FLOORING TECHNOLOGIES LTD.

Patent Trials and Appeals Board

Sep 15, 2020

2019006435 (P.T.A.B. Sep. 15, 2020)

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.
15/302,818 12/13/2016 Frank OLDORFF 3910-40053 3932
25570 7590 09/15/2020
Roberts Calderon Safran & Cole, P.C.
7918 Jones Branch Drive
Suite 500
McLean, VA 22102
EXAMINER
MELLOTT, JAMES M
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
09/15/2020 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):
docketing@rcsc-ip.com
lgallaugher@rcsc-ip.com
secretaries@rcsc-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANK OLDORFF1
____________

Appeal 2019-006435
Application 15/302,818
Technology Center 1700
____________

Before CATHERINE Q. TIMM, DONNA M. PRAISS, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–3 and 5–23. An oral hearing was held on August
25, 2020. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN
PART.
BACKGROUND
The subject matter on appeal relates to methods for finishing wooden
boards, such as boards for use in floors. E.g., Spec. 1:3–4, 9–12; Claim 1.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
FLOORING TECHNOLOGIES LTD. Appeal Br. 2.
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Claim 1 is reproduced below from page 18 (Claims Appendix) of the Appeal
Brief:
1. A process for the finishing of a wooden board with an upper side
and an underside, comprising:
a) application of a basecoat made of a first liquid melamine resin
to the upper side, where the melamine resin penetrates at least
to some extent into an upper peripheral layer of the wooden
board,
b) drying of the basecoat to give a basecoat layer,
c) application of a base color to the basecoat layer,
d) drying of the base color to give a base color layer,
e) application of a printing ink to the base color layer to produce
a decorative effect,
f) drying of the decorative effect to give a decorative layer,
g) application of a second liquid melamine resin to the dried
decorative layer,
h) drying of the second liquid melamine resin to give a melamine
resin layer, and
i) application of a liquid medium having a proportion of
isocyanate groups to the second liquid melamine resin layer.2

2 Although not material to our disposition of this appeal, we observe that
steps (g) through (i) may create an ambiguity that the Appellant may wish to
address in the event of further examination of the application on appeal.
Namely, step (g) recites “application of a second liquid melamine resin.”
Step (h) recites “drying . . . the second liquid melamine resin.” Step (i)
recites “application of a liquid medium . . . to the second liquid melamine
resin layer.” It may be unclear how the “second liquid melamine resin
layer” referred to in step (i) can, in fact, still be a “liquid,” if it has been
dried as recited by step (h). Cf. In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989) (“[D]uring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.”).
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REJECTIONS ON APPEAL3
The claims stand rejected under 35 U.S.C. § 103 as follows:
1. Claims 1–3, 5, 6, 8, 9, 12–16, and 18–23 over Oldorff ’463
(US 2011/0217463 A1, published Sept. 8, 2011), Siebert
(WO 2012/037950 A1, published Mar. 29, 2012),4 and Wigger
(US 6,620,511 B1, issued Sept. 16, 2003).
2. Claim 7 over Oldorff ’463, Siebert, Wigger, and Oldorff ’054
(US 2009/0050054 A1, published Feb. 26, 2009).
3. Claims 10 and 11 over Oldorff ’463, Siebert, Wigger, and
Miyamoto (US 2004/0006944 A1, published Jan. 15, 2004).
4. Claim 17 over Oldorff ’463, Siebert, Wigger, and Brown
(US 6,021,615, issued Feb. 8, 2000).

3 The Final Action included rejections under 35 U.S.C. § 112(a) and (b).
Final Act. dated Oct. 11, 2018, at 2, 3. Those rejections appear to have been
overcome in claim amendments following the Final Action. In an Advisory
Action noting that the claim amendments had been entered, the Examiner
repeated the rejections under § 103 but did not repeat the rejections under
§ 112. See Advisory Act. dated Feb. 15, 2019. In the Appeal Brief, the
Appellant indicates its understanding that the § 112 rejections were
overcome by the claim amendments. See Appeal Br. 3 n.2. In the
Examiner’s Answer, the Examiner does not indicate otherwise. See
generally Ans. Accordingly, we understand that the § 112 rejections were
overcome by claim amendments following the Final Action, and that only
the § 103 rejections are at issue in this appeal.
