Ex Parte Hansson et alDownload PDFPatent Trial and Appeal BoardSep 26, 201311118780 (P.T.A.B. Sep. 26, 2013) Copy Citation 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. 11/118,780 05/02/2005 Krister Hansson 8688.011.US0001 8471 74217 7590 09/26/2013 NOVAK DRUCE CONNOLLY BOVE + QUIGG L.L.P. - PERGO 1875 Eye Street Eleventh Floor Washington, DC 20006 EXAMINER DICUS, TAMRA ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 09/26/2013 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 KRISTER HANSSON, JOHAN LUNDGREN, and HAKAN WERNERSSON ____________ Appeal 2012-010815 Application 11/118,780 Technology Center 1700 _____________ Heard: September 12, 2013 ______ Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and JAMES C. HOUSEL, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1-9, 11, 13-17, and 20-27. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). 1 Our decision refers to Appellants’ Brief (Br.) filed December 20, 2011, and the Examiner’s Answer (Ans.) mailed April 24, 2012. 2 Appellants identify the real party in interest in this appeal as Pergo AG. Appeal 2012-010815 Application 11/118,780 2 We AFFIRM-IN-PART. STATEMENT OF THE CASE The invention relates to decorative surface elements with a surface structure matching the décor of different woods or minerals. Spec. 1. The element comprises a base layer, a décor, and a wear layer of a UV or electron beam curing lacquer. Id. at 2: 4-5. The elements may be used as floor, wall, or ceiling boards. Id. at 5:7. Appellants teach a process for their manufacture, wherein a supporting core is made, a décor is printed onto an upper side of the core, and a wear layer is applied over the décor. Id. at 5:7- 17. The main part of the supporting core may be particle board or fibre board. Id. at 6:24-25. The wear layer may include hard particles with an average particle size in the range 50nm - 150 µm. Id. at 7:17-18. A radiation curing lacquer is printed in a predetermined pattern as an uppermost layer on the decorative upper surface such that only parts of the surface are covered. Id. at 8:12-14. Representative independent claims 1 and 21-23 are reproduced below: 1. A decorative floor board comprising a decorative surface on an upper side of a base layer, said decorative floor board further comprising: a base layer of the floor board; said base layer comprising a core selected from the group consisting of particle board and fiber board; said core comprising an upper surface; a decorative surface comprising a printed decor, printed directly on the upper surface of the core; and, the decorative surface further comprising a first lacquer layer, the first lacquer layer overlying the printed decor on the core in a predetermined pattern as an uppermost layer on the decorative surface of the floor board, the first lacquer layer covering only parts of the Appeal 2012-010815 Application 11/118,780 3 decorative surface, and providing a surface structure according to said pattern, wherein the decorative surface comprises: the printed decor and a wear layer, wherein the wear layer is positioned between the first lacquer layer existing as a predetermined pattern and the printed decor. 21. A decorative surface element comprising a base layer comprising a core selected from the group consisting of particle board and fiber board and a decorative surface of the decorative surface element, the decorative surface comprising a decor layer and a wear layer, which wear layer has been applied on top of the decor layer, wherein a first lacquer layer curable by radiation has been printed in a predetermined pattern as an uppermost layer on the core, the first lacquer layer curable by radiation covering only parts of the core, leaving a portion of core uncovered by the first lacquer layer curable by radiation, whereby the first lacquer layer has been exposed to radiation whereby it cures whereby a surface structure is achieved. 22. A decorative surface element comprising a base layer comprising a core selected from the group consisting of particle board and fiber board and a decorative surface on the decorative surface element wherein a lacquer curable by radiation has been printed by means of an inkjet printer in a predetermined pattern as an uppermost layer on the decorative surface, the lacquer curable by radiation covering only parts of the decorative surface whereby the lacquer has been exposed to radiation whereby it cures whereby a surface structure is achieved, the lacquer curable by radiation includes hard particles comprising at least one selected from the group consisting of aluminum oxide, silicon oxide, diamond and silicon carbide, with an average