Ex Parte Bauer

Patent Trial and Appeal Board

Apr 29, 2016

12595439 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/595,439 10/09/2009
7055 7590 05/03/2016
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
Joerg R. Bauer
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.
P37356 2911
EXAMINER
JIANG, LISHA
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
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
Appeal2014-008439
Application 12/595,439
Technology Center 1700
Before TERRY J. OWENS, CHRISTOPHER L. OGDEN, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals the Examiner's final rejection of claims 16-34, 36,
and 37. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
1 Appellant identifies Interglarion Limited of Engomi, Nikosia, Cyprus as
the Real Party in Interest. App. Br. 2.
Appeal2014-008439
Application 12/595,439
The Claimed Invention
Appellant's disclosure relates to a method for producing a component
with a real-wood surface, which is printed by an inkjet printing method such
that its appearance corresponds to that of an original with a grain and pore
structure corresponding to a predetermined desired type of wood and a
predetermined coloration. Spec. 1, 11. 3-6; App. Br. 6. Independent claim
16 is representative of the claims on appeal and is reproduced below from
the Claims Appendix to the Appeal Brief (App. Br. 39) (emphasis added):
16. A method for producing a component with a real-wood
surface, the method comprising:
supplying an original;
inputting, into an electronic data processing system,
original data related to an appearance of a surface of the original,
wherein the appearance of the surface of the original describes a
predetermined type of wood;
supplying a component having a timber surface with a
pore structure corresponding to that of the predetermined type
of wood; and
printing on the timber surface using an inkjet printing
method in accordance with the original data such that a three-
dimensional surface structure of the timber surface determined
by the pore structure is at least partly retained,
whereby the printed timber surface is the real-wood
surface, which has been printed on the timber surface with the
appearance of the surface of the original, and has a grain and the
pore structure corresponding to the predetermined type of wood
and a predetermined coloration.
The References
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Janssen us 4,391,013 July 5, 1983
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Appeal2014-008439
Application 12/595,439
Yam et al., US 5,605,491 Feb. 25, 1997
(hereinafter "Yam")
Nakamura US 2002/0054302 Al May 9, 2002
Hansson et al., US 2003/0207083 Al Nov. 6, 2003
(hereinafter "Hansson")
Luetgert et al., US 2004/0139673 Al July 22, 2004
(hereinafter "Luetgert")
Reichwein et al., US 2005/0249929 Al Nov. 10, 2005
(hereinafter "Reichwein")
Martin et al., US 2006/0176318 Al Aug. 10, 2006
(hereinafter "Martin")
Park US 2006/0288885 Al Dec. 28, 2006
Bauer DE 10323412 Al Dec. 30, 2004
Tlie _l?_ejectiorzs
1. Claims 16, 25, 26, 31, 33, 34, 36, and 37 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Bauer in view of Reichwein.
2. Claims 17-21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bauer and Reichwein, as applied to claim 16, and in
further view of Hansson.
3. Claim 23 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Bauer and Reichwein, as applied to claim 16, and in
further view of Martin.
4. Claim 24 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Bauer and Reichwein, as applied to claim 16, and further
in view of Nakamura.
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Application 12/595,439
5. Claims 27 and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bauer and Reichwein, as applied to claim 16, and further
in view of Luetgert.
6. Claim 29 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Bauer, Reichwein, and Luetgert, as applied to claim 27,
and further in view of Jans sen.
7. Claim 30 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Bauer, Reichwein, and Luetgert, as applied to claim 27,
and further in view of Park.
8. Claims 32 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Bauer and Reichwein, as applied to claim 31, and further
in view of Park and Yam.
9. Claim 22 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Bauer, Reichwein, and Hansson, as applied to claim 21,
and further in view of Park and Yam.
OPINION
Rejection 1
Appellant argues that the Examiner's rejection of claim 16 should be
reversed because the combination of Bauer and Reichwein fails to teach or
suggest the "supplying a component having a timber surface with a pore
structure corresponding to that of the predetermined type of wood"2 and "the
pore structure corresponding to the predetermined type of wood" limitations
(hereinafter, the "pore structure limitations"), as claimed. App. Br. 11.
2 Independent claim 3 6 and dependent claim 3 7 each include this same
limitation. App. Br. 42, 43 (Claims App'x).
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Appeal2014-008439
Application 12/595,439
The Examiner bears the initial burden of establishing a prima facie
case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
The Examiner finds that the combination of Bauer and Reichwein inherently
teaches these limitations. Final Act. 8, 9.
In particular, the Examiner finds that Bauer teaches an imitation wood
piece having dot or slit-like embossments that mimic the three-dimensional
surface of the predetermined type of wood and form pores on the imitation
wood piece that "inherently imitate[] the pore structure of the predetermined
