Ex Parte Smith

Patent Trial and Appeal BoardDec 3, 2012

11223127 (P.T.A.B. Dec. 3, 2012)

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. 11/223,127 09/12/2005 Patrick Smith TPP 31746A 6665 74217 7590 12/03/2012 NOVAK, DRUCE + QUIGG L.L.P. - PERGO 300 New Jersey Ave, NW Fifth Floor Washington, DC 20001 EXAMINER HUANG, CHENG YUAN ART UNIT PAPER NUMBER 1787 MAIL DATE DELIVERY MODE 12/03/2012 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 PATRICK SMITH ____________ Appeal 2011-010167 Application 11/223,127 Technology Center 1700 ____________ Before RICHARD E. SCHAFER, PETER F. KRATZ, and BEVERLY A. FRANKLIN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 from the Examiner's rejection of claims 1, 2, and 4-28. We have jurisdiction under 35 U.S.C. § 6. An oral hearing was held on November 8, 2012. STATEMENT OF THE CASE Claim 1 is representative of the subject matter on appeal, and is set forth below: Appeal 2011-010167 Application 11/223,127 2 1. A decorative laminate board having edges, a decorative upper layer and a rear layer, the decorative laminate board comprising at least a base layer, an intermediate decor layer and a wear layer wherein at least one of said layers comprises polymers, and further wherein predetermined portions of the decorative upper layer are removed by laser beam to provide the decorative laminate with an embossed surface exhibiting at least one of scorched or charred residue on the decorative upper layer adjacent the removed portions. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Scher ‘137 3,732,137 Oct. 26, 1970 Labrec 2003/0234286 A1 Dec. 25, 2003 Simon 6,746,756 B2 Jun. 8, 2004 Safta 6,436,159 B1 Aug. 20, 2002 Scher ‘480 4,255,480 Mar. 10, 1981 Hiller 2002/0136969 A1 Sep. 26, 2002 THE REJECTIONS 1. Claims 1-2 and 4-28 are rejected under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement. 2. Claims 4, 8-15, and 27 are rejected under 35 U.S.C. §112, second paragraph, as being indefinite. Appeal 2011-010167 Application 11/223,127 3 3. Claims 1, 4, 6-12, 16, 18-19, 21, 23-24, 27-28 are rejected under 35 U.S.C. §103(a) as being unpatentable over Scher ‘137 in view of Labrec. 4. Claims 2 and 5 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Scher ‘137 in view of Labrec, and further in view of Simon. 5. Claims 13-15, 22, and 25 are rejected under 35 U.S.C. §103(a) as being unpatentable over Scher ‘137 in view of Labrec, and further in view of Safta. 6. Claims 17 and 20 are rejected under 35 U.S.C. §103(a) as being unpatentable over Scher ‘137 in view of Labrec, and further in view of Scher ‘480. 7. Claim 26 is rejected under 35 U.S.C. §103(a) as being unpatentable over Scher ‘137 in view of Labrec and Safta, and further in view of Scher ‘480. ANALYSIS As an initial matter, Appellant has not presented separate arguments for all of the rejected claims. Rather, Appellant’s arguments are principally directed to independent claim 1. Any claim not separately argued will stand or fall with its respective independent claim. See 37 C.F.R. § 41.37(c)(1)(vii). Our determinations made with respect to Rejection 3 are dispositive for Rejections 4-7. We essentially adopt the Examiner’s findings pertinent to the issues raised by Appellant, except for the §112 rejections. We therefore Appeal 2011-010167 Application 11/223,127 4 incorporate the Examiner’s position as set forth in the Answer (except for the §112 rejections) herein. We add the following for emphasis only. Rejection 1 It is the Examiner’s position that the word “residue” in claim 1, and the subject matter recited in claim 4 regarding “charred remnants adjacent removed portions”, are not supported by the original Specification. Ans. 3- 4, and 14. However, we agree with Appellant’s position (for the reasons provided by Appellant in the Brief (Br. 3-6) and Reply Brief (Reply Br. 2- 3)) that “residue” and “remnants” are reciprocal for the reasons provided therein. We therefore reverse the Examiner’s rejection of claims 1-2 and 4- 28 under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement. Rejection 2 It is the Examiner’s position that the recitation of “the charred remnants” found in claims 4, 8-10, and 27 is indefinite because there is insufficient antecedent basis for this phrase. Ans. 4, and 14-15. However, because we agree with Appellant that the words “residue” and “remnants” are reciprocal, it follows that there is antecedent basis for this recitation. We therefore reverse the rejection of claims 4, 8-15, and 27 under 35 U.S.C. §112, second paragraph, as being indefinite. Rejections 3-7 It is the Examiner’s position that Scher ‘137 teaches the claimed invention, but fails to teach that predetermined portions are removed by laser Appeal 2011-010167 Application 11/223,127 5 beam to provide the laminate with an embossed surface exhibiting at least one of scorched or charred residue. Ans. 4. The Examiner relies upon Labrec for teaching that portions of the decorative laminate can be removed by laser beam. Ans. 5. Appellant argues that Scher ‘137’s product has no scorched or charred residue; rather “mere depressions caused by consolidation”. Br. 7. Reply Br. 4. The Examiner recognizes this aspect of Scher ‘137 by stating that Scher ‘137 fails to teach that predetermined portions are removed by laser beam to provide the laminate with an embossed surface exhibiting at least one of scorched or charred residue, as discussed, supra. The Examiner relies upon Labrec for teaching the concept of using a laser to remove portions of an upper surface, leaving a scorched or charred residue. It is the Examiner’s position that the scorched or charred residue will “intrinsically occur” with the use of Labrec’s laser beam as implemented in Scher ‘137. Ans. 5, 16. Appellant then argues that Labrec provides no description of any “removed portions” or “scorched or charred residue adjacent such removed portion”. Br. 8. However, it is the Examiner’s position, as stated, supra, that use of the laser would inherently provide such results. Appellant argues that this is speculation on the Examiner’s part because Labrec teaches the formation of “marks”, including “gray scale” images. Br. 9. However, the Examiner indicated in this record that Labrec teaches the use of a laser beam to remove portions on articles not limited to I.D. documents, and refers to Labrec’s para. [0069] in this regard. Ans. 5, 17. Labrec’s para. [0069] is reproduced below: [0069] For purposes of illustration, the following description will proceed with reference to ID document structures (e.g., TESLIN-core, multi-layered ID documents) and fused polycarbonate structures. It Appeal 2011-010167 Application 11/223,127 6 should be appreciated, however, that the present invention is not so limited. Indeed, as those skilled in the art will appreciate, the inventive techniques can be applied to many other structures formed in many different ways to improve their laser engraving characteristics. Generally, the invention has applicability for virtually any product which is to be laser engraved, especially products being engraved with grayscale images. For example, in at least some embodiments, the invention is usable with virtually any product which is to be laser engraved or marked, especially articles to which a laminate and/or coating is applied, including articles formed from paper, wood, cardboard, paperboard, glass, metal, plastic, fabric, ceramic, rubber, along with many man-made materials, such as microporous materials, single phase materials, two phase materials, coated paper, synthetic paper (e.g., TYVEC, manufactured by Dupont Corp of Wilmington, Del.), foamed polypropylene film (including calcium carbonate foamed polypropylene film), plastic, polyolefin, polyester, polyethylenetelphthalate (PET), PET-G, PET-F, and polyvinyl chloride (PVC), and combinations thereof. As such, we are not persuaded by Appellant’s arguments directed to the position that the Examiner’s inherency position is mere speculation because Labrec is limited to formation of “marks” and “gray scale” images. That is, Appellant has not convinced us that Labrec’s aforementioned teachings of the use of a laser on the kinds of articles described above would not necessarily result in a laminate having an embossed surface exhibiting at least one of scorched or charred residue. As such, Appellants have not convinced us of error in the Examiner’s position that use of Labrec’s method of laser treatment in Scher ‘137 would not necessarily provide such results. Notably (and as important, if not more so), Appellant does not address the combination of teachings of Scher ‘137 and Labrec in this regard. In a similar manner, we are also unpersuaded by Appellant’s argument directed to nonanalogous art (see, e.g., Reply Br. 3-5) for the Appeal 2011-010167 Application 11/223,127 7 reasons explained by the Examiner on page 17 of the Answer, wherein the Examiner points out that Labrec is not limited to laser beam treatment of articles such as I.D. documents. Ans. 17. In view of the above, we affirm Rejection 3. For the same reasons that we affirmed Rejection 3, we also affirm Rejections 4-7 (Appellant offers no additional arguments directed to the other applied references in the other rejections). CONCLUSIONS OF LAW AND DECISION Rejections 1 and 2 are reversed. Rejections 3-7 are 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)(1). AFFIRMED tc