Ex Parte Bauer

Patent Trial and Appeal BoardMar 30, 2017

13264583 (P.T.A.B. Mar. 30, 2017)

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. 13/264,583 02/21/2012 Jorg R. Bauer P40549 4345 7055 7590 04/03/2017 GREENBLUM & BERNSTEIN, P.L.C. 1950 ROLAND CLARKE PLACE RESTON, VA 20191 EXAMINER LEE, DANIEL H. ART UNIT PAPER NUMBER 1746 NOTIFICATION DATE DELIVERY MODE 04/03/2017 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): gbpatent@gbpatent.com greenblum.bernsteinplc@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JORG R. BAUER Appeal 2016-003500 Application 13/264,583 Technology Center 1700 Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and SHELDON M. McGEE, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellant requests our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 17 and 19—27. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). Appeal 2016-003500 Application 13/264,583 STATEMENT OF THE CASE Claim 17 is illustrative of Appellant’s subject matter on appeal and is set forth below: 17. A method for producing a building board, comprising: supplying a base body having a porous surface; supplying a paper web coated on one side with a primer; applying a flowable binder onto at least one of the porous surface of the base body and a second side of the paper web facing towards the base body and not coated with the primer; applying the paper web onto the base body with the flowable binder arranged therebetween; applying a dyeing liquid to the surface of the paper web; and one of pressing and rolling of the paper web onto the base body, wherein the primer is selected such that the primer covers binder that has penetrated through the paper web, and forms an adhesion promoter for the dyeing liquid applied to the surface of the paper web by a programmable printing method, and wherein the applying the dyeing liquid occurs subsequent to the applying the paper web onto the base body. The Examiner relies on the following prior art references as evidence of unpatentability: Hori Reese US 2,035,760 US 5,707,689 March 31, 1936 January 13, 1998 2 Appeal 2016-003500 Application 13/264,583 THE REJECTION Claims 17 and 19-27 are unpatentable under 35 U.S.C. § 103(a) over Reese in view of Hori. ANALYSIS We select claim 1 as representative of all the claims on appeal, based upon Appellants’ presented arguments. 37 C.F.R. § 41.37(c) (1) (iv) (2014). We sustain the § 103(a) rejection advanced in this appeal based on the findings of fact, conclusions of law, and rebuttals to arguments well expressed by the Examiner in the Final Action and in the Answer. The following comments are added for emphasis. The Examiner relies upon Reese for teaching the claimed method, except for an indication of applying the dyeing liquid after the step of applying the paper web onto the base body (claim 17) and use of a programmable printing method (claim 19). The Examiner relies upon Hori for teachings these elements of the claimed subject matter. Ans. 2-4. Appellant presents several prongs of argument: (1) that the Examiner fails to consider the prior art in its entirety (Appeal Br. 11—12); (2) that Reese teaches away from the proposed modification (Appeal Br. 13—19); (3) that aprima facie case has not been established (Appeal Br. 19-21); and (4) that there is no reasonable expectation of success for the proposed modification (Appeal Br. 21—22). Appellant reiterates these arguments in the Reply Brief. We are unpersuaded by these arguments for the reasons provided in the record by the Examiner, including the response made on pages 5—6 of the Answer. We add that with particular regard to the argument that the proposed modification of applying the dyeing liquid after 3 Appeal 2016-003500 Application 13/264,583 the step of applying the paper web to the base body renders Reese unsuitable for its intended purpose (which Appellant reiterates on pages 2—7 of the Reply Brief), Reese indicates on page 3, column 1, lines 38-43, that it has been known to apply a decorative medium directly to the surface of the board by the fact that Reese states that it has been impractical to do so because of the tendency of the board to bleed. Hence, the proposed modification of Reese of applying a dyeing liquid to the board, so long as bleeding is resolved (for example, by applying latex paper first to the board to prevent bleeding of the dyeing liquid applied thereafter according to Hori), would not frustrate the intended purpose of Reese. Hence, it follows that Appellant’s argument that Reese teaches it is necessary to print the paper first is unpersuasive. Also, Appellant’s arguments that certain identified benefits achieved with Reese would not be realized by the proposed modification are also unpersuasive. Appeal Br. 17—19. Reply Br. 6. For example, Appellant argues that attaching latex paper to the board prior to printing the latex paper would render it impossible to only pass the latex paper itself through the printing presses, as required by the method of Reese. Appellant also argues that if the latex paper cannot be printed in the manner described in Reese, the benefits attainable by printing the latex paper in such a manner (e.g., much saved time, removal of unnecessary equipment from process, ability to emboss, and materially reduced cost of decorating the latex paper) would be lost. Id. Such arguments do not address squarely what the combined teachings reasonably would have suggested to one of ordinary skill in the art. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non obviousness cannot be established by attacking references individually 4 Appeal 2016-003500 Application 13/264,583 where the rejection is based upon the teachings of a combination of references.”). Also, it is well settled that merely because “[a] combination would not be made by businessmen for economic reasons does not mean that persons skilled in the art would not make the combination.” In re Farrenkopf 713 F.2d 714, 718 (Fed. Cir. 1983). Furthermore, it has been held that “[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullity its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000). In view of the above, we affirm the rejection. DECISION The rejection is affirmed. 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). See 37 C.F.R. § 1.136(a). ORDER AFFIRMED 5