Ex Parte Jaffee

Board of Patent Appeals and Interferences

Jan 22, 2010

10938833 (B.P.A.I. Jan. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALAN MICHAEL JAFFEE
__________

Appeal 2009-013537
Application 10/938,833
Technology Center 1700
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Decided: January 22, 2010
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Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1-5, 7, 10, 11, 13, 16-18, and 20. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellant discloses a method of providing improved flooring sheets
with increased water protection (Spec. 1).
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Claim 1 is illustrative:
1. A method of providing water protection to a floor structure of a
building comprising the steps of:

(a) providing one or more water resistant floor sheathing panels, each
panel comprising a wood sheet product and a nonwoven fabric mat adhered
to the wood sheet product,

wherein each panel is produced by subjecting a wood sheet product
and a "B" stage condition nonwoven fabric mat to sufficient heat and
pressure to complete the cure of a resin binder in the mat and to adhere the
mat to the wood sheet product, the "B" stage condition mat comprising
fibers bonded together with the resin binder that is only partially cured,
wherein the resin binder is selected from the group consisting of a furfuryl
alcohol based resin, a phenol formaldehyde resin, a melamine formaldehyde
resin, and mixtures thereof

(b) installing the floor sheathing panel(s) on a floor structure of a
building such that the nonwoven mat of each panel faces upwardly; and

(c) installing a flooring material over the nonwoven fabric mat(s) of
the floor sheathing panel(s).

The Examiner relies on the following prior art references as evidence
of unpatentability:

Upson US 2,075,317 Mar. 30, 1937
Golborn US 3,885,912 May 27, 1975
Kelley US 4,059,665 Nov. 22, 1977
Aito US 4,532,275 Jul. 30, 1985
Abe (as translated) JP 07-178708 Jul. 18, 1995

Appellant appeals the following rejections:
1. Claims 1-5, 7, 10, 11, 13, 17, 18, and 20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Upson in view of Abe, Aito, and
Golborn.
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2. Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Upson in view of Abe, Aito, Golborn, and Kelley.
With regard to rejection (1), Appellant argues the claims as a group of
which we select claim 1 as representative (Br. 10-12, 14-16). With regard to
rejection (2), Appellant relies on the arguments made with regard to
rejection (1) (Br. 12-14).

ISSUES
1. Has Appellant shown that the Examiner reversibly erred in
determining that the references provide a reason for combining Aito
and Golborn with Upson and Abe? We decide this issue in the
negative.
2. Has Appellant shown that the Examiner reversibly erred in
determining that combining Aito’s B-stage resin prepreg with Upson
and Abe would not have yielded predictable results (e.g., a reasonable
expectation of success) in terms of producing water resistant floor
sheathing panels by subjecting the wood sheet product and a B-stage
condition nonwoven fabric mat to sufficient heat and pressure to
complete the cure of a resin binder in the mat and to adhere the mat to
the wood sheet product? We decide this issue in the negative.

PRINCIPLE OF LAW
The applicant bears the procedural burden of showing error in the
Examiner’s rejections. See, e.g., In re Kahn, 441 F.3d 977, 985-86 (Fed.
Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection
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[under § 103] by showing insufficient evidence of prima facie obviousness”)
(citation and internal quote omitted).

FACTUAL FINDINGS (FF)
1. Appellant does not contest the Examiner’s findings regarding Upson
and Abe on pages 3-4 of the Answer (Br. generally; Reply Br.
generally). Appellant does not contest the Examiner’s reason for
combining Abe and Upson (Br. generally; Reply Br. generally).
2. The Examiner finds that the combination of Aito’s polyaromatic
fibers and matrix resin provide a material having a high strength,
modulus, and impact resistance (Ans. 16-17). The Examiner further
finds that Aito teaches that curing the thermosetting resin to the
B-stage is an alternative or optional step such that one of ordinary
skill in the art would understand that using a fully uncured resin or a
partially cured resin are interchangeable (Br. 17). Appellant does
not dispute these findings.
3. The Examiner finds that Golborn teaches that the melamine
formaldehyde, phenol formaldehyde, and/or furfuryl alcohol are
interchangeable with epoxy and polyester resins (Ans. 17). The
Examiner further finds that Golborn teaches adding a flame retardant
to the resins such as using a melamine formaldehyde, phenol
formaldehyde, and/or furfuryl alcohol based resin to impart flame
retardant properties to thermosetting resins (Ans. 18)
4. Based on the Examiner’s findings noted in FF 2 and 3, the Examiner
determines that it would have been obvious to modify the method of
Upson in view of Abe to use Aito’s B-stage resin to make the
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flooring panels and Golborn’s melamine formaldehyde, phenol
formaldehyde and/or furfuryl alcohol based resin with or without
flame retardant as the resin binder in the flooring panels (Ans. 16-
17). Appellant does not contest this determination based on these
findings (Reply Br. generally).
5. The Examiner finds:
Since both references, Aito and Abe, recite the used [sic, use] of the
same resin as the matrix resin, the result would be expected to be
[the] same when a thermosetting resin, such as epoxy or unsaturated
polyester resin is used as the impregnating resin to a fabric and
curing the resin to a B-stage in a prepreg to be use[d] for final uses
as taught by Aito and is applied to a wooden board with heat and
pressure to completely cure the thermosetting resin as taught by Abe.
(Ans. 15).
In other words, the Examiner finds that based on the teachings of the
references the use of a resins in partially cured stage (i.e., B-stage) is
nothing more than the predictable use of a prior art element
according to its established function (i.e., bonding to form a
laminate). Appellant does not contest this finding (Reply Br.
generally).
6. Aito discloses laminating prepregs containing a B-stage resin (col. 8,
ll. 51-68; col. 9, ll. 1-8).

