Ex Parte Ketzer et al

Patent Trial and Appeal Board

Aug 14, 2017

12527713 (P.T.A.B. Aug. 14, 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.
12/527,713 03/09/2010 Michael Ketzer 7731 7595
29602 7590 08/14/2017
TOTTNS 1UANVTT T F
EXAMINER
10100 WEST UTE AVENUE STEELE, JENNIFER A
PO BOX 625005
LITTLETON, CO 80162-5005 ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
08/14/2017 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 MICHAEL KETZER, KLAUS FRIEDRICH GLEICH,
BERND CHRISTENSEN, ALAN JAFFEE, PHIL MIELE,
GLENDA BENNETT, BERNHARD ECKERT, and
ANNETTE ALBRECHT1
Appeal 2016-005278
Application 12/527,713
Technology Center 1700
Before PETER F. KRATZ, MONTE T. SQUIRE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal the Examiner’s decision to reject claims 1—13 and
15—17. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
1 Appellants identify Johns Manville as the real party in interest. App. Br. 1.
2 In our Decision, we refer to the Specification filed August 19, 2009
(“Spec.”); Final Office Action mailed February 26, 2015 (“Final Act.”);
Advisory Action dated April 29, 2015 (“Adv. Act.”); Appeal Brief dated
July 22, 2015 (“App. Br.”); and the Examiner’s Answer to the Appeal Brief
dated February 16, 2016 (“Ans.”).
Appeal 2016-005278
Application 12/527,713
The Claimed Invention
Appellants’ disclosure relates to directly decoratable and/or printable
composite materials that are said to be suitable as materials in interior
finishing, for linings, constructions and for the manufacture of furniture and
similar products. Spec. 1; Abstract. Claim 1 is illustrative of the claimed
subject matter on appeal and is reproduced below from the Claims Appendix
to the Appeal Brief (App. Br. 1) (key disputed claim language italicized and
bolded):
1. A composite material comprising:
a) a carrier; and
b) at least one textile surface structure laminated on at least
one side of the carrier, wherein the textile surface structure has
at least one finally hardened B-stage binder which progressed
through the B-stage and final hardening while in the textile
structure as a binder, and a chemical binder which was added
to the textile surface before it was provided with the B-stage
binder,
wherein at least one side of the composite material is
equipped with the textile surface structure having a surface
quality such that the textile surface structure can be directly
printed or lacquered.
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
The References
Roberts
Degens
Jaffee
US 2,759,837 Aug. 21,1956
US 4,158,713 June 19, 1979
US 2004/0266304 A1 Dec. 30, 2004
2
Appeal 2016-005278
Application 12/527,713
(hereinafter “Jaffee ’304”)3
Bush et al.WOA1 u,±.9
(hereinafter “Bush”)
US 2005/0103262 Al May 19, 2005
Jaffee US 2006/0054265 Al Mar. 16, 2006
(hereinafter “Jaffee ’265”)4
Price EP 1595718 Al Nov. 16, 2005
The Rejections
On appeal, the Examiner maintains the following rejections5:
1. Claims 1—13 and 15—17 are rejected under 35 U.S.C. § 112(a)
or 35 U.S.C. § 112 (pre-AIA), first paragraph, for non-enablement
(“Rejection 1”). Final Act. 2—3; Ans. 2.
2. Claims 1—13 and 15—17 are rejected under 35 U.S.C. § 112(b)
or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject matter which
the inventor or a joint inventor, or for pre-AIA the applicant regards as the
invention (“Rejection 2”). Final Act. 4; Ans. 2.
3. Claims 1—3, 5, 6, 8, and 15—17 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Price (“Rejection 3”). Final
Act. 5; Ans. 2.
3 Appellants refer to the Jaffee ’304 reference as “Jaffee 1” in the Appeal
Brief.
4 Appellants refer to the Jaffee ’265 reference as “Jaffee 2” in the Appeal
Brief.
5 The Examiner’s Statements of Rejection for Rejections 1, 2, 3, and 10 have
been corrected to reflect that claim 14 has been cancelled. See Fisting of
Claims, docketed April 15, 2015.
3
Appeal 2016-005278
Application 12/527,713
4. Claim 2 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Price in view of Degens (“Rejection 4”). Final Act. 11;
Ans. 2.
