Ex Parte Bauer

Patent Trial and Appeal Board

Jun 15, 2017

13264583 (P.T.A.B. Jun. 15, 2017)

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.
13/264,583 02/21/2012 Jorg R. Bauer P40549 4345
7055 7590 06/19/2017
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
LEE, DANIEL H.
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
06/19/2017 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORG R. BAUER1
Appeal 2016-003500
Application 13/264,583
Technology Center 1700
Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
SHELDON M. McGEE, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing of our Decision of April 3, 2017. In that
Decision, we sustained the rejections of record.
We have reconsidered our Decision of April 3, 2017, in light of
Appellant’s comments in the Request for Rehearing, and Appellant has not
convinced us of error therein.
Firstly, on pages 2-4 of the Request for Rehearing, Appellant states
Reese is primarily directed to making a decorative sheet material itself. As
such, Appellant submits that to apply latex paper first to the board
1 Appellant identifies the real party in interest as Interglarion Limited.
Appeal Br. 3.
Appeal 2016-003500
Application 13/264,583
(according to Hori) to prevent bleeding of the dyeing liquid applied
thereafter would in fact frustrate the intended purpose of Reese of providing
a decorative sheet material by itself. Req. Reh’g. 3. We are unpersuaded of
error in this regard. As recognized by Appellant on pages 2—3 of the
Request for Rehearing, another embodiment in Reese is directed to an
ensemble of asphaltum board with the decorated latex paper as a finished
product that can be stored, shipped, sold in commerce, and put to many uses.
Reese 3, col. 1,1. 63—col. 2,1. 7. Final Act. 3. In this embodiment, the
decorated latex paper is mounted on the asphaltum board and passed
between rollers, thereby forming a composite asphaltum board to be stored,
shipped, sold, or put to many uses. As stated by the Examiner on pages 3^4
of the Final Office Action, it would have been obvious to a person having
ordinary skill in the art to have modified this embodiment of Reese by
employing the steps of Hori so as to print the composite board after the latex
paper and asphaltum board are passed between rollers.
Secondly, beginning on page 4 of the Request for Rehearing,
Appellant also submits that the Board misapprehends Appellant’s arguments
that expressed benefits of Reese, which are unachievable with the as-
modified Reese, are indicative of the unsuitability of the as-modified Reese
for the intended purpose of Reese. Req. Reh’g. 4. Appellant argues that an
intended purpose of Reese is to produce the decorative latex paper by
passing only the latex paper through the printing device. Req. Reh’g. 5.
Appellant states, for example, that Reese states “[i]n making the decorative
finish for the latex paper in this manner the process is greatly speeded up
due to the circumstance that the process of so decorating involves
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Appeal 2016-003500
Application 13/264,583
only passing the latex paper through the printing presses at high speed and in
rapid [succession] sequence.” Reese 2, col. 1,11. 60-74. Req. Reh’g. 4.
We are unpersuaded by the aforementioned argument. The
aforementioned specific teaching of Reese concerns one of the embodiments
of Reese that involves intaglio printing. Reese 2, col. 1,11. 53—74. Reese
teaches that the decorative effect can be performed in situ, by printing or
lithography on the surfacer. Reese 2, col. 1,11. 30-33. Reese defines “in
situ” as forming the print directly on the material to be used permanently as
part of the structure being decorated. Reese 3, col. 1,11. 1—9. Reese also
teaches that while the print design has been described as being formed in
situ, the design can be formed in other ways, e.g., decalcomania transfer.
Reese 2, col. 2,11. 67—71. Reese states that forming the print in situ
improves economy2 and better execution of design. Reese 3, col. 1,11. 1—9.
So, while Reese teaches benefits associated with, for example, intaglio
printing upon the latex paper only, it cannot be fairly said that this is the
only manner of printing contemplated by Reese so as to exclude printing on
the latex paper after it is attached to the asphaltum board. After all, one of
the objectives disclosed in Reese is to provide a novel material of the
asphaltum board type which is more durable and more readily cleaned and
kept. Reese, 1, col. 1,11. 50-55. This objective would not be destroyed by
printing on the latex paper after is it applied to the asphaltum board. We are
thus not persuaded that the argued impact of the proposed modification on
the intended use or change of the principle operation would have dissuaded
2 It is noted that the record does not indicate the cost savings as compared
to costs incurred from attaching the latex paper first to the asphaltum board,
followed by printing.
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Appeal 2016-003500
Application 13/264,583
the skilled artisan from making the proposed modification of Reese
according to Hori. As stated on page 5 of our Decision of April 3, 2017, it is
well settled that merely because “a given combination would not be made by
businessmen for economic reasons does not mean that persons skilled in the
art would not make the combination.” In re Farrenkopf 713 F.2d 714, 718
(Fed. Cir. 1983). Furthermore, it has been held that “[t]he fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.” Winner Int'l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000).
Finally, Appellants argue that the as-modified Reese precludes the
embossing process of Reese. Req. Reh’g. 2. We are unpersuaded by this
point made because embossing is not an absolute requirement but rather one
option in Reese. Reese 2, col. 1,1. 75—col. 2,1. 2; col. 2,11. 25—30.
Based on the foregoing, therefore, Appellant’s Request is granted to
the extent that we have reconsidered our Decision, but is denied with respect
to making any changes therein.
DENIED
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