Ex Parte Krebs et al

Board of Patent Appeals and Interferences

May 26, 2011

10845068 (B.P.A.I. May. 26, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/845,068 05/14/2004 Robert R. Krebs WIL-41133 9658
25312 7590 05/27/2011
WILSONART INTERNATIONAL, INC.
C/O WELSH & FLAXMAN, LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
SAMPLE, DAVID R
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
05/27/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT R. KREBS, MICHAEL E. INGRIM,
VIRGIL B. CANADY, FINIAN HOELSCHER, and
BILLY JOE BILLECK JR.
____________

Appeal 2010-001180
Application 10/845,0681
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s non-final rejection2 claims 1 through 17 and 25 through 41.

1 The subject matter in this appeal appears to be related to the subject matter
in Appeal No. 2009-003547 (U.S. Patent Application No. 09/683,735),
which was decided June 30, 2009.
Appeal 2010-001180
Application 10/845,068

2
Claims 18 through 24, the other claims pending in this application, stand
withdrawn from consideration by the Examiner. We have jurisdiction
pursuant to 35 U.S.C. § 6.
We REVERSE.

STATEMENT OF THE CASE
The subject matter on appeal is directed to, inter alia, a compound
formable decorative laminate. Claims 1 and 39 are illustrative:
1. A compound formable decorative laminate,
comprising:
a decorative layer composed of a bilaterally stretchable
decorative sheet composed of a polyolefin film; and
a resin impregnated core layer composed of a bilaterally
stretchable paper.
39. A compound formable decorative laminate,
comprising:
a decorative layer composed of a polyolefin film; and
a resin impregnated core layer.

The Examiner maintains the following rejections:

2 We note that Appellants properly appeal from the Examiner’s Non-Final
Office Action mailed on January 27, 2009, since the claims on appeal have
been twice rejected. See 35 U.S.C. § 134(a)(“[a]n applicant for a patent, any
of whose claims has been twice rejected, may appeal from the decision of
the primary examiner to the Board of Patent Appeals and Interferences.”).

Appeal 2010-001180
Application 10/845,068

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1) Claims 1-6, 10-16, 25, 30, 32-37, and 39-41 under 35 U.S.C.
§ 103(a) as unpatentable over Jaisle (US 3,860,470, issued Jan. 14, 1975)
and Müller (US 6,972,153 B2, issued Dec. 6, 2005);
2) Claims 7-9, 17, 31, and 38 under 35 U.S.C. § 103(a) as
unpatentable over Jaisle and Müller, and further in view of Hinishi (US
4,971,854, issued Nov. 20, 1990) and Taylor (US 3,108,030, issued Oct. 22,
1963); and
3) Claims 26-29 under 35 U.S.C. § 103(a) as unpatentable over Jaisle
and Müller, and further in view of Nelson (US 5,989,668, issued Nov. 23,
1999).

Rejection (1)

ISSUE
Did the Examiner reversibly err in determining that Jaisle and Müller
would have suggested a compound formable decorative laminate, a laminate
panel, or a laminate lay-up comprising a decorative layer or sheet composed
of a polyolefin film as required by claims 1, 10, 25, 32, and 39 within the
meaning of § 103? We decide this issue in the affirmative.

FINDINGS OF FACT
1. Jaisle teaches that its textured decorative laminate may comprise,
from top to bottom, one thermosetting melamine resin impregnated
overlay sheet, one thermosetting melamine resin impregnated print
sheet, and eight thermosetting phenolic resin impregnated kraft paper
core sheets. (Jaisle, col. 5, l. 25 to col. 6, l. 5).
Appeal 2010-001180
Application 10/845,068

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2. Müller teaches forming a laminate composite that may comprise, from
top to bottom, a heat-cured layer, a resin layer (c), a decorative layer,
a resin layer (b), an intermediate layer, a resin layer (a), and a support.
(Müller, col. 6, ll. 39 to col. 7, l. 54). Müller teaches that its
decorative layer may be coated and/or impregnated with melamine
resins. (Müller, col. 7, ll.32-33). Müller teaches that the support may
be composed of polyolefins such as polyethylene or polypropylene.
(Müller, col. 3, ll. 45-47).

PRINCIPLE OF LAW
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

ANALYSIS AND CONCLUSION
With respect to claims 1, 10, 25, 32, and 39, Appellants argue that the
Examiner provides no reason or explanation as to why and how one of
ordinary skill in the art would have applied Müller’s polyolefin support
material to Jaisle’s decorative laminate. (App. Br. 17). We agree.
The Examiner states (Ans. 4 and 5) that “[i]t would have been obvious
to one of ordinary skill in the art at the time of the invention to add a
polyolefin support sheet to the laminate of Jaisle in order to prevent
unfavorable swelling behavior.” Though the Examiner explains on page 4
of the Answer that Müller discloses a support sheet applied to a melamine or
phenolic impregnated decorative layer, the Examiner has not provided a
Appeal 2010-001180
Application 10/845,068

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reasonably specific explanation as to why and how one of ordinary skill
would have modified Jaisle’s decorative laminate in view of Müller’s
teachings to arrive at the claimed invention. For example, the Examiner has
not explained why and how only Müller’s polyolefin support (corresponding
to the claimed polyolefin film feature as alleged by the Examiner) would
have been implemented on Jaisle’s thermosetting melamine resin
impregnating print sheet (corresponding to the claimed decorative layer or
sheet feature as alleged by the Examiner) to arrive at the claimed inventions.
This explanation is necessary because Müller teaches several layers (i.e., a
resin layer (b), an intermediate layer, and a resin layer (a)) between its
decorative layer and polyolefin support. (See FF 1 and 2).
In addition, with respect to claims 1, 10, 25, and 32, we note that each
of these claims requires that the decorative sheet be bilaterally stretchable.
Turning our attention to the Examiner’s rejection, even if one of ordinary
skill combined Müller and Jaisle to arrive at a decorative sheet composed of
a polyolefin film as required by claims 1, 10, 25, and 32, the Examiner has
failed to explain why any of Müller’s layers (e.g., Müller’s polyolefin
support) would have had this bilaterally stretchable property. Nor has the
Examiner persuasively explained, absent hindsight, why it would have been
obvious to modify any of Müller’s layers (e.g., Müller’s polyolefin support)
to have this bilaterally stretchable property.
Accordingly, we reverse the Examiner’s rejection (1).

Rejections (2) and (3)
The Examiner relies on the same factual findings and determinations
discussed above and does not provide any additional findings or
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determinations as to how any of the other applied prior art references would
have satisfied these disputed claim features. Therefore, for the reasons
stated above, we reverse the Examiner’s rejections (2) and (3).

ORDER
In summary, rejections (1) through (3) are reversed.
Accordingly, the Examiner’s decision is reversed.

REVERSED

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