Ex Parte Ziegler et al

Patent Trial and Appeal Board

Oct 28, 2016

13015942 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/015,942 01/28/2011
21839 7590 11/01/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
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.
0079846-000003 3560
EXAMINER
TOLIN, MICHAEL A
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
11/01/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GORAN ZIEGLER, THEIS REENBERG, and
HENRIK JENSEN 1
Appeal2015-000255
Application 13/015,942
Technology Center 1700
Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
ELIZABETH M. ROESEL, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 2
1 Appellants identify the real party in interest as Valinge Photocatalytic AB
of Viken, Sweden Valinge Photocatalytic AB. Appeal Br. 1.
2 In our opinion below, we reference the Specification filed January 28, 2011
(Spec.), Final Office Action mailed October 3, 2014 (Final), the Appeal
Brief filed May 27, 2014 (Appeal Br.), the Examiner's Answer mailed July
29, 2014 (Ans.), and the Reply Brief filed September 25, 2014 (Reply Br.).
Appeal2015-000255
Application 13/015,942
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-8, 19, 21, 23, and 25 under 35 U.S.C. S 103(a) as
unpatentable over Roseeuw3 in view oflversen4 and Kuroda. 5 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a method of manufacturing a sheet
containing photocatalytic nanoparticles. See, e.g., claim 1.
According to the Specification, the method is especially useful for
distributing the nanoparticles in the upper layer of boards and panels. Spec.
1:7-10. The method involves impregnating a sheet, which may be a sheet of
cellulose fibers, with a polymer resin, and before fully drying the resin-
impregnated sheet, spraying the sheet with an impregnation fluid
composition comprising dispersed photocatalytic nanoparticles. Spec. 3 :2-
15. According to the Specification, applying the photocatalytic
nanoparticles to a wet surface improves the distribution of the nanoparticles.
Spec. 3: 16-17.
It is the step of spraying onto a wet surface that is the focus of the
appeal. Claim 1 is reproduced below:
1. Method of manufacturing a sheet comprising
photocatalytic nanoparticles, the method comprising the steps
of:
impregnating the sheet with a polymer resin;
3 Roseeuw, WO 2007/144718 A2, pub. Dec. 21, 2007.
4 Iversen et al., WO 2009/062516 A2, pub. May 22, 2009.
5 Kuroda, JP 2003-071967, pub. March 12, 2003, as translated.
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Application 13/015,942
spraying the sheet, freshly impregnated with the polymer
resin in an uncured and wet state, with an impregnation fluid
composition comprising dispersed photocatalytic nanoparticles;
drying and/or at least partly curing said impregnated
sheet comprising the polymer resin and the impregnation fluid.
Appeal Br. Claims Appendix 1.
OPINION
There is no dispute that Roseeuw, as found by the Examiner, discloses
a method of impregnating a cellulose paper sheet with polymer resin, and
applying an impregnation fluid containing dispersed nanoparticles to the
resin-impregnated sheet before fully drying. Compare Final 2-3 with
Appeal Br. 4--5. Roseeuw, as found by the Examiner, teaches using titanium
dioxide nanoparticles, but does not specify that the nanoparticles are
photocatalytic. Final 3. Thus, the Examiner turns to Iversen. Final 3.
There is no dispute on this record that Iversen teaches applying an
impregnation fluid that contains photocatalytic titanium dioxide
nanoparticles to a surface layer (overlay sheet or decor paper) that is
laminated to a board. Spec. 2:25-27; Appeal Br. 6; Iversen, abstract, 17:4--
10. The photocatalytic nanoparticles improve a number of properties,
including scratch resistance, washing properties (due to increased
hydrophilic properties), and antimicrobial/antifungal properties. Iversen,
2:35-39, 4: 1-8.
Based on the teachings of the prior art, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art at the time of the
invention to use photocatalytic nanoparticles in Roseeuw' s impregnation
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Application 13/015,942
fluid "to provide improved washing, antimicrobial and/or antifungal
properties in accordance with the teachings of Iversen." Final 4.
