Ex Parte Cozzolino

Board of Patent Appeals and Interferences

Aug 18, 2009

10113050 (B.P.A.I. Aug. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL COZZOLINO
____________

Appeal 2009-000071
Application 10/113,050
Technology Center 1700
____________

Decided: August 18, 2009
____________

Before EDWARD C. KIMLIN, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-12, 14-23, 25, 26, and 30.1 (App. Br. 5). We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant describes a method of forming decorative wood products.
Claims 1 and 22, reproduced below, are representative of the subject matter
on appeal.
1. A method of forming a decorative wood product from an
engineered structural wood product formed of a plurality of cut
wood strands aligned and adhered together, the method
comprising:
providing an engineered structural wood product formed
of wood strands, the product having a side grain formed by
edges of the strands; and
slicing the engineered structural wood product into a
plurality of sheets to reveal the side grain formed by the edges
of the strands.

22. The method of claim 21 wherein the odd shapes are
squares, plugs or other shapes.

THE REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hamilton US 108,781 Nov. 1, 1870
Koskul US 436,041 Sep. 09, 1890
Murphy US 2,037,259 Apr. 14, 1936

1 Claims 13, 24, and 27-29 have been canceled. (Appeal Brief filed August
24, 2007, hereinafter “App. Br.,” 5).
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Blackburn US 3,905,172 Sep. 16, 1975
Howard US 4,064,301 Dec. 20, 1977
Kohn US 4,204,900 May 27, 19802
Kohn US 4,208,369 Jun. 17, 19803
Martin EP 0309356 A1 Mar. 29, 1989 (as
translated)
Chase US 5,182,892 Feb. 2, 1993
Appellant’s Admitted Prior Art on page 17 of Appellant’s
Specification

There are fifteen grounds of rejection on appeal.4 In the first ground
of rejection, the Examiner rejected claims 1-5 and 25 under 35 U.S.C. §
102(b) as being anticipated by Blackburn. The remaining fourteen grounds
of rejection are under 35 U.S.C. § 103(a): (2) claim 6 stands rejected as
being unpatentable over Blackburn in view of Chase; (3) claims 7 and 8
stand rejected as being unpatentable over Blackburn in view of Hamilton;
(4) claims 9, 10, and 26 stand rejected as being unpatentable over Blackburn
in view of Howard; (5) claims 11 and 30 stand rejected as being
unpatentable over Blackburn in view of Appellant’s admitted prior art
(APA); (6) claim 12 stands rejected as being unpatentable over Blackburn;
(7) claims 14-23 stand rejected as being unpatentable over Blackburn in
view of APA, Koskul, and Martin; (8) claims 1, 3-5, 12, and 25 stand

