Ex Parte Moyes

Board of Patent Appeals and Interferences

Dec 7, 2009

09985673 (B.P.A.I. Dec. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HARTLEY MOYES
____________________

Appeal 2009-004348
Application 09/985,673
Technology Center 3600
____________________

Decided: December 7, 2009
____________________

Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY and
MICHAEL W. O’NEILL, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s 2
decision finally rejecting claims 18-20, 25-29, 32-36 and 39 under 35 U.S.C. 3
§ 103(a) as being unpatentable over Lynch (US 5,766,774, issued Jun. 16, 4
1998); and finally rejecting claims 23, 24, 30, 31, 37 and 38 under § 103(a)5
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as being unpatentable over Lynch and Aufderhaar (US 5,219,634, issued 1
Jun. 15, 1993). We have jurisdiction under 35 U.S.C. § 6(b). 2
We REVERSE. We enter NEW GROUNDS OF REJECTION against 3
independent claims 18 and 33 under 35 U.S.C. § 102(b) as being anticipated 4
by Hansen (US 4,812,188, issued Mar. 14, 1989) or, in the alternative, under 5
§ 103(a) as being unpatentable over Hansen. 6
Claims 18 and 33 are independent. Claim 18 recites: 7
18. A hollow door comprising: 8
a door frame; and 9
first and second door skins attached to said 10
door frame so as to define a hollow core area there 11
between, at least one of said skins being a 12
reformed molded wood composite door skin 13
having molded therein a plurality of panels, 14
wherein said at least one molded door skin 15
has a bond strength of at least about 2.0 N/mm2. 16
17
ISSUES 18
Independent claim 18 recites that at least one of a first and a second 19
door skin has a bond strength of at least about 2.0 N/mm2. Independent 20
claim 33 recites that both the first and second door skins comprise remolded 21
wood composites having bond strengths of at least about 2.0 N/mm2. The 22
Examiner finds that Lynch fails to disclose a molded door skin having a 23
bond strength of at least about 2.0 N/mm2. (Ans. 3 and 6). The Examiner 24
does not find that any disclosure of Lynch or Aufderhaar makes up for this 25
deficiency. Instead, the Examiner concludes that the bond strength of the 26
door skin would have been an obvious engineering design choice. The 27
Examiner bases this conclusion in part on findings that the Appellant has not 28
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shown that the 2.0 N/mm2 is critical to producing any unexpected result and 1
that the Appellant’s Specification indicates that high bond strength is a 2
desirable property of a door skin. (Ans. 6). The Appellant disagrees with 3
the Examiner’s conclusion. (E.g., Reply Br. 4). 4
Aufderhaar summarizes the disclosures of several prior art patents 5
relating to doors, including Hansen. Aufderhaar’s summary of the 6
disclosure of Hansen suggests that Hansen discloses a process for making a 7
covering plate member or skin for a door substantially identical to that 8
disclosed by the Appellant. (See Aufderhaar, col. 1, ll. 53-66). A review of 9
Hansen’s disclosure appears to confirm this suggestion. 10
This appeal turns on two issues: 11
Has the Appellant shown that the Examiner erred in 12
concluding that it would have been a matter of obvious 13
engineering design choice to incorporate a door skin having a 14
bond strength of at least about 20 N/mm2 into a hollow core 15
door? 16
Are claims 18 and 33 subject to new grounds of rejection 17
under § 102(b) as being anticipated by Hansen or, in the 18
alternative, under § 103(a) as being unpatentable over Hansen? 19
20
FINDINGS OF FACT 21
The record supports the following findings of fact (“FF”) by a 22
preponderance of the evidence. 23
1. The Appellant’s Specification discloses forming a door skin 24
from a flat blank 10 composed of medium density fiber bound together by a 25
thermosetting urea formaldehyde resin. (Spec. 13, ll. 7-20). 26
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2. The Appellant’s Specification discloses that the flat blank 10 1
should have a density of at least about 550 kg/m3 and a thickness of 3 mm to 2
7 mm. (Spec. 14, ll. 1-3). 3
3. The Appellant’s Specification discloses that at least some of the 4
binder in the flat blank should not be cured. (Spec. 14, ll. 8-10). 5
4. The Appellant’s Specification discloses that later curing of the 6
uncured portion of the binder during a reforming process results in the 7
reformed door blank attaining a significantly higher hardness than the 8
hardness attained by molded skins not subject to the Appellant’s reforming 9
process. (Spec. 14, ll. 12-17). 10
5. The Appellant’s Specification discloses preheating the flat 11
blank 10 to a temperature of about 80°C to 100°C for 30-90 seconds and 12
