Ex Parte Jaffee

Board of Patent Appeals and Interferences

Mar 31, 2010

10938827 (B.P.A.I. Mar. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALAN MICHAEL JAFFEE
____________

Appeal 2009-006892
Application 10/938,827
Technology Center 1700
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Decided: March 31, 2010
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Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
PETER F. KRATZ, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-5, 7, 8, 30-33, and 35. We have
jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2009-006892
Application 10/938,827

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Appellant’s claimed invention is directed to a laminate product
including a non-wood cellolosic panel, such as a strawboard, and a non-
woven fabric mat.
Claim 1 is illustrative and reproduced below:
1. A laminate product comprising:

a non-wood cellulosic panel having a first face, a second, face, and
edges, the panel comprising non-wood cellulosic particles bonded together
with a binder under heat and pressure; and

a nonwovcn fabric mat adhered to the first face of the non-wood
cellulosic panel,

with the laminate product being produced by subjecting the panel and
a "B" stage condition non-woven fabric mat to sufficient heat and pressure
to complete the cure of the binder in the mat and to adhere the mat to the
panel, the "B" stage condition mat comprising fibers bonded together with
resin binder that is only partially cured.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Caron US 3,367,820 Feb. 6, 1968
Higgins GB 2,201,175 A Aug. 24, 1988
Lin US 5,733,633 Mar. 31, 1998
Held US 6,180,211 B1 Jan. 30, 2001
Chiu US 6,306,241 B1 Oct. 23, 2001

The Examiner maintains the following grounds of rejection:1

1 The Examiner inadvertently lists cancelled claim 6 as being among the
claims rejected as anticipated by Caron and obvious over Chui or Caron,
each in view of Lin. (Ans. 4, 5, and 7). The Examiner identifies two
withdrawn rejections (Ans. 3). Appellant misstates the claims on appeal by
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1. Claims 1, 3, and 7 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Held;
2. Claims 1-5, 7, 30-32, and 35 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Caron;
3. Claims 1-5, 7, 8, and 30-33 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Chui in view of Lin;
4. Claims 8 and 33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Caron in view of GB ‘175;
5. Claims 1-5, 7, 30-32, and 35 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Caron in view of Lin; and
6. Claims 8 and 33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Caron in view of Lin and GB ‘175.
The Appellant does not argue the commonly rejected claims
separately. Accordingly, we select claim 1 as the representative claim for
rejections 1-3 and 5. We select claim 8 as the representative claim for
rejections 4 and 6.
We affirm. In so doing, we adopt the Examiner’s factual findings and
rebuttal position as set forth in the Examiner’s Answer as our own. We add
the following for emphasis.
A common thread running through Appellant’s arguments is a
tendency to urge product distinctions based on alleged process distinctions,
some in product by process form that have not been established as making a
product distinction, and on other matters to which the rejected claims are not
limited, such as the amount of resin binder in a non-woven mat, and asserted

including claims 10-29, which claims are withdrawn from consideration (Br.
1; Ans. 2-3).
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properties, such as water resistance, strength, low flammability, mildew
resistance etc, based thereon.
We will not further comment on the unclaimed matters here as the
Examiner has correctly noted the ineffectiveness of presenting arguments
based on conjectured limitations (Ans. 8-11). We also note that the
Examiner has presented a reasonable basis for shifting the burden to
Appellant to establish a product distinction over the applied references based
on the manner of preparing the claimed product (Ans. 4-11). However,
Appellant has not met this burden with the production of any persuasive
evidence or presentation of substantiated argument that outweighs the
Examiner’s evidence and reasoning used as a basis for noting the propriety
of shifting the burden on the product-by-process limitation in representative
claim 1 to Appellant (see generally Br.). So, there it stays.
For instance and concerning the anticipation rejection over Held,
Appellant acknowledges that Held discloses a composite laminate including
a fiber impregnated substrate and provides a non-woven polyester backing
sheet thereon (Br. 6). The Examiner correctly points out where Held
describes using non-wood, cellulosic particles bound in the resin
impregnated substrate of Held (Ans. 4; Held, col. 2, ll. 43-45). Moreover,
Appellant notes that formation of the laminate of Held results in substrate
source resin being present in the identified non-woven polyester backing
sheet (Br. 7). While Appellant notes several argued process distinctions and
alleges a product distinction for the product of representative claim 1 over
Held, Appellant does not precisely point out where a product distinction is
set forth in claim 1 that is not found in Held, for reasons set forth above and
by the Examiner in the Answer.
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Concerning the anticipation rejection of representative claim 1 over
Caron, Appellant urges that Caron could not be describing or suggesting a
non-woven fabric layer with respect to the fiberglass fabric option disclosed
therein because “(fiberglass) non-wovens were in their infancy in 1963, the
year in which Caron was filed” (Br. 8). However, Appellant does not
substantiate this argument with evidence and explain why Caron was not
describing non-wovens during their infancy. Nor does Appellant
persuasively establish how the use of an amount of B-stage resin in a
product-by process step would necessarily result in a product distinction
over the composite laminate product of Caron, which includes cured resin
binder in the product, as explained by the Examiner (Ans. 4, 5, 9, and 10).
Moreover, even if Appellant could have established that Caron could
not be directed to using a non-woven fiberglass fabric layer in the composite
product thereof, we note that the Examiner provides a further basis with the
additional teachings of Lin for establishing the obviousness of the
representative claim 1 subject matter, including a non-woven fabric in
Caron, which has not been effectively refuted by Appellant (Ans. 7 and 10).
Concerning the combined teachings of Chiu and Lin as applied by the
Examiner in a separate obviousness rejection, Appellant, once again, argues
the product by process B-stage resin limitation. As the Examiner explains,
Appellant has not identified a product distinction based on this process
feature (Ans. 5, 6, and 11). It is noted that claim 8 stands or falls with claim
1 with respect to the rejection over Chui and Lin, as it is not separately
argued.
As for the separate rejections of dependent claims 8 and 33 over the
combination of Caron in view of GB ‘175 or Caron in view of Lin and GB
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‘175, we note that Appellant does not base the argument for the patentability
of these claims on the added limitation of representative claim 8, but rather
the features of independent claim 1, as discussed above.
Consequently, Appellant has not established harmful error in any of
the stated rejections.
ORDER
The Examiner’s decision to reject the appealed claims is affirmed.
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

PL Initiial:
sld

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