Ex Parte Jaffee

Board of Patent Appeals and Interferences

Jan 7, 2010

10938828 (B.P.A.I. Jan. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALAN MICHAEL JAFFEE
__________

Appeal 2009-006371
Application 10/938,828
Technology Center 1700
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Decided: January 7, 2010
____________

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
1-16. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellant discloses a method of making a laminate product that
includes a step where the furnish (i.e., the binder and wood particle mixture)
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is cured and a non-woven fabric mat is adhered to a first face of the wood
product in the molding step (Spec. 3-4).
Claim 1 is illustrative:
1. A method of making a laminate product comprising
the steps of:

(a) providing a furnish comprising wood particles and a
binder;

(b) providing at least one nonwoven fabric mat;

(c) forming a composite mat using the furnish and the
nonwoven fabric mat, the composite mat comprising:

(1) a mat formed from the furnish, the mat having
a first face and a second face; and

(2) the nonwoven fabric mat contacting the first
face of the mat formed from the furnish; and

(d) subjecting the composite mat to sufficient heat and
pressure to form a laminate product comprising a wood product
panel having a first face, a second face, and edges with the
nonwoven fabric mat adhered to the first face of the wood
product panel,

wherein the binder in the furnish is not cured prior to step
(d), and wherein in the same step (d):

the binder in the furnish is cured; and

the nonwoven fabric mat is adhered to the first face of the
wood product panel.

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

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Kajander ‘339 6,331,339 B1 Dec. 18, 2001
Haataja 2001/0055665 A1 Dec. 27, 2001
Kajander ‘586 2003/0008586 A1 Jan. 9, 2003
Sean 6,767,490 B2 Jul. 27, 2004

Appellant appeals the following rejections:
1. Claims 1-6, and 8-16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kajander ‘339 in view of Sean and Haataja.
2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kajander ‘339 in view of Sean, Haataja and Kajander ‘586.
With regard to rejection (1), Appellant argues the claims as a group
from which we select claim 1 a representative. With regard to rejection (2),
Appellant relies on the arguments made with regard to rejection (1).

Rejections (1) and (2)
ISSUES
1. Has Appellant shown that the Examiner reversibly erred in the
following findings: (1) that Haataja does not teach away from making
oriented strand board (OSB) as taught by Kajander ‘339, and (2)
Haataja teaches laminating a formed mat of a furnish to an article
including uncured resin? We decide these issues in the negative.
2. Has Appellant shown that the Examiner reversibly erred in
determining that Appellant’s evidence of unexpected results is not
probative of non-obviousness because it fails to compare the a
laminated product formed by the claimed method with the closest
prior art (i.e., Kajander ‘339)? We decide this issue in the negative.

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PRINCIPLES OF LAW
A reference that teaches away cannot serve to create a prima facie
case of obviousness. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). A
reference may be said to teach away “when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.” Id. “The degree of teaching away will of
course depend on the particular facts; in general, a reference will teach away
if it suggests that the line of development flowing from the reference's
disclosure is unlikely to be productive of the result sought by the applicant.”
Id.
Evidence of unexpected results must be compared to the closest prior
art. In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979).

FACTUAL FINDINGS (FF)
1. The Examiner finds that Kajander ‘339 teaches forming a laminate
product using a non-woven fabric mat impregnated with “B” stage
resin that is adhered to an oriented strand board (OSB) (Ans. 3).
2. The Examiner finds that Haataja teaches that it is known in the art
of laminating a mat or mats formed of furnish comprising wood
particles and binder to an article including uncured resin that the
binder and resin are cured in a single heating step when the mat is
laminated with the article (Ans. 4). The Examiner finds that
Haataja’s disclosure to heat the binder-coated pieces of wood and
the loosely felted mat of binder coated wood flakes in a single
molding step to shape and cure the material teaches curing the
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binder in both an article and the felted mat (i.e., furnish)
simultaneously (Ans. 7).
3. The Examiner concludes that it would have been obvious to cure
the binder of Kajander ‘339’s oriented strand board as modified
with Sean during the step of curing the “B” stage resin as taught by
Haataja such that only one heating step is required to form the
laminate product (Ans. 4).
4. Haataja states:
Wood flake molding, also referred to as wood
strand molding, is a technique for molding three-
dimensionally configured objects out of binder
coated wood flakes . . . . This technology is not be
confused with oriented strand board technology . .
. . wherein binder coated flakes or strands of wood
are pressed into planar objects. In wood flake or
wood strand molding, the flakes are molded into
three-dimensional, i.e., non-planar, configurations.
(¶ [0004]).
5. The Examiner finds Haataja’s teaching in FF 4 to merely indicate
that wood strand molding is closely related to oriented strand board
molding differing only in the shape of the end-product (Ans. 6).
The Examiner finds that Haataja’s disclosure to simultaneously
bond a binder-coated article and the binder of the particle binder
mixture in a single step is equally applicable to oriented strand
board applications and Haataja does not discourage using such a
technique in methods of making oriented strand boards (Ans. 6).
6. The Examiner finds:
Appellant has shown no expected [sic unexpected]
results for co-curing the binder of the non-woven
mat and mat formed from the furnish as compared
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to curing the binder of the mat formed of the
furnish followed by curing the binder of the non-
woven mat.
(Ans. 8).
In other words, the Examiner finds that Appellant has not
compared a laminate made by the claimed method with the closest
prior art (i.e., Kajander ‘339).