then moisturizing the flat blank 10 at the preheating temperature with steam. 13
(Spec. 14, ll. 21-24; id. at 15, ll. 2-8, 12-18 and 20-23; id. at 15, l. 29 – 16, l. 14
3). 15
6. The Appellant’s Specification discloses applying melamine or 16
urea conditioning resin to the preheated, moisturized flat blank 10. (Spec. 17
16, ll. 14-16 and 18-20). The Appellant’s Specification discloses that the 18
conditioning resin provides increased hardness to the resulting molded skin. 19
(Spec. 16, ll. 24-27). 20
7. The Appellant’s Specification discloses placing the flat blank 21
10 between heated platens 17, 19. The platens 17, 19 apply heat and 22
pressure to the flat blank 10 to reform the blank in conformance with the 23
shape defined by the interface of the platens 17, 19. (Spec. 19, ll. 14-22). 24
8. The Appellant’s Specification discloses applying 25
uninterruptedly increasing pressure to one or both of the platens 17, 19 to 26
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cause the platens 17, 19 to move toward one another so that the flat blank 10 1
is relatively slowly reformed into the shape of a door skin 7. (Spec. 19, l. 27 2
– 20, l. 3; id. at 20, ll. 8-10). The Appellant teaches that slowly applying 3
uninterruptedly increasing pressure to the flat blank 10 avoids substantial 4
breakage of the resin bonds in the blank as the blank is reformed. (Spec. 22, 5
ll. 13-17). 6
9. The Appellant’s Specification discloses venting one of the 7
platens 17, 19 in order to release steam, volatiles and similar gaseous 8
products generated when the flat blank 10 is reformed. The Appellant 9
teaches that venting one of the platens 17, 19 results in a stronger end 10
product skin 7 than does intermittent venting of the press. (Spec. 19, ll. 4-11
10). 12
10. The Appellant’s Specification discloses that “[s]tandard molded 13
skins from Masonite Corporation, for example, typically have a bond 14
strength of about 1.4 N/mm2, while reformed skins 7, 9 according to certain 15
embodiments of this invention preferably have a bond strength of at least 2.0 16
N/mm2 and most preferably a bond strength of at least about 2.5 N/mm2.” 17
(Spec. 9, ll. 11-16). 18
11. The Appellant’s Specification does not indicate that the steps of 19
applying the conditioning resin or venting the reforming press are critical to 20
producing bond strengths of at least 2.0 N/mm2. 21
12. Lynch discloses a door 10 including a front door skin 11 and an 22
identical rear door skin 11A secured to opposite major surfaces of a door 23
frame 20. Each of the front and rear door skins 11, 11A includes two panels 24
14, 15. (Lynch, col. 6, ll. 6-29). 25
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13. Lynch discloses three conventional techniques for molding door 1
skins of wood composite material, namely, a “wet” process, a “wet/dry” 2
process and a “dry” process. (Lynch, col. 1, l. 33 – col. 2, l. 32). None of 3
the three conventional techniques disclosed by Lynch for molding door skins 4
includes reforming a flat blank formed by heating and pressing a mat. 5
14. Lynch does not mention the strength or hardness of the door 6
skins 11, 11A. 7
15. Aufderhaar discloses a method for producing a panel or door 8
core 10 including the steps of dipping a dried, compressible wood fiber 9
board into a plastic resin mixture and then heating and pressing the board. 10
(Aufderhaar, col. 5, ll. 39-43 and col. 6, ll. 11-16). Aufderhaar does not 11
disclose reforming a flat blank formed from a wood composite material. 12
16. Aufderhaar summarizes Eggers (US 4,146,662, issued Mar. 27, 13
1979) as disclosing a solid core wood door having an overlaid laminate of 14
phenolic resin-impregnated paper and veneer bonded to the front and rear 15
surfaces of the core material. (Aufderhaar, col. 1, ll. 19-23). 16
17. Hansen discloses a hollow core door including a plate member 17
or skin placed on one side of a frame work 10 and another plate member or 18
skin 12 placed on the other side of the frame work 10. (Hansen, col. 3, ll. 5-19
12). Figure 3 of Hansen depicts the plate members as being placed on the 20
frame work 10 so as to define a hollow core between the two plates. Both 21
plate members or skins are made by forming a plate member 2 of wood 22
composite material and reforming the plate member 2 before placing the 23
plate member on the door frame 10. (See Hansen, col. 3, ll. 4-15). 24
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18. Hansen does not describe the plate members 2, 12 as having a 1
plurality of panels. Neither do any of Hansen’s drawing figures depict a 2
door skin having a plurality of panels. 3
19. Figure 1 of Hansen depicts a mold platen 6 for the plate 4
member or skin 2 as having a raised portion for forming one panel. The 5
