Ex Parte Karam et al

Patent Trial and Appeal Board

Jan 31, 2018

12579885 (P.T.A.B. Jan. 31, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/579,885 10/15/2009 Fouad Torkum Karam 6674-0063-1 9234
50811 7590
0""Shea Getz P.C.
10 Waterside Drive, Suite 205
Farmington, CT 06032
EXAMINER
POLLEY, CHRISTOPHER M
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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):
uspto @ osheagetz. com
shenry @ osheagetz. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FOUAD TORKUM KARAM and SYLVIE GAUTHIER
Appeal 2017-003606
Application 12/579,885
Technology Center 1700
Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
MONTE T. SQUIRE, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter “Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner’s decision to reject claims 1, 4, and 5.2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellants identify the real party in interest as “Panolam Industries
International, Inc.” (Appeal Brief filed September 6, 2016, hereinafter
“Appeal Br.,” 2).
2 Appeal Br. 4—9; Non-Final Office Action entered April 4, 2016, hereinafter
“Non-Final Act.,” 2—7; Examiner’s Answer entered November 3, 2016,
hereinafter “Ans.,” 2—5.
Appeal 2017-003606
Application 12/579,885
I. BACKGROUND
This is a second appeal in this application. In the first appeal (Appeal
2012- 005935), the Patent Trial and Appeal Board reversed the Examiner’s
rejections under 35 U.S.C. §§ 102(b) and 103(a) of claims 1—6, which
differed in scope from the current claims on appeal, over various prior art
references no longer applied in the current appeal. See Ex parte Karam,
https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2012005935-09-05-
2013- 1. Following continued examination, this second appeal ensued.
The subject matter on appeal relates to decorative laminates for use in
various applications such as kitchen and bath cabinetry, furniture, store
fixtures, and other building products (Specification filed October 15, 2009,
hereinafter “Spec.,” 1—2). Figure 1 is illustrative of the Appellants’
claimed subject matter and is reproduced as follows:
FIG. 1
Figure 1 above depicts a decorative laminated structure 10 including, inter
alia, a first decorative layer 20 including one or more decorative sheets 22, a
first barrier layer 26, a fiber-reinforced core layer 30, a second barrier layer
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Application 12/579,885
26’, and a second decorative layer 20’ including one or more decorative
sheets 22 {id. Tflf 16—17).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief (Appeal Br. 10), with key limitations emphasized, as follows:
1. A fiber-reinforced decorative laminated panel,
comprising:
a first decorative layer impregnated, at least partially, with
a thermosetting resin;
a core layer that includes at least one non-cellulosic, fiber-
reinforced sheet, which fiber-reinforced sheet is at least partially
impregnated with a thermosetting resin, and wherein the at least
one fiber-reinforced sheet is selected from one of a woven glass
fiber sheet, a non-woven glass fiber sheet, and a chopped glass
fiber sheet, and wherein the at least one fiber-reinforced sheet
has a texture; and
a first barrier layer disposed between, and contiguous
with, the first decorative layer and the core layer, which first
barrier layer includes one or more sheets of Kraft paper at least
partially impregnated with a resin, and wherein the first barrier
layer is configured to prevent the texture of the fiber-reinforced
sheet from telegraphing through the first decorative layer in the
fiber-reinforced laminate',
a second decorative layer impregnated, at least partially,
with a thermosetting resin; and
a second barrier layer disposed between, and contiguous
with, the second decorative layer and the core layer, which
second barrier layer includes one or more sheets of Kraft paper
at least partially impregnated with a resin, and wherein the
second barrier layer is configured to prevent the texture of the
fiber-reinforced sheet from telegraphing through the second
decorative layer in the fiber-reinforced laminate.
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Application 12/579,885
II. REJECTION ON APPEAL
On appeal, the Examiner maintains a rejection under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Kim et al.3 (hereinafter “Kim”) in view
of Hashimoto et al.4 (hereinafter “Hashimoto”) (Ans. 2-4; Non-Final Act. 2—
7).
