Ex Parte Walsh

Patent Trial and Appeal BoardSep 24, 2012

10797572 (P.T.A.B. Sep. 24, 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. 10/797,572 03/11/2004 John Peter Walsh 16240.M293 4803 7590 09/24/2012 Joseph W Berenato III Liniak, Berenato & White, LLC Suite 240 6550 Rock Spring Drive Bethesda, MD 20817 EXAMINER LAUX, JESSICA L ART UNIT PAPER NUMBER 3635 MAIL DATE DELIVERY MODE 09/24/2012 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 JOHN PETER WALSH ____________________ Appeal 2010-009397 Application 10/797,572 Technology Center 3600 ____________________ Before: EDWARD A. BROWN, MICHELLE R. OSINSKI, and SCOTT E. KAMHOLZ, Administrative Patent Judges. KAMHOLZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009397 Application 10/797,572 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-14 and 27-33 under 35 U.S.C. § 103(a) for unpatentability over Moyes (US 6,312,540 B1; iss. Nov. 6, 2001) in view of Phillips (US 2,675,338; iss. Apr. 13, 1954). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE CLAIMED SUBJECT MATTER The claims are directed to methods of forming a molded plywood door skin. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of forming a molded plywood door skin, comprising: conditioning a plywood board comprising at least one ply of solid wood with water; disposing the conditioned plywood board in a mold press having a contoured mold cavity; and deforming the plywood board in the mold press using sufficient heat and pressure to form a molded plywood door skin having a substantially uniform thickness and a substantially uniform density and contoured portions corresponding to said mold cavity. ANALYSIS 1. Claims 1, 2, 9, 10, 12, 13, and 27 Appellant argues these claims as a group (App. Br. 4-11); we select claim 1 as representative; see 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner found that Moyes discloses all steps of the method recited in claim 1 but does not expressly disclose use of a plywood board Appeal 2010-009397 Application 10/797,572 3 having at least one ply of solid wood. Ans. 3. Rather, the Examiner found, Moyes discloses wood composite blanks as the preferred but not exclusive type of blank suitable for molding. Ans. 4. The Examiner further found that Phillips discloses molding of plywood boards using heat and pressure. Ans. 3-4. The Examiner concluded that it would have been obvious to try Moyes’s molding process on Phillips’s boards because “a person with ordinary skill has good reason to pursue the known options within his or her technical grasp.” Ans. 5. Appellant argues that (a) the Examiner’s finding of “good reason” to combine Moyes and Phillips is a conclusory statement insufficient to meet the burden to establish prima facie unpatentability; (b) that Moyes’s expression of “preference” for wood composite does not open Moyes to a “boundless interpretation” of suitable materials; and (c) one of ordinary skill in the art would have understood plywood and wood composite to have sufficiently distinct properties such that (1) one would not have had a reasonable expectation of success in using plywood in Moyes’s method; and (2) Moyes teaches away from use of plywood. App. Br. 4-11. The Examiner, in response, finds that (a) it would have been obvious to try the materials disclosed by Phillips in Moyes’s method because Phillips discloses that they are susceptible to molding processes similar to that of Moyes; (b) plywood is one example of a wood composite and therefore within the category of materials Moyes contemplates; and (c) Appellant’s contentions regarding the unsuitability of plywood to Moyes’s method are unsubstantiated by evidence showing their unsuitability. Ans. 9-11. Appeal 2010-009397 Application 10/797,572 4 Appellant replies by continuing to emphasize the differences between plywood and wood composite that one of ordinary skill in the art would readily appreciate. Reply Br. 4-7. None of Appellant’s arguments concerning claim 1 convinces us of error in the Examiner’s findings or conclusion, principally because they are not commensurate in scope with claim 1. The claim requires that the “plywood board” comprise “at least one ply of solid wood.” Appellant’s arguments in distinguishing plywood from wood composite are all predicated on the presence of multiple layers of solid wood in the plywood. See, e.g., App. Br. 6 (“Plywood is made from thin sheets of solid wood called [plies] that are bound together”)(emphasis added). The “plywood board” recited in claim 1 does not require such multiple sheets, nor does it exclude other materials. Appellant’s arguments thus do not address the full scope of the term “plywood board” contemplated by the language of claim 1 and consequently cannot be persuasive as to the unobviousness of all the subject matter encompassed by the claim. Appellant’s arguments as to how one of ordinary skill in the art would interpret “plywood” compared to “wood composite” are unsubstantiated by evidence and are therefore not persuasive. For these reasons, Appellant has not identified reversible error in the Examiner’s rejection of claim 1. 2. Claim 3 Appellant’s argument regarding the unsuitability of Moyes’s closure rate for plywood (App. Br. 12) does not convince us of error for the reasons given above with respect to claim 1, and because it is unsubstantiated by evidence. Appeal 2010-009397 Application 10/797,572 5 3. Claims 4-8, 11, and 14 Appellant’s separate arguments for each of these claims regarding silence of Moyes as to various treatment parameters are non-responsive to the Examiner’s conclusion that such treatment modifications are well known and therefore obvious, absent evidence of unexpected results. We are not convinced of error. 4. Claim 28 Appellant’s arguments are unconvincing for reasons analogous to those given above with respect to claim 1 and claims 4-8, 11, and 14. 5. Claims 29-33 Appellant’s separate arguments for each of these claims are unconvincing for reasons analogous to those given above with respect to claims 4-8, 11, and 14. DECISION For the above reasons, the Examiner’s rejection of claims 1-14 and 27-33 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)(1)(iv). AFFIRMED Klh