mold platen 6 is depicted with broken lines adjacent the raised portion. One 6
of ordinary skill in the art would have understood these broken lines as 7
indicating the location of a second raised portion which might have been 8
used to form a second panel in the plate member or skin 2. 9
20. Hansen describes a method for producing the plate members or 10
skins from a base plate 14. The base plate 14 is produced as an only slightly 11
compressed element of wood fiber mass with a urea-based binding agent. 12
(Hansen, col. 3, ll. 25-36). The wood fiber mass is pressed to a thickness of 13
3-4 mm and a bulk density of 400-600 kg/m3. (Hansen, col. 3, ll. 25-32 and 14
41-43). 15
21. Hansen discloses producing the base plate 14 with a low degree 16
of heat so that the binding agent is only partially activated and not cured. 17
(Hansen, col. 3, ll. 33-37). 18
22. Hansen discloses applying a coating 16 of paper or veneer on 19
both sides of the base plate 14 to form a plate member 2. (Hansen, col. 3, ll. 20
16-18). 21
23. Hansen discloses steaming the plate member 2 for 22
approximately 30 seconds at 100°C immediately before pressing the base 23
plate. (Hansen, col. 3, ll. 44-46). The steaming of the plate member 2 24
necessarily will preheat and moisturize the plate member. 25
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24. Hansen discloses pressing or reforming the plate member 2 to 1
form depressed patterns in the plate member or skin. (Hansen, col. 3, l. 60 – 2
col. 4, l. 2). 3
25. Hansen discloses pressing or reforming the plate member 2 4
with a gradual build up of pressure of approximately 20 kg/cm2 over a 5
period of approximately two minutes. (Hansen, col. 3, ll. 47-49). Hansen 6
also discloses gradually increasing the temperature of the plate member 2 7
while pressing or reforming the plate up to an ultimate temperature of 8
approximately 130°C. (Hansen, col. 3, ll. 49-57). 9
26. Hansen discloses that the heating and pressing of the plate 10
member 2 while reforming the plate causes the urea-based binder to cure, 11
resulting in a very strong final product. (Hansen, col. 3, l. 61 – col. 4, l. 2). 12
Hansen’s statement implies that one of ordinary skill in the art would have 13
considered increased strength to be a desirable property of a door skin. 14
15
PRINCIPLES OF LAW 16
Where claimed and prior art products 17
are produced by identical or substantially identical 18
processes, the [Patent and Trademark Office] can 19
require an applicant to prove that the prior art 20
products do not necessarily or inherently possess 21
the characteristics of [the] claimed product. 22
Whether the rejection is based on ‘inherency’ 23
under 35 U.S.C. § 102, on ‘prima facie 24
obviousness’ under 35 U.S.C. § 103, jointly or 25
alternatively, the burden of proof is the same, and 26
its fairness is evidenced by the PTO’s inability to 27
manufacture products or to obtain and compare 28
prior art products. 29
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In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations omitted); see also 1
In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990)(“[W]hen the PTO shows 2
sound basis for believing that the products of the applicant and the prior art 3
are the same, the applicant has the burden of showing that they are not.”) 4
5
ANALYSIS 6
The Examiner’s Rejection of Claims 18-20, 25-29, 32-36 and 39 7
Under § 103(a) as Being Unpatentable Over Lynch 8
The Examiner finds that Lynch did not disclose a door skin having a 9
bond strength of at least 20 N/mm2. (Ans. 3). Nevertheless, the Examiner 10
concludes that the bond strength of the door skin would have been an 11
obvious engineering design choice “since such a modification would have 12
resulted in an expected result, ie. a stronger door skin.” (Ans. 6). The 13
Examiner provides no evidence that such a choice would have been 14
available to one of ordinary skill in the art, however. 15
On the other hand, the Appellant’s Specification states that certain 16
embodiments of reformed molded door skins produced in accordance with 17
the method disclosed in the Specification have bond strengths of at least 2.0 18
N/mm2. (FF 10). The Specification identifies a manufacturer who produced 19
a prior art door skin having a strength less than 2.0 N/mm2. (Id.) Lynch 20
does not disclose reforming a flat blank formed by heating and pressing a 21
mat. (FF 13). 22
As the Examiner correctly points out (see Ans. 6), the particular 23
method disclosed by the Appellant’s Specification for producing a door skin 24
is not a structural limitation on claims 18 and 33. In view of the Appellant’s 25
arguments, however, it is incumbent on the Examiner to provide evidence 26
