Ex Parte OU

Board of Patent Appeals and Interferences

Jan 30, 2004

09457183 (B.P.A.I. Jan. 30, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte NIAN-HUA OU
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Appeal No. 2004-0418
Application No. 09/457,183
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ON BRIEF
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Before PAK, WALTZ, and TIMM, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 1 through 3 and 11 through 14, which
are the only claims remaining in this application. We have
jurisdiction pursuant to 35 U.S.C. § 134.
According to appellant, the invention is directed to a paper
overlaid wood board comprising an oriented strand board (OSB) core
with a resin impregnated paper overlay adhesively secured to the
top surface of the OSB core (Brief, page 3). Further details of
Appeal No. 2004-0418
Application No. 09/457,183
1The examiner has separately rejected claim 13 under the
same ground and the same references (Answer, page 4). Since this
latter rejection is subsumed by the former rejection, we need
only discuss the former rejection.
2
the invention may be ascertained from representative independent
claim 1, reproduced below:
1. A paper overlaid wood board comprising:
an oriented strand board core having a bottom surface and
a top surface, said oriented strand board core including a
plurality of strands, each of said strands being generally
oriented parallel to one another;
a resin impregnated paper overlay adhesively secured to said
top surface of said oriented strand board, said paper overlay
having a basis weight of about 25 lbs./msf to about 75 lbs./msf
and a resin content of about 20% to about 60% by dry weight.
The examiner has relied upon the following references as
evidence of obviousness:
Lindquist et al. (Lindquist) 5,718,786 Feb. 17, 1998
Tingley 5,885,685 Mar. 23, 1999
Jaffee et al. (Jaffee) 6,187,697 B1 Feb. 13, 2001
(filed Dec. 31, 1998)
Claims 1-3 and 11-14 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Jaffee in view of Tingley and Lindquist
(Answer, page 3).1 We reverse the rejection on appeal for the
reasons set forth below.
Appeal No. 2004-0418
Application No. 09/457,183
2It is not contested that the disclosure by Jaffee of a
basis weight of 1.8 lbs. per 100 square feet is equivalent to 18
lbs./msf (Answer, page 5; Brief, page 7).
3
OPINION
The examiner finds that Jaffee discloses a multiple layer
laminate comprising an oriented strand board substrate and resin
saturated paper adhesively secured with a basis weight of 18
lbs./msf and a resin content of 20-22.5 wt.% (Answer, page 3,
citing col. 9, ll. 35-51; col. 3, l. 63-col. 4, l. 54; and col. 6,
ll. 5-13).2 The examiner concedes that Jaffee does not disclose
the basis weight as recited in claim 1 on appeal (Answer, page 3).
However, the examiner finds that such ranges of weights are result
effective variables which would have been easily optimized by one
of ordinary skill in this art, and thus the claimed basis weight
and paper overlaid wood board would have been obvious (Answer,
pages 4-7). We disagree.
It is well settled that the discovery of the optimum value of
a result effective variable is ordinarily within the skill of the
art, if the parameter optimized was recognized to be a result-
effective variable. See In re Boesch, 617 F.2d 272, 276, 205 USPQ
215, 219 (CCPA 1980); In re Antonie, 559 F.2d 618, 620, 195 USPQ 6,
8-9 (CCPA 1977); and compare In re Sebek, 465 F.2d 904, 907, 175
Appeal No. 2004-0418
Application No. 09/457,183
4
USPQ 93, 95 (CCPA 1972). However, as correctly argued by
appellants (Brief, page 5), the examiner has not shown that Jaffee
teaches a paper overlay having a basis weight of about 25 to 75
lbs./msf as required by claim 1 on appeal. The examiner has failed
to point to any disclosure or suggestion in Jaffee of a paper
overlay, merely citing examples of Jaffee directed to glass fibers
with a basis weight of 18 lbs./msf (col. 6, ll. 5-6), 18.3 lbs./msf
(col. 6, ll. 54-55), and 19.2 lbs./msf (col. 7, ll. 31-32)(Answer,
pages 3 and 6). The examiner has not established, by convincing
evidence or reasoning, why the optimization of the basis weight of
glass fiber mats would have suggested the claimed basis weight for
a resin impregnated paper overlay.
For the foregoing reasons, we determine that the examiner
has not established a prima facie case of obviousness in view
of Jaffee. We note that Tingley and Lindquist were cited by the
examiner merely to show the limitations recited in claims 12
and 13, respectively, and do not remedy the deficiency in the
examiner’s rejection as discussed above (Answer, page 4; see
the final rejection dated Jun. 6, 2002, Paper No. 8, page 3).
Accordingly, we also determine that the examiner has not
established a prima facie case of obviousness in view of the
applied prior art as a whole. Therefore the examiner’s rejection
Appeal No. 2004-0418
Application No. 09/457,183
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of the claims on appeal under 35 U.S.C. § 103(a) over Jaffee in
view of Tingley and Lindquist is reversed.
The decision of the examiner is reversed.
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
TAW/jrg
Appeal No. 2004-0418
Application No. 09/457,183
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CARLOS NIEVES
J M HUBER CORPORATION
333 THORNALL STREET
EDISON, NJ 08837-2220