Ex Parte Gauthier et al

Patent Trial and Appeal Board

Oct 16, 2012

11613625 (P.T.A.B. Oct. 16, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/613,625 12/20/2006 Sylvie Gauthier 6674-0039-1-1 8075
50811 7590 10/17/2012
O''Shea Getz P.C.
1500 MAIN ST. SUITE 912
SPRINGFIELD, MA 01115
EXAMINER
CHAN, SING P
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
10/17/2012 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 SYLVIE GAUTHIER and GEORGE
TSANGARIDES
____________________

Appeal 2011-005809
Application 11/613,625
Technology Center 1700
____________________

Before PETER F. KRATZ, CATHERINE Q. TIMM, and MARK
NAGUMO, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-10 and 15-17. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a method for producing a flexible leather
laminate. Claim 1 is illustrative:
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1. A method for the production of a flexible heat and
pressure consolidated leather laminate comprising the steps of:
stacking in a superimposed relationship a flexible
backing layer, a decorative layer comprised essentially of
leather, and a release sheet, which flexible backing layer
includes a thermosetting polyester resin impregnated sheet;
inserting the stacked layers between plates of a non-
continuous press;
raising the pressure and temperature of the press;
maintaining the stacked layers in the heated, pressurized
press for a period of time sufficient for a portion of the
polyester resin to migrate from the flexible backing layer and at
least partially into the decorative layer, and bond to consolidate
the layers into a flexible laminate;
removing the laminate from the press; and
removing the release sheet from the laminate.
(Claims App. at Br. 14 (emphasis added).)
The Examiner provisionally rejects claims 1, 2, 15, and 17 on the
ground of non-statutory obviousness-type double patenting over claims 8-10,
and 13 of Application 11/330,776 in view of Toyama1. Appellants do not
challenge this rejection (Br. 5). Therefore, we summarily affirm it.
The Examiner also rejects claims 1-3, 15, and 17 under 35 U.S.C. §
103(a) over Marega2 in view of Toyama, adds Matton3 to reject claim 4,
adds Connett4 to reject claims 6-9, and 16, and adds Hesse5 to reject claim 5.

1 Toyama et al., US 4,231,169, patented Nov. 4, 1980.
2 Marega et al., US 6,444,074 B1, patented Sep. 3, 2002.
3 Matton, US 3,961,124, patented Jun. 1, 1976.
4 Connett, US 3,930,921, patented Jan. 6, 1976.
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To reject claim 10, the Examiner relies upon the combination of Marega,
Toyama, Connett, and Hesse.
With regard to the obviousness rejections, Appellants argue various
groups of claims under separate headings (Br. 5-12). In so far as separate
issues are raised, we select a single claim from each group as representative
to resolve the issues.
OPINION
A. Claims 1-4, 15, and 17
With respect to the rejection of claims 1-3, 15, and 17, Appellants do
not argue any claim apart from the others. With respect to the rejection of
claim 4, Appellants rely upon the same arguments as presented against the
rejection of claims 1-3, 15, and 17. We select claim 1 as representative for
resolving the issues on appeal with respect to claims 1-4, 15, and 17. Based
upon the rejection presented by the Examiner and the arguments advanced
by Appellants, the issues arising for claims 1-4, 15, and 17 are as follows
(Compare Br. 6-10 with Ans. 6-9 and 14-17).
1. Have Appellants identified a reversible error in the Examiner’s
finding that Marega teaches or suggests maintaining stacked layers
in a heated, pressurized press to bond and consolidate the layers
(see Br. 6-8)?
2. Have Appellants identified a reversible error in the Examiner’s
finding that Marega and Toyama are within the scope of prior art
the ordinary artisan should be charged with knowing, i.e.,
“analogous art” (see Br. 8)?