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sufficient to support a finding that the level of ordinary skill in the art prior 1
to the disclosure of the Appellant’s Specification was sufficient to produce a 2
molded wood composite door skin having a bond strength of at least 2.0 3
N/mm2. The Examiner has identified no such evidence. Therefore, the 4
Examiner has not established that the use of a wood composite door skin 5
having a bond strength of at least 2.0 N/mm2 in a hollow core door as recited 6
in independent claims 18 and 33 was an obvious engineering design choice 7
available to one of ordinary skill in the art. 8
9
The Examiner’s Rejection of Claims 23, 24, 30, 31, 37 and 38 10
Under § 103(a) as Being Unpatentable Over Lynch and Aufderhaar 11
The Examiner relies on Aufderhaar for a teaching to apply an overlaid 12
laminate of phenolic resin-impregnated paper over a blank before pressing 13
the blank into a door skin. (Ans. 5; see also FF 16). The Examiner does not 14
identify any teaching of Aufderhaar that, in combination with the teachings 15
of Lynch, might have provided one of ordinary skill in the art an apparent 16
reason to modify Lynch’s door skin in a manner reasonably likely to 17
increase the bond strength of at least one of the skins to at least 2.0 N/mm2. 18
Therefore, the Examiner’s reliance on Aufderhaar does not make up for the 19
deficiency in the teachings of Lynch. 20
21
New Ground of Rejection of Independent Claims 18 and 33 Under 22
§ 102(b) as Being Anticipated by Hansen or, in the Alternative, Under 23
§ 103(a) as being Unpatentable over Hansen 24
Hansen discloses each limitation recited in independent claims 18 and 25
33. Alternatively, one of ordinary skill in the art would have had an 26
apparent reason to modify the hollow core door structure disclosed by 27
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Hansen in a manner which would include each limitation of the independent 1
claims. 2
Hansen discloses a hollow door comprising a door frame; and first 3
and second door skins attached to the door frame so as to define a hollow 4
core area there between. (FF 17). Hansen discloses that both the first skin 5
and the second skin are reformed molded wood composite door skins. (See 6
id.) Although Hansen does not expressly disclose that each of the first and 7
second door skins includes a plurality of panels, the depiction of the door 8
skin in Figure 1 of Hansen implies that this is the case. (FF 18 and 19). 9
Even had it been found that Hansen does not disclose that each of the first 10
and second door skins has a plurality of panels, the broken lines in Figure 1 11
of Hansen would have suggested to one of ordinary skill in the art to include 12
a plurality of panels in each door skin. (See FF 19). 13
Furthermore, a sound basis for belief exists that the first and second 14
door skins disclosed by Hansen have bond strengths of at least 2.0 N/mm2. 15
Hansen discloses a method for producing reformed wood composite door 16
skins substantially identical to the method disclosed by the Appellant’s 17
Specification. Both Hansen’s method and the method disclosed in the 18
Appellant’s Specification start with a plate member or flat blank including 19
wood fibers and uncured or partially cured urea-based resin binder. Hansen 20
discloses a base plate 14 having a range of thicknesses before coating with 21
paper or veneer 16 within the lower end of the range of thicknesses of the 22
flat blank 10 disclosed by the Appellant’s Specification. Hansen discloses a 23
range of bulk densities for the base plate 14 which overlaps the range of 24
densities of the flat blank 10 disclosed by the Appellant. (Compare FF 1-3 25
with FF 20 and 21). 26
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The Appellant’s Specification discloses preheating and moisturizing 1
the flat blank 10 before reforming the blank. (FF 5). Hansen discloses 2
steaming a plate member 2 prepared by coating the base plate 14 with paper 3
or veneer 16. Hansen’s steaming of the plate member 2 necessarily will 4
have the effect of preheating and moisturizing the blank. (FF 22 and 23). 5
Both Hansen’s method and the method disclosed in the Appellant’s 6
Specification compress the preheated and moisturized plate member or flat 7
blank between heated platens to reform the plate member or the flat blank so 8
as to conform to the shapes of platens. Both Hansen’s method and the 9
method disclosed in the Specification apply gradually increasing pressure to 10
the platens when reforming the plate member or flat blank. (Compare FF 7 11
and 8 with FF 24 and 25). 12
Although Hansen discloses neither applying a conditioning resin prior 13
