Ex Parte MARBACH

Patent Trial and Appeal Board

Feb 23, 2016

12642403 (P.T.A.B. Feb. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/642,403 12/18/2009
6449 7590 02/25/2016
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
607 14th Street, N.W.
SUITE 800
WASHINGTON, DC 20005
Peter MARBACH
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2185-286 2473
EXAMINER
PLESZCZYNSKA, JOANNA
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
02/25/2016 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):
PTO-PAT-Email@rfem.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER MARBACH
Appeal2014-001291
Application 12/642,403
Technology Center 1700
Before CHUNG K. PAK, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF CASE
Appellant2 appeals the Examiner's decision to reject claims 1, 3---6,
and 8-12 under 35 U.S.C. § 103(a). The Examiner rejects claims 1 and 8-
1 In our opinion below, we refer to the Specification filed Dec. 18, 2009
(Spec.), Final Office Action filed Oct. 5, 2012 (Final), the Appeal Brief filed
May 3, 2013 (Appeal Br.), the Examiner's Answer filed Sept. 4, 2013
(Ans.), and the Reply Brief filed Nov. 4, 2013 (Reply Br.).
2 Appellant identifies the real party of interest as Karl Marbach GmbH &
Co. KG. Appeal Br. 1.
Appeal2014-001291
Application 12/642,403
12 as obvious over Pacourek3 in view of Singer4 and Snyder, 5 and claims 3-
6 over those prior art references in view of additional references. Final 2-5.
We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
We AFFIRM.
The claims are directed to carrier plate for a punching tool. The
carrier plate has a middle layer core between two external layers. The core
is made of compacted wood fibers. Each external layer comprises two plies
of wood veneer glued together crosswise. Claim 1 is illustrative:
1. A carrier plate for a punching tool having two external
layers, between which a middle layer is arranged,
wherein said middle layer is formed by a core made of
compacted wood fibers and
said external layers are formed by wood veneer, wherein
said external layers each comprise two plies made of wood
veneer which are glued together crosswise.
Claims Appendix, Appeal Br. 13 (indenting added).
OPINION
We affirm for the reasons advanced by the Examiner. We add the
following primarily for emphasis.
For the main rejection, we select claim 1 as representative as
Appellant does not argue the claims separately. The issue on appeal is: Has
Appellant identified a reversible error in the Examiner's finding of a reason
to provide the plywood panel of Pacourek with a middle layer formed by the
fiberboard of Singer and with a respective second ply added to each wood
3 Pacourek, US 3,616,128, issued Oct. 26, 1971.
4 Singer, US 2004/0202857 Al, published Oct. 14, 2004.
5 Snyder, US 6,004,648, issued Dec. 21, 1999.
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Appeal2014-001291
Application 12/642,403
veneer layer, gluing it crosswise to the original ply according to the
teachings of Snyder, to impart additional strength to the panel?
We determine that Appellant has not identified such an error.
Appellant contends that the Examiner misrepresented the teachings of
the references, failed to provide an articulated reason with a rational
underpinning to support the reason to combine the teachings of either Singer
or Snyder with those of Pacourek, that combining the teachings of Singer
with Pacourek would render Pacourek' s panel unsatisfactory for its intended
use, and the combination of the teachings of the three references is classic
impermissible hindsight. Appeal Br. 6-9. However, Appellant reads the
references too narrowly without taking into account what the references
would have collectively taught to the ordinary artisan. See In re Kotzab, 217
F.3d 1365, 1369 (Fed. Cir. 2000) ("A critical step in analyzing the
patentability of claims pursuant to section 103 (a) is casting the mind back to
the time of invention, to consider the thinking of one of ordinary skill in the
art, guided only by the prior art references and the then-accepted wisdom in
the field."); KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A
person of ordinary skill is also a person of ordinary creativity, not an
automaton."); In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) ("[T]he
test for combining references is not what the individual references
themselves suggest but rather what the combination of disclosures taken as a
whole would suggest to one of ordinary skill in the art.").
All of the references discuss wood products that can be used to form
wood veneer laminates. Pacourek, col. 1, 11. 60-67 (panel with face and
back veneer plies secured to a core of particleboard or hardboard); Singer
i-f 13 (veneer plies secured to a medium density fiber (MDF) board or
particle board core); Snyder, col. 1, 11. 5-8 (even-ply or two-ply wood