2 Hereinafter “Kohn ‘900.”
3 Hereinafter “Kohn ‘369.”
4 See Final Rejection mailed January 11, 2006, 3-4. Appellant states that all
of the claims are appealed, but only presents arguments with respect to
grounds of rejection (1), (7), (8), and (15), and expressly states that the status
of the dependent claims depends on the status of the independent claims.
(App. Br. 5, 10, 16, 17, and 19). Thus, it appears that Appellant’s clear
intention is to appeal all grounds of rejection. Therefore, the present appeal
addresses all grounds of rejection (1)-(15) in the context of the arguments
presented for grounds of rejection (1), (7), (8), and (15).
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rejected as being unpatentable over Kohn ‘369 in view of Blackburn; (9)
claim 2 stands rejected as being unpatentable over Kohn ‘369 in view of
Blackburn and Murphy; (10) claim 6 stands rejected as being unpatentable
over Kohn ‘369 in view of Blackburn, Murphy, and Chase; (11) claims 7
and 8 stand rejected as being unpatentable over Kohn ‘369 in view of
Blackburn, Murphy, and Hamilton; (12) claims 9, 10, and 26 stand rejected
as being unpatentable over Kohn ‘369 in view of Blackburn and Howard;
(13) claim 11 stands rejected as being unpatentable over Kohn ‘369 in view
of Blackburn and APA; (14) claim 30 stands rejected as being unpatentable
over Kohn ‘369 in view of Blackburn and Kohn ‘900; and (15) claims 14-23
stand rejected as being unpatentable over Kohn ‘369 in view of Blackburn,
Kohn ‘900, Koskul, and Martin.
In rejecting claim 1 as being anticipated by Blackburn, the Examiner
found that Blackburn discloses making a decorative wood product by
securing a plurality of tree trunks and branches in a vertical bundle, pouring
liquid adhesive to fill the gaps, and cutting the bundle transversely into
slices, where each slice exposes a group of end cuts. (Examiner’s Answer
entered October 4, 2007, hereinafter “Ans.,” 3-4). The Examiner interpreted
“side grain” to include cutting wood strands perpendicularly to the
longitudinal axis of the trunk or branch, i.e. the end cuts of Blackburn. (Ans.
3).
In rejecting claim 1 as being unpatentable over Kohn ‘369 in view of
Blackburn, the Examiner, inter alia, found that Kohn ‘369 discloses forming
a wood product comprising cutting round logs of balsa wood to a desired
length to form strands, coating the strands with adhesive, assembling the
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strands to form a stock block, and slicing the stock block to expose the side
grain of the stock block. (Ans. 6-7).
Regarding claim 22, the Examiner found that Kohn ‘369 in view of
Blackburn fails to disclose that the wood product is formed by applying heat
and pressure to the wood strands. (Ans. 8). The Examiner determined that
because Kohn ‘900 discloses that aligned wood strands can be glued either
in a cold setting press or a hot setting press (under heat and pressure), it
would have been obvious to form the wood product of Kohn ‘369 in view of
Blackburn by applying heat and pressure to the wood strands. (Id.). The
Examiner found that Kohn ‘369 in view of Blackburn and Kohn ‘900, fails
to disclose further adding decorative elements of odd shapes from waste
wood products to wood strands prior to applying heat and pressure to form
an engineered wood product with decorative features. (Id.). The Examiner
found that Blackburn discloses that bark, sawdust, timber baulks, and joists
can be used for making the appearance of the floor attractive. (Id.). The
Examiner found that Koskul discloses wooden sheets for making ornamental
flooring using woods of different natures or colors of various shapes and that
Martin discloses that colored glue can be used for making decorative wood
products. (Ans. 8-9). The Examiner determined that it would have been
obvious “to have provided a floor of Kohn ‘369 in view of Blackburn with
various decorative elements of Koskul and [Martin], with the expectation of
providing the desired ornamental flooring having woods of different natures,
various shapes, or colors, as taught by Koskul and [Martin].” (Ans. 9).
Appellant contends that Blackburn does not disclose slicing a
structural wood product to expose the side grain of the edges of the wood
strands, but expressly discloses slicing a wood product in a transverse
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fashion to expose the cross grain of the wood product. (App. Br. 15-16).
Appellant argues that Kohn ‘369 discloses a bundle of logs, and not an
engineered wood product. (App. Br. 18). Appellant contends that the balsa
wood used by Kohn is in the form of logs and not strands as recited in claim
1. (App. Br. 19). Appellant argues that the grain produced by slicing the
wood product of Kohn ‘369 is a result of the balsa wood itself and not the
edge of the strands. (Id.). Regarding claim 22, Appellant argues that none
of Kohn ‘369, Blackburn, Kohn ‘900, Koskul, and Martin include decorative
elements formed of waste wood products of odd shapes, and that the
Examiner failed to provide a sufficient explanation for combining these
references. (App. Br. 21-22).

ISSUES
Has Appellant shown that the Examiner reversibly erred in finding
that Blackburn discloses “slicing the engineered structural wood product into
a plurality of sheets to reveal the side grain formed by the edges of the
strands” as recited in claim 1?
Has Appellant shown that the Examiner reversibly erred in
determining that Kohn ‘369 discloses the method recited in claim 1 of
“providing an engineered structural wood product formed of wood strands”
and slicing the wood product “to reveal the side grain formed by the edges
of the strands”?
Has Appellant shown that the Examiner failed to present a prima facie
case of obviousness in rejecting claim 22 over Kohn ‘369 in view of
Blackburn, and further in view of Kohn ‘900, Koskul, and Martin?

