Ex Parte Kalwa

Patent Trial and Appeal Board

Oct 25, 2016

12037367 (P.T.A.B. Oct. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/037,367 02/26/2008
25570 7590 10/27/2016
Roberts Mlotkowski Safran Cole & Calderon, P,C,
7918 Jones Branch Drive
Suite 500
McLean, VA 22102
Norbert Kalwa
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3910-34011 3719
EXAMINER
SCHIFFMAN, BENJAMIN A
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
10/27/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
lgallaugher@rmsc2.com
docketing@rmsc2.com
dbeltran@rmsc2.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ExparteNORBERT KALWA
Appeal2014-009515
Application 12/037,367
Technology Center 1700
Before CHUNG K. PAK, N. WHITNEY WILSON, and
JEFFREY R. SNAY, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
November 1, 2013 decision finally rejecting claims 1-12, and 16 ("Final
Act"). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral
hearing was held on October 6, 2016.
We affirm.
1 Appellants identify the Real Party in Interest as Flooring Technologies Ltd.
(Appeal Br. 2).
Appeal2014-009515
Application 12/037,367
CLAIMED SUBJECT MATTER
Appellant's invention is directed to a method for finishing a wood
material board. Details of the claimed invention are set forth in
representative claim 1, which is reproduced below from the Claims
Appendix of the Appeal Brief:
1. A method for finishing a wood material board comprising:
applying a decorative layer to a top side,
applying a sealing varnish layer onto the decorative layer,
completely curing of the varnish layer by use of electron beams,
and
embossing a structure into the varnish layer,
wherein a gloss degree of the top side before the
embossing is 88 points ( 60°) and the embossing in the varnish is
to a depth of 100 to 200 µm,
wherein the embossing the structure is into the completely
cured varnish layer.
REJECTIONS
I. Claims 1-9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Braun2 in view of Hardy3 and Mirous. 4
II. Claims 10-12 and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Braun in view of Hardy and Mirous, and further in
view of Matzke5 and Garcia. 6
DISCUSSION
2 Braun et al., WO 2005/116361 Al, published December 8, 2005.
3 Hardy et al., U.S. Patent No. 4,285,846, issued August 25, 1981.
4 Mirous et al., U.S. Patent No. 5,719,239, issued February 17, 1998.
5 Matzke, U.S. Patent No. 3,869,326, March 4, 1975.
6 Garcia, U.S. Patent Pub. 2003/0205013 Al, published November 6, 2003.
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Appeal2014-009515
Application 12/037,367
Appellant's principal arguments are directed to the rejection of claim
1 over Braun in view of Hardy and Mirous (see, generally, Appeal Br. 3-
18). Appellant makes separate argument in support of claims 10-12 and 16.
These claims will be addressed separately.
After reviewing the arguments and evidence set forth in the Appeal
Brief and the Reply Brief and elucidated during the oral hearing, we
determine that Appellant has not shown reversible error in the Examiner's
findings and determination of unpatentability, essentially for the reasons set
forth in the Final Action and the Answer. We add the following for
emphasis.
Appellant admits that Braun teaches the use of a varnish, but argue
that Braun's varnish layer is thinner (less than 120 µm) than that recited in
the claims (100-200 µm) (Appeal Br. 4-6). However, as explained by the
Examiner (Ans. 2-3), the thickness of Braun's varnish layer overlaps with
the claimed varnish thickness. A prima facie case of obviousness exists in
situations where, as in this instance, the claimed ranges overlap the ranges
disclosed by the prior art. See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir.
1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). As noted by
the Examiner (Ans. 3), Appellant has not shown the criticality of the claimed
range. Woodruff, 919 F.2d at 1578 ("The law is replete with cases in which
the difference between the claimed invention and the prior art is some range
or other variable within the claims. These cases have consistently held that
in such a situation, the applicant must show that the particular range is
critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range.")
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Application 12/037,367
Because of the overlapping ranges for the thicknesses of the varnish
layer, Appellant's arguments which are summarized on pages 9-10 of the
Appeal Brief are not persuasive of reversible error.
Appellant also argues that the Examiner has not adequately
established a reason why a person of skill in the art would have modified
Braun's varnish layer so that it has a gloss degree of 88 points at 60°.