particle size in the range 50 nm [-] 150 µm. 23. A decorative surface element comprising a base layer comprising a core selected from the group consisting of particle board and fiber board and a decorative surface on the decorative surface element wherein a lacquer curable by radiation has been printed by means of an ink jet printer in a predetermined pattern as an uppermost layer on the decorative surface, the lacquer covering only parts of the Appeal 2012-010815 Application 11/118,780 4 decorative surface whereby the lacquer has been exposed to radiation whereby it cures whereby a surface structure is achieved, and the lacquer curable by radiation has been applied by means of an ink jet printer. App. Br. 15-18, Claims App’x. Rejections The Examiner maintains, and Appellants appeal, the following rejections: 1. Claim 27 stands rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; 2. Claims 1-9 and 20-27 stand provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 82, 90, and 92 of copending Application No. 10/839,204; 3. Claims 1-9 and 20-27 stand provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 13, and 14-26 of copending Application No. 11/223,127; 4. Claims 22 and 23 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Kubota3; 5. Claims 1, 2, 8, 9, 11, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kubota; 6. Claims 1-5, 13-17, 19, and 25-27 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Appellants’ Admitted Prior Art (APA) in view of Kubota; 3 US 4,500,373, issued February 19, 1985. Appeal 2012-010815 Application 11/118,780 5 7. Claims 6, 7, and 24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Appellants’ Admitted Prior Art (APA) in view of Kubota, and further in view of O’Dell4; and 8. Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Appellants’ Admitted Prior Art (APA) in view of Kubota, and further in view of Stecker5. ANALYSIS As an initial matter, we note that neither of the applications whose claims were applied in support of the provisional nonstatutory obviousness- type double patenting rejections 2 and 3 above is currently pending before the Office. Accordingly, we dismiss these rejections as being moot in view of the abandonment of these applications. Claim 27 is separately argued only with respect to the § 112, first paragraph, rejection 1. App. Br. 5-6. As to the remaining rejections 4-8, Appellants separately argue claims 1 and 21-23 on appeal. See generally, Id. at 7-12. Accordingly, with regard to our disposition of the § 103 rejections 5-8, all the dependent claims except claim 21 stand or fall with independent claim 1. 37 C.F.R. § 41.37(c)(1)(vii). Rejection 1 The Examiner finds that “said printed décor also comprises a lacquer†of claim 27 lacks written descriptive support in Appellants’ original disclosure. Ans. 5. In particular, the Examiner finds “the specification does not provide any teaching or discussion on a printed décor comprising a 4 US 5,702,806, issued December 30, 1997. 5 US 6,150,009, issued November 21, 2000. Appeal 2012-010815 Application 11/118,780 6 lacquer or its usage with Applicant’s claimed decorative floor board.†Id. Instead, the Examiner finds Appellants’ written description provides the printed décor as a layer separate from either the wear layer or the surface patterned layer, both of which are lacquer layers. Id., directing attention to Spec. 11, and Fig. 1. Appellants argue, without specifically addressing the Examiner’s reasoning, that “[t]here is clear and verbatim support for the fact that the ‘printed décor’ also comprises a lacquer.†Br. 5. In support of this position, Appellants direct attention to the second and third paragraphs on page 9 of the Specification, beginning the “decorative upper surface comprises a decor layer . . .†and continuing “"according to one embodiment of the invention, the surface structure is achieved by utilizing the following steps; i) the radiation curing lacquer is printed in a predetermined pattern on the decorative upper surface . . .†Id. Appellants argue “that according to this embodiment, a lacquer is printed in a predetermined pattern on the decorative surface becoming part of a printed décor of the decorative upper surface.†Id. at 6. We do not find Appellants’ argument persuasive. “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.†Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). As the Examiner emphasizes, this disclosure states that the radiation curing lacquer is printed on the decorative upper surface, wherein the decorative upper surface includes the décor layer. See Ans. 49. Contrary to Appellants’ argument, the radiation curing lacquer referred to on page 9 of Appeal 2012-010815 Application 11/118,780 7 the Specification is separate from the decorative upper surface, and therefore separate from the décor layer. We note Appellants do not provide any explanation of the page 9 disclosure with any specificity, or direct our attention to any other portion of the written description in support of the recitation of claim 27. Accordingly, we agree with the Examiner that Appellants’ written description fails to provide adequate written descriptive support for claim 27 as required by 35 U.S.C. § 112, first paragraph. Rejection 4 Anticipation is established when the Examiner establishes as a matter of fact that a single prior art reference describes to one skilled in the art an embodiment that contains all features of the claimed invention arranged as specified in claims 22 and 23, either expressly or inherently, in a manner enabling one skilled in the art to practice the embodiment without undue experimentation. See, e.g., ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012); Therasence, Inc. v. Becton, Dickinson and Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Sanofi-Synthelabo v. Apotex Inc., 550 F.3d 1075, 1083 (Fed, Cir. 2008); Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (A claim is anticipated only where “each and every limitation is found either expressly or inherently in a single prior art reference.â€); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990). The Examiner finds Kubota teaches a decorative surface element including a base layer comprised of a particle board core, with a decorative Appeal 2012-010815 Application 11/118,780 8 surface or décor printed on an upper surface of the core. Ans. 29. The Examiner finds Kubota’s decorative surface element further includes a lacquer layer (cured resin layer 10) partially covering the décor in a predetermined pattern, wherein the lacquer is radiation cured. Id., referring to Kubota, Fig. 9. In addition, with regard to claim 22, the Examiner finds Kubota’s lacquer may include hard particles of 10-50 µm and comprised of aluminum oxide or silicon oxide. Id. at 30. Appellants argue Kubota fails to teach various features of the invention of claims 22 and 23. App. Br. 7. In particular, Appellants argue Kubota does not teach a lacquer, printing the lacquer by means of an ink jet printer, that the lacquer is curable by radiation, or that the lacquer includes hard particles of aluminum oxide, silicon oxide, diamond and/or silicon carbide with an average particle size in the range 50nm-150µm. Id. A central issue before us is the meaning of lacquer as used in the claims. The Examiner finds, for this application, that “a synthetic resin is equivalent to a lacquer as the compositions are identical.†Ans. 51. On the other hand, Appellants note that “Kubota never mentions the word ‘lacquer’.†Br. 7. Appellants dispute that these terms are either equivalent, or interchangeable, as suggested by the Examiner.†Br. 8. We begin, as we must, with the claim’s words. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“Only when a claim is properly understood can a determination be made . . . whether the prior art anticipates and/or renders obvious the claimed invention.â€). During examination, claim terms are given their broadest reasonable construction consistent with the specification. In general, words used in a claim are accorded their ordinary and customary meaning. Appeal 2012-010815 Application 11/118,780 9 Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 992 (Fed. Cir. 2007). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. As we understand the Examiner’s position, in the final products of the claims and Kubota, the compositions are identical, i.e. both are synthetic resins. Appellants do not argue this interpretation with any specificity. Merely disputing the Examiner’s interpretation as Appellants have done, without directing our attention to either an alternative definition provided by the Specification or to the customary and ordinary meaning of the term, fails to persuade us of reversible error in the Examiner’s interpretation. Indeed, a searching review of Appellants’ Specification fails to reveal any definition of lacquer. Also, the only information the Specification provides with regard to the composition of a lacquer is that it is radiation curable (Spec., 8:16-18), preferably “consists of an acrylic, epoxy or a maleimide lacquer†(id.), and is either semi-translucent or translucent (id., 8:28-30). As the Examiner finds, Kubota’s synthetic resin is also radiation curable. Ans. 29. We further note that the Examiner finds Kubota’s synthetic resins at least overlap those disclosed by