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant’s Specification states: “if properly processed, the edge
grains 14, can provide an appealing looking surface. The present
invention is designed to take advantage of the appealing side grain
14 by exposing same.” (Fig. 1, Spec. 12).
2. Appellant’s Figure 2 shows that sheets 10 are cut along the
longitudinal axis into planks 20 to expose side grain 24. (Fig. 2,
Spec. 12).
3. Appellant’s Specification states: “as shown in FIG. 3, the planks
20 are placed on the other to form a stack. The stack has a top 32
and an exposed edge grain 34 and end grain 34a.” (Spec. 13, Fig.
3).
4. Appellant’s Specification describes TimberStrand, a solid billet of
wood, as an example of an engineered structural wood product, but
the Specification does not limit or require that all engineered
structural wood products possess this characteristic. (Spec. 7).
5. Appellant’s Specification provides no physical dimension
requirements for the side grain formed by the edges of the strands.
6. Appellant provided definitions for “strand” consistent with the
Specification from Webster’s Third New International Dictionary
including the definition: “(3) an elongated or twisted and plaited
body resembling a rope.” (App. Br. 13-14).
7. Blackburn describes “a method of lying a wooden floor on a solid
base compris[ing] securing together lengths of timber in a vertical
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bundle by bands, pouring a liquid adhesive into the top of said
bundle to fill the gaps between the length of timber, and, when the
adhesive has hardened, removing said bands and cutting the bundle
transversely into slices, each slice exposing a group of end cuts.”
(Col. 1, ll. 15-23)
8. Blackburn states: “[t]hroughout this specification and claims ‘end
cuts’ are defined as pieces of timber cut from a trunk or branch in a
direction transverse to the longitudinal axis of the trunk or branch.”
(Col. 1, ll. 29-31).
9. Kohn ‘369 discloses forming a lumber product from branches and
upper parts of trees of about 1½ to 4 inches in diameter. (Col. 2, ll.
41-49).
10. Kohn ‘369 discloses that an integrated stock block is formed by
peeling balsa logs, cutting the logs to a suitable length to produce
round pieces, assembling the pieces into a block, coating the pieces
with a curable adhesive, and curing the adhesive to interlaminate
the pieces. (col. 4, ll. 2-15).
11. Kohn ‘369 discloses that flat grain (side grain) panels may be
produced by slicing the integrated stock block into panels in a
longitudinal direction. (Col. 6, ll. 57-66, Fig. 7).

PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
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During examination, claims terms must be given their broadest
reasonable construction consistent with the Specification. In re Icon Health
and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
In construing claims
we search for the ordinary and customary meaning of a claim
term to a person of ordinary skill in the art. We determine
this meaning by looking first at intrinsic evidence such as
surrounding claim language, the specification, the
prosecution history, and also at extrinsic evidence, which
may include expert testimony and dictionaries.

L.B. Plastics, Inc. v. Amerimax Home Products Inc., 499 F.3d 1303, 1308
(Fed. Cir. 2007) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1314-19
(Fed. Cir. 2005) (en banc)).
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner's position. See In re Kahn, 441 F.3d 977, 985-86 (Fed.
Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).

ANALYSIS
Ground (1) - Rejection of claim 1 as being anticipated by Blackburn
We agree with Appellant that the Examiner erred in finding that
Blackburn discloses “side grain” as recited in claim 1. The Examiner is
incorrect that neither the Specification nor the Drawings show longitudinal
slicing, and that the appearance of side grain in Figures 1-4 is due to
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transverse slicing. (Ans. 14). Appellant’s Figure 2 shows that planks are
produced having side grain 24 along the longitudinal axis (FF 2), which is a
result of longitudinal slicing. Appellant’s Figure 3 distinguishes between
end grain 34a and edge (side) grain 34. (FF 3). Thus, the “end cuts” in
Blackburn formed by cutting the wood bundle transversely into slices result
in products with grain corresponding to the “end grain” disclosed by
Appellant and not the “side grain” recited in claim 1. Accordingly, we
reverse the rejection of claim 1 as being anticipated by Blackburn.
Because none of the other references applied by the Examiner in
rejecting the claims in grounds of rejection (2)-(7) remedies the deficiencies
of Blackburn, we reverse grounds of rejection (2)-(7) as well.

Ground (8)- Rejection of Claim 1 as being obvious over Kohn ‘369
in view of Blackburn
We confine our discussion to appealed claim 1, which contains claim
limitations representative of the arguments made by Appellant pursuant to
37 C.F.R. § 41.37(c)(1)(vii).5
We are unpersuaded by Appellant’s argument that Kohn ‘369 does not
disclose “an engineered structural wood product formed of wood strands” as
recited in claim 1. Specifically, we disagree with Appellant that the balsa
branches and tree parts disclosed by Kohn ‘369 are not “wood strands” and
that interpreting “strands” to include the balsa branches of Kohn ‘369 would
be inconsistent with the Specification. (App. Br. 19). Appellant has

