Marcello Antonelli et al.

Patent Trials and Appeals Board

Jul 31, 2019

14357207 - (D) (P.T.A.B. Jul. 31, 2019)

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.
14/357,207 09/22/2014 Marcello Antonelli STZ-108-U 2497
77269 7590 07/31/2019
Oppenhuizen Law PLC
146 Monroe Center NW
McKay Tower, Suite 730
Grand Rapids, MI 49503
EXAMINER
ZHANG, MICHAEL N
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
07/31/2019 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):
docket@oppenhuizen.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARCELLO ANTONELLI and MARTA ANTONELLI
____________

Appeal 2018-007498
Application 14/357,207
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, LILAN REN,
and MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 14–16, 18, 20–27, 31, and 32 of
Application 14/357,207 under 35 U.S.C. §§ 103 and 112. Final Act. (May 4,
2017) 2–8. Appellants1 seek reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b)(1).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The present application generally relates to a process (and resulting
products) for treating a rigid material such as wood so as to acquire the

1 The real party in interest is identified as MyMantra s.r.l. Appeal Br. 1.
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characteristics of a fabric so that it may be used as a raw material in
applications such as clothing, furnishing and design. Spec. 1. The process is
based “on the use of a laser device able to realize a pattern of grooves on the
top layer of a multilayer material that, after the processing, can be used in
the same way of a flexible material.” Id.
Claim 14 is illustrative of the subject matter on appeal and is
reproduced below with certain language bolded for emphasis:
14. A multilayer flexible material, comprising:
a layer of flexible wooden material, the flexible wooden
material having a series of laser-engraved slots on a surface
thereof, the slots extending only partially through the flexible
wooden material, the laser-engraved slots defining a plurality of
laser-engraved pieces that form a surface texture, and the laser-
engraved pieces being sized to have an area from 1 mm2 to 10
mm2; and
a layer of flexible support material adhered to the flexible
wooden material with an adhesive that maintains elasticity after
drying so that the multilayer material remains flexible in
multiple dimensions;
whereby the size of the plurality of laser-engraved pieces
and the resulting surface texture provides a visual impression
similar to that of leather.
Appeal Br. 21 (Claims App.) (emphasis added).

REJECTIONS
The Examiner maintains the following rejections:
1. Claims 14–16, 18, and 20 are rejected under 35 U.S.C.
§ 112, ¶ 1 (pre-AIA) for failure to comply with the written
description requirement. Final Act. 2.
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2. Claims 14–16, 18, and 20 are rejected under 35 U.S.C.
§ 112, ¶ 1 (pre-AIA) as indefinite for failure to particularly
point out and distinctly claim the subject matter of the
invention. Id. at 2–3.
3. Claims 14, 15, and 31 rejected under 35 U.S.C. § 103(a)
(pre-AIA) as obvious over Hull2 in view of Müller.3 Id. at
3–4.
4. Claim 16 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Hull and Müller in view of Kost.4 Id. at 4–5.
5. Claim 18 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Hull and Müller in view of Nelson.5 Id. at 5.
6. Claim 18 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Hull and Müller in view of Marmalich.6 Id.
7. Claim 20 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Hull and Müller in view of Hegan.7 Id. at 6.
8. Claims 21–25, 27, and 32 rejected under 35 U.S.C. § 103(a)
(pre-AIA) as obvious over Hull and Müller in view of
Marmalich. Id. at 6–8.

2 US 471,552, issued Mar. 29, 1892 (“Hull”).
3 US 2004/0144448 Al, published July 29, 2004 (“Müller”).
4 US 3,144,428, issued Aug. 11, 1964 (“Kost”).
5 US 2010/0122400 Al, published May 20, 2010 (“Nelson”).
6 US 6,254,951 B1, issued July 3, 2001 (“Marmalich”).
7 US 695,309, issued Mar. 11, 1902 (“Hegan”).
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9. Claim 26 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Hull, Müller, and Marmalich in view of
Hegan. Id. at 8.
DISCUSSION
Rejection 1. The Examiner rejected claims 14–16, 18, and 20 for
failure to comply with the written description requirement. Id. at 2.
Specifically, the Examiner determined that the limitation of claim 14
requiring that “the resulting surface texture provides a visual impression
similar to that of leather” was not described in the Specification in such a
way as to reasonably convey that the inventors had possession of the
claimed invention. Id.
Appellants contend that such determination is erroneous. Appeal Br.
8–10. Appellants argue as follows:
The specification states that ‘[t]he present invention
relates [to] a multilayer flexible element, preferably made of
wood, and [a] related production process by laser engraving and/
or cutting.’ The multilayer flexible element may be ‘suitable as
raw material, preferably in clothing, furnishing and design.’
(page 1, lines 3-8) The specification goes on to state that ‘[a]
further objective is that such materials, adequately processed, can
be used in the applications already in use both for tissues that for
the leather.’ (page 2, lines 6-7) It bears noting that the priority
application was an Italian application, and the PCT application
(and this National Stage application) were translated into
English. Although some of the language is not entirely clear, it
remains apparent that the multilayer flexible material can be used
as an alternative material in lieu of leather as a material for use
in furniture, clothing, etc.