4 The Examiner relies on corresponding U.S. Publication No. 2013/0177742
A1 as an English language translation. See Final Act. 5. Because the
Appellant has not objected to that, we do the same in this Decision.
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ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejection of
claims 1–3 and 5–20. Accordingly, we affirm the rejections of those claims
for reasons set forth below; in the Final Action dated Oct. 11, 2018 (“Final
Act.”); the Advisory Action dated Jan. 30, 2019; the Advisory Action dated
Feb. 15, 2019 (“Advisory Act.”); and in the Examiner’s Answer dated July
11, 2019. However, as set forth below, we reverse the Examiner’s rejection
of claims 21–23.
Rejection 1
The Appellant presents separate arguments as to claims 1, 5, 21, 22,
and 23. We address those claims below. The claims not separately argued
will stand or fall with claim 1, from which they depend. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Claim 1. The Examiner’s rejection of claim 1 appears at pages 5–8 of
the Final Action. The Examiner finds that the combination of Oldorff ’463
and Siebert discloses a method comprising each step of claim 1, but that
neither Oldorff ’463 nor Siebert specifically discloses that isocyanates
should be included in any layer. Final Act. 5–7. As to the particular method
steps, the Examiner acknowledges that, although Oldorff ’463 teaches steps
of applying a “primer” and an “undercoat” layer to the upper side of a wood
board prior to applying a printed decoration, Oldorff ’463’s primer and
undercoat layers may not precisely correspond to the “basecoat” and “base
color” layers recited by steps (a) and (c) of claim 1. Id. at 6. The Examiner
finds, however, that Siebert teaches applying a melamine basecoat directly
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to the top surface of wood, and that Siebert teaches that “[t]he penetration of
the melamine resin into the wooden substrate reduces the risk of
delamination of the decorative layers.” Id. at 6–7. The Examiner also finds
that Siebert teaches application of a “primer” to the melamine basecoat
layer, and that the “primer” layer of Siebert corresponds to the claimed “base
color” layer of claim 1. Id. at 6–7. The Examiner determines that it would
have been obvious to substitute the melamine basecoat and primer layer
structure of Siebert for the primer/undercoat layer structure of Oldorff ’463
because “it is prima facie obvious to substitute known structures and
coatings for the same purpose and furthermore, [Siebert] teaches that the use
of the coatings reduces the risk of delamination which would have
predictably improved the product of [Oldorff] ’463.” Id.
As to the inclusion of isocyanates in any coating layer, the Examiner
finds that Wigger “discloses a melamine based resin which is suitable for
coating wood substrates which further comprises an isocyanate compound.”
Id. at 7 (internal citations omitted). The Examiner determines that it would
have been obvious “to use the melamine/isocyanate coating composition of
[Wigger] as the melamine resin compositions” in the method of the
combined prior art “because the composition of [Wigger] is an art
recognized melamine coating composition suitable for wood substrates and
recognized as suitable for the primers, basecoat, and clearcoat compositions
which would have predictably provided good clarity as an overcoat of the
decorative layer and simplified the coating process by providing the same
base composition for all layers comprised of melamine resin.” Id. at 7–8.
In view of those and other findings less relevant to the arguments
raised by the Appellant in this appeal, the Examiner concludes that the
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subject matter of claim 1 would have been obvious to a person of ordinary
skill in the art. Id. at 5–8.
The Appellant raises several arguments against the Examiner’s
rejection, which we address below in turn. We first address the Appellant’s
arguments concerning the claimed layer structure, and we then address the
Appellant’s arguments concerning the use of isocyanates in melamine resin
layers.