5. Claims 4 and 9 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Price in view of Bush (“Rejection 5”). Final Act.
12; Ans. 3.
6. Claims 10-13 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Price in view of Bush and further in view of
Jaffee ’304 (“Rejection 6”). Final Act. 13; Ans. 3.
7. Claim 7 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Price in view of Roberts (“Rejection 7”). Final Act. 16;
Ans. 3.
8. Claims 9 and 10 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Price in view of Jaffee ’265 (“Rejection 8”).
Final Act. 17; Ans. 3.
9. Claims 11—13 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Price in view of Jaffee ’265 and in further view of
Jaffee ’304 (“Rejection 9”). Final Act. 18; Ans. 3.
10. Claims 1,3,5, 6, 8—10, 12, and 13 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Jaffee ’265 (“Rejection 10”).
Final Act. 20; Ans. 3.
11. Claims 2, 4, 11, and 12 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Jaffee ’265 in view of
Jaffee ’304 and in further view of Bush (“Rejection 11”). Final Act. 23;
Ans. 2.
4
Appeal 2016-005278
Application 12/527,713
OPINION
Rejection 1
The Examiner rejects claims 1—13 and 15—17 under § 112 for non­
enablement. Final Act. 2—3. In particular, the Examiner finds that undue
experimentation would be required in determining how to practice and use
the claimed invention because: (a) the claims and Specification do not
provide a definition of the term “chemical binder”; (b) there is no direction
or guidance as to what type of binder is being used; and (c) there is an
absence of working examples concerning the claimed chemical binder. Id.
at 3.
We disagree with the Examiner’s determination in this regard. Based
on our review of the Specification and the reasons provided by Appellants at
pages 2—A of the Appeal Brief, we find that the Examiner reversibly erred in
rejecting the claims for non-enablement. Specifically, we find that the
language of the claims and the background and detailed description sections
of the Specification provide disclosure regarding the term “chemical binder”
sufficient to enable one of ordinary skill in the art to practice the invention
commensurate in scope with the claims without undue experimentation.
Regarding the claim language “a chemical binder which was added to
the textile surface before it was provided with the B-stage binder,” the
Specification discloses that chemical binders may be used in order to
provide mechanical strengthening to the claimed textile surface structure.
Spec. 6. The Specification further discloses that the claimed textile structure
includes a B-stage binder and the chemical binders used can be the same or
different but must be selected from the group of the binder systems
compatible with the B-stage binder. Id. at 6. The Specification also teaches
5
Appeal 2016-005278
Application 12/527,713
that the amount of chemical binder is maximally 25% by weight, preferably
10% by weight or less, and a minimum of 0.5 % by weight, preferably a
minimum of 1% by weight. Id. at 6.
Moreover, page 1 of the Specification explicitly references PCT
International Publication No. WO 2006/031522 A2 (pub. Mar. 23, 2006),
which discloses chemical binders, including furfuryl alcohol formaldehyde
(FAF) and phenol formaldehyde (PF) for use in making laminated products
similar to the claimed invention (see, e.g., WO 2006/031522 A2, pp. 2, 3).
Examiner’s assertions that the Specification does not provide a
definition for the term chemical binder or any working examples (Final
Act. 3) are not probative of non-enablement because the mere fact that a
specification may not provide a definition for a term or working examples,
without more, does not establish that the specification would not have
enabled a person skilled in the art to practice the invention commensurate in
scope with the claims.
Accordingly, we reverse the Examiner’s § 112 rejection of claims 1—
13 and 15—17 for non-enablement.
Rejection 2
The Examiner rejects claims 1—13 and 15—17 under § 112 for
indefmiteness. Final Act. 4. In particular, the Examiner finds the term
“chemical binder” indefinite because one of ordinary skill in the art would
know that a chemical binder could encompass any compound that is
chemical in nature and can bind materials and use of the term chemical
binder, without more, fails to distinguish the claimed invention from the
prior art. Id. at 4. The Examiner also finds that the Specification does not
6
Appeal 2016-005278
Application 12/527,713
“adequately describe or define what the chemical binder is or what materials
constitute the chemical binder of the invention.” Id. at 4—5.
