Ex Parte Canady et al

Patent Trial and Appeal BoardSep 25, 2012

11041274 (P.T.A.B. Sep. 25, 2012)

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. 11/041,274 01/25/2005 Virgil B. Canady WIL-41126-70 5007 25312 7590 09/26/2012 WILSONART INTERNATIONAL, INC. C/O WELSH & FLAXMAN, LLC 2000 DUKE STREET, SUITE 100 ALEXANDRIA, VA 22314 EXAMINER CHEVALIER, ALICIA ANN ART UNIT PAPER NUMBER 1788 MAIL DATE DELIVERY MODE 09/26/2012 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 VIRGIL B. CANADY, BILLY JOE BILLECK, JR., FINIAN E. HOELSCHER, MICHAEL E. INGRIM and ROBERT R. KREBS ____________ Appeal 2010-008295 Application 11/041,274 Technology Center 1700 ____________ Before PETER F. KRATZ, CATHERINE Q. TIMM, and JEFFREY T. SMITH, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing of our Decision of June 25, 2012, wherein the Examiner’s decision to reject the appealed claims under 35 U.S.C. § 103(a) was affirmed. In accordance with Appellants’ Request, we have reconsidered the Decision, but we find no reason to modify it. Appeal 2010-008295 Application 11/041,274 2 In the Request for Rehearing (Req.), Appellants assert that the “Examiner never argues the obviousness of modifying Nelson to include a compound formable substrate” and the Examiner “does not suggest the medium density fiberboard of Nelson is inherently compound formable” (Req. 3). Based thereon, Appellants urge that “neither of these have been properly established” (Req. 2). We disagree. The Examiner makes it plain that the obviousness position presented is based on the disclosure of a medium density fiberboard substrate in Nelson, which substrate the Examiner asserts, at least implicitly, would be compound formable; that is, three dimensionally formable to some extent (Ans. 5 and 9). In addition, the Examiner relies on an acknowledgement in Appellants’ Specification concerning the compound formability of prior art decorative laminates and indicates that Appellants acknowledgement suggests that the skill level in the art is such that one of ordinary skill in the art would have recognized that “other [known]compound formable decorative laminates” would be employable (Ans. 9). As we pointed out in our Decision (Dec.), representative claim 1 does not require “any particular degree of compound formability along three dimensions” (Dec. 5). Moreover, we found that (Dec. 6 and 7): Like Appellants, Nelson discloses a laminate product that includes, inter alia, a resin impregnated kraft paper core and a melamine impregnated decorative pattern layer formed as part Appeal 2010-008295 Application 11/041,274 3 of a decorative portion of a panel product (col. 1, 11. 48-60, col. 7, 11. 10-17; Fig. 1). Nelson discloses that the substrate to which a decorative laminate is applied can be medium density fiberboard (MDF), as known, and that the laminate structures can be used in a variety of applications, including furniture and cabinets (col. 1, 11. 15-21, and col. 7, 11. 13-17). Thus, the disclosure of Nelson is consistent with Appellants' aforementioned acknowledgement that decorative laminates comprising a resin impregnated core layer and a melamine resin impregnated decorative layer are conventional and that such laminates can be bound to a substrate and be used in door panels (Spec. 3, ll. 1-17). Moreover and based on the appeal record before us, we determined that (Dec. 10): Concerning the argued compound formability property of the decorative laminate, Appellants have not satisfactorily explained why the decorative laminate of Nelson, as modified with the extensible papers of Jaisle, would not have been compound formable. In this regard, we additionally note that Appellants have not reasonably explained why the disclosed prior art MDF substrate of Nelson would not be compound formable. In this regard, Appellants have not identified any particular non- obvious distinction between the manner of making their disclosed MDF substrate and the MDF substrate disclosed and/or suggested by Nelson. Moreover, Appellants suggest that the prior art decorative laminates are three- dimensionally formable at least to some extent; that is, "over/onto three-dimensional surfaces ... having a principle radii of curvature > 1.27 cm." (Spec. 5, 11. 14-17). As such the contentions in the Request fail to identify any facts or arguments that we may have misapprehended or overlooked in rendering our Decision that requires modification of the Decision and reversal of the Examiner’s obviousness rejection. Appeal 2010-008295 Application 11/041,274 4 ORDER Appellants’ Request is granted to the extent that we have reconsidered our Decision, but is denied with respect to making any change therein. DENIED tc