Ex Parte Pervan et al

Patent Trial and Appeal BoardOct 25, 2017

14089928 (P.T.A.B. Oct. 25, 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. 14/089,928 11/26/2013 DARKO PERVAN 1033462-000333 5062 21839 7590 10/27/2017 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 EXAMINER MINSKEY, JACOB T ART UNIT PAPER NUMBER 1741 NOTIFICATION DATE DELIVERY MODE 10/27/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ADIPDOCl@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DARKO PERVAN, KENT LINDGREN, EDDY BOUKE, JAN JACOBSSON, NICLAS HAKANSSON, and GORAN ZIEGLER Appeal 2016-001258 Application 14/089,928 Technology Center 1700 Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing of our August 1, 2017 Decision. See Req. for Reh’g (Sept. 28, 2017). In that Decision, we affirmed the Examiner’s rejection of claims 21—47. Decision 11. Appellants request rehearing as to claims 23—25, 31, 37, 38, 41, 44 and 47. The Request for Rehearing is granted-in-part. Appeal 2016-001258 Application 14/089,928 The claims at issue each depend from a claim requiring “particles from recycled floor panels.” See Appeal Br. (Claims App. 1^4) (independent claims 21,33,36 each require “particles from recycled floor panels”). The subject claims include additional limitations concerning the components of the recycled particles. As a preliminary matter, we address the construction of the term “particles from recycled floor panels” found in all independent claims. In our prior decision, we indicated that we “do not here decide whether ‘particles from recycled floor panels’ ... is a product-by-process limitation.” Decision 9 n.3. To create a more fully developed record for subsequent proceedings, we do so now. A product-by-process claim “is one in which the product is defined at least in part in terms of the method or process by which it is made.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 158 n. (1989). The Board has previously determined limitations including the term “recycled” to be product-by-process limitations. See Ex Parte Simonutti, No. 2011- 013322, 2013 WL 5758152, *1 (PTAB Oct. 22, 2013) (determining “recycled de-vulcanized rubber” to be a product-by-process limitation); Ex Parte Apps, No. 2014-002879, 2016 WL 1254585, *5 (PTAB March 25, 2016) (determining “recycled PET” to be a product-by-process limitation); Ex Parte Nissinen, No. 2009-013109, 2009 WL 4702589, *3 (PTAB Nov. 24, 2009) (“[t]he claimed ‘recycled calcium carbonate’ is a product-by process limitation”). Similarly, we construe “particles from recycled floor panels” to be a product-by-process limitation. 2 Appeal 2016-001258 Application 14/089,928 The Federal Circuit has provided guidance regarding the patentability of product-by-process claims: We have clearly stated that “[i]n determining validity of a product-by-process claim, the focus is on the product and not the process of making it.” Greenliant Sys., Inc. v. Xicor LLC, 692 F.3d 1261, 1268 (Fed. Cir. 2012) (quoting Amgen Inc. v. F. Hoffman—La Roche Ltd., 580 F.3d 1340, 1369 (Fed. Cir. 2009)). “That is because of the ... longstanding rule that an old product is not patentable even if it is made by a new process.” Id.; see also SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317 (Fed. Cir. 2006) (“It has long been established that one cannot avoid anticipation by an earlier product disclosure by claiming ... the product as produced by a particular process.”); In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985) (“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.”). Purdue Pharma L.P. v. Epic Pharma, LLC, 811 F.3d 1345, 1354 (Fed. Cir. 2016). Similarly, the Federal Circuit has held that, “[f]or validity purposes, the invention in a product-by-process claim is the product.” Medicines Co. v. Hospira, Inc., 827 F.3d 1363, 1374 (Fed. Cir. 2016) (internal quotations omitted). Thus, in determining obviousness, we compare the product of the claim to the prior art. Claims 23 and 3 7 Claims 23 and 37 depend from independent claims 21 and 36 and further require that “the particles from recycled floor panels comprise aluminum oxide particles.” Appeal Br. (Claims App. 1, 3). On appeal, the Board determined that it was known in the art that aluminum oxide may be used in a backing layer to reinforce a melamine layer. Decision 7 (citing Miller 121). 