Id. at 9.
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Appellants further argue that “[i]t is inherent that the multilayer
flexible material ‘provides a visual impression similar to that of leather’
since it is intended to be an environmentally-friendly alternative to leather
formed from a renewable wood source.” Id. Appellants further assert that
one of skill in the art of clothing or furniture design would “appreciate and
understand what leather looks like.” Id.
For the applicants to comply with the written description requirement,
their specification must “convey with reasonable clarity to those skilled in
the art that, as of the filing date sought, he or she was in possession of the
invention.” Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d
1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563–64 (Fed. Cir. 1991)).
“One shows that one is ‘in possession’ of the invention by describing
the invention, with all its claimed limitations, not that which makes it
obvious.” Lockwood v. American Airlines Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997) (original emphasis not reproduced). “Although the exact terms
need not be used in haec verba . . . the specification must contain an
equivalent description of the claimed subject matter.” Id. Similarly, “[t]he
knowledge of ordinary artisans may be used to inform what is actually in the
specification, but not to teach limitations that are not in the specification,
even if those limitations would be rendered obvious by the disclosure in the
specification.” Rivera v. Int’l Trade Comm’n, 857 F.3d 1315, 1322 (Fed.
Cir. 2017) (internal citation omitted).
Here, the Specification (as filed) provides that “[a] further objective is
that such materials, adequately processed, can be used in the applications
already in use both for tissues that for the leather.” Spec. 2. Thus, the
Specification describes certain applications of the subject materials. Absent
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some indication that “the applications already in use” directly relate to the
visual impression of the materials, however, a statement describing the
potential uses of a material does not describe “a visual impression similar to
that of leather.”
The disclosure in the Specification does not use the language of the
claim nor does it “contain an equivalent description of the claimed subject
matter,” Lockwood v. American Airlines Inc., 107 F.3d at 1572.
Accordingly, Appellants have not shown reversible error in this regard.

Rejection 2. The Examiner rejected claims 14–16, 18, and 20 as
indefinite. Final Act. 2–3. The Examiner determined that the limitation
“resulting surface texture provides a visual impression similar to that of
leather” was indefinite because the term “similar” is an approximation that
does not clearly limit the claim. Id. at 3. In the Answer, the Examiner finds
that “leather has multiple appearances, which can be varied due to animal
skin used and the treatment of said animal skin.” Answer 10. The Examiner
further determines that the Specification does not provide support for what
“similar to leather” means, thus, one of skill in the art would not have
guidance as to its scope. Id.
Appellants argue that the limitation at issue means “visual impression
of leather” or a “visual impression like leather.” Appeal Br. 10. Appellants
further argue that one of skill in the art “would understand clear limitations
of this claim language since most wood products look nothing like leather
whatsoever, in comparison to claimed product which looks similar to
leather.” Id.
During prosecution, a claim is examined for compliance with
35 U.S.C. § 112, ¶ 2 by determining whether the claim meets threshold
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requirements of clarity and precision. In re Skvorecz, 580 F.3d 1262, 1268
(Fed. Cir. 2009) (quoting MPEP § 2173.02). A claim should be rejected as
indefinite when it is amenable to two or more plausible claim constructions.
Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential); In
re Packard, 751 F.3d 1307, 1324 (Fed. Cir. 2014) (“There are good reasons
why unnecessary incoherence and ambiguity in claim constructions should
be disapproved”).
While a claim employing a “term[ ] of degree” may be definite
“where it provide[s] enough certainty to one of skill in the art when read in
the context of the invention,” Interval Licensing LLC v. AOL, Inc., 766 F.3d
1364, 1370 (Fed. Cir. 2014), a term of degree that is “purely subjective” and
depends “on the unpredictable vagaries of any one person’s opinion” is
indefinite, Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350–
51 (Fed. Cir. 2005).
Here, the Specification does not provide any teaching concerning the
“visual impression” of leather nor guidance as to what would be “similar to”
such impression. Appellants do not appear to contest the Examiner’s finding
that leather may take on “multiple appearances” nor that the Specification
lacks any teaching as to the degree of similarity required by the claim.
Accordingly, Appellants have not shown error in the Examiner’s
determination that claims 14–16, 18, and 20 should be rejected as indefinite.