1. The Appellant argues that Oldorff ’463 prints its decorative layer
“on the undercoat layer, not a basecoat.” Appeal Br. 6. The Appellant also
argues that, in Oldorff ’463, “there is no teaching of applying the resin layers
in the same sequence as recited in the claimed invention.” Id. at 8.
Those arguments are not persuasive because the Examiner does not
rely on Oldorff ’463 alone for the disclosure of the claimed layer structure.
See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.”). As noted above, the
Examiner proposes substituting the basecoat/primer layer structure of
Siebert for the primer/undercoat layer structure of Oldorff ’463 to reduce
delamination.
As to the remaining layers (i.e., a melamine resin layer on top of the
decorative layer, and a liquid medium layer having isocyanate groups on top
of the melamine layer), Oldorff ’463 teaches that printed decorative layers
are typically “covered with a protection layer” “[t]o ensure that they
withstand . . . loading,” and that the protective layer “generally consists of a
synthetic resin, for example melamine resin.” Oldorff ’463 ¶ 2.
Oldorff ’463 goes on to expressly disclose a desirable structure in which
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multiple protective resin layers are applied and dried to “enclos[e] the
decor.” Id. ¶¶ 6–15, 19, 23. Thus, consistent with the Examiner’s findings,
the combined prior art teaches or suggests a layer structure that corresponds
to that of claim 1, i.e., (1) basecoat (Siebert), (2) base color (primer)
(Siebert), (3) decorative printed layer (Oldorff ’463), (4) melamine resin
layer (Oldorff ’463), (4) liquid medium (i.e., an additional melamine resin
protective layer) (Oldorff ’463). See, e.g., Ans. 4.
2. The Appellant argues that “Siebert does not provide the same
sequence of layers as the claimed invention.” Appeal Br. 8.
That argument is not persuasive because, as explained above, the
Examiner relies on the combination of Oldorff ’463 and Siebert—not either
reference individually—as disclosing the claimed sequence of layers.
3. The Appellant argues that “the Siebert combination of constituent
materials have a very hard surface,” in which “the resultant noise level is
unacceptable.” Appeal Br. 10. The Appellant asserts that “[t]hese are the
exact characteristics that the claimed invention avoids.” Id.
That argument is unpersuasive because the Appellant fails to tie it to
the requirements of claim 1. Even assuming the Appellant to be correct that
Siebert’s floor would be hard and noisy, the Appellant does not show how
claim 1 excludes such a floor.
4. In the Reply Brief, the Appellant argues that “the Examiner is
merely mixing and matching different references together, without any
motivation or teaching to do so.” Reply Br. 5.
That argument is unpersuasive because, as set forth above, the
Examiner finds specific motivation for the proposed combination in
Siebert’s disclosures concerning reduced delamination.
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5. In the Reply Brief, the Appellant argues, with no elaboration, that
“it would be impermissible to have the primer of Siebert read on the claimed
base color layer.” Reply Br. 11.
As an initial matter, that argument is untimely and waived because it
was not presented in the Appeal Brief, and the Appellant has not attempted
to show good cause for presenting it for the first time in the Reply Brief. See
37 C.F.R. § 41.41(b)(2). In the Final Action, the Examiner explicitly finds
that “a primer reads on the base color layer.” Final Act. 7.
Even if it were not waived, however, it would be unpersuasive. In the
Final Action, the Examiner explains that a primer layer corresponds to the
claimed “base color layer” because the term “base color layer” “has not been
limited to sufficient detail to exclude the primer layer of [Siebert] from
reading on said layer.” Id. at 16. The Appellant provides no evidence or
argument to the contrary. The Appellant’s unexplained assertion for the first
time in the Reply Brief that “it would be impermissible to have the primer of
Siebert read on the claimed base color layer,” Reply Br. 11, amounts to a
mere statement of disagreement. See SmithKline Beecham Corp. v. Apotex
Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of
disagreement . . . as to the existence of factual disputes do not amount to a
developed argument.”).
6. In the Reply Brief, the Appellant argues that “[o]ne needs to
consider that the primer and undercoat layer of Oldorff (’463) cannot simply
be replaced by the basecoat and primer layer of Siebert (’742).” Reply
Br. 11.