type of wood." Final Act. 8 (citing Bauer i-fi-130, 42, 49); Adv. Act. 3, 4
(citing Bauer, Figs. 4a and 4b ). The Examiner further finds that Reichwein
teaches: (a) "that a first wood piece that is very close in or of similar
appearance to that of [a] second wood piece may be made to resemble said
second wood piece via a color printing process"; (b) "that a white oak piece
may be converted to a red oak piece via a printing to correct for difference[s]
in coloration and/or graining characteristics"; and that ( c) "the pore structure
,.. 1 •, 1 • • 1 ,1 • •1 • 1 • 1 1• • ' ' or wnne oaK 1s mnerenuy very s1muar m pnys1ca1 mmens10n, structure,
and/ or appearance to that of red oak." Id. at 9 (citing Reichwein i-f 15).
Additionally, the Examiner finds that one of ordinary skill in the art
would have been motivated to combine the teachings of Bauer and
Reichwein to supply a timber component with a surface having a pore
structure that corresponds to the pore structure of the predetermined type of
wood because it would have allowed for a cost savings in the manufacturing
process, and because "based on common sense and/or common sense
knowledge, one of ordinary skill in the art would have been motivated to
optimize the selection of the inexpensive timber piece or component such
that the pore structure of timber surface [was or would have been]
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Application 12/595,439
essentially that of the expensive predetermined type of wood." Final Act. 9,
10 (citing Reichwein i-fi-f l -3, 15).
The Examiner concludes that "[i]t would have been obvious to one of
ordinary skill in the art that the pore structure, which is an integral part of a
wood piece, should also be imitated in order to create a realistic wood
piece." Ans. 4, 5.
We are not persuaded that the record contains sufficient evidence to
support the Examiner's finding that the combination of Bauer and
Reichwein inherently teaches the pore structure limitations of claim 16. For
a claim limitation to be found inherently present in the prior art, the
limitation must be either (a) necessarily present, or (b) the natural result of
the combination of elements explicitly disclosed by the prior art. Par
Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F .3d 1186, 1195-96
(Fed. Cir. 2014).
The Examiner does not identify sufficient evidence that "a component
having a timber surface with a pore structure corresponding to that of the
predetermined wood" is necessarily present in the cited prior art
combination, or the natural result of the combination of elements explicitly
disclosed by the prior art. As noted by Appellant (App. Br. 12, 13), the
Examiner does not point to any teachings in Bauer or Reichwein that
disclose or suggest the claimed limitations. The portions of Bauer that the
Examiner relies upon in the Answer as support for showing inherency refer
to "embossing" or "wood grain." See Bauer i-fi-130 (referring to
"embossing"), 42 (denoting "embossed ... dot- or slot-shaped incisions"),
49 (discussing "wood grain"). None of these cited portions, however, teach,
suggest, or mention a pore structure corresponding to that of the
predetermined type of wood, as required by the claims. These cited portions
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Application 12/595,439
also do not teach or suggest that the claimed pore structure would be the
natural result of combining the prior art's teachings regarding embossing
and/or wood grain. The Examiner's conclusory assertion that the embossing
referred to in Bauer forms pores that "inherently imitate[] the pore structure
of the predetermined type of wood," without more, is insufficient to
establish that the combination of Bauer and Reichwein inherently discloses
the pore structure limitations and support a prima case face of obviousness.
In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) ("rejections on obviousness
grounds cannot be sustained by mere conclusory statements").
Moreover, we do not find the Examiner's assertion (Ans. 4, 5) that it
"would have been obvious to one of ordinary skill in the art that the pore
structure, which is an integral part of a wood piece, should also be imitated
in order to create a realistic wood piece" persuasive because the Examiner
does not identify sufficient evidence to support it. Kahn, 441 F.3d at 988.
The Examiner does not direct us to sufficient evidence-whether in Bauer,
Reichwein, or elsewhere in the record-that supports the contention that
pore structure should be imitated in order to create a realistic wood piece.
Accordingly, we reverse the Examiner's rejection of claim 16 under
35 U.S.C. § 103(a) as unpatentable over Bauer in view ofReichwein. We
also reverse the Examiner's rejection of claims 25, 26, 31, 33, and 34
because these claims each depend from claim 16. Because claims 36 and 37
include the same pore structure limitation as claim 16, we also reverse these
claims for the reasons discussed above for claims 16.
Rejections 2-9
Because claims 17-24, 27, 29, 30, 32 each depend from claim 16, and
because each of the Examiner's remaining rejections is based upon the
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Application 12/595,439
combination of Bauer and Reichwein and the same deficiency as Rejection 1
discussed above and because none of the additional cited references or
combinations cure the deficiency, we also reverse these rejections.
DECISION/ORDER
The Examiner's rejection of claims 16-34, 36, and 37 under 35 U.S.C.
§ 103(a) is reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
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