Ex Parte Branch et al

Patent Trial and Appeal Board

Aug 17, 2017

13954199 (P.T.A.B. Aug. 17, 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.
wil-61633 6502
EXAMINER
POWERS, LAURA C
ART UNIT PAPER NUMBER
1785
MAIL DATE DELIVERY MODE
13/954,199 07/30/2013
21884 7590 08/17/2017
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
Joe E. Branch
08/17/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOE E. BRANCH, ERIC W. KENDALL, ROBERT R. KREBS,
JOHN P. McSPEDON, JANET STEPAN, and JOEL L. WILLIAMS
Appeal 2017-001595
Application 13/954,199
Technology Center 1700
Before JEFFREY T. SMITH, DONNA M. PRAISS, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 2, and 5—10. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 We cite the Specification (“Spec.”) filed July 30, 2013; Final Office Action
(Final Act.) dated October 28, 2015; Appellants’ Appeal Brief (“App. Br.”)
dated March 22, 2016; Examiner’s Answer (“Ans.”) dated September 7,
2016, and Appellants’ Reply Brief (“Reply Br.”) dated November 7, 2016.
2 Appellants identify Wilsonart LLC as the real party in interest. App. Br. 1.
Appeal 2017-001595
Application 13/954,199
BACKGROUND
The subject matter on appeal relates to printed decorative laminates.
Spec. 11. Claim 1—the sole independent claim on appeal—is reproduced
from the Claims Appendix of the Appeal Brief as follows:
1. A printed laminate, comprising:
a substrate;
a priming layer positioned over the substrate, wherein
digital printing is applied to the priming layer; and
a top coat layer applied over the digital printing and the
priming layer, the top coat layer being composed of a clear hot
melt polyurethane first top coat layer and a clear UV cured
acrylic second top coat layer.
REJECTIONS
The Examiner maintains the following grounds of rejection:3
I. Claims 1, 2, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schacht,4 Dong,5 and Kawabata.6
II. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schacht, Dong, Kawabata, and van der Hoeven.7
III. Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schacht, Dong, Kawabata, and Husemann.8
3 Final Act. 2—9; Ans. 2—8.
4 US 2011/0268937 Al, published November 3, 2011 (“Schacht”).
5 US 2002/0168503 Al, published November 14, 2002 (“Dong”).
6 US 2004/0166334 Al, published August 26, 2004 (“Kawabata”).
7 US 4,789,604, issued December 6, 1988 (“van der Hoeven”).
8 US 2008/0220252 Al, published September 11, 2008 (“Husemann”).
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Application 13/954,199
DISCUSSION
Rejection I
With regard to Rejection I, Appellants separately argue claims 1, 9,
and 10. App. Br. 7—17. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), we
select claim 1 as representative. Claim 2 stands or falls with claim 1.
Separately argued claims 9 and 10 are separately addressed.
Claim 1
The Examiner finds that Schacht discloses a multi-layered panel
comprising transparent or translucent synthetic material which is coated as a
top layer over a printed motif on a primed substrate. Final Act. 3. The
Examiner further finds that Schacht teaches that a separate glue layer may be
provided to bond the synthetic material to the underlying layers, and a UV-
hardenable lacquer finishing layer may be applied to an outer surface of the
synthetic material for scratch resistance. Id. at 3^4. These findings are
supported by a preponderance of the evidence. See Schacht 117 (“[T]he top
layer can be manufactured at least partially or entirely separate and can be
provided on the substrate afterwards, for example, by adhering or gluing this
top layer onto the substrate. In such case, however, a separate glue
connection will be present.”); id. 126 (“[I]t is also possible that further
finishing layers are provided on the synthetic material layer concerned. For
example, the transparent or translucent synthetic material layer may
comprise a layer, situated at the surface, on the basis of lacquer, such as, for
example, a layer on the basis of UV-hardening or electron beam-hardening
lacquer.”).
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Application 13/954,199
The Examiner further finds that Dong teaches the use of hot melt
polyurethane as a layer-bonding adhesive in decorative laminates, and that
Kawabata teaches the use of UV-curable acrylic as an abrasion-resistant top
coat in decorative laminates. Final Act. 4—5. The Examiner finds that one
skilled in the art therefore would have had a reason to use hot melt
polyurethane for Schacht’s glue layer, and UV-curable acrylic for Schacht’s