That argument is not persuasive because the Appellant provides no
persuasive evidence or argument as to why a person of ordinary skill in the
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art would have regarded the proposed substitution (i.e., the basecoat/primer
of Siebert for the primer/undercoat of Oldorff ’463) to be incompatible,
particularly given that both Siebert and Oldorff ’463 concern wood flooring
comprising coatings and decorative layers.
7. We now address the Appellant’s arguments concerning
isocyanates. The Appellant first argues that, “[a]lthough th[e] coating [of
Wigger] includes isocyanate groups, there is no teaching, whatsoever, that
the liquid medium having a proportion of isocyanate groups is or would be
applied to a melamine resin layer of Siebert.” Appeal Br. 11.
That argument is not persuasive because it misapprehends the
Examiner’s rationale. The Examiner is not proposing the addition of a layer
from Wigger to the layers of Oldorff ’463. Rather, as explained above, the
Examiner is proposing the use of the melamine resin of Wigger, which
includes isocyanates and is taught as a suitable coating material for wood, as
the melamine resin layer in all of the melamine resin layers of the combined
prior art, i.e., the melamine base coat layer of Siebert and the multiple
melamine protective covering layers of Oldorff ’463.
8. The Appellant argues that “the Examiner provides no evidence” for
the assertion that Wigger’s coating “is an art recognized melamine coating
composition suitable for wood substrates and recognized as suitable for
primers, basecoat, and clearcoat compositions.” Appeal Br. 11.
That argument is not persuasive. Wigger specifically teaches the use
of its coating in applications such as a topcoat, a basecoat, a clearcoat, and as
a “coating material[]” generally. See Wigger col. 14. Wigger also teaches
that its coatings are “suitable for producing single-coat or multicoat coating
systems which absorb mechanical energy,” and that its coatings are “suitable
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for producing single-coat or multicoat clearcoat systems on primed or
unprimed substrates or on the single-coat or multicoat coating systems
which absorb mechanical energy and/or impart color and/or effect.” Id. at
16:18–25. Wigger expressly teaches that its coatings are suitable for wood.
Id. at 16:29. The Appellant does not persuasively address those disclosures,
which contradict the Appellant’s argument.
9. The Appellant argues that “the Examiner does not provide any
reasoning for how the isocyanates [of Wigger] can simplify the coating
process.” Appeal Br. 11.
That argument is not persuasive. The Examiner does not find that the
isocyanates themselves simplify the coating process. The Examiner finds
that the use of a single melamine resin composition (i.e., the composition of
Wigger that includes isocyanates) as the composition used for each of the
melamine layers of the combined prior art would simplify the process
because it is quicker and easier to use a single melamine composition for
every layer than it is to use a different composition for each layer. See
Ans. 8. On this record, the Appellant has not persuasively identified error in
that finding.
Moreover, we observe that the Examiner’s proposal appears to be the
use of a known composition (i.e., Wigger’s) according to its established
function (wood coating). The use of a known element according to its
established function typically does not result in nonobvious subject matter.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416–21 (2007) (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”); see also id. at
416 (“[W]hen a patent claims a structure already known in the prior art that
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is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.”).
10. In the Reply Brief, the Appellant argues for the first time that “a
person of skill in the art reading the Wigger reference would not be provided
with any motivation to use the isocyanate groups with a melamine resin”
because “Wigger teaches the use of a polyurethane prepolymer containing
isocyanate groups . . . . The polyurethane prepolymer is not a melamine
resin, nor is there any teaching that the isocyanate groups can be used with
melamine resin.” Reply Br. 13.
That argument is untimely and waived because it was not presented in
the Appeal Brief, and the Appellant has not attempted to show good cause
for presenting it for the first time in the Reply Brief. See 37 C.F.R.
§ 41.41(b)(2). In the Final Action, the Examiner explicitly finds that Wigger
“discloses a melamine based resin which is suitable for coating wood
substrates which further comprises an isocyanate compound.” Final Act. 7.