We disagree with the Examiner’s rejection in this regard based on our
review of the claim language and the Specification and for reasons provided
by Appellants at pages 4 and 5 of the Appeal Brief.
To satisfy 35U.S.C. § 112, second paragraph, the question to be
answered is whether the ordinarily skilled artisan would understand what is
claimed when that claim is read in light of the specification. Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
Regarding the claimed “chemical binder,” as previously discussed
above, the Specification explicitly discloses that the invention includes a B-
stage binder and the chemical binders used can be the same or different but
must be selected from the group of the binder systems compatible with the
B-stage binder. Spec. 6. The Specification also references
WO 2006/031522 A2, which discloses specific binders that may be used.
That the claims are not limited to any particular chemical binder,
without more is insufficient to establish indefmiteness. In re Gardner, 427
F.2d 786, 788 (CCPA 1970) (“Breadth is not indefmiteness.”).
Accordingly, we reverse the Examiner’s § 112 rejection of claims 1—
13 and 15—17 for indefmiteness.
Rejection 3
In response to this rejection, Appellants argue independent claim 1
only and do not present separate argument for the patentability of any
dependent claims. We, therefore, select claim 1 as representative and the
remaining claims subject to this rejection stand or fall with claim 1.
37C.F.R. §41.37(c)(l)(iv).
7
Appeal 2016-005278
Application 12/527,713
The Examiner finds that Price teaches or suggests a composite
material satisfying all of the limitations of claim 1 and concludes that the
reference would have rendered claim 1 obvious. Final Act. 5—10. In
particular, the Examiner finds that Price teaches a decorative laminate
produced by a polymer applied to the surface of a substrate and subsequently
stabilized with an overlaying paper or nonwoven material. Id. at 6, 7 (citing
Price, Abstract, 141, Figs. 2, 7).
The Examiner finds further that Price teaches a method for curing the
polymer comprising a first process step wherein the applied polymer is
partially cured to its B-stage and the B-stage polymer is subsequently fully
cured after application of an overlaying paper or nonwoven material. Final
Act. 6 (citing Price, Abstract). The Examiner also finds that Price teaches
that the overlaying paper or non-woven material is preferably coated or
impregnated with a melamine layer by vapor phase deposition in order to
provide a melamine-rich surface and the melamine layer stabilizes the
overlaying nonwoven layer prior to printing. Id. at 8 (citing Price 37, 38).
Based on Price’s teachings, the Examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time the invention
was made to have employed the B-stage binder as a binder of the textile to
improve the strength of the textile as well as the surface characteristics for
printing and to have employed a melamine coating to the nonwoven to
stabilize or strengthen the nonwoven layer for functioning as a printed on
surface. Final Act. 9. The Examiner also concludes that it would have been
obvious to one of ordinary skill to have combined the coated nonwoven with
the B-stage binder in order to produce a laminate that has improved
adhesion. Id. at 9.
8
Appeal 2016-005278
Application 12/527,713
Appellants argue that the Examiner’s rejection should be reversed
because Price does not disclose or suggest either the B-stage binder or the
sequence of steps recited in claim 1. App. Br. 6. In particular, Appellants
argue that Price does not disclose or suggest first using a chemical binder to
strengthen the textile surface, and then providing the B-stage resin as a
binder, with the progression through the B-stage and final hardening being
achieved while the B-stage binder was within the textile surface structure.
Id. at 6. Appellants contend that Price’s partially cured resin is a layer in the
laminate—and not a binder of the nonwoven—and thus, would not act as a
binder, as required by the claim. Id. at 7.
Appellants’ arguments are not persuasive of reversible error in the
Examiner’s rejection. Rather, on the record before us, we find that a
preponderance of the evidence supports the Examiner’s determination that
Price teaches or suggests all of the limitations of claim 1 and would have
rendered the claim obvious. Price, Abstract, || 37, 38, 41, 51—53, 59,
Figs. 2, 7.
We do not find Appellants’ argument that Price does not disclose or
suggest either the B-stage binder or the sequence of steps recited in claim 1
(App. Br. 6) persuasive for the well-stated reasons provided by the Examiner
at pages 9—15 of the Answer. As the Examiner finds (Ans. 10) and contrary
to what Appellants argue, Price explicitly teaches a B-stage binder and a
method for curing the polymer comprising a first process step wherein the
applied polymer is partially cured to its B-stage and the B-stage polymer is
subsequently fully cured after application of an overlaying paper or
nonwoven material. Price, Abstract.