finishing layer, to provide the desired adhesion and protective
characteristics, respectively. Id.
Appellants argue that “the implementation of Dong’s teaching with
the panels of Schacht would presumably require the application of heat and
pressure as disclosed by Dong,” and that “the process contemplated by
Schacht does not appear to allow for the application of heat and pressure as
required by Dong.” App. Br. 11. This argument is not persuasive. Dong
teaches that when a hot-melt polyurethane is used as adhesive, processing
temperature may vary from about 150 °F to about 250 °F and pressure may
vary from about 10 psi to about 200 psi, for a period of time ranging from 30
to 300 seconds. Dong 1124. Appellants fail to present persuasive evidence
or technical reasoning to demonstrate that these processing conditions are
incompatible with Schacht’s laminate.
Appellants also argue that Dong does not specify the disclosed hot-
melt polyurethane as clear. App. Br. 12. Appellants point to Dong’s
Example 13, which describes the polyurethane adhesive being provided
beneath a decorative wood veneer, such that there would be no need for the
polyurethane to be clear. Id. However, the Examiner’s articulate reason for
using the hot-melt adhesive in Schacht is to bond the transparent or
translucent synthetic material layer over a printed decorative motif.
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Application 13/954,199
Appellants fail to identify reversible error in the Examiner’s finding that one
skilled in the art would have selected a clear polyurethane adhesive for that
purpose.
Appellants acknowledge that Kawabata discloses a radiation-curable
resin layer formed over a decorative layer, but argue that Kawabata does not
disclose a two layer top coat in which the first layer includes a clear hot-melt
polyurethane. Id. at 13. First, we note that claim 1 does not expressly limit
the recited top coat to two layers. As such, we are not persuaded that claim
1 precludes Schacht’s intervening synthetic material layer. To the extent
that Appellants’ argument concerns Kawabata’s non-disclosure of a hot-melt
polyurethane layer, this argument fails to address the ground of rejection,
which is based on the collective teachings of Schacht, Dong, and Kawabata.
Appellants’ arguments do not persuade us of reversible error in the
Examiner’s rejection of claim 1.
Claims 9 and 10
With regard to claims 9 and 10, the Examiner finds that one skilled in
the art would have optimized the coat weight for each of the polyurethane
adhesive layer and the acrylic top coat layer to yield sufficient adhesion and
protection characteristics provided by these materials. Final Act. 6; Ans. 14.
Appellants do not dispute that coat weight in such applications would have
been recognized by the skilled artisan as a result-effective variable,
balancing the desired adhesion and protection characteristics with material
cost. Schacht similarly recognizes that the coat weight for the disclosed
synthetic material layer may be varied. Schacht 155. Nor do Appellants
argue that such optimization would lead to coat weights outside the ranges
recited in claims 9 and 10. Appellants’ argument that the Examiner has not
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Application 13/954,199
presented evidence sufficient to support a finding of “inherency,” App. Br.
16, is not persuasive. We do not read the Examiner’s rejection as being
based on any such finding of inherency.
Although the Examiner’s rationale in rejecting claims 9 and 10 is not
thoroughly articulated, we are persuaded that the Examiner presents findings
sufficient to provide notice of the basis for the rejection. Appellants do not
persuade us of reversible error in the Examiner’s rejection of claims 9 and
10.
For the foregoing reasons, we sustain Rejection I.
Rejections II and III
Appellants do not separately argue against Rejection II, other than to
rely on the arguments presented in connection with Rejection I as applied to
claim 1. App. Br. 17. With regard to Rejection III, Appellants rely on the
same argument presented in connection with Rejection I as applied to claims
9 and 10. Id. at 17—18. Accordingly, we sustain each of Rejections II and
III for the reasons set forth above in connection with Rejection I.
DECISION
The Examiner’s decision rejecting claims 1, 2, and 5—10 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
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