However, the Examiner finds that Braun discloses that gloss may be
adjusted with functional additives (Final Act. 4 (citing Braun 5: 10-22, 10: 1-
4) ), and that Hardy teaches a known method of optimizing (controlling)
gloss levels (id.). Appellant contends that Hardy is actually directed to
reducing gloss (Appeal Br. 11-12), not optimizing gloss. However, the
Examiner finds that Braun discloses that gloss may be adjusted with
functional additives, and Hardy discloses that (and how) it may be adjusted
to the claimed value. See also In re Boesch, 617 F.2d 272, 276 (CCPA
1980) ("[D]iscovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art.") Appellant does not
persuasively dispute these findings.
Finally, Appellant disputes the Examiner's finding that Mirous
discloses completing curing a varnish layer prior to an embossing step
(Appeal Br. 13-18). However, as found by the Examiner, Mirous discloses
an embossed varnish coating of a cellulosic panel wherein the coating is
cured prior to being embossed (Final Act. 4). In particular, the Examiner
finds that Mirous states that its coating is hardened prior to being softened
by heating for embossment purposes (id., citing Mirous 3: 17-23, 3 :55-65).
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Appeal2014-009515
Application 12/037,367
In response, Appellant alleges that "[a] softened top coat ... is not
fully cured" because "it is not possible to soften a plastic material (varnish)
by heating after such material is fully cured" and, therefore, Mirous cannot
disclose a fully cured varnish layer which is then embossed (Appeal Br. 14).
However, Appellant does not offer any evidence or reasoning as to why the
claim term "completely cured" should be construed in the manner set forth
in the Appeal Brief and quoted above. Indeed, at the oral hearing, counsel
for Appellant took the position that "completely cured" meant that the layer
was ready for use in its intended application. In this regard, Mirous
explicitly states that its panels can be completely formed (i.e., the varnish
layer is completely cured) prior to the embossing step (Mirous 10: 14-20). It
is apparent that the boards of Mirous can be used without an embossing step,
and thus meet the definition of completely cured proffered by Appellant's
counsel at the oral hearing (though this definition was not specifically
offered in the briefs). Thus, we determine that, based on the evidence of the
appeal record, Appellant has not demonstrated reversible error in the
Examiner's finding that Mirous discloses completely curing a layer prior to
embossing it, as set forth in claim 1.
With respect to dependent claims 10-12 and 16, Appellant does not
dispute the Examiner's reliance on the prior decision on Appeal No. 2012-
001370 (Application 12/037,367) ("the earlier Decision"), which held that
"the temperatures and pressures required to emboss Braun's varnish layer to
a 100-119 µm depth, determined by no more than routine experimentation,
include temperatures and pressures required to emboss the Appellant's
varnish layer to that depth, such as those recited in the Appellant's claims
10-12 and 16." See the earlier Decision 4-5 and Final Act. 6 ("[A] person of
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Application 12/037,367
ordinary skill in the art would recognize that the temperature and pressure of
the embossing step would be optimized based on the desired depth taking
into account the physical properties (melting point, viscosity, et.) of the
material being embossed .... [A] s discussed in the Patent Board Decision the
combination of Braun and Hardy clearly suggest[ s] a process of embossing
as claimed ... ") Although Appellant contends that using the claimed
pressures and/or temperatures, for example, taught by Matzke and Garcia on
Braun's varnish layer would destroy that layer, Appellant does not argue or
point to any teaching or evidence, which indicates that the fully cured panel
suggested by Braun and Mirous would be susceptible to destruction under
such pressures and temperatures (Appeal Br. 19-20). Accordingly, on this
record, we also determine that Appellant does not identify reversible error in
the Examiner's§ 103(a) rejection of claims 10-12 and 16.
CONCLUSION
We AFFIRM the rejection of claims 1-9 under 35 U.S.C. § 103(a) as
being unpatentable over Braun in view of Hardy and Mirous.
We AFFIRM the rejection of claims 10-12 and 16 under 35 U.S.C. § 103(a) as
being unpatentable over Braun in view of Hardy and Mirous, and further in view of
Matzke and Garcia.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l) (iv).
AFFIRMED
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