5 Hesse, et al., US 4,777,195, patented Oct. 11, 1998.
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3. Have Appellants identified a reversible error in the Examiner’s
finding that the prior art provides reasons for making the
combination (see Br. 8-9)?
After weighing the evidence under the preponderance of the evidence
standard and considering the arguments in light of the facts and relevant law,
we answer the above questions in the negative.
The Examiner finds that Marega describes a method of forming
reinforced shoe uppers including a step of joining reinforcing material to the
backside of the shoe upper material by pressing the material layers at an
elevated temperature in a die and matrix unit (id.). The Examiner recognizes
that Marega is silent with regard to using polyester resin in the reinforcing
material, and also silent with regard to the steps of providing a release liner
for the pressing step, removing the release liner after pressing, and joining
the leather material with the thermosetting resin during the pressing step
(Ans. 7). The Examiner, however, finds that these materials and steps were
known and conventional in the art as evidenced by Toyama (id.).
Marega describes a process of forming a shoe upper by pressing the
upper material to form raised areas where lacing hooks will be placed and
joining a layer of reinforcing material to the upper material in the raised
areas (Marega, col. 1, ll. 44-58). The upper material may be leather
(Marega, col. 1, ll. 59-61). The reinforcing material is preferably formed of
fibers impregnated with thermosetting resin (Marega, col. 2, ll. 6-9).
Marega discloses that, in the preferred embodiment, the reinforcing material
“is joined to the inner face of the upper material simultaneously with the
pressing step.” (Marega, col. 1, ll. 59-64.) Pressing and joining occurs in a
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suitably shaped die and matrix unit under appropriate heat and pressure
(Marega, col. 1, l. 65 to col. 2, l. 2). Marega discloses that other production
processes are possible (Marega, col. 3, ll. 50-51). For instance, when the
upper is not made of natural leather but of synthetic material, the raised and
recessed areas may be produced during the process of producing the upper
material rather than simultaneously with bonding in a die and matrix of a hot
press (Marega, col. 3, l. 52 to col. 4, l. 2).
Appellants contend that because Marega teaches that pressing and
joining may be performed separately, Marega teaches away from the
maintaining step of the claims (Br. 6-7). But the teaching of forming the
raised and recessed areas separately is merely an alternative to the
simultaneous pressing and bonding embodiment also taught by Marega. The
teaching of an alternative is not a teaching away. In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004).
With respect to the second issue regarding whether Marega and
Toyama are non-analogous art, Appellants contend that their invention is
directed to a profile wrap, which allows one to seamlessly cover a substrate
with a single piece of material (Br. 8, citing Spec., i.e., ¶ [0005]). However,
Appellants’ Specification states the field of invention more broadly as
relating to “decorative laminates in general” (Spec. ¶ [0001]). Moreover, as
pointed out by the Examiner, the claims are not limited to profile wraps, but
encompass leather laminates in general (Ans. 16).
“Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
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the inventor’s endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.” In re Clay, 966
F.2d 656, 658-59 (Fed. Cir. 1992); In re Wood, 599 F.2d 1032, 1036 (CCPA
1979). “This test for analogous art requires the PTO to determine the
appropriate field of endeavor by reference to explanations of the invention's
subject matter in the patent application, including the embodiments,
function, and structure of the claimed invention.” In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004).
Appellants’ field of invention is broad enough to encompass leather
laminates that are not necessarily intended for use as profile wraps.
Marega is directed to a decorative laminate of leather and reinforcing
material to be used as a shoe upper.
Toyama is also directed to a laminate, albeit a laminate used as a shoe
insole. Toyama laminates a fiber-reinforced sheet to an element containing,
for instance, leather impregnated with binder (Toyama, col. 2, ll. 21-26).
Both Marega and Toyama are within the field of endeavor of
laminating generally and reasonably pertinent to problems with regard to
laminating leather-containing materials to fiber reinforced materials. While
the references are directed to shoe elements rather than profile wraps, neither
the Specification nor the claims limit the field of invention to profile wraps.
Moreover, while the two criteria enunciated above are helpful in
deciding the question, one must not lose sight of the real question underlying
the non-analogous art test, which is: What is the scope and content of the
“prior art” as that term is used in 35 U.S.C. § 103(a)? Graham v. John
Deere Co., 383 U.S. 1, 17-18 (1966). The non-analogous art test provides
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helpful insight on the underlying question of what is “prior art” within the
meaning of the statute, however, we should not be blind to the reality of the
circumstances of the case before us. Wood, 599 F.2d at 1036. Nor should
we adhere to rigid and mandatory formulas that overly limit the inquiry.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
In the present case, Toyama was applied by the Examiner merely to
evince the details of the hot press laminating process more generally
disclosed by Marega and to show that it was known in the art to use
polyester in impregnated fiber reinforced materials in such processes. Both
Appellants and Marega are concerned with hot press laminating a fiber
reinforced layer to a layer of, for instance, natural leather.
A preponderance of the evidence supports the Examiner’s finding
that Marega and Toyama are within the scope of prior art relevant for an
analysis of patentability under 35 U.S.C. § 103(a).
With respect to the third issue concerning the combinability of the
teachings of Marega and Toyama, as we noted above, Toyama merely serves
as evidence of what occurs in the hot pressing process of Marega regarding
shaping, bonding, and consolidating resin impregnated fiber reinforcing
sheets with leather-containing elements and the conventional nature of using
release sheets in such hot pressing processes. We do not agree with
Appellants that the combination is either inoperable or that the references
teach away from the combination (Br. 8-9).
A preponderance of the evidence supports the Examiner’s finding that
the prior art provides reasons for making the combination.

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B. Claims 6-9 and 16
To reject claims 6-9 and 16, the Examiner adds Connett. Appellants
contend that Connett fails to disclose the “maintaining” step recited in claim
6. That step is the same as the maintaining step recited in claim 1. The
Examiner agrees that Connett does not teach the maintaining step and relies
upon the combination of Marega and Toyama as teaching that step (Ans.
17).
As Appellants have not advanced any further arguments addressing
the Examiner’s actual rationale, Appellants have not identified a reversible
error in the Examiner’s rejection.
C. Claims 5 and 10
Claims 5 and 10 require the flexible backing layer include a cellulosic
sheet impregnated with the thermosetting polyester resin.
The Examiner acknowledges that Marega is silent with regard to
including a cellulosic sheet in the reinforcing material (Ans. 13-14). The
Examiner relies upon Hesse as evidence that it was known in the art to use
cellulosic fibers in such reinforcing materials (id.)
Appellants acknowledge that Hesse describes polyester molding
materials that can include cellulosic fibers (Br. 11, citing Hess, col. 3, ll. 60-
64). However, Appellants contend that Hesse does not disclose or suggest
using such fibers within a laminate (Br. 12).
Marega discloses using polyester, acrylic, carbon, or glass fibers as
reinforcing fibers in a laminate (Marega, col. 2, ll. 6-9).
Hesse discloses using fibers in a polyester molding material to
reinforce the molding material (Hesse, col. 1, ll. 4-6). The fibers may be
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formed from glass, carbon, asbestos, cellulose, polycarboxylates,
polycarbonates, or nylon (Hesse, col. 3, ll. 60-65).
The prior art provides evidence that a range of fiber materials was
known for reinforcing resins. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). Using cellulosic fibers in a resin such as polyester for their
known purpose of reinforcing would have been obvious to one of ordinary
skill in the art.
CONCLUSION
We sustain the Examiner’s rejections.
DECISION
The Examiner’s decision is affirmed.
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)(1).

AFFIRMED

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