Ex Parte PERVAN et al

Patent Trials and Appeals BoardMar 29, 2019

13938589 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/938,589 07/10/2013 21839 7590 04/02/2019 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 FIRST NAMED INVENTOR DARKO PERV AN 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 0080883-000044 9591 EXAMINER DAGENAIS-ENGLEHAR, KRISTEN A ART UNIT PAPER NUMBER 1717 NOTIFICATION DATE DELIVERY MODE 04/02/2019 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): ADIPDOC 1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DARKO PERVAN and TONYPERVAN Appeal2017-006739 Application 13/938,589 1 Technology Center 1700 Before ADRIENE LEPIANE HANLON, JAMES C. HOUSEL, and LILAN REN, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. Â§ 134(a) from an Examiner's decision finally rejecting claims 1-13 and 22-26. We have jurisdiction under 35 U.S.C. Â§ 6(b). A hearing was held on March 12, 2019. We AFFIRM. The claims on appeal are directed to a method of coating a building panel, such as a floor panel, having a decorative wood surface. The method comprises 1 The real party in interest, and the Applicant, is said to be CERALOC INNOVATION AB. Appeal Brief dated October 10, 2016 ("App. Br."), at 2. Appeal2017-006739 Application 13/938,589 the steps of applying a UV curable coating layer with a digital print head and curing the coating, thereby forming a transparent protective surface layer on the decorative wood surface. The Appellants disclose that laminated flooring produced using printing technology was known at the time of the Appellants' invention. Spec. 2, 1. 16. In digital printing, for example, the Appellants disclose that a desired image is applied to a floor panel using a digital non-contact printing process. Id. at 3, 11. 10-14. At the time of the Appellants' invention, however, transparent protective layers are said to have been conventionally applied using a roller. Id. at 6, 11. 13- 14; id. at 8, 11. 2--4. The Appellants disclose that it would be a "major advantage" if protective layers were "made in a more cost efficient and flexible way and with improved properties mainly related to design and quality." Id. at 6, 11. 14--16. To that end, the Appellants' invention is directed to using a digital print head to apply a protective layer. Id. at 16, 11. 5-11. Independent claim 1, the sole independent claim on appeal, is reproduced below from the Claims Appendix to the Appeal Brief. The limitations at issue are italicized. 1. A method of coating a building panel having a decorative surface of wood, wherein the decorative surface is made of wood, the method comprising the steps of: [ 1] applying a UV curable coating layer with a digital print head on the decorative surface of wood of the building panel, wherein the decorative surface is made of wood; and [2] curing the UV curable coating layer with UV light, thereby forming a transparent protective swface layer, wherein said decorative surface is visible through said transparent protective surface layer. 2 Appeal2017-006739 Application 13/938,589 App. Br., Claims Appendix 1 (numbering added). The Examiner maintains the following rejections on appeal: (1) claims 1, 2, 8-11, and 22-26 under 35 U.S.C. Â§ I03(a) as unpatentable over the combination of Eriksson2 and Chen 648; 3 (2) claims 3-5, 12, and 13 under 35 U.S.C. Â§ I03(a) as unpatentable over the combination of Eriksson, Chen 648, and Chen 662; 4 and (3) claims 6 and 7 under 35 U.S.C. Â§ I03(a) as unpatentable over the combination of Eriksson, Chen 648, and Crette. 5 B. DISCUSSION 1. Claims 1-5, 8-13, and 22-26 The Examiner finds Eriksson discloses a method of coating a building panel, such as a floor board, wall panel, or ceiling panel, having a decorative surface. Final Act. 2; 6 see also Eriksson ,r 4. The Examiner finds Eriksson teaches applying a UV curable coating layer on the decorative surface and curing the UV curable coating layer, thereby forming a protective surface layer. Final Act. 3. The Examiner finds Eriksson "is silent on the protective surface layer being transparent." Final Act. 3. The Examiner, nonetheless, finds that Eriksson's protective layer is inherently transparent because the decorative surface is visible through the protective layer. Final Act. 3; see also Reply Br. 5 (recognizing that Eriksson discloses UV curable materials that form a transparent protective layer). 7 2 US 2004/0142107 Al to Eriksson et al., published July 22, 2004 ("Eriksson"). 3 US 2007/0283648 Al to Chen, published December 13, 2007 ("Chen 648"). 4 US 2009/0031662 Al to Chen et al., published February 5, 2009 ("Chen 662"). 5 US 2005/0176321 Al to Crette et al., published August 11, 2005 ("Crette"). 6 Final Office Action dated March 24, 2016. 7 Reply Brief dated March 10, 2017. 3 Appeal2017-006739 Application 13/938,589 The Examiner also finds Eriksson "is silent on applying the UV curable coating layer with a digital print head." Final Act. 3. The Examiner, however, finds Chen 648 discloses a method of decorating a bevel surface or other surface of a laminated flooring by non-transfer printing, such as digital printing. Final Act. 4. The Examiner finds Chen 648 discloses that non-transfer printing can be adopted in many printing processes for three principle reasons: [F]irst, it is a direct method to accurately place a material such as a design, onto a surface in one step, second, it is a digital process which enables creating designs by way of programs, software, data, and the like, and continuously changing the output without the need of any intermediate stages, and third, it provides a non-contact method of depositing inks to provide a printing design ... and that the inks that can be used in printing are very versatile because they can comprise a water base, a solvent base, and/or a UV curable base material. Final Act. 4 ( citing Chen 648, at ,r 66). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to apply the UV curable coating layer in Eriksson's method using a digital print head because Chen 648 teaches that a digital print head accurately deposits material, enables versatility of design, provides a non-contact method of depositing inks, and can be used to deposit a variety of inks. Final Act. 4. The Appellants contend that Chen 648 discloses a clear coating as a wear layer but does not disclose applying that wear layer using a digital print head. App. Br. 11; see also App. Br. 9 (arguing that "[t]he totality of [Chen's 648] disclosure is focused on digitally printing with an ink to create a surface design"). The Examiner explains that "[t]he use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned[; t ]hey are part of the literature of the art, relevant for all they contain." Final Act. 11 (citing In re Heck, 699 F.2d 1331, 1332-33 (Fed. Cir. 4 Appeal2017-006739 Application 13/938,589 1983 (quoting In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968))). In this case, the Examiner finds that the benefits of using a digital print head (e.g., accurately depositing a material, depositing a plurality of inks), as disclosed in Chen 648, "are benefits that would be gained from the deposition of any layer using a digital printhead," including the UV curable coating layer disclosed in Eriksson. Final Act. 11. The Appellants argue that the benefits identified by the Examiner are directed to printing a color image with a digital print head. Reply Br. 4. The Appellants argue that the Examiner does not explain why any of the alleged benefits disclosed in Chen 648 would have provided any benefit to Eriksson in forming a UV-cured transparent protective surface layer. Reply Br. 4. The Appellants' argument is not persuasive of reversible error. Chen 648 discloses: Digital printing using, for instance, ink jet or laser technology, is highly accurate in placing the ink onto the desired surface. Since the printing method can be computer controlled, the amount of ink and the individual steps of printing can also be controlled. The result is a more precise and efficient printing method. Chen 648, at ,r 75; see also Final Act. 4 (finding Chen 648 discloses that digital printing accurately places a material onto a surface) ( citing Chen 648, at ,r 66). Consistent with the Examiner's findings, we find that one of ordinary skill in the art would have understood that accurate placement of ink would be desirable in forming a smooth, uniform protective surface layer on the building panels of Eriksson. See Final Act. 4; see also KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary skill is also a person of ordinary creativity, not an automaton."). 5 Appeal2017-006739 Application 13/938,589 The Appellants also argue that the UV curable base materials disclosed in Chen 648, which are applied using a digital print head, are different from UV curable inks that produce a transparent protective surface layer. App. Br. 12. In particular, the Appellants argue that the UV curable base materials are designed to dry instantly whereas UV curable inks that produce a transparent protective surface layer include a thickness and do not dry instantly. App. Br. 12. The Appellants do not direct us to any evidence to support that argument. See Ans. 15 8 (finding that Appellants provide no evidence to support the argument that protection must be provided by a layer having a certain thickness); see also In re Schulze, 346 F .2d 600, 602 ( CCP A 1965) ("Argument in the brief does not take the place of evidence in the record."). Moreover, the Appellants do not direct us to evidence establishing that any difference(s) between the UV curable materials disclosed in Chen 648 and Eriksson would have led one of ordinary skill in the art away from using the digital print head disclosed in Chen 648 to apply Eriksson's UV curable coating layer. Based on the foregoing, a preponderance of the evidence supports the Examiner's conclusion of obviousness as to claim 1. The Appellants do not present arguments in support of the separate patentability of any of claims 2-5, 8- 13, and 22-26. See App. Br. 15. Therefore, the obviousness rejections of claims 1-5, 8-13, and 22-26 are sustained. 2. Claims 6 and 7 Claim 6 depends from claim 1 and recites "wherein the UV curable coating layer is a liquid polyurethane substance." App. Br., Claims Appendix 2. Claim 7 8 Examiner's Answer dated January 13, 2017. 6 Appeal2017-006739 Application 13/938,589 depends from claim 1 and recites "wherein the UV curable coating layer is water based UV curable polyurethane." App. Br., Claims Appendix 2. The Examiner finds Crette discloses that polyurethanes were known to be used in wear resistant layers for floor, wall, and ceiling coverings. Final Act. 9 (citing Crette ,r 4). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to use the polyurethanes disclosed in Crette in Eriksson's modified method "because [ Crette] teaches that such a composition has increased wear resistance." Final Act. 10. The Appellants argue that Crette discloses that the polyurethanes are used to saturate an overlay in a laminated floor, wall, or ceiling covering. App. Br. 13-14. The Appellants argue that "[ o ]ne of ordinary skill in the art would not have found it obvious to digitally print Crette's polyurethane on a decorative surface to form a transparent layer." App. Br. 14--15. The Appellants' argument fails to consider the prior art as a whole. The Examiner finds Crette is not limited to impregnating an overlay but rather teaches that polyurethanes have increased wear resistance, and thus are useful as protective surface layers. Ans. 10, 18. As discussed above, Chen 648 suggests applying a protective surface layer using a digital print head. The Appellants do not contend that one of ordinary skill in the art would not have reasonably expected the polyurethanes disclosed in Crette to be successfully applied using the digital print head disclosed in Chen 648. Therefore, the Appellants' arguments are not persuasive of reversible error. The obviousness rejection of claims 6 and 7 is sustained. C. DECISION The Examiner's decision is affirmed. 7 Appeal2017-006739 Application 13/938,589 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8