Appellants contend that Roseeuw fails to disclose spraying
nanoparticles. Appeal Br. 4-5. Appellants also contends that Roseeuw
teaches away from spraying. Appeal Br. 7-8. Appellants further contend
that Iversen does not cure the deficiencies of Roseeuw. Appeal Br. 6.
For the reasons explained by the Examiner, Appellants' arguments are
not persuasive of reversible error. Ans. 5-7.
Roseeuw's broad disclosure suggests that spraying a wet sheet with an
impregnation fluid (suspension) containing nanoparticles will result in a
usable coating. Roseeuw states that "any depositing or application system
may be used." Roseeuw 11:28-29. Although Roseeuw then lists a number
of preferred methods, including spreading, id. at 11:29-12:4, Roseeuw does
not disclose that spraying would not work. Instead, Roseeuw states:
It is noted that it would be better not to use a spraying device
for depositing the suspension, as it may have a negative effect
on the uniformity of the applied nano-particles. However, the
use of such spraying device is not excluded and becomes more
interesting the larger the average size of the particles to be
applied is. For example, it may be particularly efficient with
microparticles.
Roseeuw 12:6-13. Thus, Roseeuw suggests that those of ordinary skill in
the art understood the effects of spraying on the uniformity of the applied
nanoparticles. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(The question to be asked is "whether the improvement is more than the
predictable use of prior art elements according to their established
functions."). Appellants cite to no particular aspect of their own process that
indicates they obtain better uniformity than that of Roseeuw. In fact, their
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Application 13/015,942
own Specification discloses that the improved uniformity occurs because the
nanoparticles are applied to a wet surface. Spec. 3: 16-17. Roseeuw
discloses applying the nanoparticle composition onto a wet surface.
Roseeuw 8:31-9:15.
Nor does a preponderance of the evidence support Appellants
argument that Roseeuw teaches away from spraying. "[I]n general, a
reference will teach away if it suggests 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).
There is no persuasive evidence that Roseeuw's teachings suggest that
spraying would not result in a useful titanium dioxide nanoparticle coating
even if the uniformity would be expected to be somewhat less than that of
microparticle coatings. Roseeuw expressly states that "the use of such
spraying device is not excluded." Roseeuw, 12:6-13.
In the Reply Brief, Appellants urge that Roseeuw's teaching of
spraying is limited to non-photocatalytic nanoparticles. Reply Br. 2.
Appellants point to a teaching in Iversen that the photocatalytic
nanoparticles should be "substantially homogeneously distributed." Reply
Br. 2 (quoting Iversen 4: 10-11).
Appellants' argument is not persuasive of reversible error. There is
no substantial question that those of ordinary skill in the art sought to
uniformly disperse the nanoparticles, whether they are used to improve
scratch resistance or for their photocatalytic properties. Roseeuw 5: 1-7,
5:23-29, 9:7-10, 12:6-15; Iversen4:10-17, 7:19-26. Iversen teaches that
smaller, non-aggregated nanoparticles are easier to disperse homogeneously.
Iversen 5: 16-22. Roseeuw teaches that applying the nanoparticles in
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Application 13/015,942
suspension on the upper side of an already resin-treated-sheet "results in less
tendency of these nano-particles to agglomerate, such that a more uniform
distribution of the particles is achieved." Roseeuw 5: 1-9. The nanoparticles
in both references can be titanium dioxide nanoparticles. Roseeuw 4: 13-20;
Iversen 17: 12-13. Taken together the references would have suggested
using spraying to obtain a predictable level of uniformity. Appellants have
not shown that their claimed process achieves uniformity unexpectedly
different from that obtained by the prior art.
CONCLUSION
We sustain the Examiner's rejection.
DECISION
The Examiner's decision is affirmed.
TIME PERIOD FOR RESPONSE
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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