9
Appeal 2016-005278
Application 12/527,713
Appellants’ argument that Price does not disclose or suggest the
“sequence of steps” recited in claim 1 (App. Br. 6) is not persuasive because
as the Examiner finds (Ans. 11), the claim is written in a product-by-process
format. The patentability of this type of claim does not depend on the
process steps, except to the extent that the process steps are shown to result
in properties not possessed by prior art products. “If the product in a
product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior product was made
by a different process.” In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985);
see also In re Pilkington, 411 F.2d 1345, 1348 (CCPA 1969) (“[The]
patentability of a claim to a product does not rest merely on a difference in
the method by which that product is made. Rather, it is the product itself
which must be new and unobvious.”)
As the Examiner finds (Ans. 12), because Price teaches or suggests all
the limitations of the claimed product, the burden shifts to Appellants to
show an unobvious difference between the claimed product and the prior art
product. In re Marosi, 710 F.2d 798, 802 (Fed. Cir. 1993).
Appellants, however, have not shown, either by persuasive technical
reasoning or evidence, an unobvious difference between the claimed product
and the prior art product. As the Examiner finds (Ans. 12), Appellants have
not provided any evidence (e.g., unexpected results) that the claimed
structure implied by the recited process steps is different than Price’s
laminate structure.
We do not find Appellants’ argument that the partially cured resin
layer of Price is not a binder (App. Br. 6) persuasive for the well-stated
reasons provided by the Examiner at page 13 of the Answer. As the
10
Appeal 2016-005278
Application 12/527,713
Examiner finds (Ans. 13), Price teaches that the partially cured resin layer is
a B-stage binder; the melamine-rich, pre-coated nonwoven is combined with
the B-stage binder; and the B-stage binder binds the nonwoven to the carrier
layer and forms a laminate under heat and pressure. Price, Abstract, H 37,
38.
Appellants’ assertions that “there would be little if any room left for
the already partially cured resin layer to penetrate the non-woven and be a
binder” and “the partially cured resin layer of Price certainly cannot progress
through both stages of hardening in the non-woven” (App. Br. 7) are not
well-taken because they are conclusory and, without more, insufficient to
establish reversible error or otherwise rebut the Examiner’s analysis and
findings in this regard. Attorney argument is not evidence. In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Accordingly, we affirm the Examiner’s rejection of claims 1—3, 5, 6,
8, and 15—17 under 35 U.S.C. § 103(a) as being unpatentable over Price.
Rejections 4, 5, 6, 7, 8, and 9
Appellants do not present any additional substantive arguments in
response to the Examiner’s Rejections 4 through 9, stated above. Rather,
Appellants rely on the same arguments presented above in response to the
Examiner’s Rejection 3. See App. Br. 8—10.
We do not find these arguments persuasive for the same reasons
discussed above for affirming the Examiner’s rejection of claim 1 as obvious
over Price (Rejection 3) and, accordingly, affirm the Examiner’s Rejections
4, 5, 6, 7, 8, and 9.
11
Appeal 2016-005278
Application 12/527,713
Rejection 10
Appellants argue claims 1, 3, 5, 6, 8—10, 12, and 13 as a group. We
select claim 1 as representative and the remaining claims subject to this
rejection stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Jaffee ’265 teaches or suggests a composite
material satisfying all of the limitations of claim 1 and concludes that the
reference would have rendered claim 1 obvious. Final Act. 20—23 (citing
Jaffee ’265 H 22, 33,44).
In response to the Examiner’s rejection of claim 1 as obvious over
Jaffee ’265, Appellants present arguments similar to those previously
presented in response to the Examiner’s rejection of claim 1 as obvious over
Price. In particular, Appellants argue that the Examiner’s rejection should
be reversed because Jaffee ’265 does not disclose or suggest the use of both
a chemical binder and a B-stage binder in the required sequence. App.
Br. 11.