Appellants. Id. at 51 (see also Kubota, 4:45-47, Appeal 2012-010815 Application 11/118,780 10 disclosing epoxy resin dissolved in a suitable solvent; 9:7-10, disclosing acrylic resin mixed with a solvent.)6 Having considered the interpretation of the Examiner in the context of the above analysis, we find Appellants have failed to establish reversible error in the Examiner’s interpretation. Accordingly, for purposes of our review of the Examiner’s prior art rejections, we find the broadest reasonable interpretation of lacquer includes Kubota’s synthetic resins. Turning next to the other alleged differences between Kubota and claims 22 and 23, the Examiner’s findings specifically referred to Kubota’s synthetic resins being radiation cured (and therefore curable), and includes hard particles of aluminum or silicon oxide with an average particle size of 10-50 µm. Ans. 29-30. Appellants fail to rebut these findings, or in any way attempt to establish them to be erroneous. With regard to Appellants’ argument that Kubota fails to teach printing the lacquer by means of an ink jet printer, the Examiner finds this recitation refers to a product-by-process limitation and that it implies no structural difference between Appellants’ claimed product and that of Kubota. Id. at 29. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citation omitted) (“The patentability of a product does not depend on its method of production. If the product in a product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.â€) Again, Appellants fail to rebut this finding in any way. Further, 6 While not controlling, we note the Wikipedia® entry for lacquer indicates that “[i]n terms of modern products, . . . lacquer refers to other polymers dissolved in volatile organic compounds (VOCs).†http://en.wikipedia.org/wiki/Lacquer, accessed on September 21, 2013. Appeal 2012-010815 Application 11/118,780 11 Appellants have not shown that the process of printing a lacquer by means of an ink jet yields a product structurally different from that of Kubota.7 For these reasons, we will uphold the Examiner’s rejection of claims 22 and 23 as being anticipated by Kubota under Section 102(b). Rejection 5 The Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.†In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). After careful consideration of the respective positions of the Examiner and Appellants, we find a preponderance of the evidence and weight of argument favors Appellants. We will not sustain the Examiner’s decision rejecting claims 1, 2, 8, 9, 11, and 20 as unpatentable under Section 103(a) over Kubota for the reasons expressed in the Answer with the comments below added for emphasis. The Examiner finds, inter alia, that Kubota teaches the structure of claim 1 except for a wear layer positioned between the printed décor layer and the first lacquer layer. Ans. 31-33. Nonetheless, the Examiner finds Kubota’s lacquer layer 10 functions as a wear layer because of its 7 While not controlling, we further note that Kubota teaches printing of a thermosetting resin matching the coincident portions of a prior printed decorative pattern was known in the prior art. Kubota, 1:9-22. Appeal 2012-010815 Application 11/118,780 12 composition and structure, referring to Kubota’s adding mineral particles for wear resistance to abrasion. Id. at 33. Based on these findings, the Examiner concludes it would have been obvious to add another lacquer layer underneath or over the first lacquer layer for aesthetics, wood grain patterning, and/or protection as resistance to abrasion. Id. at 34. Appellants note claim 1 requires a wear layer positioned between the first patterned lacquer layer and the printed décor, whereby the first patterned lacquer layer covers only a portion of the wear layer. Br. 9. In contrast to this requirement, Appellants argue Kubota removes the cured resin layer having resistance to abrasion from the concavities 7 (printed décor), thereby exposing the décor. Id. As such, there is no provision for a wear layer between Kubota’s printed décor 3 and the first patterned lacquer layer 10. Id. We agree. Kubota teaches covering the printed décor 3 with a lacquer and then removing the portion of the lacquer overlying the décor 3 thereby forming the concavities 7 creating the desired surface pattern. The provision of a wear layer positioned between the décor and the lacquer layer would prevent the exposure of the décor to create the desired surface pattern. The Examiner fails to address this incompatibility in adding an intervening wear layer in the context of Kubota’s teachings. As such, we are persuaded the Examiner erred in concluding the addition of a wear layer in Kubota would have been obvious to one of ordinary skill in the art. Rejection 6 The Examiner finds APA teaches, inter alia, a decorative surface comprising a first lacquer layer and a wear layer “seeing as lacquer functions Appeal 2012-010815 Application 11/118,780 13 as a wear layer due to its inherent composition.