Ex Parte Grandominico et al

Board of Patent Appeals and Interferences

Aug 25, 2010

11355053 (B.P.A.I. Aug. 25, 2010)

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.
11/355,053 02/15/2006 Gary Alan Grandominico 16-961 9259
26294 7590 08/25/2010
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
O HERN, BRENT T
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
08/25/2010 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 ALAN GRANDOMINICO,
RAYMOND A. MCDONALD JR., and
DOMINIC PLAUCHE GRANDOMINICO
____________

Appeal No. 2009-009048
Application 11/355,053
Technology Center 1700
____________

Before CHUNG K. PAK, TERRY J. OWENS, and
KAREN M. HASTINGS, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 5, which are all of the claims pending in the

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 2009-009048
Application 11/355,053

above-identified application. We have jurisdiction under 35 U.S.C. §§ 6 and
134.
STATEMENT OF THE CASE
The subject matter on appeal is directed to “a glass reinforced
thermoplastic wall liner with an integral scuff panel” suitable for use in
cargo carrying vehicles (Spec. 1). The scuff panel is defined as a panel or
band used to reinforce portions of a plastic composite liner subject to
frequent impact and damage from extending forks of a lift truck during
loading and unlading pallets (Spec. 2). Details of the appealed subject
matter are recited in claim 1 reproduced from the Claims Appendix to the
Appeal Brief as shown below:
1. A thermoplastic composite liner for use as an inner wall of a
trailer, the thermoplastic composite liner comprising:

a) a glass reinforced thermoplastic sheet permanently affixed by a
lap seam ultrasonic weld joint to a glass reinforced thermoplastic scuff panel
along a length of the scuff panel by ultrasonic welding;

b) the scuff panel being positioned relative to the thermoplastic
sheet such that an edge portion of a first side of the thermoplastic sheet
overlaps and is welded to an edge portion of a first side of the scuff panel
along the length of the scuff panel; and

c) the ultrasonic welding forming the lap seam weld joint between the
overlapping edge portions of the thermoplastic sheet and the scuff panel
along the length of the scuff panel, wherein regions of the first side of the
scuff panel and the first side of the thermoplastic sheet other than the
overlapping edge portions of the first sides of the scuff panel and the
thermoplastic liner [sic., sheet] not being in contact.

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Appeal 2009-009048
Application 11/355,053

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following evidence2:
Hewitt US 3,419,447 Dec. 31, 1968
Barry US 2002/0148196 A1 Oct. 17, 2002
Jones US 2005/0042433 A1 Feb. 24, 2005
Osten US 2006/0019078 A1 Jan. 26, 2006

Appellants seek review of the Examiner’s rejection of claims 1
through 5 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Barry, Osten, Jones, and Hewitt.
ISSUE AND CONCLUSION
The dispositive question is: Has the Examiner erred in determining
that one of ordinary skill in the art would have been led to produce the
claimed thermoplastic composite liner comprising particularly overlapped
glass reinforced thermoplastic sheet and scuff panel, with a lap seam
ultrasonic weld joint between the overlapping edge portions thereof along
the length of the scuff panel within the meaning of 35 U.S.C. § 103(a)? On
this record, we answer this question in the affirmative.

FINDINGS OF FACT
Barry teaches a glass fiber reinforced plastic sidewall assembly 50 or
52 for a railway car composite box structure, comprising a first glass fiber
reinforced plastic layer 61 affixed to a second glass fiber reinforced plastic
layer 62 via adhesives and/or mechanical fasteners (paras. 0048, 0051 and
0055 and Fig. 2). Barry teaches that void spaces 63 may be formed between

2 See pages 2 and 3 of the Answer dated November 25, 2008
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Appeal 2009-009048
Application 11/355,053

the first layer 61 and the second layer 62 (para. 0055 and Fig. 2). According
to Barry (para. 0058):
First layer 61 and second layer 62 are preferably formed from
Bulitex material available from U.S. Liner Company, a division
of American Made, Inc. Bulitex material may be generally
described as a ballistic grade composite scuff and wall liner.
[Emphasis added.]