Appellants further argue that because Jaffee ’265 lists the types of
binders that may be used and does not suggest the advantages of first using a
chemical binder and then a B-stage binder, one of ordinary skill in the art
would not have been “directed to the claimed product having a chemical
binder and a B-stage binder” and “there is no suggestion or motivation in
[Jaffee ’265] for one of ordinary skill in the art to do so.” App. Br. 11.
We do not find Appellants’ arguments persuasive of reversible error
in the Examiner’s rejection for the well-stated reasons provided by the
Examiner at pages 17—19 of the Answer and pages 20-23 of the Final Office
Action. A preponderance of the evidence supports the Examiner’s
determination that Jaffee ’265 teaches or suggests a laminate product
12
Appeal 2016-005278
Application 12/527,713
satisfying all of the limitations of claim 1, including having a chemical
binder and B-stage binder, and would have rendered the claim obvious.
Jaffee ’265, Abstract, || 9, 22, 30, 33, 44.
As the Examiner finds (Ans. 17; Final Act. 21), Jaffee ’265 teaches a
method of making a wood laminate comprising wood particles and a binder
and providing a nonwoven fabric mat, and that the nonwoven fabric mat can
have a binder or a B-stage binder. Jaffee ’265, Abstract, || 9, 22, 24—26, 30.
As the Examiner further finds (Final Act. 21), Jaffee ’265 teaches that the
nonwoven fabric mat imparts increased strength and moisture resistance
properties to the wood laminate. Jaffee ’265 Tflf 68, 69.
As the Examiner also finds (Ans. 17—18; Final Act. 22), Jaffee ’265
teaches that it was known in the art to employ various binders, additives, and
B-stage binders in making a laminate product. Id. 29, 33, 34. Moreover,
the reference discloses specific examples of binders that may be used for
forming nonwoven mats, including “a furfuryl alcohol based resin, a phenol
formaldehyde resin, a melamine formaldehyde resin, and mixtures thereof.”
Id. 133.
Appellants’ argument exposes no reversible error in the Examiner’s
factual findings in this regard.
The Examiner also provides articulated reasoning with rational
underpinning explaining why one of ordinary skill would have had reason to
use both a chemical binder and B-stage binder in making a wood laminate
product comprising a nonwoven fiber mat. See In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (requiring “some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness”).
13
Appeal 2016-005278
Application 12/527,713
In particular, we concur with the Examiner’s determination (Ans. 17—
18; Final Act. 22) that, in view of Jaffee ’265’s teachings, it would have
been obvious to one of ordinary skill in the art to have used a chemical
binder and B-stage binder because the use of various binders to bond fibers
together in making wood laminate products was well known in the art.
Jaffee ’265 133.
Appellants’ arguments that Jaffee ’265 does not disclose or suggest
the “required sequence” of claim 1 and does not suggest the “advantages of
first using a chemical binder and then a B-stage binder” (App. Br. 11) are
not persuasive for the reasons provided by the Examiner at pages 17—19 of
the Answer and previously discussed above regarding claim 1 being a
product-by process claim. As the Examiner finds (Ans. 18—19), claim 1 is a
product-by-process claim and Appellants have not presented evidence to
show an unobvious difference between the claimed product and Jaffee
’265’s prior art product or sufficient to establish that the specific order of
steps produces an unexpected result. Marosi, 710 F.2d at 802.
Accordingly, we affirm the Examiner’s rejection of claims 1, 3, 5, 6,
8—10, 12, and 13 under 35 U.S.C. § 103(a) as being unpatentable over
Jaffee ’265.
Rejection 11
Appellants do not present any additional substantive arguments in
response to the Examiner’s Rejection 11, stated above. Rather, Appellants
rely on the same arguments presented above in response to the Examiner’s
Rejection 10. App. Br. 12.
14
Appeal 2016-005278
Application 12/527,713
We do not find these arguments persuasive for the same reasons
discussed above for affirming the Examiner’s Rejection 10 and, accordingly,
affirm the Examiner’s Rejection 11.
DECISION
The Examiner’s rejections of claims 1—13 and 15—17 under
35 U.S.C. § 112 (Rejections 1 and 2, respectively) are reversed.
The Examiner’s rejections of claims 1—13 and 15—17 under
35 U.S.C. § 103(a) (Rejections 3—11, respectively) are affirmed.
It is ordered that the Examiner’s decision 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).
AFFIRMED
15