†Ans. 35. As such, the Examiner finds APA meets the requirement that the lacquer overlies the printed décor with a wear layer therebetween. Id. The Examiner concedes APA does not disclose a first lacquer layer in a predetermined pattern as an uppermost layer on the decorative surface of the floor board, printed on only parts of the decorative surface. Id. at 36. Nonetheless, the Examiner notes APA teaches there has been a long time need to add lacquer as a top coat on a décor. Id. The Examiner turns to Kubota finding that Kubota provides a lacquer only in parts to create an attractive wood grain pattern with a more distinct relief. Id. The Examiner concludes it would have been obvious to have used lacquer to coat only part of the decorative surface to decrease the cost of using lacquer, or alternatively as taught by Kubota to provide an attractive wood grain pattern with a more distinct relief. Id. at 36-37. Appellants argue neither APA nor Kubota teach the provision of an intervening wear layer between a patterned uppermost lacquer layer and the printed décor. Br. 10. As such, Appellants argue the proposed combination of APA and Kubota leads away from the claimed invention. Id. Having considered the respective positions of the Examiner and Appellants, we are persuaded of reversible error in the Examiner’s obviousness conclusion. Although the Examiner responds that the proposed combination “melts together to form the claimed invention,†we disagree. As to the APA, the Examiner has not directed us to any teaching therein supporting the provision of a wear layer overlying the printed décor, and a further patterned lacquer layer covering only part of the decorative surface. The Examiner’s cost justification for providing a patterned lacquer layer actually runs contrary to the addition of a wear layer as any additional layer would Appeal 2012-010815 Application 11/118,780 14 increase cost. Moreover, as we explained above, we found the provision of a wear layer is incompatible with Kubota’s teaching that the printed décor 3 is exposed to create concavities 7 providing the desired relief. Accordingly, we will not sustain the Examiner’s Section 103(a) rejection of claims 1-5, 13-17, 19, and 25-27 as unpatentable over the combination of APA and Kubota. Rejection 7 With regard to this rejection, the Examiner relies on the combination of APA and Kubota, further in view of O’Dell. O’Dell is not being relied on as teaching a wear layer and, therefore, does not cure the deficiency in the obviousness conclusion discussed above. Accordingly, for the same reasons as set forth above for Rejection 6, we will not sustain Rejection 7. Rejection 8 With regard to this rejection, the Examiner relies on the combination of APA and Kubota, further in view of Stecker. Stecker is not being relied on as teaching a wear layer and, therefore, does not cure the deficiency in the obviousness conclusion discussed above. Accordingly, for the same reasons as set forth above for Rejection 6, we will not sustain Rejection 8. CONCLUSION The rejection of claim 27 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement is affirmed. Appeal 2012-010815 Application 11/118,780 15 The rejection of claims 1-9 and 20-27 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 82, 90, and 92 of copending Application No. 10/839,204 is dismissed. The rejection of claims 1-9 and 20-27 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 13, and 14-26 of copending Application No. 11/223,127 is dismissed. The rejection of claims 22 and 23 under 35 U.S.C. § 102(b) as being anticipated by Kubota is affirmed. The rejection of claims 1, 2, 8, 9, 11, and 20 under 35 U.S.C. § 103(a) as unpatentable over Kubota is reversed. The rejection of claims 1-5, 13-17, 19, and 25-27 under 35 U.S.C. § 103(a) as unpatentable over Appellants’ Admitted Prior Art (APA) in view of Kubota is reversed. The rejection of claims 6, 7, and 24 under 35 U.S.C. § 103(a) as unpatentable over Appellants’ Admitted Prior Art (APA) in view of Kubota, and further in view of O’Dell is reversed. The rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable over Appellants’ Admitted Prior Art (APA) in view of Kubota, and further in view of Stecker is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART cam Copy with citationCopy as parenthetical citation