III. DISCUSSION
The Appellants argue claims 1, 4, and 5 together, focusing only on
claim 1 (Appeal Br. 4—8). Therefore, we confine our discussion to claim 1,
which we select as representative pursuant to 37 C.F.R. § 41.37(c)(l)(iv).
As provided by this rule, claims 4 and 5 stand or fall with claim 1.
The Examiner finds that Kim describes a fire resistant composite
panel including every limitation recited in claim 1, except for the specified
“second decorative layer” and “second barrier layer” (Non-Final Act. 3).
The Examiner finds further that Hashimoto teaches a flame-retardant
decorative laminate including a decorative layer, a core layer, a reinforcing
layer, a second core layer, and a second decorative layer {id. at 3 4). The
Examiner finds that Hashimoto does not teach Kraft paper {id. at 4). The
Examiner concludes, however, that a person of ordinary skill in the art
would have combined the prior art references in the manner claimed by the
Appellants {id. at 4—5).
3 WO 02/053373 Al, published July 11, 2002. The Examiner cites to the
corresponding published United States application, US 2003/0124397 Al,
published July 3, 2003. The Appellants do not object to the Examiner’s
reliance on the corresponding US document (Appeal Br. 4). Therefore, we
also cite to the US document.
4 US 6,333,280 Bl, issued December 25, 2001.
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Application 12/579,885
The Appellants’ principal arguments are that: (1) “[t]he rejection does
not address what [Kim’s] rear layer 31 corresponds to within the currently
claimed laminate”; (2) Kim does not teach a second decorative layer and a
second barrier layer; (3) Kim’s barrier layer does not include one or more
sheets of Kraft paper; and (4) Kim does not teach that the barrier layers
prevent the textures of the core layer’s fiber-reinforced sheet from
telegraphing through the decorative layers (Appeal Br. 5—6). According to
the Appellants, Kim actually teaches away from the specified barrier layers
because Kim discloses that the substrate layer (corresponding to the
Appellants’ barrier layer) may be a woven or non woven fabric of inorganic
fiber (id. at 6). The Appellants further argue that Hashimoto does not teach
any significance in placing the “reinforcing layer” (corresponding to the
Appellants’ core layer) between “core layer” sheets (corresponding to the
Appellants’ barrier layers), and, instead, teaches that both the “reinforcing
layer” and the “core layer” sheets comprise the same or similar materials (id.
at 7). Finally, the Appellants dispute the Examiner’s finding that both Kim
and Hashimoto are directed to flame retardant laminates comprising core
layers, reinforcing layers, and decorative layers, arguing that “fire-resistant”
and “flame retardant” refer to different characteristics (id. ).
The Appellants’ arguments fail to identify any reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Kim’s Figure 6 is reproduced as follows:
Appeal 2017-003606
Application 12/579,885
Kim’s Figure 6 above depicts a fire-resistant decorative composite panel
comprising a decoration layer 21, 1 to 5 substrate layers 12, 1 to 12
reinforcing layers 13, and a rear layer 31 (Kim, 142). As the Examiner
finds (Non-Final Act. 3), Kim teaches that substrate layer 12 can be made
from the same materials recited for the Appellants’ specified barrier layers—
i.e., “Kraft paper at least partially impregnated with a resin” (Kim, || 66—67,
117—133 (Examples 2—3)). Thus, Kim’s decorative composite panel differs
from the Appellants’ claimed decorative laminate only in that another
substrate layer 12 (corresponding to the Appellants’ barrier layer) and
another decorative layer 21 are not included on the other side of the panel.