Even if it were not waived, however, it would be unpersuasive.
Wigger specifically teaches that one component of its coating includes
“isocyanate groups,” and that another component is an “amino resin.”
Wigger at Abstract. Wigger teaches that the amino resin may be a
melamine-formaldehyde resin. Id. at 11:24–28. Wigger also provides an
example in which “a water-dilutable methanol-etherified melamine resin” is
used. Id. at col. 19 (Example 5). The Appellant does not address those
disclosures or explain why Wigger’s coatings that include melamine resin
and polyisocyanate groups fall beyond the scope of claim 1.
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In summary, we have considered all of the Appellant’s arguments
concerning claim 1, and we are not persuaded of reversible error in the
Examiner’s rejection of claim 1.
Claim 5. Claim 5 depends from claim 1 and further recites, “wherein
the liquid medium is a molten hotmelt which solidifies after application to
give a layer.” Appeal Br. 18.
In the Final Action, the Examiner finds that Oldorff ’463 discloses
that, after the resin layers are applied, “[t]he liquid medium is melted after
drying and thus is a hotmelt which solidifies after the drying.” Final Act. 9
(citing Oldorff ’463 ¶ 19).
The entirety of the Appellant’s argument against the Examiner’s
analysis is as follows: “Appellant submits that Oldorff (’463) does show a
melamine resin layer that is melted, but there is no teaching in Oldorff
(’463) or even Wigger (’511) that a liquid medium having a proportion of
isocyanate groups is a molten hotmelt.” App. Br. 13.
In the Answer, the Examiner responds as follows:
In regards to appellant’s arguments pertaining to claim 5,
appellant is advised that the claim does not require at what
specific point the melamine is a molten hotmelt and thus given
that it is melted and then solidified it is apparent that the
melamine of the combination reads on said claim.
Ans. 10. Thus, it is adequately clear that the Examiner understands the term
“hotmelt” to encompass melted compositions. See id.
In the Reply Brief, the Appellant acknowledges but does not dispute
the Examiner’s determination that “the claim does not require at what
specific point the melamine is a molten hotmelt.” Ans. 10; Reply 14. Nor
does the Appellant provide any meaningful analysis of the scope of the term
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“hotmelt.” See Reply 14. The entirety of the Appellant’s argument in the
Reply is that “there simply is no teaching in Oldorff (’463) or Wigger (’511)
that a liquid medium having a proportion of isocyanate groups is a molten
hotmelt. . . . [T]he important fact remains that no combination of the
references even teach a molten hotmelt.” Id.
The Appellant’s arguments are not persuasive of reversible error
because they essentially amount to a recitation of the claim language and a
naked assertion that the prior art does not teach it. See 37 C.F.R.
§ 41.37(c)(1)(iv) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”);
accord In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
In particular, we observe that the Appellant does not attempt to explain why
the Examiner’s interpretation of the term “hotmelt” as encompassing melted
compositions is incorrect. To the extent that the Appellant’s argument
hinges on the fact that Oldorff ’463 alone does not teach a melamine
composition that also includes isocyanate groups, as explained above, the
Examiner relies on the combination of Oldorff ’463 and Wigger, and we are
not persuaded of reversible error in the Examiner’s determination that
Wigger discloses wood coating compositions that include both melamine
resin and isocyanate groups. See Keller, 642 F.2d at 426 (“[O]ne cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references.”).
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Thus, we are not persuaded of reversible error in the Examiner’s
determination that the proposed combination (i.e., Wigger’s
melamine/isocyanate composition that is applied, dried, and melted as taught
by Oldorff ’463) teaches or suggests the subject matter of claim 5. See In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s
practice to require an applicant to identify the alleged error in the examiner’s
rejections . . . .”).
Claims 21–23. Claim 21 depends from claim 5 and further recites,
“wherein the hotmelt is an adhesive which has isocyanate groups, the
hotmelt is heated prior to application and then cooled after the application to
form a layer on the melamine resin layer.” Appeal Br. 20.