5 Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to
make have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
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provided dictionary definitions for the word “strand” that Appellant
acknowledges are consistent with the Specification, including “an elongated
or twisted and plaited body resembling a rope.” (App. Br. 13-14). We agree
with the Examiner that “an elongated body . . . resembling a rope” includes
the balsa branches and tree parts disclosed by Kohn ‘369, and thus meet the
definition of a “wood strand.” (Ans. 12-13). Contrary to Appellant’s
argument, the Examiner does not interpret a strand as “something
resembling a strand”, but interprets a “strand” as an elongated body
“resembling a rope,” consistent with the definitions provided by Appellant.
Further, in view of the above discussion, we are not persuaded that the
“stock block” of Kohn ‘369 is patentably distinct from the “engineered
structural wood product” recited in the claims. Appellant has presented no
persuasive evidence that an “engineered structural wood product” is required
to be a solid billet of wood. Appellant’s Specification describes
TimberStrand, a solid billet of wood, as an example of an engineered
structural wood product, but the Specification does not limit or require that
all engineered structural wood products possess this characteristic. (FF 4).
Indeed, Appellant has placed no physical limitations on the “side grain” that
would require a solid billet for the recited engineered structural wood
product. See Andersen Corp. v. Fiber Composites LLC, 474 F.3d 1361,
1367-68 (Fed. Cir. 2007). Thus, Appellant’s argument that “an engineered
structural wood product” requires a solid billet of wood is not persuasive.
Therefore, the claim language does not distinguish the stock block of Kohn
’369 having voids between the balsa strands, which are then filled with a
filler.
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Moreover, we are not persuaded that the final product of Kohn ‘369
fails to contain an edge grain formed by the edges of the strands, but is due
to the edge grain of the wood itself. Because Kohn ‘369 slices the stock
blocks in a longitudinal direction (FF 11), the wood product of Kohn ‘369
contains “side grain formed by the edges of the strands.” Appellant’s claims
do not exclude any additional side grain attributable to the wood strands
themselves. Therefore, Appellant has failed to show error in the rejection of
claim 1 over Kohn ‘369 in view of Blackburn.
Because Appellant has failed to show the Examiner erred in rejecting
claim 1, we also affirm grounds of rejection (9)-(14) for the same reasons.

Ground (15)-Rejection of claim 22 over Kohn ‘369 in view of
Blackburn, Kohn ‘900, Koskul, and Martin

We are not persuaded by Appellant’s argument that the Examiner
reversibly erred in rejecting claim 22 over Kohn ‘369 in view of Blackburn,
Kohn ‘900, Koskul, and Martin. Appellant has not identified, with any
particularity, why the references are deficient in disclosing decorative
elements formed of waste wood products of odd shapes. Nor has Appellant
identified any error, much less acknowledged the Examiner’s reasons, for
combining the references. (See Ans. 9 and 18-19). Accordingly, we affirm
the Examiner’s decision rejecting claim 22.

CONCLUSION
Appellant has demonstrated that the Examiner reversibly erred in
finding that Blackburn discloses “slicing the engineered structural wood
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product into a plurality of sheets to reveal the side grain formed by the edges
of the strands” as recited in claim 1.
Appellant has failed to demonstrate that the Examiner reversibly erred
in determining that Kohn ‘369 discloses the method recited in claim 1 of
“providing an engineered structural wood product formed of wood strands”
and slicing the wood product “to reveal the side grain formed by the edges
of the strands.”
Appellant has failed to demonstrate that the Examiner failed to present
a prima facie case of obviousness in rejecting claim 22 over Kohn ‘369 in
view of Blackburn, and further in view of Kohn ‘900, Koskul, and Martin.

ORDER
The following rejections are reversed:
(1) the rejection of claims 1-5 and 25 under 35 U.S.C. § 102(b) as
being anticipated by Blackburn;
(2) the rejection of claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Blackburn in view of Chase;
(3) the rejection of claims 7 and 8 under 35 U.S.C. § 103(a) as being
unpatentable over Blackburn in view of Hamilton;
(4) the rejection of claims 9, 10, and 26 under 35 U.S.C. § 103(a) as
being unpatentable over Blackburn in view of Howard;
(5) the rejection of claims 11 and 30 under 35 U.S.C. § 103(a) as
being unpatentable over Blackburn in view of Appellant’s admitted prior art
(APA);
(6) the rejection of claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Blackburn; and
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(7) the rejection of claims 14-23 under 35 U.S.C. § 103(a) as being
unpatentable over Blackburn in view of APA, Koskul, and Martin.

The following rejections under 35 U.S.C. § 103(a) are affirmed:
(8) the rejection of claims 1, 3-5, 12, and 25 as being unpatentable
over Kohn ‘369 in view of Blackburn;
(9) the rejection of claim 2 as being unpatentable over Kohn ‘369 in
view of Blackburn and Murphy;
(10) the rejection of claim 6 as being unpatentable over Kohn ‘369 in
view of Blackburn, Murphy, and Chase;
(11) the rejection of claims 7 and 8 as being unpatentable over Kohn
‘369 in view of Blackburn, Murphy, and Hamilton;
(12) the rejection of claims 9, 10, and 26 as being unpatentable over
Kohn ‘369 in view of Blackburn and Howard;
(13) the rejection of claim 11 as being unpatentable over Kohn ‘369 in
view of Blackburn and APA;
(14) the rejection of claim 30 as being unpatentable over Kohn ‘369 in
view of Blackburn and Kohn ‘900; and
(15) the rejection of claims 14-23 as being unpatentable over Kohn
‘369 in view of Blackburn, Kohn ‘900, Koskul, and Martin.

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)(v).
AFFIRMED

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PL initial:
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