12579885 (P.T.A.B. Sep. 5, 2013)

Ex Parte Karam et al

Patent Trial and Appeal BoardSep 5, 2013

12579885 (P.T.A.B. Sep. 5, 2013)

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 09/06/2013 O''Shea Getz P.C. 1500 MAIN ST. SUITE 912 SPRINGFIELD, MA 01115 EXAMINER POLLEY, CHRISTOPHER M ART UNIT PAPER NUMBER 1785 MAIL DATE DELIVERY MODE 09/06/2013 PAPER 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. 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 2012-005935 Application 12/579,885 Technology Center 1700 _______________ Before CHARLES F. WARREN, ROMULO H. DELMENDO and BEVERLY A. FRANKLIN, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Applicants appeal to the Board from the decision of the Primary Examiner finally rejecting claims 1-6: under 35 U.S.C. § 102(b), claims 1, 2 and 4 over Laurence (US 2002/0160680 A1); and under 35 U.S.C. § 103(a), claim 3 over Laurence and Prawdzik (US 4,689,102), claim 5 over Laurence and Afiouni (US 6,566,424 B2), and claim 6 over Laurence, Afiouni and Prawdizik. App. Br. 3; Ans. 5, 7, 8. We have jurisdiction. 35 U.S.C. §§ 6 and 134(a) (2002). We reverse the decision of the Primary Examiner. OPINION We agree with Appellants that the Examiner erred in finding that Laurence in paragraphs 0042 to 0049 would have in fact described to one skilled in the art an embodiment of a fiber-reinforced decorative laminated Appeal 2012-005935 Application 12/579,885 2 panel that contains all claim elements, including “a core layer that includes at least one . . . fiber-reinforced sheet . . . at least partially impregnated with a thermosetting resin,” arranged as specified in representative claim 1, either expressly or inherently, in a manner enabling one skilled in the art to practice the embodiment without undue experimentation. App. Br. 7 (Claims App’x). Ans. 5-6, 9-11; App. Br.3-5. See, e.g., ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012); Therasence, Inc. v. Becton, Dickinson and Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Sanofi-Synthelabo v. Apotex Inc., 550 F.3d 1075, 1083 (Fed, Cir. 2008); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990). We find Laurence describes the embodiment depicted in Figure 2 which is a decorative laminate portion 20 that includes core layer 26 comprising at least one sheet of polyethylene terephthalate glycol (PETG), which is a thermoplastic polymer, wherein the PETG sheet can be in other forms, such as “in a fibrous form.” Laurence ¶¶ 0042, 0043. Laurence further describes the embodiment depicted in Figure 2A in which core layer 26 can further comprise layer 27 of, among other things, woven or non- woven glass fiber cloth or mat, that is sandwiched between two or more sheets 26 of PETG, wherein the glass fiber cloth or mat would be sealed by the PETG layers making the core moisture resistant. Laurence ¶ 0048. We find Laurence would have disclosed that “other polymeric materials, particularly polymeric films . . . might be used for core layer 26 to thermally fuse and bond the melamine resin impregnated surface components [22, 24] to the substrate,” and that while “PETG is the preferred core [26] material, Appeal 2012-005935 Application 12/579,885 3 . . . other thermoplastic and thermosetting polymers can be employed within the scope of the present invention.” Laurence ¶ 0049; see also ¶¶ 0042, 0048, Figs. 2, 2A. We agree with Appellants that Laurence’s described embodiment in Figure 2A, which includes the layer 26 thermoplastic polymer PETG sheets, does not describe the element “a core layer that includes at least one . . . fiber-reinforced sheet . . . at least partially impregnated with a thermosetting resin” specified in claim 1. App. Br. 4-5. Indeed, the Examiner’s arguments that Laurence would have disclosed that the core layer 26 can be either thermoplastic or thermosetting polymers is more akin to a determination of obviousness under § 103(a) than a finding of anticipation under § 102(b). See, e.g., Titanium Metals Corp. of America. v. Banner, 778 F.2d 775, 780, (Fed. Cir. 1985) (“[A]nticipation under § 102 can be found only when the reference discloses exactly what is claimed and that where there are differences between the reference disclosure and the claim, the rejection must be based on § 103 which takes differences into account. D. Chisum, Patents § 3.02.”). Accordingly, in the absence of a prima facie case of anticipation, we reverse the ground of rejection under 35 U.S.C. § 102(b). We also reverse the grounds of rejection of claims 3, 5 and 6 under 35 U.S.C. § 103(a) because the Examiner has erred in relying on the finding that Laurence anticipates claim 1 on which these claims depend. Ans. 7, 8. The Primary Examiner’s decision is reversed. REVERSED tc