Ex Parte FaganDownload PDFBoard of Patent Appeals and InterferencesFeb 4, 201111080982 (B.P.A.I. Feb. 4, 2011) Copy Citation 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. 11/080,982 03/16/2005 Gary T. Fagan 16240.S001 3206 28410 7590 02/04/2011 BERENATO & WHITE, LLC 6550 ROCK SPRING DRIVE SUITE 240 BETHESDA, MD 20817 EXAMINER FONSECA, JESSIE T ART UNIT PAPER NUMBER 3633 MAIL DATE DELIVERY MODE 02/04/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte GARY T. FAGAN ____________ Appeal 2009-009872 Application 11/080,982 Technology Center 3600 ____________ Before: JENNIFER D. BAHR, LINDA E. HORNER, and STEVEN D.A. MCCARTHY, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-009872 Application 11/080,982 2 STATEMENT OF THE CASE Gary T. Fagan (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1, 3-9, 11-20, 22, and 23. Claim 21 is withdrawn from consideration. Claims 2 and 10 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellant’s claimed invention “relates to building frame members, especially jambs and/or brickmolds useful in combination with door structures.” Spec. 1:9-10. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A building frame member for installation in an opening formed in a wall of a building structure capable of receiving and supporting a door, comprising: a composite core comprising a solid thermoplastic material and wood flour and; a thermoplastic skin coextruded with and at least partially covering said composite core. THE REJECTIONS Appellant seeks review of the following rejections: 1. Rejection of claims 1, 3-9, and 11-20 under 35 U.S.C. § 103(a) as being unpatentable over Jones (US 2002/0034629 A1; published March 21, 2002) and Headrick (US 6,453,631 B1; issued September 24, 2002). 2. Rejection of claim 22 under 35 U.S.C. § 103(a) as being unpatentable over Jones, Headrick, and Dahl (US 6,153,293; issued November 28, 2000). Appeal 2009-009872 Application 11/080,982 3 3. Rejection of claim 23 under 35 U.S.C. § 103(a) as being unpatentable over Jones, Headrick, and Walther (US 6,319,969 B1; issued November 20, 2001). ISSUE The issue presented by this appeal is whether the proposed modification to Jones relied upon in all three grounds of rejection is based upon a sufficient reason with a rational underpinning to explain why a person of ordinary skill in the art would have coextruded Jones’s composite core with Headrick’s thermoplastic skin 13 so that the skin is at least partially covering the composite core to reach the subject matter of independent claims 1 and 9. ANALYSIS Independent claim 1 is directed to a building frame member comprising a thermoplastic skin coextruded with and at least partially covering a composite core comprised of solid thermoplastic material and wood flour. Independent claim 9 is directed to a building passageway structure, and is similar to independent claim 1 in that the frame members comprise a thermoplastic skin coextruded with and at least partially covering a composite core comprised of solid thermoplastic material and wood flour. The Examiner found that Jones discloses a composite core comprising a solid thermoplastic material and wood flour, but fails to disclose a thermoplastic skin coextruded with and at least partially covering the composite core. Ans. 4. The Examiner found that Headrick discloses a thermoplastic skin (13) that at least partially covers a thermoplastic core (12) Appeal 2009-009872 Application 11/080,982 4 in order to provide a jamb that is compatible with standard primers and paints. Ans. 4. The Examiner concluded that it would have been obvious to modify the composite core of Jones to include a thermoplastic skin, as taught by Headrick, at least partially covering the core “in order to provide a frame member that can be painted just as . . . wood would be painted as the skin is formed of a material that is compatible with standard construction primers and paints (Headrick: col. 3, lines 6-11).” Ans. 4; see also Ans. 7-8. Jones does not explicitly state that its composite wood material is not paintable. Jones, passim. Further, Jones discloses that the thermoplastic composite wood material may contain colorants, suggesting Jones’s composite wood material may have no need to be paintable. Jones, p. 9, para. [0068]. As such, the Examiner’s rationale is insufficient in that we cannot find by a preponderance of the evidence that Jones’s composite wood material is not paintable. Further, the proposed modification is not the mere application of a known technique (adding Headrick’s paintable thermoplastic skin) to a piece of art (Jones’s composite wood material) ready for the improvement, as we have no evidence before us that Jones has need for a paintable thermoplastic skin. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Thus, absent hindsight, we see no reason, and the Examiner has not provided an adequate articulation of such a reason, why a person of ordinary skill in the art would have been led to modify Jones’s composite wood material to be coextruded with, and at least partially covered by, a thermoplastic skin as called for in independent claims 1 and 9. The rejection Appeal 2009-009872 Application 11/080,982 5 of dependent claims 3-8 and 11-20 is in error for the same reasons as discussed with respect to claims 1 and 9. The rejection of claim 22 and the rejection of claim 23 each rely upon the same proposed modification of Jones in view of Headrick and the corresponding rationale used for the rejection of claim 1. For the reasons explained in the analysis of the rejection of claim 1, supra, the rejections of claims 22 and 23 are also based upon an insufficient rationale. CONCLUSION The proposed modification to Jones is not based upon a sufficient reason with a rational underpinning to explain why a person of ordinary skill in the art would have coextruded Jones’s composite core with Headrick’s thermoplastic skin 13 so that the skin is at least partially covering the composite core to reach the subject matter of independent claim 1. DECISION The decision of the Examiner to reject claims 1, 3-9, 11-20, 22, and 23 is REVERSED. REVERSED nlk BERENATO & WHITE, LLC 6550 ROCK SPRING DRIVE SUITE 240 BETHESDA MD 20817 Copy with citationCopy as parenthetical citation