
substantially the entirety of a built-up door assembly such that the overlay
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Application 10/932,843

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forms an exterior surface of the door,” as called for by claims 1 and 41.
Appeal Br. 10. Appellants contend that Bargen teaches that outer skins 26a,
26b are preferably made of plywood with a wood veneer, and that it would
not have been feasible to replace the preferred outer skins with the claimed
overlay. Id. at 11. The Examiner did not rely on Bargen (or Sisco) for
teaching a one-piece phenolic resin-impregnated overlay, but rather, found
that Bargen discloses that skins 26a, 26b may be made of any suitable
material provided with an aesthetically pleasing outer face. Ans. 5.
Appellants contend, however, that the Examiner misinterpreted Bargen, and
“Bargen specifically states that the door skins (26a, 26b) themselves may be
‘any suitable material which is provided with a wood, simulated wood, or
similar, aesthetically pleasing outer face.’” Reply Br. 1–2. According to
Appellants, “an accurate reading of Bargen would lead one of ordinary skill
in the relevant art to construct a door to include a conventional wood veneer
or similar outer surface, not the one-piece phenolic resin-impregnated paper
overlay of the claimed embodiments of the present invention.” Id. at 2.
These contentions are not persuasive. Appellants correctly note that
Bargen states “[t]hese [outer door skins 26a, 26b] are preferably made of
plywood or other suitable material, with a wood veneer or similar finish on
their outer surfaces so as to present an aesthetically pleasing aspect.” Reply
Br. 2; see Bargen, col. 3, ll. 60–64. However, we interpret Bargen’s
disclosure that “[a]s for the door skins themselves, these may be formed of
any suitable material which is provided with a wood, simulated wood, or
similar, aesthetically pleasing outer face” as not specifically limiting the
“suitable material” used to form the door skins. Col. 6, ll. 16–17. Bargen
discloses use of wood, simulated wood, vinyl and plastic materials in regard
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Application 10/932,843

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to the door skins. Col. 6, ll. 15–25. We understand Bargen as disclosing that
the “suitable material” is provided with a wood outer face, simulated wood
outer face, or “similar, aesthetically pleasing outer face” (col. 6, ll. 16–17),
but not as limiting the outer face to a specific material.
Hill discloses a second overlay structure 34 including veneer 36 and
phenolic paper 38. Col. 2, ll. 14–15; see also Fig. 3. Hill states “[s]econd
overlay structure 34 with its exposed moisture resistant phenolic paper 38 is
configured to be on the exterior of the structure, or is the exterior side of the
door.” Col. 2, ll. 21–24 (emphasis added). As such, Hill discloses that
moisture resistant phenolic paper 38 forms an exterior surface on the door.
For phenolic paper 38 used in second overlay structure 34, Hill states
“[e]xamples of phenolic papers include . . . medium density overlay (MDO),
decorative laminates.” Col. 2, ll. 26–33. Such medium density phenolic
papers would have an “aesthetically pleasing outer face.” We note
Appellants’ Specification discloses one type of overlay material that can be
used for overlay 14 is “Medium Density Overlay (MDO).” See Spec. 5, ll.
1–6.
Appellants contend that “the proposed modification does not account
for or discuss how a thin, one-piece phenolic resin impregnated paper
overlay can be bonded to the foil-covered thermal insulation panels of
Bargen without delamination or surface irregularities which would render
the door unsuitable for its intended purpose.” Reply Br. 3. Firstly, to the
extent that Appellants may be contending that claim 1 requires the overlay to
be bonded to the entire exterior surface covered by the overlay, claim 1 does
not recite such limitation.
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Application 10/932,843

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Secondly, Appellants have not directed us to any disclosure in Bargen
that shows Hill’s phenolic resin-impregnated paper would need to be bonded
to Bargen’s foil-covered thermal insulation panels. We note Bargen
discloses that the edges of the door skins are mounted to the perimeter frame
12. Col. 6, ll. 8–10; see also Fig. 1. Bargen also discloses that adhesive
bonding is generally preferred for mounting the door skins. Col. 6, ll. 10–
14. Hill also discloses adhesive bonding of the overlay structures. Col. 2, ll.
52–58. The Examiner’s combination, which utilizes Hill’s phenolic resin-
impregnated paper for Barger’s overlays and bonding with a bonding agent,
would result in the combination including a one-piece phenolic resin-
impregnated paper overlay, wherein “the bonding surface of the phenolic
resin-impregnated paper overlay [is] bonded with a bonding agent directly to
the exterior surface of the door assembly to cover the stiles and the rails and
seams therebetween and inhibit the infiltration of moisture into the exterior
surface of the door assembly,” as recited in claim 1. Appellants have not
provided any persuasive reasoning or evidence to show that Hill’s phenolic
resin-impregnated paper could not be bonded with a bonding agent to the
exterior surface of Bargen’s door, or that Hill’s paper would not provide the
claimed moisture inhibition effects.
In view of the above, we sustain the rejection of claim 1, and its
dependent claims 3, 4, 7, 8, 42, and 43, which are not separately argued.
As to claim 41, Appellants rely on substantially the same contentions
as those discussed above for claim 1. Appeal Br. 9–11; Reply Br. 1–4.
Thus, we sustain the rejection of claim 41 for reasons similar to those
discussed above for claim 1.
Appeal 2012-006336
Application 10/932,843

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Claims 44–47
As to claims 44 and 47, Appellants rely on substantially the same
contentions as those discussed above for claim 1. Appeal Br. 12–13; Reply
Br. 1–4. Thus, we sustain the rejection of claims 44 and 47, and claims 45
and 46, which depend from claim 44, for reasons similar to those discussed
above for claim 1.

DECISION
We AFFIRM the rejection of claims 1, 3, 4, 7, 8, and 41–47.
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

mls