Hashimoto’s Figure 3 is reproduced as follows:
2 SHEET MATERIAL FOR DECORATIVE LAYER
5 SHEET MATERIAL FOR CORE LAYER
6 SHEET MATERIAL FOR REINFORCING LAYER
5 SHEET MATERIAL FOR CORE LAYER
3 SHEET MATERIAL FOR DECORATIVE LAYER
7 NONFLAMMABLE DECORATIVE SHEET
Hashimoto’s Figure 3 above shows a flame-retardant or nonflammable
decorative sheet in the form of a laminate including sheet materials 2, 3 as
decorative layers and sheet materials 5 as core layers disposed on either side
of a sheet material 6 as a reinforcing material (Hashimoto, col. 1,11. 29—63;
col. 5,11. 20—22; col. 6,1. 60-col. 7,1. 23 (Example 3)).
Based on the collective teachings found in Kim and Hashimoto, we
discern no reversible error in the Examiner’s obviousness conclusion. Given
that laminates with decorative surfaces on both sides were known, as
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Application 12/579,885
evidenced by Hashimoto, we conclude that a person of ordinary skill in the
art would have been prompted to duplicate at least the decorative layer and
the substrate layer as shown in Kim on the other side of rear layer 31 in
mirror-image form to produce a laminate with decorative surfaces on both
surfaces, as shown in Hashimoto. See M.P.E.P. § 2144.04 (Rev. 7, Nov.
2015), which was cited by the Examiner (Non-Final Act. 5). The fact that
Hashimoto discloses a flame-retardant or nonflammable decorative laminate,
rather than a fire-resistant decorative laminate as in Kim, is inapposite as
obviousness must be evaluated based on “what the combined teachings of
the references would have suggested to those of ordinary skill in the art.” In
re Keller, 642 F.2d 413, 425 (CCPA 1981/ See also KSR Inti Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”).
We find no persuasive merit in the Appellants’ argument that the
rejection fails to indicate “what [Kim’s] rear layer 31 corresponds to within
the currently claimed laminate” (Appeal Br. 5). As the Examiner explains
(Ans. 2—3), claim 1 recites the transitional term “comprising” and, therefore,
does not exclude Kim’s rear layer 31. See In re Baxter, 656 F.2d 679, 686
(CCPA 1981) (“As long as one of the monomers in the reaction is
propylene, any other monomer may be present, because the term ‘comprises’
permits the inclusion of other steps, elements, or materials.”).
The Appellants’ argument (Appeal Br. 6) that Kim does not
disclose—or teaches away from—a barrier layer with Kraft paper is equally
unpersuasive. Kim explicitly teaches an embodiment in which the substrate
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layer (corresponding to the Appellants’ barrier layer) is based on Kraft paper
impregnated with a resin (Kim, || 66—67, 133 (Example 3)). The fact that
Kim teaches alternative embodiments in which Kraft paper is not used does
not negate Kim’s explicit teaching regarding resin-impregnated Kraft paper
as a substrate layer. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(“[M]ere disclosure of alternative designs does not teach away.”).
Fastly, we find no reason to overturn the Examiner’s rejection based
on the “telegraphing” limitations (“wherein the first barrier layer is
configured to prevent the texture of the fiber-reinforced sheet from
telegraphing through the first decorative layer in the fiber-reinforced
laminate”). Common sense dictates that a person of ordinary skill in the art
would have configured Kim’s layers including substrate layer 12
(corresponding to the Appellants’ barrier layer) such that the decoration
layer 21 would not be destroyed. PerfectWeb Techs., Inc. v. InfoUSA, Inc.,
587 F.3d 1324, 1329 (Fed. Cir. 2009) (an analysis of obviousness “may
include recourse to logic, judgment, and common sense available to the
person of ordinary skill that do not necessarily require explication in any
reference or expert opinion”); In re Sovish, 769 F.2d 738, 743 (Fed. Cir.
1985) (“[Appellants] are assuming that one of ordinary skill would not
appreciate that Esher’s hollow member 14 could be removed if it is not
wanted . . . This argument presumes stupidity rather than skill.”).
For these reasons, we sustain the rejection.
IV. SUMMARY
The Examiner’s decision to reject claims 1, 4 and 5 is affirmed.
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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
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