Ex Parte Michon

Board of Patent Appeals and Interferences

Nov 20, 2009

10275680 (B.P.A.I. Nov. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SANDER GERMAIN LEON MICHON
____________________

Appeal 2009-009351
Application 10/275,680
Technology Center 3700
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Decided: November 20, 2009
____________________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR and STEVEN D. A.
MCCARTHY, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
37-47, 51 and 52. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
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The claims are directed to a process for preserving wood. Claim 37,
reproduced below, is illustrative of the claimed subject matter:
37. Process for preserving wood comprising the following
steps:
- a drying step comprising drying the wood;
- a modification step comprising subjecting the dried
wood to a temperature of 200°C - 270°C under vacuum while
applying pressure to the wood, by flowing a heating medium
through hollow heating elements positioned in between the
wood; and
- a cooling step comprising cooling the wood to a
temperature of 50°C - 120°C,
wherein the cooling step occurs through the hollow
heating elements positioned in between the wood.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kleinguenther
Sato
Guyonnet
US 4,017,980
US 5,245,154
US 5,992,043
Apr. 19, 1977
Sep. 14, 1993
Nov. 30, 1999

Claims 37-47 and 51 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Guyonnet and Sato. Ans. 3.
Claim 52 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Guyonnet, Sato and Kleinguenther. Ans. 4.

ISSUE
Appellant argues claims 37-47 and 51 as a group. App. Br. 3-7. We
select claim 37 as the representative claim, and claims 38-47 and 51 stand or
fall with claim 37. 37 C.F.R. § 41.37(c)(1)(vii). Appellant contends that the
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Examiner failed to articulate a rational basis for combining Guyonnet and
Sato. Appellant contends that Guyonnet does not recognize that a heating
structure such as Sato’s can be used with Guyonnet’s process, and there is
no indication that Sato’s heating structure could be employed to practice
Guyonnet’s process. App. Br. 3-5. Appellant also contends that Sato’s
process, being related to heating resin-impregnated wood at a much lower
temperature, is unrelated to Guyonnet’s high-temperature wood treatment
process. App. Br. 5-6. In light of these contentions we must determine
whether Appellant has established that the Examiner erred in concluding the
subject matter of claim 37 would have been obvious to one having ordinary
skill in the art.
Regarding the rejection of claim 52, Appellant contends that the
Examiner failed to articulate a rational basis for the combination of
Guyonnet and Sato with Kleinguenther. Appellant contends that one of
ordinary skill in the art would not have combined the teachings of
Kleinguenther with Guyonnet since the maximum temperature discussed in
Kleinguenther is 70-200oC –lower than that needed for Guyonnet’s process.
In light of these contentions we must determine whether Appellant has
established that the Examiner erred in concluding the subject matter of claim
52 would have been obvious to one having ordinary skill in the art.

FINDINGS OF FACT
1. Guyonnet discloses a process for heat treating wood including a drying
step A, a heat treatment step C at a temperature of about 230oC and a
cooling step D. Col. 3, ll. 9, 21-23; col. 4, l. 6; fig. 1.
2. Guyonnet also discloses using an electric oven or immersion bath to
carry out the heating process. Col. 2, ll. 59-61; col. 4, ll. 43-46.
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3. Guyonnet suggests that with the aid of an appropriate device, a
mechanical stress may be exerted on the wood to give it a desired shape.
Col. 2, ll. 27-30.
4. Guyonnet also suggests that, if desired, the treatment chamber may be
exposed to the atmosphere. Col. 2, ll. 60-61.
5. Guyonnet does not describe the specifics of the structure used to carry
out the heating process.
6. Sato teaches heating wood W in a closed container 1 with heating plates
14 having hollow heating elements 15, positioned between the wood.
Col. 7, ll. 19-21, 29-35; figs. 1, 2.
7. Sato also teaches using a vacuum pump 17 to reduce the pressure in the
closed container 1 to encourage evaporation. Sato also teaches a means
for applying pressure to the wood during heating 11 to ensure good
contact with the heating plates 14 in order to evenly heat the wood while
preventing deformation. Col. 5, ll. 5-12; col. 6, ll. 9-17; col. 7, ll. 6-9,
42-44; fig. 1.
8. Sato teaches that the hollow heating elements of the heating plates are
also used for cooling the wood W by changing the heating medium
flowing through the heating plates 14 in order to gradually reduce the
temperature of the heating plates 14. Col. 9, l. 68 – col. 10, l. 6.
9. Sato teaches that the heating plates 14 may be heated to 100oC or more.
Col. 9, ll. 61-64.
10. While Sato is primarily concerned with heating wood W in order to
controllably cure a solution, such as a synthetic resin, injected into the
wood W, Sato also recognizes that the heating method and apparatus
described may be used in processes that are not used for curing injected
solutions or in a drying process. Col. 10, ll. 49-57.
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11. Kleinguenther teaches an apparatus used for heating wood wherein a
temperature of 70-200oC is applied to the wood by contact with plates
heated by heated water conduits in a hermetically sealed chamber 42
under vacuum pressure. Col. 2, ll. 19-27; col. 3, ll. 4-8; col. 7, ll. 53-57;
and col. 8, ll. 3-7, 58-62.