ANALYSIS
Appellant argues that Haataja teaches away from Kajander ‘339’s
oriented strand board molding because Haataja discloses that wood strand
molding, Haataja’s invention, is not to be confused with oriented strand
board molding (App. Br. 6-7). Appellant also contends that Haataja fails to
teach laminating a mat formed of furnish comprising wood particles and
binder to an article including uncured resin (App. Br. 7). Appellant contends
that Haataja fails to disclose curing the binder of the furnish and the resin of
the nonwoven in a single heating step when the mat is laminated with the
article, or to provide evidence of curing the binder of the furnish at the same
time as the resin (App. Br. 7). Appellant contends that the Examiner has
engaged in impermissible hindsight (App. Br. 7).
Contrary to Appellant’s teaching away argument, we agree with the
Examiner that Haataja’s disclosure that the invention is directed to three
dimensional wood strand molding and not planar oriented strand board
molding merely demonstrates that wood strand molding is very similar to
oriented strand board molding, hence Haataja’s need to emphasize the
difference. Like the Examiner (FF 5), we do not understand Haataja’s
disclosure to discourage one of ordinary skill in the art from using the
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general techniques disclosed to make oriented strand board. Gurley, 27 F.3d
at 553. Instead, Haataja’s disclosure merely indicates that the particular
invention is used with three-dimensional wood strand molding. We do not
find that Haataja teaches away from the proposed combination with
Kajander ‘339 and Sean.
The Examiner makes explicit factual findings regarding the
disclosures of Haataja and why those disclosures teach laminating a mat of a
furnish (i.e., binder and wood particle) to an article including uncured resin
(Ans. 4 and 7). Specifically, the Examiner finds that Haataja teaches that the
molding process includes forming mats of binder and loosely coated wood
flakes over binder-coated strips of wood that form implants 8 and 9 (Ans. 7).
The mats of binder and wood flakes and the binder-coated implants are then
compressed and heated to mold and cure the mold contents (Ans. 7). The
Examiner further finds that Haataja teaches that when the binder is cured on
the stacks of veneer strips that form implants 8 and 9 a strengthening
laminate is formed (Ans. 7). In other words, the Examiner finds that
Haataja’s process teaches that the binder-coated strips that make-up the
implants and the binder mixed with the wood flakes are simultaneously
cured to form the molded end product.
However, Appellant does not specifically contest these findings or
argue why these findings are erroneous. Instead, Appellant merely
paraphrases the portion of Haataja cited by the Examiner and conclusorily
states that Haataja fails to teach the argued feature. Because Appellant has
not shown reversible error in the Examiner’s well-stated findings, we agree
with the Examiner that Haataja teaches laminating a mat formed of furnish
comprising wood particles and binder to an article including uncured resin
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(i.e., curing the binder of the furnish at the same time as the resin of an
insert) as claimed.
We are unpersuaded by Appellant’s hindsight argument because it is
premised on Haataja’s failure to teach curing the furnish binder at the same
time as an insert article binder is cured, which is incorrect. Rather, we
agree with the Examiner that Haataja teaches the disputed feature, such that
the teachings of the references were used in making the combination, not
impermissible hindsight.
Therefore, we do not find Appellant’s arguments establish that the
Examiner reversibly erred in the findings regarding Haataja. Accordingly,
we determine that the Examiner has established a prima facie case that the
combined teachings of Kajander ‘339, Haataja and Sean would have
rendered obvious the claimed invention. Appellant attempts to rebut the
Examiner’s prima facie case by alleging unexpected results (App. Br. 8).
We now consider Appellant’s evidence.
Appellant argues that the Specification at page 4, line 14 to page 5,
line 5 and the data in the figures demonstrates unexpected results (App. Br.
8). However, as correctly noted by the Examiner, Appellant’s evidence fails
to compare a sample made by the claimed method to a sample made by the
closest prior art (i.e., Kajander ‘339). The Specification includes a
comparison to a control embodiment, which is disclosed as being an oriented
strand board “with no nonwoven mat facing” (Spec. 10). However,
Kajander ‘339’s oriented strand board has a non-woven material adhered to
the binder and wood particle material comprising the oriented strand board.
Because Appellant has not compared a laminate made by the claimed
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method with a laminate made by the closest prior art (i.e., Kajander ‘339),
we do not find Appellant’s evidence probative of non-obviousness.
Therefore, we determine that the evidence of record weighs most in
favor of a conclusion that the claimed invention would have been obvious.
For the above reasons, we affirm the Examiner’s § 103 rejection of claims 1-
6 and 8-16 over Kajander ‘339 in view of Sean and Haataja.
With regard to the rejection of claim 7, Appellant advances no
additional arguments and instead relies on those made regarding claim 1.
Because we find those arguments unpersuasive, we affirm the Examiner’s §
103 rejection of claim 7 over Kajander ‘339 in view of Sean, Haataja, and
Kajander ‘586.

DECISION
The Examiner’s decision is affirmed.

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

kmm

JOHNS MANVILLE
Legal Department
10100 West Ute Avenue
Littleton, CO 80127