Barry further teaches L-shape trim moldings 75 bonded to both the first
layer 61 of end wall assemblies 120 and 122 (para. 0088 and Fig. 7A).
Barry’s second glass fiber reinforced plastic layer 62, L-shape trim molding
75, and first glass fiber reinforced plastic layer 61 have inner surface
portions which are not in contact with one another (Figs. 2 and 7A).
Osten teaches a multi-layer fiber reinforced thermoplastic panel
comprising a first glass fiber reinforced thermoplastic sheet 10 and a second
glass fiber reinforced thermoplastic sheet 20 connected with connecting
films 45 and 50 which have lower melting points than the melting points of
the first and second glass fiber reinforced thermoplastic sheet and are melted
to form a single connecting layer 35 (paras. 0031, 0034, 0037, 0041, 0048,
and 0049 and e.g., Figs. 2, 4, and 11).
Jones is relied upon by the Examiner at page 6 (emphasis in original)
of the Answer to show that:
[W]here fibers in trailer sheets and panels are typically glass
fibers, the thermoplastic sheet and the scuff panel being
fabricated of fiber-reinforced polymer and where the fiber-
reinforced polymer comprises polypropylene or polyester resins
(See paras. 39, 41 and 77-78 and FIG-13.) for the purpose [of]
providing a light weight durable trailer (See paras. 41 and 77-
78).

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Appeal 2009-009048
Application 11/355,053

Hewitt teaches joining two sheets of thermoplastic materials in a butt
seam ultrasonic weld to produce a butt seam having a strength about equal to
the strength of the unjoined sheet (col. 2, ll. 5-19, col. 5, ll. 60-70, and col. 7,
ll. 55-71). According to Appellants at page 16 of the Appeal Brief, Hewitt
teaches away from employing a lap seam. In particular, Appellants refer to
col. 1, ll. 39-45, Hewitt, which states:
When lap seaming is employed, an unsightly, large ridge results
at the area of juncture due to the double thickness of stock
utilized in the lap seam. Moreover, when a number of lap
seamed sheets are laminated to one another, the double
thicknesses of the lap seams facilitate the trapping of air
between the layers of the laminated product, causing blistering
and separation therein.

ANALYSIS AND PRINCIPLES OF LAW
The Examiner has the initial burden of establishing a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The “prima facie case”
serves as a procedural mechanism that shifts the burden of going forward to
Appellants to produce evidence and/or argument rebutting any inference of
unpatentability. Oetiker, 977 F.2d at 1445; Piasecki, 745 F.2d at 1472. The
Board reviews the obviousness rejection set forth by the Examiner for error
based on all the arguments and evidence relied upon by Appellants. See 37
C.F.R. § 41.37(c)(1)(vii); see also In re Baxter Travenol Labs., 952 F.2d
388, 391 (Fed. Cir. 1991) ("It is not the function of this court to examine
the claims in greater detail than argued by an appellant, looking for
nonobvious distinctions over the prior art.").
Here, the Examiner takes the position at pages 6 and 7 of the Answer
that:
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Appeal 2009-009048
Application 11/355,053

[I]t would have been obvious to a person having ordinary
skill in the art at the time Applicant’s invention was made to
substitute Barry’s (‘196) reinforced sheet and scuff panel with
the glass reinforced thermoplastic, such as polypropylene or
polyester as taught by Osten (‘078) and Jones (‘443) and to join
the members with welds as taught by Hewitt (‘447) in order to
provide a light weight durable trailer.

However, as correctly pointed out by Appellants, the Examiner’s proposed
combination would not have led one of ordinary skill in the art to produce
the claimed thermoplastic composite liner comprising particularly
overlapped and permanently affixed glass reinforced thermoplastic sheet and
scuff panel with a lap seam ultrasonic weld joint between the overlapping
edge portions thereof along the length of the scuff panel within the meaning
of 35 U.S.C. § 103(a). Regardless of the propriety of the Examiner’s
reliance on one of the L-shape trim moldings taught by Barry as “a scuff
panel” of a thermoplastic liner, the fact remains that Hewitt teaches away
from joining two sheets of thermoplastic material in a lap seam as indicated
supra. Instead, Hewitt teaches forming a butt seam ultrasonic weld to join
two plastic sheets to avoid the problems associated with a lap seam. Thus,
Appellants have correctly identified reversible error in the Examiner’s
determination that the applied prior art references as a whole would have
prompted one of ordinary skill in the art to arrive at the claimed invention.
At best, the Examiner’s proposed combination would have led one of
ordinary skill in the art to affix a glass reinforced thermoplastic sheet to a
glass reinforced thermoplastic scuff panel with a butt seam ultrasonic weld
in forming a thermoplastic liner to avoid the problem associated with lap
seaming.
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Appeal 2009-009048
Application 11/355,053

Accordingly, we reverse the Examiner’s decision rejecting claims 1
through 5 under 35 U.S.C. § 103 as unpatentable over the collective
teachings of Barry, Osten, Jones, and Hewitt.
ORDER
In view of the foregoing, the decision of the Examiner is reversed.

REVERSED

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TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
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