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Appeal2014-001291
Application 12/642,403
veneer laminate panels). The core provides strength and dimensional
stability while the veneer provides a decorative wood grain appearance to
products such as wood paneling (Pacourek), cabinets, architectural
woodwork, deck boards, and furniture (Singer i-f 13 and Snyder, col. 1, 11. 8-
12).
Appellant's arguments do not convince us that the Examiner
reversibly erred in finding a reason within the prior art suggesting the use of
a MDF board as suggested by Singer in a core in a veneer-covered board
such as the veneer-covered board suggested by Pacourek. Although
Pacourek only mentions particleboard or hardboard as suitable core
materials, Singer mentions medium density fiber (MDF) board as well as
particleboard as a core material for a veneer-covered board to be used as
cabinets, molding, deck boards, storage units, desks, or any other product.
Singer i-f 13. Singer supports the Examiner's finding of a reason to use MDF
board in a veneer-covered board as an alternative to particleboard. Both
particleboard and ivIDF board were known for use in veneer-covered boards.
"The combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results." KSR,
550 U.S. at 416.
Appellant's arguments, likewise, do not convince us the Examiner
reversibly erred in finding of a suggestion within Snyder to use a two-ply
veneer with crosswise grain directions in the veneer covering the core.
Pacourek and Snyder both recognize a warping problem that occurs
due to moisture content changes. Pacourek, col. 1, 11. 7-11; Snyder, col. 1,
11. 22-33. According to Pacourek, wood changes dimensions markedly
under changing moisture conditions in a direction transverse to the grain, but
has good dimensional stability parallel to the grain. Pacourek, col. 1, 11. 7-
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Appeal2014-001291
Application 12/642,403
11. In plywood panels, the relative thickness of the core and veneer plies as
well as the grain direction of the veneer plies affect the dimensional stability
of the panel upon as moisture content changes. Pacourek, col. 1, 11. 21-50.
Pacourek teaches assembling a panel so that the grain direction of the
face and back veneers are perpendicular to one another. Pacourek, col. 1, 11.
60-64. According to Pacourek, as opposed to conventional plywood, in
which the two outer plies are parallel in grain direction, the panel with outer
plieshaving perpendicular grain directions that are thinner than normal
exhibits good dimensional stability with little or no tendency to cup or bow.
Pacourek, col. 1, 11. 68-75.
In tests, Pacourek nailed panels to a wall and changed the moisture
content of various panels to simulate the change paneling undergoes when
installed under dry winter conditions and subsequently exposed to humid
summer conditions and vice versa. Pacourek, col. 2, 1. 55---col. 3, 1. 21.
Pacourek reports that plywood panels having outer veneers with grain
direction at right angles had less buckling and gapping. Pacourek, col. 3, 11.
4--21.
Snyder also discloses that it was known in the art to compensate for
the tendency to warp upon changing moisture conditions by orienting the
grain of the wood plies at right angles. Snyder, col. 1, 11. 34--46. Snyder
suggests that it was known to orient adjacent plies at right angles in a two-
ply veneer. Snyder, col. 1, 11. 59----67. Snyder further provides evidence that
it was known to bond veneer sheets to one or more substrate layers to
provide stability and strength. Snyder, col. 1, 11. 12-14.
One of the ways in which a claim's subject matter can be proved
obvious is by establishing that there existed at the time of invention a known
problem for which there was an obvious solution encompassed by the
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Appeal2014-001291
Application 12/642,403
claims. KSR, 550 U.S. at 419--20. The prior art indicates that adding plies
or substrate layers for further strength and stability was known in the art.
The prior art also provides guidance on how to orient the veneers in ways
that solve the warping problem that occurs due to changes in moisture. A
preponderance of the evidence supports the Examiner's finding of a reason
or suggestion within the prior art to provide a respective second ply to each
wood veneer layer, gluing it crosswise to the original ply, to impart
additional strength to the panel.
We sustain the rejection of claims 1 and 8-12. Appellant does not add
any further arguments directed to the further rejections of claims 3-6. We
sustain those rejections for the reasons stated above.
CONCLUSION
We sustain the Examiner's rejections.
DECISION
The Examiner's decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
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