Ex Parte Liu et al

Patent Trial and Appeal Board

Dec 21, 2016

13690152 (P.T.A.B. Dec. 21, 2016)

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.
13/690,152 11/30/2012 WEN-FENG LIU 37301-4010US 4003
133894 7590 12/23/2016
Lewis Brisbois Bisgaard & Smith, LLP
Attention;Maxwell J. Petersen
550 W. Adams Street, Suite 300
Chicago, IL 60661
EXAMINER
FERRE, ALEXANDRE F
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
12/23/2016 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):
maxwell.petersen@lewisbrisbois.com
ipdocketing @ le wisbrisbois .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte
WEN-FENG LIU, JAMES W. STONE, DONALD P. SCHAEFER, and
LUTZ H. REITZEL1
Appeal 2015-006832
Application 13/690,152
Technology Center 1700
Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and BEVERLY
A. FRANKLIN, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejections under 35 U.S.C. § 103(a) of sole independent claim 1 as
unpatentable over Brooker (US 4,543,290, issued Sep. 24, 1985) in view of
Schottenfield (US 2002/0094404 Al, published July 18, 2002), De Bastiani
(US 6,174,634 Bl, issued Jan.16, 2001), and Plug (US 2003/0129361 Al,
published July 10, 2003) and of dependent claims 2—8 and 21—28 as
1 Wilsonart LLC is identified as the real party in interest. App. Br. 1.
Appeal 2015-006832
Application 13/690,152
unpatentable over these references alone or in combination with additional
prior art. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appellants claim a high-pressure decorative laminate comprising in
adjacent sequence: a decorative laminate substrate consisting of layers of
fiber strips impregnated with a cured resin and one or more decorative paper
layers impregnated with a resin; an adhesive layer; and a release layer (claim
1).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A high pressure decorative laminate, comprising in
adjacent sequence:
a hardened high pressure decorative laminate substrate
having a homogeneously closed structure and a density not less
than about 1.35 grams per cubic centimeter, consisting of layers
of fibrous strips impregnated with a cured resin and one or
more decorative paper layers impregnated with a resin;
an adhesive layer including a physically setting, solvent-
free terpolymer of vinyl acetate-ethylene and acrylic, positioned
adjacent to the hardened high pressure decorative laminate
substrate; and
a release layer including a siliconized paper or film
positioned adjacent to the adhesive layer.
App. Br. (Claims Appendix 1).
In rejecting claim 1, the Examiner finds that Brooker discloses a resin
impregnated and coated fibrous laminate having a laminate substrate that
reads on the claim 1 substrate (Final Action 2—3).
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Appeal 2015-006832
Application 13/690,152
Appellants contest this finding by arguing Brooker’s substrate
includes a coating layer 17 of epoxy resin alone (i.e., epoxy resin without
any paper or other fibrous material) that is excluded from the claimed
substrate via the language “consisting of’ (i.e., “substrate . . . consisting of
layers of fiber strips impregnated with a cured resin and one or more
decorative paper layers impregnated with a resin” (claim 1)) (App. Br. 6).
In response, the Examiner contends that coating layer 17 is not part of
Brooker’s laminate substrate “but a separate layer entirely” (Ans. 10).
The Examiner’s contention is erroneous. As correctly explained by
Appellants, the epoxy resin of Brooker not only forms coating layer 17 but
also impregnates the fibrous layer 13 of the substrate (Reply Br. 2 (citing
Brooker Fig., col. 2,11. 54—68, col. 3,11. 14—17)). For this reason, we agree
with Appellants that “the Examiner’s position that the coating layer 17 is not
part of the disclosed decorative laminate stack-up 10 (high pressure
decorative laminate substrate) is not supported by the prior art, and is
contrary to the teaching of the prior art” (id.).
The Examiner alternatively contends that Brooker’s epoxy resin
coating layer is part of the resin-impregnated laminate structure and that
“since the present claim contains the limitation ‘impregnated by resin’, the
language of claim 1 does not exclude the resin layer present on the surface
of the paper layer in Brooker . . . because it is the direct result of the ‘resin
impregnation’ step” (Ans. 11).
The deficiency of this alternative contention is that the Examiner fails
to embellish it with any citation of Specification disclosure in support of
interpreting claim 1 as defining a laminate substrate consisting of the recited
resin-impregnated layers and further including a non-recited resin coating
layer thereon. Stated differently, the Examiner does not identity any
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Appeal 2015-006832
Application 13/690,152
Specification disclosure wherein a resin coating layer of the type taught by
Brooker “is the direct result of the ‘resin impregnation’ step” (id.) disclosed
by Appellants. Likewise, the Examiner does not identify any teaching in
Brooker that coating layer 17 is the result of a resin impregnation step by
itself. Rather, as Appellants properly observe (and the Examiner does not
argue otherwise), Brooker teaches forming the resin coating layer 17 having
a thickness of at least about one mil by manipulating parameters beyond
those required to achieve impregnation only (App. Br. 6).
The other references applied by the Examiner are not relied on for
supplying the above discussed deficiency of Brooker. Therefore, we do not
sustain the Examiner’s § 103 rejections of claims 1—8 and 21—28.
The decision of the Examiner is reversed.
REVERSED
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