Ex Parte Fagan

Board of Patent Appeals and Interferences

Feb 4, 2011

11080982 (B.P.A.I. Feb. 4, 2011)

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is withdrawn from consideration.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

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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
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Application 11/080,982

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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