Ex Parte Crostic

Patent Trial and Appeal BoardNov 13, 2012

11987410 (P.T.A.B. Nov. 13, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/987,410 11/29/2007 William H. Crostic JR. GBP-27 (P-500) 5312 22827 7590 11/14/2012 DORITY & MANNING, P.A. POST OFFICE BOX 1449 GREENVILLE, SC 29602-1449 EXAMINER TOLIN, MICHAEL A ART UNIT PAPER NUMBER 1745 MAIL DATE DELIVERY MODE 11/14/2012 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 APPEALS ____________ Ex parte WILLAM H. CROSTIC, JR. ____________ Appeal 2011-009021 Application 11/987,410 Technology Center 1700 ____________ Before CHARLES F. WARREN, MARK NAGUMO, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009021 Application 11/987,410 2 Appellant appeals under 35 U.S.C. § 134 from the Examiner’s rejection of claims 27-37 under 35 U.S.C. § 103(a) as obvious over the combined prior art of Rias1, Clark,2 Lostak,3 Schaffer4, and Israel5. (Ans.4) The sole independent claim 27 is representative of the claimed subject matter: 27. A method of making a siding panel, the method comprising: depositing fiberglass at least partially wetted with urethane onto a first cover; applying a second cover onto the first cover and the fiberglass wetted with urethane such that the fiberglass wetted with urethane is positioned between the first cover and the second cover; at least partially binding the fiberglass to the first cover, the second cover, or combinations thereof via the urethane; and compressing the fiberglass wetted with urethane between at least the first cover and the second cover to form a siding panel. ANALYSIS Upon consideration of the evidence on this record and each of Appellant’s contentions, we find that the preponderance of evidence on this record supports the Examiner’s conclusion that the subject matter of Appellant’s claims 27-37 is unpatentable. (Ans. generally). In assessing whether a claim to a combination of prior art elements would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art elements or steps according to their established functions. KSR Int’l Co. v. 1 US 4,756,955 patented July 12, 1988. 2 US 2005/0266222 A1 published December 1, 2005. 3 US 5,240,527 patented August 31, 1993. 4 US 2005/0272338 A1published December 8, 2005. 5 US 4,833,182 patented May 23, 1989. Appeal 2011-009021 Application 11/987,410 3 Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Appellant’s main arguments that Rias forms a facing that has at most one cover sheet (Br. 4), and that Rias teaches away because it does not teach two cover sheets (Br. 5) are unavailing for reasons aptly set forth by the Examiner (Ans. 10, 11). See, In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (whether a reference teaches away from a claimed invention is a question of fact). Notably, Rias teaches that its fiberglass composite with a resin binder “may be furnished, at the time of its fabrication by compression, with facing sheets such as kraft paper, . . . or wood veneers of various types” (Rias, col. 3, ll. 55-60; emphasis added). Furthermore, Rias discusses that it was known to make siding panels of fiberglass “combined with one or more facing sheets under elevated pressure and temperature, to produce the desired . . . panel as well as to effect polymerization of the binder and the cohesion of the constituent elements of said panel.” (Rias, col. 1, ll. 30-35). Appellant has not explained why the facing sheets do not meet the two covers required by the claims. Appellant’s argument that “none of the cited references teach or suggest urethane being utilized” as recited in claim 27 (Br. 6) is unpersuasive as it fails to consider the prior art as a whole (e.g., see Ans. 11- 13). Appellant has not provided any persuasive reasoning or credible evidence why one of ordinary skill in the art would not have, using no more than ordinary creativity, predictably used a known alternative urethane Appeal 2011-009021 Application 11/987,410 4 binder to wet fiberglass as exemplified in Clark in a process of making a fiberglass siding panel as exemplified in Rias (e.g., Ans. 5, 6; see generally Br.; no Reply Brief has been filed). See KSR, 550 U.S. at 421 (“[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Appellant has also not provided any persuasive reasoning or credible evidence why one of ordinary skill in the art would not have, using no more than ordinary creativity, predictably used compression as suggested in Rais to at least partially bind the fiberglass to the first or second cover with the urethane as recited herein, since these steps are all expressly suggested by the overall teachings of the applied prior art (Ans. 5, 6, 12, explaining that Lostak exemplifies that it is generally known in the art to apply a binder to fibers to result in bonding the fibers to one another and to the cover layer, and that Shaffer exemplifies it is known that two opposing cover layers may be laminated to a fiberglass core during application of pressure; Ans. 7, explaining that Israel is further evidence that urethane would have been expected to bond the fiberglass of Rais to kraft paper or wood cover layers; see generally Br.). Accordingly, for the reasons stated above and in the Answer, the preponderance of the evidence supports the Examiner’s rejection on appeal. DECISION The decision of the Examiner 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(a). ORDER Appeal 2011-009021 Application 11/987,410 5 AFFIRMED sld