Rejection 3. The Examiner rejected claims 14, 15, and 31 as obvious
over Hull in view of Müller. Final Act. 3–4. In support of the rejection, the
Examiner finds that “Hull teaches a multilayer flexible material comprising
a layer of flexible wooden material, the flexible wooden material having a
series of slots on a surface, the slots extending only partially through the
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flexible wooden material to form a surface texture.” Final Act. 3. The
Examiner further finds that “Hull teaches the flexible wooden material is
glued to a flexible support material that maintains elasticity after drying and
the multi-layer remains flexible in multiple dimensions.” Id.
The Examiner further determines that the “laser-engraved slots”
limitation is a product-by-process limitation and is therefore not limited by
the specified process but only by the structure implied by the process. Id.
The Examiner further finds that “laser and physical tool[s] both accomplish
the same structural result; removal of the wood at engraved slots.” Id.
Accordingly, the Examiner determines, Hull teaches the claimed slots. Id.
The Examiner concedes that Hull does not teach that the engraved
pieces have an area from 1 to 10 square millimeters. Id. at 4. The Examiner
finds that this claim element is taught by Müller as follows:
Muller teaches on making a flexible 3-D deformable piece of
wood (Abstract; Title), where wood is only engraved and not
completely cut through (Abstract). Muller teaches the spacing
of the grooves, where the wood is cut, is spaced to 0.1 to 10
mm. (Paragraph 0014). By spacing the grooves 0.1 to 10 mm,
it would create a surface of 0.01 to 100 square millimeters. This
overlaps the claimed range of 1 to 10 square millimeters.
Muller teaches this spacing allows the wood to have sufficient
3D flexibility.

Id. at 4.
The Examiner further determines that “as Muller teaches a suitable
spacing for the grooves and therefore the area of the resulting wood texture
provides allowing the wood to be flexible, it would have been obvious to
one with ordinary skill in the art at the time of invention to set the textures of
Hull to the spacing taught by Muller.” Id.
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Appellants argue that one of skill in the art would not have had reason
to modify Hull so as to have “pieces” having an area of 10 mm2 or less.
Appeal Br. 11–14. Appellants argue that the wood veneer of Hull “is
intended to have a series of grooves and/ or blocks that are visually very
apparent and obvious to any passerby so that the passerby would believe that
the entire wood column, or pilaster, is formed from a more expensive
custom-carved wood.” Id. at 12. Appellants further argue that, “[i]n other
words, the entire purpose of the invention in Hull is to imitate carved wood
to deceive a passerby.” Id. at 12–13. Appellants contrast this with the
present claims which concern a wooden material intended to look like
leather. Appellants contend that “[t]he obvious difference is that leather has
a small detailed grain to it, whereas carved wood work (such as shown
above in Figure 7) has much larger features because they must necessarily
imitate actual carved wood.” Id. at 13.
This is not supported by Hull. Hull teaches that
“[t]he object of my improvement is primarily to produce for
use, more particularly on curved surfaces, a wood veneer
carved in such a manner as to be readily conformed to a
curved surface, and, secondarily, to combine in one veneer a
series of different patterns, so as to give to the surface
ornamented a diversified appearance.

Hull, 1:10–17 (emphasis added). Thus, Hull teaches that its primary purpose
is to produce a veneer that is conformable to a curved surface. Hull teaches
that an ornamented appearance is merely a secondary purpose.
In the Answer, the Examiner determines that “Muller teaches the
claimed surface area of blocks improves flexibility of a wood veneer.
Therefore, a person with ordinary skill in the art would apply [ ] the claimed
surface blocks to the wood veneer of Hull to improve the flexibility of the
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laminate.” Answer 10. Thus, Hull teaches a flexible veneer and, the
Examiner finds, Müller teaches an improvement thereto. This is supported
by the record. Accordingly, Appellants have not shown reversible error in
this regard.8
Appellants additionally argue that “the invention in Hull could not be
used as a piece of material to be sewn into an article of clothing, furniture,
etc.” Appeal Br. 14. There is some ambiguity as to whether this argument
is put forward in support of the notion that one of skill in the art would not
have had reason to combine the teachings of Hull and Müller or, in the
alternative, that the references do not teach all elements of claim 21 which
includes a “configured to be sewn” limitation.
If the former, we do not adopt such reasoning in view of the
Examiner’s determination that “Appellant[s] ha[ve] not provided any
evidence the material of Hull and Muller would crumble from a needle or be
too thick to sew.” Answer 11; Estee Lauder, Inc. v. L’Oréal, S.A., 129 F.3d
588, 595 (Fed. Cir. 1997) (An argument made by counsel in a brief does not
substitute for evidence lacking in the record.); Perfect Web Techs., Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1332 (Fed. Cir. 2010) (rejecting a
nonobviousness position that was “merely attorney argument lacking
evidentiary support”).
If Appellants offer such argument in support of a contention that the
references do not teach all elements of claim 21, we do not adopt such
reasoning as the argument does not directly address the rejection which finds
that Marmalich teaches “flexible wood veneers can be used in fashion