The Examiner finds that the hotmelt of the prior art is an adhesive
because it “binds to the prior layers.” Final Act. 8. The Examiner finds that
the combined prior art “does not explicitly teach that the liquid medium is
heated prior to application.” Id. However, the Examiner finds that, because
Oldorff ’463 “teaches that the liquid medium is a solution it is apparent that
[Oldorff] ’463 teaches controlling solubility and temperature is a result
effective variable based on the desired solubility and it is obvious to
optimize the temperature to obtain the desired solubility.” Id.
In the Appeal Brief, the Appellant argues that Oldorff ’463 discloses
“that the melamine resin is heated and melted after the application, itself
(and not before as recited in the claimed invention).” Appeal Br. 13.
In the Answer, the Examiner repeats the Examiner’s findings
concerning optimization of result effective variables. Ans. 10.
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
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re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). The Examiner’s analysis
is inadequate to carry that burden as to claim 21. Merely identifying
something as a result-effective variable does not necessarily lead to a
conclusion of obviousness. In In re Stepan Co., 868 F.3d 1342, 1346 (Fed.
Cir. 2017), the Federal Circuit reversed a rejection based on routine
optimization because the rejection failed to explain why routine optimization
would have led to the claimed invention. The Federal Circuit stated that,
even when routine optimization is at issue, “the Board must provide some
rational underpinning explaining why a person of ordinary skill in the art
would have arrived at the claimed invention.” Stepan, 868 F.3d at 1346.
The Examiner has not done that in this case. Of itself, the fact that
Oldorff ’463 describes its resin layers as a solution is inadequate. In
combination with claims 1 and 5, from which claim 21 depends, claim 21
requires that the resin must be a hotmelt that is heated “prior to application.”
There is no dispute that paragraph 19 of Oldorff ’463, relied on by the
Examiner as disclosing a hotmelt, does not disclose forming a hotmelt (i.e.,
melting) until after application and drying. See Oldorff ’463 ¶ 19. Beyond
that, the Examiner identifies no disclosure in Oldorff ’463 of heating the
melamine composition, much less of heating the melamine composition
sufficiently to melt it, prior to application. Even assuming that the
disclosure of a solution, of itself, implies that temperature may be adjusted
to effect solubility, the Examiner does not explain why, in the context of
Oldorff ’463, temperature optimization may reasonably have led to melting
(forming a hotmelt) the melamine composition before its initial application,
particularly given that Oldorff ’463 describes a melting step after the initial
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application and drying, but says nothing about heating—much less
melting—prior to application.
On this record, we are not persuaded that Oldorff ’463’s description of
melamine resins as solutions, of itself, would have led a person of ordinary
skill in the art to form a hotmelt of a melamine resin “prior to application” as
required by claim 21. According, we reverse the Examiner’s rejection of
claim 21.
Because claims 22 and 23 depend from claim 21, and the Examiner’s
analysis of those claims does not remedy the error identified above, we also
reverse the Examiner’s rejection of claims 22 and 23.
Rejections 2–4
The Appellant raises no separate arguments as to the claims subject to
Rejections 2–4. See Appeal Br. 16–17. Each of those claims depends from
a claim whose rejection we affirm above. Accordingly, the claims subject to
Rejections 2–4 fall with the claims from which they depend. We affirm
Rejections 2–4.
CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C.
§
References Affirmed Reversed
1–3, 5, 6, 8, 9,
12–16, 18–23 103
Oldorff ’463,
Siebert, Wigger
1–3, 5, 6, 8, 9,
12–16, 18–20 21–23
7 103
Oldorff ’463,
Siebert, Wigger,
Oldorff ’054
7
10, 11 Oldorff ’463, Siebert, Wigger, 10, 11
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Claim(s)
Rejected
35
U.S.C.
§
References Affirmed Reversed
Miyamoto
17
Oldorff ’463,
Siebert, Wigger,
Brown
17
Overall
Outcome 1–3, 5–20 21–23
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED IN PART