PRINCIPLES OF LAW
The examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) noted that the analysis supporting a rejection under 35 U.S.C. §
103 should be made explicit. The Federal Circuit has stated that “rejections
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), cited with approval in KSR, 550 U.S. at
418.
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. A prima facie conclusion of obviousness may be
supported by a showing that the claims are directed to a process, machine,
manufacture, or composition of matter already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, and such modification yields a predictable result. See Id. (citing United
States v. Adams, 383 U.S. 39, 40 (1966)). The Court further stated that, “if a
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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.” KSR, 550 U.S. at 417. When considering
obviousness of a combination of known elements, the operative question is
thus “whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.

ANALYSIS
Guyonnet describes the basic heating process described in claims 37
and 52. Fact 1. Guyonnet does not disclose details of the specific structures
that may be used for implementing the process. Fact 5. Sato and
Kleinguenther teach apparatus for the controlled heating of wood. Facts 6-
11. The subject matter of claims 37 and 52 involve no more than the
predictable use of prior art elements according to their established functions
and would have been obvious to one having ordinary skill in the art.
Guyonnet suggests using an oven, and a device that can apply
mechanical pressure. Facts 2 and 3. The claimed temperature range is
described in Guyonnet and it need not be restated in Sato or Kleinguenther
in order to render obvious the subject matter of claims 37 and 52, as
suggested by Appellant’s arguments. See App. Br. 4, 7; Reply Br 2-3, 5.
Sato specifically discloses an apparatus that can apply temperatures in
excess of 100oC and Kleinguenther discloses a device that can apply
temperatures up to at least 200oC—within the claimed range. Facts 9 and 11.
Various reasons why one of ordinary skill in the art would use Sato’s
apparatus are described by Sato, for example, to evenly heat the wood while
preventing deformation. See Fact 7. Sato also describes the benefits of
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treating the wood under vacuum pressure. See Fact 7. To the extent that a
seal is not necessarily present in Sato, Kleinguenther demonstrates that it
was well-known in the art that hermetically sealing a chamber is a desirable,
if not essential, component for enabling pressure control of that chamber.
Fact 11. For these reasons, Appellant’s argument that the Examiner failed to
articulate a rational basis for combining the teachings of Guyonnet, Sato and
Kleinguenther is unpersuasive.
Appellant further argues that Guyonnet does not specifically disclose
that Sato’s heating structure can be employed to carry out Guyonnet’s
process. App. Br. 3. Appellant additionally argues that Sato and
Kleinguenther do not disclose that their apparatus can be used to produce the
product produced by Guyonnet’s process. App. Br. 4; Reply Br. 2. Neither
of these facts establishes that the Examiner erred in reaching a conclusion of
obviousness based upon the combined teachings of the references. The test
for obviousness is not whether the claimed invention is expressly suggested
in any one or all of the references. Rather, the test is what the combined
teachings of the references would have rendered obvious to those of ordinary
skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant
addresses the deficiencies of each reference individually (App. Br. 5);
however, nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
The fact that Sato and Kleinguenther do not explicitly state a
particular temperature does not establish that the Examiner erred in
concluding that it would have been obvious to one of ordinary skill in the art
to use Sato’s and Kleinguenther’s devices to apply that temperature to wood.
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What a reference teaches or suggests must be examined in the context of the
knowledge, skill, and reasoning ability of a skilled artisan. What a reference
teaches a person of ordinary skill is not limited to what a reference
specifically “talks about” or what is specifically “mentioned” or “written” in
the reference. Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380
(Fed. Cir. 2005). One of ordinary skill in the art would not have interpreted
Sato or Kleinguenther as teaching an apparatus that could only be used at the
temperatures explicitly stated. The ordinarily skilled artisan would have
understood how to control the temperature of those apparatus in order to
achieve the temperatures necessary to perform Guyonnet’s process.
The ordinarily skilled artisan would not have interpreted Sato’s device
and method as applicable to only a chemical treated wood as Appellant
suggests. App. Br. 5-6; Reply Br. 2-3. Sato expressly suggests that the
heating apparatus and method may also be used in conjunction with heating
processes that are not used for curing solutions injected into the wood such
as drying. Fact 10. Appellant’s argument that Sato does not suggest using
the heating element to cool the wood contradicts the express teachings of
Sato. App. Br. 4; Fact 8. Appellant’s argument that Sato and Kleinguenther
employ vacuum pressure for a purpose different than Appellant does not
establish that the Examiner erred in concluding the subject matter of claims
37 or 52 would have been obvious. App. Br. 4; Reply Br. 3, 5. One of
ordinary skill in the art would have understood Guyonnet’s suggestion of
using a treatment chamber that “may” be exposed to the atmosphere as
optional. Fact 4. One of ordinary skill in the art would have understood this
statement to mean that a treatment chamber not exposed to the atmosphere
could also be employed. “[A] person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR v. Teleflex Inc., 550 U.S. 398,
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421 (2007). Appellant does not point to any limitation in either claim which
mandates that the reason for applying vacuum pressure is to prevent
combustion. Even though Sato’s application of vacuum pressure is to
promote evaporation, it meets the claimed limitation.

CONCLUSION OF LAW
On the record before us, Appellant has failed to establish that the
Examiner erred in concluding the subject matter of claims 37 or 52 would
have been obvious to one having ordinary skill in the art.

DECISION
For the above reasons, the Examiner’s rejection of claims 37-47 and
51 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv) (2007).

AFFIRMED

mls

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