Ex Parte Gauthier et al

Patent Trial and Appeal Board

Oct 16, 2012

11330776 (P.T.A.B. Oct. 16, 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.
11/330,776 01/12/2006 Sylvie Gauthier 6674-0037-1-1 9889
50811 7590 10/17/2012
O''Shea Getz P.C.
1500 MAIN ST. SUITE 912
SPRINGFIELD, MA 01115
EXAMINER
GOFF II, JOHN L
ART UNIT PAPER NUMBER
1746
MAIL DATE DELIVERY MODE
10/17/2012 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 SYLVIE GAUTHIER and GEORGE SANGARIDES
____________________

Appeal 2012-000824
Application 11/330,776
Technology Center 1700
____________________

Before PETER F. KRATZ, CATHERINE Q. TIMM, and MARK
NAGUMO, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 8-24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a method for making a leather decorative
laminate (Spec. ¶ [0001]). Claim 8 is illustrative:
8. A method for the production of a heat and pressure
consolidated leather laminate comprising the steps of:
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stacking in a superimposed relationship a core layer
comprised of at least one cellulosic sheet impregnated with a
thermosetting resin, a decorative layer consisting essentially of
leather and a release sheet between plates of a thermosetting
press;
increasing the pressure of the thermosetting press to a
predetermined pressure;
increasing the temperature of the thermosetting press to a
predetermined temperature;
maintaining the stacked layers in the heated, pressurized
thermosetting press for a predetermined period of time
sufficient to consolidate the stacked layers into a decorative
laminate;
decreasing the temperature of the press while maintaining
the elevated pressure for a predetermined period of time
sufficient to cool the laminate;
removing the laminate from the thermosetting press; and
removing the release sheet from the laminate.
(Claims App. at Br. 19.)
The Examiner provisionally rejects claims 8-24 on the grounds of
non-statutory obviousness-type double patenting over claims 1-13 of
Application 11/613,625 with various combinations of Sojlin1, McQuade2,
and Parker3 or Wilson4 (Ans. 17-19). Appellants do not challenge these
rejections (Br. 17-18). Therefore, we summarily affirm them.

1 Sjolin et al., WO 01/72512 A1, pub. Oct. 4, 2001.
2 McQuade, Jr., US 3,698,978, patented Oct. 17, 1972.
3 Parker, US 3,505,169, patented Apr. 7, 1970.
4 Wilson et al., US 2,601,671, patented Jun. 24, 1952.
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The Examiner also rejects claims 8-24 under 35 U.S.C. § 103(a) as
obvious over: (1) McQuade in view of Parker or Wilson and Sjolin, and (2)
over Scher5 in view of Parker or Wilson and Sjolin.
While Appellants list various groups of claims under separate
headings, only the arguments presented for claims 22-24 give rise to an issue
separate from the issues arising for the other claims. Therefore, we select
claim 8 as representative for resolving the issues arising for claims 8-21.
We select claim 22 as representative for resolving the issues arising for
claims 22-24.
OPINION
A. Claims 8-21
With respect to the rejection of claims 8-21 over either McQuade or
Scher in view of Parker or Wilson and Sjolin, two issues arise.
1. Does McQuade and/or Scher teach away from producing a heat
and pressure consolidated laminate including leather?
2. Does Parker and/or Wilson fail to teach or suggest a decorative
layer consisting essentially of leather?
Appellants contend that McQuade and Scher teach away from using
leather in their laminates because they teach forming the laminates from
resin impregnated paper sheets that simulate natural products such as leather
but are less expensive (McQuade) and are more resistant to physical abuse
(Scher) than the natural product, e.g., leather (Br. 9-10 and 13-14).
McQuade is directed to the production of a high pressure decorative
laminate (col. 1, ll. 19-21), and discloses that:

5 Scher, US 3,700,537, patented Oct. 24, 1972.
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The production of high pressure laminates is well known,
having been carried out for many years. Generally, the
procedures for forming such laminates involve providing
phenolic resin impregnated paper core sheets and melamine
resin decorative and overlay sheets and melamine resin
decorative and overlay sheets and pressing the stacked resin
impregnated sheets under heat on the order of 230°-310° F. and
under pressure of approximately 1000-1600 p.s.i. until the
resins have become thermoset, thereby providing an extremely
hard, attractive and permanent surfacing material known as a
"high pressure laminate" which has, for many years, found use
as table tops, desk tops, counter tops, wall paneling, etc.
(McQuade, col. 1, ll. 24-36.)
McQuade explains that, in the past, such high pressure laminates
where made with glossy, satin, or textured surfaces, but “[w]ith the rising
cost of natural products, such as wood and leather, it has become even more
desirable to provide irregularly surfaced high pressure laminates which
simulate these natural products.” (McQuade, col. 1, ll. 37-53.)
McQuade’s high pressure laminate includes a thermosetting resin
impregnated fibrous print sheet 10 and overlay sheets 12 and 12’ (McQuade,
col. 2, ll. 36-70). The decorative print sheet 10 is formed of alpha-cellulose
(paper) and printed with a leather-like coloring to simulate natural leather
(McQuade, col. 2, ll. 44-46). A texture-imparting separator sheet 16 and
sculptured die plate 18 impart a leather-like texture to the high pressure
laminate (McQuade, col. 2, ll. 47-68 and col. 3, ll. 23-25).
Scher also indicates that forming a high pressure laminate of
impregnated paper sheets with a textured surface simulating, for instance, a
leather surface was known in the art (Scher, col. 1, l. 39 to col. 2, l. 26).
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Scher desires a deeply embossed surface that will hide the effects of physical
abuse. Scher states that:
Where it is desirable to produce high pressure laminates
with deeply embossed surfaces that duplicate natural products
such as slate, leather and wood, or nonrepresentational effects
that are functionally useful because they tend to hide the effects
of physical abuse, several techniques can be used.
(Scher, col. 2, ll. 47-52.) Scher then discusses the use of various types of
metal plates and techniques commonly used in the pressing process to impart
the embossed surface (Scher, col. 2, ll. 52-56).
Parker discloses a reconstituted leather made in the same way paper is
made and consisting of shredded scrap leather fibers, without or without
unbleached kraft pulp (cellulose) and resin binder (Parker, col. 1, ll. 13-23
and col. 2, ll. 33-41). The cured sheets comprise from about 35 to 70%
shredded scrap leather (Parker, col. 3, ll. 19-21). The product closely
resembles natural leather, but with superior abrasion resistance and
flexibility (Parker, col. 1, ll. 53-57).
Wilson discloses a leather board formed by impregnating leather
fibers with resin followed by forming a waterlaid product by, for instance, a
conventional paper making process (Wilson, col. 1, ll. 1-8 and col. 2, ll. 17-
24).
“What the prior art teaches and whether it teaches toward or away
from the claimed invention . . . is a determination of fact.” Para-Ordnance
Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995)
(citing In re Bell, 991 F.2d 781, 784 (Fed. Cir. 1993)).
When the prior art teaches away from a combination, that
combination is more likely to be nonobvious, KSR Int'l. Co. v. Teleflex Inc.,
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550 U.S. 398, 417 (2007), but to teach away, a reference must discourage
one of ordinary skill in the art from following the path set out in the
reference, or lead that person in a direction divergent from the path that was
taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Various types of teachings may support a finding of “teaching away.” These
include known disadvantages in old devices that would naturally discourage
the search for new inventions, teachings leaving the impression that the
product would not have the property sought by the applicant, and reference
combinations that would produce a seemingly inoperative device. Id.
(citations omitted). “Although a reference that teaches away is a significant
factor to be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance.” Id. For
instance, when there is nothing within the reference teaching that the
claimed element should not, or cannot, be used, and further cited prior art
teaches the propriety of employing the missing element, the teachings of
both reference must be weighed together. Para-Ordnance Mfg., Inc. v. SGS
Importers Int'l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995)
We cannot say that McQuade’s statement that “[w]ith the rising cost
of natural products, such as wood and leather, it has become even more
desirable to provide irregularly surfaced high pressure laminates which
simulate these natural products” rises to the level of a teaching away
sufficient to support a conclusion of nonobviousness. McQuade forms the
decorative sheet from paper. Parker and Wilson suggest that it was known
to include scrap leather fibers when making sheets by the papermaking
process. It follows that it would have been obvious to use such scrap leather
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fibers when forming the decorative sheets of McQuade to obtain the
properties known to result from using such fibers. McQuade, after all seeks
to simulate leather.
Nor can we say that Scher’s statement about deeply embossed
surfaces hiding the effects of physical abuse is the type of “teaching away”
supporting a conclusion of nonobviousness. This statement concerns the
surface texture of the sheet, not its composition.
With respect to the second issue, Appellants contend that neither
Parker nor Wilson discloses “a decorative layer consisting essentially of
leather” (Br. 10-11). According to Appellants, Parker’s substitute leather
material contains a maximum of 70% leather by weight and the leather
board of Wilson is wholly different from the decorative layer of the present
application (id.). To support Appellants’ characterization of Wilson,
Appellants cite to a Memo, which states that “[l]eather board is not leather”
(Br. 11, citing AHFA Memo6, 2).
Appellants’ Specification describes the decorative layer 14 as
“includes a leather material.” (Spec. ¶ [0017].) This “leather material”
preferably is a “bonded leather.” (id.) The Specification states that “bonded
leather” “refers to a leather product that comprises leather shavings made
from scrap and/ or recycled leather (id.). The shavings are processed into a
sheet product using bonding agents.” (id.)
Parker forms a reconstituted leather from shredded scrap leather fibers
bonded with polyurethane resin (Parker, col. 1, ll. 13-15).

