TERRABOARD, INC.

Patent Trials and Appeals Board

Aug 21, 2020

2019005735 (P.T.A.B. Aug. 21, 2020)

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.
14/945,165 11/18/2015 ERIC ROSEN EROSN-002GC4 9442
7663 7590 08/21/2020
STETINA BRUNDA GARRED & BRUCKER
75 ENTERPRISE, SUITE 250
ALISO VIEJO, CA 92656
EXAMINER
LE, NINH V
ART UNIT PAPER NUMBER
1744
MAIL DATE DELIVERY MODE
08/21/2020 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 ERIC ROSEN and JOEL STEARNS
Appeal 2019-005735
Application 14/945,165
Technology Center 1700
Before JOSEPH L. DIXON, DONNA M. PRAISS, and BRIAN D. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 24–28. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Terraboard,
Inc. Appeal Br. 3.
Appeal 2019-005735
Application 14/945,165

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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a building material
that eliminates deficiencies of prior art options and may be used in a wide
variety of applications. Spec. ¶ 8. Claim 24 is illustrative:
24. A process for forming and packaging an architectural
building material for subsequent use by consumers comprising the
steps:
a) combining paper with water to form an admixture and
allowing said admixture and allowing said admixture [sic] to remain
at rest for at least eight hours;
b) blending said admixture in step a) from about thirty seconds
to one minute;
c) straining said admixture produced in step b) to produce a
strained admixture comprising paper and water present in a ratio of
approximately 3:16 by weight;
d) forming a bonding agent, said bonding agent comprising
white glue and a thickening agent wherein said thickening agent
comprises com starch and water such that the ration of water to com
starch is approximately 8:1 by weight, said bonding agent further
including an additive selected from the group consisting of a
preservative and an antioxidant;
e) mixing said bonding agent with said strained admixture,
wherein the ratio of strained admixture to bonding agent will range
from 14:2 to 1.0:1.5, said bonding agent and admixture defining a
material having a wet dough-like consistency; and
f) packaging said material produced in step e) and assigning a
color and texture to said packaged material; and
g) repeating steps a)-f).

2 In this Decision, we refer to the Final Office Action dated February 20,
2018 (“Final Act.”), the Appeal Brief filed October 18, 2018 (“Appeal Br.”),
the Examiner’s Answer dated May 20, 2019 (“Ans.”), and the Reply Brief
filed July 22, 2019 (“Reply Br.”).
Appeal 2019-005735
Application 14/945,165

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REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Sekiguchi et al.
(“Sekiguchi”)
Breedlove
US 3,604,197

US 7,887,738 B2
Sept. 14, 1971

Feb. 15, 2011
Genzo et al.
(“Genzo”)
JP 2000-192002 July 11, 2000
HOW TO, http://users.belgacom.net/papier-mache/pm/howto.htm (2003)
(as archived by web.archive.org) (“Belgacom”).

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 24–28 under 35 U.S.C. § 112 based upon the written
description requirement. Ans. 3.
B. Claims 24–28 under 35 U.S.C. § 112 as indefinite. Ans. 4.
C. Claims 24–28 under 35 U.S.C. § 103 as obvious over Belgacom
in view of Genzo and further in view of Breedlove or Sekiguchi. Id. at 5.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
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Application 14/945,165

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not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Rejection A and Rejection B, § 112. Appellant does not dispute the
Examiner’s rejections pursuant to 35 U.S.C. § 112. Appeal Br. 4 (identifying
only the obviousness rejection as on appeal). We summarily sustain these
rejections. Ex parte Frye, 94 USPQ2d at 1075.
Rejection C, § 103. The Examiner rejects claims 24–28 under 35
U.S.C. § 103 as obvious over Belgacom in view of Genzo and further in
view of Breedlove or Sekiguchi. Ans. 5. Appellant argues all claims as a
group. Appeal Br. 5. We therefore limit our discussion to claim 24. All other
claims stand or fall with that claim. 37 C.F.R. § 41.37(c)(1)(iv)(2018).
The Examiner finds that Belgacom teaches a process for forming and
packaging an architectural building material and teaches most steps recited
in claim 24. Ans. 5–11 (citing Belgacom). The Examiner finds that
Belgacom does not teach step d). The Examiner finds, however, that the
bonding agent / wallpaper paste of step d) was well-known. Id. at 9. The
Examiner finds that Genzo teaches such a paste and determines it would
have been obvious to incorporate Genzo’s wallpaper adhesive to be used as
wallpaper adhesive/paste as desired by Belgacom’s process. Id. at 9–10
(citing Genzo). With regard to step g), the Examiner finds that Breedlove or
Sekiguchi teach that it was well-known to form a mash of first and second
colors (id. at 10 (citing Breedlove and Sekiguchi)), and determines that it
would have been obvious to modify the combined Belgacom and Genzo
process to repeat steps a) to f) to form such a mash.
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Appellant argues that the cited art does not teach the ratio of the
recitation “mixing said bonding agent with said strained admixture, wherein
the ratio of strained admixture to bonding agent will range from 14:2 to
1.0:1.5.” Appeal Br. 6–7, 10 (Claims App.). The Examiner, however, relies
on a result effective variable rationale to reach this recitation. Ans. 13.
It has long been held that “where the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456
(CCPA 1955); see also In re Boesch, 617 F.2d 272, 276 (CCPA 1980)
(“[D]iscovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art.”). Here, the Examiner finds
that Belgacom teaches that the variable (adding more glue or water) achieves
a recognized property (lessening the toughness of the pulp). Ans. 13. The
Examiner’s finding is supported by a preponderance of the evidence
(Belgacom 2:21–26), and Appellant does not persuasively dispute this
finding. “A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.” In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Discovery of the
optimum amount of glue relative to water to appropriately lessen the
toughness of the pulp would have been within the skill of the art and would
have been discovered by routine optimization. Appellant does not present
persuasive evidence or argument to the contrary.
Appellant also argues that the cited references do not teach forming
the bonding agent prior to mixing with the strained admixture. Appeal Br. 7–
8; Reply Br. 3. A method claim, however, is prima facie obvious where the
art teaches or suggests the method’s recited steps even if the order of the
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steps is different absent evidence of criticality of step order. Ex parte Rubin,
128 USPQ 440 (Bd. App. 1959) (prior art reference disclosing process of
making laminated sheet wherein a base sheet is first coated with a metallic
film and thereafter impregnated with thermosetting material was held to
render prima facie obvious claims directed to process of making a laminated
sheet by reversing order of prior art process steps.); see also In re Burhans,
154 F.2d 690 (CCPA 1946) (selection of any order of performing process
steps is prima facie obvious in the absence of new or unexpected results).
Here, Appellant argues certain advantages to pre-formulating the
bonding agent. Appeal Br. 7–8. Appellant, however, does not present
evidence that the ordering is critical or provides unexpected results.
“[A]rguments of counsel argument cannot take the place of evidence lacking
in the record.” Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed.
Cir. 1997) (internal quotes and citation omitted). Absent such evidence, any
reordering of prior art steps here is merely “predictable use of prior art
elements according to their established functions.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007).
Because Appellant’s arguments do not establish harmful Examiner
error, we sustain the Examiner’s obviousness rejection.

DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
24–28 112 written description 24–28
24–28 112 definiteness 24–28
24–28 103 Belgacom, Genzo, Breedlove, Sekiguchi 24–28
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Application 14/945,165

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Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome 24–28

TIME PERIOD FOR RESPONSE
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).

AFFIRMED