Ex Parte Kalwa

Patent Trial and Appeal Board

Feb 14, 2013

12037367 (P.T.A.B. Feb. 14, 2013)

UNITED STA 1ES p A 1ENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/037,367 02/26/2008 Norbert Kalwa
25570 7590 02/19/2013
ROBERTS MLOTKOWSKI SAFRAN & COLE, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
UNITED STA TES 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
02/19/2013 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@rmsclaw.com
dbeltran@rmsclaw.com
docketing@rmsclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ExparteNORBERT KALWA
Appeal2012-001370
Application 12/037,367
Technology Center 1700
Before TERRY J. OWENS, LINDA M. GAUDETTE, and
DONNA M. PRAISS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2012-001370
Application 12/037,367
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-12, 16 and 17, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b ).
The Invention
The Appellant claims a method for finishing a wood material board.
Claim 1 is illustrative:
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.
Matzke
Anstadt
Hardy
Garcia
Braun
The References
us 3,869,326
us 4,141,944
us 4,285,846
US 2003/0205013 Al
WO 2005/116361 Al
The Rejections
Mar. 4, 1975
Feb 27, 1979
Aug. 25, 1981
Nov. 6, 2003
Dec. 8, 2005
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1-
9 and 17 over Braun in view of Anstadt and Hardy and claims 10-12 and 16
over Braun in view of Anstadt, Hardy, Matzke and Garcia.
OPINION
We affirm the rejections as to claims 1-12 and 16 and reverse the
rejection of claim 1 7. Because the affirmance is based upon reasoning
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Application 12/037,367
which differs substantially from that of the Examiner we denominate the
affirmance as involving a new ground of rejection under 37 C.F.R.
§ 41.50(b).
Claims 1-12 and 16
Braun finishes a wood material board by applying to it a varnish layer
having a thickness less than 120 µm and curing the varnish layer using an
electron beam (p. 3, 11. 5-14; p. 4, 11. 15-20). "[R]elief-like embossments
which are permanent are introduced into the partially gelled or cured surface
coating under pressure and if appropriate at elevated temperatures" (p. 12,
11. 4-7) to form "deformations of a depth suitable for the simulation of
natural materials" (p. 12, 11. 12-13).
As pointed out by the Appellant, "one of ordinary skill in the art
would recognize the embossing would be limited to the thickness of the
varnish in order to maintain the needed protection and wear resistance of the
panel" (Br. 12) and "[t]he expectations of the art, in particular Braun, would
consider a depth of embossing to less than the thickness of the varnish layer,
i.e., no more than 120 µm." Id. Thus, Braun would have led one of ordinary
skill in the art, through ordinary creativity, to emboss Braun's varnish layer
to any depth less than 120 µm, such as a depth of 100-119 µm within the
100-200 µm range required by the Appellant's claims. See KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an obviousness
determination one "can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ").
The Appellant argues that "it would not be possible to achieve, in
Braun, an embossing depth in a varnish layer of 100 to 200 µm, as the
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Application 12/037,367
varnish layer has a thickness, in total less than 120 µm" (Br. 9) and that
"providing an embossing of 100 to 200 µm in a varnish layer of no more
than 120 µm would clearly destroy the intended purpose of the varnish
layer." Id.
The Appellant's embossing depth requirement is met by embossing to
any depth within the recited range, such as a depth of 100-119 µm.
The Appellant argues that one of ordinary skill in the art would not
have embossed Braun's varnish layer using a temperature or pressure within
the ranges required by the Appellant's claims 10-12 and 16 because "such a
pressure and temperature would provide an embossing entirely through the
thin varnish layer, thereby destroying the Braun panel" (Br. 14-15).
Braun discloses that "relief-like embossments which are permanent
are introduced into the partially gelled or cured surface coating under
pressure and if appropriate at elevated temperatures" (p. 12, 11. 4-7). Under
the doctrine of claim differentiation, the requirement in the Appellant's
claim 1 's dependent claim 1 7 that "the embossing the structure is into
completely cured varnish layer" indicates that the varnish layer in claim 1
need not be completely cured, i.e., the steps need not be carried out in the
recited order. See In re Tanaka, 640 F.3d 1246, 1250 (Fed. Cir. 2011)
("Claims of narrower scope can be useful to clarify the meaning of broader,
independent claims under the doctrine of claim differentiation."). Because
Braun's partially cured varnish is the same material as the Appellant's
partially cured varnish, it appears 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
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Application 12/037,367
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.
Thus, the record indicates that the method claimed in the Appellant's
claims 1-12 and 16 would have been obvious to one of ordinary skill in the
art. Accordingly, we affirm the rejections as to those claims.
Claim 17
The Appellant's claim 1 7 requires that "the embossing the structure is
into completely cured varnish layer."
The Examiner argues that Braun discloses "embossing a structure into
the varnish layer after it has cured by and [sic] electron beam (seep. 12 11. 1-
24 and p. 411. 15-20) (see also pp. 16-20, examples 1-3)" (Ans. 4).
Those portions of Braun do not disclose embossing a completely
cured varnish layer. Braun's varnish layer is embossed when it is partially
gelled or cured (p. 12, 11. 5-6).
Hence, we reverse the rejection of claim 1 7.
DECISION/ORDER
The rejection under 35 U.S.C. § 103 of claims 1-9 and 17 over Braun
in view of Anstadt and Hardy is affirmed as to claims 1-9 and reversed as to
claim 17. The rejection under 35 U.S.C. § 103 of claims 10-12 and 16 over
Braun in view of Anstadt, Hardy, Matzke and Garcia is affirmed. Because
the affirmances are based upon reasoning which differs substantially from
that of the Examiner we denominate the affirmances as involving a new
ground of rejection under 37 C.F.R. § 41.50(b).
It is ordered that the Examiner's decision is affirmed-in-part.
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Application 12/037,367
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART, 37 C.F.R. § 41.50(b)
sld
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