to reforming the plate member or flat blank nor venting one of the platens 14
while reforming the plate member or flat blank (see FF 6 and 9), Hansen’s 15
method is substantially similar to the method disclosed by the Appellant. 16
Both Hansen and the Appellant’s Specification state that the step of 17
reforming the plate member or flat blank under heat and pressure cures the 18
remaining uncured binder in the door skin, resulting in greater strength or 19
hardness. (Compare FF 4 with FF 26). The Appellant’s Specification also 20
discloses that relatively slowly reforming the plate member or flat blank by 21
means of uninterruptedly increasing pressure prevents substantial breakage 22
of bonds within the plate member or flat blank. (FF 8). On the other hand, 23
the Appellant does not describe the steps of applying a conditioning resin 24
prior to reforming the plate member or flat blank nor venting one of the 25
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platens while reforming the plate member or flat blank as being critical to 1
producing a bond strength of at least 2.0 N/mm2. (FF 11). 2
Therefore, there is a sound basis for belief that the door skins of 3
Hansen’s hollow core door necessarily have a bond strength of at least 2.0 4
N/mm2. This sound basis for belief is sufficient to establish a prima facie 5
case that Hansen anticipates the subject matter of claims 18 and 33. See In 6
re Best, 562 F.2d at 1255. Even if the Appellant should produce evidence 7
sufficient to show that this belief is incorrect, the disclosure of Hansen 8
indicates that one of ordinary skill in the art would have considered 9
increased strength to be a desirable property of a door skin. (See FF 26). It 10
would have been obvious at the time the subject matter of claims 18 and 33 11
was made to optimize the strength of the door skins of Hansen’s hollow core 12
door by routine experimentation with parameters such as the bulk density of 13
the base plate 14 or the conditions under which the plate member 2 was 14
preheated and steamed before the reforming step. See In re Aller, 220 F.2d 15
454, 456 (CCPA 1955). 16
17
CONCLUSIONS 18
The Appellant has shown that the Examiner erred in concluding that it 19
would have been a matter of obvious engineering design choice to 20
incorporate a door skin having a bond strength of at least about 2.0 N/mm2 21
into a hollow core door. Therefore, the Appellant has shown that the 22
Examiner erred in rejecting claims 18-20, 25-29, 32-36 and 39 under 23
§ 103(a) as being unpatentable over Lynch. Since the Examiner has 24
provided no findings or technical reasoning to explain why Aufderhaar 25
might make up this deficiency, the Appellant has shown that the Examiner 26
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erred in rejecting claims 23, 24, 30, 31, 37 and 38 under § 103(a) as being 1
unpatentable over Lynch and Aufderhaar. 2
On the other hand, claims 18 and 33 are subject to new grounds of 3
rejection under § 102(b) as being anticipated by Hansen or, in the 4
alternative, under § 103(a) as being unpatentable over Hansen. 5
6
DECISION 7
We REVERSE the Examiner’s decision rejecting claims 18-20 and 8
23-39. 9
Pursuant to 37 C.F.R. § 41.50(b), we enter NEW GROUNDS OF 10
REJECTION against claims 18 and 33 under 35 U.S.C. § 102(b) as being 11
anticipated by Hansen or, in the alternative, under § 103(a) as being 12
unpatentable over Hansen. 13
Under 37 C.F.R. § 41.50(b) a new ground of rejection has been 14
entered. 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection 15
pursuant to this paragraph shall not be considered final for judicial review.” 16
Regarding the new ground of rejection, Appellant must, WITHIN 17
TWO MONTHS FROM THE DATE OF THE DECISION, exercise one of the 18
following options with respect to the new ground of rejection, in order to 19
avoid termination of the appeal as to the rejected claims: 20
(1) Reopen prosecution. Submit an appropriate 21
amendment of the claims so rejected or new 22
evidence relating to the claims so rejected, or both, 23
and have the matter reconsidered by the examiner, 24
in which event the proceeding will be remanded to 25
the examiner. . . . 26
27
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(2) Request rehearing. Request that the 1
proceeding be reheard under § 41.52 by the Board 2
upon the same record. . . . 3
4
No time period for taking any subsequent action in connection with 5
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). 6
7
REVERSED; 37 C.F.R. § 41.50(b) 8
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mls 13
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JOSEPH W. BERENATO, III 16
LINIAK, BERENATO, LONGACRE & WHITE, LLC 17
SUITE 240 18
6550 ROCK SPRING DRIVE 19
BETHESDA, MD 20817 20