ANALYSIS
Issue (1)
Appellant argues that the Examiner’s reason for combining Aito with
Upson and Abe, to form a composite having high strength, rigidity and
impact strength, is lacking because Aito does not teach that the matrix resin
(i.e., the B-stage resin) provides those properties to the composite (Br. 16).
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Similarly, Appellant argues that the Examiner’s reason for substituting
Golborn’s resin for Upson in view of Abe and Aito’s binder resin is
incorrect because Golborn does not attribute the flame retardant property to
the resin itself (Br. 16).
However, these arguments fail to address the Examiner’s specific
findings regarding the reasons for substituting the teachings of Aito and
Golborn with the method of providing water protection to flooring of Upson
and Abe. Namely, the Examiner finds that Golborn’s teaching that the
melamine formaldehyde, phenol formaldehyde, and/or furfuryl alcohol
based resin are interchangeable with epoxy resins and unsaturated polyesters
as taught by Abe1 as a reason to substitute Golborn’s melamine or phenol
formaldehyde resin with Abe’s resin. Similarly, the Examiner finds that
Aito teaches that using an uncured or partially cured (B-stage) resin is
interchangeable such that substituting a B-stage (i.e., partially cured resin)
for Upson in view of Abe’s uncured resin would have been obvious.
Appellant does not contest these Examiner findings, nor the Examiner’s
conclusions based on these findings (FF 2-4). Appellant has not shown the
Examiner’s stated reason for combining Aito and Golborn with Upson and
Abe to be erroneous.

Issue (2): Reasonable Expectation of Success
Appellant argues that there is no reasonable expectation of success
(i.e., predictability) in using Aito’s B-stage resin in the fabric of Abe and

1 We further note that Abe teaches using phenol resins that may be obtained
by reacting a phenol and an aldehyde as the thermosetting resin in the
nonwoven (Abe 6).
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method of Upson to form the claimed flooring panel used in the claimed
method (Br. 15).
However, the Examiner finds that Abe and Aito teach similar matrix
resins (e.g., phenolic or epoxy resins) such that the result (i.e., bonding of
layers to form a laminate) would have been expected to be the same (Ans.
15). In other words, one of ordinary skill in the art would have expected that
using Aito’s B-stage resin in Upson in view of Abe’s nonwoven layer of the
water-resistant wood core board would have successfully bonded the layers
together to form a water-resistant flooring material. Stated differently, using
Aito’s B-stage resin to bond the nonwoven material to the core is nothing
more than the predictable use of a prior art element (i.e., B-stage resin)
according to established function (i.e., bonding layers together form a
laminate as taught by Aito).
Appellant has not shown the Examiner’s determination that the
combined teachings of the applied prior art provide a reasonable expectation
of success of achieving the flooring panels used in the claimed method to be
in error.
For the above reasons, we affirm the Examiner’s § 103 rejection of
claims 1-5, 7, 10, 11, 13, 17, 18, and 20 over Upson in view of Abe, Aito,
and Golborn.
Because Appellant relies on the same unpersuasive arguments made
regarding rejection (1) to traverse rejection (2), we affirm the Examiner’s §
103 rejection of claim 16 over Upson in view of Abe, Aito, Golborn, and
Kelley for the same reasons.
DECISION
The Examiner’s decision is affirmed.
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TIME PERIOD
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)(iv).

AFFIRMED

cam

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LEGAL DEPARTMENT
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