8 We do not consider the materials newly submitted as Exhibit A. See
37 C.F.R. § 41.33(d) and MPEP § 1206.
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articles (Abstract) and can be configured to be sewn to form such products.”
Final Act. 7.
Appellants additionally argue that Hull is non-analogous art and,
therefore, not within the scope of the prior art. Appeal Br. 15–19.
In evaluating the obviousness of a claim, one must make several
factual inquiries including “the scope and content of the prior art.” Graham
v. John Deere Co., 383 U.S. 1, 17–18 (1966). A reference must be
analogous to fall within the scope of the prior art. See Circuit Check Inc. v.
QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015) (“By finding the claims
nonobvious, the jury presumably found that the disputed prior art is not
analogous and therefore not within the scope of the prior art.”).
To be analogous art, a prior-art reference must (1) be reasonably
pertinent to the particular problem with which the inventor is involved or (2)
be from the same field of endeavor. See Innovention Toys, LLC v. MGA
Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). Here, the Examiner
determines that Hull is from the same field of endeavor as the application.
Answer 11.
Appellants argue that Hull is not from the same field of endeavor as
the application. Appeal Br. 17. Appellants assert that “[a] multilayer
flexible material for use as a leather substitute in furniture and fashion
applications and a ‘thick wooden veneer cut into ornamental forms’ to be
placed around the cylindrical pillar are from different fields of endeavor
because both are used for specific purposes which are totally unrelated to
one another.” Id.
The Patent Office determines the field of endeavor by reference to
explanations of the invention’s subject matter in the patent application,
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including the embodiments, function, and structure of the claimed invention.
See Application of Wood, 599 F.2d 1032, 1036 (CCPA 1979).
The Specification teaches that the “process consists in the processing
of materials, in which a material previously rigid after the processing
acquires characteristics and properties typical of a tissue, in such a way to be
suitable as raw material, preferably in clothing, furnishing and design.”
Spec. 1. The Specification further teaches that “it is specific subject of the
present invention a multilayer flexible element, preferably made of wood,
and related production process by laser engraving and/or cutting, preferably
applied in fashion, furniture and design industries.” Id. at 2. The
Specification additionally teaches an embodiment where “the new material
18a-18b-18c can be treated with hardeners resins, in such a way to make it
rigid and applicable for example in furniture or vehicle industries.” Id. at 7.
Thus, the Specification teaches that the subject materials may be used as a
flexible or rigid component in furniture manufacture or other applications.
Hull teaches that “[t]he object of my improvement is primarily to
produce for use, more particularly on curved surfaces, a wood veneer carved
in such a manner as to be readily conformed to a curved surface.” Hull,
1:10–17. Hull additionally teaches a multilayer veneer. Id. at 1:59–62.
Accordingly, both Hull and the Specification are directed to “a flexible
decorative element formed through flexible carved wood and fabric
laminates” as determined by the Examiner. Answer 11. In view of such
teachings, the Examiner determines that Hull and the Specification fall
within the same field of endeavor.
Appellants have not shown error in this regard.

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Rejections 4–9. The Examiner additionally rejects claims 16, 18, 20–
27, and 32 as obvious over Hull and Müller in combination with various
other references. Final Act. 4–8. At the end of their Brief, Appellants state
that they “respectfully request[ ] a reversal of the rejection of Claims 14, 15,
and 31, as well as all other claims being rejected based upon Hull.” Appeal
Br. 20. We understand this to mean that Appellants rely upon their
arguments presented in regard to Rejection 3 in support of their appeal of
Rejections 4–9. We have not found Appellants’ arguments regarding
Rejection 3 to be persuasive. Accordingly, we determine that Appellants
have not shown error with regard to these rejections.
CONCLUSION
The rejection of claims 14–16, 18, and 20 for failure to comply with
the written description requirement is affirmed. The rejection of claims 14–
16, 18, and 20 as indefinite is affirmed. The rejections of claims 14–16, 18,
20–27, 31, and 32 as obvious are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED