Ex Parte Thiagarajan et al

Patent Trial and Appeal Board

Jan 29, 2014

11668732 (P.T.A.B. Jan. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHINNIAH THIAGARAJAN, FRANS ADRIAANSEN, and
EELCO VAN HAMERSVELD
____________

Appeal 2012-002882
Application 11/668,732
Technology Center 3600
____________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

IPPOLITO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-10, 12-18, and 20-23. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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CLAIMED SUBJECT MATTER
Claims 1, 17, 18, 20, and 21 are the independent claims on appeal.
Claim 1 is illustrative of the subject matter on appeal, and recites:
1. A multiwall sheet, comprising:
non-intersecting polymer walls comprising outer layers;
and
transverse layers, wherein the transverse layers extend
perpendicular and intersect the polymer walls to form cells;
wherein the multiwall sheet has a non-uniform cell
density.
App. Br., Claims App’x.

REJECTIONS
I. Claims 1, 5, 6, 8, 17, 20, and 21 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Beekman (US 5,972,475, issued
Oct. 26, 1999).
II. Claims 2-4, 7, 9, 10, 14, 18, and 23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Beekman.1
III. Claims 15, 16, 18, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Beekman and Groothues (US 2004/0191485 A1,
published Sept. 30, 2004).
IV. Claims 12 and 13 are rejected under 35 U.S.C. 103(a) as
unpatentable over Beekman and Boyd (US 2,858,734, issued Nov.
4, 1958).

1The heading for Rejection II on page 6 of the Answer does not include
claim 14. Ans. 6. Nonetheless, on the following page, the Examiner rejects
claim 14 as unpatentable over Beekman in the discussion. Id. at 7. We treat
the Examiner’s omission of claim 14 in the heading as inadvertent and
include claim 14 in our review of the Examiner’s decision.
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ANALYSIS
Rejection of claims 1, 5, 6, 8, 17, 20, and 21 as being anticipated by
Beekman
Claims 1, 20, and 21
Appellants argue claims 1, 20, and 21 as a group. App. Br. 6-7. We
select claim 1 as representative. Claims 20 and 21 stand or fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claim 1 requires, among other features,
transverse layers, wherein the transverse layers extend
perpendicular and intersect the polymer walls to form cells;
wherein the multiwall sheet has a non-uniform cell
density.
App. Br., Claims App’x (emphasis added).
The Examiner found Beekman describes cells formed by
perpendicular ribs 21, diagonal ribs 22, and outer layers 11, 12. See Ans. 4
(citing Beekman, fig. 4A). Additionally, the Examiner determined that
Beekman teaches non-uniform cell density because columns 7-8 indicate
that
[i]t is possible, and in fact preferred, to have a somewhat higher
concentration of cells with diagonals nearer the edges and a
higher concentration of cells without diagonal in the center of
the sheet.
See id. at 5 (citing Beekman, col. 7, ll. 66-col. 8, l. 2.).
Appellants argue that Beekman’s diagonal ribs 22 cannot be
considered to form “cells” because a diagonal rib is not a transverse layer.
App. Br. 6. Appellants further add that paragraph [0038] of Appellants’
Specification “defines a cell as: ‘adjacent transverse layers 4 and main layers
2.’” Id. at 5. As such, Appellants take the position that any Beekman cell
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formed by a diagonal rib 22 is not a “cell” as recited in claim 1. Appellants
additionally contend that Beekman does not teach “a non-uniform cell
density” because the cells formed by Beekman’s vertical ribs (i.e. not
including the cells formed by diagonal ribs 22) are uniform, “and have a
uniform cell size and a uniform cell density.” Id. at 6.
We are not apprised of any Examiner error by Appellants’ arguments.
As the Examiner explains, “the limitations of the claim do not state that only
transverse layers that extend perpendicular to and intersect the polymer
walls form the cells, therefore the cells formed by the diagonal layers of
Beekman are considered cells by the examiner.” Ans. 9 (emphasis in
original). We agree with the Examiner’s position because, as written, claim
1 only requires that the transverse layers form cells, but not that all cells in
the multiwall sheet must be formed by the transverse layers. Moreover,
even assuming that Appellants’ Specification teaches an embodiment with
“multiple cells 16 that are defined by adjacent transverse layers 4 and main
layers 2,” (Spec., para. [0038]), this embodiment is not read into the claims.
Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009)
(“The patentee is entitled to the full scope of his claims, and we will not
limit him to his preferred embodiment or import a limitation from the
specification into the claims.”)(citation omitted).
Looking to the reference, Beekman describes both cells formed from
vertical ribs without diagonals ribs and those with diagonal ribs. See
Beekman, fig. 4A (showing rectangular cells without diagonal ribs and
triangular cells with diagonal ribs). As such, Appellants have not
persuasively challenged the Examiner’s findings that Beekman discloses: (1)
the recited “transverse layers” in the form of vertical ribs 21 that form cells;
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(2) cells formed by the vertical ribs 21; and (3) cells formed by diagonal ribs
22. See Ans. 5, 9. Appellants have also not apprised us of any error in the
Examiner’s finding that Beekman explicitly describes non-uniform cell
density where there is a higher concentration of cells with diagonals nearer
the edges compared to the center of the sheet. See id. 5 (citing Beekman,
col. 7, l. 66-col. 8, l. 2.).
For the foregoing reasons, we sustain the Examiner’s decision
rejecting claims 1, 20, and 21 as being anticipated by Beekman.
Claim 17
Independent claim 17 recites, inter alia, “wherein the multi wall sheet
has a cell size gradient such that the cell size increases toward a center of the
multiwall sheet.”
Appellants argue that Beekman does not disclose a cell size gradient
because the diagonal ribs 22 do not form “cells.” App. Br. 7. We are not
persuaded by this argument for the same reasons discussed supra.
Accordingly, we sustain the Examiner’s decision rejecting claim 17 as
being anticipated by Beekman.
Claim 5, 6, 8
Appellants present the same arguments discussed supra for claims 5,
6, and 8. App. Br. 7-8. Namely, Appellants argue that diagonal ribs do not
form cells and “Beekman discloses an equal cell size across the sheet.” Id.
at 7.
For the same reasons discussed above, we sustain the Examiner’s
decision rejecting claims 5, 6, and 8 as being anticipated by Beekman.
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Rejection of claims 2, 3, 4, 7, 9, 10, 14, 18, and 23 as unpatentable over
Beekman
Claims 2, 3, 4 and 7
Appellants argue claims 2, 3, 4, and 7 as a group. App. Br. 8-9. We
select claim 2 as representative. Claims 3, 4, and 7 stand or fall with claim
2. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner determined that Beekman teaches decreasing cell
density from the edge of the panel to the middle of the panel. Ans. 6. The
Examiner further found
it would have been obvious to one having ordinary skill in the
art at the time the invention was made to make the cell density
in the middle of the sheet different percentage ranges of the cell
density of the outer layers, since it has been held that where the
general conditions of a claim are disclosed in the prior art,
discovering the optimum or workable ranges involves only
routine skill in the art.
Id.
Appellants argue that Beekman’s diagonal ribs do not form cells and,
therefore, cannot disclose the claimed densities. App. Br. 8-9. For the
reasons discussed supra, this position does not apprise us of any Examiner
error.
Next, Appellants contend that
it is not a matter of mere design choice to simply adjust the
number of cells in the multiwall sheet. Rather, depending on the
application, different factors need to be considered in order to
determine the optimal design for the multiwall sheet. Nothing
from Beekman would enable one skilled in the art to arrive at
the present claims.
App. Br. 9. We are also not persuaded by these arguments. First,
Appellants have provided no evidence or explanation to support these
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conclusory statements. Mere attorney arguments and conclusory statements
that are unsupported by factual evidence are entitled to little probative value.
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Second, even assuming
Appellants are correct in that “different factors need to be considered,”
Appellants have not apprised us of error in the Examiner’s conclusion that
such consideration “involves only routine skill in the art.” Third, to the
extent Appellants contend that Beekman is non-enabled, this is also
unpersuasive because the disclosures of a prior art reference are presumed to
be enabled. Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
1354 (Fed. Cir. 2003). Moreover, a “non-enabling reference may qualify as
prior art for the purpose of determining obviousness under § 103.” In re
Antor Media Corp., 689 F.3d 1282, 1292 (Fed. Cir. 2012) (citing Symbol
Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578 (Fed.Cir.1991)).
For the foregoing reasons, we sustain the Examiner’s decision
rejecting claims 2, 3, 4, and 7 as unpatentable over Beekman.
Claims 9 and 10
Claims 9 and 10 recite a stiffness greater than or equal to about 4,000
N/mm or 5,000 N/mm respectively.
We are persuaded of error by Appellants’ argument that the Examiner
has not established by technical reasoning or evidence that Beekman teaches
or suggests the claimed stiffness ranges. See App. Br. 9.
The Examiner found that Beekman teaches the claimed stiffness
because Beekman teaches the claimed structure. Ans. 6. The Examiner
further concluded that “it would be obvious to one of ordinary skill in the art
at the time of the invention to make the stiffness of the panel greater than or
equal to 4000 N/mm as a matter of design choice and so that the panel can
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withstand heavy forces during use.” Id. at 10. However, based on the facts
before us, we do not see where the record supports the Examiner’s finding
that modifying stiffness is a matter of design choice or that Beekman’s
structure teaches the recited stiffness ranges. Indeed, the Patent Office
has the initial duty of supplying the factual basis for its
rejection. It may not, because it may doubt that the invention is
patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual
basis. To the extent the Patent Office rulings are so supported,
there is no basis for resolving doubts against their correctness.
Likewise, we may not resolve doubts in favor of the Patent
Office determination when there are deficiencies in the record
as to the necessary factual bases supporting its legal conclusion
of obviousness.
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
We do not sustain the Examiner’s decision rejecting claims 9 and 10
as unpatentable over Beekman.
Claim 14
Claim 14 requires that “the cells have a length and/or width of less
than or equal to about 2 mm.”
The Examiner found Beekman does not disclose specific cell length,
but concluded that it would have been obvious “to choose a specific cell
length, since it has been held that discovering an optimum value of a result
effective variable involves only routine skill in the art.” Ans. 7.
We are apprised of Examiner error by Appellants’ argument that
“there is no indication from Beekman that a cell length and/or width of less
than or equal to about 2 mm was recognized as a result effective
variable….” App. Br. 10. While the Examiner acknowledged that Beekman
does not disclose specific cell lengths, the Examiner did not then explain
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how Beekman teaches that cell length/width is a result-effective variable.
Thus, the obviousness conclusion based on optimization is contrary to the
well-established legal principle that it would not have been obvious to
optimize a parameter which was not recognized to be a result-effective
variable in the prior art. See In re Antonie, 559 F2d 618, 620 (CCPA 1977).
As such, we do not sustain the Examiner’s decision rejecting claim
14 as unpatentable over Beekman.
Claims 18
Claim 18 requires that “the multiwall sheet has a different number of
inner layers and/or transverse layers, in different portions of the sheet.”
The Examiner found that it would have been obvious to add the inner
layer shown in Beekman’s Figure 3E to the multiwall sheet of Figure 4A.
Ans. 11. The Examiner also noted Beekman column 6 (Ans. 7), which
teaches that
[a]lthough it is not essential, for aesthetic and installation
purposes, it is preferable for the ribs to be symmetrically
located across the width of the sheet and for the vertical ribs to
be evenly and uniformly spaced apart.
Beekman, col. 6, ll. 36-39. Based on this disclosure, the Examiner
concluded that it would have been obvious “to have uneven spaced
transverse layers” and “to add an inner layer to increase the rigidity of the
multi-wall sheet.” Ans. 7.
To begin, Appellants assert without explanation that “Beekman…
fails to teach, suggest, disclose, or motivate one skilled in the art to add an
inner layer to the sheet disclosed.” App. Br. 10. Appellants’ conclusory
attorney argument is unpersuasive and does not apprise us of any Examiner
error.
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Appellants next reiterate that Beekman diagonals do not form cells.
App. Br. 10. We are also not persuaded by this argument for the reasons
discussed supra.
Accordingly, we sustain the Examiner’s decision rejecting claim 18 as
unpatentable over Beekman.
Claim 23
Claim 23 depends from claim 1. As Appellants do not present any
additional argument against the rejection of claim 23, we are not apprised of
any Examiner error. Accordingly, we sustain the Examiner’s decision
rejecting claim 23 as unpatentable over Beekman.

Rejection of claims 15, 16, 18, and 22 as unpatentable over Beekman and
Groothues
Claims 15 and 16
Claim 15 depends from claim 1 and recites “a U-value of less than or
equal to about 1.2 W/m2K at a nominal volume density of less than or equal
to about 180.” Claim 16 depends from claim 15 and recites “the U-value is
less than or equal to about 1.0 W/m2K.”
Appellants argue that
Groothues fails to disclose or suggest “cells” as presently
claimed as well as a multiwall sheet having a nonuniform cell
density as recited in Claim 1, from which Claims 15 and 16
depend. It is further noted that the U-value is not an inherent
property. Since Beekman in view of Groothues fails to disclose
“cells” as well as a non-uniform cell density, the U-value is not
necessarily present.
App. Br. 11.
Appellants’ arguments regarding Beekman’s failure to disclose “cells”
and non-uniform cell density are unpersuasive for the reasons discussed
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supra. Moreover, Appellants’ argument that “the U-value is not an inherent
property” also does not apprise us of error because inherency is not at issue.
The Examiner found that Groothues explicitly teaches a heat transfer
coefficient of 4W/m2K or smaller. Ans. 7-8; Groothues, para. [0014].
For these reasons, we sustain the Examiner’s decision rejecting claims
15 and 16 as unpatentable over Beekman and Groothues.
Claim 18
Appellants argue that Beekman does not disclose an inner layer
because the Examiner relies on Groothues for this modification. App. Br.
11. Appellants additionally contend that neither Beekman nor Groothues
teaches “a different number of inner layers and/or transverse layers, in
different portions of the sheet” because both references show evenly and
uniformly spaced ribs, layers, or sheets. Id. at 12. Appellants also argue,
again, that neither reference teaches “cells.”
We are not persuaded of error by these arguments. First, the
Examiner explained that both references teach inner layers and both “can be
relied [on] to disclose the obviousness of adding the inner layers to the
multiwall sheet.” Ans. 12. The Examiner pointed to Figure 3E of Beekman
to show an inner layer between outer layers of the sheet. Id. at 11. As such,
we do not agree that the Examiner admits that Beekman fails to disclose an
inner layer. Second, as discussed above, the Examiner relies on column 6 in
Beekman to teach an uneven spacing of the layers. Ans. 8 (citing Beekman,
col. 6, ll. 36-39.). Appellants have not persuasively challenged this finding.
Finally, for the reasons discussed supra, we are not also persuaded by
Appellants’ argument that Beekman does not teach “cells” as recited in the
claims.
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For these reasons, we sustain the Examiner’s decision rejecting claim
18 as unpatentable over Beekman.
Claim 22
As the Appellants do not present any additional argument against the
rejection of claim 22, we are not apprised of any Examiner error.
Accordingly, we sustain the Examiner’s decision rejecting claim 22 as
unpatentable over Beekman and Groothues.

Rejection of claims 12 and 13 as unpatentable over Beekman and Boyd
Appellants argue that Boyd fails to overcome the shortcomings of
Beekman because Boyd does not “disclose or suggest a multi wall sheet
having a non-uniform cell density as recited in Claim 1, from which these
claims depend.” App. Br. 12.
For the same reasons discussed above, we are not persuaded of any
error in the Examiner’s finding that Beekman describes the “non-uniform
cell density” recited in claim 1. As such, we sustain the Examiner’s decision
rejecting claims 12 and 13 as unpatentable over Beekman and Boyd.

DECISION
We REVERSE the Examiner’s decision rejecting claims 9, 10, and
14.
We AFFIRM the Examiner’s decision rejecting claims 1-8, 12, 13,
15-18, and 20-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
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AFFIRMED-IN-PART

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