6 Kochekian et al. Memo to the American Home Furnishings Alliance on
Bonded Leather (June 30, 2008) made of record by the Examiner (Notice of
References Cited, May 29, 2009).
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Wilson forms leather board by impregnating scrap leather fibers with
resinous materials (Wilson, col. 1, ll. 1-27).
Appellants’ claims 22-24 depend from independent claims requiring
the decorative layer consist essentially of leather (Claims App. at Br. 21).
Claims 22-24 further limit the decorative layer to consisting essentially of a
bonded leather (id.).
The “phrase ‘consisting essentially of’ limits the scope of a claim to
the specified ingredients and those that do not materially affect the basic and
novel characteristic(s) of a composition.” In re Herz, 537 F.2d 549, 551-52
(CCPA 1976); see also PPG Indus., Inc. v. Guardian Indus. Corp., 156 F.3d
1351, 1354 (Fed. Cir. 1998) (“By using the term “consisting essentially of,”
the drafter signals that the invention necessarily includes the listed
ingredients and is open to unlisted ingredients that do not materially affect
the basic and novel properties of the invention”).
In assessing a broadest reasonable claim construction wherein a
potentially exclusionary “consisting essentially of” transitional phrase is
involved, it is appropriate that Appellants bear the burden of: (1) showing
the basic and novel characteristics of their claimed invention, and (2)
establishing how those characteristics would be materially changed by any
allegedly excluded component of an applied reference. See In re DeLajarte,
337 F.2d 870, 873-74 (CCPA 1964); Ex parte Hoffman, 12 USPQ2d 1061,
1063-64 (BPAI 1989).
Because claim 22 depends from claim 8, claim 8 must be interpreted
as encompassing decorative layers consisting essentially of bonded leather.
Given that bonded leather includes bonding agents, it follows that bonding
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agents used in bonded leather do not materially affect the basic and novel
characteristics of the “leather” of claim 8. The independent claim is also
presumed to have a broader scope such that it also encompasses more than
just bonded leather. Moreover, Appellants have not met their burden of
showing what the basic and novel characteristics of their leather are, nor
established how the additives taught by Parker and/or Wilson would
materially change those characteristics.
The preponderance of the evidence supports a determination that the
claim language “consisting essentially of leather” encompasses bonded
leather and other materials including scrap leather combined with resin such
as the substitute leather of Parker, the leather board of Wilson, and the resin
impregnated fibrous sheet containing paper and scrap leather fibers
suggested by the combination of prior art.
B. Claims 22-24
As we mentioned above, claims 22-24 further require that the
decorative layer consist essentially of bonded leather. As Appellants argue
these claims as a group, we select claim 22 as representative. Claim 22 is
dependent on claim 8.
Appellants contend that the “leather board” of Wilson is not bonded
leather (Br. 12). As evidence, Appellants rely upon a statement in the
AHFA Memo that “"[l]eather board is sometimes, mistakenly, referred to as
'bonded' or 'composition' leather." (Br 12, citing AHFA Memo: pg[.] 2,
emphasis added).
However, as pointed out by the Examiner, Wilson discloses a product
made of leather shavings made from scrap and/or recycled leather processed
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into a sheet using bonding agents (Ans. 18, citing Wilson, col. 1, ll. 1-49).
Appellants’ definition in the Specification of “bonded leather” encompasses
such a leather product comprising leather shavings made from scrap and/or
recycled leather (Spec. ¶ [0017]). Wilson’s leather board appears to meet
the definition provided in the Specification. The difference in naming
convention here is not enough because Wilson teaches a chemical
composition that appears to meet what is required by the claim.
Moreover, there is no dispute that Parker teaches a bonded leather or
that the prior art combinations suggest leather substitutes that would have
been bonded leathers. Therefore, we cannot say that Appellants have
identified a reversible error in the Examiner’s rejections.
CONCLUSION
We sustain the Examiner’s rejections.
DECISION
The Examiner’s decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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