3 Appeal 2016-001258 Application 14/089,928 Appellants assert that the “fatal flaw” in the Board’s analysis is to generalize that “a person of ordinary skill in the art would have known that floor panels may be used as a recycling input in the fabrication of new floor panels.” Req. for Reh’g 4. That is, Appellants’ argument is predicated upon the claimed process of manufacture differing from that of the cited art. The Examiner finds that Miller teaches a laminate floor panel having a balancing (backing) layer comprising aluminum oxide particles. Final Act. 5 111 (citing Miller 121). Appellants do not seek to rebut this finding. Thus, Appellants have not shown that the product of claims 23 and 37 differs from the teachings of Miller. Accordingly, in view of our determination that the “particles from recycled floor panels” limitation is a product-by-process limitation, Appellants have not shown error in the Examiner’s finding of unpatentability. Claims 24 and 38 Claims 24 and 38 depend from claims 21 and 36 and further require that “the particles from recycled floor panels comprise aluminum oxide, melamine particles and wood fibers coated or impregnated with cured binders.” Appeal Br. (Claims App. 1, 3). On appeal, the Board determined that a person of ordinary skill in the art would have known that floor panels may be used as a recycling input in the fabrication of new floor panels and that each of the claimed constituents are known floor panel components. Decision 9. Appellants argue, inter alia, that “[tjhere is no reason one skilled in the art would look to the recycling of wood fibers in HDF layer and have specific reason to use particles from recycled floor panels that include 4 Appeal 2016-001258 Application 14/089,928 aluminum oxide, melamine particles and wood fibers coated or impregnated with cured binders in a balancing or surface layer.” Req. for Reh’g 7. Neither Miller nor Fischer explicitly teach the use of wood fibers in a balancing layer. In the Final Rejection, the Examiner finds that Miller teaches that “the backing layer can include resins or natural, binder, synthetic, or recycled materials.” A disclosure that a backing layer may include natural materials is insufficient to teach the use of wood fibers in a backing layer. Claim 25 Claim 25 depends from claim 21 and further requires that “the particles from recycled floor panels comprise decorative paper, melamine flakes and aluminum oxide particles.” Appellants argue on rehearing that the Board “has failed to provide a specific reason, directed to recycling decorative paper, melamine flakes and aluminum oxide particles.” Appellants do not argue that the claimed structure itself differs from the cited art. Further, review of Miller indicates that the use of each of these materials in a balancing layer was known in the art. Miller 121. Accordingly, for the same reasons as with regard to claims 23 and 37, Appellants have failed to show error in the Board’s determination. Claim 31 Claim 31 depends indirectly from claim 21 and adds the further limitation that “the recycled laminate floor panels are from laminate floor panels comprising a wood fiber based core, a decorative surface layer, the decorative surface layer comprising a thermosetting resin, and aluminum oxide particles.” This limitation is applicable to the recycling input, not the claimed resulting “building panel.” Appellants argue that the Board’s 5 Appeal 2016-001258 Application 14/089,928 Decision did not provide a reason why one of skill in the art would look to the described laminate floor panels as a recycling input. Req. for Reh’g 9. Appellants do not, however, argue in support of any structural difference between the floor panels of the prior art and those of claim 31. Accordingly, they have not shown error in the rejection or Board decision. Claims 41, 44, and 47 Claims 41, 44, and 47 are dependent claims which each require that the claimed particles from recycled floor panels comprise wood fibers. Appeal Br. (Claims App. 4). Claims 41 and 47 depend from claim 21 and require that the balancing layer include such wood fibers. Id. at 1, 4. Claim 44 depends from claim 33 and requires that the surface layer include wood fibers. Id. at 2, 4. For the same reasons as set forth with regard to claims 24 and 38, the cited references do not teach wood fibers in the surface or balancing layers. Accordingly, the rejections of these claims will be reversed. CONCLUSION Appellants’ request for rehearing is granted to the extent that our decision has been reconsidered and modified in keeping with the foregoing. We reverse the rejections of claims 24, 38, 41, 44, and 47. We enter new grounds of rejection for claims 23, 25, 31, and 37. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of 6 Appeal 2016-001258 Application 14/089,928 the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). REHEARING GRANTED-IN-PART 7